Should I trademark my videogame name?

[erpeo93]

Hi everyone,
I'm Leonardo and this is my first question here.

I'm developing a videogame, one that I will start selling at the end of 2019.
I've found a good name for it, problem is that it's a pretty common word. (Like for example "destiny" or " brutality" could be).

I've searched the web for games that are named the same or in a very similar way, and I also queried the uspto multiple times, without finding anything.
Furthermore, I also own the domains www.GAMENAME-game.com and www.GAMENAMEthegame.com

The important thing to note is that I don't want to trademark the name because I want nobody else to publish something with a similar name, I don't care about that because if my game has success I'll get all the visibilty of the name.
The only reason I would trademark the name is to prevent someone choosing the same name before I start selling the game and trademarking it, making it impossible for me to use that name, but I'm really torned about doing it, as the cost of it would be pretty relevant compared to the total budget of the game (trademarking a name would costs something like 1300$, and the total budget is 15000$).

How would you proceed? should I go for it so that I'm pretty sure no one can "steal" it? or should I have some backup names, hoping that no one use that name before I start selling it?

Also what happens if someone trademark the name before I start selling the game, but I just don't care about it and start selling my game before they start selling their?
What happen if we go on court? The fact that I've started selling the game BEFORE they is more valuable than the "actual" trademark?

Thank you very much,
Leonardo

 

[quincy]

Hi everyone,
I'm Leonardo and this is my first question here.

I'm developing a videogame, one that I will start selling at the end of 2019.
I've found a good name for it, problem is that it's a pretty common word. (Like for example "destiny" or " brutality" could be).

I've searched the web for games that are named the same or in a very similar way, and I also queried the uspto multiple times, without finding anything.
Furthermore, I also own the domains www.GAMENAME-game.com and www.GAMENAMEthegame.com

The important thing to note is that I don't want to trademark the name because I want nobody else to publish something with a similar name, I don't care about that because if my game has success I'll get all the visibilty of the name.
The only reason I would trademark the name is to prevent someone choosing the same name before I start selling the game and trademarking it, making it impossible for me to use that name, but I'm really torned about doing it, as the cost of it would be pretty relevant compared to the total budget of the game (trademarking a name would costs something like 1300$, and the total budget is 15000$).

How would you proceed? should I go for it so that I'm pretty sure no one can "steal" it? or should I have some backup names, hoping that no one use that name before I start selling it?

Also what happens if someone trademark the name before I start selling the game, but I just don't care about it and start selling my game before they start selling their?
What happen if we go on court? The fact that I've started selling the game BEFORE they is more valuable than the "actual" trademark?

Thank you very much,
Leonardo

What is the name of your state, Leonardo?

The name you use to identify your game becomes your trademark. The purpose of a trademark is to distinguish goods and services from those of all others. If all fast food restaurants were named McDonalds, no one would know where to buy Egg McMuffins.

You gain trademark protection for the name you choose to identify your game by using this name (trademark) in commerce to identify your game (to distinguish it from all other games on the market).

In the US, the first to use a name as an identifier for their goods or services is the presumed owner of the name. Federal registration of the trademark is not necessary.

Federal registration provides the trademark holder with an official date of first use of the mark, however, should the use of the name later be challenged, and registration can provide for additional damages to be awarded should someone else use your trademark without your authorization (infringe on your rights to the name).

You cannot register your trademark with the United States Patent and Trademark Office (USPTO) until you have used the name in commerce already to identify your game. If you want to "reserve" the name for yourself and plan to have the game on the market within six months, however, you can file an intent-to-use trademark application with the USPTO. Here is a link to the USPTO where you can read about the process for registering your name: https://www.uspto.gov

A common word like "destiny" or "brutality" can be used as s trademark but, with common word trademarks, you are unable to prevent others from using those words in their common way. You can prevent others from using the common word as their own trademark on similar goods or services, though. Examples: There can only be one Penguin books but penguins in a zoo can be called penguins, and there can be only one Arrow shirts but arrows for archery can be called arrows.

You can consult with a trademark attorney in your area for a specific and personal review of your needs.

Good luck with your game.

 

[erpeo93]

What is the name of your state, Leonardo?

The name you use to identify your game becomes your trademark. The purpose of a trademark is to distinguish goods and services from those of all others. If all fast food restaurants were named McDonalds, no one would know where to buy Egg McMuffins.

You gain trademark protection for the name you choose to identify your game by using this name (trademark) in commerce to identify your game (to distinguish it from all other games on the market).

In the US, the first to use a name as an identifier for their goods or services is the presumed owner of the name. Federal registration of the trademark is not necessary.

Federal registration provides the trademark holder with an official date of first use of the mark, however, should the use of the name later be challenged, and registration can provide for additional damages to be awarded should someone else use your trademark without your authorization (infringe on your rights to the name).

You cannot register your trademark with the United States Patent and Trademark Office (USPTO) until you have used the name in commerce already to identify your game. If you want to "reserve" the name for yourself and plan to have the game on the market within six months, however, you can file an intent-to-use trademark application with the USPTO. Here is a link to the USPTO where you can read about the process for registering your name: https://www.uspto.gov

A common word like "destiny" or "brutality" can be used as s trademark but, with common word trademarks, you are unable to prevent others from using those words in their common way. You can prevent others from using the common word as their own trademark on similar goods or services, though (e.g., there can only be one Google, one Speedy Printing, one Penguin books).

