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Scalare

Does 'token trademark use' happen a lot in the gaming business?

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Hello dear game developers! I'm not a game developer per se (though I've made some small games), but I'm an avid fan of the game Star Control 2. As some of you may know, that game was released in the early 90's and became a classic amongst many people. After that, a sequel was released, not being made by the original creators of SC2, but it flopped horrendously. The trademark 'Star Control' hopped from Accolade, to Infogrames, to Activision and it ended up with Atari, due to expire in 2007. 4 days before the expiration date of the trademark, Atari contracted Iocaine Studios to make a small game titled 'star control', and curiously enough, they were told to do a game in 4 days. http://www.facebook.com/note.php?note_id=22623305202 The game is still playable on Atari's website. http://www.atari.com/us/starcontrol/ And Atari used screenshots of that very game in their application to renew the Star Control trademark. http://tmportal.uspto.gov/external/portal/tow?SRCH=Y&isSubmitted=true&details=&SELECT=US+Serial+No&TEXT=75095591 This is clearly a case of 'token use', to maintain the trademark despite it not being commercially used anymore.
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Token Use This term refers to uses of a trademark that are purely for the purpose of securing rights in a that mark, as opposed to any true interest in or expectation of making commercial sales. A manufacturer may, for example, sporadically ship a few boxes bearing the mark, but does so with no particular intention that the mark will become associated with the source of the goods. If a mark becomes challenged on the grounds of abandonment, the trademark owner will need to prove use in commerce, and token uses will not suffice.
2 questions: 1) Would you, as a game developer, cooperate in big companies' requests to develop small games, only so they can hang on to trademarks which they technically shouldn't really have the rights for anymore? 2) Is this Atari thing an incidental thing or does such token use happen on a regular basis?

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Second question first: Does it happen?

Of course it happens. Smart companies will do everything to retain rights to the IP they own. Even if it requires a technical loophole or some very weak argument that most judges will throw out, it is cheaper for them to try to control it and later defend it if necessary. If it is ever challened, they can decide how much money to spend on the defense, or to simply claim it was an error and let it go.


The important question is:
Do you have the money or other resources to challenge it?

This applies to any IP protections, not just Star Control.

You might be correct. They *might* have completely abandoned the mark in the United States for any and all legal purposes. You *might* be able to legally use the mark for your new product. But it will probably require an expensive legal battle to be certain.

You mentioned a portion of the rules for federal registration.

There are many trademark protections at state levels, federal levels, and international levels which do not require registration.

Intellectual property is probably the most complex legal quagmire of all the legal fields. It is trivial and inexpensive to claim protections. It is prohibitively expensive to litigate, and there is usually minimal penalty for incorrectly asserting ownership. The laws are biased toward incumbent businesses (because they can afford lobbyists and various forms of bribery). Even more than that, companies are required act to protect their marks or risk losing them so courts are often lenient against invalid assertions when there is a reasonable show of good faith.

Unless and until the mark is successfully challenged, they continue to own the registered trademark and the unregistered trademarks associated with the product.



With that in mind, the second question: Would I cooperate?

Yes, I probably would. They are going to hire somebody, and the transaction is completely legal. Taking the job means an improved rapport with the company for future jobs and continued work for employees in a down economy. It provides immediate income and promises growth to a small company. It keeps food on the tables of many workers.

You might feel that they have ethically surrendered their rights or are seeking an improper registration at the federal level. You might feel that the ethics of one particular chunk of law (US federal trademark law) is more important than any other laws and policies over trademarks and intellectual property, and you may feel this so strongly that you refuse the job.

It happens every day that contractors reject work because they feel the job would be immoral or unethical.

And that is just fine.

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Original post by Scalare
2 questions:
1) Would you, as a game developer, cooperate in big companies' requests to develop small games, only so they can hang on to trademarks which they technically shouldn't really have the rights for anymore?

Sure, if they pay me enough to make the game. As you say it is token use and won't stand up to a challenge but that is up to the big company. I got paid so I don't care.
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2) Is this Atari thing an incidental thing or does such token use happen on a regular basis?

