J. Michael Monahan
Pattishall, McAuliffe, Newbury,
Hilliard & Geraldson LLP
Dr. Sunny Handa
Blake, Cassels & Graydon LLP

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Brand: marketing concept
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Build a reputation.
Set product apart from the competition.
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Trademark: legal concept
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A tool to build and manage brands and maximize brand value.

Brand Basics
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A brand…
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- is the symbolic embodiment of all information connected to the product.
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- creates associations and expectations around the product.
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- is a message that, through use, can acquire recognition and a particular reputation for the product in the marketplace.

Brand Basics (continued)
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A brand...
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- may be expressed through written, audio and visual content.
 ex. BMW: logo + emphasis on design +
“The Ultimate Driving Experience” = luxury brand.

Brand Basics – Games
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Sound + Graphic Design + Characters = desired gaming experience.
 ex. Rock Band and Guitar Hero
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Logo design
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Artist roster
Music catalogue

Brand Basics – Games (Continued)
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What can be a brand?
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Consoles, platforms, games, publishers, online games.
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Examples of brands in the industry:
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X-BOX (console), GRAND THEFT AUTO
(game), ELECTRONIC ARTS and UBISOFT
(publishers), WORLD OF WARCRAFT (online game), SECOND LIFE (online community).

Brand Basics – Games (continued)
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Characters as brands
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SUPER MARIO BROS.
LARA CROFT
SAM FISHER
DONKEY KONG
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Why characters as brands?
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Represent the quality, story-line and game feature expectations of players.
Represent the idea or the philosophy behind the game with which players identify.
Provide a natural link between games and other products or merchandise

Brand Basics – Videogames (continued)
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Using Outside Brands
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Non-videogame brands appear in the game itself.
Association with well-respected brand (i.e. COCA-
COLA) enhances image of videogame.
Real-life brand presence enhances immersive videogame experience by rendering it more realistic.
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Examples of Outside Brands in Videogames:
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Product placement: COCA-COLA and BATMAN in
Tom Clancy’s Splinter Cell.
In-game advertisements: ADIDAS in Major League
Baseball 2K7, MOBILE NETWORK 3 in Juiced 2: Hot
Import Nights.

Brand Equity
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You have a brand if you have a product
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Key - focus the brand message to increase the product’s appeal and thus its value.

Brand Equity (continued)
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Creating « brand equity »
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Having a message about a product and using it to attach a certain reputation to that product, which has a certain value.
 ex. Marvel – publisher deals for online games based on Marvel characters.
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Importance of brand equity:
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Asset: accounts for 1/3 of value of Fortune 500 companies.
Sign of responsible company : boost to investor confidence.
Credibility: helps in the context of commercial dealings.

Brand Strategies:
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Brand Strategy
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Creates the desired image to set product apart from the competition.
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Strong Brand Strategy
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Establishes strong feelings and reactions and favorable view towards company as a whole.

Brand Strategies (continued)
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Strong Brand = high brand equity, because…
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 easily recognizable immediate association of product with desirable idea, emotion, image.
 ex. ELECTRONIC ARTS has a strong brand.

Brand Strategies (continued)
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Consider your own brand:



- Identify needs and desires of target consumer
- Identify and assess competition’s offerings
- Live up to the brand statement

Conclusion
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Thoughtfully developed brands stand out in a crowded marketplace.
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Branding builds stronger, longer-lasting customer relationships.
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Well-established brand makes product unique, not a commodity.

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The way customers find you
Critical asset
Confirms equal quality from one game to another
Carries desired message to future games and to non-game products

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“trademark” is a mark for a product
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HALO game
WII console
LOGITECH peripheral
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“service mark” is a mark for a service.
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STEAM online services
BIOWARE development services.
“trade dress” is the total appearance of the product or its packaging. Sometimes (as in the case of the XBOX
360 console or SONY PS3 controller), the “trade dress” of the product is also a “trademark.”
“trade name” is the name of a business. Used correctly, a trade name also serves as a trademark or service mark

BLIZZARD is a company and trademark

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Common words used arbitrarily
(BLIZZARD)
Invented words (ATARI or WII)
Personal names (SID MEIER’S
PIRATES)
Alphanumeric combinations (PS3)
Logos (ROCKSTAR)
Packaging (XBOX peripheral blister/card)
Colors/Color Schemes (XBOX white/green packaging)
Product shapes (XBOX 360 console, PS3 controller)

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Coined invented word (EIDOS games).
Arbitrary common word with no ordinary meaning when applied to the goods (APPLE computers,
BLIZZARD games).
Suggestive – word that suggests an attribute of the product, without describing the product itself
(PLAYSTATION consoles).
Descriptive – word that merely identifies or refers to an attribute of the product. Laudatory terms (BEST
BUY for retail store) personal names (SID MEIER) and geographic terms (BETHESDA SOFTWORKS) are also descriptive.
Generic A generic term is not a trademark at all but simply the name of the product itself (GAME or MMO).


