[casual_games] Trademarks - Registered?

Mon Sep 26 14:28:52 EDT 2005

Obtaining US Federal registration has benefits over relying on common
law use rights-for example, the right to get US Customs assistance to
prevent infringing imports from entering the US and presumptions of mark
ownership and validity throughout the US (often greater in geographic
scope than under the common law).  In addition, as one of the postings
touched on below indicates, applying to register with the USPTO can, in
many countries, allow the applicant to claim the US filing date as a
foreign priority date (thereby offering some protection against another
company using the mark in those treaty countries after the US
application date but before the US owner files in the foreign country).
It does not guarantee that the mark will be available-risk assessment of
availability can only come from conducting trademark searches in the
relevant jurisdictions (and even then there are no guarantees).  A final
point related to searching is that even if a company doesn't want to
register a mark, this is a separate issue from whether the mark is
available for use without threat of infringing an existing mark.  The US
Patent and Trademark Office offers a free database TM search, but this
only covers applications/registrations in the USPTO (and does not have
any algorithm to search for "sound alikes" and similar meanings.  A
"full" search which is what law firms will often conduct, includes state
trademark and business name registrations as well as searches of
databases (eg of products) relevant to the produce/service class of the
mark being cleared, and usually searches sounds alikes and different
words with similar meanings.

The choice as to whether and where to register are business decisions,
based on risk, cost, importance of the mark, and other factors.  This is
not legal advice, but points to some of the things we consider at
PlayFirst.

Brad Simon, Esq.

Vice President and General Counsel

PlayFirst, Inc.

120 Montgomery Street

Suite 700

San Francisco, CA

Phone: (415) 215-8170

Fax: (415) 738-4669

www.playfirst.com

<file:///C:\Documents%20and%20Settings\Brad%20Simon\Application%20Data\M
icrosoft\Signatures\www.playfirst.com> 

------------

Well registering a trademark in the US does not guarantee you protection
abroad. 

Sheri Pocilujko
High Voltage Software
2345 Pembroke Avenue, Hoffman Estates, IL 60195
Email: sheri.pocilujko at high-voltage.com
<http://seven.pairlist.net/mailman/listinfo/casual_games>  Web:
http://www.high-voltage.com

-----Original Message-----
From: James Gwertzman [mailto:james at popcap.com
<http://seven.pairlist.net/mailman/listinfo/casual_games> ] 
Sent: Thursday, September 22, 2005 6:16 PM
To: IGDA Casual Games SIG Mailing List
Subject: RE: [casual_games] Trademarks - Registered?
I thought I heard somewhere that our US treaties with other countries
may require the (R) for your trademarks to be protected. So if you visit
another country, and see someone ripping off your name, it may need to
be registered here before you get protection there. We've registered all
of our trademarks here at PopCap, not only in the US but in several
other countries to be safe.

---------------------------
James Gwertzman
Director of Business Development
PopCap Games, Inc.

-----Original Message-----
From: casual_games-bounces at igda.org
<http://seven.pairlist.net/mailman/listinfo/casual_games> 
[mailto:casual_games-bounces at igda.org
<http://seven.pairlist.net/mailman/listinfo/casual_games> ] On Behalf Of
Brian Robbins
Sent: Thursday, September 22, 2005 2:48 PM
To: 'IGDA Casual Games SIG Mailing List'
Subject: RE: [casual_games] Trademarks - Registered?

A couple years ago we had a panel of IP lawyers give a talk at the
Colorado
IGDA chapter meeting.

The general consensus on the panel was that you get almost the same
amount
of legal protection by using TM as you do with an actual Registered
Trademark (R). The only major difference they pointed out was that if
you do
get into a trademark suit you can't do anything about it until you
actually
register it. However, your Trademark protection still dates back to your
first documented use of TM.

If this is for your company name then my recommendation would be to do
the
search to be safe (whether on your own with the USPTO search, or paying
the
lawyers), but I'd probably hold off on actually registering it (unless
of
course you have money to burn :).

--
Brian Robbins
Director, Online Gaming
http://www.fuelgames.com/blog/

> -----Original Message-----
> From: casual_games-bounces at igda.org
<http://seven.pairlist.net/mailman/listinfo/casual_games>  
> [mailto:casual_games-bounces at igda.org
<http://seven.pairlist.net/mailman/listinfo/casual_games> ] On Behalf Of
Phil Steinmeyer
> Sent: Thursday, September 22, 2005 5:00 PM
> To: IGDA Casual Games SIG Mailing List
> Subject: [casual_games] Trademarks - Registered?
> 
> I did my own trademark searches on my company and game name 
> at this site:
> http://www.nameprotect.com/cgi-bin/FREESearch/search.cgi
> 
> I didn't see any conflicts.
> 
> That said, I'm wondering whether I should
> 
> 1) Have my law firm do full trademark searches (at ~$1K/each)
> 2) Do full trademark registrations (not sure on cost, but 
> probably $1.5K each if done through their firm)
> 
> Thoughts?
> 
> 
> _______________________________________________
> Casual_Games mailing list
> Casual_Games at igda.org
<http://seven.pairlist.net/mailman/listinfo/casual_games> 
> http://seven.pairlist.net/mailman/listinfo/casual_games

_______________________________________________
Casual_Games mailing list
Casual_Games at igda.org
<http://seven.pairlist.net/mailman/listinfo/casual_games> 
http://seven.pairlist.net/mailman/listinfo/casual_games
_______________________________________________
Casual_Games mailing list
Casual_Games at igda.org
<http://seven.pairlist.net/mailman/listinfo/casual_games> 
http://seven.pairlist.net/mailman/listinfo/casual_games

________________________________

size=2 width="100%" align=center> 

*	Previous message: [casual_games] Trademarks - Registered?
<http://seven.pairlist.net/pipermail/casual_games/2005-September/000216.
html> 
*	Next message: [casual_games] Casual games user groups (player
side)
<http://seven.pairlist.net/pipermail/casual_games/2005-September/000220.
html> 
*	Messages sorted by: [ date ]
<http://seven.pairlist.net/pipermail/casual_games/2005-September/date.ht
ml#219>  [ thread ]
<http://seven.pairlist.net/pipermail/casual_games/2005-September/thread.
html#219>  [ subject ]
<http://seven.pairlist.net/pipermail/casual_games/2005-September/subject
.html#219>  [ author ]
<http://seven.pairlist.net/pipermail/casual_games/2005-September/author.
html#219>  

________________________________

More information about the Casual_Games mailing list
<http://seven.pairlist.net/mailman/listinfo/casual_games> 

______________

-------------- next part --------------
An HTML attachment was scrubbed...
URL: http://seven.pairlist.net/pipermail/casual_games/attachments/20050926/4ef7aa36/attachment.htm