I am sure others do it. In fact I know Nokia do. They did this with a Trademark a developer I work with wanted to use.

The main reason I would really care about this is that I think it would be dumb to try and take over such a trademark. It is so well known that there would be a good chance that your game would be branded a knock off that was attempting to cash in. Better to create your own IP than try to ride on someone else's.

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Original post by Obscure
care about this is that I think it would be dumb to try and take over such a trademark. It is so well known that there would be a good chance that your game would be branded a knock off that was attempting to cash in. Better to create your own IP than try to ride on someone else's.


IP and trademarks are two different things, especially in this case.
The original creators of SC2 (toys for bob) own the intellectual property rights to the characters, story, music, artwork etc for this game.
They want to create a Star Control sequel but are hampered by the fact that Atari holds on to the trademark using these token methods.

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Original post by Scalare
IP and trademarks are two different things, especially in this case.
The original creators of SC2 (toys for bob) own the intellectual property rights to the characters, story, music, artwork etc for this game.
They want to create a Star Control sequel but are hampered by the fact that Atari holds on to the trademark using these token methods.

Trademark is one of many facets of Intellectual Property.

IP includes many topics such as trademark, copyright, patent, moral rights, author's related rights, database rights, and so on.


You describe one company owning the distinctive characters, music themes, and distinctive visuals. Those are all covered under trade mark or trade dress protections. The other company holds the name, which is covered under the same laws.

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Original post by Scalare
1) Would you, as a game developer, cooperate in big companies' requests to develop small games, only so they can hang on to trademarks which they technically shouldn't really have the rights for anymore?

Absolutely. As others have stated, it's perfectly legal for them to do this to keep their valuable IP.
In my opinion, it's not in the least "underhanded" of them (which you seem to be implying) to want to hang onto their valuable IP. I see nothing wrong with it.

I envision the IP wandering across the desert, canteen empty, no oasis or spring anywhere near. Overhead, the vultures circle, waiting for the IP to expire so they can dive down and take the carcass. You may sympathize with the vulture but I do not.

I suppose another way of envisioning it is: the IP is languishing in a prison cell, counting the days until the prison door will open. Finally the happy day nears; the IP's friends set up camp outside the prison waiting to welcome the IP to freedom. But suddenly the courts deny the release due to a legal technicality, and the poor IP has to continue languishing in the jail cell. In this scenario you may sympathize with the jail cell inmate, but I figure that's where it belongs.

(^_^)

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Original post by Tom Sloper
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Original post by Scalare
1) Would you, as a game developer, cooperate in big companies' requests to develop small games, only so they can hang on to trademarks which they technically shouldn't really have the rights for anymore?

Absolutely. As others have stated, it's perfectly legal for them to do this to keep their valuable IP.
In my opinion, it's not in the least "underhanded" of them (which you seem to be implying) to want to hang onto their valuable IP. I see nothing wrong with it.


This method of hanging on to a trademark is illegal and if it is challenged the outcome will likely be that Atari has 'abandoned' the trademark and gets a grace period to rectify this. There needs to be continued commercial use of a trademark in order for it to be allowed to be renewed. What Atari has done here is fabricate a game without any commercial intention but to hold on to the trademark.

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I envision the IP wandering across the desert, canteen empty, no oasis or spring anywhere near. Overhead, the vultures circle, waiting for the IP to expire so they can dive down and take the carcass. You may sympathize with the vulture but I do not.


In this case, it is quite clear that you can see the IP as a child or a pet that has been abandoned by Atari in the desert. It may starve and die and be eaten by vultures but in this case it is actually being rescued and healed sufficiciently for it to become healthy again and thrive again with spirit and vigor. However, Atari decided to kick it back in the desert again, prolonging its life by a few months but in the end it'll starve and die again, never having a happy life because its owners decided that if they aren't getting pleasure out of its company, neither should anyone.

In the end, Atari has no other gain from it than to prevent its competitors from making money from the trademark that they hold. The gaming community is deprived of a game they would love to play, and Atari's competitors have all the more reason to do the same to Atari itself, and have most likely done so.

