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Trademark Issues- publish without a trademark?

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Wed, 02/06/2019 - 11:53
9ofhearts
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Hi!

I am an aspiring board game designer. I have designed, prototyped and tested my first game and I wish to publish it soon. I have run into a bit of a dilemma/ road block though: Trademarking.

A while back I decided I would go through the process of trademarking the board game name. My trademark was filed, and then rejected as one of the words used is in a few other board game names. My intellectual property lawyer told me we can fight the ruling, but this would of course cost more money...

My question is how does/can one launch a board game without a trademark.
If I wish to launch my game without a trademark (trademark pending?) Will this cause me any issues with the name later on down the road. How do I protect the name? Is there a date from the release that I need to trademark by?

I would greatly appreciate any insight into this matter, as I am trying to decide whether its worth doling out more money than I already have.

Thank you!

9ofhearts

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Wed, 02/06/2019 - 13:02
#1
FrankM
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The Answer™

Okay, I don't have The Answer, but I do know that you can put ™ on your trademark without any official registration, just like you can put ­©2019 on your work.

The more important issue, of which I don't have any experience, is just how important ­® is in the marketplace. There are obvious things like getting cloned, or challenged by one of the similar names (Hey, if they're so similar to each other... why do they get ® protection, huh?). A more subtle issue is whether distributors and stores care about ® when deciding what to carry.

Hopefully, someone else here with more experience will chime in.

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Wed, 02/06/2019 - 13:38
#2
questccg
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TBH

Just make sure your name for the game is UNIQUE. Go on Board Game Geek (BGG) and do a game search for YOUR name. See what results you get and if there is nothing too similar (or even worst identical), you should be okay to get to use the name.

Other searches you can do is "Google" for the Domain Name. If it finds hits with websites that are NOT connected with a Board Game, you may find that the Domain Name will be difficult to have and be forced to add a "TCG" (The Card Game: www.thestarstcg.com) or "boardgame" (www.thestarsboardgame.com). Or some other variant which is still searchable but less popular than most of the website names.

As far as material goes, once you have decided on the name, you can put (TM) on the packaging or (C) Copyright on the backside of the rulebook, etc.

Like I said the BIGGEST concern is making sure your game name is NOT in use already and that the closest matches are fairly distant.

Check out BGG at: http://www.boardgamegeek.com

Best of luck(!?) with your game.

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Wed, 02/06/2019 - 14:16
#3
Jay103
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Yes, basically you can do an

Yes, basically you can do an unregistered trademark (the "TM") without any real fuss, but without full protection. If you register the trademark, then when that goes through you can upgrade to the R-in-a-circule and get more protection.

You definitely want to avoid violating someone ELSE'S trademark (in the same general area of business), because they literally MUST defend it if you do.

But anywhere you see a "TM" on something, that's "trademark pending", so it's more common than you think. People establish the use of the mark while it's pending.

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Wed, 02/06/2019 - 14:17
#4
Jay103
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https://www.uspto.gov/sites/d

https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf

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Wed, 02/06/2019 - 19:57
#5
I Will Never Gr...
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In short .. not necessary in the vast majority of cases.

Don't waste your time and money on a registered trademark, especially as a first timer. It's not needed in 99% of cases, UNLESS you have something truly special that is going to sell in the 10's of thousands of copies (the average game these days sells in the range of 1500-5000 copies).

You can use an unregistered TM if you wish. However, in the gaming industry it's pretty rare that you'll ever recoup the costs of registering a trademark. Then there is the issue of actually enforcing it if infringements arise.

Trademark really only protects a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

Thematic elements of games can be trademarks, names, character names, or even fictional tech terms. Examples include Star Wars, Pokemon, or even the word "Droid", MTG Mana and Tap symbols are (expired) Trademarks of Wizards of the Coast. The name of the game can also be a trademark (which is why MtG is called "Magic the Gathering" and not just "Magic").

How many copies of your game do you realistically think you will sell?

