Angela Hickman Newnham
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Hi all,

Just wanted to share our recent experience naming and being forced to rename our game, with the hopes maybe it can help others from ending up in a similar situation.

We had a great Kickstarter a few months ago for our game project called Story Realms. We had been promoting, playtesting, revising, and working on Story Realms for a year and a half before the Kickstarter went up, including lots of advertising to get the name out there. During the campaign we were met with overwhelmingly positive response and we raised enough to meet all of our stretch goals and began working on getting the game ready to go to print. Just before the holidays, we were completely blindsided by a Cease and Desist letter we received concerning the name of our game, giving us a very short amount of time to stop using the name or face litigation. Lots of stress and lawyer meetings and conference calls and email and attempted negotiations, and various other complications later, we've come to a heartbreaking decision. We love the name Story Realms and really felt it was the best name for our game, but we're changing the name of the game to avoid getting caught up in a legal mess that would delay the game for our backers, even though we didn't technically do anything wrong (their trademark doesn't cover board games, and we're sure we'd be able to win in court, eventually)

Anyhow, my point is as you look into naming your game and branding you game to consider more than a quick BGG search or a google search for similar games. It's not enough that no one has made a game with your name! I'd recommend checking out trademarks (doing a trademark search) and staying away from anything with a remotely similar sounding name, even ones that don't seem relevant, or at least consider the risks you may face. This issue has cost us a lot of time and had a big financial impact on us as a burgeoning new studio on a shoestring budget trying to launch our first big game, and has inevitably caused some delays to our game production schedule (although we're doing our best to minimize that ans get back on track ASAP). Spending the time upfront to secure your name may save you lots of heartache down the road. One thing that might be worth considering is consulting a lawyer and filing a trademark yourself. Now, I'm no lawyer, but I've read a lot about Trademark law lately (a lot, our wonderful attorney has sent me some great articles and explanations of things, which in the world of Trademarks are both very specific and very vague) and you do get some protection just by using a name (Common Law Trademark), but the real kicker is this... our lawyer thinks that if this were to go to court, the case would be dismissed on summary judgement because we have not violated their trademark (their trademark is for specific goods and services that are not what we are offering), BUT if a suit was filed there's a chance that the initial judge would look at the similarity in names "Story Realm", "Story Realms", and say they were close enough to warrant an injunction while we get this sorted out. That means we can't use the name, sell the game, etc for however long it takes to get our case heard and resolved... which could be YEARS. And not just time, but LOTS and LOTS of expenses.

Now, if we had trademarked the name ourselves for our intended use (board games and gaming related materials) we wouldn't be in the same situation at all, but we never thought that was anything worth worrying about. Most boardgames don't have trademarked names. All the new designer advice says "dont worry about trademarks and patents and copyright issues, being paranoid will only hurt your chances of getting published", which is all great advice, really. We got amazing feedback and made our game infinitely better by putting it out there to strangers for blind playtesting, by getting other game designers and helpful readers to comb through our rules and give us suggestions, by blogging and talking about all the unique aspects of our game every step of the way. We found a great publisher and a great deal right away. BUT, I want to add to that bit of standard new advice, and say that picking the name for your game can be one of those areas where you really may want to look into an established and defendable legal protection, like a trademark.

I'm not remotely suggesting everyone rushes out to trademark their game name idea, but depending on the scope of your project, future plans, etc, it might be worth considering. I certainly think looking at other people's trademarks is a MUST, know what you are getting into please, I wish someone had told us that... Either way, while considering your game, especially for folks who are self-publishing, doing extra due diligence and research here may well save you down the road, and the fees for consulting an attorney early on about protecting your IP is a LOT less that once you are mired in a situation like this.

I would have read this a year ago and said "that doesn't even apply to me. plus, its not like I have anything I could be sued over anyway". Well, things change, and a highly successful Kickstarter project suddenly looks like you have something worth being sued over (even though every bit of the money we raised and MUCH more is going into the art, graphic design, preproduction, and printing of the game line... we don't have ANY extra money even at 400% of our goal raised- but our project is getting the full deluxe treatment and is everything we dreamed of!)and the last thing we want after pouring our hearts and souls into working on this game for free for 2 years is to have a judgement on any potential future earnings should things not go our way. Or to wrack up 10's of thousands of dollars in debt to "win" the right to keep our name.

