Law of the Game on Joystiq: Time for Trademarks

Each week Mark Methenitis contributes Law of the Game on Joystiq, a column on legal issues as they relate to video games:

A few weeks ago, I received an e-mail request to cover the basics of trademark as it applies to the gaming world. Given that E3 is next week, we're all likely to see many new uses for old trademarks and new trademarks surfacing from many of the industry's power players. Surprisingly, this isn't just as simple as picking a name and going with it. In fact, there's a lot of the 'trademark' game, and hopefully this week's column will give you a better-than-Wikipedia level background in what the game makers go through to get their hands on names like Crash Bandicoot, apparently the most desired piece of E3 news according to Joystiq readers.

Trademark is probably the most well known of the three unfair competition concepts, and its origins trace back to the guilds in England, although the idea of placing an identifying mark on something goes back as far as human history. In fact, the first trademark laws in England were passed in 1266. The basic concept is a fairly straightforward one: Someone who makes something should be able to have a mark that identifies that persons products for consumers, and that mark should be limited to use by that one producer. This idea benefits both the consumers, by allowing them to identify reputable products in the marketplace, and producers, by allowing them to build reputations for their products and preventing others from taking advantage of their reputations.

So, what is a trademark, exactly? It can be a word or a logo that identifies the product, and it has to be for a product in the marketplace; unless it's a filing for a product coming to the marketplace in which there is a time limit to have the product released. A "servicemark" is the technical name for a trademark that applies to a service rather than a product. There are also trademarks for slogans, combinations of words and logos, and even shapes and colors as they relate to certain products. Trademarks exist whether they are filed for or not, but the level of protection is significantly higher for a registered trademark. Trademarks can be registered in the US at either the state or federal level, but generally people referring to trademarks are referring to federal marks on the principal register. The principal register is the list of trademarks issued in the US which have the complete rights granted by law. While there is a supplemental register, its only real purpose is to allow international registration, as it does not confer any of the legal protections of the principal register.

To cut to the chase on registration, if you want to have a fully protected mark in the US, you need to register it with the US Patent and Trademark Office, and they impose a threshold for trademarkability, much like there were rules for patentability. In the simplest terms, to get a trademark, the mark must be distinctive and not infringe on an existing mark. The first element touches on a concept in trademark law that can be confusing called the 'strength of the mark.' If you think of trademark strength like a line, on one end would be generic and on the other end would be arbitrary or fanciful, with distinctive being at the midpoint in the line. (See the crappy MS paint diagram to the right.) Generic marks are what they sound like. You couldn't register Video Game, Inc. as a trademark for a video game publisher. These are the least strong trademark terms. Descriptive trademarks are still not strong enough to be registerable, but can become 'distinctive' if enough people recognize the mark with relation to that product. Take, for example, Holiday Inn. Holiday Inn has become distinctive because people identify the hotel chain, but as a trademark, it is really just descriptive of what it is. Suggestive marks are always on the distinctive end of the spectrum. PlayStation is an example, because while it suggests what the product does, it doesn't simply describe it. Arbitrary or fanciful names are ones that have nothing to do with the product, and are considered the strongest type of trademark. An arbitrary mark would be like Apple for computers, which is the use of a word which has nothing to do with the product, whereas a fanciful mark would be like Verizon, which is basically a made up word.

So, assuming your mark satisfies the distinctiveness test, it still can't infringe on another existing mark. There are basically two considerations for infringement: confusion and dilution. Confusion, while a straightforward concept, is generally the one that becomes difficult to establish one way or the other. It boils down to a number of factors that were established in the US in the In re E.I. du Pont de Nemours & Co. (476 F.2d 1357) case, which essentially boil down to how much possible confusion is likely between the products based on their relative places in the market and their relative fame. There are 13 total factors are used by courts to determine likelihood of confusion, but it's important to not that this isn't a score card concept. Each factor may be weighted according to the circumstances so it's possible that even in a case where only one or two factors show a likelihood of confusion that the mark would still be unregisterable. For example, if I had a company named Bungie Advanced Technologies that made routers and switches, it would be potentially confused with Bungie Studios. On the other hand, if I started Bungie Rent-A-Car, then that would be unlikely to be confused. Famous marks associated with large companies, like Nintendo or Disney, are often found to be confusing even in unrelated industries as famous marks are afforded extra protection based on their notoriety.

Dilution, on the other hand, it where a mark diminishes the distinctiveness or value of the mark. Dilution is typically blurring, something which makes the mark less distinctive, or tarnishment, something which makes the mark less valuable or damages the reputation of the mark. Dilution can be exceedingly complex, but I will try to give a few examples that fall under the dilution umbrella. For example, the Philips CD-i Zelda games could be seen as a dilution of the Zelda brand, if they weren't licensed. As another example, if someone opened a Play Station Amusement Park, this would dilute the PlayStation brand. Finally, if someone opened Xtreme Boxing Live and went by X-Box Live, that would likely be dilution.

There is one other, much rarer, reason for rejection. Trademarks cannot be functional. This generally applies to cases where a specific color or shape is the trademarked item, like a Coke bottle or the color pink for insulation with Owens-Corning. If the trademark at issue is somehow functional, then it cannot be a trademark. However, in those cases, the shape and color are not functional, so they are trademarkable. As far as I'm aware, there hasn't been a functional trademark case in a game context.

Once the mark passes muster with the trademark examiner, then there is a public comment period where others can object to the mark. Typically, these are other companies that feel the mark infringes on their mark or the mark is not distinctive and its registration will hurt their line of business. Once this process is over, the mark is registered. Registration can continue infinitely, in theory, so long as the business continues to renew the registration and the products remain in the marketplace.

Assuming the mark is registered, then you are afforded some specific protections. Marks on both the principal and supplemental register can use the R logo, as the TM logo doesn't have any legal significance. More importantly, placement on the principal register affords additional protections in court, including the presumption of ownership of the mark and its validity, presumption that all parties have actual notice of the use of the mark, the exclusive right to use the mark in the US, and the right to bring an action in Federal court to stop use of the mark or otherwise protect the mark. The most important benefit, however, is incontestable status for a trademark. If the mark, after being registered, goes 5 years without having its validity contested, then it can be classified as incontestable (though I won't detail the process), which means that it cannot be attacked in court for validity other than on the grounds it has become generic, been abandoned, was obtained through fraud, or a few other limited issues. The important part of the status is that the mark cannot be challenged on the grounds that it is not distinctive, is confusingly similar to someone else's mark that was in use when the registration occurred and is still in use, or is functional.

This is just a pretty simplistic overview of trademarks, and there are many specifics and technical details I didn't touch on in the interest of time and length. I've also basically skipped over the entire concept of trademark infringement as a private cause of action, which could be an entire article to itself. In any event, I hope this has given you a little more insight into the basics of trademarks, and you can be fairly certain that there will be more trademark issues covered in this column in the future. As for next week's trademark marathon, there's really one trademark in particular I'm hoping gets revived: Kid Icarus.

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. Opinions expressed in this column are his own. Reach him at: lawofthegame [AAT] gmail [DAWT] com.

The content of this blog article is not legal advice. It only constitutes commentary on legal issues, and is for educational and informational purposes only. Reading this blog, replying to its posts, or any other interaction on this site does not create an attorney-client privilege between you and the author. The opinions expressed on this site are not the opinions of AOL LLC., Weblogs, Inc., Joystiq.com, or The Vernon Law Group, PLLC. As with any legal issue that may confront you in a particular situation, you should always consult a qualified attorney familiar with the laws in your state.