United States: The TL;DR On Using Trademarks To Protect Your Games

At the center of every successful video game franchise lies a strong and well-guarded brand. Those brands are reinforced by their trademarks—the words and symbols that serve as badges of quality, expertise and reputation. This article explores how game developers can use trademarks to protect themselves and their intellectual property in the increasingly-competitive video games industry.

A "trademark" can be a word, symbol, sound or product package, used to identify the source of a company's products and to distinguish those products from the competition. It includes the name of your company (e.g., "Nintendo"), the name of your game or franchise (e.g., "POKÉMON"), the game's catch phrase or tagline (e.g., "Gotta Catch 'Em All!"), your logos or your app icons. 

Owning a trademark generally means you have an exclusive right to use that mark with certain types of products, such as video or board games. This exclusivity allows you to build brand recognition because consumers associate your mark with your games. And unlike copyrights or patents which expire, trademark rights in the U.S. can last forever. Trademarks are, therefore, a critical component of any game developer's intellectual property portfolio.  

I Choose You!?

Picking a protectable trademark is not as straightforward as it might first seem. Game developers often formulate an idea of what they want to name their company or game early in the development process. But before getting too attached to a particular name or a logo, it is important to understand what differentiates a strong trademark from a weak one. Investing in a weak mark can leave you susceptible to unwanted legal challenges, tight competition, and a host of other problems that detract from your ability to develop and support great games.

"Distinctiveness" is the touchstone of trademark assessment. The more unique your mark is, the more it distinguishes your game from a competitor's, and the stronger your mark becomes. Courts have developed four distinctiveness classifications, from most to least distinctive. Understanding where your marks fall along this spectrum of distinctiveness is key to understating how protectable your brand name, game titles and slogans will be going forward.

Arbitrary & Fanciful Marks = Strongest Protection

"Arbitrary" marks consist of common words or terms used for something other than its literal meaning. For example, "Valve" or "Bungie" may be considered arbitrary in the trademark sense because the ordinary meanings of these words have little to do with the products they sell. "Fanciful" marks consist of word or terms that have no independent meaning. Marks like "POKÉMON" and "Nintendo" probably fall into this category because these words have no meaning apart from the brands they have come to represent. Both arbitrary and fanciful marks are considered inherently distinctive and offer the strongest trademark protections. 

Suggestive Marks = Strong Protection

"Suggestive" marks require consumers to exercise imagination to determine the nature of the product. A suggestive mark does not immediately describe the products or its features, but may suggest or allude to them. Psyonix's "Rocket League" may be suggestive in the sense that it is used for a game where players use rocket-propelled cars to play a gravity-defying version of soccer. Board games often employ suggestive marks to allude to the gameplay of the game without describing the game itself. For example, games like Hasbro's "Clue!," DaVinci's "BANG!" and Z-Man Games' "Pandemic" are arguably suggestive because they allude to the games' respective objectives—giving clues to identify a murder; bandits and sheriffs shooting at each other in a spaghetti-western setting; and curing outbreaks of diseases. Like arbitrary and fanciful marks, suggestive marks are considered inherently distinctive and are generally afforded strong legal protections.

Descriptive Marks = Limited Protection (Maybe)

As the name suggests, "descriptive" marks directly describe a product, its characteristics, its elements or its qualities. The classic game "Duck Hunt" may be considered descriptive because the name describes the game's characteristics of hunting virtual ducks. Descriptive marks are presumptively non-distinctive and, therefore, entitled to limited, if any, protection. This reality is often counterintuitive to marketing teams, who may be tempted to pick a brand name that describes their company's game because it helps new customers understand what the game is. But the resulting mark can offer weak protection, allowing competitors to sell competing products with very similar names. 

Trademark law, however does protect descriptive marks that have acquired distinctiveness—that is, if consumers have come to associate the product with a single source. For example, Coffee Stain Studios' 2014 cult-hit "Goat Simulator" may, at first blush, appear to employ a descriptive mark. After all, the title describes a game in which players control a digitally rendered goat. But given its popularity among fans, there is an argument that the "Goat Simulator" mark has acquired sufficient distinctiveness to warrant trademark protection. Similarly, a board game like "Mouse Trap" employs an arguably descriptive mark. But the title may still be protectable if consumers have come to associate it with a single company. Proving acquired distinctiveness, however, can be an uphill battle.

If the dividing line between a suggestive mark (protectable) and a descriptive mark (not protectable without acquired distinctiveness) seems confusing, you are not alone. Courts regularly grapple with this distinction, in part because it largely depends on how the mark and the associated products are framed. "Grand Theft Auto V," for example, allows players to steal in-game cars, but it is not a game about just stealing cars. Moreover, "Grand Theft Auto V" is not descriptive of a video game product generally. These distinctions, while subtle, can affect the strength of the marks. Effective trademark counsel will help position your trademark on the right side of the suggestive/descriptive divide. 

Generic Terms = No Protection

Generic terms are often synonymous with a product or service in question and, therefore, can never serve as a trademark. Similarly, the "D Pad" is commonly understood in the gaming world to refer to the plus-shaped button on a game controller that players use to input directional controls. Given its ubiquity, it is unlikely you could assert trademark rights in a mark like "D-PAD" for a video game controller. When someone adopts a generic mark, competitors can and most likely will adopt similar marks.

It's Dangerous to Go Alone! Clear This.

Once you have settled on your mark, it is important to attempt to "clear" the mark for your company's intended use. It can be frustrating and a potential financial setback to launch a product only to find out that another party owns superior rights in the name of that product and is prepared to enforce those rights in court unless you change the mark. Searching for similar marks before you adopt the mark you have chosen is the best way to guard against this predicament.

U.S.-based searches should include registered trademarks, trademark application and trademarks that are unregistered. Domain name queries, mobile app store scans and other web-based searches are helpful ways to supplement your due diligence, but are not broad enough on their own to provide adequate clearance. If you expect your game to be played or your company to be advertised overseas, you should also conduct clearance in key international markets. 

A TM Draws Near!  Register?

Because trademark rights stem from use in the U.S., registration is not mandatory. But registrations comes with important benefits when it comes to enforcing your rights. Registration provides nationwide notice of your right to use a mark. Registration can also create favorable evidentiary presumptions regarding your ownership of the mark and its validity. Having a trademark registration can serve as a block against competitors' attempts to register a similar mark. And trademark registrations can be powerful sources of leverage before litigation in convincing a competitor not to use a mark similar to yours.

Creating a fun game can be difficult, but protecting it does not have to be. Selecting legally enforceable trademarks and understanding the risks associated with their use are two easy steps you can take to guard your brand. Once secured, those marks provide a strong foundation for your marketing strategy and help protect you from others who might seek to capitalize on your success, leaving you to focus on what matters most: making great games. 

Originally published in Bloomberg BNA on October 3, 2017.​​

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.

Authors
Events from this Firm
21 Jan 2019, Speaking Engagement, California, United States

Now entering its fifth year, the Pocket Gamer Connects events series has grown to become the biggest and most influential mobile games conference in the west as well as th​e biggest games event overall in the UK and Helsinki.

8 Mar 2019, Conference, Austin, United States

Join the world’s largest gathering of creative professionals at the 2019 SXSW Conference & Festivals in Austin, Texas from March 8-17.

Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions