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What legal experts think of Sony's 'Let's Play' trademark claim

What legal experts think of Sony's 'Let's Play' trademark claim

January 18, 2016 | By Chris Baker

January 18, 2016 | By Chris Baker
More: Console/PC, Business/Marketing

There was a flurry of speculation last week when the patent office rejected Sony's attempt to trademark the words "Let's Play." The claim was rejected for what seems like an odd reason--it was too similar to the existing tradmark of a company called Let'z Play. 

What would it mean for streamers and people who release Let's Play videos on Youtube if Sony is ever actually granted this patent? Has the patent office rebuffed them once and for all? What is Sony trying to do, and what will they do next?

We reached out to several attorneys with an expertise in patents and intellectual property to help us sort this out.

What do you think Sony is trying to do with this patent application?

"It would appear that Sony is looking to focus more on digital distribution of gameplay videos to compete with Twitch, YouTube, etc. Moreover, it may be looking to further develop its digital distribution business for other entertainment content."--Sean Kane, partner in the Interactive Entertainment Group at Frankfurt Kurnit

"Sony is being proactive and progressive with this move. It's unclear to me to what extent they have a claim on the 'Let's Play' mark, but 'Let's Play' videos are the future of marketing video games and esports. Sony clearly wants to be an integral part of that culture."--Ross A. Hersemann, attorney, board member IGDA Chicago, writer for LoadingLaw

"I tend to advise restraint when the gaming community grabs their pitchforks to rise up against the latest vague trademark application by a large company, as much of the hostility against such filings is often due to a misunderstanding of what trademark law is meant to accomplish… In this case, however, I am definitely fully onboard the 'this is a bad idea' bandwagon. Sony is trying to trademark the phrase 'Let's Play' in connection with '[e]lectronic transmission and streaming of video games via global and local computer networks; streaming of audio, visual, and audiovisual material via global and local computer networks.' So, basically, sharing and streaming gameplay video online, which is exactly the context in which the phrase 'Let's Play' has been commonly used in the gaming community for years now."--Angelo Alcid, attorney, writer of the Journal of Geek Law

Sony has the option to appeal this decision before June 29th. Do you think they have a shot at prevailing if they do?

"Sony does have a shot at prevailing due to the specific reason for the USPTO's current rejection. Much of the current reporting of the USPTO's 'rejection' of Sony's trademark application in the news seems to have an air of finality about it, as if the USPTO decidedly told Sony 'no' and Sony must now appeal that decision. Instead, the USPTO issued a 'non-final office action' in response to Sony's application, which is more accurately described as the USPTO saying "we have some issues with this, let's talk about it" rather than a flat 'no.'"--Angelo Alcid

"It‘s interesting to me that the mark was rejected based on soneone else’s trademark and not due to  undescriptiveness. The trademark examiners probably aren’t gamers. They have to look at a lot of marks, and it’s easier to search trademark records for a previous example rather than search on their own to see how the words are generally used. It’s gonna take the examiner hours and hours to do the latter, whereas they can just do a quick search in trademark records to dispose of case and work on something else. The fact that the rejection is based on another mark doesn’t mean that the trademark office wouldn’t also eventually conclude that the words are generic or descriptive. On the other hand, if Sony somehow comes back and successfully argues that there’s no liklihood of confusion with Letz Play, it’s unknown if the examiner will take necessary time to investigate underlying meaning of ‘Let’s play.'"--Ross Dannenberg, editor in chief of Patent Arcade and senior partner at Banner & Witcoff

"Understand that receiving an initial rejection from the USPTO is very common. The vast majority of applications receive an initial office action rejecting the request for registration. In many instances, a clarification in the class of goods or description may be sufficient for registration to move forward. Here, where there are two similar marks for use by companies in somewhat similar industries and where the descriptions of use are also potentially close, this becomes more difficult. If Sony is to prevail in its application it would need to demonstrate that its proposed mark is different from the Let'z Play mark, its services would be targeted to a different consumer and that the consumers are sophisticated enough to not be confused by the Let’s Play v. Let’z Play marks. All that said, given Sony’s size compared to that of Let'z Play of America, LLC it is possible that Sony could purchase its Let’z Play mark or otherwise enter into an agreement for both marks to co-exist."--Sean Kane

