Should Indie Developer Register Trademark
The Ultimate Guide to Video Game Trademark
- by Zachary Strebeck
In this ultimate guide to registering and protecting your Video Game Trademark, I'll walk you lot through the entire trademark process.
This includes:
- The brainstorming stage – how do yous come with a game name?
- The clearance search – making sure your game name doesn't disharmonize with some other game
- Filing your trademark registrations (in the U.s.a. and internationally)
- Policing your trademarks to protect your game name, and
- Enforcing your trademarks where necessary.
While I'm certain you'll observe something of import in very section, y'all can click on the Tabular array of Contents on the right to bound straight to what you're looking for.
Read this commencement:
This is a long post, and while it's pretty informative, not everyone's going to read the whole thing.
Considering of that, I'm going to highlight some sections here and the master takeaways that you should learn.
- First, coming up with a actually strong, distinctive trademark can be hard! I know – I've tried it many times before. However, if you do some brainstorming for ideas and utilise your knowledge about trademarks to whittle those ideas down, you can come up with something truly not bad.
Check out the sections on Brainstorming and Trademark Clearance for more info!
- Registering a trademark is as well super important. Y'all tin utilise that registration as a sword AND as a shield. It can aid to stop others from using a game name similar to yours, and you tin use it as proof that y'all're not infringing on anyone else'southward trademarks.
Bank check out the section on Trademark Registration for more info.
- Once you've got a trademark registered, you need to take steps to renew your registration from fourth dimension to fourth dimension, and to enforce your trademark confronting others who are infringing.
Read more in the sections on Post-Registration Issues and on Enforcement!
Nonetheless hither? Read on for more item on video game trademarks and how you tin protect them!
What are trademarks and why are they so important?
Atrademark is, essentially, a brand. Information technology'due south a word, slogan, or image that identifies the source of appurtenances or services.
Here'south an instance:
You walk into a Gamestop, and meet a game on the shelf that has the word "Halo" written on it. Considering that word signifies a make, and identifies to you that the source of that game is Microsoft, the give-and-take acts as atrademark.
This is important, considering the police wants to protect consumers from buying goods and services that aren't what they expected. Imagine that you buy something with the Halo logo.
When you kick it upwardly, though, it's a completely unlike game with none of the things you love nearly the Halo serial (because someone else made the game merely used the Halo trademark).
That'due south a problem that trademark police force seeks to avert.
How exercise you become trademark rights?
You learn trademark rights past using a trademark in commerce . Commonly, this means using the trademark in connexion with selling goods or services to the public.
Even though you have rights just by virtue of selling your production, there isn't a lot you can do with information technology. To truly do your rights, the all-time thing to do is register that trademark.
When information technology comes to somethingequally valuable every bit your game or game company brand, I'll quote Hunter S. Thompson and say that "anything worth doing, is worth doing right."
Brainstorming - coming upwards with options for a neat name
Coming upwardly with a unique company or game proper noun is 1 of the more difficult things to practise for both new and experienced developers.
There are literally companies out there that will assemble a team of marketing people, linguists, and trademark lawyers to do this for you.
Before we go that far, let'due south await at i blazon of technique that tin help you get a ton of workable game proper noun ideas to kickoff from.
Brainstorming.
You've about probable done it before, whether in your schooling as part of an assignment, in your career, or just in your daily dwelling house life.
Substantially, brainstorming is when yous gratuitous your listen to come upwards with as many options as possible.
The #i matter to keep in mind when brainstorming for possible names is that at that place are no incorrect answers and no bad ideas! Don't 2nd guess yourself – write it down and go along going.
How practice you do effective brainstorming for game and company names?
There are then many ways to brainstorm a game name, and a quick Google search will reveal a ton of them. Nevertheless, I've gathered several here that will get y'all started on your search for the perfect name:
1. Become a thesaurus
If you start with a seed word related to your game, looking up its synonyms in a thesaurus can be an awesome way to jumpstart your brain's creativity. "Thesaurus creep," where you find synonyms to synonyms and keep going down the rabbit pigsty, can go you to some places you lot probably weren't planning on. That'due south a skilful thing!
