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Naming my game

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I've finally come up with a name for my game that I'm happy with. A quick google search does not identify any games with the name, however there is a band and a software company here in Australia with the name, a novel on Amazon with the name as it's title (fiction from what I can tell) and a cyber security company in the US. As far as I can tell none are using a TM or R symbol. My immediate plans for the name would be on xbox live indie games (XNA) and PC in the same regions (either / or, I'm not sure yet). I should mention that I read a few other threads in this forum regarding names but I'm not really certain they fit my situation, same goes for the trademark wikipedia entry. Would I be violating the rights of these other entities to the name if I chose to go ahead with the name?

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Original post by BLiTZWiNG
1. A quick google search does not identify any games with the name, however there is a band and a software company here in Australia with the name, a novel on Amazon with the name as it's title (fiction from what I can tell) and a cyber security company in the US.
2. As far as I can tell none are using a TM or R symbol.

1. A band, a software company, a novel, and a service company. Wow. (Novels are always fiction, by the way.) The novel might be the toughest one for your purposes. But any of those entities might sue you for naming your game the same as their companies, organizations, or products.
2. Were you trying to make a point with that sentence? Because it doesn't mean a damn thing whether or not they use a symbol.

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Original post by Tom Sloper
2. Were you trying to make a point with that sentence? Because it doesn't mean a damn thing whether or not they use a symbol.
Well if someone puts a (tm) next to a mark, you know they're trying to assert their ownership over it, and if they put an (r) next to it, you know they've registered it.
Not seeing those symbols doesn't mean you are safe, but seeing those symbols does mean that you're not safe ;)

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Original post by Tom Sloper
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Original post by BLiTZWiNG
1. A quick google search does not identify any games with the name, however there is a band and a software company here in Australia with the name, a novel on Amazon with the name as it's title (fiction from what I can tell) and a cyber security company in the US.
2. As far as I can tell none are using a TM or R symbol.

1. A band, a software company, a novel, and a service company. Wow. (Novels are always fiction, by the way.) The novel might be the toughest one for your purposes. But any of those entities might sue you for naming your game the same as their companies, organizations, or products.
2. Were you trying to make a point with that sentence? Because it doesn't mean a damn thing whether or not they use a symbol.


Thanks for your time Tom.

Yes I was trying to make a point, my apologies. I am unsure as to whether the use of a name is protected regardless of the type of entity being named. For example, if I designed a new range of motor boats and decided to call than range the "Microsoft" series, am I infringing Microsoft the software company's trademark of that name even though the latter does not make water craft of any kind?

Edit: I think I'm also trying to work out if they themselves are protected given that none of them use the TM and R marks and there are already around five usages of the name in different fields, and whether that fact nullifies in any way a claim made by any one of them against any other.

I figured the novel might be a problem, especially given that the novel and my game are both military spec ops in nature, though the book is set in the Gulf War, and my game is set in space in a fictional universe, but I realise that is fairly irrelevant, and if not, works against me anyway.

I am not against changing the name of my game, I'm merely exploring where the boundaries of naming rights are. I don't want to upset anyone or give anyone any reason to sue me.

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As far as I can tell none are using a TM or R symbol.
They automatically get protection by virtue of using the mark in trade. Adding a trademark symbol or registered trademark symbol is not obligatory, and the symbols only have significance in a few countries.



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I'm merely exploring where the boundaries of naming rights are. I don't want to upset anyone or give anyone any reason to sue me.



Congratulations!



You are at the point in your gamedev career that you really need to consult with an attorney. At the very least, hire one with business and trademark experience. Ideally it would be somebody with industry experience. It isn't expensive, and you can get actual legal advice.

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Original post by frob
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As far as I can tell none are using a TM or R symbol.
They automatically get protection by virtue of using the mark in trade. Adding a trademark symbol or registered trademark symbol is not obligatory, and the symbols only have significance in a few countries.



Quote:
I'm merely exploring where the boundaries of naming rights are. I don't want to upset anyone or give anyone any reason to sue me.



Congratulations!



You are at the point in your gamedev career that you really need to consult with an attorney. At the very least, hire one with business and trademark experience. Ideally it would be somebody with industry experience. It isn't expensive, and you can get actual legal advice.


Thanks frob!

I don't think I'm actually anywhere near that point though really. My game is barely playable at this stage with very few game assets (none finalised) at this stage. I'm just thinking long term. I realise I will need to speak to a lawyer at some stage, I'm just trying to do some research first. If I decide that the name of my game is critical to its success then I will venture forth and find a lawyer and get things organised. As it is, this is a hobby project for which I one day plan to a) finish and b) release. Neither of those things may happen!


