Trademark on our game

[jnagle]

I am a small developer working on a mobile game for iOS and Android. Having been a game developer for 20 years, I really feel our concept is strong and will do well in the marketplace.

We have chosen a name that is absolutely perfect for this game, it's very simple, and the domain name was available though we paid several thousand dollars for it as a premium name.

During a trademark search, however, we discovered that the trademark for our name was already granted to another company six years ago. Looking on the website for the company, they have a conventional pencil and paper game of the same name, but no electronic version at all. And the concept itself is quite different.

Furthermore although their game can still be bought on Amazon, it looks very much like a dead product... it appears they have not sold any significant numbers in the last six years. The company is actually a mom-and-pop operation running out of their house. On Amazon, it's been on there for six years with no reviews and two copies of the game still in stock. They have one low quality marketing video that was done six years ago also.

So first question: is there a case to be made for brand confusion given that we are both selling a game, even though they're completely different concept and one is conventional versus digital?

Second, is it possible to contest the trademark if the product is no longer being actively promoted, the trademark holder does not own the domain name, etc.?

I appreciate in advance any and all advice, thank you!

-John

 

[adjusterjack]

So first question: is there a case to be made for brand confusion given that we are both selling a game, even though they're completely different concept and one is conventional versus digital?

Yes.

Second, is it possible to contest the trademark if the product is no longer being actively promoted, the trademark holder does not own the domain name, etc.?

Anything's "possible" but my guess is that you will lose and end up spending a barrel full of money by the time you lose.

What on earth ever possessed you to spend thousands on a domain name BEFORE doing the trademark search?

Yikes.

Anyway, a potentially less costly route is to contact those people and buy out the rights to their game.

Just make sure you hire a lawyer to handle that deal for you lest you mess things up even worse.

 

[STEPHAN]

You could buy their trademark ...

 

[quincy]

I am a small developer working on a mobile game for iOS and Android. Having been a game developer for 20 years, I really feel our concept is strong and will do well in the marketplace.

We have chosen a name that is absolutely perfect for this game, it's very simple, and the domain name was available though we paid several thousand dollars for it as a premium name.

During a trademark search, however, we discovered that the trademark for our name was already granted to another company six years ago. Looking on the website for the company, they have a conventional pencil and paper game of the same name, but no electronic version at all. And the concept itself is quite different.

Furthermore although their game can still be bought on Amazon, it looks very much like a dead product... it appears they have not sold any significant numbers in the last six years. The company is actually a mom-and-pop operation running out of their house. On Amazon, it's been on there for six years with no reviews and two copies of the game still in stock. They have one low quality marketing video that was done six years ago also.

So first question: is there a case to be made for brand confusion given that we are both selling a game, even though they're completely different concept and one is conventional versus digital?

Second, is it possible to contest the trademark if the product is no longer being actively promoted, the trademark holder does not own the domain name, etc.?

I appreciate in advance any and all advice, thank you!

-John

jangle, what is the name of your state or, if not in the US, what is the name of your country? Trademark laws vary in substantial ways from country to country and the different states in the US also have laws that address trademark disputes.

A domain name when it is registered on its own confers no trademark rights - but if a domain name uses another's trademark in its name, the trademark owner can sue if the domain name confuses consumers or the use of the domain name dilutes the value of a famous trademark. If the domain name registration is disputed, the trademark owner can wind up owning your domain name.

If the name you want to use is a registered trademark, you could be seen as infringing on the rights of the trademark holder and you could be sued for infringement. This potentially can depend on where the mark is registered (e.g., in the US or in another country). If the mark is registered and has been registered for six years, the rights to the mark are pretty strong.

If the "pen and paper" game is still being marketed, your electronic version of the same game would more than likely infringe on rights. You not only need to consider trademark rights but copyrights and possibly patent rights, as well. Games are often protected in several ways.

You can either seek out the holder of the rights in the game to obtain a license to develop your electronic version, or (as already suggested) you can ask the rights-holder if s/he is willing to sell you (transfer) all rights in the game - although a transfer of rights can be costly. Or you consult with an IP attorney in your area for a personal review and advice based on the specific name and game - and this is what I recommend.

What you should NOT do, however, is go ahead with any plans to develop and market an electronic version of the existing game until you have ensured it is legally safe for you to do so.

