The applicant is claiming that the phrase FRIENDLY LOCAL GAME STORE is (or will be) a trademark for… game stores. “This is an approach,” as one of my favorite fictional characters is fond of saying. However, it is not an approach which is likely to meet with much success. The Trademark Office has already issued an Office Action initially denying registration on the grounds of, among other things, that this phrase is merely descriptive of game stores and so it cannot function to identify any particular game store. You can read the Office Action here:
Now, leaving aside the question of whether this application will succeed in and of itself, another question arises. Suppose you are an interested party who does not wish to see the registration issue, either because it will hurt you directly, or because you think it is inappropriate to grant exclusive rights over the use of the phrase in commerce in general. What can you do to reduce the chances that the application will be approved and/or that a registration will issue? Basically, two things. Some people can do both, some people can only do the first thing. Allow me to expand:
Letters of Protest
A “Letter of Protest” is a document that anyone can file with the Trademark Office during the initial examination of a trademark registration application. There are three distinct phases to a trademark application’s examination, and while a Letter of Protest can be filed during any of them, the burden on the filing party changes as the examination proceeds.
First Phase: Filing Date to Approval for Publication
Trademark registration applications, unlike patent applications, are not private or confidential, and are usually visible on the USPTO’s website within three to five days of being filed. So anyone who wants can see what applications are pending at any given time. If an interested person sees a pending application that they think is problematic, they can file a Letter of Protest, which is an informal filing that the USPTO will consider, but is not obliged to act upon, and which does not become part of the official record of the application.
The way they work is that you file them – there’s no fixed form – and a special office reviews them and decides whether they meet the standard to be forwarded to the Examining Attorney for their review as part of the examination of the application. If not, they basically pitch them. If so, they forward them to the Examining Attorney as a piece of evidence that they can use while determining whether the registration should issue. If you want to see the rules for how this works, here’s a link to the relevant page in the Manual:
Now, there are things which are appropriate for a Letter of Protest, and things which are not. First and foremost, what is not appropriate is a “merely adversarial” protest. This means you can’t just say, “That’s a stupid trademark,” or “I should get this trademark,” or “This Applicant is a trademark troll and they will use the fell power of a U.S. Trademark Registration for dark and loathsome deeds.” One or more of those may be true but they are not things the USPTO considers at this phase.
What is appropriate is evidence that the registration should not be issued because the trademark is either not capable of identifying a unique source of goods and services or that it will cause a likelihood of confusion with an already registered trademark or prior-pending application for a registration. In other words, either the mark is generic (like trying to register GAME STORE for stores that sell games,) merely descriptive (like trying to register FRIENDLY LOCAL GAME STORE for stores that sell games and many if not all of which presumably have some level of friendliness and locality as general attributes,) or someone else has already registered it or filed an application to register it before the application at hand was filed.
This is really important because what this does not include is evidence of prior use absent a registration or prior application. If someone else – either the person filing the Letter of Protest, or some third party – is already using the trademark but does not have a registration or a pending application, as far as the USPTO is concerned (at this stage) that is irrelevant. Examining Attorneys can only take registrations and pending applications into account, period. (Sometimes this produces what seem like nonsensical results but there are very good reasons for it.)
There are some other reasons which are accepted – for example, if there is a pending lawsuit about the ownership of the mark – but these are the big ones which most people reading this will care about.
So what goes in a Letter of Protest? Well I’m not going to get super specific because that might be legal advice and I won’t give legal advice to people who aren’t my clients. On that point, though, it is interesting to note that there is a Facebook group called “Trademark Watch Dawgs” that tries to coordinate the filing of Letters of Protest among online retailers to attempt to get ahead of trademark trolls. I occasionally post there as do some other trademark lawyers, but mostly it’s about non-lawyers assisting each other. They do have guides and sample Letters of Protest that they share.
In any event, generally speaking you set forth your grounds for protest, in an organized and specific fashion, and you include evidence to back them up. You must include some evidence, and not just allegations (that would be a “merely adversarial” protest.) But the evidence can be informally formatted as long as it’s understandable and coherent.
