Hello everyone. I have a problem that has been plaguing me over the last few days, and I'm looking for some advice on an IP issue about naming fictional characters with respect to trademark law. Over the last few days I have been working on developing out some cartoon styled characters that I am developing for use in games and/or a gaming related webcomic. The challenge that has been vexing me for the last little while is coming up with good viable names for the lead characters. The first hurdle is coming up with good, punchy names that suit the characters - but that's standard for the course (coming up with good names isn't easy!). I am not looking for any magic techniques for creativity name finding just yet, especially not on the business forum. The second part is the IP issues revolving around the names. I have a shortlist of good names for my main characters, but when I do a test for their previous use (usually by using Google or Wikipedia on their names or close derivatives) invariably I find that every name I think of already has a namesake out there in fiction, which is very frustrating when I think of a great new name that perfectly captures the essence of a character. My question is when, under trademark law, it is considered acceptable to use the same name as an already existing character without it being an infringement? Additionally: to what lengths must you go to ensure that your character names are unique? From reading online about trademarks I understand that this might be a very grey issue depending on how well known the name is to the general public. Ideally I would prefer to use a totally original name and I will continue to brainstorm for ones, but I am getting frustrated with my great suggestions being found in internet searches.

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Just to make sure I have not made a misunderstanding of the relevant issues, I will try to explain my current perspection of the problem in more detail. If I have made a mistake in my understanding of IP law I would be grateful if you would point it out. There is a lot of conflicting information on the web and I may have inadvertantly learnt incorrect information. My understanding is that this is mainly a trademark issue, not copyright. Copyright offers protection for creative and intellectual works and offers their owner rights as to who gets to make copies or derivative works. While you can claim copyright on a character (name, appearance, personality etc.), the name by itself is not covered by copyright. Trademarks however protect marks that link a business to a particular product in order to protect its brand, and can and do apply to character names if they have a strong identity to a particular brand. The confusion I have is to how well a character name acts as a trademark. My current understanding is that the strength of a trademark can only be ultimately decided by a judge if it is ever disputed in trial, but that is not much comfort if you certainly do not want to be put in that position! I am also unclear as to how much strength a trademark has if it is not registered (obviously registered trademarks have much more strength). I am going to avoid using a reigstered trademark as a character name if I can help it. From what I gather unregistered trademarks pick up strength from their association in the general public of the mark to a particular product. So in this case, even if "Batman" was not registered to DC Comics it would be foolish for me to make a historical themed comic book about John Batman, one of the founders of Melbourne, Australia, and call it "The Advetures of Batman". Even though that was his name, the association between Batman in the field of comics to the Dark Knight character of DC Comics is too strong. For characters like Batman which everyone has heard of then it is obvious to avoid using those names. However there are lots of less well known characters out there who I have not heard of that I cannot instictively avoid. In these cases I don't know how strongly protected they could be. My other confusion is to which parts of a creative product trademark would apply to. I am assuming that trademark was designed to protect a business brand from being diluted by bad copies, and by extension the consumer to get the product that they paid for. In this case a name would only apply as a trademark if it was used as a strong identifying mark for the product - true for gaming mascots such as Mario and Sonic, for example. However I do not know if you were to use these names for characters in your game it would be acceptable as long as they weren't used as identifying marks. For example, a boxing game with an Italian boxer named Mario would be okay as long as the name "Mario" was not used to promote the game by being in the title or prominent on the box art. After typing all this up I realise that I do not really have a firm grasp as to what trademark protects. My gut feeling is that it would be totally unfeasible to expect authors to search all forms of creative works to ensure they are not using the same names for characters, but gut feelings do not sound very well founded in legal basis. Thus I would like to know: how far must you go, under trademark law, to ensure that your character's names are unique; and when is it acceptable to use a name already used for another character? Thanks for your time!

Whoops, you seem to have deleted your reply while I was typing it up. I'll still post it as it may be useful.

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Hi Tom,

Thanks for the reply. I've learned a lot from your helpful articles on the game business, although I could not find something directly addressing this issue in your IP lessons.

Sorry about the verboseness of the previous post - that tends to happen when I write these things up directly after lunch. I'll try my best to summarise the problem in a paragraph:

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Paragraph summary of issue
I am presently developing some cartoonish characters for use in games and online webcomics. However it is proving impossible to come up with good unique names for my characters that have never been used before in fiction. If I were to use a name that has been used before, how do I avoid any trademark infringement in my choice of names?

