The game industry has opened up in a big way over the past few years. In addition to traditional PC and console platforms, we have new iPhone and browser based social games being released every day. These new platforms have the advantage of being relatively simpler to develop for, at least to the extent that they do not require a huge team of developers to create a successful game. As a result, there are more and more small studios making small games for a broader market. This is liberating for individual developers frustrated by being a small cog in the vast faceless machine that many of the largest studios have become. It is also a low barrier of entry into the industry for new teams wanting to make a living making games.
These expanding markets for games means that now instead of three or four thousand games coming to market every year tens or possibly even hundreds of thousands of game are being released annually. As is often the case, new opportunities bring with them new challenges. The one I want to address here is:
The name used with a game is, in legal terms, a “Trademark.” Basically, a name used to identify goods (or services) in the market place. A trademark can be registered with various government agencies. But it is the use of the name in commerce that actually creates the trademark, not the registration. The registration allows the holder of the trademark to better enforce their rights. If the name you select for your game is already in use, you may well be forced to rename your game, pay the trademark holder a license fee for the right to continue to use their “mark” or fight it out in court in a effort to clear their claim in favor of yours. None of these are good options for a small studio looking to get a solid financial start.
As with many questions, the answer is,”It depends.” The cost benefit analysis is always something that should be taken into account. Ideally, a full commercial name search would be obtained and then analyzed by a qualified intellectual property attorney, who would then provide a written opinion letter as to the viability of the name before moving forward. A comprehensive search that includes the Federal, state, Domain Name and expanded common law databases, which includes, Dun and Bradstreet, Brands and Their Companies, Thomas Register, Library of Congress, News File, Domain Names and Digital Common Law - Internet Content reviewed by counsel could easily cost thousands of dollars. For a small company this may not be an option. But there is really no excuse for not doing a search of the U.S. Patent and Trademark Office, MobyGames, domain names and Google.
And when you are searching keep in mind that a trademark only applies within a specific class of goods or services. This means that if there is an auto shop, consulting firm or other business outside of the game industry that uses the name you are interested in, you are still most probably clear to use it. Also remember that it is the use of the name in connection with goods or services “in commerce” that triggers the trademark status. So, your internal use of the name or even an announcement that you intend to use the name on your game in the near future may not be sufficient to protect that name from use but another who gets their game to market first. The only way to secure a trademark in advance is my registering it with the Patent and Trademark Office under an “Intent to Use” status which gives you from six months to a few years to get your game to market while protecting the intended Trademark.
There is a great deal of information on trademarks available, from the simple to the arcane. This article I wrote several years ago entitled, “Just what are these games made of . . . legally speaking?” might be a good place to start. It’s really a good idea for anyone who makes games - which are, after all, comprised entirely of intellectual property - to have a decent understanding of exactly what that means. It’s also a good idea to know who to go to for more information when you think you may be getting in over your head and close to the edge!
GL & HF!
Tom Buscaglia, The Game Attorney