I have trademarked Legends Online and Legends both as online computer games with the USPTO.
So it turns out that a month before my application, a company filed for the trademark "Legend Online" (http://lobr.oasgames.com/legend_online/) as a ONLINE COMPUTER GAME which is exactly what Legends Online was filed under (I also filed for Legends without the online).
The status updates are:
Legends - SUSPENSION NOTICE: NO RESPONSE NEEDED because a mark was found with a prior filing date (1 month before mine)
Legends Online - Two issues: a prior pending application date by another applicant (meaning someone else wants to trademark the same thing and they filed before me) and a requirement to file a disclaimer with the record saying: "No claim is made to the exclusive right to use “ONLINE” apart from the mark as shown." which is fine but still doesn't fix the prior filed application problem.
I have been given the opportunity to respond to both situations but responding to the first will probably get me no where so I'm leaning towards focusing on the second.
If I'm not mistaken, the entire reason there's a problem is because the other applicant has filed for North America trademarks outside of its country in addition to its other trademarks in different countries while my trademark is simply filed for North America only (everything would be fine if they would just keep their game in their country).
I need some ideas on how to respond and strengthen my case, and those ideas will need to be clever. The USPTO doesn't accept minor differences such as "Legend" vs "Legends" as they are still ambiguous.
Probably quite the long shot here but I don't want to pay for a lawyer because acquiring this name legally has already cost a lot of money.
ID:1357940
 Aug 20 2013, 6:32 am (Edited on Aug 20 2013, 6:44 am)
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In all honesty, a name isn't important as much as establishing a brand. The game in question is a cheaply made browser game, I'd really avoid the confusion of the two IPs by coming up with a less ambiguous name. They already have an established product, and a pre-existing trademark, so you are most likely going to lose your ability to establish exclusive right to said name.
In all honesty, you'll benefit from indexing a unique name than competing with a pre-existing game. In addition, trademark suits often drag on for years even when not burdened by the complications caused by suing someone who isn't beholden to the same jurisdictional laws as yourself. Best to just avoid the legal route altogether. | |
Ter13 wrote:
In all honesty, a name isn't important as much as establishing a brand. The game in question is a cheaply made browser game, I'd really avoid the confusion of the two IPs by coming up with a less ambiguous name. They already have an established product, and a pre-existing trademark, so you are most likely going to lose your ability to establish exclusive right to said name. There's only one problem with that argument, and its the fact that I spent six thousand dollars to both acquire the trademark and the domain name as well as hired artists to design very intricate branding logos... http://www.legendsonline.com Currently, this is no where near a lawsuit situation, we're simply trying to plead with the USPTO who deserves the mark. | |
In my relatively-ignorant-of-trademark-law opinion, I'd say you're screwed.
In a dispute such as this, my common-sense thought is that the ruling would follow a few key questions: 1) Who filed first? Obviously, this is strike one against you; and I'd assume it is the biggest one. It's not insurmountable, but will be certainly very difficult to do so, pending you had a very strong case on one of the following: 2) Which product is more complete? AKA "Why should we grant a trademark to something that more-or-less doesn't exist vs. something that does?" Especially in light of the "who filed first?" judgement. 3) How distinctive is the term, and/or does the product exemplify it? A trademark holds more protection/"strength" if it is either incredibly unique, or if it is somehow very indicative/representative of the product. The only way to gain a foothold on this front would be if your product was a better "fit" for the trademarked term (because your trademark is bordering on generic, and ultimately undefendable; "Legend", "Online", and any combination thereof, are considerably generic; in fact, I wouldn't be surprised if there were a hundred previously filed marks on it, and they just found/notify you of one of those). So, since the term(s) in question are not unique, then you're left with somehow showing that your product "deserves" to use the term more than the other. And good luck with that. So yeah, I'd say that "who came first?" is the biggest judgement criteria, and can only be overcome by a very strong case on one (or both) of those other fronts (or any number of details that I didn't think of). They're not going to strip/deny an earlier applicant/holder without a very good case that you deserve to use it more than they do. Again, though, this is all my semi-educated/informed opinion. I'm no lawyer, nor student of trademark law and related disputes... | |
Oh and:
http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm Especially sections 3 and 4. http://en.wikipedia.org/wiki/Trademark_distinctiveness Especially the bit about the different levels of distinctiveness. My point in conjunction with this is that with such a generic terminology (which the USPTO may even rule as un-enforcable altogether), there's very little incentive for the USPTO to even bother with this case past "who came first?" | |
You probably should have gone with a more original name than Legends Online. I can think of about 200 games that use both of those words in their name, and about 9000 more than use one word or the other.
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Is that a Portuguese game? Name your game "Lenda Online" just to fuck with them.
But seriously, this reminds me of the problem Trenched had. They ended up changing the name to Iron Brigade. | |
Yut Put wrote:
What about the lawsuit that I started with you? We mustn't forget that one. Why can't he carry all these lawsuits? | |
So how's this whole thing gone since you posted of the trademark issue
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I actually haven't submitted a response yet. I'm still not sure what to do really. My lawyer has been busy with many other things and since there's a six month time frame this is really on the back burner.
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FIREking wrote:
I actually haven't submitted a response yet. I'm still not sure what to do really. My lawyer has been busy with many other things and since there's a six month time frame this is really on the back burner. Well, good luck with everything. It looks like it's going to be a top-notch browser based game. | |
I suggest you do research on this other guy and everything they are doing/upto. BTW, why are you trademarking almost 0% of byond games are trademarked XD
EDIT: I forgot to add, you should have lined up the ducks before counting them. Would be wise to make sure these things are not TM'd before investing a lot of money into it. | |
Ah -sorry, late reply- but i see now, so does that mean that you guys are fairly confident about winning the whole argument over who's trademark stands? ...Since you're deciding to continue development until anything else happens/changes in the situation.
Or perhaps, is it that with a 6 month gap, you're hoping it'll be a long enough time period within which you can complete and then release some amount of significant content from Legends Online? (As that could then contribute towards your claim to the trademark) Anyway, i have a suggestion that might be good -assuming you're not doing this already- of having (somewhere) as part of maybe the main story/lore/basis of the game, a reference to a myth/legend(s) of old; Perhaps the end-goal of the game could be to revive said 'legends' or reconstruct a set of circumstances referred to within some legend-like fairytale in order to [insert w/e here] (e.g. 'defeat an evil threat/impending doom','attain great power', 'unlock secrets that "change the world as we know it"'...lol). ...Whatever it is, as long as the legends theme is quite intertwined in the game, but in a 'real' way -obvious? i guess.. Heh, but this way i'm sure you could distinguish yourself to your advantage, in comparison to what i'm guessing will be a game carrying the name legend, with nothing really tying the two together other than maybe some Ol' 'Become a Legend!' slogan =D. Well, feeling the effects of little sleep now :/ ..but i imagine that you understand the gist of this suggestion. Not saying that it is exactly the type of thing i reckon you need -nor that it's all of it- .. but yh, if this helps with any ideas, then good stuff. | |
With the prospect of some business and a polite (and new) customer, you'll find most lawyers are pretty informative at this stage about the general "Yeah you can", "Well there's X route you could go" etc etc and the lengths of time / probable costs involved. After all, they want you to have confidence in their knowledge of the law, and need to display a bit as such, to get your business.
If time is on your hands, try a few lawyers with this, see if it all adds up.
I'd imagine in part, any actual released product bearing the phrase you want to trademark, that's actually usable, would be case strengthening, as your use of the phrase is already in the market.