For instance, if you were claiming that “Friendly Local Game Store” was generic, you might include citations to the dictionary definitions of the words or to a trade industry document that used the phrase to describe all game stores and indicated that it was standard practice in the industry. If you were claiming it was merely descriptive in the specific context of the goods and services claimed, you might include PDF of web pages from discussion groups for people who like to buy things from game stores showing that they refer to lots of different game stores as “friendly local game stores.”
If you were claiming that someone else (you or a third party, doesn’t matter for a Letter of Protest) already has a registration or a prior pending application for a similar mark for similar goods and services, you would specify the registration numbers for issued registrations or the serial numbers for pending applications. Say, for instance, you had a registration for AVUNCULAR GAME RETAIL EMPORIUM for game stores. You might submit the registration number and evidence that the marks are confusingly similar, such as comparing the dictionary definitions of the individual words and then showing that combined, they had a similar meaning and there is a likelihood of confusion. This is NOT the same thing as opposing the registration: you are merely making the USPTO aware of potentially relevant information. If the special office thinks the marks or the goods are too far apart they will not submit them to the Examining Attorney and even if they do the Examining Attorney is not obliged to agree with your assertion or even acknowledge it.
Second Phase: Approval for Publication to Thirty Days After Publication
After the application is approved for publication, which means that the USPTO didn’t find any conflicting registrations or prior-filed applications and does not consider the mark to be generic or merely descriptive, all of the above requirements still apply to have a Letter of Protest considered. However, a new burden also attaches, which is that the Letter of Protest must show that the approval of the application for publication was “clear error.” In other words, if the Examining Attorney had known what was in the Letter of Protest before they did it, there is just no way that they ever would have approved the application for publication. An example of this would be the Examining Attorney just somehow flat missing an existing registration for the same mark for the same goods (which basically never happens) or evidence that the mark is actually a common and generic term of art in the relevant chain of commerce but the Examining Attorney, for whatever reason, did not discover this beforehand.
The special office will only approve a Letter of Protest if this standard is met: however, if this standard is met, it is a very good bet that the approval for publication will be withdrawn – in fact, absent unusual circumstances, the Examining Attorney has to issue a refusal, because we don’t cotton to clear error in these parts, nosirree Bob. So it’s a high bar, but the reward if you clear it is that your protest will almost certainly be successful.
Third Phase: More than Thirty Days After Publication to Issue of Registration
Even if the issuance of the registration is delayed because of a pending Opposition (see below) the USPTO will almost never consider Letters of Protest filed more than thirty days after publication. They can, but there must be extremely unusual circumstances, which are beyond the scope of this post.
The other thing you can do to try to stop a trademark registration from issuing is to file an Opposition. An Opposition is basically a mini-lawsuit filed in the Trademark Office, specifically before the Trademark Trials and Appeals Board, or TTAB. This is done by filing a Notice of Opposition and paying the filing fee. Oh, did I not mention the fee? There’s a fee. (There’s no fee to file Letters of Protest.) It’s US$400.00 per class. For the application I linked to above, despite the gigantic laundry list of services (see this post for why that’s not necessarily a good idea) there’s only one class, so there’d only be one fee.
Speaking of fees, while anybody can file a reasonable Letter of Protest with some care and consideration, as I said an Opposition is basically a mini-lawsuit, and for a lawsuit, you are going to want a lawyer. Which means you are going to pay legal fees of, almost certainly, thousands of dollars, and possibly more. (Still cheaper than an actual lawsuit, and definitely much faster.) It is not a thing to do lightly. Talk to a trademark attorney as early in the process as you can. The good news is that you can file extensions of time to file your actual opposition, so in a pinch, you can stop the clock for a month or two by paying a few hundred dollars.
