Trademarks are how you protect the identity and source your products in the marketplace. Trademark law allows companies to build brand recognition by prohibiting others from using confusingly similar marks.
Trademarks are usually either words or logos, or a combination of those, that are used to identify a company’s products. While colors, sounds, and smells can sometimes be used as trademarks, they are not common, particularly in the game industry.
Trademark rights can be acquired both under state and federal law. Under state law, once you start using a mark in commerce, you immediately obtain limited protection for that mark in the area in which you use it, both geographically and in a product category, as long as you are the first to use it in those areas. Rights obtained by the simple use of a trademark in commerce are generally referred to as “common law trademarks”. Common law trademarks are indicated by the use of the ™ symbol.
The problem with common law trademark protection is that two different companies can develop rights to a trademark by using the same or similar mark in two different parts of the country. They would each then have the exclusive right to use their mark where they had used it first, but they could not use it in the areas of the country where the other company had used the mark first. Obviously, this causes a substantial identity problem, leading to confusion over the source of products on a nationwide basis – just the problem that trademarks are supposed to solve.
To help prevent the confusion caused by conflicting common law trademarks, there is a federal system of registration overlaying the state common law system. Once a trademark is federally registered, it keeps anyone else from using the mark nationwide, unless they already have used the mark before it was registered. If a company has already used a mark that someone else registered, their rights become frozen to the use they made of it before the other company registered the mark. They cannot further expand their use of the mark, either geographically or by product category. The use of a federally registered trademark is indicated by the use of the ® symbol.
Obtaining a federal registration of a trademark requires one to file an application and go through an examination process. The process begins with a search to see if any similar marks have already been registered. If there is use of the mark, but it is in an unrelated field, it may still be possible to register the mark for limited use in a different field.
If the decision is made to go forward with the registration application, the process normally takes about a year, with the trademark office reviewing the proposed mark to make sure it is not similar to others in use in the same field, and that the mark otherwise satisfies the requirements of trademark law. One of the most common restrictions that can cause problems is that the mark cannot be “descriptive” of the product or a “generic” word. For example, “Apple” as a trademark for computers is just fine, but it could not be used as a trademark for an apple orchard’s products.
In fact, there are five categories of trademark strength. A fanciful mark is strongest. A fanciful mark is a made-up name that is not a part of the normal language. Examples in the game industry include “Xbox” as a hardware device and “Tetris” as a computer game.
An arbitrary mark is one that has a common meaning, but the meaning is unrelated to the goods or services being sold under the mark. The best example in the computer industry is the use of “Apple” to refer to computer products.
A suggestive mark suggests a characteristic of the goods or services with which it is used. An example in the gaming world would be “Playstation”. The risk in using a suggestive mark is that it could be interpreted as being descriptive, which as you will see below, could invalidate it.
A descriptive mark is actually descriptive of the product or services with which the mark is being used. Descriptive marks cannot be used as trademarks unless a company has so heavily used the name in commerce that it has gained a “secondary meaning” to the public over a period of five years or more. An example would be “Comp USA” or “Computerland” used to describe computer stores. Trademarking a descriptive name is both risky and expensive.
Lastly, a generic mark cannot be protected at all. An example would be the use of the word “Apple” as a trademark for the product of an apple orchard, or “Interactive Computer Games” as a trademark for computer games.
There is no limit on how long a trademark can be legally protected. As long as the mark continues to be used in commerce, it remains protected.
It is important to monitor the use of a mark in commerce, not just by infringing competitors, but by the public. Rights to a trademark can be lost if through widespread use it loses its identification with a particular source of a product. For example, “Aspirin” was once a trademark of Bayer, which it lost because the term came into common usage to refer to not just Bayer aspirin, but also to the products of its competitors. An example of a trademark that is carefully protected is “Coke”. The company aggressively polices its mark to make sure that the term does not become generic. Due to the company’s vigilance, if you ask for a “Coke”, you are highly unlikely to get a “Pepsi” or an “RC”.
Penalties for trademark infringement can consist of both damages for the wrongful use of the mark and an injunction prohibiting its further use.
