Hey check out the cool new Registered Trademark AEG Logo. Yep, we are officially official now.
Pretty Snazzy. Looks like we should go back and change the files on our product reprints so we can show off our cool new logo.
What does it mean to have “registered” a trademark? Registration is a formal process where an application is submitted to the US Patent & Trademark Office (the “USPTO”) and an examiner reviews the application to determine if the mark is legally able to be registered. The mark is then published for objection and anyone anywhere who believes that the mark should not be registered can object. Once that comment period passes without objection, the USPTO issues a notice of registration and the owner of the mark is legally allowed to denote that the mark has been registered by using the ® symbol.
Anyone can claim a trademark by using the ™ symbol. That’s called a “common law” trademark. It indicates that the mark is considered a trademark by whomever is using it. Once you claim a common law trademark you have to be ready to defend it, protesting any use of that mark by an unauthorized 3rd party. If you want to fight about the matter in court, the outcome can be bad – you might lose the right to use the mark and you might end up paying legal fees to the other parties. If you win, at most you’re likely to be able to stop the use of the mark by the other party but you probably won’t recoup any damages or your legal fees.
Registered Trademarks are much better protected. You still need to actively work to ensure that nobody is using your mark without permission, but in a dispute you have a lot of leverage – the USPTO has set the bar high for someone to dispute your ownership. Plus, you will have a better chance to recoup damages and legal fees. These advantages mean that most of the time you won’t face much risk of someone using your registered trademark without permission.
Getting the mark registered has additional benefits. There are large ecommerce systems which provide protections to companies that are in their Brand Registry, which you can only join if your mark is registered. And if you want to pursue registration of your trademark outside the US, it helps a lot if you have already gotten your mark registered by the USPTO.
This is one of those things that I knew we had talked about but I had not realized someone had set it into motion at the company. I was very excited that we had been approved and also very relieved.
Why? What is the worst thing that could happen when you try to register a trademark?
Oh, I don’t know, the United States Olympic Committee could give you a call and tell you that you must stop using the logo for your samurai game because it is protected by an act of Congress.
That is right, five Interlocking rings are protected by an act of Congress. Not just the Olympics Logo but linking five rings together.
And you see…our little Samurai game had five interlocking rings.
Does this look like the Olympics Logo? Nope. Does it matter? Nope.
We applied to register the L5R trademark and then we got the letter: “You must cease and desist use of your logo immediately” Sincerely, the USOC.
Did I forget to mention that we got this letter just as we were in the process of selling Five Rings Publishing Group to Wizards of the Coast? No? Well I can tell you that having to notify the other side in a transaction that there may be a teensy tiny problem with the intellectual property at the heart of a planned acquisition can set off a tsunami of problems…
We all freaked. Changing a logo is not the end of the world, but it is when it is on the back of every card you have printed. In their defense the USOC was pretty cool. After I calmed down my team got on the phone and explained our situation. Stopping now would kill our company. We could phase out the logo over the next nine months to a year and probably make it work. They were cool with that and a new logo was created.
So did we register the new L5R logo? Absolutely not. We had kicked enough ant hills for the time being and we had bigger fish to fry. We successfully transitioned the game from one card back to the other and were satisfied with a ™ over the ® .
Ever since, we’ve been leary of pursuing registration for our trademarks. Fool me once and all. But as the tabletop gaming market has exploded with new publishers and an avalanche of new products, and as we’re going global and selling in Asia and Europe, we’re increasingly concerned with the ability we might have to respond to someone flagrantly trying to rip us off, or even just get leverage over us in a negotiation for sublicensing.
We’re very happy that we’ve gotten the registration for our logo and for our company name, and that we didn’t get any surprises from enormously powerful quasi-governmental agencies this time!