So anyhow, there's my story. Maybe one of you can find a pearl of wisdom in there that saves you this kind of headache. Search trademarks, websites, blogs, databases, etc and really find out what else is out there with your name idea. Try to find something truly unique, and stake your claim. At the very least, tread careful around any Trademarked names because it kind of seems like its similar to walking through a minefield and you never know when one might blow up... safer to takes the long road around.

If anyone wants more information here's a link to the KS update explaining the name change (the process and reasoning behind the new name) to our backers: http://www.kickstarter.com/projects/springboard/story-realms...

Here's a link to me and Richard Bliss discussing the situation and further detailing ideas for protecting yourself and establishing your brand identity on the Funding the Dream Podcast: http://www.buzzsprout.com/4646/73349-funding-the-dream-on-ki... Richard said he's going to try to get a trademark lawyer to go on the show and explain relevant trademark law and how it relates for KS projects and games, so Im really looking forward to that!

Happy to answer any questions, and would appreciate any help spreading the word about our new name, Storm Hollow: A Storyboard Game. We've updated the title page here on BGG and are now working to get the new logos updated and everything corrected and we want to make sure people that are interested in following the games progress can become aware of the change.
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Brian P Lewis
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I have just run into what could have been a similar story,working on SuperHero Dice: Roll into Action I have recently found out that Matvel and DC hold the trademark for various connotations of Super Hero/s , so have had to change the name to avoid any further problems.

This has also happened in determining the names of the various heroes and villains in the game, I checked various sites to make sure there were no clashes, but recently I was told of a great site that lists the majority of names already taken and found some of my characters would require a name change.

So research and then more research is vital to avoid costly problems later .
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Jake Staines
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tqboz wrote:

So research and then more research is vital to avoid costly problems later .

Research, more research, and then putting up with scumbags threatening to sue you anyway, by the sounds of it.

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mike
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on that note here are a few ways to search trademarks and also see if the name is available as a web domain and social media username

http://knowem.com/

http://www.trademarkia.com/register-trademark/grey/US/tradem...

http://www.uspto.gov/trademarks/index.jsp

and don't forget international search
http://www.wipo.int/romarin
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Davey Jones
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funny, i got kicked out of a chat room for pointing out shit like this...
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Bill Hamblen
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Someone ought to write an uplifting story about a game designer who put years into creating a new board game; finding financial backing; creating artwork; play testing; being on the verge of achieving the dream; and then being wrongly accused of trademark violation by an evil empire. How she overcame many obstacles to get the game published under a new, even better, name would be a story tailor-made for a site like www.storyrealm.com.
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Andreas Krüger
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Quote:
All the new designer advice says "dont worry about trademarks and patents and copyright issues, being paranoid will only hurt your chances of getting published", which is all great advice, really.

This is good advice for game designers, not for publishers. No need to buy a trademark that your publisher will not use anyway, because they want a name that starts with an F and looks good in Comic Sans or so.

Publishers need to do a lot of research. You included a pen in your game? This may require extended safety tests in the EU or USA. Small plastic pieces? Don't forget to put the "not for children" sticker on the box. How much customs costs should you expect for that shipment from China? How much is shipping from your place to this backer from Greenland?

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David Thornton
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While I like the new name, I would have voted to send them a Cease & Desist from Ceasing & Desisting letter, happily waited two more years to get Story Realms, and even donated to the inevitable Kickstarter to raise funds for the defense and counter suit.

But that's just me....
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Nathan Stout
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Here is a different take on this:
Do you have to register a name you plan on using for a board game? If no one challenges you with those pesky cease orders why sing 400+ bucks for a trademark (unless you have some master plan for later use).
 
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Angela Hickman Newnham
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Well.... you sure don't HAVE to. But $400 is much less than the legal fees for sorting out a trademark dispute, I can tell you that right now. My advice is less about the need to register your own mark, but more about being aware of the possible risks, choosing a name/brand that has minimal possible conflicts, knowing your rights and considering consulting a lawyer about protecting your IP/brand/name/logo/etc. Even without paying to register a trademark, you have some rights once you have been using the mark. The best advice I can give is to consider all these factors and make a well-informed risk assessment and plan of action.
 
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Jon H.
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Trademarks are established by use so you don't have to pay to get them you just apply a little TM whenever using the name.

You are likely talking about registered trademarks which you must file for. However those can still be challenged so I don't see that really stopping someone from threatening to sue you. As you said you could probably win the case here but can't afford to fight it the situation would likely be the same and you'd have $400 less.
 
