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Chwaga

Registerring an International Trademark.

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Hi guys. I work with a company-to-be , and I'm trying to get our name trademarked. I've seen articles on making a trademark with the US Government office that does that sort of thing, but we've got people located throughout the world. Does this make a difference? Do I need to go somewhere else for an international trademark? Also, how do I register a game name? Any help is appreciated.

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It's pretty expensive to do this globally.
Even just doing it for the US and Europe is going to cost more than most small companies can afford.

You might be better looking at Copyright.

Back in the good old days I used to mail a completed version of software, or logo, or whatever, to myself in a registered envelope - and NEVER open it.

Should there ever be a dispute over copyright you can use that as evidence of a date-line for your concept.

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Original post by scratt
Back in the good old days I used to mail a completed version of software, or logo, or whatever, to myself in a registered envelope - and NEVER open it.

Should there ever be a dispute over copyright you can use that as evidence of a date-line for your concept.


You can do that but it doesn't work. IIRC it's never held up in court as it's far too easy to fake: http://en.wikipedia.org/wiki/Poor_man%27s_copyright

If you want to copyright something do the right thing and contact a lawyer/ go to the http://www.copyright.gov/ site

-me

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Original post by Chwaga
care to explain?

Copyright and trademark are very different things, but a lot of people get them confused (along with patents and trade secrets, the other members of the IP family). In this case, copyright won't do much to protect the brand power of your business name - it's clearly a trademark issue.

As an aside and just for my interest, is there an easy cheap method for securing copyright if you're broke? I know the "Poor Man's Copyright" doesn't work as it's too easy to fake, but could you take your work to, say, a Justice of the Peace or equivalent and get them to certify that it's original? Would that work in case of a dispute? (I'm just curious, and Australia doesn't have a copyright registration office).

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Ok..

Absolutely Trademark and Copyright are different things.
But you can protect a logo and so on simply with Copyright.

Also the poor mans copyright works just fine if you arrange to mail it to a Justice of the Peace and so on.

From the linked article from 'Mr. Arrogant' above .. Notice the emphasis on 'may not hold'
"Use of this method may not hold up in a court - as it is simple for individuals to pre-send envelopes which can then be used later by placing the actual IP materials inside."

Also this later in the same page he has linked to..
"The United Kingdom Patent Office says this:
... it may help copyright owners to deposit a copy of their work with a bank or solicitor or send a copy of their work to themselves by special delivery (which gives a clear date stamp on the envelope), leaving the envelope unopened on its return; this could establish that the work existed at this time. (Further details of special delivery should be available at Post Offices).""

Of course I could make a comment about the validity of quoting Wikipedia on any issue these days. But I won't.... oops.

My experience in this comes from the UK where our registered mail system is obviously a tad more trustworthy than in the US, and I have used it successfully to defend a case - albeit a few years ago.

@Tom, I was just trying to help, at the end of the day, and the attack was really unnecessary and made you look like an ass.. I suggest you go read some of your own 'green?' pages on your 'website'. Perhaps the section about 'Stupid Arrogance'.

Also, enforcing a Trademark is a world away from actually registering it.
Just like protecting a Patent is a lot harder than registering it.

[Edited by - scratt on August 18, 2008 11:03:35 PM]

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Original post by scratt
Absolutely Trademark and Copyright are different things.
But you can protect a logo and so on simply with Copyright.

I'm not sure about "simply". Copyright might apply to a logo if it's sufficiently artistic enough, but it might not if the logo is just the name of the company.

But I'm sure copyright won't cover the name of the company, which was the original question.

Hopefully madelelaw will clarify this, because she's far more trained on this than I.

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Original post by Trapper Zoid
Quote:
Original post by scratt
Absolutely Trademark and Copyright are different things.
But you can protect a logo and so on simply with Copyright.

I'm not sure about "simply". Copyright might apply to a logo if it's sufficiently artistic enough, but it might not if the logo is just the name of the company.

