As I’m scrolling through my blog, I realized that I have yet to do a “what is a trademark” post. I didn’t plan for this post to be about that, so I’ll give you a one-sheet on it, and if you already know about this and want to learn how and where you should use the above indicators in your game and on your packaging, skip down.
Trademark 101
Who it protects: Consumers. Unlike copyright law, where the goal is to protect the authors of creative works, trademark law is designed to protect consumers from confusion. Trademarks are used to identify the source of goods or services, and so the primary person damaged by confusingly similar marks are consumers, who might be fooled into thinking they’re buying one thing, when in fact they’re buying something else. It’s merely a side bonus that the one who benefits from enforcing trademarks is the trademark owner.
What Can be Protected by Trademark Law?
Titles, logos, slogans, trade dress (packaging or décor), trade secrets, and some other product features. A trademark will generally last for as long as you use it in commerce and pay the renewal fees every 10 years (you have to police it and enforce it, however, to avoid it becoming generic).
Levels of Protection:
With copyright, there is a singular, high level of protection, so long as you meet the very low creative requirement. With trademarks, the distinctiveness of your mark affects the level of protection you can have against similar-looking/sounding trademarks. In order of least protective to most protective, trademarks can be:
Generic
(no secondary meaning) –a generic term refers to, or has come to be understood as the thing itself. Ibuprofen is a generic brand because that is what the drug is: ibuprofen. Advil and Motrin are trademarked brands of the product, although their patents ran out, so anyone can sell a generic brand of the drug.
Descriptive
Typically geographic and names; it conveys and immediate idea of the ingredients, qualities, or characteristics of the goods. Example: Crispy Rice, as opposed to Rice Krispies®.
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Suggestive
This kind of mark requires imagination, thought and perception to reach a conclusion as to the nature of the goods, such as ‘Greyhound’ for transportation, or ‘Q-TIPS’ for cotton-tipped swabs.
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Arbitrary
Typically a common word in the dictionary which is used in a meaningless context.
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Fanciful
Typically made up words that acquire secondary meaning over time.
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Federal Trademark Registration:
You need to have sold goods or services in interstate commerce (i.e. over state or country lines), or be capable of proving such sales within 6 months of registering the mark. Otherwise, if you’re only dealing locally or only in your state, you have no need for federal (national) protection, because you’re not going over state lines. Also, if you’ve never sold anything with legitimate packaging, for a legitimate price to a legitimate customer (i.e. selling shampoo in an old water bottle to your grandmother for a quarter), then you might not qualify for TM registration because you’ve not created a clear source of goods for an actual customer.
TM vs ®
TM/SM
(TM = Trademark, i.e. products and SM = Service Mark, i.e. you’re selling your services)
These are used next to a logo, slogan, or title when someone is intending to use that logo, slogan, or title as trademark, but they haven’t yet obtained an official trademark registration. It’s used as a warning to others that the logo/slogan/title is being used as a brand name, not just as decoration. The TM use/warning provides some limited geographical protection, but nothing necessarily on a national/international scale. For that, you need to register.
®
This means that the owner has acquired official, federal registration, and has all the rights to enforce the use (sue for infringement) of their mark against anyone else using it.
Where to Place Your Trademark…Marks
One of the most valuable assets your company will have as it grows your brand will be its trademarks. They will require monitoring, policing, and enforcement in order to maintain their status, because in the U.S., trademark law, unlike copyright law, is a “use-&-defend-it-or-lose-it” system.
By way of example, some “lost trademarks” (those that became generic through general and thereby improper usage) include escalator, corn flakes, and dry ice. If your trademark becomes generic, anyone can use it because the word or symbol no longer indicates to the public that the products were made, sold or supplied by you. This is called “genericide.” Kleenex, Band-Aid, Hula-Hoop, Rollerblad, Jacuzzi, Frisbees, and Scotch Tape all jumped into the ring with this particular foe…some won (via expensive marketing/branding campaigns), but some didn’t.
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To prevent a mark from becoming a generic term, you should:
- Properly designate and use the mark as a trademark: ® for registered marks or “TM” for non-registered marks intended to be used as trademarks.
- Distinguish the mark in written text (see immediately below)
- Use the mark as an adjective; (also below)
- Monitor and enforce against other’s usage of the mark.
Distinguishing the Mark.
A printed trademark should not only be accompanied by the appropriate designation of ® or TM, it should also be distinguished from other text in the game/ad/website in some other manner. Some ways of distinguishing a mark are to:
- Capitalize all of the letters of the mark: AWESOME VIDEO GAME
- Use a special type size or typeface: Awesome Video Game
- Set off the mark in quotes: “Awesome Video Game”
Distinguishing a mark from other text shows precisely what characters make up the trademark and promotes brand recognition by heightening consumer awareness of the mark.