2. Bounce ideas off a group
Don't go information technology alone! Working on brainstorming with a group tin bring some much-needed different perspectives to the game naming procedure. Once again, yous will probably be finding some names and ideas that you would have never thought of yourself!
three. Give-and-take association
A scrap like the thesaurus method above, just using only your own listen, "discussion association" is substantially only writing downward whatever give-and-take your encephalon instantly associates with the seed word. This can pb to some interesting game proper noun ideas, depending on how flexible and out at that place your brain might be.
4. Dig deep into your product
Some other way to find ideas and "seed words" for the other techniques is to dig deep into your visitor's philosophy or products. What features make them unique? Kickoff there and piece of work with those main features every bit potential name.
5. Get wild
Potent trademarks are ones that are "arbitrary" and "fanciful." This means that made-up words and words that accept no relation to the actual production can make the most distinctive trademarks.
Zaxxon is a perfect example of a strong video game name – it's a completely made up discussion that doesn't exist anywhere else. This makes it a perfect trademark for a game.
And then try coming upward with some brand new words or endeavor out words that aren't related to games at all (remember "Apple" for phones and personal computers, or "Gimlet Media" for podcasting/radio shows).
half dozen. Utilize visuals
Another popular technique is to look at an image related to your company or game, and start brainstorming things based on that. Pull out details and related thoughts from the things your mind is seeing. Y'all'll be surprised what yous tin can come upwardly with!
7. Modify your surround
Sometimes the best way to generate new and fresh ideas is to change up where you're doing the brainstorming. Go out of the part, have a vacation, or fifty-fifty just allow your listen wander when you're in the shower.
Hopefully these techniques aid you go a handle on brainstorming. Utilise them to come up with a list of potential names earlier moving on to the next step: Clearance!
Trademark Clearance - avoiding trouble before it starts
As part of your trademark game program, a proper clearance search to avert conflicts is one of the kickoff steps to take.
What is a clearance search?
A trademark clearance search is a 2-part process:
- you analyze your ain proposed trademark, and
- you do a search to check if information technology is already trademarked (or otherwise in apply)
This isa vital slice of the trademark puzzle.
If yous don't get through this super of import step before using the mark, you lot run the gamble of infringing someone's existing trademark.
If you infringe, you lot could be opening yourself up to receiving a cease and desist letter, getting sued for trademark infringement, and you could potentially be on the claw for a big amercement honour. You as well waste a ton of time and coin building up your new make when there's already a competitor using the proper noun.
This isa costly fault that too many new businesses brand.
How exercise you analyze a trademark?
Basically, you're looking to make certain the trademark is distinctive, and not simply describing the goods or services. Distinctive trademarks fall into these iii categories:
- Fanciful marks (Exxon)
- Arbitrary marks (Apple)
- Suggestive marks (Android)
Fanciful marks are unique, made-up names. These are the virtually distinctive, considering they only be to draw your goods and services. These are the strongest trademarks you tin get.
Simply as strong are capricious marks – trademarks that may utilize mutual words, simply the words are completely arbitrary when compared to the goods and services at issue. Some other example, also Apple tree (which is a completely capricious name when compared to computers and phones), is Delta for faucets. These are very strong marks, and something you should shoot for.
Less potent, but still distinctive enough for protection, are suggestive marks. These don't directly describe the goods and services, but they're also not completely arbitrary. They require a "spring of imagination" to become from the trademark to the appurtenances associated with that mark.
Stay away from trademarks that are descriptive and generic – those won't give you any protection.
The trademark search – how to bank check if something is trademarked already
In one case y'all've got at least i strong and distinctive trademark picked out, many clients ask about the adjacent pace – how to check if something is trademarked by someone already.
In the United states of america, you would search the USPTO'southward search engine to meet if someone has already registered that mark.
There is a bit of an art to this, every bit yous demand to brand sure that you lot're checking variations of your proposed trademark.
Below, you lot tin can see the search results for "Call of Duty" – looks similar it's taken.
This means plural and singular forms, sound-alikes, misspellings, and even synonyms. If you miss any of these, you could end up having your trademark application refused considering information technology is confusingly similar to others. Check out a recent guest post of mine on the Kickstarter Lessons weblog that discusses this in more item.
Other search engines to check include the Eu's trademark database, any industry-specific search engines, and a simple Google search.
