The name of the game: Video game titles and trademark protection
Sometimes a video game’s title is one of the game development company’s most important assets. Properly selected, secured and promoted, it may constitute a valuable source of income for a long time. Therefore, at an early stage of work on the game, it is worth making an appropriate application to the register, bearing in mind that in the case of trademarks, the principle of “first come, first served” applies. A well-thought-out strategy for selecting and registering a video game title can also save a lot of nerves and money after the game is launched on the market.
Trademark clearance: How to check if a game title is registrable and can be used safely
Trademark clearance should precede not only an application for registration of a game title as a trademark, but indeed the very choice of the intended title (even if the developer ultimately decides not to register it). Trademark clearance is research to determine whether the same or a similar title has already been registered as a trademark or is being used by an entity from the same or a similar sector for identical or similar goods or services. This research is usually carried out using professional trademark databases. Among other things, trademark clearance should look for potential conflicts with earlier:
- Registered trademarks
- Designations used on the market
- Company names.
Clearance will take into account conflicts not only with other game titles, but also with designations of other goods and services, especially if they are renowned. All of these can present an obstacle to registration of a new trademark. Therefore, it is worthwhile to entrust this examination to a professional, such as a patent attorney, who will not only review the databases, but above all assess potential conflicts and risks. This can save the developer from lengthy disputes, including costs of litigation and change of title, and, in worse cases, a spectrum of financial claims.
3D Realms, a studio that created a game called Ion Maiden, found out the risk of not undertaking such an examination. The choice of title caused the studio to become embroiled in a dispute with the heavy metal group Iron Maiden, which had registered its band name as a trademark. Among other things, that registration covered goods in Class 9, including computer games and video games. Therefore, in May 2019, the band filed a trademark infringement lawsuit in a federal court in California (Iron Maiden Holdings Ltd v 3D Realms Entertainment ApS). The musicians alleged that 3D Realms’ Ion Maiden game title was almost identical, visually and phonetically, to the Iron Maiden trademark, and produced a similar overall impression. Additionally, the game title and the trademark used by 3D Realms were registered for identical goods: computer and video games.
According to the band, this could lead to a mistaken belief that the game was related to Iron Maiden. This was backed by reports from the band’s fans, who were convinced that the Ion Maiden game was about Iron Maiden. The band sought USD 2 million in damages, destruction of all products designated with the Ion Maiden title, and deregistration of ionmaiden.com or transfer of the domain to the band. 3D Realms did not join issue, but resolved the case amicably by changing the name of the game to Ion Fury.
What else to avoid when choosing a game title?
Not every game title can be registered as a trademark. A title does not have to have artistic qualities, but it should be fanciful, ingenious, and original if the trademark is to fulfil its essential function of distinguishing the game and other related goods or services on the market. Therefore, the title should be chosen carefully so it is not too common and also does not just describe the features or type of game.
First, descriptive or generic titles must be avoided. An example of such a designation in the Polish Patent Office, from a slightly different market, was the application for registration of the name “Gra” for playing cards and other goods. The office refused to register the mark (which in Polish simply means “game”), finding that it had no distinctiveness and did not fulfil the function of identifying the origin. In other words, customers would not associate it with any particular producer, but would perceive it as merely describing the product.
This can make it a challenge to register the titles of simulators, which seem to be experiencing a renaissance. The difficulty will mainly concern their registration as word marks. The titles of such games typically contain the word “simulator” plus an additional component specifying what kind of experience or action the game simulates (a flight simulator, a farm simulator, etc). The story of Euro Truck Simulator can be given as an example. The Czech studio SCS Software s.r.o. wanted to register it for “computer games, online, simulation games, car driving imitation games.” In the game itself, the user assumes the role of a truck driver. Initially, the European Union Intellectual Property Office refused registration of the mark, finding that it lacked distinctiveness, but merely provides information about the type of product (a game simulating truck driving on European roads). But the studio did not give up. The mark was finally registered, but only because the studio managed to demonstrate secondary distinctiveness acquired through use of the game title. The studio presented various pieces of evidence of intensive use and considerable popularity of the game (and its sequel, Euro Truck Simulator 2). This case shows that the battle for registration is sometimes long, tiring and expensive. It is also necessary to submit evidence about the game, and it is worth collecting this systematically in advance. But the overall lesson is that it is better to choose a title that is immediately distinctive.
Doubts cannot always be avoided. CD Projekt RED also faced Community allegations that the name Cyberpunk, which it submitted for registration, is generic for games. Among other things, it was argued that Cyberpunk is the name of a literary genre from the science fiction realm and that, for a game, it also indicates the type of game, i.e. a sci-fi game. But this does not seem obvious at all, especially when we consider that video games are increasingly treated as everyday goods, and persons who buy them are not only industry experts, but also customers buying a game for example as a gift. Therefore, the average customer for games is the general public, which may not treat this term as generic. The average consumer of games and the relevance of their perspective is described in more detail in our article “Dungeons similar to Dungeons & Dragons.” The Cyberpunk mark was ultimately registered by the EUIPO.
