Brand equity consultants and marketing gurus have for years
preached the importance of having a distinctive brand name as it is
one of the most important factors that differentiates or
distinguishes one product from another. To achieve a high level of
distinctiveness, a variety of brand-building strategies have been
proffered, and to prevent a loss of legal rights to the brand, a
number of brand-protection techniques – defensively and
offensively – have been employed to ensure the brand's
exclusive domain and legal longevity. Nowhere is this more critical
than in the gaming industry where often a product lives or dies
depending entirely on its loyal following and recognition
Gamblers, or "players" as they are more often benignly
referred to, pick and choose games they play because of the
experience they've had with the games in the past or, if it is
a new game, choose to engage because of the emotional rush the name
conjures in the player's mind of winning or success. So when
game developers are designing a game, care must be taken to not
only be innovative with coining a name that is distinctive,
fanciful and extendable, but measures should also be taken to
ensure the name is translatable, registerable and protectable, both
domestically and abroad. The same considerations should also be
taken into account when designing the appearance of new products as
this can similarly assist in developing a brand.
Too often brand owners are focused only on registering and
protecting their brand names only in localities where the products
are sold and used, ignoring registration and protection where the
products are manufactured. This is a mistake. In places such as
China, and many other countries in the world, the "first to
the courthouse" is what matters in trademark registration,
i.e., the first to file, not the first to use the mark. Therefore,
failure to register the mark in those localities only opens up the
door for the local vendor or someone else to register the brand in
his own name and then set a bounty for the brand owners to buy it
back. Just imagine unbeknownst to the brand owners, some of the
most well-known gaming brands could already be registered in
countries where they are not doing business, or their translations
or phonetic equivalents are already registered as well. Just
imagine a brand owners' own subcontract manufacturer registered
the brand and the brand owner is precluded by law from
manufacturing the same branded equipment with another vendor in
Too often brand owners limit their brand registration strategy
only to a narrowly defined set of products and services for
trademark or service mark registration, resulting in registration
of an identical mark by others in related, but legally
non-conflicting classes of goods or services. Just imagine a
trademark is registered for casino electronic games, but not for
playing cards. Just imagine a service mark is registered for
hospitality services, but not for food catering services.
And finally, too often brand owners are only vigilant of
protecting their brands in their own limited commercial sphere, not
realizing a parallel universe of commercial activity could be
occurring on the other side of the world. This is a haunting
reminder as who would have thought a few years ago that the
revenues from Macau would exceed Las Vegas or that the revenues
from Singapore are now nearly on the same level?
One must keep in mind that in many countries the legal concepts
of dilution, palming-off and unfair competition are not well
developed, and to rely on those remedies to right a wrong would
clearly place a company's most valuable asset in jeopardy. The
better approach is to register your brand widely and broadly and to
work intelligently to develop a registration, protection and
implementation strategy that is effective and cost conscious. There
is no secret to protection of a brand worldwide. The approach must
be consistent and the effort must be persistent. Like the old
gambling adage, you got to know when to hold and when to fold. If
you don't have the right protection in place, you will end up
learning how to fold before you learn how to hold.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
Those loyal readers of this blog know that the focus tends to be on what your company can and cannot do regarding social media use by potential employees or current employees, but this discussion shall focus on former employees.
The U.S. District Court for the Southern District of Florida recently released a decision in a TCPA suit brought by a man seeking damages in connection with a series of autodialed telephone calls made to his mobile phone.
The Dark Knight Rises, the latest "Batman" film released by Warner Brothers Entertainment Inc. ("Warner Bros."), grossed more than $1 billion worldwide and currently stands at eighth place on the all-time worldwide box office charts.
Today's teens certainly constitute the social media generation. And a recent study titled "Teens, Social Media and Privacy" by the Pew Research Center's Internet & American Life Project sheds light on this phenomenon.
InsidePrivacy.com recently published a "survey of data security surveys" that came to troubling conclusions—that data security weaknesses remain incredibly common across industries, despite being easily avoidable.
Not many marketers have the fortitude or the financial wherewithal to go toe-to-toe with the Federal
Trade Commission (FTC) to fight a charge of false advertising, writes Venable partner Gregory J.
Sater in the May issue of Electronic Retailer magazine.