IP Rights SIG/Trademarks

International Game Developers Association

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Trademarks

A company's brand (whether a word, name, symbol or a combination thereof) identifies and distinguishes the source of a company's goods or services from those of others, and thereby indicate reputation and quality. Over time a brand can become an extremely valuable asset, beyond the intrinsic value of the individual goods and services to which it is applied, due to the goodwill it generates from consumers.

Trademark law (The Lanham Act) provides the legal protection for this valuable asset. Trademark protection gives a company the exclusive right to use a trademark in commerce on or in connection with a specific class of goods or services, for so long as such goods or services are used in commerce---this means that unlike patents and copyrights, trademarks are potentially perpetual, but by the same token, you cannot gain trademark protection until you actually bring the goods or services to market (or more specifically, you can file an 'intent to use' application up to six months ahead of time). Trademark law addresses two concerns: first, it protects the public's interest in being able to accurately identify the source of goods and services, and second, it protects trademark owners against the loss of sales and damage to reputation that may occur if others are permitted to use a confusingly similar trademark. Trademarks are registered via the U.S. Patent and Trademark Office. Please note, however, that Section 43 of the Trademark (Lanham) Act provides certain protection even for unregistered marks.

What Can Be Protected By Trademark?

Virtually anything that can be expressed on the application form and can be applied in some way so as to identify a source. Word marks are by far the most valuable type but graphical devices such as logos are often protected this way, along with shapes, smells, sounds and even gesticulations!

By enforcing its trademark rights, a company can prevent others from using a confusingly similar trademark to market the same or similar goods or services.

When selecting a trademark, it is important to remember that since a brand is intended to act as a unique identifier as to the source of goods or services, the more distinctive the brand, the easier it will be to obtain trademark protection. For example, a trademark like Kodakâ„¢ is distinctive since it does not describe the product and is not a generic term. If a company selects a more descriptive or generic term, it will not be able to obtain trademark protection until such time, if at all, that it can establish that consumers recognise that the brand is identified with that specific company. Further, trademarks can be eroded over time (and trademark owners may bring claims for trademark dilution, even if direct consumer confusion as to source cannot be shown).

In the United States, trademarks are divided into five categories. The categories are broken down to reflect the strength of the mark. Mark strength is an indicator of strength of protection that translates into IP value. The categories are:

  • Fanciful – Fanciful marks are the strongest marks. They have no meaning other than the meaning a company associates with them. Examples of fanciful marks are Tetris and Eidos.
  • Arbitrary (sometimes called "coined") – Arbitrary marks are also strong. They are English words, but are not associated with the product until the company associates them. An example of an arbitrary mark is Apple for computers (or Ion Storm, or id).
  • Suggestive – A suggestive mark is a natural English word (or phonetically similar word) that suggests the product it represents, but does not directly describe it. These are the weakest marks that companies can normally get protection for. Examples of suggestive marks are Electronic Arts for a maker of video games; PlayStation for a console game platform; and Centipede for a game starring a centipede.
  • Descriptive – Descriptive marks are very weak marks. They are essentially useless unless a company has used them so much that they have acquired secondary meaning. This usually requires massive advertising and public exposure. In short, don't pick these as trademarks. Examples of descriptive marks include Oatnut for a bread with oats and nuts, Computerland for a store, and Yellow Pages used for telephone books.
  • Generic – Generic marks are things like table or box or video game. A generic term can never be converted to a trademark in the US.

Once a company has obtained a trademark, it is important to police that trademark and make sure that others are not using it without permission or as a generic word to describe an activity (such as "coke" used to mean any soda pop). If a company fails to do so, it may find that its trademark has lost its status as a "unique" identifier of the company, and it may not be able to stop others from using it. This is what happened to trademarks such as "aspirin" and "escalator" which once received trademark protection but are now considered generic terms anyone can use. In contrast, Xeroxâ„¢ conducted a rigorous marketing campaign to make sure that consumers did not begin to use "xerox" as the verb to denote photocopying.

Given the time, effort and expense that goes into developing a brand it is advisable, prior to using a proposed trademark, to conduct searches to identify if anyone else is already using the same or a similar trademark in a way that could potentially detract from or prevent the proposed use of a trademark. The two types of trademark searches available are searches of trademark registries and "common law" searches. A search of US federal and state trademark registries (such as at www.uspto.gov) will find whether someone has attempted to file for registration of a given trademark. A common law search will look at other sources of information such as newspapers, periodicals, business directories and Internet search sites to see if a trademark that has not been registered is nevertheless being used, and therefore afforded legal protection. A motivated individual can independently conduct limited registry and common law searches. There are also a number of service providers that will, for a fee, generate a fairly comprehensive report of potential conflicts from both trademark registries and common law sources.

Registering a Trademark

The main steps in registering a trademark are:

  1. Identify a mark and the goods or services to which it is applied
  2. Perform a clearance search if a new mark is being adopted
  3. File a first application for Registration with the USPTO to provide a first filing date
  4. File convention applications outside the country of first filing (within 6 months)
  5. Prosecute applications to grant (including overcoming Registry objections and/or third party oppositions)
  6. Pay renewal fees to maintain the registrations in force

The amount of time it takes to register a trademark varies, but it usually takes no less than nine months and can take substantially longer depending upon a number of factors, including the current length of the backlog at the trademark office in the country of registration and whether anyone objects to the attempted registration.

