What is a trademark and how can owners of rights in video games benefit from trademark law?

By contrast to copyright, trademark protects a brand name or logo used in connection with the sale of goods or services. Classic examples of video game trademarks are TETRIS®, PAC MAN®, and, more recently WII®. As this example illustrates, the trademark can cover a specific game or an entire gaming system.

A trademark is a source identifier—it identifies the exclusive source of a product. The best trademarks consist of entirely invented terms or phrases (words that are not in the English vocabulary) but suggestive marks will also qualify. Trademarks that are descriptive may not be protectable without a showing of massive sales or many years (at least five) of use. One example would be GAMING for a magazine devoted to the gaming industry. That is because such terms potentially can be associated with multiple (rather than a single) source. Designations that are not protectable are common language terms (RACE CAR GAME) that describe product categories. They are "generic" and can never function as trademarks.

Trademark protection can also attach to characters. One need only think of MICKEY MOUSE, or HOMER SIMPSON, for examples of well-recognized characters that themselves function as brands. Accordingly, characters in a video game may function as trademarks and may be registered as such with the U.S. Trademark Office.

How long do trademarks last?

Trademarks are not limited in time the way copyrights are. That means the name of a video game will function as a mark for as long as the game is sold. The policies that require copyrighted works to fall into the public domain after some time, which are rooted in the First Amendment right of free expression, simply do not apply to the commercial brands trademark law protects. (After all, nobody's right of free expression is compromised by prohibiting them from using a trademark in connection with competing or related goods or services as those of the trademark owner. By contrast, we all have the right to use the works of Shakespeare, no longer protected under copyright and it is easy to see how that right has led to much new, original expression as in modern adaptations of those plays.)

Cost

Costs to clear (that is to make sure nobody else has taken the brand a game developer or software publisher is interested in) and register a trademark generally are $3,000 to $5,000. This is relatively inexpensive for an asset that will last indefinitely. Trademark registrations must be maintained on their fifth anniversaries and every ten years after they issue. The cost of such maintenance is generally well under $1,000.

While trademarks need not be registered to exist, a federally registered trademark (that is one registered with the U.S. Trademark Office) will give the owner a presumption of rights nationally even if the trademark owner has not used the mark every where in the nation. That means that another company or person cannot start selling a game under the same title as you, even in a state where you have not begun to publish and sell your game.

A copyright registration (achieved via application to the U.S. Copyright Office) is also not essential for copyright to exist but without one a lawsuit cannot be brought and set damages of up to $150,000 per infringement cannot be obtained. Considering that the cost of engaging an attorney to register a mark is often less than $500, registration affords a lot of "bang" for the buck.

Litigation is by nature expensive and good counsel will keep you out of it and once you're in it budget appropriately.

Do I need an attorney?

Generally speaking, to get the most effective protection, it is wise to engage an attorney. Adopting a trademark without good clearance can result in an expensive dispute and even litigation and potential loss of profits. Getting a registration often involves clearing hurdles at the U.S. Trademark Office and understanding how to do so. Filling out the right form of copyright application (and doing it correctly) is important (and easy to get wrong) because making even a small mistake can invalidate an entire registration. And when it comes to enforcing rights, an experienced attorney can counsel on the best options.

Enforcement

A trademark or copyright registration is only the beginning, of course. Once you have the rights, it is important to enforce them. Ironically, the more popular your game, the more likely it is to be infringed. At the same time, it is not practicable or possible to enforce your rights against every infringer (particularly if enforcement takes you to infringers outside the U.S. which is increasingly likely due to the Internet). Sound business judgments (is the product a good seller in the market or is it a market worth protecting for future exploitation?) will naturally guide the decision of how aggressively to police infringements and guide decisions about when to sue, when all other attempts to stop the infringement fail.

Trademark and copyright protection is territorial; that is, rights are country-specific. Good attorneys will be able to draw on a world-wide network of experienced agents throughout the world who know the nuances of the laws in the countries in which they practice, and provide cost-effective representation.

Wrapping Up

In sum, trademark and copyright afford distinctive protection of video games and confer a competitive advantage you may not want to be without. They are in effect legal monopolies and well worth considering.

— —

Jeanne can be reached at jhamburg@nmmlaw.com

&mdash —

Do you work in the video game industry? Would you like to be featured in a My Turn? Send your ideas for consideration to editor@gamedaily.com