Monday, February 04, 2013

What’s in a name?

What’s in a name?
(Especially, Trademarks)

Names of games are important to help a potential buyer understand what the game is about, and to invoke certain emotions or points of view that may help persuade the customer to buy the game.  For example, “Dragon Rage” tells you a lot about that game.  Yet the trend in Eurostyle boardgames for a while was that names told you absolutely nothing about the game: Carcassonne, San Juan, St. Petersburg, Puerto Rico, those titles tell you absolutely nothing.

Perhaps such uninformative titles are selected because most of the good game titles have already been used. It may also be because many Eurostyle games are not models of any reality and so there is no reality to refer to, that is, they are essentially abstract games and so the title may as well be abstractly meaningless. 

The book industry faces the same title-already-used problem, and one of the ways they get around it is also used in the game industry.  You give your game or book a subtitle.  For example when I finished my first book about game design my final title choice was “Learning Game Design”, which was quite descriptive.  But the publisher wanted something that sounded more scholarly.  I’ve described elsewhere ( ) all the steps we went through before we settled on the title “Game Design: How to Create Video and Tabletop Games, Start to Finish”.  The subtitle was necessary to differentiate it from other books with “game design” in the title.

This subtitle technique is also used for video games that are sequels or related to existing games but where the publisher does not want to use a number.  For example we have Assassins Creed III to show that it’s clearly related in a sequence from the original Assassins Creed, but we also have Assassins Creed: Liberation for the Sony Vita handheld.  Expansions to existing video games are often given subtitles so we have Civilization IV: Warlords and Civilization IV: Beyond the Sword.

 On the other hand, book titles are not trademarked, and game titles are, so the legal situation is somewhat different as we’ll see.  So far I’ve been talking about marketing, really, but the rest of this piece is about legal considerations.

What brought this to mind recently was the appearance of a video game for Android devices titled “Dragon Rage”.  From the marketing video, it appears to be an Angry Birds/Crush the Castle kind of game.  As many readers know I had a game of that title published as a “micro game” by Heritage/Dwarfstar Games in 1982, which was reissued with additions and a much, much higher physical quality by Flatlined Games (Belgium) in 2011, though it didn’t become available through American retailers until 2012.  In the 20 year period while I was away from the hobby a PlayStation 2 video game titled “Dragon Rage” was published by 3DO in 2001 and 2002.  With the 2011 version of the board game I once again had the “common law” trademark on the game title “Dragon Rage.”

What was I going to do about this?  At a minimum I didn’t want people to buy this video game thinking it is a video version of my boardgame.  Nor did I want people to buy my boardgame thinking it is a boardgame version of this video game.  You might say “who cares, they’ve bought your game” but then you end up with very unhappy customers and no one wants unhappy customers.

Trademarks have to be enforced.  If they’re not they can come into public use, and that’s why the makers of Scrabble have always been high strung about enforcing their trademark.  From my point of view I did not think I could ignore the existence of this video game, though the publisher of Dragon Rage was not concerned at all.

Now I don’t pretend to be a lawyer and cannot give legal advice.  Nonetheless, it’s not hard to read information about copyright and trademark, and I’ll give you a little bit of a run down.

Game titles are generally protected by trademark rather than copyright.  Copyright is intended to protect larger strings of text than one or two or a few words that make up most titles.  While copyright law tends to be the same from country to country because of the Berne Copyright Convention, trademark law can vary much more so I’m talking only about the United States.

There are two levels of trademark protection in the United States.  The simple “common law” protection is to claim trademark by putting the trademark symbol, a simple superscript “TM,” after the title to be trademarked, as in Britannia™.  In the case of games, the game has to actually be on the market, you can’t trademark something that isn’t (yet) a commercial product.  The more secure protection is to register the trademark, for which the symbol is an R in a circle ®.  The simple trademark costs no money, the registered trademark is officially $350 or more, though I have seen Trademarkia offer to register trademarks for $159.

Trademark does not lapse the way copyright does - although it takes a very long time for copyright to lapse nowadays compared with the rules 40 years ago.  We can see a few cases where trademarks continue to be claimed on characters in novels that are well out of copyright, such as Edgar Rice Burroughs’ pre-1923 novels.  His John Carter novels on which the movie “John Carter” is based are out of copyright but “John Carter” and other related terms are still maintained as trademarks, and so the makers of the movie had to work with Edgar Rice Burroughs Incorporated even though the author died more than 60 years ago!  (See to find a search engine for trademarks.  The ERB Inc. “Barsoom” trademark is listed in detail at .)

