5 February 2015 | 25 Comments
The Board Game Lawyer, Zachary Strebeck, is back with another incredibly insightful post. This is the kind of thing that you hope will never happen to you, but if it does, the following article will help you as you decide the next step to take.
So, you’ve researched your game or company name before putting up your Kickstarter project. You’ve followed all of the steps on Jamey’s Kickstarter Lessons. You begin gaining momentum and raising money. Things are looking good.
Then it happens. You get an email or letter from some faceless suit at a big law firm. They mention a trademark and deliver a threat: cease using the mark and provide written assurances or we will use all legal avenues to defend our rights, or something to that effect.
What can you do?
Well, first I would get an attorney to help. Here’s some resources for doing so:
- You can always contact me; or
- Check out Avvo.com; or
- Contact your local state bar for information on local attorneys.
I think it important not to go into this kind of conflict alone. There is a ton of misinformation out there about trademark law, with many on the Internet talking about how they think the law should be, rather than how it actually is.
In fact, you probably should have had an attorney from the get-go, in order to make sure this kind of thing wouldn’t happen. But I digress…
Evaluate the merits:
The first thing I do is evaluate the merits of their case. If they do have a valid trademark registration, I look at the mark itself, the classes in which their mark is registered (meaning the type of goods it covers) and the types of goods it is in use for but not registered for.
You can check up on their trademark assertions by using the search engine on the US Patent and Trademark Office’s website. This will give you an idea of when they claim to have started using the mark, when they applied for registration and whether it was actually registered, as well as show you all of the documents involved with the registration.
This could reveal issues that the trademark examiner had with their mark during the process, which could be helpful. For instance, it’s possible that they originally claimed broader rights and were forced to narrow them by the trademark examiner.
Even if there isn’t registration, simply using the mark in commerce can grant you seniority as far as use of the mark. You just can’t sue someone in federal court over it.
This is a complex evaluation, so I would get the help of an attorney. I always say that, don’t I?
One option is to ignore the letter. I can’t think of a situation where I would counsel a client to do this, however. Ignoring a legal threat does not make it go away. Generally, there is some wiggle room between the two marks to hash out some kind of deal that allows both to coexist.
An example of this is the Kaiju Combat game, by Sandstone Games, which was sent a cease and desist letter from Wizards of the Coast. WotC owned a trademark in the name Kaijudo. Again, who knows what would have happened if it went to trial.
In this case, it seems that the two companies had a short exchange of communication, which Sandstone Games then ignored. WotC then went directly to Kickstarter and got the project taken down.
This is a good example of the need to be proactive before something drastic happens. Had Sandstone changed the name (which would not have impacted the project, in my opinion, since the name they were using was pretty generic), they could have kept the project up and explained the name change mid-stream. Some Streisand Effect could have actually helped the project get funded, as well.
Respond with a letter of your own:
Even if you believe that the case has no merit, it is usually a good practice to respond with that assertion and let them know that you will exercise all legal defenses. If you show that you are prepared to fight, this may fend off any further action. That’s assuming that they weren’t seriously prepared to sue you.
What exactly should be said in the letter can depend on the situation, so this is another place where you want to have an attorney’s help. You could simply state that their claims have no merit and that you are continuing with your business, or you could lay out the reasons why. Revealing too much of you potential legal strategy may not be a good idea.
There are templates out there for responding to these letters, but I wouldn’t recommend it. It may end up getting you in more trouble than if you had simply contacted an attorney to evaluate the facts and write the letter for you.
Negotiate a coexistence agreement:
When two entities are using the same mark in brands that don’t necessarily overlap, they may want to enter into an agreement together. This coexistence agreement defines the limits of each party’s use of the mark. It usually says that neither party can sue each other for any past conflicts between them, as well. Sometimes the agreement prevents one party or the other from getting a registration, either state or federal, for their trademark.
It’s important not to limit yourself too much when signing one of these. As always, have an attorney look it over, make suggestions and make sure you understand exactly what you’re agreeing to. You don’t want to limit future expansion of your product line or accidently break the agreement because you didn’t understand the terms.
Give in and change your game’s name:
Sometimes it is inevitable. Maybe you missed their trademark registration. It could have been for any number of reasons, even if you thought you did a good search.
- Did you search for soundalikes?
- Plural and singular versions?
- State registrations?
- Unregistered marks (searching Google, etc.)
Just because you’ve put time and money into your game’s name doesn’t give you the right to use it, if someone else has a senior use of that mark. When you realize that you’re in the wrong, and can’t work out a coexistence agreement (maybe you’re both in the board game space), it could be time to pack it in.
Is it so bad? I don’t think so.
If your game or company name is so close to another’s that they are sending a cease and desist letter, maybe the public would also be confused. Brands thrive on distinctiveness, both in the law and in the public eye. You want the public to connect that name with the products you are offering. Make it unique, make it special and make it distinctive.
There are other instances where the person receiving the letter doesn’t believe that it has merit, but changes that game’s name anyway. This happened with Game Salute’s Storm Hollow game, formerly known at Story Realms. Their mark was in a different class and product type as the original Story Realm mark holder. The original mark holder did have an online game, though, so it could have been an issue.
Game Salute may have had a case, if it were to go to trial. However, in the interest of getting the product made without spending a good chunk of company or Kickstarter money on legal fees, they opted to change the name. Many thought it was for the better.
Why don’t they just sue instead of sending a letter?
If you’re wondering why you got this threatening letter rather than notice of a lawsuit, the answer is clear. They want to resolve the situation as quickly and cheaply as possible. Lawsuits are expensive and may take years. If you’re sending a letter to someone who has the money to fight you in court, they may do so.
Trademarks need to be policed in order to keep the rights. If a trademark holder, who has spent time and money building goodwill for their brand, fails to police it, they could lose that trademark protection. Therefore, companies may end up being overly protective of marks. They want to shut you down without so much effort on their part, particularly when the infringement is obvious.
Update: As my colleague, Attorney Gordon Firemark, pointed out in the comments, an option I neglected to talk about was going on the offensive. While these options generally cost more than coming to an agreement or doing nothing, they can be the right way to go when you believe that you are in the right.
Filing a declaratory judgment action (or even threatening to do so) can be effective in shutting down the other party, particularly when their claim is not great or they don’t have the cash to back it up in court. A “declaratory judgment action” is a court case filed by someone who is anticipating getting sued. Basically, you want to get to court first in order to get a judge’s decision on the issue, rather than having to respond to another party’s lawsuit. Filing for your own opposing trademark registration or filing to have the other party’s mark cancelled can be other proactive legal avenues.