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A Legal Question: Trademarks?

Hello Everyone!

I’ve been working getting a company up and running, but I have a quick question.

When trademarking a name, if a company uses a similar name can you still file.

Lets just say my company was going to be called: Example Games.
However, there is already a Example Wines.

The differentiation of me making games vs wines would still allow me to file for a trademark, correct?
If yes, I’m assuming this is because I’m not trademarking “Example,” but “Games” as well making it solely different.

Thanks in Advance,

~ Jason

You can try, but there are cases where someone has a trademark on a certain word and can ask you to change it. If it’s in different industries then you probably don’t have anything to worry about. Notice Delta faucets and Delta airlines are very different things and easy to distinguish.

There are hundreds of brands using “Cola” to sell similar drinks even though the obviously biggest one does as well.
But it’s all depending on situation, what names/words you’d like to use and also where.
While a bigger company might not have any legal ground to screw you over you might not be able to afford to defend yourself, this is usually how many similar cases pans out. Essentially they scare you to change even though you’re pretty sure you have the law on your side simply because you can’t afford to be wrong.

Hmmm.
I see.

Thanks for the answers.
I’ll look into it a bit more.
I’m not too worried just because I looked up a few other development studios (i.e. Ubisoft) and found multiple trademarks using that word.
If anything I may just play it say and change to a word that has little-to-no trademarks.

Thanks again guys!
~ Jason

I would imagine it depends on where you are but Canadian trademark law is mostly about avoiding confusion. So yes, Example Games and Example Wines be fine because they are two completely different industries. In fact you can search the trademark database and find examples of the exact same word trademarked by different companies in different industries (and as darthviper points out there are plenty of examples of this out in the world).

It’s also worth pointing out that as soon as you create something and start using it then you have that on your side. It’s not strictly necessary to trademark anything, or do so immediately, but it creates a very clear paper trail that probably makes it much easier to defend - rather than having to go back and prove that you’ve been using something, and were the first to do so, you can just point to the trademark. At least that’s my understanding.

If you have a name / logo in mind which you like to turn into a trade mark, you need to put it in a kind of “category” let’s say Computer Games / Software if you turn your logo and name into a trademark in the “category” Computer Games… Your brand is just protected for this special “category” “Computer Games”… So someone else could come arroud and take the same name but make a Soft drink from it… The most smaller companys protect they’re names only in the category which they are using, for example… food or fashion or whatever, however you will find sometimes bigger companys like Cocal Cola which take demand of multiple “Categorys” so they protect they’re names in almost every possible “category”… You have to keep in mind, that every “category” costs extra and if you like to protect your name and logo on the whole world you have to pay for it… and we are talking here about big money…

To make it short, just because a name exists on the market it doesn’t mean you can’t use it anymore… it depends what this company / name is doing and in which “category” they have protected they’re name. However they are even names you can’t protect. Let’s say you wan to open a game studio called “Amsterdam Game Stuidos” you can’t protect any of this 3 words, cause they are property of the community… but you can still use it in combination with a logo and protect them this way…

It’s a long subject, my suggestion is take a lawyer which is specialized in Trademarks, cause he will do also the research for you… and he will tell you if you can use this name for your project…

I’ll definitely get a lawyer on my side that way I have a good chance of defending myself if something comes up.
The good thing is, I can easily change the name to an uncommon one that no one has trademarked yet.
So if need be, I can always switch before I start.

Thanks for the help,
~ Jason

I read a pretty good book a couple years ago that gives plenty of good information on trademarks as well as patents and copyrights which you can check below:
http://www.amazon.com/Patents-Copyrights-Trademarks-For-Dummies/dp/0470339454/ref=sr_1_1?ie=UTF8&qid=1405705625&sr=8-1&keywords=trademarks+copyrights+and+patents+for+dummies

Hey,

Thanks I’ll check it out.
Truthfully I’m going through the process of finding a name that has no trademarks filed for it (did you know that “Frictional” isn’t trademarked at all, and here I thought Frictional Games had the law on their side…).

Thanks for the help so far everyone!

~ Jason

P.S Can we maybe sticky this for future reference for anyone with this question?

You can trademark a name in some country’s or make it international trademark. And for this you have to pay a fee, and if I remember exactly is per year. So in zones/country’s where you have an international trademark, nobody can use that name, or if they use it, you can sue them. Be prepared for expensive lawyers and difficult processes also what can cost a lot. Also, NOBODY in this world will trademark you a name like “games”. Better ask a lawyer specialized in that trademark/brand/copyright stuff.

Alright, thanks good to know.

Actually you just brought up another question: What exactly should be registered?

I went a replayed a few games yesterday, and oddly enough I realized both the original “DOOM” and the original “Monkey Island” were using the unregistered trademark ™ symbol.
So then I went to play a few newer games and noticed that many COMPANY names were utilizing a registered trademark symbol.

Are registered trademarks more widely used for company names and not game names?
If so why?
Wouldn’t one want both protected in all ways?
Also, is it required that the registered trademark symbol appear on the company’s name or can it be on the game’s legal screen?
When I was loading up DOOM 3 “ID” had no trademark or registered trademark symbol… but I have to assume they have the law behind them… I think.

~ Jason