So you’ve toiled away for countless hours to design a stunning new game or a thrilling new mobile app. You are all set to go to market, heck you might already be there. But wait! Are you seconds from having it all taken away?
Scare tactics aside, this is a real problem that I’ve seen too many times before. I may be a super cool attorney with three suits now, but back in the day I used to work at a video game company. I know the deal. Lawyers are expensive and the legal world is intimidating. Well, let’s try to change that, eh?
I decided to write this guide as a completely free way to educate the creative people in the industry I love. Trademarks are the furthest thing from your mind when you’re designing an app or a game, but they are as important as your code or your artwork.
Disclaimer: This article is not a lawyer. It is an article. The advice inside is only meant as a general guideline and you should always consult an attorney before moving forward with anything inside.
Questions I Often Get Asked
(I should have just written FAQ…damn…too late)
What is a trademark?
Despite the common vernacular, there is a difference between copyright, trademark, and patent. Copyright protects your art assets, scripts, stories, and code. It takes hold as you create something, for free. Squiggle a design on a chalkboard? That image is copyrighted. Patents are to protect inventions, and if you are reading this article you almost certainly don’t need one. They are extremely expensive to register, and even more so to enforce. You probably do not need a patent.
A trademark, however, is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another. It’s how you know you’re drinking a Coke instead of a Pepsi (because face it, they taste the same.) It’s the name, the logo or, often times, both. Meaning McDonald’s has trademarked both the name “McDonald’s” and the golden arches logo separately. It has protection over each.
If you want to take the time and learn a lot about trademarks in a short read, I wrote this simple guide. It has some repetitive language from this article, but it’s short and concise and explains the basics.
What’s the difference between the ™ and the ®?
Great question! Glad I asked it. The ™ symbol is free (yes, FREE!) and something you can put on things yourself to start to form common law trademark rights. Common law protection will usually only cover your geographical area and it will almost always lose to a registered mark. This is unfortunate for the game and tech industry since your region is usually “the internet” or Steam or the app store. This means that your little TM symbol will almost certainly lose to someone coming in afterwards with the much stronger R symbol (which stands for, you guessed it, “registered”) and you’ll be removed from the place where you do your business. Still, it’s better than nothing, even if only barely, and shows the world you are attempting to establish trademark rights in your industry.
That said, if you want the real protection a trademark offer, you must register with the trademark office. Once registered, you now officially own that word in the class of goods you chose to register in. That brings two obvious questions.
What the heck is a class of goods?
Let’s say you want to register your game named something dumb like “Candy Crush.” You would register that in a class of goods. Class 009, for example, is home to “video games.” You would pay your filing fee, register it in video games, and own it there. You wouldn’t own that mark however on cars or pizzerias. Those things would be found in different classes.
Unfortunately, to the USPTO, games are games. A multimillion dollar RPG is the same as a garage made app. That may change, but if you don’t have a good attorney on your side that knows the law and games, you will run into a LOT more problems during the filing period. (I’ve seen a fighting genre game conflict with a slot machine. Not even a slot machine game app. An actual casino slot machine. Attorneys know how to get around these things properly. I can’t recommend using one enough if you can afford it.)
What new powers and protections does registering with the USPTO give me?
You own that word in that industry now. Congrats. Your registered trademark:
1) Lets you use the ® symbol instead of the ™;
2) gives public notice that you own the mark. They can’t say “Oh, didn’t know about that guy” like they can with the TM symbol;
3) gives you the right to use your mark nationwide;
4) allows you to bring an action against someone trying to infringe on your mark (you can’t tell anyone else to stop using a mark without this) and;
5) allows you to use this American registration as a basis to get the mark in most foreign nations.
How much time do I have to register?
Many devs ask me this, meaning, can they go to market and get a TM after they see some success? Yes and no. For those who have the money to spend and expect success, trademark first. This makes sure the title you have chosen is kosher and you won’t be forced to change it after you start to do well (losing you a ton of reviews, links, and word of mouth advertising which is invaluable to your field.)
For those without money to spend, then follow my advice below on how to do a decent search, throw the TM symbol next to your title, and take note of when you first use the mark in commerce.
Okay. I put a TM next to my title, did the search like you said, and am in the app store. What happens now if someone else tries to register the name before me? How will the office know who wins?
This is a major concern and requires diligence on your part if you can’t afford to officially register. Using the TM and being in commerce first are both, almost always, surefire wins to stop someone else from registering the same or similar name. The problem is it’s up to you to watch for people trying to register. They don’t have a duty to find people using a TM symbol and ask permission. It’s your duty to watch out for them and file an opposition. Again, if you are actually registered then you won’t have to be so aware of new registrants. The USPTO will, usually, bounce out conflicting apps themselves.
Well registering sounds like my best option then, but I don’t have six million dollars to spend on legal fees.
Another major concern for most developers I speak with is the cost of legal services. They are expensive, but in the grand scheme of things it’s only the reputation of my industry that scares people away. Yes, a lawyer will cost you a couple hundred dollars an hour, but what does your plumber cost? What if your car breaks down? Surely you’d fix those quickly and find a way to pay it, but when it comes to protecting the thing that you’ve slaved away for years on suddenly people’s wallets tighten up. Stop it I tells ya! Let’s look at the actual costs:
Filing a trademark will cost you $275-550 dollars in government fees per class filed, depending on whether you want just your name protected, the logo, or both. Then most attorneys who aren’t at the big firms will charge about 550-950 for their services, the trademark search, and handling the coming office actions. (Office actions are communications from the USPTO requiring action on your part. They almost always happen and not all attorneys include office actions in their costs! So know what you are agreeing to, or your bill might double very quickly.) You can afford this if you are serious about your game. It’s under a thousand dollars and should absolutely be considered part of your startup costs.
You fool, Morrison! You just told us all this info so now we can just go to LegalZoom and file it ourselves! *Evil Laugh*
A lot of lawyers joke about LegalZoom being their best client, as it screws so many things up for people who try it and then they need a lawyer to fix it. A good rule is that if something is complicated enough you’d need LegalZoom, it’s complicated enough that you need a lawyer.
Fine then, I won’t use that website. I’ll go right to the Trademark Office and fill out an application myself! Mwuahaha.
Again, I wouldn’t. You may think a trademark search is as simple as typing in your game name and seeing no matches, but it’s really quite complicated and you should have a professional do it. If you are broke and can’t, then try these steps in the USPTO trademark search engine that cost a total of zero dollars:
1) Think of names that could sound kind of like yours phonetically.
2) Use a thesaurus to come up with names that mean the same thing as yours
3) Use Google translate to check your title in a few different languages as well
4) And the safest route of them all, make your company or game name something REALLY unique. Less of a chance of disputes that way.
None of this is surefire, and you will have a much higher likelihood of success if you use an attorney, but it’s a lot better than most do when they just type their video game in Google and smile when no exact match pops up.
But keep in mind…
I know a lot of developers and hobbyists don’t have the cash flow for an attorney. Follow the steps in this guide and you’ll be safer than most, but still far from where you should be. As early as you can, hire an attorney to take care of your trademark needs. You might spend more than you wanted to now, but it’s so much better than spending 50 times that down the road if a problem arises. I know some lawyers, like me (okay there’s the advertisement) take monthly payment plans and offer very low hourly rates for startups. It’s worth it, I promise.
-Ryan Morrison, Video Game Attorney