But I'm sure copyright won't cover the name of the company, which was the original question.

Hopefully madelelaw will clarify this, because she's far more trained on this than I.


You have a point. I was simply trying to show alternatives.

As I mentioned just above, in my experience (which is admittedly more European and in a much less litigious environment than the US) trademarking a company name is not a huge concern. You can protect your name simply by being in existence.

And defending a trademark / patent case is an expensive business. WIth Patents and Trademarks you are not automatically protected simply by paying the fees to register. A common misconception.

WIth copyright you are immediately protected the day you come up with an idea.
It's a more organic and more human process IMHO.

Assuming the original poster is a startup and will not have a copperplate logo I think my advice is worth considering.



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Other forms of the 'poor mans copyright' that should hold up in court.

1.) Put a copy of the in question item into a safety deposit box, at a trust worthy bank that keeps access logs. And NEVER VISIT IT until you secure a proper copyright/trademark.

2.) Get a priest / justice of th peace / judge / someone considered trustworthy to act as a witness. Include signed affidavit inside the envelope and have them sign + date over the seal.

3.) Combine 1 and 2

There are ways that work, in the end its all a matter of giving a provable time line. such as the access logs at a bank.

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well, for now all I need to protect is my company name and game name, I can artsy it up if necessary, but I'm on a VERY limited budget here. What do you think the best solution for protecting these are, given my situation? Is copyrighting a name enough to protect it?

I really appreciate the fast response here, thanks guys.

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You can't copyright a name, but you can copyright an artsy drawing of it (other people can use the name, but they can't use your artsy version).

Registering a trademark is very expensive but does ensure strong legal protection of the name. However, you do have to do the enforcement yourself - so say you register an international TM that covers most of the world (which you probably can't afford anyway), and some company in New Zealand starts using that name - you'll have to hire a lawyer to take these New Zealanders to court, in New Zealand...


Like copyright though, you *can* trademark something *without* registering it.

This is obviously the best option because it's (1) free, and (2) legally intimidating to other people.

Just start putting that little ™ sign next to the name, and hey presto, it's trade-marked. If you actually paid to register the trade-mark, then you would get to use the little ® sign instead, but ™ looks pretty good anyway, right?

Now if you start writing ™ next to your names and someone else starts using them, you can take them to court for trademark infringement or passing off. You'll have a harder time winning than if you had registered the trademark, but it's still possible to win nonetheless. In order to win, you will have to show that you have been actively using the trademark in the disputed marketplace -- so if a shoe company is using the same name as your game, you can't stop them, as you haven't been selling shoes.


Another question to think about though is, do you really *need* to protect your business / game name?

[Edited by - Hodgman on August 19, 2008 2:46:37 AM]

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Another cheap thing is to just register the dot com of your company name.
Sure people can still copy it but who are people going to trust, the guy with the dot com web presence or the guy without.
It may be enogh if you don't want to spend too much money.

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Original post by Hodgman
Like copyright though, you *can* trademark something *without* registering it.

Just start putting that little (tm) sign next to the name, and hey presto, it's trade-marked. If you actually paid to register the trade-mark, then you would get to use the little (r) sign instead, but (tm) looks pretty good anyway, right?

I think also you need to be using the name in commerce for it to be trademarkable. I don't think I can start typing Trapper ZoidTM and expect it to be trademarkable until I start selling Trapper ZoidTM Bobble Head Dolls.

I'm not 100% sure on that one though, or what constitutes being in "commerce". I'm in the process of thinking up business names for my own little venture in the next year so I'm a bit uncertain of how borderline some of my favourite choices are to existing trademarks; there's always a few existing ones that are close. My current plan is to register a handful of web domains I like and check with a lawyer when I'm formally setting up the business.