Second, it is not worthwhile to submit for registration designations consisting solely of elements that have entered ordinary usage or customary commercial practice, e.g. are commonly present in game titles. This prevents any one entity from monopolising expressions everyone should be allowed to use.
An example would be the word “ghost.” Electronic Arts sought to register Ghost with the US Patent and Trademark Office for games and other goods, leading to a dispute with Ubisoft. Ubisoft owned a number of earlier trademarks with the “ghost” element, including the game Ghost Recon. It opposed the registration, arguing that there was a risk of confusion because of the similarity between the marks. Ubisoft also pointed out that the word “ghost” often appears in computer game titles and forms part of many marks registered for computer games, applications or software, such as Sniper: Ghost Warrior Contracts, Call of Duty: Ghosts, Ghost of Tsushima, Ghost Master and Ghost Theory. Obtaining registration of the Ghost trademark, and thus exclusivity of its use for video games, would give EA an unfair competitive advantage, blocking the use of other game titles containing the word “ghost.” Eventually, the companies settled the dispute, and EA withdrew its trademark application.
The word “candy” provides another lesson. King, publisher of the popular Candy Crush Saga series, submitted the name Candy for registration with USPTO for games and other goods. The gaming community (and competitors) considered this manoeuvre an appropriation of a common word customarily used in game titles. To publicise their opposition, game developers started the Candy Jam initiative, encouraging developers to develop and publish games with the word “candy” in the title. In view of the strong opposition (and thus a high likelihood of attempts to undermine the registration), King decided to withdraw its application. This does not mean that King does not own word marks that include the word “candy” as a component (e.g. Candy Crush Saga, Candy Crush Soda Saga and Candy Crush Jelly Saga). But they do not appropriate the word “candy” itself, so other producers can also use it in games and trademarks.
Why is it worth registering a game title as a trademark?
First, registration of the game title as a trademark gives the owner an exclusive right to use the mark for commercial or professional purposes (for 10 years, with the possibility of renewal for further 10-year periods, in practice indefinitely). This means that the owner holds an asset that is absolutely protected, giving the holder strong power in a given territory. The choice of the territory should be selected according to the business strategy and planned expansion of the game. Therefore, it should be remembered that an EU trademark guarantees protection within the European Union, while a Polish trademark gives protection only in Poland. But to obtain protection in China or the US, the owner must register the trademark in those countries.
Second, a trademark owner obtains an important weapon in the fight against counterfeits or copycat products. Registration of a game title as a trademark entitles the owner to prohibit third parties from using an identical or similar designation for games or other goods or services often related to games. Thus it offers tools to fight against similar titles unfairly capitalising on the market success of a previous game, e.g. by misleading consumers into believing that they originate from the same studio or are related to it, creating the impression that they are another part of the same game, etc. Thus, ensuring registration of the title, especially if the production is later successful and becomes attractive for marketing, may have a significant economic dimension.
Third, registration will also be beneficial if the company intends to exploit a given title longer, e.g. by releasing sequels. Consumers are also eager to buy game-related paraphernalia (such as mugs and T-shirts bearing the game title). Therefore, registering a title as a mark may be the key to effective merchandising. Such commercialisation of a mark requires appropriate selection of the scope of trademark protection, i.e. registration of the mark for the classes of goods relevant to the planned merchandising activity.
Fourth, a trademark always increases the company’s value. For some investors or game publishers, formal title protection by developers may be vital information when deciding on the allocation of funds or selecting a counterparty.
The importance of registration of game titles is evident in the widespread practice of registration, including by Polish game developers, for example:
- Word mark This War of Mine, registered in the EU by 11 bit studios(Poland)
- Word mark Layers of Fear registered in the EU by Bloober Team (Poland)
- Word mark Bulletstorm and two-dimensional mark consisting of graphics and text registered in the EU by People Can Fly (Poland)
- Two-dimensional mark of graphics and text registered in the EU by Epic Games
- Word mark The Witcher registered in the EU by CD Projekt (Poland)
- Word mark Sniper Ghost Warrior Contracts registered in the US by CI Games SA (Poland)
- Word mark Battle Breakers, registered at the World Intellectual Property Organization with a designation for China and other jurisdictions by Epic Games.
Research and register
Before investing time and money in marketing a game title, it is imperative to examine whether the same or a similar title has already been used or registered, to avoid problems post-launch. It is much easier and cheaper to change a game name before it is released than to bear the risk of entering into a dispute and related consequences. If the research shows that the ideal title is available, the rights to it must be properly secured, preferably by registering it as a trademark.
Monika Wieczorkowska, patent attorney, Lena Marcinoska, attorney-at-law, Sandra Lipińska, Intellectual Property practice, Wardyński & Partners