Hello dear game developers! I'm not a game developer per se (though I've made some small games), but I'm an avid fan of the game Star Control 2. As some of you may know, that game was released in the early 90's and became a classic amongst many people. After that, a sequel was released, not being made by the original creators of SC2, but it flopped horrendously. The trademark 'Star Control' hopped from Accolade, to Infogrames, to Activision and it ended up with Atari, due to expire in 2007. 4 days before the expiration date of the trademark, Atari contracted Iocaine Studios to make a small game titled 'star control', and curiously enough, they were told to do a game in 4 days. http://www.facebook.com/note.php?note_id=22623305202 The game is still playable on Atari's website. http://www.atari.com/us/starcontrol/ And Atari used screenshots of that very game in their application to renew the Star Control trademark. http://tmportal.uspto.gov/external/portal/tow?SRCH=Y&isSubmitted=true&details=&SELECT=US+Serial+No&TEXT=75095591 This is clearly a case of 'token use', to maintain the trademark despite it not being commercially used anymore.

Quote: Token Use This term refers to uses of a trademark that are purely for the purpose of securing rights in a that mark, as opposed to any true interest in or expectation of making commercial sales. A manufacturer may, for example, sporadically ship a few boxes bearing the mark, but does so with no particular intention that the mark will become associated with the source of the goods. If a mark becomes challenged on the grounds of abandonment, the trademark owner will need to prove use in commerce, and token uses will not suffice.

2 questions: 1) Would you, as a game developer, cooperate in big companies' requests to develop small games, only so they can hang on to trademarks which they technically shouldn't really have the rights for anymore? 2) Is this Atari thing an incidental thing or does such token use happen on a regular basis?

Quote: Original post by Scalare
2) Is this Atari thing an incidental thing or does such token use happen on a regular basis?

There are companies whose entire business model revolves around this idea :-)

Second question first: Does it happen?

Of course it happens. Smart companies will do everything to retain rights to the IP they own. Even if it requires a technical loophole or some very weak argument that most judges will throw out, it is cheaper for them to try to control it and later defend it if necessary. If it is ever challened, they can decide how much money to spend on the defense, or to simply claim it was an error and let it go.


The important question is:
Do you have the money or other resources to challenge it?

This applies to any IP protections, not just Star Control.

You might be correct. They *might* have completely abandoned the mark in the United States for any and all legal purposes. You *might* be able to legally use the mark for your new product. But it will probably require an expensive legal battle to be certain.

You mentioned a portion of the rules for federal registration.

There are many trademark protections at state levels, federal levels, and international levels which do not require registration.

Intellectual property is probably the most complex legal quagmire of all the legal fields. It is trivial and inexpensive to claim protections. It is prohibitively expensive to litigate, and there is usually minimal penalty for incorrectly asserting ownership. The laws are biased toward incumbent businesses (because they can afford lobbyists and various forms of bribery). Even more than that, companies are required act to protect their marks or risk losing them so courts are often lenient against invalid assertions when there is a reasonable show of good faith.

Unless and until the mark is successfully challenged, they continue to own the registered trademark and the unregistered trademarks associated with the product.



With that in mind, the second question: Would I cooperate?

Yes, I probably would. They are going to hire somebody, and the transaction is completely legal. Taking the job means an improved rapport with the company for future jobs and continued work for employees in a down economy. It provides immediate income and promises growth to a small company. It keeps food on the tables of many workers.

You might feel that they have ethically surrendered their rights or are seeking an improper registration at the federal level. You might feel that the ethics of one particular chunk of law (US federal trademark law) is more important than any other laws and policies over trademarks and intellectual property, and you may feel this so strongly that you refuse the job.

It happens every day that contractors reject work because they feel the job would be immoral or unethical.

And that is just fine.

Quote: Original post by Scalare
2 questions:
1) Would you, as a game developer, cooperate in big companies' requests to develop small games, only so they can hang on to trademarks which they technically shouldn't really have the rights for anymore?

Sure, if they pay me enough to make the game. As you say it is token use and won't stand up to a challenge but that is up to the big company. I got paid so I don't care.

Quote: 2) Is this Atari thing an incidental thing or does such token use happen on a regular basis?

I am sure others do it. In fact I know Nokia do. They did this with a Trademark a developer I work with wanted to use.

The main reason I would really care about this is that I think it would be dumb to try and take over such a trademark. It is so well known that there would be a good chance that your game would be branded a knock off that was attempting to cash in. Better to create your own IP than try to ride on someone else's.

Quote: Original post by Obscure
care about this is that I think it would be dumb to try and take over such a trademark. It is so well known that there would be a good chance that your game would be branded a knock off that was attempting to cash in. Better to create your own IP than try to ride on someone else's.

IP and trademarks are two different things, especially in this case.
The original creators of SC2 (toys for bob) own the intellectual property rights to the characters, story, music, artwork etc for this game.
They want to create a Star Control sequel but are hampered by the fact that Atari holds on to the trademark using these token methods.

Quote: Original post by Scalare
IP and trademarks are two different things, especially in this case.
The original creators of SC2 (toys for bob) own the intellectual property rights to the characters, story, music, artwork etc for this game.
They want to create a Star Control sequel but are hampered by the fact that Atari holds on to the trademark using these token methods.

Trademark is one of many facets of Intellectual Property.

IP includes many topics such as trademark, copyright, patent, moral rights, author's related rights, database rights, and so on.