Another difference between a Letter of Protest and an Opposition: anyone can file a Letter of Protest, but only someone with standing can file an Opposition. What’s standing? Standing is about three weeks in the Civil Procedure course in law school, that’s what standing is. But to summarize, standing means that you have an identifiable and specific interest in the outcome of the proceeding. Consumers, in general, don’t have standing to file trademark oppositions. Only someone who would specifically (potentially) be damaged if the registration issued can file one.
So if I sell similar goods and services, and I believe the mark is generic and it would make it impossible for me to reasonably identify my goods and services in the marketplace, I can file an Opposition. If I have previously used the same or similar mark in interstate commerce (which is important!) for similar goods and services and therefore believe I have superior rights to use it, I can file an Opposition. Those are the primary grounds for standing in trademark oppositions. If you file an Opposition without standing, it will be dismissed, either rejected at the outset if you don’t assert standing, or dismissed for failure to establish standing when the Opposition is underway.
A Notice of Opposition can only be filed after the application is published for opposition. Unlike a Letter of Protest, you can’t file an Opposition until the USPTO has basically decided to allow the mark to register. This is because until that happens, it’s not reasonable to begin a separate and resource-intensive proceeding, since the Examining Attorney might refuse the registration and make the whole thing moot. Once the application is published, any individual with standing may file a Notice of Opposition. Of course ideally you’d start getting ready to do this long before, but the actual window of time to file is from the date of publication to thirty days after publication. If you need more time, you can pay a relatively modest fee for a one or two month extension. But the time limit is the time limit: it cannot be further extended, for any reason.
Once a Notice of Opposition is timely filed, the Opposition proceeds according to a fairly straightforward and fixed set of rules. First, the “defendant” – the party trying to register the trademark – must file an Answer to the Notice of Opposition. The Notice of Opposition serves as the equivalent of the Complaint in a Federal District Court lawsuit (also called a Petition in some state courts.) If the defendant doesn’t file an Answer, the Opposition may be granted by default, which means that the trademark will not be registered. It’s possible to set aside such a default, but it’s not easy. Defaulting, as in any legal situation, is a Bad Idea.
After filing the Answer, assuming the Opposition survives (the Answer may have contained the equivalent of a Motion to Dismiss, asserting that the Notice of Opposition does not meet the minimum requirements for an Opposition, and if the TTAB agrees the whole thing might go away right there) next comes the discovery period, where the parties can force each other to produce relevant evidence regarding their respective claims to exclusive use of the mark. This takes the form of things like interrogatories (lists of allegedly relevant questions,) depositions, and requests for documents and records the other party may have. Again, this works pretty much like a lawsuit in Federal court.
After discovery, the “trial” begins, which consists of taking and submitting testimony. Unlike a Federal District Court proceeding, the testimony is not taken in the presence of the TTAB. Each party gets a time period to take testimony, and the other party must be allowed to cross-examine witnesses who are submitting testimony. The resulting testimony is submitted to the Board by the time the period for taking testimony ends. All testimony must be submitted in the form of written transcripts: the Board does not watch live video or audio nor review recorded video or audio.
Did I mention that this can get expensive?
Following the testimony period, each party submits a main brief, making their best arguments, in light of the discovery and testimony, as to why they should get their way. That is, the plaintiff (the party who filed the Opposition) argues that the registration should not issue, and the defendant argues the opposite. The plaintiff files their brief first, and then the defendant files within a certain time after that. As the burden of proof is on the plaintiff, they are allowed to file a reply brief after reading the defendant’s main brief, though it is optional. The defendant is not allowed to file a counter-reply: brief submission ends with either the defendant’s main brief or the plaintiff’s reply brief.
The parties may request an oral hearing, which can be in person or by videoconference. This is also optional. If it is requested, the TTAB will arrange for a hearing: a request for a hearing may not be refused. Such a hearing is very like the closing arguments stage of a civil trial – no new evidence or testimony may be introduced, the parties get one last chance to sum up and sell their arguments to the TTAB. In a way it’s also like an appeals court hearing, in that the TTAB “judges” – board members – can and do ask questions much more frequently than a trial judge would be expected to.
