Here’s how you can effectively police and protect against trademark violations.
Regular trademark infringement searches
Keeping on top of potential infringers is the first line of defense. There are a number of ways that you can stay alert to any possible infringement of your trademark:
- Regular Google and other web searches
- Regular app store and game platform searches
- Set up a Google alert for your trademark and similar words
- Do monthly checks of the USPTO’s TESS database (trademark search) and the Trademark Official Gazette
- Encourage fans and followers to report infringement
- Pay a trademark watchdog service to alert you to conflicts
Most of those are free, while something like paying the service will cost you. For the free searches, stick an item in your calendar every month to run through a simple checklist of searches. Once you systematize this process, it shouldn’t be too difficult.
But wait – what happens when you find something?
The first move – communication
For most game developers, paying the cost of a trademark infringement lawsuit is generally out of the question. Lawsuits can end up costing a ton of money and taking years to resolve. That’s why you usually want to do everything you can to avoid litigation while still achieving your desired result.
Often, this result consists of two things:
- They stop infringing on your trademark, and
- They pay you a licensing fee/settlement for their prior use of the trademark.
If you’re just looking to stop them from using your trademark and believe that their use is innocent, it’s possible to just reach out to them and remind them of your rights. Then ask them to stop.
This can work well – it’s not overly aggressive and, as they say, “You catch more flies with honey than you do with vinegar.”
If that fails – the cease and desist letter
If being nice doesn’t work, and they either ignore or rebuff your attempt to police your mark, it’s usually time to get the lawyers involved. When a client comes to me with an issue like this, our first step is to draft a trademark cease and desist letter.
What is a cease and desist letter?
It’s basically a letter that tells the infringer to stop what they are doing, or you will take further legal action. Depending on how prior interactions have gone, the tone can go from conciliatory to aggressive, and even to downright hostile.
A normal trademark cease and desist letter usually consists of the following:
- An explanation of who you are and what your trademark is
- A description of your rights in that trademark
- A description of how they are infringing the trademark
- A demand for them to stop using the trademark, to destroy any products that are using that mark, and to pay you for their use of the mark to date.
- The threat of further legal action, should they ignore your demand.
For many game developers, a letter from an attorney that threatens to sue them can make them change their mind real quick. This is because most small devs don’t have the money to even pay for lawyers to 1) review the letter and respond, or 2) answer a legal complaint when they get sued.
What if they don’t comply?
If the cease and desist letter doesn’t work, then it is time to break out the big guns. A trademark lawsuit filed in federal court will really get their attention.
Filing and litigating a trademark infringement suit is not cheap. Generally, you have two options here:
- Finance it yourself; or
- Find an attorney who will do it on contingency.
“On contingency” means that they will front the costs and legal fees, in exchange for a sizeable portion of your recovery. Usually, you don’t pay anything unless they win. If they do win, then the fees and costs are taken out of the settlement or judgment funds.
Unfortunately, an attorney will only take a contingency case if there is the potential for an easy settlement or a big recovery. The math just doesn’t work out, otherwise.
So, if the infringer is a small company with no money, few attorneys would take that case on contingency. Similarly, the riskier the case or the more nebulous the claims, the less likely it will be to find an attorney willing to take the case.
If you get to this point, I recommend discussing the case with a few different attorneys to get a sense of your 1) likelihood of winning and 2) likelihood of recovery. You can make decisions from there.
Conclusion – your valuable video game trademark
You went through the trouble to create an awesome brand and trademark your name. Protecting the value of that trademark is vital in order to keep those trademark rights. For help protecting your game name, contact a video game trademark lawyer to get started.