 

[jnagle]

Thank you

Thanks for the replies, and you're all confirming what I suspected to be true but wanted verification.

I just did read a few minutes ago (on this very site) that trademarks can be abandoned by not being actively used for 3 years. In other words, you can't just sit on a trademark, you have to actively be engaged in commerce with it. Is that not correct? And if that's correct, how does one go about proving that?

I don't want to take someone's trademark if they're actively using it...but if it's just dead and sitting there, I don't see why we couldn't adopt it.

-John

 

[Zigner]

Thanks for the replies, and you're all confirming what I suspected to be true but wanted verification.

I just did read a few minutes ago (on this very site) that trademarks can be abandoned by not being actively used for 3 years. In other words, you can't just sit on a trademark, you have to actively be engaged in commerce with it. Is that not correct? And if that's correct, how does one go about proving that?

I don't want to take someone's trademark if they're actively using it...but if it's just dead and sitting there, I don't see why we couldn't adopt it.

-John

It's being offered for sale...that's active in commerce.

 

[quincy]

Thanks for the replies, and you're all confirming what I suspected to be true but wanted verification.

I just did read a few minutes ago (on this very site) that trademarks can be abandoned by not being actively used for 3 years. In other words, you can't just sit on a trademark, you have to actively be engaged in commerce with it. Is that not correct? And if that's correct, how does one go about proving that?

I don't want to take someone's trademark if they're actively using it...but if it's just dead and sitting there, I don't see why we couldn't adopt it.

-John

Abandonment of a mark is very difficult to prove. There can be several reasons why a trademark holder is not producing more product (product revision, finances, illness).

But you said this particular trademark is still active. There are products still for sale under the mark. I suspect you do not really know how many games the owner has sold in the years the mark has been registered and before, or if the owner has other games or products being marketed under the trademark.

That said, you can contact the mark holder to see what their intentions are in continuing to use the mark. If it is still showing as "live" on the federal registry, it is still a trademark with rights that need to be respected. You can offer to buy the trademark and the game concept (if the concept is one that is expressive enough to allow for copyright protection). You can ask to license rights in the game so you can create and market your electronic version.

Again, there are rights other than trademark rights to consider. Copyrights protect the artistic expressions (the artwork, for example) and patents can protect certain methods. The trademark protects the name, the branding, of the product.

Contact the holder of the rights or sit down with an IP attorney for a personal review. You are risking infringing on the rights-holders rights, however, if you move ahead with your plans to market a similar game under the same or similar name.

Good luck.

 

[adjusterjack]

if it's just dead and sitting there, I don't see why we couldn't adopt it.

Because it's not dead.

Just advertising it on Amazon is keeping it active even if no sales occur.

 

[quincy]

There are copyrights to consider as well as trademark rights.

Copyrights (typically) last the lifetime of the author of the work plus an additional 70 years. Even if a trademark is abandoned, the copyrights in the game would not be.

What jnagle appears to want to do is create a derivative of a copyrighted work. Creating derivatives is one of the exclusive rights held by a copyright owner.

Several issues here, in other words. A review by an IP attorney of the game plans would be a smart investment. The mom-and-pop creators of the original game could become very rich if jnagle makes use of a game that has been registered with the US Copyright Office to create his electronic version.

 

[adjusterjack]

The mom-and-pop creators of the original game could become very rich if jnagle makes use of a game that has been registered with the US Copyright Office to create his electronic version.

Which could happen without registration since copyright protection exists even without registration.

 

[quincy]

Which could happen without registration since copyright protection exists even without registration.

Not (necessarily) the "very rich" part I mentioned.

If a copyright is not registered prior to infringement (or within 3 months of publication), the copyright holder is not eligible to collect statutory damages and must rely on actual damages (profits and losses).

Actual damages can be difficult to demonstrate, which is the reason why many copyright holders who have not registered their works prior to infringement will not take any action against an infringer beyond filing a DMCA takedown notice on any site that hosts their infringed works. The costs of pursuing an infringement action would be greater than what can be recovered in court.

There have been discussions for years on allowing for infringement suits to be heard in small claims courts, to let "small-time" copyright holders hold their infringers accountable without having to expend the time and energy and money necessary to pursue the infringer in federal court. Because a lot is involved when determining infringement, small claims courts as they stand are not equipped to handle the suits, so the discussions have to date led nowhere.