Trademark law allows for the same word or phrase to be trademarked in many different areas of life as long as there is no likelihood of confusion.  For example there is Britannia the boardgame and there is a building society (more or less a savings and loan) in England called Britannia, both can be trademarked.  There are other uses of Britannia (such as the name of a world-setting in the video game Ultima) that probably don’t infringe on either trademark.  Apple Records and Apple Computer were content with the same name until recently when Apple Computer began to sell music through iTunes, and then there was legal action (since settled).

A game called “Story Realms” throughout its funding via Kickstarter suffered a name change when a company that owns sent a cease and desist letter. :
    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.

A great peculiarity and danger of trademark law seems to be that someone can register a trademark on some word or phrase and then stop other people from using it who have been using it for a long time.  Sometimes this reaches especially stupid proportions as large companies with sufficient funds to take people to court trademark everyday words such as “purple”.  (There are dozens of trademarks including the word purple, but one on the word alone.)  Unfortunately in the current climate in the USA where, as long as you’re doing something that makes money and is not obviously illegal, the government lets you get on with it, this kind of foolishness happens a great deal, especially in the Patent Office.  (I’m not going to get into patent trolling here, but it really is ridiculous.)

As always, if you have enough money you can go to a court or arbitration body without a leg to stand on and still force someone to do what you want simply because they cannot afford to litigate.  There was a famous case some years ago of a new French company called Eurotrash, if I recall correctly.  A company in Scotland had been using that name online for many years but the French company took them to the World Intellectual Property Organization (WIPO) and it cost the British company tens of thousands of pounds to successfully defend their use of the word.  Today Eurotrash is a name of an opera, the name of a TV series, and who knows what else - activities not in the same realm as waste collection.  (I relate all this from memory of many years ago and cannot find any trace of it on the Internet today, such as at (where the legal action took place - as I recall.))

To go back to the case of Dragon Rage, only courts and lawyers can tell us whether boardgames and video games are sufficiently different that they can be regarded as separate areas of life.  In my view they were separate 15 or 20 years ago but not today when so many boardgames have video game versions and so many video games have boardgame versions.

Fortunately, when I pointed out the name clash to the company (making no demands and certainly not telling them to “cease and desist”) there was no problem.  They showed me that they had searched for registered trademarks, and that the 3DO trademark registered in 2001 had lapsed in 2003 because no statement of use was filed (3DO went out of business).  (When 3DO registered this trademark, if I had known about it, and if I had had the funds, and if Dragon Rage had not been out of print for nearly 20 years at that point, I might have tried to do something about it.  But none of those things were true.) 

Trademarkia also told them:
    This Dragon Rage mark has a greater likelihood of registration if it satisfies the following conditions: (1) it is not confusingly similar to other marks, (2) it does not dilute a famous mark, (3) it is not generic or descriptive, (4) if there are no unregistered, common law trademark holders that are using this trademark in commerce today, and (5) if the description and classification of your use of Dragon Rage is different than other non-abandoned registered marks having the same name.

My Dragon Rage trademark is of the “unregistered, common law” used in commerce today type.  Perhaps if they had searched the Internet for “Dragon Rage” they would have discovered the entries at Boargamegeek and at Flatlined Games (the publisher).  (Just as the Story Realms people should have searched the Internet for variations of their proposed game name.)  If Dragon Rage had been out of print since 1982 and not reissued, there would have been no existing common law trademark to interfere.  Unfortunately they were not aware that Dragon Rage had been reprinted in 2011. 

Fortunately, they were still in testing for their game, so they were able to fairly easily change the name to “Dragon Frenzy” - maybe an even better game name for when the dragon is going wild because you’re destroying its eggs.

The “moral of the story”?  If you publish a game be sure to claim the common law trademark on the name.  But first be very thorough in searching for other games and related activities of the same name, and if necessary use a subtitle to try to avoid future problems, or choose a different name.

Keep in mind that long out of print games no longer fulfill the “used in commerce today” requirement.  But the safer thing is probably to use a subtitle for a game if you think the main title has been used even in the distant past.  For example, “Dragon Rage: Defend the City” (I’m sure you can think of better subtitles!).

If you read any open discussion about trademarks, copyright, and patent, for example ) you’ll see that it really is a big can of worms at times.  It’s one of the reasons why we have courts and lawyers.

Search engine for registered trademarks

You can also use the US Patent Office to search for registered trademarks.
Go to and choose the trademark search.

and don't forget international search:

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