After the submission of testimony and briefing, and the oral hearing if any occurs, the TTAB makes a final decision. If they decide for the plaintiff, the trademark registration application is denied. If they decide for the defendant, pending any other oppositions, a registration will issue in the normal course as if the Opposition had never happened. As with a court trial, the losing party has various opportunities to appeal, including asking the TTAB to reconsider or appealing directly to the Court of Appeals for the Federal Circuit, which has review authority over the USPTO. That gets very complicated and very expensive and is very much outside the scope of this post.
Petitions to Cancel / Lawsuits
Once a trademark registration issues, the only way to un-issue it is either to file a lawsuit and ask a court to make the USPTO un-issue it or to file a Petition to Cancel, which is sort of kind of like an Opposition only it happens after the registration issues, it’s more complicated, it’s more expensive, and it’s less likely to succeed. It’s also WAY more outside the scope of this post. I mention them only to make clear that even registered marks are not invulnerable to challenge.
Prior Users vs. Trademark Registrants
Finally, it should be noted in passing, given the subject matter of this post, that prior users of trademarks for similar goods are, in theory, not infringing on the trademark of later users even if the later users have a registration and the prior users do not. However, that is also way beyond the scope of this post and a subject which should be approached with fear, trembling, and an experienced trademark attorney. Maybe two.
I hope you found this post educational or at least entertaining. As always, questions are welcome in the comments or via email or on Twitter. Thanks for reading!
You may recall this post from a few years back about fantasy sports in Illinois:
In that post, I talked about why I though Fantasy Sports betting was illegal gambling under the law of the state of Illinois, and pointed out that the Illinois Attorney General’s office agreed with me.
Well, scratch that.Read The Rest
So on March 28, 2018, the Ninth Circuit Court of Appeals issued this opinion:
It has been all over the Interwebs, but there’s a lot of misunderstanding going on. I happen to have not only some experience in gaming law, but experience in dealing with the particular statute in question, Wash. Rev. Code § 9.46.0237, the “unlawful gambling” law in the state of Washington. From experience, I can tell you that it is one of the broadest gambling laws in the country. The Ninth Circuit takes special note of this, especially when it finds citations to decisions on the law of other states unpersuasive.
So, in no particular order, some observations and clarifications:
- This case was originally brought in a Federal District Court. While there are Federal gambling laws, most cases of actual interpersonal acts that might be gambling are subject to state laws. There’s not really a Federal law that governs acts of gambling in a general manner. The case was brought in Federal court because it is a class action against Churchill Downs, which is a corporation resident in Kentucky, and the class, with the representative plaintiff being Ms. Cheryl Kater, a resident of Washington. This is allowed because of what is called “diversity” jurisdiction: people who live in different states can bring suit in Federal courts because it’s viewed as fairer for both parties to have diverse lawsuits brought in a Federal court under a single Federal civil procedure and with a hopefully less biased court.
- But, as I said, there are no Federal gambling laws that apply: the plaintiff is suing under a state gambling law. Federal courts hear cases under state law all the time. The reason Washington’s law applies is that the alleged gambling took place, at least in part, in Washington (where Ms. Kater’s device was) and by offering the service to her in that state, Churchill Downs may have made itself subject to the laws of her state. (That’s a whole separate discussion which I will not get into.)
- Now that we know how she got there, here’s what Ms. Kater is claiming:a) Washington’s state gambling law says that people who take money to provide illegal gambling services aren’t allowed to keep it: the person who gave it to them can sue in civil court to get it back.
b) Under Washington law, the game Churchill Downs, under the name of software publisher Big Fish Casino, was illegal gambling.
c) Ms. Kater gave Big Fish Casino a lot of money (at least a thousand dollars) to play in Big Fish Casino. Other people in the class likewise paid money to play at the casino and it was gambling too.
d) Therefore, she and all other similarly situated members of the class (people in Washington who played in the casino and paid money to do so) should get their money back.
