Game Attorney Q&A #01
by Tom Buscaglia

This is the first of a series of responses to business and legal questions that I will be doing every month or so on GameDev.net. I hope to provide some useful information for developers and those interested in becoming developers concerning legal and business matters of interest. And, like any good lawyer, I will clarify my responses in advance by saying that this series of articles is for informational purposes only and, while relating to legal matters, do not constitute formal legal advice of counsel. So, remember that this is general advice and it's always best, when possible, to ask an attorney directly for any specific questions you have. That said, I look forward to the series and will hopefully deliver some interesting and valuable information to everyone and maybe we'll have a little fun in the process as well.

Our first question comes from Aaron Miller as follows:

Question: Trademarked names for indie games
Aaron Miller

I am in the process of investigating the trademarking of game names for business use and would appreciate any advice you may have. I understand that one can use a name in business and have it protected even without going through the process of registering it with the US Patent Office, but that doing so provides extra legal protection against infringement. However, as a small independent developer in the early stages of creating a title, I would like to stave off the fees for registering a mark until absolutely necessary (particularly any recurring fees as the game is being developed). Would you consider it more wise to register the mark now or go ahead with using the name (thus building up recognition but saving money) and then register the mark when the game ships?

Answer:

First let's have a little background discussion about Trademarks. U.S. Trademarks are governed by Federal as well as State laws. The Federal laws governing trademarks are set out in the Lanham Act and most State laws are modeled after it. The basic principles behind the Lanham Act and similar state trademark laws that are modeled after it is unfair business practices. What's the relationship between trademarks and unfair business practices? Well, the core issue is always whether one business entity is trading on the good will and reputation of another. The trademark laws were formed in order to protect a business' good name in the marketplace from someone else using it, or a name substantially similar to it, to their business advantage. The key concept is understanding an infringement analysis is whether there is a significant likelihood of confusion in the marketplace regarding the origin of the goods or services.

Technically, "Trade marks" apply to goods and "Service marks" apply to services. However, for purposes of our discussion we won't bother with and just refer to all these things as Trademarks. Trademarks can apply to any goods or services in commerce. "In commerce" means something that is being sold, rented, leased, licensed or when someone plans or intends to do those things. So, unless your trying to sell your dog, you can't trademark your pet's name unless it happens to be Lassie. They also apply to more than just names. They can apply to logos, design elements, short phrases, even colors (Kodak yellow)and sounds (the throaty sound of a Harley Davidson engine). Basically, anything that can be used to identify a good or service.

The operative fact that establishes the existent of the trademark is the use of that name, logo, or other identifying mark or characteristic in commerce to identify a specific good or service. And, since it is the use in commerce of the trademark that establishes its viability, the actual registration of the trademark is secondary to its viability. Moreover, if a trademark has already been used by someone without registering it, someone else who comes along later to register that same mark, or one substantially similar to it within that same business category, will most likely be prohibited from doing so by the trademark examiners in the U.S. Patent and Trademark office.

The Trademark application process involves the submission of an application which is then reviewed by a government attorney (called an "examiner") in the U.S. Patent and Trademark Office. The examiner verifies that the applied for Trademark is appropriate. There are two main reasons an application will be rejected.

The first, whether the name or the words or terms involved are merely descriptive. For example, one could not trademark the term "Dominos" to describe dominos. However, the term "Dominos" could be used as a trademark for, say, a pizza company. Trademark examiners will go a long way to find a mark descriptive. For example, I was registering a mark for a friend who does shark dives in the Bahamas. The mark was "Green Marine." Our examiner decided it was a descriptive mark and wanted to reject it. The reason? Well according to the examiner, one of the meanings of "Green" is "having to do with to ecology" and "Marine" means "water." And since these shark dives studied the ecosystem surrounding the sharks, the proposed mark as, in his opinion, descriptive! We could have fought about it and eventually won a listing on the primary registry. But it was easier to just accept registration on the Secondary register which protects your use, but does not allow for enforcement against third parties, for now and seek a listing on the Primary registry which allows for more aggressive enforcement actions, in a few years after there had been no completing uses.

The second controlling issue is whether another person or a company has used that name, or a name significantly similar to it, to identify their goods or services in a similar or identical class of goods or services. You see, a Trademark is limited to a specific class of goods and services that have been established by the Patent and Trademark Office. So, for example, the word Domino is a Trademark in conjunction with the sugar company but it's also a Trademark for a pizza company and another company that makes software. None of these trademarks infringe on each other because there is no potential for confusion in the "marketplace." Why? Because they trade in different markets. No one thinks that Domino Sugar is made by the same people who make Domino Software or Dominos Pizza.

Ideally, when someone wants to trademark a term an extensive and comprehensive search is done of both the federal and state trademark databases as well as various publications such as newspapers and magazines, phone books and the internet to see if anyone else has either used that specific term or terms that are similar to it in the same class or related business areas. Of course, these searches cost hundreds of dollars and the time it takes an attorney to review them and provide an opinion letter can easily add up to a few thousand dollars before the application for the Trademark has even been made.