Some other important detail to continue in mind is that the aforementioned trademark can be for 2 different products and services, as long as they are not likewise close. There are a number of factors that courts look at in analyzing whether the marks tin can coexist or non, but here are a few:
- How like the trademarks are
- How close the appurtenances are
- The different marketing channels used
- Whether there is evidence of actual defoliation
- How strong the trademark is
Whether or non the trademark is besides close is a subjective analysis, but it's possible to make an approximate judgment. Still, a trademark attorney is probably in a improve position to make this judgment than someone who is doing this for the first time.
For instance, instead of manually searching on the USPTO site, I use a special AI-assisted, comprehensive search service to clear game name trademarks. It doesn't just search the USPTO – the search covers Steam, iOS App Store and Google Play Shop, Google, and more.
This broad clearance search allows me to quickly and effectively check to see if a customer's trademark is going to conflict with existing game name marks.
What if it is already trademarked?
If you practice find a confusingly like match out there, you take a few choices:
- Pick a new trademark
- Try registering your mark anyway and promise for the best
- Go a co-existence understanding or license in place with the existing trademark owner
The decision of what to exercise isn't like shooting fish in a barrel, and requires possibly taking on some business concern risk. I ever recommend that you do so with the communication of an attorney.
What if you don't do the proper clearance search?
In the rush to get a game adult and published, a lot of important business organization steps are ofttimes overlooked. Developers don't get agreements signed with their contractors, they don't copyright their games soon enough, and other issues.
Ane of the biggest issues? Failing to do a proper trademark clearance search before starting their company or publishing their game.
You might be asking yourself, "What could become incorrect?"
Despite the prison image to a higher place, you're probably not going to get to jail. However, there are many things, some of which could potentially seriously hurt your business
Here's a few:
Cease and desist letters
A terminate and desist alphabetic character doesn't technically take any legal weight, simply it certainly tin can put a scare into the developer that receives it. These are usually written by a constabulary business firm and contain allegations of trademark infringement. Ofttimes, they quote a agglomeration of law and list various federal trademark registration numbers.
The nice ones end with "we trust that this thing tin can be resolved apace and without resorting to legal action." Mean ones tend to threaten litigation right abroad.
It'due south understandable why these can frighten developers – they're SUPPOSED to be frightening. Frequently, indie devs don't have firsthand access to a legal squad to evaluate the claims in the alphabetic character, permit alone competently respond to them. If y'all desire to read more almost finish and desist letters and how to respond to them, check out my post on the Kickstarter Lessons blog.
Taken downwards from the app stores and other outlets
A cease and desist letter of the alphabet is usually a proficient get-go footstep to take when an attorney deals with potential infringement. They're not required, though, and sometimes attorneys skip right to takedown procedures in the cases of online app stores.
If you neglect to properly clear your game title or company name and publish a game on the Google Play store that is confusingly like to some other, they may apply the store'southward takedown procedures to get your app taken off in whatever jurisdictions they accept rights.
Similarly, your social media accounts can be either deleted or disabled. Yous may be subject field to a UDRP proceeding over an infringing domain name. There are a number of methods available to a trademark holder that can actually ruin an indie programmer's day.
Why is this a huge effect?
You may still be wondering why this is such a large deal. Well, there's a few reasons:
- You probably spent a bunch of time and money generating business concern goodwill for either your game or your company name earlier your game's release (if yous're doing information technology right)
- You're relying on the game existing on the App Store or Play Store in order to exploit the game for revenue
- You lot probably don't want to have to pay someone like me to reply to the letter, let alone fight confronting litigation or debate with an app store on your behalf
These are all things that can potentially be very expensive! They are also mostly avoidable (though non completely avoidable) with the proper clearance work upwards front.
The real toll, though, is if you get sued. A skillful trademark clearance tin become around that entirely.
Registration - how to do it and why it's of import
Once you lot've cleared the trademark equally having no obvious conflicts, the next step is filing the trademark on the USPTO's TEAS site. TEAS gives yous a number of options for various types of filings – we're looking for the TEAS Plus grade for thecheapest game trademark registration option.
At that place are a few requirements for using TEAS Plus (otherwise you need to apply the more than expensive TEAS Reduced Fee Form):
- Communicate by electronic mail
- Brand all filings online
- Select descriptors of goods and services from a pre-populated catalog
- Pay the full, non-refundable filing fee up forepart
The trademark awarding process is deceptively complicated. You may need to accost a number of nuances (such every bit when you need to provide additional information, etc.), even though the application for a game proper noun seems simple.
