Trademark Rights in Video Games: Protecting the Brand

Video games are not only a form of entertainment, but also a form of artistic expression. They involve creativity, innovation, and skill in creating immersive and interactive worlds. However, video games also involve intellectual property rights, such as trademarks, that need to be protected and respected.

an arcade with several gaming machines. There is a pink light shading the space

Video games are not only a form of entertainment, but also a form of artistic expression. They involve creativity, innovation, and skill in creating immersive and interactive worlds. However, video games also involve intellectual property rights, such as trademarks, that need to be protected and respected.

What are trademarks and why are they important for video games?

A trademark is a word, slogan, logo, symbol, or design that identifies and distinguishes the source of goods or services from others. Trademarks help consumers to recognize the quality and reputation of the products or services they buy, and help businesses to build their brand and goodwill.

For video games, trademarks are essential to protect the identity and value of the game and its developer. Trademarks can cover various aspects of a video game, such as:

  • The name of the game: This is the most obvious and important trademark for a video game, as it is the primary way that consumers identify the game. For example, “Halo”, “Minecraft”, and “Fortnite” are well-known trademarks for popular video games.
  • The logo of the game: This is the graphical representation of the name or the theme of the game. It can be stylized, colorful, or iconic. For example, the “Call of Duty” logo features a skull with a bullet hole, while the “Super Mario” logo features a red M with a star.
  • The name of the developer or publisher: This is the name of the company or entity that creates or distributes the game. It can also be a trademark that signifies the source and quality of the game. For example, “Nintendo”, “EA”, and “Valve” are well-known trademarks for video game developers or publishers.
  • The characters, settings, or elements of the game: These are the distinctive features of the game that make it unique and memorable. They can include names, images, sounds, or slogans of characters, places, items, or actions in the game. For example, “Mario”, “Zelda”, and “Pikachu” are famous trademarks for video game characters.

How to register and protect trademarks for video games?

To register and protect trademarks for video games in the United States, there are several steps that need to be followed:

  • Conduct a trademark clearance search to check whether the desired trademark is already registered or used by someone else in connection with similar goods or services. This can be done by searching online databases, such as the USPTO website, or by hiring a trademark attorney to conduct a comprehensive search. A trademark clearance search can help to avoid potential conflicts or infringement claims in the future.
  • File a trademark application with the USPTO to register the trademark. The application must include information such as:
    • The name and address of the applicant
    • The description and classification of the goods or services
    • The specimen or drawing of the trademark
    • The filing fee
    • The date of first use or intent to use the trademark
  • Respond to any office actions issued by the USPTO examiner who reviews the application. An office action is letter from the examiner, which details any objections or missing requirements with the application. The applicant must respond to any office actions within three months, or else the application will be abandoned. The office actions may include:
    • Substantive refusals: These are based on legal grounds, such as likelihood of confusion with another registered trademark, descriptiveness or genericness of the trademark, or functionality of the trademark.
    • Procedural refusals: These are based on technical issues, such as improper specimen or drawing, incorrect classification or description, or missing information or fee.
  • Publish for opposition in the Official Gazette, which is a weekly online publication by the USPTO. The publication allows any third party to oppose the registration of the trademark within 30 days, based on valid grounds such as prior use or registration of a similar trademark.
  • Receive a certificate of registration, which is a certificate from the USPTO that confirms the registration and protection of the trademark.

Once registered, trademarks can enjoy several benefits, including:

  • Presumption of validity and ownership: Registration creates a legal presumption that the trademark is valid and belongs to the registrant.
  • Nationwide protection: Registration grants exclusive rights to use the trademark throughout the United States and its territories.
  • Constructive notice: Registration puts others on notice that the trademark is protected and prevents infringers from claiming innocent use as a defense.
  • Right to sue: Registration gives the owner the right to sue for trademark infringement in federal court and seek remedies such as injunctions, damages, profits, attorney fees, and treble damages.
  • Recordation with customs: Registration allows the owner to record the trademark with U.S. Customs and Border Protection (CBP) and prevent the importation of counterfeit or infringing goods.

How to use third-party trademarks in video games?

Sometimes, game developers may want to use third-party trademarks in their games, such as real-life brands, celebrities, or events. This can be done for various reasons, such as realism, parody, or commentary. However, using third-party trademarks in video games can also raise legal issues, such as trademark infringement, dilution, or unfair competition.

To avoid or minimize these legal risks, game studios and developers should consider the following options:

  • Obtain a license: This is a process of obtaining a written permission from the trademark owner to use the trademark in the game. A license can specify the terms and conditions of the use, such as the scope, duration, fee, and quality control. A license can also protect the developer from any liability or claims by the trademark owner or third parties.
  • Rely on fair use: This is a legal doctrine that allows the use of a trademark without permission, if the use is for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. Fair use is determined by a case-by-case analysis of four factors:
    • The purpose and character of the use
    • The nature of the trademark
    • The amount and substantiality of the use
    • The effect of the use on the market or value of the trademark
  • Rely on First Amendment rights: This is a constitutional right that protects the freedom of speech and expression. The First Amendment can override trademark rights if the use of a trademark in a video game is artistic or expressive, rather than commercial or misleading. The First Amendment analysis may depend on factors such as:
    • The artistic relevance of the trademark to the game
    • The likelihood of confusion among consumers
    • The degree of transformation or alteration of the trademark

Conclusion

Trademark rights in video games are important for both developers and consumers. Trademarks can help to protect the identity and value of video games and their creators. Trademarks can also help to prevent confusion and deception among consumers. However, trademarks also need to be respected and used properly by video game developers. Trademarks should not be used without permission or in a way that infringes or dilutes the rights of others. Trademarks should also not be used in a way that violates the freedom of speech or expression.

If you have any questions or concerns about trademark rights in video games, you should consult an experienced trademark attorney who can advise you on your rights and options. Contact us today for a free consultation.