You can consult with a trademark attorney in your area for a specific and personal review of your needs.

Good luck with your game.

Thank you very much for your quick answer.
I'm from Italy, but the game will probably be sold via the game website via some digital e-commerce platforms like fastspring.


What you're saying is very interesting and reassuring by my side, it basically means that if I'm able to sell my game before anyone else (in the US) then I automatically gain the trademark (in the US).

But then I ask you, what value has the "declaration of intent" then? what happens if someone declares the intent to use the world "brutality" for a game, but I start selling the game before they do? who owns the right? Because at this point this is the only thing concerning me.


edit: I've found this on the uspto website:

Under 15 U.S.C. §§1057(c) and 1141f(b), filing any application for registration on the Principal Register, including an intent-to-use application, constitutes constructive use of the mark, provided the application matures into a registration. See Cent. Garden & Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134 (TTAB 2013) . Upon registration, filing affords the applicant nationwide priority over others, except: (1) parties who used the mark before the applicant’s filing date; (2) parties who filed in the USPTO before the applicant; or (3) parties who are entitled to an earlier priority filing date based on the filing of a foreign application under 15 U.S.C. §1126(d) or §1141g (see TMEP §206.02). See Zirco Corp. v. Am. Tel. and Tel. Co., 21 USPQ2d 1542 (TTAB 1991) ; Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 86 USPQ2d 1527 (D.C. Cir. 2008).

especially:
Upon registration, filing affords the applicant nationwide priority over others, except: (1) parties who used the mark before the applicant’s filing date.

But I guess that that "used" means that I actually have to start selling my game, not just owning the domain or other stuff...

 

[quincy]

FreeAdvice addresses US laws. I am afraid because you are in Italy instead of the US, much of what I wrote above will not apply to you in Italy. Some of it does, not all.

In the US, it is the first to use a trademark who will be the presumed owner of the mark. In Italy, it is the first to register the mark who will be the presumed owner.

If you register your trademark in Italy, this does not mean you can enforce your trademark rights in the US without registration in the US. Someone in the US could take your trademark as their own if you have not yet used the mark in the US.

An intent-to-use application reserves rights in the trademark you have chosen BUT (as indicated in your quote from the law) this assumes you have provided documentation showing a US business plan (how you intend to market your goods/game and use the mark in the US) and the mark is in use prior to application expiration, and it also assumes your mark will be approved for registration and no one else has used or registered it first.

Because trademark laws vary from country to country, you would be smart to consult with an IP attorney in Italy.

Good luck.

 

[erpeo93]

FreeAdvice addresses US laws. I am afraid because you are in Italy instead of the US, much of what I wrote above will not apply to you in Italy. Some of it does, not all.

In the US, it is the first to use a trademark who will be the presumed owner of the mark. In Italy, it is the first to register the mark who will be the presumed owner.

Also, if you register your trademark in Italy, this does not mean you can enforce your trademark rights in the US without registration in the US. Someone in the US could take your trademark as their own if you have not used the mark in the US.

Finally, an intent-to-use application reserves rights in the trademark you have chosen BUT this assumes you have provided documentation showing a US business plan (how you intend to market your goods/game and use the mark in the US) and the mark is in use prior to application expiration, and it also assumes your mark will be approved for registration.

Because trademark laws vary from country to country, you would be smart to consult with an IP attorney in Italy.

Good luck.

Thank you once again.
Frankly, I don't care at all about the Italian market, as the chance of someone else marketing a game with the same exact name as mine (which is an english word of course) is basically null.

So I'm mostly interested in US law and what are the rules there, and reading your reply it would seems that, although it's not so common to file an "intent-to-use" (especially when the budget is pretty tight like in videogames) if a big game studio file an "intent-to-use" with the same name as my game, then they would win if we go on court.
Is that right? That would mean that I really can't be 100% sure that NO ONE will actually steal my game name.
The only way I can be sure is that the moment I start selling the game, no one should have filed an intent-to-use request to the uspto. Am I wrong?

If I start selling the game on 1st january 2019, and EA files an intent-to-use request the 31 december 2018, then I would loose if they start selling the game, successfully registering the mark, and sue me.

 

[quincy]

Thank you once again.
Frankly, I don't care at all about the Italian market, as the chance of someone else marketing a game with the same exact name as mine (which is an english word of course) is basically null.

So I'm mostly interested in US law and what are the rules there, and reading your reply it would seems that, although it's not so common to file an "intent-to-use" (especially when the budget is pretty tight like in videogames) if a big game studio file an "intent-to-use" with the same name as my game, then they would win if we go on court.
Is that right? That would mean that I really can't be 100% sure that NO ONE will actually steal my game name.
The only way I can be sure is that the moment I start selling the game, no one should have filed an intent-to-use request to the uspto. Am I wrong?

If I start selling the game on 1st january 2019, and EA files an intent-to-use request the 31 december 2018, then I would loose if they start selling the game, successfully registering the mark, and sue me.

There is no guarantee that the name you have chosen for your game will not be used by someone else first.

The best way to ensure no one else picks the same name for a trademark as you do is to invent your own word to identify your business/product/service.

This seems to have worked well for Google, Kodak, Nike, and Tylenol (among many others).

Good luck.