There is too the question of whether the trademark is currently in apply to sell your game (or give the game away for free), or if you take abona fideintent to use the trademark. The intent to utilise (1B) application allows you to "reserve" your trademark rights while you lot're notwithstanding preparing or developing the game (or any goods or services you end up selling).
This tin be extremely handy inavoiding someone coming in and starting to employ your game name during the time that you don't yet have whatever rights.
Here's a common scenario:
You begin and finally come up with the perfect proper noun for your game. You're halfway through development and won't be releasing for at least a year, but you want to start building up an audience for your game at present.
While you're putting up dev blog articles and getting press coverage of your game pre-release, though, another programmer releases a game with the exact same name!
How can they do this? Isn't it illegal, since you're already advertising your game?
Nope, information technology's perfectly legal.
Since you haven't actually started selling your game or letting users download the game for free, you lot haven't really accrued any trademark rights. Considering of that, the game name is still complimentary for anyone to use.
That's where the "intent to use" application for your game name comes in handy, and this exact scenario can be avoided. Trust me – it'due south really happened with multiple clients, no matter how unique their game proper name is.
Trademark renewals and other ongoing obligations
In one case the trademark is registered, the fun doesn't stop there. You've got a several ongoing obligations, including renewals and policing/enforcing your mark.
Tabular array of required trademark renewal filings
Additionally, it'south important that you lot describe the goods and servicesas broadly as possible, while all the same remaining truthful to their actual use (or intent to use).
Equally with the clearance search, this tin can exist more of an art than a science. There are a number of descriptors which can be chosen from, particularly when it comes to game trademarks. Frequently, they tin seem pretty like.
Pro Tip: One handy tip is to find a competitor's (or more than than i, if possible) game trademark awarding and review their clarification of appurtenances and services. You may exist able to just use the aforementioned, and add together and decrease where you differ from that competitor.
Subsequently filing – "hurry upwards and look"
The long wait for trademark registration begins after the application is filed, signed, and the appropriate fee is paid. The timeline from the date of application is basically this:
- The application is assigned to a trademark function examiner in 2-3 months
- A few days for the initial review of the application
- Bold in that location are no issues that need addressing, in a few weeks the application will be published for opposition.
- This is a process that allows others to publicly view the application and file an opposition to its registration. Once published, it will be out there for 30 days.
- Once that 30 days is upwardly, and if no 1 filed an opposition, the awarding volition be canonical for registration. Information technology takes a while (weeks to months) for that to happen and the registration certificate to issue.
In all, the process can have around 9-12 months. Luckily, your rights in the game name begin on your date of first utilize in commerce or on the date of the application (in the instance of an intent to utilize application).
If there are any bug with the filing (issues with filling out the forms, the description of goods, the specimen showing proof of use, or a conflict that the examiner finds, for instance), this can extend the timeline. It volition also require that you answer and often improve the application to right the errors.
For substantive refusals, this tin can require some legal statement to overturn the refusal. In all cases, I recommend having an attorney represent you lot. This can ensure that you're putting your best argument forward and not limiting your rights.
If your game trademark has been refused, I can help by analyzing the refusal and drafting an argument to try to get your trademark approved. Just click the button below to ready up a call!
Trademark renewals and other ongoing obligations
Once the trademark is registered, the fun doesn't stop at that place. You've got a several ongoing obligations, including renewals and policing/enforcing your mark.
Table of required trademark renewal filings
| Name of Filing | Instructions and Fee |
| Section 8 Affidavit of Use | Betwixt v and 6 years post-obit the registration date, a statement of continued use must be filed under Section eight.Filing fee: $100 per class, with an additional $100 belatedly fee if filed after, only inside 6 months of, the 6th ceremony. |
| Incontestibility Filing | After 5 years of continuous utilise, the owner of the mark can use for incontestability status. This is done in combination with the Department 8 affidavit above.Filing fee: $200 |
| Department 9 Renewal | Between the 9th and 10th ceremony of registration andevery 10 years following, an application for renewal must exist filed under Section nine. This is done in combination with an affirmation of connected use (the aforementioned equally the one under Department 8 to a higher place).Filing fee: $400 per class. |
Potential post-registration problems
Once yous've gotten your game trademark registered, you lot can exhale a sign of relief – for a minute.