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Angela Hickman Newnham
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That's not entirely true. At least not how it's been explained to us by the lawyers we're working with. IF we had trademarked our game name for "board games", we would have much less risk of having an injunction filed against us should the matter go before a judge. As it was, while we have common law trademark rights on the name for the game based upon our usage of it, since they had a registered trademark with a similar name (although for a different purpose) the risk of us fighting it was that a judge would look at it and say "close enough" and put a hold on us using the name until it was all sorted out, which could take years. If we had a registered trademark, its much less likely that an injunction would be placed, and they would have to prove we were violating their mark before any action could be taken to stop the production or sale of the game. I'm no lawyer, I'm just sharing My understanding of what we learned in this situation, which is that having that official trademark registration would have mattered in *our* case. Without it the risks were too high in fighting (in addition to the costs). Spending that $400 dollars up front(or however much trademark registration costs) MAY have been enough to protect us, or at least seriously mitigate the risks and allow for a different cost/benefit assessment. I still am not advocating blankety trademarking any possible game name, just suggesting it might be worth looking into your options, being diligent in your research, and consulting a lawyer before launching a big project.
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Carl Nyberg
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Thanks for pointing this out! I just changed a game name after searching the Canadian Trademarks database!
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Tod Hostetler
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What a good discussion and suddenly relevant for me.

First, thanks for the good advice on searching for prior trademarks that might cause a conflict. I've searched Google and found nothing similar, and I was ready to call it all good. But I'll do more diligent searches using all the suggested links!

Anyways, assuming all looks good there, I'm curious what 'use' actually entails. I'm nearly set to release a 'demo' version of my game, a beta-test really, on BGG and similar sites. We should mention here that the game is really just a rulebook; the players are required to create their own board and use whatever pieces suit them.

What I want to know is, if I slap a ™ on the title of the free demo version of the rulebook, distributed only digitally, will that qualify as 'use', or do I have to be 'using' the ™ to actually do business (ie, charging for it).

I'm looking at Intent-to-Use rules in trademark law, and I'd be oh-so-happy to find out that releasing a preliminary, but fully functional, version of the game would qualify as 'use' and save me $ until I'm ready to head for Kickstarter and make a bid at publishing.
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This really sucks :/ I remember watching the vid about Story Realms... it really did seem like the perfect name for it.

Thanks for posting this. I've been a little intimidated with the thought of going into the whole patent/trademark/copyright business.

Thanks for the links and the advice... lot's to think about.
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Aaron Bohm
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Anyone who thinks this was kind of a pointless and crappy action by said
"anonymous" company, apparently www.storyrealm.com has a comments section...

just sayin'
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Daniel Blumentritt
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It had been a while since I was reminded of how stupid US intellectual property rules are.

And I don't see the comments section...
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imho, Intellectual property rules are increasingly stifling innovation, which is the opposite of their initially intended purpose. And as a Linux user, I've suffered from it directly. This really sucks !

Anyway, I had not read the original post but now I did and I wish to thank the posters for the very useful information & for the links.
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Aaron Bohm
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Statalyzer wrote:
And I don't see the comments section...

http://www.storyrealm.com/contact-us/

Not that anyone here would leave them a negative comment... whistle
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Guillaume
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Never Knows Best wrote:
Not that anyone here would leave them a negative comment... whistle

DONE ! devil
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K KS
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Hi guys, greetings from Singapore.

Does trademark applies to the whole world? What if i created a game and the name doesn't infringe any trademark in my own country....will i run a risk in other countries?
 
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Wendell
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HuaHero wrote:
Hi guys, greetings from Singapore.

Does trademark applies to the whole world? What if i created a game and the name doesn't infringe any trademark in my own country....will i run a risk in other countries?

Only if you try to sell it in countries where it's trademarked already...
 
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K KS
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wifwendell wrote:
HuaHero wrote:
Hi guys, greetings from Singapore.

Does trademark applies to the whole world? What if i created a game and the name doesn't infringe any trademark in my own country....will i run a risk in other countries?

Only if you try to sell it in countries where it's trademarked already...

Hi Wendell, thanks for the answer. I guess we all need to do some homework on trademarked names before naming our own products.
 
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Unfortunately, there is a separate side to this with large companies hyper-aggressively attacking smaller companies to keep even non-conflicting marks at bay.

As this is a professional account I don't want to call anyone specific out, but a quick web search on game trademarks will yield some appalling results.

In these cases, even a full legal search (which typically costs more than a grand) won't help, because merit-of-case isn't required in our right-to-sue country. My advice to smaller companies is to do as much due-diligence as you can and then be willing to stay light on your feet.

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