Sign in to follow this  

Domain name I've been using for years trademarked by a popular large company

This topic is 2388 days old which is more than the 365 day threshold we allow for new replies. Please post a new topic.

If you intended to correct an error in the post then please contact us.

Recommended Posts

I've been working on my indie RPG project for a few years with the ultimate goal of monetization and it looks like I could be ready for launch by the end of the year. My excitement has been through the roof lately. Unfortunately, I've just now checked and it appears a certain large social game development company has trademarked the name of my project (however, mine is plural and theirs is singular) last year. Considering how both of our projects are definitely "computer video game software", I don't think getting a trademark of my own of the pluralization would work. I'm a bit afraid to release my project as well - they could probably sue me even though I've had the domain name for years! What's the best plan here - find a new name & domain ( :( ) while of course still keeping this one just in case or try and get a trademark?

Share this post


Link to post
Share on other sites
What does your lawyer say? If you're going in to business -- especially given you've already identified a probable legal issue -- you should speak to a lawyer.

Share this post


Link to post
Share on other sites
[quote name='jbadams' timestamp='1306642925' post='4816986']
What does your lawyer say? If you're going in to business -- especially given you've already identified a probable legal issue -- you should speak to a lawyer.
[/quote]

That seems unavoidable, huh? I definitely don't have the money for that just yet.

Share this post


Link to post
Share on other sites
People can [i]always[/i] sue you, no matter whether they're right or wrong.

If it's just a (tm) on the end of the name, you don't have to "get a trademark" - you just whack the (tm) there which is publicly stating "I'm trading a product using this mark". You don't even need the (tm) there for it to be a trademark, that symbol just makes your statement more explicit.

If you've been operating under that name for longer than this other company, then when they sue you, you may be able to win the case... but no one really wants to fight that battle.
You could also just go about your business until they send you legal threats, at which point you could rename your game to "F**** YOU ZYNGA : THE GAME"...

Share this post


Link to post
Share on other sites
[quote name='Akitsune' timestamp='1306643077' post='4816987']
[quote name='jbadams' timestamp='1306642925' post='4816986']
What does your lawyer say? If you're going in to business -- especially given you've already identified a probable legal issue -- you should speak to a lawyer.
[/quote]
That seems unavoidable, huh? I definitely don't have the money for that just yet.
[/quote]
Sounds to me like you're not ready to go into business yet, then. But while you save up your money, you can start thinking about a new name for your game.

Share this post


Link to post
Share on other sites
[quote name='Hodgman' timestamp='1306643378' post='4816988']
[...]
You could also just go about your business until they send you legal threats, at which point you could rename your game to "F**** YOU ZYNGA : THE GAME"...
[/quote]

I'd totally play that game! [img]http://public.gamedev.net/public/style_emoticons/default/tongue.gif[/img]

Share this post


Link to post
Share on other sites
[quote name='Akitsune' timestamp='1306642276' post='4816985']
I've been working on my indie RPG project for a few years with the ultimate goal of monetization and it looks like I could be ready for launch by the end of the year. My excitement has been through the roof lately. Unfortunately, I've just now checked and it appears a certain large social game development company has trademarked the name of my project (however, mine is plural and theirs is singular) last year. Considering how both of our projects are definitely "computer video game software", I don't think getting a trademark of my own of the pluralization would work. I'm a bit afraid to release my project as well - they could probably sue me even though I've had the domain name for years! What's the best plan here - find a new name & domain ( :( ) while of course still keeping this one just in case or try and get a trademark?
[/quote]

Curious, why [i]didn't[/i] you register it? Lack of time? Money? The registration lady was being mean? I mean, taking on development for years without any registration seems a pretty stupid move - I don't know? The costs aren't all that great in the scheme of even an indie game and last I checked it only takes a few hours of filling out forms and whatever else you might need to send back and forth and voila - you're done.


Personally, I'd swallow this as a "lesson learned" and move on to another name. Hardly worth launching the game only to get cease 'n' desist letter the day after over the name of all things...
Anyhow, good luck with whatever you choose to do! :)

Share this post


Link to post
Share on other sites
Down here in Aussie land, names distinguished only by a plural will be rejected with almost certainty, especially if its the same type of business. I'd imagine the same applies abroad, particularly in lawsuit happy countries. So yea, talk your lawyer, or get a new name.

If you can't secure the original name, get the other business to make you an offer for the domain name. Who knows, they might be tempted to pay you good money for it, and in the meantime you can just move on.

Share this post


Link to post
Share on other sites
[quote name='DarklyDreaming' timestamp='1306665415' post='4817042']
Curious, why [i]didn't[/i] you register it? Lack of time? Money? The registration lady was being mean? I mean, taking on development for years without any registration seems a pretty stupid move - I don't know?[/quote]None of the companies I've worked for have ever registered their trademarks AFAIK. You can see how common this is by the abundance of ™ symbols around, which indicate an [i]unregistered [/i]trade mark.

