Company Name Similar to a Registered Trademark

[GamesPub]

Hi

I was hoping someone could give me some advice on this. I incorporated a company in Canada and everything went through; no similar names etc, yesterday we received a cease and desist from a company in the US who has a game whose name is the plural version of our game company and the game name is a registered trademark. They have threatened legal action if we don't change our name however I was wondering what kind of case they have. Their registered trademark includes the following uses:

Illt. Cl.: 9 FOR: COMPUTER GAME SOFTWARE', DOWNLOADABLE COMPUTER GAME SOFTWARE',
INTERACTIVE GAME SOFTWARE', ELECTRONIC GAME SOFTWARE', VIDEO GAME
CLASS 9 (U.S. CLS. 21, 23, 26, 36ANT) 38).

which unfortunately is what we do as well computer games. Can they take legal action even though we never use the actual trademark in our names/website or marketing efforts?

Thank you for your help.

[flyingron]

This is for US law only.
A corporate name, not used itself in commerce, doesn't necessarily infringe on a trademark.
It's easy to send a cease and desist letter.

[GamesPub]

It might help if I'm a little more specific --

Our company name is Picket Fence Games, we sell games in app stores (ie Apple). Their game name is Picket Fences (R) and is also sold in the app store. The app store would show... {Game Name} by Picket Fence Games and he's claiming we're infringing on his trademark.

Thoughts?

[flyingron]

It may or may not be infringing. As I said, it's easy to write cease and desist letters. The question as to whether he'd have a court case (or if he'd bother to go to court) is more involved.

Since you do see to be using the mark in commerce, then there does seem to be the possibility of confusion. It would come down to how strong his mark is (and it could be his mark is actually infringing against you).

Your choices are:

1. Ignore him.
2. Assert you have rights to use the mark.
3 Change the name you're dong business under.

[Mr. Knowitall]

We're delving into the areas of similarity and possibility of confusion, and the nebulous realm of case-by-case analysis.

Let's say I create an app called "Hostile Avians", and trademark that name. It becomes a top selling app. You then incorporate your company, "Hostile Avian Software" and start selling apps. Although none of your apps have a name similar to my mark, I have a very strong claim that your name was chosen for its similarity to my mark and that it will create confusion in the marketplace by causing people to believe that your apps are somehow associated with or spnsored by my successful "Hostile Avians" game and my company.

Let's say, on the other hand, I create an incredibly successful app called "Sharks" and convince the USPTO to approve a trademark for that term under the category you've previously described, and you later create a company "Shark Software". I'm not likely to get anywhere attacking your similar company name (or even a very similar app name) because my mark is just an ordinary word.

The question of whether under the facts of the case the plaintiff's mark is sufficiently non-generic such that they can claim that your similar name would create confusion, and also that their mark covers your use. From what I can see they don't have a great deal of prominence, either as a company or in relation to this app, so although their specific mark seems broad enough to cover the name of a company it's not so clear that they can successfully support their contention that similar marks, even a plural, are infringing. Sending the "cease and desist", as noted, is cheap. Whether or not the claim would succeed if raised in court or with the App store (which, as you may have heard, is removing some apps with names that appear designed to create name confusing with popular apps), and whether they would want to incur the cost of litigating their claim, is more complicated. And unfortunately we cannot give you a clear answer on what would happen were this to end up in court, beyond the fact that it would cost both sides a ton of money.