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Coined
Arbitrary
Suggestive
 instant protection
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 easier enforcement swifter registration
 long-term branding benefits

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Suggestive/Descriptive
 need exclusive use for
“secondary meaning”
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 rely on design elements exist in “crowded field”

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Instant rights - In the U.S., a coined, arbitrary, or suggestive mark is valid as soon as goods bearing the mark are sold.
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Ease of registration - Descriptive marks are much more difficult to register.
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Broader protection - Descriptive marks usually exist in a crowded field of similar marks. A distinctive mark is easier to defend against infringers.
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Long-term brand building - Descriptive marks may seem attractive because they communicate the nature of the goods or services to customers, but distinctive marks - because they are unique and more easily enforced - tend to be better investments in the long run.

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Titles
Characters
Symbols

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Enemies
Settings
Weapons

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“Knock-Out” Search - Review USPTO online records and other Internet resources for identical or near identical marks
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Full U.S. Search - Broader review of
U.S. federal and state trademark registries, 50 Secretary-of-State databases, trade directories, Dun &
Bradstreet, the Internet, and other resources

Follow-up Investigation – Confirm the use and ownership of problem marks found in the search. Is there really a conflict?

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No Search is 100% Complete - Unregistered trademarks may not appear in trademark registries, industry directories, online databases, or the Internet.
Foreign trademark records may be incomplete or incorrect.
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Assigning Risk is Tough Call - Reasonable people may disagree as to whether two marks are in conflict. Senior trademark owner may be unexpectedly aggressive. Judges and juries are often unpredictable.
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No Guarantees – Trademark clearance always has a degree of risk.

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In the United States, trademark rights come from use, not registration.
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Unregistered or “common-law” marks may be valid and enforceable.
The first person to use a trademark generally gets rights to it.
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Important exception: federal “intent-to-use” filings can set up priority before use.
In other countries, trademark rights flow mainly from registration. Unregistered marks are usually protected only if they are “well-known.”

 easier to prove that the trademark is valid.
 evidence of ownership and of nationwide rights.
 establishes the exclusive right to use the mark for the goods or services listed in the registration.


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Apply to USPTO, usually electronically
USPTO Examiner reviews the application for distinctiveness and compares mark to prior registrations
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USPTO publishes mark for opposition by anyone who believes he will be damaged by registration
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If no successful opposition, the mark may be registered. Applicant must show use of the mark before the registration can issue
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Registration does not guarantee rights; others may still petition to cancel

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Trademarks are adjectives, not nouns . “XBOX
360 gaming console” is better than “XBOX 360.”

Trademarks should not be used possessively .
“The gaming power of the PLAYSTATION 3 console” is better than “The PLAYSTATION 3’s gaming power.”

Use marks exactly as registered . “WORLD OF
WARCRAFT” not “WORLD OF WAR CRAFT” or “WARCRAFT
WORLD”
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Trademarks should be distinguished . Use capital letters, italics, bold type or the like to distinguish a trademark from other text.

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ASPIRIN generic for acetylsalicylic acid.
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THERMOS generic for vacuum bottles.
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CELLOPHANE generic for transparent cellulose film.
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ESCALATOR generic for moving stairways.
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LINOLEUM generic for plastic flooring

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® only for trademarks federally registered in the
U.S.
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“TM” for unregistered trademarks
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“SM” for unregistered service marks

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You must show
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Priority
Likelihood of Confusion, based on:
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Strength of Your Mark
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Similarity of the Marks
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Similarity of the Goods
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Same Channels of Trade
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Intent
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Actual Confusion

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Injunction
Profits
Damages
Destruction Order
Attorneys’ Fees

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Trademark laws differ by country
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In Canada:
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- No supplemental register.
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- No service marks.
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- 15 year renewable registration period.
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- No proof of use necessary for registration.
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- Single federal registration system.

Licensing and Building a Successful Brand
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License = permission to use a trademark not your own under certain agreed terms.

Examples of the power of licensed trademarks to enhance videogame brands:

EA and John Madden.

SCRABBLE for FACEBOOK v. LEXULOUS.


Identify possible brands in the creative process
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Develop marketing strategies to fully exploit those brands

Identifying,managing and policing trademarks secures your brand strategy

J. Michael Monahan
Pattishall, McAuliffe, Newbury,
Hilliard & Geraldson LLP
Dr. Sunny Handa
Blake, Cassels & Graydon LLP