"They will almost certainly respond if they’re planning on registering the mark for the purpose I think they are (based on the description of goods/services), but whether they’ll win it probably depends on how the registered owner responds if Sony reaches out to them first. Sony has some options here—they can directly appeal to the registered owner of the competing mark and either buy out the mark or get a license/waiver, which will most likely follow a line of reasoning such as ‘we don’t contest the registration and don’t consider the mark as competing.’ They can try to modify the descriptive language of their application, but in this case it will be difficult, as the registered mark gets precedence. As the reviewing attorney noted, they both rely on 'online services to video game enthusiasts.' That’s a fairly broad market, so that’s going to hinder Sony in a direct fight with the Trademark Trial and Appeal Board/United States Patent and Trademark Office. I think they’re more likely to go to the original mark holder. If the registered mark’s use is fairly limited in regional/geographic scope, this could also help Sony’s position."--Mona Ibrahim, senior associate and Interactive Entertianment Law Group

"The trademark is very easy to attack as abandoned. It's not in use and the company that owns it was recently dissolved. Sony could easily have the trademark cancelled, so if that mark is the only thing in its way, it would be able to eventually get the registration."--Stephen Charles McArthur, who filed a Letter of Protest last week formally protesting Sony's trademark claim

"Sony will be fighting an uphill battle. Trademarks are a legal indication of source and brand, and 'Let's Play' had been colloquially used by gamers in reference to any video game play through, review, or commentary, not just ones affiliated with Sony Overcoming that common practice will be tough."--Ross A. Hersemann

"I think it's doubtful that Sony will end up getting a trademark on the phrase 'Let's Play' at the end of this whole ordeal. When a trademark application is approved by the USPTO, before it is officially registered it is first "published for opposition" for 30 days, giving any member of the public who believes they may be negatively affected by the trademark a chance to oppose the trademark (or file for an extension of time in order to file an opposition later). So even if the USPTO ultimately approves Sony's application, I think it's safe to say there are a great many prominent people in the gaming community who would oppose it given the chance."--Angelo Alcid

If Sony were to receive a trademark on "Let's Play," how might that effect people who use the "Let's Play..." monicker in their playthrough videos?

"Sony securing the mark could mean that streamers and gamers may have to rebrand and stop using the term 'Let's Play.' It depends on how aggressive Sony would choose to be in enforcing its new label, but since intellectual property rights take active enforcement to stay effective, you can bet it won't be fair game anymore."--Ross A. Hersemann

"It could be potentially disastrous for anyone who relies on 'Let's Play' videos for their livelihood. Theoretically, if Sony did end up getting this trademark, they could try to assert their trademark against all existing 'Let's Play!' YouTube videos. While the DMCA is meant to be used in cases of copyright infringement, it is also commonly (though incorrectly) used in trademark infringement cases as well. YouTube's current system for handling DMCA takedown requests would automatically take the contested videos down until the uploader responded to Sony's allegations... even if they did eventually get their videos back online, having them taken down for the first week or two would be very damaging to their income."--Angelo Alcid

"I don’t think Sony will engage in any serious Trademark trolling with the mark. They likely want to create a more commercialized version of what’s already out there. This may include paid promotion programs with YouTubers and Twitch streamers who already create 'Let’s Play' videos. It’s more likely that they’ll strive to make this mutually beneficial for themselves and the Let’s Play community."--Mona Ibrahim

"The first amendment right of free speech coexists with Trademark rights. As an example, I am allowed to mention the word 'Apple' in a video without becoming afoul of the rights of Apple the company. It really depends on how I am using the phrase. A Trademark is really and identifier of the source of a good or service. If a gameplay video tries to use this phrase 'Let’s Play' to mislead people into thinking the video is coming from Sony that would be a problem. However, if someone just said something in a video along the lines of 'I just got the Witcher III, let’s play,' that's unlikely to be a violation of Sony’s Trademark rights."--Sean Kane

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