Whew! Let’s unpack that a little bit.
As far as “people can get their money back if they lost it gambling illegally,” that is actually a pretty common rule. You may like it, you may not think it makes any sense. But it is what it is and I’m not going to discuss that other than to say that that’s the rule here and in many other places.
As far as “she gave them a lot of money to play,” you can have whatever opinion you want as to what that says about her intelligence, impulse control, etc. I will say that these games are designed by psychologists to be pure dopamine generators. I doubt many people reading this aren’t familiar with being sucked into a game: imagine that feeling, only with actual SCIENCE! applied to trying to generate it. I think regulated gaming should be legal for informed adults, but I am not blind to this kind of thing.
But now we get to the heart of the matter: was this game unlawful gambling? You may know, especially if you read my blog, that the crime of gambling usually consists of three elements: consideration (which is your stake, your wager, the thing you put at risk to play,) chance (the outcome of the play has to be outside your control in some way, usually by way of a random event,) and prize (you have to be able to win something of value.) We definitely have consideration: while you can initially get play points by various unpaid means, you eventually have to buy them, and you can’t play if you don’t have play points. We likewise have chance: the games she played are literally video slot games which use a random number generator to determine whether the player wins any particular game played.
But do we have a prize? Is there a thing of value?
NOW PAY ATTENTION BECAUSE I’VE BEEN TRYING TO WARN YOU PEOPLE AND NOBODY WANTS TO LISTEN.
Here is the definition of “thing of value” under Washington law:
[A]ny money or property, any token, object or article exchangeable for money or property, or any form of credit or promise, directly or indirectly, contemplating transfer of money or property or of any interest therein, or involving extension of a service, entertainment or a privilege of playing at a game or scheme without charge. Wash. Rev. Code § 9.46.0285
It doesn’t limit “things of value” to money or things that can be exchanged for money. While allegedly there was a black market for play points that involved using external payments for play points to then be exchanged in-game (with a cut for Big Fish, which does NOT look good) the lower court specifically said that that was a violation of the TOS and it wasn’t relevant anyway. Because play points are the embodiment of a privilege of playing at a game or scheme without charge.
This, by the way, is a historical artifact related to pinball machines and “clear” or “reset” switches. Back in the olden days, if you won free credits on a pinball machine, the bartender could hit the reset switch and clear the credits, and pay you what they were worth. This was considered gambling under the anti-pinball moral panic of the day, so it was made illegal in many jurisdictions. Whether or not a game has a reset switch is often crucial to determining whether it is an unlawful gambling device or a lawful entertainment device.
But I digress.
The point is, prizes, or things of value, are what the law says they are, not what you think they are. This varies by jurisdiction and it is incredibly complicated. If you want to make a game that arguably has the three elements of gambling *cough*lootboxes*cough* but defend yourself from possible charges of gambling by claiming your “prizes” are not “things of value,” you are walking on very thin ice. When I was advising an international gaming company, I had a binder several inches thick that contained gambling statutes and expert legal analysis of what those statutes meant. It had to be updated constantly. And there were some jurisdictions where certain features were available and other jurisdictions where they were not. Keeping track of that is part of the process, and cost, of doing business for an international gaming company.
If you are not willing and/or able to adopt that process, or assume that cost, you have no business operating in this field. Especially since the more casual/entertainment gaming sphere’s use of some of these principles *cough*lootboxes*cough* is starting to show up on the radar of legislators and gaming commissions. I expect significant change in the regulatory environment in the near to medium term: the only way you, as a developer, have any chance of staying out of trouble is to get good legal counsel. Or, alternatively, don’t offer products that include these kind of features.
As always, questions are welcome in the comments or on my Twitter @legalinspire. Thanks for reading!
I was delighted to be invited to participate in an episode of Robot Congress, a podcast about video games, the law, and whatever else they feel like talking about. Here’s a link:
Please check it out. And subscribe to the podcast, it’s good!