Does the fact that multiple companies / organisations are using the make dilute the value of their respective trade marks?

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Original post by BLiTZWiNG
Does the fact that multiple companies / organisations are using the make dilute the value of their respective trade marks?

You can use that argument in court when one of them sues you and you're acting as your own attorney.

Or you can change the name of your game, and when your game is farther along, hire an attorney.

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Original post by BLiTZWiNG
Does the fact that multiple companies / organisations are using the make dilute the value of their respective trade marks?
Most business decisions, including this, are about risk management.

What is the risk that they will sue? Will the companies treat them as different industries, or will they send out attack lawyers similar to the "Edge" cases?

What is the risk that a court will agree? Does your lawyer say it is trivial to defend, or hard to defend? What is the risk that the defense you mentioned would hold up in court?

What is the risk that that name (or a different name) will impact the game? Is that the penultimate title which absolutely must be used, or can you come up with something else?



Those are questions for a good business attorney. Well, all but the last two, which are for marketers and planners.

The safest answer is to create a completely unique name, which is why we keep saying that.

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Actually, I have one more question on this:

If you use your company / real name as part of the title, ie. Sid Meier's Civilization, is that considered part of the title?

If so, if a new game came out called Sid Meier's Mass Effect, do EA have a case against them in your opinion? I'm not planning to do this, but I'm interested to know, it may also be possible for me to add another word to the title to make it sufficiently different (ie. not just "of" or "to" or "and", but another "content" word).

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Original post by BLiTZWiNG
If you use your company / real name as part of the title, ie. Sid Meier's Civilization, is that considered part of the title?

Yes. The purpose of trademarks is not to give a company ownership over a word or phrase but to ensure the public don't suffer confusion regarding the origin of a product. You can do this by using a unique trademark such as a made up word (EG Diagio) or by using a combination of words/graphics that are unique (EG: Armageddon: The monkey wars). Inserting your/company name would fall into that second group and would certainly make clear the origin of the product.

Other points re Trademarks - they are industry specific. Or to be more precise they are class specific. When you register a trademark you must select the class of goods or service you want to use the mark in. The UK trademark office has a list here http://www.ipo.gov.uk/types/tm/t-applying/t-class.htm. You local trademark office website should have a similar list.

This means that some of the products mentioned above MAY not be a problem. For example Books. These fall under class 16. The definition of which is...
Quote:
Paper, cardboard and goods made from these materials; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters packaging materials; printers' type; printing blocks; disposable nappies of paper for babies; printed publications; paint boxes for children; cheque book holders.

Obviously a computer game wouldn't match that definition so your trademark application would be fine.

Unfortunately there might be problems with the computer software company as some of the class specification are fairly wide ranging and could cover business apps as well as games. - That fact wont 100% preclude you getting a trademark. The makers of a business app may not feel it necessary to object to a trademark registration for a game, given that the markets are totally different and realistically unlikely to cause any confusion to customers.

Final point - there are several classes that cover games software/games consoles/PC software etc. You would need to carefully read through all the definitions and register your mark in all those classes to get the necessary protection. Fees are usually per mark + a per class fee.

and finally... once you have registered a mark in your home market and got it granted (can take several months), you then need to extend it to the other markets in which you trade. That will cost roughly the same per territory as the original application.

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Thankyou Dan, very helpful.

I'm mainly running through this exercise to avoid stepping on other peoples toes more than protecting my own title currently. I'm not looking for ownership of the words and I realise that you can't own them, and nor do I want to either... I followed the Tim Langdell thing.

I found it interesting to look back over game packagings that I have, finding neither R or TM on Civilization 4 and Fallout 1, 2 and Tactics, only a TM on SimCity 4 and R on World of Warcraft.

At present I am planning to alter my name a little... maybe make it GAME: SOMETHING ELSE or similar. I noticed also during my USPTO search that my search came up with 4 links, 2 live, 2 dead. Two of them however (the live ones) were actually ONEWORD as opposed to ONE WORD, which is how I wanted my title.

Is ONEWORD considered different from ONE WORD? I know I'm pretty much nit picking here, but I'm interested. I can't really imagine that it would be a sane idea to name your game WAR CRAFT. I imagine that the idea of ensuring there is no confusion would come into play here.

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I'm mainly running through this exercise to avoid stepping on other peoples toes more than protecting my own title currently. I'm not looking for ownership of the words and I realise that you can't own them, and nor do I want to either


This bit made me wonder... What would happen if I create an awesomely cool game with a unique title like "Hinch's Awesome Game" (who else in their right mind would call a game that?), and the game is incredibly successful, but then oops! I was a bit forgetful and completely failed to register any trademarks. If someone else brings out a game afterwards with exactly the same title, can they register it and hold me to ransom even though my game has been out making me rich and famous for a long time? Do trademarks have a concept like "prior art" in patents?

