Trademark Issues: International Game Release and Registration

[lorddy]

I have a scenario that I'd like to discuss regarding trademark registration and its implications for international game developers.

What if someone registers a trademark for an existing game on Steam (but the game itself is not registered)?

Would common law still apply in this situation? Additionally, what if the individual who registered the trademark is located in Australia, while the existing game is from the US?

Can they compel Steam to take it down solely for Australia, or would the impact be global?

To provide some context, let's say I release a game without registering it due to limited funding. What if someone applies for a trademark in the US after its release, and I'm based in Japan?
Would they have the ability to force Steam to take down the game or demand a rebrand?

What are the potential worst-case scenarios in this scenario?

Furthermore, even if you register trademarks in the most common countries (US, UK, EU, AUS, JP, CND), could someone from a less common location such as Turkey still have any impact on your game?

Thanks in advance for your input!

EDIT: Rephrased
EDIT: I know this is something that I need to ask to a lawyer but was hoping if there's some anecdotal records out there that might help even a bit.

[rawWwRrr]

I think you're confusing trademark for copyright.

[Chika Ogiue]

It would depend on regional laws as well as international law. So you'd be best of asking a lawyer with relevant knowledge for an absolute answer.

I can tell you of a similar instance where a business name and trademark had to be changed for only for Japan: Logitech (maker of peripherals such as mice, steering wheels, etc.) cannot trade in Japan under that name or use the Logitech trademark. A pre-existing company trading in the same field (e.g., computer related) was established in Japan prior to Logitech attempting to enter the Japanese market. As a result, Logitech trade in Japan under the name and trademark of Logicool.

Of course length of a name being in use doesn't stop people from trying to cash in on it: See Tim Langdell and the Edge fiasco. Or Monster (energy drinks) and their attempt to hijack the Pokemon name.

[lorddy]

Originally posted by Chika Ogiue:

I can tell you of a similar instance where a business name and trademark had to be changed for only for Japan: Logitech (maker of peripherals such as mice, steering wheels, etc.) cannot trade in Japan under that name or use the Logitech trademark. A pre-existing company trading in the same field (e.g., computer related) was established in Japan prior to Logitech attempting to enter the Japanese market. As a result, Logitech trade in Japan under the name and trademark of Logicool.

Ohh so that's why it's named Logicool here, never knew.

[IFIYGD]

So... asking armchair lawyers on Steam is not how you get the answer to this.
Talk to an actual licensed attorney.

There are games here on Steam that have the same exact name- but are totally different games.
Two right off the top of my head (because I own one of them):




Same name, totally different games. And the second one has not been forced to change the name of the game, or where it is sold.

Talk to an actual licensed attorney.

[Pscht]

This game ("Skyshine's Bedlam")

had to change name because of that game (just "Bedlam")


And now both are not sold on Steam any longer.

[[N]ebsun]

Originally posted by IFIYGD:

There are games here on Steam that have the same exact name- but are totally different games.
Two right off the top of my head (because I own one of them):

Same name, totally different games. And the second one has not been forced to change the name of the game, or where it is sold.

Talk to an actual licensed attorney.

A name and a trademark are different things.

Originally posted by lorddy:

Would common law still apply?
What if the one who registered is in Australia but the existing game is from the US? Can they make steam to take it down just for Australia or is it global?

The context for this is: Let's say I release a game without registering due to lack of funding. What if someone applies for a trademark in the US after it's released and I'm from Japan, would they be able to make steam to take down the game or force a rebrand?

People usually don't deal in "what if"s because it costs too much to find out - give a concrete example, and you will have the answer.

[Kage Goomba]

You should consult a lawyer - period.
Not the place to ask these questions.

If I had to guess - no is the answer.
Because its already registered.

Being original is safer and less expensive - less likely to have someone come after your head.

[Chika Ogiue]

Originally posted by lorddy:

Ohh so that's why it's named Logicool here, never knew.

Yep. And speaking of Monster (energy "drinks"), I just remembered, Ubisoft's "Gods and Monsters" had to change name to "Immortals Fenyx Rising" because of them kicking up a fuss. And unlike, EA, Ubisoft decided it was easier to change name. Wheras EA, with Mirror's Edge, caused Tim Langdell a world of hurt.

But again, this is assuming the titles (or part of the titles) were registered or contained contested registered words.

Still, as I said in my first post, if this is more than idle curiosity, consult the proper type of lawyer. (Not worth doing for idle curiosity though, given what Japanese lawyers charge).

[lorddy]

Originally posted by Nebsun:

Originally posted by lorddy:

Would common law still apply?
What if the one who registered is in Australia but the existing game is from the US? Can they make steam to take it down just for Australia or is it global?

The context for this is: Let's say I release a game without registering due to lack of funding. What if someone applies for a trademark in the US after it's released and I'm from Japan, would they be able to make steam to take down the game or force a rebrand?

People usually don't deal in "what if"s because it costs too much to find out - give a concrete example, and you will have the answer.

Not sure if this is specific enough:

If I release a game on Steam globally as a developer based in Japan and someone else registers for a trademark in the US after I've already started selling, would they be able to take down my game Globally or just in the US? What if I was able to successfully register for a trademark in Japan but did so after releasing the game and only after the other person registered in the US, whose trademark laws would Steam follow/honor?

[Start_Running]

You can't trademark a game. You can however trademark the game's name. Iconography, Key and unique facets etc.

And what usually happens is the party with the earliest copy/trademark is given priority. The solution is simply a change of name. Which is why you find regional name differences. and the tend to wards longer titles these days.

[Wolfpig]

Originally posted by lorddy:

What if I was able to successfully register for a trademark in Japan but did so after releasing the game and only after the other person registered in the US, whose trademark laws would Steam follow/honor?

it is not the question which laws valve would follow for the games on steam...it is what the courts would rule, if it is a registered trademark the holder has to go to court if conflicts with it arise.

If none exists in the first place then it is often a first come, first served ruling.....or in case the "game" which came out later is well more known and associated with that might get it.......but that are all things no one could say before such a thing happens....

[Kage Goomba]

Originally posted by lorddy:

Originally posted by Nebsun:

People usually don't deal in "what if"s because it costs too much to find out - give a concrete example, and you will have the answer.

Not sure if this is specific enough:

If I release a game on Steam globally as a developer based in Japan and someone else registers for a trademark in the US after I've already started selling, would they be able to take down my game Globally or just in the US? What if I was able to successfully register for a trademark in Japan but did so after releasing the game and only after the other person registered in the US, whose trademark laws would Steam follow/honor?

You're talking to gamers.
We're not lawyers - we don't carry BAR Cards.

You need to stop that - go to a lawyer before you end up in a world of trouble and regret taking advice from a video game community.