Intellectual Property Issues for Game Developers and Operators (Part 1: Trademarks 101 – Names, Logos, Trade Dress, and Protecting a Brand Before Launch)

By Scott Weide and Matthew T. Kramer

A game developer (online casino game studio, casino game manufacturer, console or computer/mobile game creator, etc.) can spend months, sometimes years, building a game. This includes settling on a game title, designing a logo, and bringing its theme, including animation, symbols and/or characters, to life. But from the initial development, two questions matter: does the developer have the right to use selected trademarks and trade dress, and can it protect those elements, such as to prevent third parties from copying them.

Trademark law protects a brand’s identity: the names, logos, slogans, and visual cues that tell consumers who made a product. In gaming, including online and land-based implementations, these questions arise constantly such as when naming an entire studio, when selecting new game titles, and when entering new markets. This first installment covers trademark fundamentals: what trademarks are, what they protect, how to get them, and what to do when someone uses them without permission.

What a Trademark Is and Isn’t

A trademark is any word, name, symbol, or device used to identify and distinguish one’s goods from those of others and to indicate their source.¹ In plain terms, a trademark is brand identity.

In the gaming world, trademarks show up in several forms:

Trademark strength runs along a spectrum from generic (never protectable, e.g. “Poker” for a four-card poker game), to descriptive (protectable only with acquired distinctiveness, e.g. “Four Carded Poker” for a four-card poker game), suggestive (e.g. “4-Way Poker” for a four-card poker game), or arbitrary (e.g., “Barracuda” for a four-card poker game), and up to fanciful (strongest, e.g., “Zeniac” for a four-card poker game).²

Trademarks do not protect the underlying idea of a game, its gameplay mechanics, the story concepts behind its characters, or any functional design elements. Those belong in the domain of copyrights and patents, covered in later installments of this series.

Clearance: The Initial Step Many Developers and Operators Skip

Before naming a game, registering a domain, building a logo, or spending a dollar on marketing, a developer should consider running a trademark clearance search on the proposed mark. The key purpose of such a search is to reveal whether third parties have existing rights in the proposed mark, potentially posing a risk of infringement of the rights of others and also posing an obstacle to the protectability of the proposed mark. In this regard, selection and use of a trademark that infringes the rights of a third party presents the risk of a conflict with the third party which may result in the game having to be retitled or redesigned (which may involve a complete rebranding, including changing physical signage, artwork files, etc., at significant cost) and legal damages. In addition, a trademark that conflicts with a third party’s mark may not be protectable, such as by federal registration and associated enforcement against later copiers.

Secondarily, such a search can, even if the mark appears protectable, provide information about the inherent strength of the mark, including both its protectability against third party use and its ability to be uniquely identified by consumers. These searches can extend to existing registered trademarks, pending trademark applications, common law trademark uses, and domain registrations and can include the U.S. and markets outside of the U.S. where the mark is important.

While these issues directly apply to game developers, they can even apply to iGame operators who operate the games of third parties. iGame operators risk trademark infringement liability for the games they operate or host and should ensure that they have adequate contractual protection for such claims from their game provider and may consider performing independent clearance searches, such as on key game titles, to better assess the risks of hosting a third-party game.

The Registration Advantage: ™ vs. ®

In the U.S., trademark rights arise from using a mark in commerce, even without registration. This is known as common law rights.³ But common law protection reaches only the geographic area of actual use and is harder to enforce.

While state-level trademark registrations can be obtained⁴, for any studio with commercial ambitions, federal registration through the U.S. Patent and Trademark Office is essential. It establishes nationwide constructive use dating to the filing date, and the Lanham Act allows filing on an intent-to-use basis before any sales are made. Once the application registers, priority dates back to filing, not to launch, giving a much stronger position against potential infringers and even accusations of infringement.

Importantly, trademark registrations are granted for marks with respect to designated goods and services (e.g., a trademark registration does not simply grant rights in a name or logo, but grants rights in the mark with respect to the particular goods and services that the trademark is used to identify).

In the gaming context, the relevant categories typically include:

A slot game supplier usually has to clear its mark across all three; a mobile-only developer might focus on Classes 9 and 41. Getting the classification wrong is a common and costly mistake.

Trademark rights are territorial. A U.S. registration provides no protection in the UK, EU, Japan, or the many other markets where a game may be downloaded or deployed. For developers with international ambitions, an international strategy is essential. The Madrid Protocol allows a U.S. applicant to file one application through the USPTO designating any of 100-plus member jurisdictions, cutting cost and complexity.⁹ The EU Trade Mark system similarly covers all EU states through a single EUIPO filing.

Where cloning is common, early registration is often the main practical defense – especially in first-to-file jurisdictions, where the first entity to register a mark, not the first to use the mark, is generally given priority in rights. China is a leading example: a squatter who sees a new game title release in the U.S. may seek to register the mark there, blocking the developer’s or operator’s later entry into that market unless it completely rebrands the game under a different game title.

Trade Dress: Protecting What a Game Looks Like

Trade dress is an easily overlooked but often important category of trademark protection. Trade dress may protect the overall visual impression of a product when that appearance identifies its source. Trade dress can be protected and enforced just like game titles and logos. While inherently distinctive trade dress is protectable without proof of secondary meaning, product design (as opposed to packaging) requires acquired distinctiveness, which is demonstrated primarily through consumer perception.

Consider a successful slot machine’s distinctive visual identifiers: the shape of the cabinet, the location and shape of the features of the machine (such as the shape and location of the button deck), and its color ornamentation. As for games, consider the color palette of the graphics, art style, betting-interface layout, and even the animation of elements such as symbols, characters, and pay lines. If players associate those elements with a specific developer’s games, those visually identifiable features may be protectable as trade dress – a further tool for stopping competitors and copiers. 

Trade dress protection requires showing the appearance is (1) distinctive, whether inherently or through consumer recognition over time, and (2) non-functional, meaning it confers no competitive advantage beyond brand identification. Even color can be a trademark once it acquires secondary meaning. However, a feature that is essential to the product’s use or purpose or affects its cost or quality may be unprotectable because it is functional.

Enforcement: What Happens When Someone Uses a Mark

A trademark’s value is tied to its ability to uniquely identify the source of the goods and services with which the mark is used. If third parties are allowed to use the same or similar marks for the same or similar goods, thus diluting the ability of the mark to uniquely identify the source of the goods and services, the value of the trademark is lost. Trademark owners must police and enforce their marks against infringers to prevent dilution and preserve their rights.

The standard for infringement is likelihood of confusion: would an ordinary consumer be confused about the source, sponsorship, or affiliation of a competing product?¹⁰ Courts weigh factors including the similarity of the marks, proximity of the goods, consumer sophistication, defendant’s intent, and actual confusion.¹¹

Enforcement options may include one or more of:

What to Consider Right Now