This is another reason to consider creating a logo for your game. Adding distinction to your choice phrase “[Your Video Game Name Here]” will help with brand recognition and strengthen your claims against infringers. Also, having a singular logo for your game, at least to start, will streamline the appearance of all of your games and make them look more related and cohesive than having different fonts and colors for each game, spin off, sequel, or update.
This doesn’t mean you won’t still be protected for those kinds of uses. However, say that you game caters to young kids who don’t yet know how to read–you’ll notice (if you Google it) that Dora the Explorer’s name always looks the same across all products and promotions, so that kids who watch the show will likely recognize her logo as being from the show they enjoy. You want that same kind of sight recognition.
When to use the TM or ®
Generally, the use of TM ® is not necessary for every occurrence of a trademark or service mark in an article, press release, advertisement or on a website, etc; however, at a minimum, this identification should occur at least once in each piece, either the first time the mark is used or with the most prominent use of the mark. When in doubt, err on the side of “over-marking.”
- ® – usually at the top or bottom right of the phrase
- TM (trademarks) or SM (service marks) for marks that are not registered.
- This phrase: U.S. Pat. & Tm. Off. (if registered). Usually combined with the dagger symbol: † or an * to denote something is stated in a footnote. Or, if the mark is not registered, “A trademark of X Company.”
Here’s an obvious example of the ®, used at the bottom of the image.
But Marvel uses it at the top:
It doesn’t really matter where you use it, but companies typically place it at the end of the image/word so that everything before it is identified as being protected under trademark law.
If you have a combo situation where you have one registered mark but another mark you’re using and haven’t yet registered, you can do this:
Utilizing “TM” or “SM” to Your Advantage
The “TM” and ® symbols put people on notice that the name/image/brand is being used as a trademark. Notice that your mark(s) are intended to be used as a trademark is key to recovering against infringers for both registered and non registered marks. Without giving people notice that you’re intending to use the phrase/image/brand as a trademark, it is very difficult to recover against infringers.
Note that “®” is a statement of fact: This mark is registered.
Use of the “TM” symbol is a statement of opinion, not fact: It’s being used as a brand name, but doesn’t have the same protections as ®
It is essentially a statement that: “In my opinion, I think this is a valid trademark.” This means that you can use the “TM” on just about everything, but also that even if you do, it will not necessarily guarantee you registration on the image/word/phrase later one with the Patent & Trademark Office. It usually helps with generating brand awareness, which can help with registration, but it is by no means a guaranteed route to registration.
Use of the TM serves as a “no trespassing” sign to ward off competitors who may consider adoption of a similar mark. It may help to designate on a label exactly which symbols or words you consider to be a trademark. While use of “TM” adjacent to a designation does not prevent another user from ever challenging your use as not being a trademark, by doing so, they admit that they were on notice of your intent to use it as such. This helps rebut any argument by an infringer that “I didn’t know that they considered that to be a trademark.”
Enforcing Your Mark:
a Necessary Evil
To maintain all of your trademark rights, you must be vigilant in policing others’ use of your trademark(s), including if they use your mark with your permission.
(1) Third Party Use of your Mark (Licensors –games and toys included)
If you manage to make a deal with someone who wants to license your game (i.e. publish your game or parts of it with your permission, and a contractual arrangement for that use), you’ll want to provide your licensors with a guide on how to properly use your trademarks–both text and logos, as their improper use could eventually lead to your brand becoming generic (and then anyone can use the name).
Many trademark owners advertise to promote correct usage of their marks and send “press-kits” to media copy editors instructing them on correct usage of the term. You will want to spot-check print media and toy packaging that is likely to contain references to your mark to ascertain whether the mark is being used correctly. Anytime an incorrect usage is found, you should contact the licensor and instruct them on how to properly use the mark.
Additionally, there is another potential issue when having other developers create games with or for you: dilution. It’s the pathway to genericide.
If you have someone working on your game, you’ll want to monitor their progress and determine whether or not their work meets your quality standards–i.e. avoiding this:
If someone produces a really poor quality game, claiming it was made by your company, this can lead to dilution of the trademark, which reduces the strength of your arguments against others’ uses of it.
(2) Infringement of the mark
Let’s start with an example game name: World of Warcraft.