You describe one company owning the distinctive characters, music themes, and distinctive visuals. Those are all covered under trade mark or trade dress protections. The other company holds the name, which is covered under the same laws.

Quote: Original post by Scalare
1) Would you, as a game developer, cooperate in big companies' requests to develop small games, only so they can hang on to trademarks which they technically shouldn't really have the rights for anymore?

Absolutely. As others have stated, it's perfectly legal for them to do this to keep their valuable IP.
In my opinion, it's not in the least "underhanded" of them (which you seem to be implying) to want to hang onto their valuable IP. I see nothing wrong with it.

I envision the IP wandering across the desert, canteen empty, no oasis or spring anywhere near. Overhead, the vultures circle, waiting for the IP to expire so they can dive down and take the carcass. You may sympathize with the vulture but I do not.

I suppose another way of envisioning it is: the IP is languishing in a prison cell, counting the days until the prison door will open. Finally the happy day nears; the IP's friends set up camp outside the prison waiting to welcome the IP to freedom. But suddenly the courts deny the release due to a legal technicality, and the poor IP has to continue languishing in the jail cell. In this scenario you may sympathize with the jail cell inmate, but I figure that's where it belongs.

(^_^)

Quote: Original post by Tom Sloper

Quote: Original post by Scalare
1) Would you, as a game developer, cooperate in big companies' requests to develop small games, only so they can hang on to trademarks which they technically shouldn't really have the rights for anymore?

Absolutely. As others have stated, it's perfectly legal for them to do this to keep their valuable IP.
In my opinion, it's not in the least "underhanded" of them (which you seem to be implying) to want to hang onto their valuable IP. I see nothing wrong with it.

This method of hanging on to a trademark is illegal and if it is challenged the outcome will likely be that Atari has 'abandoned' the trademark and gets a grace period to rectify this. There needs to be continued commercial use of a trademark in order for it to be allowed to be renewed. What Atari has done here is fabricate a game without any commercial intention but to hold on to the trademark.

Quote: I envision the IP wandering across the desert, canteen empty, no oasis or spring anywhere near. Overhead, the vultures circle, waiting for the IP to expire so they can dive down and take the carcass. You may sympathize with the vulture but I do not.

In this case, it is quite clear that you can see the IP as a child or a pet that has been abandoned by Atari in the desert. It may starve and die and be eaten by vultures but in this case it is actually being rescued and healed sufficiciently for it to become healthy again and thrive again with spirit and vigor. However, Atari decided to kick it back in the desert again, prolonging its life by a few months but in the end it'll starve and die again, never having a happy life because its owners decided that if they aren't getting pleasure out of its company, neither should anyone.

In the end, Atari has no other gain from it than to prevent its competitors from making money from the trademark that they hold. The gaming community is deprived of a game they would love to play, and Atari's competitors have all the more reason to do the same to Atari itself, and have most likely done so.

One thing I'm left wondering about is why Iocaine studio's spent 4 days on that game, while all that was required was a game that carried the name Star Control. I mean, a game with a text-only title screen and a message saying randomly either "GAME OVER" or "YOU'VE WON! THE END.", would have been sufficient.
Or would that mean that the US Trademark office would not be fooled by this?

Quote: Original post by Scalare
IP and trademarks are two different things, especially in this case.

Actually they are not different in this case or in any other case. Trademark, (and Copyright and Patents) are all forms of Intellectual Property.

Quote: The original creators of SC2 (toys for bob) own the intellectual property rights to the characters, story, music, artwork etc for this game.
They want to create a Star Control sequel but are hampered by the fact that Atari holds on to the trademark using these token methods.

Atari hold the Trademark because the original developer was stupid enough to give it away or sell it. Like many many other developers they didn't understand the business they were in or where the value actually is and now they are finding out the hard way. Miles Jacobson of Sports Interactive went on record a few years back saying that the single biggest mistake the company ever made was to allow Eidos ownership of the Championship Manager trademark (while SI retained ownership of the code/database). When SEGA bought SI they had to spend an absolute fortune on marketing in order to build up the new Football Manager name.

Just so we are clear, I don't actually condone what Atari have done. They want to retain their Trademark and have gone about it in a way that appears to fall foul of Trademark law. If toys for bob want to contest/object then they are obviously free to do so.

To answer your second question: yes, it happens frequently and in almost every industry, and that is because the token use doctrine (and, in fact, the entire area of trademark abandonment) is extraordinarily grey for all of its alleged simplicity. There are very few examples of a "clear case of token use," and courts regularly point to extraordinary circumstances that preclude a finding of abandonment (including economic hardship, transfer of rights, mergers, economic environment, etc.).

The same is true for zombie marks-- courts don't always look favorably on those who choose to resurrect previously successful/famous marks for the purpose of taking advantage of another company's goodwill. Of course preventing zombie marks would completely undermine the point of trademark abandonment, so obviously that's not always the case.

When a company like Atari purchases a trademark, they're purchasing the goodwill generated by the name of that product. If they'd only recently purchased it and the mark was going to expire, they may have created that 4 day project so they'd have a specimen to submit to the USPTO with their intent to use or use in commerce application. Just because there's been "a" token use doesn't mean the lawful owner of the mark intends to discontinue commercial use of the mark, which is the standard required for trademark abandonment.

...

Didn't I write about this a while back?