I've had a game concept on the backburner for years, and have known its title since the beginning. It is a one-word title that would be in any dictionary, and I searched for the term on the US trademark website and couldn't find anything related to games. However, recently I have discovered a small Flash game using the same title, and am wondering if I still have the right to use the name? I have proof that I was using the name before the Flash game was released, although it is in the form of an email sent to myself in 2008 to backup files, and I have files on my computer with design documentation that goes back to 2007. In addition to the fact that I was using the name well before being aware of another game of the same title, the Flash game is completely different in terms of gameplay, genre, style and scope to what I am working on. The title is a strong fit for my game and it would be a shame if I had to change it because another game aimed towards a different market released was released first.

The sub-set of IP law that you're concerned with is trademarks, and wikipedia will do a good job of clarifying most questions.

These exist to protect consumers (and brands/businesses) from counterfeit or deceptive competition (e.g. "passing off"). Your internal/private email is useless in asserting ownership, because it's not public use of the mark. Proof of "doing it first" is really only relevant to patent law.

Did the flash game that you played have an (r) or a (tm) next to the word? If not, then they are not directly asserting ownership of the trademark and you could go ahead and try to assert your own ownership by publishing or promoting your game with a (tm) there.

It's even possible for someone to "steal" an existing (tm) by fighting in court and arguing your own product is more popular and hence the general population would be more likely to associate the word with your brand rather than the existing brand.

Trademarks are pretty weak in the sense that, if it's unregistered (just (tm) not (r)), it's pretty much just a popularity contest and an expensive lawyer-battle to see who comes out on top as the legal owner of the mark.

Quote: Original post by Farrenfox1. recently I have discovered a small Flash game using the same title, and am wondering if I still have the right to use the name?
2. I have proof that I was using the name before the Flash game was released, although it is in the form of an email sent to myself in 2008
3. it would be a shame if I had to change it

1. You should ask your attorney. At least read about trademark law.
2. Do you also have money for a court fight?
3. Yes, it would indeed!

Quote: Original post by Farrenfox
I have proof that I was using the name before the Flash game was released.....

As Hodgman said a product name (Trademark) can only be protected by using it to trade. That normally means selling a product/service or at least promoting it in preparation for sale.

This isn't really a yes or no question and will rely heavily on your resources. Basically you have a couple of options:

1) if you can't afford/don't want to go through the trouble of hiring a trademark attorney to go over the benefits of registration, the likelihood of a notice of opposition, and the potential common law disputes that may arise by using the name, you can either change the name now and bear in mind that this problem may also arise with your new name, or you can keep the name at the risk of a potential legal claim against you.

2) Hire an attorney, request a full trademark screening for all regions where you plan on selling the game, file a registration application for your mark in those regions if it seems probable based on the search that registration will be granted, and be prepared for the possibility of a future dispute. Your attorney can spell out the likelihood of an actual dispute arising.

In both cases there's the inherent risk of legal action, but that's a risk associated with doing any kind of business. The best you can do is safeguard yourself as much as possible to minimize future costs.

[Edited by - madelelaw on November 9, 2009 7:09:26 PM]