A general shift towards resolving conflicts by an opposition, rather than relying on the trademarks registry to raise objections, has resulted in solicitors being more active in the trademarks field. It is not unusual for solicitors to re-assume responsibility for a case under these circumstances as part of their professional diligence. This allows trademark agents to deal with issues before the trademarks registry.

Nevertheless, a company can begin using a trademark prior to its registration. In the UK and the US, trademark protection is renewable every 10 years.

How much is it going to cost?

Obtaining registration in most European countries is going to cost less than £1,000 per country if the mark is inherently registrable and does not conflict with any existing registrations. If a new mark is being adopted it is advisable to ensure that the mark is not descriptive of the product and potential conflicts have been avoided. There is a large grey area between the extremes of marks that are registrable without difficulty and those that are not registrable at all. Any potential problem with registration will be reflected in the cost of obtaining registration.

Costs in the United States are comparable to those in the UK after adjustment for prevailing exchange rates. Thus, trademark registration in the US costs around $2000.

What qualifications and experience should I look for?

You should identify a firm with expertise in the trademark registration area, although often a trademark will be filed in parallel with a patent application. Thus patent agents also file trademark applications or liaise with in-house colleagues to ensure that, where appropriate, the technology is understood and the best protection is obtained in terms of drafting specifications of goods.

International Differences In Trademark Protection

Trademarks are perhaps the most similar of the IP regimes between the US and EU member states. The EU has passed a Directive that operates very much like the federal protection regime in the United States, creating fairly predictable levels of protection throughout the Union for registered marks based on international agreements.

It is important to note that trademark protection is country specific, meaning that use of a trademark in the U.S. does not grant the user any protection in the United Kingdom. Trademark protection only extends to the geographic area in which the trademark has been used. It is important to examine the laws of the jurisdiction in which you seek trademark protection in order to learn the requirements and protection afforded by local law.

Under the Community Trademark system no allegation of use or intent to use is required. In the United States there must be evidence of use or a declaration of intent to use within a six months. For registrants in the United States, some type of brand building activity should occur prior to registration and priority in rights disputes are given to the first to use. In contrast, registrants of a Community trademark are entering a "first-to-register" system, and can plan for protection of important trade or service marks ahead of general business operations.

Rights regarding unregistered trademarks have not been harmonised in the EU, resulting in some disparate results in various member states. It also complicates the process of registration since current registrants have a harder time tracking unregistered marks. Even further, this can complicate a company's ability to reduce liability if a thorough investigation of the local market for unregistered marks is not done.

Obtaining a state or federal registration is not required in the US to establish legal rights in a trademark. A company obtains trademark rights in the US through its actual use of a trademark. Generally, the first party to use a trademark in commerce with a particular type of goods or services enjoys legal trademark protection, has the right to use and register the trademark and the ability to prevent others from infringing its brand. There are however some advantages to federally registering a trademark with the U.S. Patent and Trademark Office, including:

  1. A legal presumption of the registrant's ownership of the trademark and the right to use it nationwide in connection with the goods and/or services listed in the registration;
  2. Constructive notice to the public of your claim to ownership of that trademark;
  3. Gaining additional judicial remedies, such as access to Federal courts, which can be used against an infringer; and
  4. The ability to use the U.S. registration as a basis to obtain registration in foreign countries.

The US system distinguishes between so-called "strong" registered trademarks (entered into the Principal Register) and so-called "weak" registered trademarks (entered into the Supplemental Register). Strong trademarks (those that are distinctive, non-geographic, and unlikely to be confused with any previously registered mark) receive favourable treatment by US courts; for example, a strong trademark is presumed to have been used nationwide from the date of registration, and its owner is granted an incontestable right to use the mark after five years. Incontestability is not automatic, it must be requested (Section 15 affidavit) and paid for. Differences exist among US State laws regarding unregistered marks, but they are less sharp than those in Community law.

An additional discrepancy is becoming obvious after the United States' recent ascension to the Madrid Protocol, an international agreement establishing a rudimentary international trademark registration system. In the United States, partially because of the first use requirement, trademarks and service marks are defined very narrowly (one mark may be very similar to another if they are used in different industries), whereas under the Madrid Protocol marks - rather the services or products associated with them - can be defined very broadly.

For answers to specific UK branding/trademark questions or for information about UK trademarks in general or how to register a trademark, one can:

  1. Consult with an attorney;
  2. Visit the UK Patent Office website at http://www.patent.gov.uk ; or
  3. Contact the Enquiry Unit at 0845 9 500 505.

For similar concerns in the US:

  1. Consult with an attorney;
  2. Visit the U.S. Patent and Trademark Office's ("USPTO") website at http://www.uspto.gov ; or
  3. Contact the U.S. Patent and Trademark Office's Trademark Assistance Center at 1-800-786-9199.

Within the EU:

  1. Consult with an attorney;
  2. Visit the Office for Harmonisation in the Internal Market website at http://oami.eu.int/ ; or
  3. Contact the OHIM at (+34) 965 138 800.
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