Beware: there are several ways that yous can end up losing your rights if yous don't pay attending. Here are some of them.
The danger of "Genericide"
Becoming "generic."
In some ways, this is a practiced problem to have. However, it can result inthe loss of your trademark rights.
When a mark becomes and then well-known and associated with a production type, rather than a brand, it may be considered generic. As we discussed earlier, a generic mark is the to the lowest degree distinctive and not eligible for registration or protection.
Consider the case of the escalator.
It was a trademark owned past the Otis Elevator Company at one betoken, and its competitors had to utilise other names, such as Electrical Stairway and Motorstair. Withal, every bit time went on, the Escalator name became the generic term that people used to refer to these movable stairs.
The USPTO establish that even Otis themselves were using the mark in a "generic" way. They were stripped of their trademark rights, and suddenly anyone could refer to their moving staircases as "escalators."
Other examples of brands that suffered from genericide include Aspirin and Thermos.
Simply too look at Rough-and-tumble: Johnson & Johnson works difficult to ensure that they are called "Band-Help make bandages," or some like form, in lodge to go along the Ring-Aid mark from becoming generic. You tin hear it in their commercials.
Google, Velcro, and Kleenex also make Herculean efforts to fight genericide.
I said before (cheekily, of class) that this is one of those good problems to have. If y'all have a mark that is and so pop as to be synonymous with the product itself, you're pretty successful.
Still, once your mark becomes generic,others can capitalize on that goodwill and do damageto both your marker and your company.
"Naked" licensing
When a trademark possessor allows others to use their mark (but still retains ownership), this is known as "licensing" the trademark.
When licensing a mark, the owner has the obligation to police force the use of the marking to ensure that the use maintains the same standard of quality. Failure to do this could consequence in the loss of the exclusive rights granted by registration.
Otherwise, this is known as "naked" licensing and is a big no-no.
A properly-written licensing understanding will give the trademark owner the right to do this quality control. It will also give them a manner out of the agreement should the trademark standards not be maintained past the licensee.
So, when licensing out your trademark, avert "naked" licensing at all costs! I review many agreements that don't include this, so be certain it's in in that location.
Trademark "dilution"
When a trademark is used by another political party without permission, this is known as "dilution" of the mark. This can occur in 2 ways:
- blurring
- tarnishment
Blurringis simply the use of a mark by a party that is not the original source of the trademark. This "blurs" the source in the eyes of the consumer and lessens the force of the mark.
Failure to take legal activity in these casescould lead to counterfoil of the marking.
Tarnishment, on the other mitt, is the use of the marker by a third party in a way that is lewd, degrading or otherwise puts the mark in a bad low-cal. This could include involving the marking with sex activity, law-breaking or drugs that are not part of the original marking.
For example, a company creating adult novelty items using the mark would be an example of tarnishment.
As with blurring, failure to take action against a party who is tarnishing a markcould result in the loss of those rights.
Trademark Non-Employ or Abandonment
Lastly, one of the easiest ways to lose trademark rights is by simply not using the trademark.
Anabandoned marking allows others to begin using the trademark. More often than not, this requires an intent non to go along use of the mark and a certain menstruation of not-use.
3 years of non-use is considered abandonment, as far as courts are concerned.
After that, y'all'd have to prove that you actually did intend to showtime using the trademark once again and show that you've been taking steps to practise and so.
Remember,trademark rights are based in the use of that marking as a brand identifier. If a company is not actively using a mark or they are using it in a fashion that does not identify a make, this could put those rights in danger of being lost.
Policing - monitoring for infringement of your trademarks
One of the large responsibilities for a trademark owner is stopping anyone who is infringing on your mark.
If you, as the trademark holder, don't actively endeavour to stop others from using confusingly-similar marks, those rights may be lost. So this ways that a cornerstone of any visitor'south intellectual property strategy should exist a regular search of the Net, app stores and other software repositories for goods or services that could potentially confuse consumers.
If you catch them at the start and begin taking intendance of it soon, the cost of dealing with it can be much lower than if you permit the problematic usage persist.
