best way to establish pre-fix trademark

[phoenixian]

Apple and McDonald had success defending trademark prefixes in court (i* ex iPad, iPhone etc, Mc* ex McRib, McFlurry etc) as long as the offenders were operating in the same industry with similar or related products.

As a game developer, I am looking to secure a prefix in this manner to establish both the name of my company as well as a series of game 'genres', all of which have the same prefix.

I want to avoid exactly what happened with the Flappy Bird incident.

Any advice on the most effective way to file & defend a trademark in this manner? Do I file a trademark for the prefix alone in my target market alongside the each of the fully trademarked names?

Thanks!

 

[Zigner]

Apple and McDonald had success defending trademark prefixes in court (i* ex iPad, iPhone etc, Mc* ex McRib, McFlurry etc) as long as the offenders were operating in the same industry with similar or related products.

As a game developer, I am looking to secure a prefix in this manner to establish both the name of my company as well as a series of game 'genres', all of which have the same prefix.

I want to avoid exactly what happened with the Flappy Bird incident.

Any advice on the most effective way to file & defend a trademark in this manner? Do I file a trademark for the prefix alone in my target market alongside the each of the fully trademarked names?

Thanks!

This forum is for US law only.
The MOST effective way to do what you intend to do is to come up with something truly unique and not attempt to ride others' coattails.

 

[quincy]

Apple and McDonald had success defending trademark prefixes in court (i* ex iPad, iPhone etc, Mc* ex McRib, McFlurry etc) as long as the offenders were operating in the same industry with similar or related products.

As a game developer, I am looking to secure a prefix in this manner to establish both the name of my company as well as a series of game 'genres', all of which have the same prefix.

I want to avoid exactly what happened with the Flappy Bird incident.

Any advice on the most effective way to file & defend a trademark in this manner? Do I file a trademark for the prefix alone in my target market alongside the each of the fully trademarked names?

Thanks!

Once your trademark becomes a famous mark, you can protect prefixes (and all other variations of your mark) from use by others. What needs to be shown is that consumers connect in their minds the original trademark and its product/service with these variations of the mark.

Micky D's, for example, is protected because consumers think of McDonalds when they hear it.

To get to this point generally requires time and excellent marketing (not to mention, a good popular product or service).

You first must use your mark in commerce to gain rights to the mark and to federally register it. If you want both your trademark and its prefix protectable, you either use them both until consumers recognize them as identifiers for your company/product/service or you use them and register them all separately, not waiting for the mark and prefixes to become famous.