Stephen McArthur is an attorney who focuses on legal issues for his firm's video game clients. You can read more about his practice at www.videogamelawyers.com
Many of our clients fund and market their games using crowdfunding platforms like Kickstarter or Fig. They almost always have the same misconception: once they successfully fund a game on Kickstarter, then they would have superior rights to someone who comes along later and begins using the game title. This is based on the otherwise correct understanding that trademark law gives protection over a product name (here, a game title) to anyone who either (1) uses the name in commerce, or (2) files an application to register it as a trademark, even on an intent-to-use basis up to three years before any actual use.
Unfortunately, putting a game title on Kickstarter and successfully funding the project does not count as using the game title in commerce and thus gives you zero rights to the name. The law for what counts as “use in commerce” was not written with crowdfunding in mind, and this is simply another example of law not being caught up with technology. That means that even though you were the first to use the game title and may have already successfully funded the game with a brilliantly unique name, you can still be sued by someone who, just a month before you release the game, gains a trademark monopoly over the game title by filing their own trademark registration or beginning their sales of the game.
I have previously written about the benefits generally of registering trademarks for video game titles here. But crowdfunding sites present a unique situation. There are several different scenarios during a Kickstarter campaign where you can find yourself swindled out of your own unique game title that you created:
- Someone else in the games industry sees your campaign and realizes that you are using the exact same (or similar) name to the name they plan to use one day in the future. They rush out to a trademark attorney and immediately register the name of your game on an intent-to-use basis. You are out of luck. If you release the game with the same name you used in your crowdfunding campaign, then you will be infringing their IP.
- Someone innocently, and with no knowledge of your Kickstarter, releases any kind of game with the same or similar name before you release your game. Since they are the first person to legally use the brand name in commerce, they have all rights to the name and you have none. The monopolistic trademark right over the game name even applies cross-console, meaning someone who begins using your name for a mobile game has rights over your use of the name for P.C. or console. We saw Blizzard run into this problem when its Overwatch P.C. game was sued by a company who first released an unrelated mobile game named Overwatch.
- Bad actors, also known as trademark squatters, see that your Kickstarter campaign has raised millions of dollars and that you have not yet filed a trademark application. They easily file a trademark application for the game title on an intent-to-use basis. They then hold the title hostage from you and threaten to sue you for using it, unless you pay them a few hundred thousand dollars.
The icing on the cake is that the guy who fleeced your brand name from you may now receive the benefit of the press, marketing, and customer goodwill since their game has the same title as yours.
It is unfortunate that the USPTO does not consider a successful crowdfunding campaign to be a “use in commerce”. But you have to work within the system that exists, not the system you want. Thus, if you are serious about creating a successful game and building a valuable IP, then you must file an intent-to-use trademark application before your Kickstarter campaign or as soon as possible after it becomes clear that the Kickstarter is raising enough money to afford the investment.
By showing the world your game title in a crowdfunding campaign without any trademark protection, you are seriously risking ownership of the game name and the brand’s IP. An intent-to-use trademark application can be filed more than three years before your game’s actual release date and gives you full trademark protection over the game title from the day you file the application. For the Kickstarter campaigns that can afford the investment, I rate immediately registering the trademark somewhere between “strongly recommend” and “mandatory”.
This article is for general information purposes and is not intended to be and should not be taken as legal advice.