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Original post by Trapper Zoid
I think also you need to be using the name in commerce for it to be trademarkable. I don't think I can start typing Trapper ZoidTM and expect it to be trademarkable until I start selling Trapper ZoidTM Bobble Head Dolls.
Yeah, I'm not sure if you read it because I edited it in after posting, but I added the shoe example to try and illustrate that.

So if you TM something at the start of your development cycle and someone else beats you to market using your name, then you're screwed ;)

Quote:
Original post by CProgrammer
Sure people can still copy it but who are people going to trust, the guy with the dot com web presence or the guy without.
That's a great idea, seeing trademarking is all about establishing trust / brand recognition anyway.

The only problem is if someone else with loads of money tries to sue you for trademark infringement :(

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Original post by Hodgman
So if you TM something at the start of your development cycle and someone else beats you to market using your name, then you're screwed ;)

That's part of the reason why I prefer to refer to my games as "Project Something" while they're still in development. Of course, mostly it's because I'm rubbish at coming up with decent sounding names [smile].

Quote:
That's a great idea, seeing trademarking is all about establishing trust / brand recognition anyway.

The only problem is if someone else with loads of money tries to sue you for trademark infringement :(

That's what I'm afraid of with my prospective indie business names. I've got a bunch of web domains registered, but due to every word in the dictionary being taken they're all two words long. And there exist software companies out there with one of the two words in their trademarks. I'm hoping that the combo of words will be enough to make it unique, but I've noticed that the owner of one of the key words has recently been buying up a whole bunch of domains with that word it in from their original owners. That's the reason why I've got a couple of backups now, and why I'm going to check with a lawyer before registering the business name.

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Original post by Chwaga
but I'm on a VERY limited budget here.


In that case *anything* you do is a waste of time. Copyright, Trademarks, Patents and all other forms of IP protection are all completely meaningless unless you can afford to defend them in court. If you can't afford the 4, 5 or 6 figure sums needed to defend your IP in court then there is absolutely no point in doing this at all.

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hmmm....good point, WillC. However, what would the drawbacks be of just putting a TM next to my company name and leaving it at that? Can I trademark a name in the same way? What are the dangers of not registering my name name such? Is protecting a name REALLY worth it for just one game (assuming it becomes reasonably popular)? I'm mainly doing this to sound more official and not just another indie group.

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As stated previously, registration is not necessary to have a valid mark. Once the mark is used in trade, you have a trademark-- you can only use the designation (r) if you've registered, but your mark is still protected under common law and state law. However, there are benefits under the Lanham Act if you register. This is specifically for US law, but other countries have similar benefits for registration:

1) a right to assistance from U.S. Customs in preventing infringing goods from entering the country;
2) presumptions of mark ownership and validity and, after five years of registration, preclusion of certain challenges or defenses to the mark;
3) rights in the mark in a greater geographical region than is possible under the common law.

Bear in mind that marks don't protect themselves. You have to actively defend your mark in commerce and prevent infringement or you can and probably will lose your mark. And I really would strongly recommend reviewing the link I posted previously. As for whether you should do it-- no one can tell you that but your business manager and/or lawyer. It is an expensive process because you will probably have to pay for a trademark search on top of the registration. Research the specific costs associated and determine from there whether it's a financially reasonable route. IP law exists to protect your rights and interests. If you're not going to enforce those rights and interests, registering the mark is probably a waste of time.

Best of luck!

[Edited by - madelelaw on August 19, 2008 10:01:21 AM]

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OK, thanks for all the help guys, I really appreciate it!

I think I'm just going to put a TM next to my game name and company name, and then once it's done, get a registered copyright on the game itself. Sounds good?

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Original post by Chwaga
OK, thanks for all the help guys, I really appreciate it!

I think I'm just going to put a TM next to my game name and company name, and then once it's done, get a registered copyright on the game itself. Sounds good?

Yes, it's good enough for where you are now. The TM designation is useful in the United States, but that's about it.

As already mentioned and reiterated, you automatically have some trademark protection when you use the mark in trade, regardless of formal registration.

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