I was recently talking with a friend about a situation that is likely all too common: a small-time development company picked a name for themselves and received a cease & desist letter for the use of their company name once they started getting some publicity. This post explores a hypothetical situation and options you could have if you find yourself in this kind of position.
What if you just offer services?
If you’re offering a service, it’s exactly the same issue as if you’re offering a product for sale: trademarks. In this case, I’ll be talking about game development as a service, so you’d be filing for a service mark, if you were so inclined. If you offer any kind of service, be it web hosting, coding, art for hire, etc., you can likely register your brand name as a service mark. Ask a lawyer if you’re not sure.
What if you’re just a nobody right now?
Well, isn’t the point of your efforts to get into the big time? What, you think that no one would bother trying to get rich off your brand name in the event you rise to fame just because you’re a nobody right now? Remember those things called knock-offs? Clones? Fake-ity-fake-fakes? Yeah. Don’t let someone tarnish your name with sub par goods or services just because you didn’t think you were famous enough to bother with a trademark. Becoming famous isn’t exactly a cookie cutter endeavor–it usually happens when you’re not looking, and frequently before you’re set, legally speaking.
- Developer A picks a name for themselves. They’re just a small-time development team that provides development services.
- Developer A Google’s their name and sees that another group (Developer B) has the same name, but Developer B is in a different state and only does personal projects for friends, like wedding invite games.
- Developer A asks Developer B, who has been around for 10+ years, if it’s okay that Developer A uses the name for their development company. Surprisingly (and this is why you should ALWAYS THINK ABOUT ASKING), Developer B is totally fine with it and gives their blessing. We’ll say that understanding was in writing for extra awesomeness. Woot!
- Developer A gets some publicity for games they’ve developed. Yay!
- Developer A immediately gets a cease & desist letter (telling them to stop using the name in conjunction with their game development services) from Developer C, who has been around only a couple of years more than Developer A, is in yet another state. Somehow, Developer C didn’t come up in the prior Google search.
- No one has a registered trademark on the Game Development Company Name.
Even though none of the developers in this situation were really big names, you should be able to see that doesn’t matter. It’s generally always a good idea to get registrations in early so that you don’t run into this exact problem (e.g. if you were Developer C). That way, you don’t have to waste money on lawyers trying to sort out this kind of problem after the fact, but rather just pay them to send cease and desist letters.
WHAT COULD YOU DO IF YOU’RE IN DEVELOPER A’S POSITION?
Developer A has a couple of choices: (a) ignore the C&D (not generally a good choice–but talk to a lawyer), (b) race to the USPTO and file a trademark on the name, (c) negotiate with Developer C, or (d) change their name after all that marketing and press for the original company name.
(a) ignore the C&D
This will always depend on your situation, because C&Ds can be either totally valid, totally baseless, or (often times) somewhere in between. Always talk to a lawyer if you’re ever concerned about what to do if you receive a C&D letter.
(b) race to the USPTO and file a trademark on the name
Because Developer A was the last one to use the Game Development Company Name as a source identifier for their game-making services (service mark), they are likely to be considered ‘junior users’, which means that anyone with prior use of the mark will have priority/seniority over them and could win in a trademark (it’s a service mark, but we’re going to say trademark from now on because it’s easier to understand) registration battle. This is why option ‘b’ wouldn’t necessarily work out in Developer A’s favor, without more, because while Developer B gave their blessing on the use (essentially a waiver), Developer C hasn’t, and Developer C was using it first in the same industry. Remember, trademarks and service marks are there to prevent consumer confusion between brands. The Government doesn’t want someone to hire Developer A’s services thinking it was Developer C, and vice versa.
If the game was being offered online, such as on the App Store, then it’s readily arguable that the geography of use would be per country (rather than city or state) that game reaches. This means that even if common law trademark law applied (basically you get trademark protection only in the places where you’ve sold goods or services), it would mean national protection despite not having a federal registration (which is usually the only way you can get national protection from other users of the mark).
As such, Developer A is in a tricky spot because if they tried to register the name, and either Developer C or the Trademark Office notices, either one could oppose the registration and make it really difficult for Developer A to get their application through.
On the other hand, if Developer C doesn’t oppose it, and if the USPTO doesn’t decline registration of the mark, then Developer A would be in a much stronger position to move forward with their use. This doesn’t mean they get a golden ticket, it just means that the evidence is far more in Developer A’s favor than Developer C’s.
(c) negotiate with Developer C
Good luck with that. Then again, it worked out with Developer B, so you should never rule out this option. You just never know how they’ll react.
(d) change their name after all that marketing and press for the original company name
Obviously this would be less than ideal, given that changing the name would mean losing all that press and identification listeners have with the company– do you see now how trademarks and service marks work? They are the method in which people identify goods or services with their creators!
WHAT COULD YOU DO IF YOU’RE IN DEVELOPER C’S POSITION?
If you created a service you’re selling, or an app/game/etc., and you haven’t obtained a trademark registration for that service, not all is lost. As I mentioned above, there are some backup plans allowed in common law, and while they’re less than ideal compared to the level of protection you’re provided with a federal registration, it’s better than a poke in the eye with a sharp stick. That’s because even if someone registers your name after you’ve been using it in commerce (e.g. you’ve sold your services to legitimate customers at a legitimate price), you are at least protected in the states/locations where you’ve previously sold those goods or services, and if you’re online, then that potentially means nation-wide (not necessarily worldwide, as the rules for federal trademark registration is a bit different than US law).
Thus, if you were Developer C, and sent a C&D letter to Developer A, then you’re in a pretty good position to argue your case before the USPTO, at least if you can prove earlier use in commerce (e.g. sales receipts).
But what if Developer A raced in and filed that application for the service mark before you?
You could oppose it.
While the USPTO also does their own search when registration applications like that come in, it’s not foolproof. Trademark owners are responsible for policing their own mark (like you did with the C&D telling them to stop). But, you could watch for the registration (if you haven’t already filed your own) and when it’s published for opposition in the official Gazette, you send in your notice of opposition saying ‘hey, we had that first!’ (obviously not in that phrasing)
Always consider trademarks in the back of your mind when you create a product or service. Think like a grown-up business person and actually consider the marketability of your product and do at least a knock-out search (Google) of your chosen name to see if there will be any potential conflicts down the road.
But, just because another company is using your name, remember that Pandora is a trademark for both jewelry and internet radio–there are different classes of goods and services out there, and if there isn’t likely to be any confusion for consumers, you might be okay. Talk to a lawyer if you’re at all concerned, curious, or confused.
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