LGJ: Nagging Trademark Questions

Mark Methenitis contributes Law of the Game on Joystiq ("LGJ"), a column on legal issues as they relate to video games:

So, you heard the rumors about EA working on NBA Jam, and then the confirmation of a new NBA Jam for the Wii, and you, like so many other people, thought to yourself, "Hey, what ever happens to trademarks that aren't being used? And why can't we figure out what's going on with NBA Jam before the press release by searching the Trademark office?" Well, I'm glad you asked, because these are questions that it's high time I answered. Most people have a good idea that a trademark is a brand name or logo, and most people know that they can be registered with the government to be better protected. But what about those other general trademark issues? LGJ has focused on trademark disputes on many occasions, but we're overdue to go over some of the expanded trademark basics for the benefit of the Joystiq readers.

So, with trademarks, as with copyrights, there's a common law protection as well as a Federal registry in the US. There are also state registrations for trademarks, but, ultimately, the Federal registry offers the greatest protection. In fact, there is a whole list of benefits to registration. But the point remains, simply using a name for a product creates at least some level of trademark protection. From a practical sense, though, as long as you qualify for a registered trademark, it's much better to have a registered trademark. And that trademark can basically last forever as long as you meet two relatively straightforward conditions.

The first condition is that you have to keep up with all of the filings and filing fees to keep your registered mark alive. The second condition is you have to keep using the mark in the marketplace and defending it from infringement. In fact, the general rule for abandonment in the US is three years. That is, in three years, Saturn will theoretically be available as a car brand name again, and in theory, Saturn is already available again as a name for a game console. Trademarks that die can also be revived if the product is brought back to market and no intervening product has taken the trademark. It's also worth noting that having used products available in the market isn't enough to keep the trademark alive. The trademark holder has to continue to use and defend the mark.

As illustrated by the above example, registered trademarks are also limited in scope, though that scope can grow depending on what the consumer's likelihood of confusion is to other products. Both Saturn cars and Saturn consoles were unlikely to be confused with one another, especially given the word "Saturn" is an ordinary word in English. On the other hand, it's unlikely anyone will ever be able to create another product with the name Disney or Nintendo because those companies have become so large that a consumer might believe any product in the market may be related to those names, and the names are unique.

Which brings us to NBA Jam. A search of the trademark registry shows no prior registered mark for the Midway game. That doesn't mean the "NBA Jam" name wasn't trademarked, only that it wasn't registered. The new registration for NBA Jam is to the NBA and does cover video games. This leads to another related point. NBA Jam, as a trademark, contains another registered trademark: NBA.

Turning back the clock to when NBA Jam was released, Midway needed to secure a license from the NBA for use of a variety of things, including use of the NBA trademark. That license may not have allowed Midway to register the NBA Jam trademark. With Midway defunct, it seems the NBA now sees value in NBA Jam as a brand and wants to revive it. Of course, even if Midway had registered the mark, it likely would be dead by now.

Now here's where things get a little more peculiar. Even if the Midway NBA Jam code was sold to someone else, there's nothing the holder of that code can really do to stop development of a new NBA Jam given that the NBA holds the right to the name and none of the original code is being used. Nothing is being infringed upon since Midway likely had no remaining right to sell any license to future development of NBA Jam titles. All that was sold was code, and even re-releasing that may require permission from the NBA. Of course, I don't know who picked up the NBA Jam code, so it may be the NBA re-acquired it and then this issue is moot.

So why would the NBA want to own the NBA Jam mark now? Well, it's possible they're have a business model in mind where it would be best to have multiple different developers create NBA Jam games on different platforms, for example a developer for the home consoles and a different developer for handheld and mobile devices or the web. This gives them more control over that direction. Perhaps they plan to license products other than games under the NBA Jam brand. It's anyone's guess at this point. At a minimum, NBA Jam fans have something new to look forward to on the Wii, and it's even possible we could still see NBA Jam on the Virtual Console, depending on who picked up the rights to the code in the Midway dissolution.

Mark Methenitis is the Editor in Chief of the Law of the Game blog, which discusses legal issues in video games. Mr. Methenitis is also a licensed attorney in the state of Texas with The Vernon Law Group, PLLC and a member of the Texas Bar Assoc., American Bar Assoc., and the International Game Developers Assoc., where he is a board member of the Dallas chapter. Opinions expressed in this column are his own. Reach him at: lawofthegame [AAT] gmail [DAWT] com.

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