Trademark protection cross borders online

[warbuckle]

Hello!

I currently own a registered trademark with the USPTO. I am currently applying for the same trademark with the UK's IPO. I am based in the UK.

I make video games and cartoons titled with my trademark word. This trademark word has been used in commerce since Sep 30th 2009, and was first used Feb 7th 2007. The trademark word appears online worldwide but has only been legally registered in the US.


The Situation

I became aware recently that another game developer is making a game with the same title. He actually told me this through a Facebook page that was setup by a fan of my games and cartoons. He plans to release his game for the PC and Microsoft XBox Live Arcade (which is an online service where users download video games for the Xbox 360). He is sure that there is no infringement here as he will be selling from the UK, and not the US.


My Questions (as things currently stand)

Can he sell his game from the UK to non-US customers?

Can he sell his game from the UK to US customers?

Can he sell his game from US based domains (from the US) to non-US customers?

Can he sell his game from the US to US customers?

What protection does my US registered trademark give me in this situation?


I suspect that he wont even be able to sell his game on the XBox Live Arcade platform as this is Microsoft (US) based. But I fear that he could sell his game from his own UK based site to anyone. Does my general unregistered trademark give me any protection here?

Sorry if those questions are all a bit similar and get a bit redundant. Trademark laws can get pretty confusing!

Thanks again,
-WA

 

[quincy]

Both the U.K. and the U.S. offer trademark protection under their trademark laws for well-known but unregistered trademarks.

 

[warbuckle]

How do they deem if something is 'well known' or not?

 

[quincy]

In different ways.

Primarily, if a mark has become connected in consumers' minds with the product or service, through its longtime, widespread use in commerce, it can be said to have acquired a "secondary meaning." An example would be McDonald's. McDonald is a common name but when people say "McDonald's" they connect it with the fast food restaurants. Same with "Speedy Printing." The words speedy and printing are generic words but the trademark "Speedy Printing" is recognized as belonging to one particular company.

Another way that a mark could be considered well-known is if a consumer poll shows it is recognized as belonging to a particular business product or service.

And, in the U.S., the exclusive continuous use in commerce of a trademark for five years qualifies the mark as distinctive.

If the other mark's use in the U.S. market confuses consumers as to the origin of the goods, you can potentially prevent the use of the mark in the U.S. through an infringement action, although you probably would not be able to prevent the use of the mark in the U.K. if your mark is not registered or recognized there.

You should run all of this by an IP attorney in your area, to determine what your legal rights are to the mark and how best to protect it from would-be infringers.

Good luck.

 

[warbuckle]

Thanks for the help Quincy. My mark could possibly be deemed well known. Depends on who they ask in that consumer poll. Oh and if anyone else has any info, feel free to share, it's all welcome.

I do have further questions, I hope that ok... it's the whole reason of finding this forum. I'll definitely find a local legal mind when it comes to that.



So as things stand at the moment (reg'd in US and nowhere else)-

I'm a bit unclear about how the 'internet factor' works with all of this- in relation to different country's trademark laws.

1. If this other British base team release their game, would they have to make sure that it doesn't sit on any American-based servers?* As it would therefore be on US soil? For example, they could buy web hosting and that host could quite easily turn out to be US-based.

2. If they are 100% British-based online and offline, and they are selling to Americans, does this mean they are selling to an American market and are therefore infringing on my mark?



Cheers,
-WA

* A server is just a computer that holds internet data. These servers are based all around the world.