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I have read through your article on using other people's IP, and agree that the best solution is to avoid using other people's ideas. However in this case I am using my own original characters, stories and settings; the only potential clash is between names. I prefer character names that have meaning based on their function or personality, but that means using terms people know and understand, and the chances that those kinds of names have been used before is extremely high.

The other problem is that given the cartoon-like feel I tend to gravitate towards (as shown in my present avatar) the names I tend to pick clash with comic book character names, which from what I read traditionally have very strong IP claims on them. Further complicating things is that copyright and trademark become intertwined with these kinds of characters. The fictional characters that I develop are usually completely different from their namesake (often different in personality, colour, gender, species) except for having the same name. However the comic look I go for combined with my desire to start these characters off in a webcomic mean there could be a potential clash.

I suppose if it really is worrying me I should seek legal advice, however I suspect I might just be overreacting to the whole issue. I doubt indie webcomic and game developers always need to get lawyers to check that they are not infringing on possible trademark issues in these cases, and I see people using the same names as popular characters all the time (including the big guys). But just because everyone does it doesn't mean it's sensible to do that myself.

One thing I've never seen discussed is how you actually go about seeking proper legal advice. I know there are a wide variety of types of lawyers available, much like medical specialists, and I don't know how to contact the right one or how much they usually charge (I suspect it widely varies between countries, but I couldn't even wager an intelligent estimate). I am strongly considering starting my own indie game business some time in the near future so I will have to consult a lawyer to help set up the business anyway, but I was not considering doing so until I knew enough to intelligently lay down the groundwork.

Thanks again, and sorry I still could not keep my post size down [smile]

From my own recent research into US trademark law the following is the best way of descriping a trademark.

An activily used text and/or image that identifies a brand or product.

So, you could call your main character name batman as long as your usage of that character and name does not infringe on DC's well known batman brand. Generally you completely safe when it comes to using character names or the names of real people in any piece of fiction. Provided that that character can not be confused with the other character.

So having Mario the over weight italian pizza maker would be fine. But if drawing of mario looks to much like a well known nintendo character then you'll find yourself in trouble, even if you changed his name to bob.

First, note that the issue should eventually be discussed with a lawyer.


The issue really is really about risk. What lengths you must go to and how much research you do depends on your risk tolerance.

There is a tiny risk that some unknown company who sold two copies of a game in the early 80's will sue you because they feel your game looks too much like theirs, or that your logo is too similar. There is a risk that somebody will sue you for having music that is too similar to theirs, or that your web site looks too much like their web site, or claim you copied code from them, or that you are otherwise using IP that they own.

Whatever name you pick has a slim but non-zero chance of being used somewhere else. "Mario" and "Luigi" were used elsewhere prior to being used by Nintendo for SMB. They were very week trademarks before becoming famous. StarFox, however, probably was not in use and was a fairly strong trademark before becoming famous because of its distinctiveness.

If there is a group out there who believes (1) that they own the mark, and (2) that the mark is worth protecting, and (3) that you are infringing on the mark, then expect that they will try to protect the mark through polite and then legal means.

Generally, a non-famous name is safe to use, especially if the name is common. Naming a construction worker "Bob" would be low risk because there are several million people who go by the name. Naming your construction worker "Bob the Builder" would be very high risk and almost certainly result in legal issues since the name is uncommon and already famous. Similarly, naming a character "Ricky" is low risk, but "Ricky Ricardo" is already taken.

A distinctive non-famous name is very low risk if it isn't already being used somewhere. If it is already in use somewhere, then it becomes a bigger risk.

In the end, there is no such thing as a zero-risk decision in business. A competent lawyer can help you to reduce and manage the risk. Select a low risk name, and enjoy the ride.

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Original post by Trapper Zoid Whoops, you seem to have deleted your reply while I was typing it up. I'll still post it as it may be useful.

Yeah, after posting it I thought it sounded a little cranky, so I took it back. Trying to stick with my New Year's resolution. [smile]

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Original post by Trapper Zoid One thing I've never seen discussed is how you actually go about seeking proper legal advice. I know there are a wide variety of types of lawyers available, much like medical specialists, and I don't know how to contact the right one or how much they usually charge (I suspect it widely varies between countries, but I couldn't even wager an intelligent estimate). I am strongly considering starting my own indie game business some time in the near future so I will have to consult a lawyer to help set up the business anyway, but I was not considering doing so until I knew enough to intelligently lay down the groundwork.