There are a number of ways that y'all tin can stay alert to any possible infringement of your trademark:
- Regular Google and other spider web searches
- Regular app store and game platform searches
- Fix upwardly a Google alert for your trademark and similar words
- Do monthly checks of the USPTO's TESS database (trademark search) and the Trademark Official Gazette
- Encourage fans and followers to report infringement
- Pay a trademark watchdog service to alert yous to conflicts
About of those are free, while something like paying the service will cost you lot. For the free searches, stick an particular in your agenda every month to run through a simple checklist of searches.
One time yous systematize this process, information technology shouldn't be too hard.
If yous're looking to offload this monitoring, I offering a trademark monitoring service that volition evangelize you a monthly report on any potential infringement and competitors that pop up.
But wait – what happens when you lot find something?
Enforcement - going later on trademark infringement
Trademark owners have a few options to go after infringement of their marks.
I'll go through the most common here:
Step 1 – advice
For about game developers, paying the price of a trademark infringement lawsuit is generally out of the question. Lawsuits can finish up costing a ton of money and taking years to resolve.
That'southward why you usually desire todo everything you lot can to avoid litigation while nonetheless achieving your desired result.
Often, this result consists of 2 things:
- They end infringing on your trademark, and
- They pay you a licensing fee/settlement for their prior use of the trademark.
If you're just looking to cease them from using your trademark and believe that their use is innocent, information technology's possible to just achieve out to them and remind them of your rights.
And then ask them to stop.
This can piece of work well – information technology's non overly aggressive and, equally they say, "You lot catch more than flies with honey than you lot do with vinegar."
Pace 2 – If that fails, transport a cease and desist letter
If being dainty doesn't work, and they either ignore or rebuff your attempt to police your mark, information technology's usually fourth dimension to get the lawyers involved. When a client comes to me with an issue like this, our kickoff step is to typhoon a trademark cease and desist letter.
What is a cease and desist letter of the alphabet?
Information technology'south basically a letter that tells the infringer to finish what they are doing, or you lot volition have further legal activity. Depending on how prior interactions have gone, the tone can get from conciliatory to aggressive, and even to downright hostile.
A normal trademark finish and desist letter commonly consists of the following:
- An caption of who you are and what your trademark is
- A description of your rights in that trademark
- A description of how they are infringing the trademark
- A demand for them to stop using the trademark, to destroy whatsoever products that are using that mark, and to pay y'all for their utilize of the mark to date.
- The threat of further legal action, should they ignore your need.
For many game developers, a letter from an chaser that threatens to sue themcan brand them change their heed real quick.
This is because most pocket-sized devs don't have the money to even pay for lawyers to 1) review the letter and respond, or two) answer a legal complaint when they go sued.
What if they don't comply?
If the cease and desist alphabetic character doesn't piece of work, then it is fourth dimension to break out the big guns.A trademark lawsuit filed in federal courtwill really become their attending.
Filing and litigating a trademark infringement suit is not cheap. By and large, you have two options here:
- Finance it yourself; or
- Discover an attorney who will do information technology on contingency.
"On contingency" means that they will forepart the costs and legal fees, in exchange for a sizeable portion of your recovery. Usually, you don't pay anything unless they win. If they do win, then the fees and costs are taken out of the settlement or judgment funds.
Unfortunately, an attorney volition but take a contingency case if at that place is thepotential for an piece of cake settlement or a big recovery. The math just doesn't work out, otherwise.
So, if the infringer is a pocket-size company with no money, few attorneys would take that case on contingency. Similarly, the riskier the case or the more than nebulous the claims, the less likely it will be to find an chaser willing to take the case.
If you lot get to this point, I recommend discussing the case with a few different attorneys to become a sense of your one) likelihood of winning and 2) likelihood of recovery.
You can make decisions from there.
Conclusion – your valuable video game trademark
Y'all went through the trouble to create an awesome brand and trademark your game name. Protecting the value of that trademark is vital in order to go along those trademark rights. For assist protecting your game proper noun, contact a video game trademark lawyer to get started.
Set to talk? Use the push button below to ready up a costless consultation call to discuss your trademark issues!
Zachary Strebeck
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Source: https://strebecklaw.com/protect-video-game-trademark/
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