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Subject: Another TM ownership issue rss

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Herman Husband
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Lets say someone has trademarked a name for use in a board game, and found out afterward that there is already a game out there with the same name but the older game was never trademarked?

That is what I may be up against. The older game never really took off -- my guess there are 1000 boxes in their garage -- but regardless, its a disconcerting situation.

I am not that interested in shutting the other guy down, but he would not be in a position to shut me down would he? If board games in large measure are not copyrightable, then I would think that I would be ok -- if we are talking the un trademarked name -- right?
 
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Tim Stellmach
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HermanHusband wrote:
Lets say someone has trademarked a name for use in a board game, and found out afterward that there is already a game out there with the same name but the older game was never trademarked?

First, I am not a lawyer, so this cannot be considered legal advice.

But I believe you've erred already in using "trademark" as a transitive verb. You gain trademark protection simply by virtue of using the mark in commerce. "Trademarking" isn't a separate something you have to do.

One can register a trademark in order to make it easier to enforce those rights, but that's another matter.
 
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Andrew Walters
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There are plenty of games that share names with other games. Same for books. That in itself isn't a problem.

The trademark issue, though, requires legal expertise. If you got a trademark, you probably already have a lawyer you work with. Otherwise I would find one. Either way, ask your lawyer this question. Here's why:

First, you asked about IP on BGG, which means four or five people who aren't lawyers are going to tell you with certainty that it works this way or that way, and you still won't really know. There are some lawyers who post from time to time, and unlike some sites I think ours actually are lawyers. They're probably going to give you some interesting information and then tell you to talk to a lawyer. Somewhere in here a side IP issue is going to be discussed and contested and you're going to have a hundred bitter posts that don't bear on your situation.

The one of three things will happen in the real world.

First possibility: nothing. The other guy has a 1000 boxes in his garage, and wishes you well, and keeps planning to do something about promoting his game, someday. You sell a few games, no one cares about the trademark.

Second possibility: your game takes off, you sell out, you reprint, those disappear, a real publisher contacts you, they offer you *real* money, not just hope-I-break-even money, but they want to change the name of the game because they don't want to risk their money when there's any possibility of trouble. The money and effort you spent on the trademark is wasted, and a few customers will be lost in the confusion.

Third posibility: the game takes off like anything, offers pour in, two years later your game is in every Target in the country and you've quit your day job. Then some bottom-feeding lawyer contacts the other guy and says, "hey, can I sue on your behalf? You don't have to do anything and you can keep half the take!" You get served, talk to your lawyer, he says "it's baseless, you'll win in court, but it's going to cost you $50K in legal fees and it may scare off your publisher. As your lawyer I suggest you give them $100K to go away."

So I think you should get *good* info now, which means talking to a real lawyer, not posting on BGG.

Good luck!
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Dave
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HermanHusband wrote:
Lets say someone has trademarked a name for use in a board game, and found out afterward that there is already a game out there with the same name but the older game was never trademarked?

You're gonna have to explain what you did in more detail if you want any help. If you registered a trademark, you probably have a lawyer (as Andrew said), and they can give you better advice than we can.* If you don't have a lawyer, start here. That's the US Patent and Trademark Office's basic trademark information page. The site should answer your question or at least give you a good idea of what questions you should be asking.

*: I've registered a bunch of trademarks for my business, and I basically do what my lawyer tells me to do. Trademark law is pure black magic to me, and I'm used to dealing with patent law, which most people regard as pure black magic.
 
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Herman Husband
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Thanks for your thoughtful take. I worked through legal zoom, I have already been awarded the TM through the trademark office -- now I just need to publish the games. There was one TM for the name and one for the image. You may be right, I spoke with an attorney today -- just digesting the info,and blowing off steam. When one does a TM search and nothing pops up -- it does not mean that no such game exsists, it may be that they let the TM expire, or like in this case, another person never bothered to get a TM on the name. So as game names are not copyrightable I am for now assuming/hoping that as my game looks very different the name wont become an issue.
 
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Herman Husband
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I registered the two TM's through the trademark office via legal zoom -- it wasnt that hard, plus alot less expensive. I have registered the name TM and a image TM -- both were approved -- I am waiting to get the game published. The image wont be an issue. Its that my name that is the same as another, older game. That older game never put their name in for a TM.

If someone made a game today with the same name I could stop it -- what I am trying to figure out are the legal implications of my situation. I do have a copyright attorney that I used once -- and he didnt inspire confidence,I may try again though.
 
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Dave
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HermanHusband wrote:
Thanks for your thoughtful take. I worked through legal zoom, I have already been awarded the TM through the trademark office -- now I just need to publish the games. There was one TM for the name and one for the image.

OK. Until you actually sell your game, your trademark is in a funny legal state; it's the actual use in trade that gives it legal force. And two trademarks as you describe is a good approach; that's what I did. (Well, a two pair of marks for me, but that's has to do with technical stuff about my business that doesn't apply to boardgames.)

HermanHusband wrote:
When one does a TM search and nothing pops up -- it does not mean that no such game exsists, it may be that they let the TM expire, or like in this case, another person never bothered to get a TM on the name.

Right, it just means there are no such marks currently in use. Generally, that means you're free to use your mark, but there are exceptions, such as "well-known" marks that were never registered, and figuring out if any apply to you is what lawyers are for.
 
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Matt Riddle
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Just call your game Slides and Stairs instead.
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Herman Husband
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riddlen wrote:
Just call your game Slides and Stairs instead.


Damn -- how did you guess?
 
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Joe Mucchiello
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HermanHusband wrote:
I registered the two TM's through the trademark office via legal zoom

So it's true what they say... you get what you pay for. Perhaps going cheap on trademark protection wasn't the best idea.

And, if you did register a trademark, why can't you tell us what it is just to make the conversation simpler?
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One Armed Bandit
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Seconded. What's the name of this game?
 
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