As you mentioned, it is much like shopping for medical specialists.

When I was picking a law firm a few years back, I went through the phone book and looked at the huge section for lawyers in my metro area. There were a *lot* of pages, but many of them were full page ads, and it really wasn't that long of a list when it was all cleaned up.

I crossed out all of those talking about criminal law, bail bonds, DUI defense, civil litigation, and all the other "sue people to get your fair share" entries, leaving me with less than a page. I then crossed off the individuals, since I preferred someone associated with a firm for their additional resources. At this point, I had about 15 law firms with a bunch of lawyers at each.

I did some brief research on each firm, and found four where people had a focus on business law and IP issues.

Of the four firms, I looked at their few lawyers who specialized in all of business law, contracts, and IP. When I had it down to five individual lawyers, I called the offices, asked their prices, and asked if the specific lawyers would be able to handle the few occasional tasks if I decided on them.

During the call, I found that one of them had a particular interest in video games and that he was a major player in one of the national IP legal boards. He (and his co-worker) are the one I picked.

The price is USD$150/hr for one, USD$120/hr for the other, which is comparable the same as the others I contacted in my area.


Of course, the cost and number of lawyers is going to vary by location, but that should give you an overview.


When I visit, I research the issue as completely as I can, and also email (or rarely fax) the relevant information for discussion the day I make the appointment. Each time, he has been prepared and reviewed whatever details I sent. Discussions are under 15 to 30 minutes (with one exception) and he usually was prepared with the forms I wanted printed right there, or emailed to me before I returned home.

No worries, Tom. In my view you've earned the right to cranky replies; I expect and kind of enjoy them [grin].

Thanks all for your replies. As frob put it, it is indeed a problem best expressed as risk management. I am worried that I am far too paranoid about risks myself, to the point where it is hindering my ability to make sensible decisions. It was a useful personality trait to have back when I was a software tester, but it overgrown it's usefulfulness now!

If I understand this right, the most important marks a game has is the business name and the title, i.e. Gamesoft Entertainment's Generic Platformer 3. It would be most important to ensure that these are unlikely to clash with other trademarks, as these are both the most likely to be challenged and the most costly to change.

Am I also right that most companies would as their first action if they feel that their trademark is being infringed send a letter to the suspected infringee asking them to change the infringing marks? In that case the cost would be whatever you lose by changing the names. This could be high if it involved changing business or website names, damaging any marketing done under those names. But for individual character names it might be more annoying than harmful.

In any case at the moment the cost for me to change the name of anything is practically zero, given everything is just written on paper and computer files. Once it gets to the stage where I feel a substantial investment may be lost due to a name change, it probably is best to get a legal expert to ensure the risk is as low as feasible.

Thanks again for the replies.

frob, thanks for the reply about choosing a lawyer. I wasn't expecting extra replies while I was typing up that last post.

That seems like an entirely sensible approach to choosing a good law firm. I have seen the section on law services in my local yellow pages, and it is a bit daunting with all the ads. But most of those are not apprioate; as you wrote, many are for work injury compensation.

If I were to assume that Australia lawyers charge the same amounts but in Australian dollars rather than US, then that price seems what I would expect. Am I right to also assume they would charge that price for preparation work; i.e. it is not just for meetings with their clients? While it would depend on the issues involved, in your experience what is the ratio of preparation time to meeting time?

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Original post by Trapper Zoid One thing I've never seen discussed is how you actually go about seeking proper legal advice....

Frob has done a good job of answering this question but I will add an additional point, which is that you should get two lawyers.

IP law is a specialist field and as such practitioners tend to charge more. However much of the legal work that businesses need is far more standard and doesn't require an expensive specialist. Don't pay an IP lawyer to set up your business or do standard agreements such as leases etc - have a normal lawyer for that. Use an IP lawyer when dealing with specialist issues.

FYI there is a list of lawyers who specialise in Game industry/IP specific work on my web site at http://www.obscure.co.uk/directory_legal.shtml

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Original post by Obscure Quote: Original post by Trapper Zoid One thing I've never seen discussed is how you actually go about seeking proper legal advice.... Frob has done a good job of answering this question but I will add an additional point, which is that you should get two lawyers.

That's good advice. Would it be sensible to expect that a standard lawyer could recommend a local IP specialist, much in the same way with doctors you could expect a GP to recommend a specialist doctor?