So, as Aaron asks, what is a "small independent developer in the early stages of creating a title" to do? First of all, establish through a comprehensive online search that the Trademark you intend to use is clean is a good place to start. The last thing you need to do is invest a lot of time and effort into a Trademark and then later learn that it's already tied up by someone else. You certainly wouldn't go out and make a game and call it "Dooms" because you would realize that there is a big problem there. Well, the problem may not be as obvious. But if the term or terms similar to it are already in use in commerce you are still going to have a problem.

However, once you have gained sufficient comfort that the name is clean the best thing to do is immediately start using it publicly in conjunction with your product. This can be easily accomplished through the use of the name that you intend to use as an identifying Trademark for your game on a website and as soon as possibly come up with some sort of commercial product that you can attach to it, or at least start advertising it as a coming soon. Certainly, securing a domain name of your Trademark gives you a huge jump in being able to establish your prior use of the name in commerce and would, most probably, eliminate the possibility of any competitor intentionally or even inadvertently being able to obtain a trademark on your name.

Then, when your game is done and you have some revenue in, go ahead and do the formal registration. As Aaron so deftly pointed out, the real value of the registration is not so much in securing the right to use the name as it is in being able to protect your Trademark from infringers in Federal Court. So, on this one I agree with Aaron that the cost-effective approach of using the name and establishing the fact of your prior use in a public domain is really all that's going to be necessary in order to put yourself in a position where, when circumstances and revenue warrant, the formal registration can easily be obtained.

Until next time - GL & HF!

Tom B

BIO

Tom Buscaglia - Lawyer, Game Industry Evangelist, and Hardcore Gamer.

Tom Buscaglia is an attorney practicing technology law in Miami, Florida. In addition to obtaining his Law degree from Georgetown University in 1985, he holds a B.A. degree in Philosophy from S.U.N.Y., Buffalo, with honors in Phenomenology and the Philosophy of Law. Tom is a principal in the law firm T.H. Buscaglia and Associates in Miami, Florida, where he practices law for a living and plays computer games and philosophizes on the side. Tom’s firm’s web site is www.gameattorney.com.

Tom is dedicated to the computer and video game industry, assisting developers in all aspects of their legal and business needs and has been representing game developers since 1991. Tom was the main business and legal presenter at the 2004 Indie Game Conference in Eugene, Oregon, speaking on Effective Developer Contracts as well as Legal Issues to Consider When Starting a Game Development Studio. He presented again this year at the Game Developer’s Conference in San Jose on developer/publisher deals and contracts in a presentation called The Negotiation and a round table discussion on the Publishers "Rules of Acquisition". Tom was on the Game and Simulation panel at the The Interservice/Industry Training, Simulation and Education Conference (I/ITSEC) and was the Keynote Luncheon Speaker at the 2003 Summer Simulation Multiconference in Montreal, Canada, sponsored by the Society for Modeling and Simulation speaking on The Game and Simulation Industries: Convergence or Collision. He wrote the chapter entitled "Effective Developer Contracts" for the book, The Secrets of the Game Business. He is a contributor to numerous International Game Developers Association, Business and Legal Committee, publications including: the Publisher Contract Walkthrough white paper, on Game Documentation and Trade Show Demos and Termination Provisions; the Game Submission Guide on Legal Issues and the soon to be released Intellectual Property white paper on IP Contracts Independent Developers Sign. Tom published a series of online articles on www.GIGnews.com to assist "rookie" game developers on the legal issues they should consider when starting out in the game industry entitled Initial Legal Issues, What are these games made of…legally speaking and Completing your Contract Arsenal. Tom was a presenter at the 2002 Game Developers Conference, in San Jose, California, on the topic of "The Phenomenology of Game Design". Tom has been a guest lecturer at Full Sail in Orlando, Florida, giving a presentation to the Game Programming students on Intellectual Property and what to look for, and look out for, in their first employment agreement.

Tom is the Founder and Executive Director of Games-Florida, a non-profit committed to building the Computer and Video Game development industry in Florida by bringing Florida to the Game Development industry and bringing the Game Development industry to Florida. www.games-florida.org He also sits on the Advisory Board of the Digital Media Alliance of Florida www.dmaflorida.org recently participating in a DMAF Panel Discussion with Florida game industry leaders at Full Sail in Orlando on The Future of the Game Industry in Florida." Tom has been the Chapter Coordinator for the South Florida Chapter of the IGDA since its inception, and is a moderator for the Business and Legal forums on IGDA web site, www.igda.org.

As FaTe[F8S] Tom is the founder and Supreme Warlord of FaTe’s Minions, an online gaming "clan" that has been competing in various online competitions since January, 1998. www.f8s.com As a "hard-core" gamer, Tom plays online on a regular basis and has a gamer's appreciation and understanding of the game industry.

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Date this article was posted to GameDev.net: 10/25/2004
(Note that this date does not necessarily correspond to the date the article was written)

See Also:
Game Law
Game Law