According to the Kickstarter launched on July 13, 2017, the up-and-coming Space Odyssey video game is an “awe-inspiring gaming experience of galactic exploration and colonization.” Allegedly, the project is a scientifically accurate galaxy exploration video game. Following a Minecraft-esque real-time strategy model, players can explore the galaxy to nurture species on other planets, build robots, and discover new life forms.

Before you scoff at the fact that Space Odyssey sounds almost exactly like No Man’s Sky, you should know that the Kickstarter for deGrasse Tyson’s Space Odyssey game surpassed its goal with over $357,000 pledged and over 7,200 backers to date. While this doesn’t quite surpass the gains of the historical Homestuck video game Kickstarter,  it’s still pretty impressive.

“We’re thinking of releasing a video game that the provisional name for is ‘Space Odyssey’. Is that clever? ‘Space Odyssey’?” Well… Warner Brothers doesn’t think so.

Neil and his team, Big Red Button, are apparently still in the development stage of the game. On July 14, 2017,  Ascott Group Inc. filed a trademark application for the SPACE ODYSSEY mark for use in video games.

Citing its 1968 film 2001: A Space Odyssey, however, Warner Brothers filed an opposition against Ascott Group’s SPACE ODYSSEY mark on June 27 of this year. While Warner Brothers does not have a registration for the 2001: A SPACE ODYSSEY mark, it asserts in its opposition that it has established common law rights through extensive use of the 2001: A SPACE ODYSSEY mark on posters, shirts, and more. More extensively, it cites the success of the 2001: A Space Odyssey film and the renowned book it was based off of.

Obviously, Warner Brothers claims that the game is going to cause a likelihood of confusion as to the source and sponsorship of the video game. Many people who are fans of 2001: A Space Odyssey may be drawn to the game because they’re reminded of the film (or think its associated with the film and Warner Brothers itself). Similarly, this would make it difficult (in the event of a 2001: A Space Odyssey remake) for Warner Brothers to release a game later on if it chose to do so.

Additionally, Warner Brothers’ opposition makes the claim that Ascott Group “obviously adopted an imitation of [Warner Brothers’ mark] in bad faith with an intent to cause confusion, to profit from the goodwill symbolized by Opposer’s Mark, and to induce purchasers to believe that Applicant’s goods originate with or are licensed or endorsed by Opposer.” Saying that Ascott Group, Neil, and the game team adopted this name in bad faith is a pretty big claim, but Warner Brothers is obviously not impressed with this unauthorized use of the SPACE ODYSSEY mark.

I think that Warner Brothers has a good argument on this one, especially based on the fact that 2001: A Space Odyssey was a classic, award-winning film. It would be interesting to see this one play out, but I think that we will either see 1) a settlement between the two parties; or 2) the release of the Space Odyssey video game under a different, possibly more clever, name.

There’s another interesting note (and a lesson) here. You may be wondering why there is so much time between the original application and the opposition– almost a year, in fact! The trademark application process took an especially long time in this case because Ascott Group didn’t file a valid specimen with its original application.

In order to file a trademark registration, your mark has to be utilized in commerce. This means that you have to be making sales (or offering for sale) a good or service utilizing the mark that you’re trying to register. Usually a specimen, in the case of game development, can be a screenshot of the application in an app store or it a picture of the game’s box. While you can file an intent to use application, you’ll eventually have to file a specimen in order to prove to the USPTO that your mark is actually being used in commerce.

Ascott Group submitted screenshots of the Space Odyssey website, as well as screenshots of the Kickstarter page, on January 29, 2018. After this submission, the USPTO pushed registration of the SPACE ODYSSEY mark forward.

This brings up the interesting question of whether Kickstarter pages are a valid to prove that the mark is being used in commerce. After all, people are contributing money to the creation of the game, so doesn’t it make sense that the use is in commerce?

According to federal law, use in commerce means that…

  1. The mark is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale; and
  2. The goods are sold or transported in commerce (for Federal registration of a trademark, this means across state lines)

The issue is that the contributors to Kickstarts are not quite getting anything in return until the release of the game- it is typically a pledge to a sale. Additionally, as is unfortunately often the case, Kickstarters can fall through and money is returned. I suppose an applicant could attempt to argue that you’re purchasing the reward in the tier that you subscribe or commit to, whether you are purchasing a right to on-demand news about the game or future rights to beta-testing the game, but it can be difficult to draw this line. Additionally, it could be risky, time consuming, and downright expensive to try and make an argument like that.

While it seemed to work here, it is only likely because of the screenshot of the website above (which seems to give consumers the option to purchase the game) Additionally, there is the outstanding reality that the USPTO may not necessarily understand the nature of the video game industry. Regardless, it is ambiguous as to whether a Kickstarter page with contributions, no matter how many there are, can actually serve as proof of use in commerce and it is definitely not a good idea to rely on it as proof of use.

Overall, the big issue here is whether Warner Brothers is going to win on this opposition. While we’ll have to wait and see, it will be interesting to find out if Space Odyssey moves forward under the same name or if Neil will have to get a bit more clever.

Author, Caroline Womack, is a rising 3L at Quinnipiac University School of Law and primarily studies intellectual property law, focusing on video game and internet law.