14 December 2014
I asked the Board Game Lawyer, Zachary Strebeck, to follow up his “4 Legal Issues Every Kickstarter Creator Should Know” guest post with a detailed post about trademark considerations. Thanks so much for lending your expertise to us again, Zack!
I am often asked about my opinion on whether one brand name (whether it’s a game name, company name or slogan) is too close to another. What they’re really asking is whether or not they could get sued for trademark infringement. What does it take to be infringing under trademark law? Let’s find out.
The reason for trademark law to exist:
There are two major reasons for giving trademark protection to brands and other marks. These are:
- Protect consumers from confusion as to the source of goods and services, and
- Protect the investment by those sources into their brands and the goodwill associated with them.
The second reasoning is ancillary to the first, however. Protecting consumers from confusion is the most important reason for trademark to exist.
We don’t want consumers to walk into a store and see Coca-Cola branded instant noodles. If that was okay, then consumers would no longer be assured that they are getting a product of the quality they come to expect from the owners of the Coca-Cola brand. Plus, Coca-Cola’s brand is diminished by others being able to use that mark with lesser-quality goods.
Now let’s take a look at what constitutes trademark infringement:
There are a few different causes of action under trademark law, but the major test used to decide if there is infringement is whether or not there is a “likelihood of confusion.”
Sounds simple, right?
It never is. Here’s a quote from the Supreme Court in 1877 (emphasis added):
“What degree of resemblance is necessary to constitute an infringement is incapable of exact definition, as applicable to all cases. All that courts of justice can do, in that regard, is to say that no trader can adopt a trade-mark, so resembling that of another trader, as that ordinary purchasers, buying with ordinary caution, are likely to be misled.”
It is important to understand that it doesn’t take actual confusion to prove infringement. It is simply whether or not a consumer is likely to be confused by the marks that shows whether the use is lawful or not.
So we’ve got a doctrine, but how does a court make the decision?
Each court has their own specific set of factors, but they generally follow the same themes. Let’s take a look at one, the Ninth Circuit and their Sleekcraft factors (named after the 1979 case, AMF, Inc. v. Sleekcraft Boats):
- strength of the mark;
- proximity of the goods;
- similarity of the marks;
- evidence of actual confusion;
- marketing channels used;
- type of goods and the degree of care likely to be exercised by the purchaser;
- defendant’s intent in selecting the mark; and
- likelihood of expansion of the product lines.
The court analyzes these eight factors, chews them up and spits out an answer at the end. I’d love to say that it’s easy to predict, but it’s not.
This is because the court (at least the 9th Circuit) doesn’t weigh each factor equally. They may find some more important than others. For instance, evidence of actual confusion would probably be very good proof of the likelihood of confusion, yes?
For some good examples of likelihood of confusion in different situations and industries, check out this link. For the most part, making a mark plural or making minor changes or additions is not enough to escape confusion. For instance:
- ISHINE and ICE-SHINE were likely to confuse consumers because they are soundalikes;
- ON-LINE TODAY and ONLINE TODAY are likely to confuse, even though one is an internet connection service and the other is an Internet news service; and
- AQUA-CARE and WATERCARE are wholly different words, but since their meanings are the same and they are the same industry, it is likely to confuse.
So what does this mean for the name I’ve chosen?
It could be a bad name, depending on the outcome of an analysis of these and other factors.
This is just one step in the “knockout search” that attorneys do when advising trademark clients. It is important to intuitively apply these factors to an idea for a name, while comparing the proposed name to others that are out there.
This is also a situation where my “If you have to ask, you probably shouldn’t do it” principle applies. If something is close enough that there is even a question, it’s probably safe to say that there could be confusion there. Unless the goods are in vastly different markets or classes, a court could find confusion.
The real question is, do you want to deal with the hassle of a lawsuit or other issues due to potential confusion?
A real-life example:
Let’s look at another real-life example of a trademark dispute that could have been. Game Salute ran a Kickstarter for a game called Story Realms. There exists a federal trademark registration for Story Realm (USPTO Registration #4006870).
Generally, just pluralizing a mark is not enough to escape confusion. While the goods and services are different (Story Realms is a board game and Story Realm is apparently an online store selling eBooks, toys and other things), I can see how there could be a potential for confusion. There probably wouldn’t be any evidence of actual confusion, unless the company that owns Story Realm could produce Internet posts showing consumers confused over the names. In fact, many of the factors may have gone in Game Salute’s favor, except the extreme similarity of the marks.
Game Salute, however, changed the name of the game mid-Kickstarter to Storm Hollow. Their reasoning was that, even though they believed they could win a case at trial, it was beneficial for all parties to simply avoid any dispute in the first place. This name change, judging from comments on the update, was almost universally praised. Sometimes meeting with some resistance can force some extra creativity and brings some positive results, as in this case.
It is possible to negotiate a trademark coexistence agreement with the senior mark holder. This is an agreement that sets out the terms of coexistence between the two parties, preventing them from overlapping geographically or in the same industry. It’s a promise not to sue each other, provided that each party adheres to the terms of the agreement.
If you are thinking of creating a new brand or registering an existing mark, why not contact an attorney? Also, check out my free eBook on the legal issues that game developers face. It covers trademark protection and a host of other issues relevant to the game development community.
Also read: This related post by a Kickstarter creator who ran into an IP dispute during his campaign.