In fact, one company I worked for changed their practices while I was there to almost never even use the ™ symbol, in order to make it ambiguous which names/logos we would be willing to start lawsuits over.

Share this post


Link to post
Share on other sites
[quote name='DarklyDreaming' timestamp='1306665415' post='4817042']
Curious, why [i]didn't[/i] you register it? Lack of time? Money? The registration lady was being mean? I mean, taking on development for years without any registration seems a pretty stupid move - I don't know? The costs aren't all that great in the scheme of even an indie game and last I checked it only takes a few hours of filling out forms and whatever else you might need to send back and forth and voila - you're done.


Personally, I'd swallow this as a "lesson learned" and move on to another name. Hardly worth launching the game only to get cease 'n' desist letter the day after over the name of all things...
Anyhow, good luck with whatever you choose to do! :)
[/quote]
Yes, lack of money more or less. I never considered it a big priority seeing as how I've hardly advertised it just yet - guess this certainly is a lesson learned! I think that Terraria only registered their trademark less than a month ago and nobody grabbed up their name, so I guess I really just got the short end of the stick.

[quote name='Tachikoma' timestamp='1306667583' post='4817051']
Down here in Aussie land, names distinguished only by a plural will be rejected with almost certainty, especially if its the same type of business. I'd imagine the same applies abroad, particularly in lawsuit happy countries. So yea, talk your lawyer, or get a new name.

If you can't secure the original name, get the other business to make you an offer for the domain name. Who knows, they might be tempted to pay you good money for it, and in the meantime you can just move on.
[/quote]

That would be fantastic too and would certainly help with the new trademark costs :D

[quote name='Hodgman' timestamp='1306643378' post='4816988']
People can [i]always[/i] sue you, no matter whether they're right or wrong.

If it's just a ™ on the end of the name, you don't have to "get a trademark" - you just whack the ™ there which is publicly stating "I'm trading a product using this mark". You don't even need the ™ there for it to be a trademark, that symbol just makes your statement more explicit.

If you've been operating under that name for longer than this other company, then when they sue you, you may be able to win the case... but no one really wants to fight that battle.
You could also just go about your business until they send you legal threats, at which point you could rename your game to "F**** YOU ZYNGA : THE GAME"...
[/quote]

I have been operating under it for much longer, which makes it all the more painful. I guess I'd really like to avoid getting f***ed by this large social game ( :rolleyes: ) company, so I probably will maintain it as a "backup blog" of sorts and adopt a new name and maybe the old domain will help me in the long run.

Thanks a lot for the replies guys.

Share this post


Link to post
Share on other sites
[quote name='Hodgman' timestamp='1306668661' post='4817052']
[quote name='DarklyDreaming' timestamp='1306665415' post='4817042']
Curious, why [i]didn't[/i] you register it? Lack of time? Money? The registration lady was being mean? I mean, taking on development for years without any registration seems a pretty stupid move - I don't know?[/quote]None of the companies I've worked for have ever registered their trademarks AFAIK. You can see how common this is by the abundance of ™ symbols around, which indicate an [i]unregistered [/i]trade mark.

In fact, one company I worked for changed their practices while I was there to almost never even use the ™ symbol, in order to make it ambiguous which names/logos we would be willing to start lawsuits over.
[/quote]

I still don't see how [i]that[/i] makes it any smarter to not have a registered trademark, but if you care to enlighten me...

Share this post


Link to post
Share on other sites
[quote name='Akitsune' timestamp='1306671862' post='4817066']
[quote name='DarklyDreaming' timestamp='1306665415' post='4817042']
Curious, why [i]didn't[/i] you register it? Lack of time? Money? The registration lady was being mean? I mean, taking on development for years without any registration seems a pretty stupid move - I don't know? The costs aren't all that great in the scheme of even an indie game and last I checked it only takes a few hours of filling out forms and whatever else you might need to send back and forth and voila - you're done.


Personally, I'd swallow this as a "lesson learned" and move on to another name. Hardly worth launching the game only to get cease 'n' desist letter the day after over the name of all things...
Anyhow, good luck with whatever you choose to do! :)
[/quote]
Yes, lack of money more or less. I never considered it a big priority seeing as how I've hardly advertised it just yet - guess this certainly is a lesson learned! I think that Terraria only registered their trademark less than a month ago and nobody grabbed up their name, so I guess I really just got the short end of the stick.
[/quote]
Yep. I know about not considering it a priority - it's hardly what comes first to mind to any indie dev, but I've personally learned that business comes first and everything else comes later, and it wasn't a pleasant lesson at all...

Still, you were terribly unlucky in getting your name snapped by a big developer like that.


Share this post


Link to post
Share on other sites
You can still sue over trademark infringement whether you've got an ® or are just using a ™ or have been using neither.

