This article was originally posted on Kongregate's Developer Blog.
One question developers often ask is if they should trademark their game title or company name (or not). We just went through the trademarking process with our new gaming platform Kartridge and, after a lot of calls with lawyers and trademark specialists, can share some insights. As with everything, there are both pros and cons to trademarking.
Please note that this article is merely an opinion from a marketer's perspective and does not constitute legal guidance. One should always check and verify their own approach with a qualified lawyer experienced in trademark law.
What is a trademark anyway?
A trademark is generally defined as “a recognizable sign, design, or expression which identifies products or services of a particular source from those of others.” It offers legal protection against anyone using your game or company title, or a similar derivative of your name, without permission.
Trademarks fall into different classes that, generally, identify the industry the mark exists under. Trademarks can span different classes, and it is possible to have the same name exist in different classes so long as the classes do not overlap. An example here is Delta Airlines (transportation), Delta Faucets (industrial), and Delta Dental (insurance/financial). All share the same base “Delta” name but all exist independently within their own trademark classes. There is a class for online games (class 41) but no such class for mobile games yet.
The first step is identifying if the name is available within the desired class. One can do their own searches (the TESS database at https://www.uspto.gov/ is a good starting spot for US terms) or hire a legal firm to do the searches on your behalf. While you can save on costs by doing searches yourself, having a legal firm do them will help to ensure there are no potential conflicts with the title.
The second step is to identify key countries where you would want to file. This can become problematic for game titles given, in general, most developers want their games to be available globally. To protect your game title you would need to file the trademark in all geos, which can be both time consuming and expensive. Also, if there is a potential conflict with your title, you might be barred from using the title in that country, forcing you to unpublish the game. This is not such a big deal if this occurs in a country you don’t care about much, but could be a big problem if it’s a core country for your game. You will need to make similar considerations when deciding on trademarking your company name.
The third step is to employ legal counsel, specifically one that specializes in trademark law. They will help with the analysis, identifying key countries, and working with local consul if you intend to file a name or title internationally. This is not cheap. One should budget high 5-figures for a limited trademark application (20-30 geos), low 6-figures for a global application.
So...should I trademark my name?
For game names this is not really necessary at launch. While Apple prevents name duplication, Google Play does not; however, they do have a process where one can petition to remove an app with an identical name. Many online game platforms have similar restrictions or processes for developers to object to duplication. These rules exist to protect developers titles and also to eliminate customer confusion between games.
Trademark costs should be another consideration. It’s difficult for many developers to justify spending five to six figures to protect a name on a title that is not generating any revenue. Most often companies trademark game names after the game is already a hit. This offers protection against other usage (e.g. King & trademarking the term "candy") and enables one to ensure that the incoming revenue more than offsets trademarking costs. A similar rule of thumb exists for company naming.
What is/is not allowed?
One can utilize a title so long as it’s not a blatant attempt to leverage another game’s name. For example, there are plenty of apps leveraging “Clash…” in the title, leveraging the popularity of “Clash of Clans.” Generally, app stores and platforms tend to allow this. They would likely not allow a ripoff name like “Clash of Claans” given the similarity, though.
How much one can push the limit is a subject of debate. If a developer goes this route, they should also be prepared with a back-up title should their desired title get rejected, plus consider the player and ASO repercussions if this were to happen after the app is already live. Different platforms have different rules, so doing some added up-front research can help weigh the level of potential risk.
This is also where consulting a lawyer in advance would be invaluable. While this process is not perfect either, it does help mitigate your potential risk. For example, the entertainment industry can be highly protective of their IPs and more prone to monitoring and taking action against a name or title that they feel is in conflict with one of their marks. Best case you get a cease & desist, but then you have to go about the process of changing your game or company name. Worst case you get sued for damages. Either way this route has the potential for high costs in terms of legal fees and/or human time to revamp your name.
Common law protection
While trademarking provides an iron-clad defense of a name or title, one also has protection through common law application. While a trademark is a legal statute, common law is a form of legal protection derived through usage. Simplified, you can have legal protection on your mark just by having used your mark for some time.
Common law enforcement often comes down to proving usage. Typically name/title owners have to show a constant and historical usage of the name/title to have the name be defensible. This means showing the name/title has usage (e.g. users) and is public (and has been for a reasonable amount of time). You will also need to demonstrate that anyone infringing on the name has a reasonable chance to find such a name in advance and avoid its usage. This includes using any sort of search one can uncover the name from, including platform search or a simple Google query.
Demonstrating common law rights is a bit more complex than a trademark that offers inherent protection via written trademark law. You would need to work with a lawyer to explore options under common law protection if you feel your name has been copied or infringed upon. Common law rules also vary significantly between countries, so consulting qualified consul becomes imperative as your level of protection may vary greatly (or it might not exist at all).
When to trademark?
Ultimately this decision is up to each developer. One might want to trademark a name for a hit title to offer added protection or prevent similar uses of the title (this was King’s strategy behind trademarking "candy"). Given the expenses and platform restrictions around name duplication this might not always be necessary, though, as you do have platform protection plus some common law protection.
If you want to make sure your company name is protected you can trademark that as well. While you may have common law protection you will not have the platform-level protection, so often your only recourse is to hire a lawyer to help take steps to protect your name. When naming your company, it is always good to do some searches to make sure nobody else is using the name that can make a claim against you. This also sets up your common law defense of the name, should that need to be utilized. But again, these rules do vary country to country.
While trademarking is not always necessary, it can be a valuable protection of your game and/or brand. Know that the trademarking process can be a lengthy and expensive proposition; evaluate if the cost is worthwhile relative to the protections you need.
If considering trademarking a game or company name, weigh the options to protect your name(s) across the various platforms you are placing your game on. Do the initial searches to determine if there are any potential conflicts with your game name or company title, even if you do not plan on filing for a trademark immediately. Also know what options different platforms offer to protect your name or title.
Weigh your options, do your homework, and talk to a lawyer.
Did I mention this article is not legal advice? Because it is not legal advice at all. If you want actual legal advice and help evaluating the trademark process including all the costs, pros, & cons, consult a qualified lawyer. If you want to undertake the process, work with a legal firm that specializes in trademark law and has the experience and resources to assist in your local country and internationally.