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Indie Dev Business Basics: Protecting Your Trademarks

Trademarks
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By Zachary Strebeck

We made it to part 3! In case you missed the first two parts, you can check out my posts on how to start a company and how to make sure you own your game content.

In this post, I’m going to discuss one of the most important assets of your new game company: your brand. Whether it’s a game title, a company name, a logo, or a slogan, all of these things have one thing in common: they tell potential customers that it’s YOU who are making and selling these things. These things are also known as “trademarks,” which is the subject of today’s post.

A crash course in trademark law

A trademark’s main function is as a “source identifier,” which means that the trademark serves to help consumers identify where certain goods and services come from.

Let’s imagine that you walk into a store and want to buy some McDonald’s hamburgers. You drive through town, and see 30 different restaurants with the McDonald’s logo and name on them. One is selling tacos, another selling pasta, and some are selling burgers and chicken nuggets. How do you know which is the real McDonald’s and which are knock-offs (besides the presence of tacos)?

This is where trademark protection comes in. When you use a brand name, logo, or slogan in commerce (meaning you’re selling a product or service under that trademark), you have exclusive rights to use that name in connection with your goods. The benefits are twofold: you can protect your business, because you get to stop others from using your trademarks, and consumers know that they’re not going into a knockoff McDonald’s to get burgers.

Distinctiveness is key

The strength of a trademark comes from how distinctive it is. By being distinctive, your trademark is really set apart from others in the eyes of customers. Usually, trademarks fall somewhere on a spectrum of distinctiveness that goes like this:

  • Fanciful trademarks (think Zaxxon or Metroid) are made up words that are totally unique to that product
  • Arbitrary trademarks (like Halo for video games or the board game Eminent Domain) are totally arbitrary names divorced from the actual goods that are being sold
  • Suggestive trademarks (Final Fantasy or Need for Speed, for instance) don’t quite describe what the product is, but they suggest it
  • Descriptive trademarks (Karate Champ or Baseball) merely describe the product – these aren’t eligible for trademark protection without evidence that the public connects the trademark with the actual product. You should avoid these.
  • Generic trademarks (“Video Game” for video games or “email” for electronic mail) are merely marks that are indistinguishable from the product being offered. Avoid at all costs!

Some of the categories, particularly Suggestive and Descriptive, get a bit muddy and the distinction is a bit suggestive. But with this framework in mind, we can get to work on naming your game or company.

The process of naming your game or game studio

Now that you know what to shoot for (Arbitrary, Fanciful, or Suggestive names), you can start the process of naming your new game studio or its first game. Here’s what I suggest:

  • Brainstorm a list of 5-10 potential names that you like. Don’t play favorites, because that one may not make the cut.
  • Eliminate bad names that aren’t distinctive enough
  • Eliminate any names that have conflicts – search the USPTO trademark search engine, the EU trademark search engine, Google, and any app store or game platform search engines for existing names that conflict with your potential names
  • Check to see if the URL is available for any remaining names. It’s usually best to have a .com URL with your chosen name as simple as possible, so that potential customers can easily type it in and find you
  • Make the tough decision of which remaining names (if any) are best

Did you get through the steps with any names still standing? If not, time to go back to the drawing board. Start making up some words. Seriously, that’s the best way to create the strongest trademarks and find available URLs.

Registering your trademark

Once you’ve decided on a name, the next step is to register your trademark. A US federal trademark registration provides a number of benefits, including:

  • Discourages others who do a trademark search from using your mark
  • Puts everyone on notice that you’re doing business using that trademark
  • Makes it easier to claim a priority date and get infringers taken off of the app stores and digital games platforms
  • Gives you access to federal courts to sue for trademark infringement and can stop importing of counterfeit goods
  • The USPTO’s refusal to register any confusingly-similar trademarks

Trademark registration isn’t necessarily difficult to do, but there are a lot of procedural and legal nuances that non-lawyers (and even may non-trademark lawyers) can miss. This can lead to costly mistakes and invalidation of your trademark, so I would obviously recommend having an attorney file your trademark application.

There are services out there, like LegalZoom and Trademarkia, that will file a trademark application much cheaper than an attorney like myself. However, they don’t really “do” anything besides fill out the form and look for exact matches, which any monkey can do. The benefit of an attorney is in their subjective understanding of what can and cannot get registered, and their help along the process when any issues arise.

As with any moderately-complex subject, I say it’s worth the money to pay a professional to just take care of it for you, rather than spending your own valuable time figuring it out (which you could have spent programming your game) and potentially screwing up the entire thing.

Policing your trademark

There are a number of ways that you can police your trademark against potential infringers.

  • Sending cease and desist letters to infringers (this can be pretty scary for the infringer and often solves the issue without further legal action)
  • Filing takedown notices with the various digital game and social media platforms
  • Entering into co-existence agreements with those using confusingly-similar trademarks, where you agree not to cross into each others’ business areas
  • Filing trademark infringement lawsuits, if necessary

If you don’t do this, you may actually lose your trademark rights. For that reason, it’s extremely important that you put in the work to stop infringement of your brand name.

For an example of a trademark that wasn’t properly policed, look no further than the infamous Flappy Bird. The app stores are filled with infinite numbers of clones, using the word “Flappy” in their name. While the creator of Flappy Bird doesn’t seem to care, it’s a good lesson in what happens when you’re not curating your brand. There’s almost no value there, because it’s been diluted so much. So rather than creating a lucrative franchise out of Flappy Bird, it’s been relegated to just one game in a sea of a million clones.

It’s also important to balance the need to police and protect your trademarks with the potential public reaction. Everyone remembers the fiasco with King.com registering “Saga” and other marks related to their Candy Crush Saga game, and the backlash that ensued. Trademark overreach by lawyers and businesspeople can result in negative publicity, so you should always weigh the value of the trademark with this potential reaction.

Wrap up

Hopefully, you have a much better understanding of trademark law and what it means for game developers. In the next post in the series, I’ll tackle copyright – what it is, why it’s important, and how and why to register. In the meantime, check out my new course for indie developers, Indie Game Startup, where you’ll learn about all the business, marketing, and legal steps you need to take to start an indie game studio and publish your first game.