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The authors explore how game developers can use trademarks to protect themselves and their intellectual property in the increasingly-competitive video games industry.
By Eric Ball and Nicholas Plassaras
Eric Ball and Nicholas Plassaras are attorneys at Fenwick & West LLP. Ball focuses his practice on trademark litigation and Trademark Trial and Appeal Board disputes and has substantial experience in copyright and complex commercial litigation matters. He has successfully defended gaming and social media companies—both startups and established companies—in international trademark disputes allowing for their international expansion. Ball earned his J.D. from University of California, Berkeley, School of Law. He can be reached at firstname.lastname@example.org. Plassaras focuses on intellectual property litigation and counseling, with an emphasis on copyright, trademark, false advertising, and right of publicity disputes for technology companies, particularly companies in the gaming industry. He received his J.D. from the University of Chicago Law School. You can contact him at email@example.com.
At the center of every successful video game franchise lies a strong and well-guarded brand. Those brands are reinforced by their trademarks—the words and symbols that serve as badges of quality, expertise and reputation.
A “trademark” can be a word, symbol, sound or product package, used to identify the source of a company’s products and to distinguish those products from the competition. It includes the name of your company ( e.g., “Nintendo”), the name of your game or franchise ( e.g., “Pokemon”), the game’s catch phrase or tagline ( e.g., “Gotta Catch ’Em All!”), your logos or your app icons.
Owning a trademark generally means you have an exclusive right to use that mark with certain types of products, such as video or board games. This exclusivity allows you to build brand recognition because consumers associate your mark with your games. And unlike copyrights or patents which expire, trademark rights in the U.S. can last forever. Trademarks are, therefore, a critical component of any game developer’s intellectual property portfolio.
Picking a protectable trademark is not as straightforward as it might first seem. Game developers often formulate an idea of what they want to name their company or game early in the development process. But before getting too attached to a particular name or a logo, it is important to understand what differentiates a strong trademark from a weak one. Investing in a weak mark can leave you susceptible to unwanted legal challenges, tight competition, and a host of other problems that detract from your ability to develop and support great games.
“Distinctiveness” is the touchstone of trademark assessment. The more unique your mark is, the more it distinguishes your game from a competitor’s, and the stronger your mark becomes. Courts have developed four distinctiveness classifications, from most to least distinctive. Understanding where your marks fall along this spectrum of distinctiveness is key to understating how protectable your brand name, game titles and slogans will be going forward.
Arbitrary marks consist of common words or terms used for something other than its literal meaning. For example, “Valve” or “Bungie” may be considered arbitrary in the trademark sense because the ordinary meanings of these words have little to do with the products they sell. Fanciful marks consist of word or terms that have no independent meaning. Marks like “Pokemon” and “Nintendo” probably fall into this category because these words have no meaning apart from the brands they have come to represent. Both arbitrary and fanciful marks are considered inherently distinctive and offer the strongest trademark protections.
Suggestive marks require consumers to exercise imagination to determine the nature of the product. A suggestive mark does not immediately describe the products or its features, but may suggest or allude to them. Psyonix’s “Rocket League” may be suggestive in the sense that it is used for a game where players use rocket-propelled cars to play a gravity-defying version of soccer. Board games often employ suggestive marks to allude to the gameplay of the game without describing the game itself. For example, games like Hasbro’s “Clue!,” DaVinci’s “Bang!” and Z-Man Games’ “Pandemic” are arguably suggestive because they allude to the games’ respective objectives—giving clues to identify a murder; bandits and sheriffs shooting at each other in a spaghetti-western setting; and curing outbreaks of diseases. Like arbitrary and fanciful marks, suggestive marks are considered inherently distinctive and are generally afforded strong legal protections.
As the name suggests, descriptive marks directly describe a product, its characteristics, its elements or its qualities. The classic game “Duck Hunt” may be considered descriptive because the name describes the game’s characteristics of hunting virtual ducks. Descriptive marks are presumptively non-distinctive and, therefore, entitled to limited, if any, protection. This reality is often counterintuitive to marketing teams, who may be tempted to pick a brand name that describes their company’s game because it helps new customers understand what the game is. But the resulting mark can offer weak protection, allowing competitors to sell competing products with very similar names.
Trademark law, however, does protect descriptive marks that have acquired distinctiveness—that is, if consumers have come to associate the product with a single source. For example, Coffee Stain Studios’ 2014 cult-hit “Goat Simulator” may, at first blush, appear to employ a descriptive mark. After all, the title describes a game in which players control a digitally rendered goat. But given its popularity among fans, there is an argument that the “Goat Simulator” mark has acquired sufficient distinctiveness to warrant trademark protection. Similarly, a board game like “Mouse Trap” employs an arguably descriptive mark. But the title may still be protectable if consumers have come to associate it with a single company. Proving acquired distinctiveness, however, can be an uphill battle.
If the dividing line between a suggestive mark (protectable) and a descriptive mark (not protectable without acquired distinctiveness) seems confusing, you are not alone. Courts regularly grapple with this distinction, in part because it largely depends on how the mark and the associated products are framed. “Grand Theft Auto V,” for example, allows players to steal in-game cars, but it is not a game about just stealing cars. Moreover, “Grand Theft Auto V” is not descriptive of a video game product generally. These distinctions, while subtle, can affect the strength of the marks. Effective trademark counsel will help position your trademark on the right side of the suggestive/descriptive divide.
Generic terms are often synonymous with a product or service in question and, therefore, can never serve as a trademark. For example, the “D Pad” is commonly understood in the gaming world to refer to the plus-shaped button on a game controller that players use to input directional controls. Given its ubiquity, it is unlikely you could assert trademark rights in a mark like “D-PAD” for a video game controller. When someone adopts a generic mark, competitors can and most likely will adopt similar marks.
Once you have settled on your mark, it is important to attempt to clear the mark for your company’s intended use. It can be frustrating and a potential financial setback to launch a product only to find out that another party owns superior rights in the name of that product and is prepared to enforce those rights in court unless you change the mark. Searching for similar marks before you adopt the mark you have chosen is the best way to guard against this predicament.
U.S.-based searches should include registered trademarks, trademark application and trademarks that are unregistered. Domain name queries, mobile app store scans and other web-based searches are helpful ways to supplement your due diligence, but are not broad enough on their own to provide adequate clearance. If you expect your game to be played or your company to be advertised overseas, you should also conduct clearance in key international markets.
Because trademark rights stem from use in the U.S., registration is not mandatory. But registration comes with important benefits when it comes to enforcing your rights. Registration provides nationwide notice of your right to use a mark. Registration can also create favorable evidentiary presumptions regarding your ownership of the mark and its validity. Having a trademark registration can serve as a block against competitors’ attempts to register a similar mark. And trademark registrations can be powerful sources of leverage before litigation in convincing a competitor not to use a mark similar to yours.
Creating a fun game can be difficult, but protecting it does not have to be. Selecting legally enforceable trademarks and understanding the risks associated with their use are two easy steps you can take to guard your brand. Once secured, those marks provide a strong foundation for your marketing strategy and help protect you from others who might seek to capitalize on your success, leaving you to focus on what matters most: making great games.
Copyright © 2017 The Bureau of National Affairs, Inc. All Rights Reserved.
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