You will want to take measures to stop or prevent others from infringing your mark(s). Infringement occurs where a junior user (someone who uses the mark after you) adopts a mark that is likely to be confused with a senior user’s (your) mark. For example, if another mobile game developer created a game called “World of Marcraft,” you’ll want to step in with a cease and desist letter to stop them from using a confusingly similar name. The new game/toy/product doesn’t even need to sound the same – it could be something like “World of Battle Plans”, but if it’s visually similar or appeals to the same target market, then you probably have the right to step in and tell them to stop or to contest their registration at the USPTO, and you will want to do so as a way to protect your mark from being confused with another developer.
A trademark is given a greater breadth of protection under the law if similar marks are not in use by third-parties. This means keeping down the number of confusingly similar marks or competitors by contesting their right to use confusing similar names.
Periodic Monitoring Will Assist with Enforcement
Depending on the size of your company, popularity of your brand, and depth of your financial resources, you may want to either do–or hire someone to do–searches to monitor your trademark(s) and anyone who is either using it improperly or using marks that are confusingly similar. Below are some ways to do it on your own, and the last suggestion would be to pay for a service. Paying for a service becomes more important the larger your IP portfolio grows and the more marks you accrue.
- Google AdWords and AdWords Keyword Planner (Formerly Known as the Keyword Tool)
- Both of these services by Google allow users to search for terminology (the first in relation to online advertisements, the second in relation to web traffic). Start by searching AdWords to find out if anybody is using your trademark as a way to target, reach, and connect to more people online. This could be a first sign that someone may be infringing on your trademark.
- Next, use the AdWords Keyword Planner. By plugging your trademark into this search tool, you can see how many people are searching for your trademark and what results they are finding.
- While neither of these tools will point you directly to the people infringing on your trademarks, they may make you aware of potential infringements. The next step would be to dig deeper and root out those using your marks for their profit.
- Google Alerts: Google will grab items from all over the web – including news, blogs, and websites – and email you results containing a match for your trademark. You can be alerted daily, weekly, or “as it happens.” This is a wonderful resource. If you have a name with multiple words, consider using quotes. Also consider creating several alerts with variations of your trademark(s) in spelling and spacing (and singular vs. plural).
- Web Searches: Search a variety of websites for variations of your trademarks. Set a “reminder” in your task or calendar program to do this monthly.
- Industry search: Make a bookmark list of several main online resources in your industry. News sites, publications, blogs, etc. – any site with comprehensive and popular coverage of the relevant industry. Search on those main sites for your trademarks quarterly.
- USPTO: Free TM searches at the USPTO (TESS). Search quarterly for any new applications that might be infringements of your trademarks. Consider variations in spelling, sound and spacing in your searching to capture names they may not be identical but very similar.
- Review the Trademark Register: You can monitor more recent applications by checking the trademark register. (click TMOG if the previous link didn’t work)
- Username search:Check for usernames containing your trademarks that are registered and used on the major social media and other websites.
- Pay a reputable company for monitoring services: such as CompuMark
Once you learn of a possible infringement, unauthorized use, or cybersquatting, you may want to speak with a lawyer about how to best proceed.
Warning: any email or something that looks like a bill from a company (even if it claims to be the USPTO) requesting fees for trademark-related services should not be trusted or replied to without first having a lawyer look at it. There are a lot of scammers out there who try to look official but are just rip-offs. The World Intellectual Property Organization (WIPO) has a page dedicated to updates on these kinds of scams.
Registering Your Mark(s) In Other Countries
As you expand the distribution of your game, and especially if you sell or license merchandise to be sold in other countries, you will want to consider applying for a trademark registration in those countries so that you can more effectively enforce your rights against infringers. This is especially true in Australia and Europe, although some countries may be more difficult, such as in China.
Choosing Names for New Games
If you are developing a new series / brand of games and your goal is to create many other games, either on your own or with others, you’ll want to at least consider a naming strategy for your burgeoning franchise.
Each new game or spin off could be a new brand in the same way that “Angry Birds” birds is a brand which has many different games under its flagship name, i.e. “Angry Birds: Rio,” “Angry Birds: Star Wars,” “Angry Birds: Space” etc.
Another option would be to think about it as the “Ville” games from Zynga that include FarmVille and CityVille or the “With Friends” series of games (the most popular being “Words with Friends).
Overall, for each developer with their own approach/engine/style to making a game, you’ll potentially want to brand each as a “new” series. To make your brand cohesive and make you look like you know what you’re doing, having a theme in mind when naming is a great idea.
Each franchise-like game, depending on its brand strength, could be registered as a trademark to:
(1) make the licensing process much more straightforward
(2) secure a valuable asset for the company and
(3) prevent others from using your keywords to compete with you or to trick users into downloading their programs when they should be downloading yours.
There are many other reasons, but those are three of the most straight forward ones.
I hope you’ve learned something useful with this–thanks for reading!