Assuming you're self publishing (as, if you're not, no publisher will even look at you if you've registered a trademark for element(s) of your game) are you prepared to run a business full, or nearly full time?

I'll dare to say nobody in the industry will steal your trademark, registered or not. Those who do infringe on trademark, copyright or patents get seriously tarnished and their reputations are all but obliterated. It's a tight knit community.

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Wed, 02/06/2019 - 20:21
#6
questccg
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Hmm... I just wanted to talk about INFLUENCE

Because my game was ORIGINALLY called "Tradewars" ... There was a registered trademark on the term "Trade Wars". Which is pretty close... In addition the trademark owner was using the term "TradeWars". But his claim was solely in the Video Game industry... Not for Board Games. When Outer Limit Games, LLC (My Publisher) reached out to the trademark owner, they assumed that the owner would agree and things could continue normally.

But the trademark owner replied with royalty terms: 3% KS and 6% all other sales...

My Publisher when they saw the terms told me that they would have to CHANGE the name ... because of the royalty response. In TRUTH the trademark owner was really in no position to dictate terms. It was the wrong category... And we should have continued with the name without any issues.

However here is the thing: the trademark owner could have disputed and claimed that the name would be in violation of his trademark. The bottom line is that the INFLUENCE of possibly causing problems (legal ones) down the line was not worth it... We simply changed the name of the game.

So it's not always about lawyering-up. Sometimes it's just a couple e-mails and some words like "royalties" ... that can alter the naming of a legitimate product into something else.

For example: you have Dove Soap and Dove Chocolate. But in different product CATEGORIES both are Registered Trademarks.

Same could have applied for Tradewars, 2 different categories: video games and board games. However since we backed down and changed the name, the trademark owner is in a better position now because he has precedence.

The bottom line is that sometimes a trademark can SCARE people away especially how you protect your trademark... And how you approach dealing with your registered trademark.

Just some food for thought!

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Wed, 02/06/2019 - 23:00
#7
Jay103
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Video games and board games

Video games and board games are pretty close, and there's occasional crossover. For the exact same mark? I'd bet you'd lose.

One of my PC titles had its trademark registration challenged by someone who owned a mark used on a hockey stick. Now THAT'S not very close, but it was close enough at least for him to cause us trouble (I think he asked for $5k), and we just left the trademark unregistered as a result.

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Wed, 02/06/2019 - 23:15
#8
questccg
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Different reasoning

Jay103 wrote:
Video games and board games are pretty close, and there's occasional crossover. For the exact same mark? I'd bet you'd lose.

This is from the guy who is making D&D accessible to 4 year olds! (LOL) I don't really think Video games are in any way, shape, or form like Board games... Yes there is crossover like Civilization (for example). But I would not consider it excessive.

But you'd probably be right that we'd "lose" ... but for other reasons. The reasons that I would cite is that the trademark owner made a fair offer: 3% KS and 6% total sales. Ok so the 6% is a bit high... We could have countered any maybe offered 4% or 5%. The truth is that he in a way extended an "Olive Branch" saying: "If you want the name, we need to make a deal." So I think the courts would have looked at his attempt to negotiate something as a FAIR opening offer...

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Thu, 02/07/2019 - 12:50
#9
Jay103
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I don't call it "Heroes &

I don't call it "Heroes & Dragons" or "Dungeons & Treasure", though :)

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Thu, 02/07/2019 - 20:24
#10
Fobs
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Using the same name like a

Using the same name like a video game doesn't sound like a good idea anyways.

I want to have a name for my game with the following attributes:
a.) easy to remember
b.) unique for games
c.) easy to find in search machines

"Tradewars" fails in my opinion in b.) and c.)

Probably you do not want to sue others for using the same name for their game, but only protect yourself against being sued.

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Thu, 02/07/2019 - 23:00
#11
Jay103
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Check out that pdf above..

Check out that pdf above.. the best trademark is nonsense. that’s why people put fantasy names into their fantasy titles. Baldur’s Gate. Heroes of Ith’lithonimen.

Okay I made that up.

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