Level Up: Why Video Game Companies Should Register Their Trademarks, Early and Often
A trademark is a word, phrase, symbol, design, or a combination of these things that identifies your goods or services, creates brand recognition, and distinguishes you from your competitors. For game companies, trademarks can include the name of the company, the name of games, logos, characters, and other marks used to identify goods or services. Although trademarks can automatically receive protection in the United States simply by virtue of their use in commerce, such common law trademark rights have significant limitations – both in scope and in the owner’s ability to effectively block others from using a confusingly similar mark, especially on the app stores. We therefore recommend that our clients promptly seek federal registration of their marks (both existing and planned marks) with the USPTO, the benefits of which are numerous and meaningful:
Public Notice. Registered trademarks are listed in the USPTO’s database, which provides public notice of the mark. This can dissuade others from using your mark without you needing to act and provides a signal to infringers that often makes them more likely to comply with a cease and desist demand without the need for litigation.
Right to Use ®. Owners can use the federal trademark registration symbol, ®, with the registered trademark. This provides notice to would‑be infringers, lends credibility to enforcement efforts, and informs your competitors that you are serious about protecting your trademark rights.
Enforcement on App Stores and Other Platforms. In our experience, many third‑party app stores and platforms are not very responsive to claims of infringement of unregistered marks (and often ignore such claims entirely). These platforms are generally much more responsive to claims of infringement of a registered trademark – allowing trademark owners to quickly block the use of a confusingly similar mark without having to go to court.
Nationwide Scope. The owner of a registered trademark is presumed to have the right to use the trademark nationwide. Unregistered trademarks generally are restricted to the geographic area of use of the mark, which potentially allows others to use the mark in other areas of the U.S.
Other Legal Presumptions. The owner of a registered trademark is entitled to various legal presumptions, such as the presumption of validity, exclusive ownership, and date of first use. This can help reduce the need for evidence in court and often helps persuade infringers to stop using a trademark without the need for litigation.
Help with Policing Confusingly Similar Marks. The USPTO substantively examines trademark applications and provides another check by guarding against the registration of similar marks by others at no additional cost to you.
Incontestable Rights. After registering a trademark and five years of continuous use, a company can apply to have a trademark declared incontestable. Incontestable status greatly restricts the ability of others to challenge many aspects of a trademark, which can save money in litigation and deter others from adopting a similar mark.
Right to Sue in Federal Court. A federally registered trademark allows you to sue for infringement in federal court. Although there are advantages and disadvantages to being in federal courts, they often have judges who have trademark law experience and can generally resolve cases faster.
Enhanced Remedies. Certain additional or enhanced remedies for a federally registered trademark are possible, such as treble damages or statutory damages for use of a counterfeit mark, the forfeiture and destruction of infringing articles, and unique remedies for infringing domain names.
Foreign Registration. A registered trademark provides a basis for registering trademarks in foreign countries.
Protection Against Importation of Infringing Merchandise. A federal trademark registration may be recorded with U.S. Customs and Border Protection, who are empowered to detain, seize, forfeit, and destroy infringing merchandise seeking entry into the United States.
For these reasons, video game companies should seriously consider registering their trademarks. Indeed, given the significant advantages that a federal registration provides for enforcement efforts, we recommend filing an intent to use application for any marks once a name/symbol/design is selected. To file an intent-to-use application, you will need a good faith (bona fide) intention to use the mark in commerce on the date the application is filed. A sworn statement is sufficient evidence of good faith, but the intention cannot be to merely to reserve a right to register a mark; there must be documentary evidence of business plans to use the mark in the near future. Finally, before a mark will be registered, the trademark owner must provide evidence that the mark is being used in commerce for the goods and services in the application.