One thing I'm left wondering about is why Iocaine studio's spent 4 days on that game, while all that was required was a game that carried the name Star Control. I mean, a game with a text-only title screen and a message saying randomly either "GAME OVER" or "YOU'VE WON! THE END.", would have been sufficient.
Or would that mean that the US Trademark office would not be fooled by this?

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Original post by Scalare
IP and trademarks are two different things, especially in this case.

Actually they are not different in this case or in any other case. Trademark, (and Copyright and Patents) are all forms of Intellectual Property.

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The original creators of SC2 (toys for bob) own the intellectual property rights to the characters, story, music, artwork etc for this game.
They want to create a Star Control sequel but are hampered by the fact that Atari holds on to the trademark using these token methods.

Atari hold the Trademark because the original developer was stupid enough to give it away or sell it. Like many many other developers they didn't understand the business they were in or where the value actually is and now they are finding out the hard way. Miles Jacobson of Sports Interactive went on record a few years back saying that the single biggest mistake the company ever made was to allow Eidos ownership of the Championship Manager trademark (while SI retained ownership of the code/database). When SEGA bought SI they had to spend an absolute fortune on marketing in order to build up the new Football Manager name.

Just so we are clear, I don't actually condone what Atari have done. They want to retain their Trademark and have gone about it in a way that appears to fall foul of Trademark law. If toys for bob want to contest/object then they are obviously free to do so.

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To answer your second question: yes, it happens frequently and in almost every industry, and that is because the token use doctrine (and, in fact, the entire area of trademark abandonment) is extraordinarily grey for all of its alleged simplicity. There are very few examples of a "clear case of token use," and courts regularly point to extraordinary circumstances that preclude a finding of abandonment (including economic hardship, transfer of rights, mergers, economic environment, etc.).

The same is true for zombie marks-- courts don't always look favorably on those who choose to resurrect previously successful/famous marks for the purpose of taking advantage of another company's goodwill. Of course preventing zombie marks would completely undermine the point of trademark abandonment, so obviously that's not always the case.

When a company like Atari purchases a trademark, they're purchasing the goodwill generated by the name of that product. If they'd only recently purchased it and the mark was going to expire, they may have created that 4 day project so they'd have a specimen to submit to the USPTO with their intent to use or use in commerce application. Just because there's been "a" token use doesn't mean the lawful owner of the mark intends to discontinue commercial use of the mark, which is the standard required for trademark abandonment.

...

Didn't I write about this a while back?

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I am shocked...SHOCKED...that a company that rebranded itself with an iconic trademark after purchasing said trademark, would actually stoop to this kind of level...what am I saying, of course Infogr...I mean Atari would do such a thing. The question is why are you suprised by this behavior? There are plenty of classic games that indies would love to reinvigorate that never leave the dustbin of history because publishers can't afford to have their predatory rivals swoop in and steal a piece of their legacy. If you consider the alternative and let anyone snatch "dead" TM legally prior to abandonment, then wouldn't the Activision's and EA's have already taken the most lucrative TMs and hoarded them for their own use? I think you have to be careful what you wish for when you consider cases such as these from a biased point of view. I'd hate to see some great indie title of the past be resurrected by a TM pirate who put nothing into the original game.

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Perhaps I should explain the circumstances surrounding this matter a little, since I am a member of the same community as Scalare.

Toys for Bob is the company that originally made Star Control 1 and 2. However, the now-defunct Accolade who published the games kept the rights to Star Control. It is more complicated than TFB simply giving the rights away...they got screwed pretty badly with their contract; they even had to spend a few months working on SC2 for free because Accolade wanted to force the release of an unfinished game. They made SC3 without Toys for Bob. and it was universally panned by Star Control fans. Accolade got acquired eventually (by Crystal Dynamics? I'm not sure), and the Star Control IP has changed hands several times as various mergers and the like have taken place over the years.

At some point, TFB got back the rights to all of the intellectual property except for the name "Star Control." They are now part of Activision, and they really want to make a new Star Control. Every Star Control fan wants this of course, but the Star Control name is a bit of a problem. Though really, the biggest problem is that Activision doesn't really want to let them make one.

