Board Game Trademark Registration: Unique By Nature
Trademark registration for a board game is no different than registering a trademark for any other type of product.
The name, logo, or tag-line or advertising phrase must uniquely identify the product and its source, cannot be “merely descriptive,” and cannot pose any likelihood of confusion with any other registered trademark.
What few understand is that humanity is currently in the thick of the Golden Age of Boardgaming. Thanks to websites such as Boardgamegeek.com (“BGG”), the fan base that has grown from the advent of so-called “Euro-Games” in the early 1990s exponentially.
Thanks to Kickstarter and other crowd-funding mechanisms, there are more new and interesting—and unique!—board games hitting the market now than even an ardent fan such as I myself can keep up with.
Thus, there is even more a need for creators and board game designers to protect their intellectual property and, yes, their brands.
So what is required?
Board Game Trademark Registration Step 1: Pick a Unique Name or Logo
The first step comes, with board games, like at the design or initial concept stage.
Many, if not most, board games begin with a name, quite unlike other products sold in US commerce. While some board game ideas generate from an idea for a game mechanic or a theme, the name of a board game is very frequently the first notion in a designer’s mind.
That being so, a board game may have less trouble with the the first requirement of a Federal trademark registration: that the name be unique enough to identify the source of the product to the consuming public.
It is likely that any board game will have a fairly unique name in today’s market. It is possible that a non-gamer may design a game with a non-unique name (for example, “Dice-Rolling: The Game”), but the vast majority of board game designers understand that, to distinguish their product from the ocean of new games emerging, it had better have a catchy and distinctive name.
Likewise, the name cannot be merely descriptive of the nature of the product. For example, “Board Game” would be a pretty terrible name for a board game for many reasons. For purposes of trademark registration, it is a non-starter.
To be sure that your board game name or logo is distinctive and not merely descriptive in some manner, it is highly advisable to retain an experienced trademark registration attorney to work with you from at least the point prior to the initiation of your Kickstarter campaign or other market launch.
A trademark registration attorney will advise you as to any pitfalls, while you still have a chance to re-tool your brand—before you have invested any capital in it.
Board Game Trademark Registration Step 2: Pre-Filing Clearance Search
The next step in your board game trademark registration process is to have your trademark attorney conduct a thorough pre-filing clearance search.
A proper, attorney-conducted clearance search is not simply a Google search or a cursory search of TESS, the Federal trademark database.
Such a search is called a “knockout search,” and it simply tells the searcher that there is perhaps not a conflicting mark that is directly on point. A knockout search will fail nearly always to detect the hits that are adjacent to the point.
That is, a knockout search may likely detect “Ghoul Wars: The Boardgame”—but it may not detect “Ghost Wars: The Boardgame,” the existence of which is just like as likely to result a rejection of your trademark application by the US Patent and Trademark Office (“USPTO”).
A good trademark attorney will utilize a professional third-party search service to scour on-point hits and “adjacent” hits not only in TESS but also, yes, Google, elsewhere on the Web, State trademark registrations (did you know that there were such things?), domain names, social media, and everywhere else.
This is a proper clearance search.
You want to ensure not only that there is not a previously registered trademark but also that YOUR use of the board game name or logo is and always has been the first use of that name or logo in commerce.
In the US, a board game name or logo is eligible for Federal trademark registration only if it was the first use of that name or logo in interstate commerce, not that it is merely the first trademark registration application filed.
Board Game Trademark Registration Step 3: Trademark Application
Once the board game’s mark has been finalized and the clearance search has been conducted and passed, the next step is the drafting and filing of your application for trademark registration with the USPTO.
A good trademark attorney will have fully discussion with you your board game, your company, your long-term goals, and the uses to which you are putting your product, as well as expansion plans. (And, with board games, “expansion” means umpteen possible “sequels” to popular games that elevate and evolve the rules-set and/or the storyline contained within the game itself.)
This is the approach we take at Noble Path Trademark Law.
Your application, when drafted by trademark attorneys such as myself, will properly executed, with no needless errors, typos, or mistakes of the legalese built into the application form itself, and with the experience of having filed many of these things and of having become thoroughly acquainted with you and your board game product.
Nothing wastes more time in the year-long trademark registration application process than to wait months and months for a response only to have to fix a dozen avoidable mistakes once you finally do hear back from the USPTO.
We will help you sidestep that annoyance.
Board Game Trademark Registration Step 4: Resolve USPTO Office Actions or Oppositions
Once you file the application for registration of your board game trademark, you will wait approximately 90 days to receive a response from the USPTO attorney-examiner assigned to your file.
In a perfect world, that response would be nothing more than a notation that your application is approved and will move on to the next “publication” phase of the process.
In the real world, the examiner often (and more frequently so lately) will file a refusal of your application.
These refusals are called “Office Actions.” An Office Action may contain 1 or more than 1 points of refusal. Some may be “administrative” in nature (“change that comma to a semi-colon,” etc.), while others are more “substantive” in nature.
A substantive Office Action is one which touches upon the root question of your trademark’s eligibility for registration: likelihood of confusion, merely descriptive, and others. Responses to these will require the drafting of a legal pleading, containing evidence, case citation, and legal argument.
You need a real lawyer for this. Your $60 online form-filling service will not assist you at this point!
You always have 6 months to respond to an Office Action. If you fail to do so, your application will be Abandoned and closed.
The need to respond to Office Actions is the #1 reason you should have retained an experienced US attorney to represent you in your trademark application process.
Discount, online form-filling services are not licensed attorneys and cannot respond to Office Actions or otherwise “speak for you” before the USPTO.
Once your respond to an Office Action, via your trademark attorney, your application will either be denied or it will move to the publication phase.
The publication period is a 30-day period of time in which your application is viewable by Third Party Mark Owners and their representatives.
If one of them feels as though you are infringing upon their trademark, they will file something called an Opposition, contesting your right to have your trademark registered.
At the point where you need to do this, you are in litigation.
Again, you need an attorney to successfully emerge with your board game trademark registration application viable.
Board Game Trademark Registration Step 5: File Your Statement of Use as Necessary and Maintain the Trademark Over Time
Once your registration is approved, you are all set—if you have filed an “in use” application, providing to the USPTO a “specimen” proving your board game was indeed “in use in commerce” (for sale to the American public, across state lines) at the time you filed the application.
Congratulations. Your trademark attorney will forward your certificate of registration to you after receiving it from the USPTO by mail.
If you filed an “intent to use” application, you now have 6 months to prove you are using the trademark in interstate commerce.
You do this by filing a Statement of Use with the required specimen proving that use with the USPTO. An additional filing fee accompanies this filing.
If you meet this deadline, you will then be fully registered.
If you do not, your Application will again be Abandoned.
However, your trademark attorney can file up to 5 requests for extensions of this deadline for you.
After registration, you must file a Statement of Use between the 5th and 6th to continually prove you are still using the trademark in commerce. And you must do that again and again every 5 years for the life of the use.
Unlike copyright or patent protection, you will lose your trademark protection if you are not using it.
Federal trademark registration does not protect your creative output: it protects the public’s right to know what they are buying and from whom.
Thus, if your game goes out of print (as they often do) and is no longer marketed, within a handful of years, that registration will be lost.
Board Game Trademark Registration: The Bottom Line
The bottom line is that with regard to trademark protection of your board game name or logo, it doesn’t pay to go cheap after investing all of your resources and time into the development of the game itself.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting enterprises in every industry with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.