Of course the real answer is "ask a lawyer" but this is merely an idle curiosity so instead I opt for "post on an internet forum". :)

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Original post by Hinch
this is merely an idle curiosity

This is merely an idle answer, then. Since your mark is provably used first, you'd likely win in court, and he'd have to pay your court costs. But lots of luck collecting the judgment.

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Original post by Tom Sloper
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Original post by BLiTZWiNG
1. A quick google search does not identify any games with the name, however there is a band and a software company here in Australia with the name, a novel on Amazon with the name as it's title (fiction from what I can tell) and a cyber security company in the US.
2. As far as I can tell none are using a TM or R symbol.

1. A band, a software company, a novel, and a service company. Wow. (Novels are always fiction, by the way.) The novel might be the toughest one for your purposes. But any of those entities might sue you for naming your game the same as their companies, organizations, or products.
2. Were you trying to make a point with that sentence? Because it doesn't mean a damn thing whether or not they use a symbol.


as to #2, that's not necessarily true. Use of the TM or R symbols provide notice. Notice (particularly when it comes to registered marks) plays a major role in what damages you can claim. In trademark this has an effect on whether the claimant is only entitled to injunctive relief, and in copyright failure to provide notice can substantially reduce statutory damages. While it may not necessarily have an effect on whether the mark is actually a trademark, it could have an effect on whether the mark's worth enforcing.


For the record, ALWAYS use a TM symbol if you actually want something protected as a trademark. Similarly, any copyrightable work should contain copyright notice.

As to the OP's question-- it depends. I'm not familiar enough with Aus. law to give you an idea of what unfair competition law is like over there, but if Tim Langdell is any indication of what a software company can pull with regard to its trade name/trademark, you should avoid coming in direct conflict with related products. This includes software and entertainment products such as films or novels.

It's not that you won't have a defense, but raising that defense and hiring an attorney to represent you will get expensive.

[Edited by - madelelaw on March 2, 2010 4:37:22 PM]

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For the record, ALWAYS use a TM symbol if you actually want something protected as a trademark.
This is location specific.

In the US, you are very correct.

In the rest of the world, not so much.


Among my life's journey (which includes some in-depth IP legal training in the US), EA's global legal team taught me quite a few tidbits about international IP law. I've got no comments about the other global publishers because never been in a capacity to find out their details.


When releasing products in the global markets the legal department requires that we remove all ™ and ® marks from the product. This applies even to brands that have well-established trademarks in the target nations. We have our trademarks documented in the legal sections on the game, but the symbols themselves are not used. They are allowed only in North America builds.

The copyright notice must also be present and prominent, but the © symbol is not globally accepted and should not be used outside of countries that have codified it as acceptable. You mentioned copyright notice generally, so I have no complaint about it. The globally legally acceptable word is "copyright", nothing less.


If EA's corporate testing finds any of the marks in a build that is not destined for North America, they will kick it back as an unshippable legal bug.



IP law is complex, especially once you get into the global economy. You need (at least) an IP lawyer from your home country, and somebody who is expert in the other countries you care about.

You need an expert in your home country's IP laws. The laws in the US are similar to Australia's in many respects, but there are many very important differences.

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Original post by frob
When releasing products in the global markets the legal department requires that we remove all ™ and ® marks from the product. This applies even to brands that have well-established trademarks in the target nations. We have our trademarks documented in the legal sections on the game, but the symbols themselves are not used. They are allowed only in North America builds.

If EA's corporate testing finds either mark in a build that is not destined for North America, they will kick it back as an unshippable legal bug.
The last big company I worked as was the opposite -- every bit of art anywhere in the product (or packaging) that used any logos/names of the company/game/brand had to include the TM or it would get sent back as an unshippable bug (this was the same for all markets - USA/Non-US Americas/EMEA/Asia Pacific). The "TM scan" eventually ended up on the art-director's checklist because it was so common for games to be held back due to a missing TM... This company also gave out bonuses to game designers who wrote up patent-drafts for their game-mechanics :(
Stupid complex IP laws!!

[Edited by - Hodgman on March 2, 2010 10:27:15 PM]

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The last big company I worked as was the opposite -- every bit of art anywhere in the product (or packaging) that used any of our logos/names of the company/game/brand had to include the TM or it would get sent back as an unshippable bug

Yep, I can echo that one.

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