I just thought this should be clarified because it seems people here think that Scalare is interested in this matter because he wants to scoop up an abandoned trademark. The SC community has a vested interest in this because we really want Toys for Bob to make another Star Control. This information might not change things from a legal standpoint, but it seems some people were misunderstanding why he was interested in this matter.

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Original post by nightcomesdown
Perhaps I should explain the circumstances surrounding this matter a little, since I am a member of the same community as Scalare.

Toys for Bob is the company that originally made Star Control 1 and 2. However, the now-defunct Accolade who published the games kept the rights to Star Control. It is more complicated than TFB simply giving the rights away...they got screwed pretty badly with their contract; they even had to spend a few months working on SC2 for free because Accolade wanted to force the release of an unfinished game. They made SC3 without Toys for Bob. and it was universally panned by Star Control fans. Accolade got acquired eventually (by Crystal Dynamics? I'm not sure), and the Star Control IP has changed hands several times as various mergers and the like have taken place over the years.

At some point, TFB got back the rights to all of the intellectual property except for the name "Star Control." They are now part of Activision, and they really want to make a new Star Control. Every Star Control fan wants this of course, but the Star Control name is a bit of a problem. Though really, the biggest problem is that Activision doesn't really want to let them make one.

I just thought this should be clarified because it seems people here think that Scalare is interested in this matter because he wants to scoop up an abandoned trademark. The SC community has a vested interest in this because we really want Toys for Bob to make another Star Control. This information might not change things from a legal standpoint, but it seems some people were misunderstanding why he was interested in this matter.


That definitely paints a different picture, but unfortunately there's not much in the way of suggestions or advice you're going to get a message board. Cult followings rarely amount to meeting the bottom line, so for whatever reason Activision has determined that the investment necessary to either a) purchase the mark or b) rebrand the product is too high in light of the potential return. I wouldn't blame the current mark holder at this point, which was what Scalare seemed to be suggesting.

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Original post by nightcomesdown
It is more complicated than TFB simply giving the rights away...they got screwed pretty badly with their contract; they even had to spend a few months working on SC2 for free because Accolade wanted to force the release of an unfinished game.

They signed the contract. They either knew what the terms of the contract meant, in which case they can't complain when the publisher then enacts those clauses. Alternatively they didn't know what the clauses meant, in which case they were stupid for signing them.

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At some point, TFB got back the rights to all of the intellectual property except for the name "Star Control." They are now part of Activision, and they really want to make a new Star Control. Every Star Control fan wants this of course, but the Star Control name is a bit of a problem. Though really, the biggest problem is that Activision doesn't really want to let them make one.

I am certainly not particularly pro-publisher. I work with developers to help them avoid doing these sorts of bad deals. However the games business is a business just like any other. TFB sold their company at some point and now they have to live with the results of that decision. Activision owns them and pays the bills so Activision gets to decide what they work on. With the very best will in the world what the fans of some old game want counts for very little. It would costs many millions of dollars to make a new SC game. If the fans want it made then they should be willing to pay the cost.... if they aren't willing to pay (or there aren't enough fans willing to pay) then why should a publisher pay?

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...it seems people here think that Scalare is interested in this matter because he wants to scoop up an abandoned trademark.

Understood, but as you say it doesn't make any difference legally.

Frankly this is a fuss over nothing. Sports Interactive had to change the name of Champ Manager when they stopped working with Eidos and went with SEGA. Of course all the fans knew it was the same game... just as you would know if TFB did a new SC game but used a different title. Trust me, it won't actually burn your fingers if you play an SC game that isn't actually called SC.

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Original post by Obscure
I am certainly not particularly pro-publisher.

Right. If I may borrow this statement from Dan and say, me too. My previous statements weren't meant to imply that I'm pro-publisher either.
An entity that legally owns an IP, in my opinion, has every right to protect that IP and to keep its ownership of that IP as far as legally permitted.
Which is why I was saying before with my desert and prison parables is that I see nothing wrong with this Token Trademark Use practice.

At the risk of veering off-topic, though, I think it's not so nice that the US government extends IP ownership every time it looks like Mickey Mouse is going to enter public domain.

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