Most products use ™'s, which are unregistered. You generally only see ®'s on brands that take worldwide enforcement very seriously. On sites like EA or Ubisoft or Steam you won't likely find many registered trade-marks, at best you'll probably just find a bit of text that warns you that they are using certain things like logos as trademarks.

Actually, I'd be interested to see a game with an ® after it's name.

Share this post


Link to post
Share on other sites
[quote name='Hodgman' timestamp='1306674738' post='4817084']
You can still sue over trademark infringement whether you've got an ® or a ™ or neither.

Most products use ™'s, which are unregistered. You generally only see ®'s on brands that take worldwide enforcement very seriously. On sites like EA or Ubisoft or Steam you won't likely find many registered trade-marks, at best you'll probably just find a bit of text that warns you that they are using certain things like logos as trademarks.

Actually, I'd be interested to see a game with an ® after it's name.
[/quote]

Yes, that much I knew. I thought your wording implied a deeper reason [i]not[/i] to go with a registered trademark® above a non-registered™. Anyhow, not trying to stir up anything - merely curious if there was another side to the coin :)

Share this post


Link to post
Share on other sites
[quote name='Hodgman' timestamp='1306668661' post='4817052']None of the companies I've worked for have ever registered their trademarks AFAIK. You can see how common this is by the abundance of ™ symbols around, which indicate an [i]unregistered [/i]trade mark.[/quote]
[quote name='Hodgman' timestamp='1306674738' post='4817084']Actually, I'd be interested to see a game with an ® after it's name.
[/quote]
Look at game franchises that have been around a long time, then. When I was producing the Shanghai series for Activision, the term Shanghai was a registered trademark, and each version's full title was only a trademark. Don't look only at the logo on the title screen -- look also at the fine print at the bottom of the box or manual or legalese screen.

Share this post


Link to post
Share on other sites
Would it be too much trouble to rebrand yourself under a new name? If you have a product that is almost ready to be released and a fan/customer following, a name means nothing right now.

Share this post


Link to post
Share on other sites
[quote name='Tachikoma' timestamp='1306667583' post='4817051']
If you can't secure the original name, get the other business to make you an offer for the domain name. Who knows, they might be tempted to pay you good money for it, and in the meantime you can just move on.
[/quote]

If you decide to do it, proceed with caution.

There is a fine line between trying to get good money selling your domain name vs inviting lawsuits for "domain squatting" vs extortion. There are many stories about people who tried to sell a domain name or held out for more money, only to face legal consequences.

Sometimes even simple wording in an email for an offer to buy a domain name can get you in trouble as seemingly dealing in bad faith.

Generally it is best to hold on to it. If they ask you about the domain name, tell them that you have been using it since {date} for your project, and don't offer to sell. If they want to buy the name, re-iterate that you are currently using it (you said above that you are using the name in your project and don't want to abandon it) and be careful to treat any discussion as a professional business transaction.

Share this post


Link to post
Share on other sites
[quote name='Hodgman' timestamp='1306643378' post='4816988']
at which point you could rename your game to "F**** YOU ZYNGA : THE GAME"...
[/quote]

That's kind of funny (in my mind) because zynga is the sound of the word Dominicans use to mean "fuck". lol

Share this post


Link to post
Share on other sites
[quote name='owl' timestamp='1306748316' post='4817444']
That's kind of funny (in my mind) because zynga is the sound of the word Dominicans use to mean "f***". lol
[/quote]
I'm surprised Zynga doesn't know that.

Share this post


Link to post
Share on other sites
[quote name='Tom Sloper' timestamp='1306765926' post='4817515']
I'm surprised Zynga doesn't know that.
[/quote]

Even Chevy tried to sell the Nova in Mexico...

Share this post


Link to post
Share on other sites
[quote name='Khaiy' timestamp='1306768026' post='4817529']
Even Chevy tried to sell the Nova in Mexico...
[/quote]

I hate to rain on parades, Khaiy, (or to get off-topic,) but that's just an urban legend that won't go away. [url="http://www.snopes.com/business/misxlate/nova.asp"]Snopes[/url] explains why, better than I could.

If you're looking for embarrassing car names though, feel free to google "Buick Lacrosse Quebec" or the "Mazda Laputa" ;) I'm not responsible for your search results though!

Share this post


Link to post
Share on other sites
Haha same thing happened to me except my domain name was made like6 years ago. My domain game name was Ninja Assassin until a certain movie trademarked it and mae the name into an action flick. So I was force to change the IP.

Share this post


Link to post
Share on other sites

This topic is 2388 days old which is more than the 365 day threshold we allow for new replies. Please post a new topic.

If you intended to correct an error in the post then please contact us.

Create an account or sign in to comment

You need to be a member in order to leave a comment

Create an account

Sign up for a new account in our community. It's easy!

Register a new account

Sign in

Already have an account? Sign in here.

Sign In Now

Sign in to follow this