I need help on name similarities and chance of confusion issues

[erictruong]

What is the name of your state (only U.S. law)? Texas


Hi, we are a small group of start-up that looking to produce our first role-player game for PC.

We are halfway done with the designs of our fantasy world. However, we have not decide on the name of this fantasy world.

We plans that the game title will be "Legends of (Whatever the name of the fantasy world is).

Ex: If we decide to named our world "Zuda", then the game title would be "Legends of Zuda".

After I did research on other titles and brands. I found out that all 4 of our preferred names is somewhat similar to 5 other existed brands.

I wish you could give some specific tips and opinions on those 4 names that we have.

Our 1st option is the word "Moona". The existed brand that we are unsure about is the "Mana" franchise, including the game "Legend of Mana". It's also a role-player game. This trademark is federal registered. This is a well-known brand.

Our 2nd option is the word "Ankania". The existed brand is "Realms of Arkania". Also similar type of game and gentre. However, their trademark federal registration is now "dead". This is not a very popular brand.

Our 3rd option is "Zuda". The existed brand is the "Zelda" and "Zuma" franchise, including games like "Legend of Zelda", "Zuma" and "Zuma's Revenge!". "Zelda" is a famous brand and the trademark is federal registered. Zelda is also a role-playing game. "Zuma" is an established brand and the trademark is federal registered, but is not a role-playing game.

Our 4th option is "Everland". I couldn't find any similar existed brand for game market. However, "Neverland" is a well known fantasy world that associated the famous character Peter Pan from a novel in 1902. Now it considered a public domain, but I'm not so sure since there are many existed works associated with Peter Pan and the name "Neverland". This name is very well known, but there is no video game with this name in the federal registered trademark database.

I wish to know your opinions on what option is the riskiest and what option is the safest, as well as the degree of similarities, the chance of confusion from casual people.

 

[quincy]

What is the name of your state (only U.S. law)? Texas


Hi, we are a small group of start-up that looking to produce our first role-player game for PC.

We are halfway done with the designs of our fantasy world. However, we have not decide on the name of this fantasy world.

We plans that the game title will be "Legends of (Whatever the name of the fantasy world is).

Ex: If we decide to named our world "Zuda", then the game title would be "Legends of Zuda".

After I did research on other titles and brands. I found out that all 4 of our preferred names is somewhat similar to 5 other existed brands.

I wish you could give some specific tips and opinions on those 4 names that we have. ...

I cannot tell you which of the options you listed are the riskiest and which are the safest. For that you will need to consult with an IP attorney in your area who can do a personal review.

That said and in a most general sense, it is always best to avoid choosing as an identifier for your business/product/service any trademark that looks like or sounds like another trademark (especially a registered or famous trademark).

This is not necessarily because your trademark would be judged by a court to be infringing on the rights of another trademark holder but because another trademark holder might object to your use to the point where it takes a court to judge whether your trademark is infringing or not.

As soon as you have another trademark holder objecting to your choice of a trademark, it can become a very costly problem for you.

There is really no way to tell in advance how similar one mark must be to another to be too similar. There are cases to review and court decisions to use as guidelines but each case will be judged on its own merits. Consumer confusion is what trademark law centers on, however. The purpose of a trademark is to distinguish one product or service from those of all others, so consumers will not be confused as to the origin.

Following is a link to one case (AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 9th Cir 1979) that goes over the factors a court will look at when deciding similarity of marks: https://cyber.law.harvard.edu/metaschool/fisher/domain/tmcases/amf.htm

I recommend you choose a trademark that is nothing at all like any trademark that is currently in existence. That is definitely the legally safest option.

You are smart, by the way, to be considering the legalities surrounding trademark choice now, before it potentially becomes a legal headache for you.

Good luck.

 

[erictruong]

I try to come up with names that look nice and easy to remember, but it seems like everything are similar to everything. Nowadays it's easy to find names that are not identical, but it's almost impossible to find fancy names that are not similar in some ways.

We have been thinking about the last resort: Using general words that can't be registered. But we hope that we don't have to settle for that. Our plan is for the name of this fantasy world to become a brand for the game series.

 

[quincy]

I try to come up with names that look nice and easy to remember, but it seems like everything are similar to everything. Nowadays it's easy to find names that are not identical, but it's almost impossible to find fancy names that are not similar in some ways.

We have been thinking about the last resort: Using general words that can't be registered. But we hope that we don't have to settle for that. Our plan is for the name of this fantasy world to become a brand for the game series.

I personally am not fond of the "general words" option, but it is certainly an option.

You could go the "Microsoft" route and pick two unrelated words and stick them together to form a new word (a portmanteau word). Or you could go through the dictionary to find unusual words. Or you could just make up a word (like Kodak did). Or you could potentially look at foreign words (but, with the foreign word option, you have to carefully check the definition - companies have had problems with unintentionally choosing foreign words with meanings that are objectionable in the country of origin).

What you are struggling with, though, is what many struggle with. It is hard to put out of your head names already chosen by others to pick something that is unique to you alone.

I wish you good luck with your game/game series, erictruong.