Quote: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.

Quote: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.

Quote:Original post by Tom Sloper

Quote: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]

Quote: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]

Quote:Original post by Hodgman
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.