Legal Question on Trademarks

In My Humble Opinion (IMHO)
#1

My musical group took its name from a semi-popular arcade game from the 80’s. We’re just now starting to sell some copies of our album and realized that we might need to change our name if there is going to be some sort of trademark infringement.

Would the company want us to change our name, in your opinion?
If we didn’t, is there a good chance we would lose in court?
Should we notify the trademark owner and request written permission for use, or would that just be notifying them that we are infringing and cause them to take legal action?

We really don’t want to change our name if we don’t have to, but we really don’t want to get sued. Any advice would be helpful.

#2

BTW, I didn’t post the name of the band just in case anyone associated with the company reads this and tattles.

:wink:

#3

This shouldn’t worry you much. Their first “legal action” will be to have their lawyers send you a cease-and-desist letter threatening further action. The courts are clogged up enough with lawsuits. If a judge heard that Evil Empire, Inc., was taking HoldenCaulfield DBA Galaxian (or whatever) to court over trademark infringement without even asking you to stop first, he’d probably rule summarily in your favor. :slight_smile:

#4

Is the game still around? If it isn’t, it’s less likely the trademark owner will bother doing anything.

Also, unless you’re marketing a game with the same name, their case is weak. You are a band; they were a game and it’s not likely for there to be any confusion. They’d have to argue that you are hurting their reputation, something that would be more difficult to prove than proving you’re competing with them.

Of course, if they take you to court, they have deeper pockets, which gives them a big advantage. Even if the case is thrown out, it might bankrupt you to fight it.

Knead is right – give it a try and see if you hear from the lawyers.

#5

The game isn’t really still around.

So you think I should contact their lawyer and ask for written permission? I found the contact information in the trademark records. Is there any certain way I should write the letter, or a special procedure or something? If I ask for permission, will they ask for money in return?

#6

IANAL, but I’ve been the liasion to the TM lawyers for a few companies I’ve worked for.

There are several different categories for trademarks. For example, you could trademark a car "XYZ"™ and a floor cleaner "XYZ"™ and they wouldn’t be in conflict since the two categories don’t overlap. Unfortunately, I don’t recall what those categories are, but you can find everything you need to know right here: http://www.uspto.gov/

I’m not sure if the game and the band would fall under the same category, since they’re both entertainment. The game would probably fall under software, so you might be excluded. At any rate, I WOULD NOT CALL THEIR LAWYER. Doing so might make it look like you think there could be a claim, which they might prey on even if they don’t have a case. I would, however, find yourself a trademark and copyright lawyer. You wouldn’t necessarily have to put him/her on retainer. A one-time visit might suffice to answer your questions.

If, however, you want to TM your band name (I’m not even sure if you can do that or not) definitely get a lawyer to perform the initial search and filing for you. It’ll cost you a few hundred bucks, but it will save you hours and hours and hours and hours and keep you from making some potentially serious mistakes.

Good luck.

#7

Well, last I heard, “Atari Teenage Riot” haven’t gotten any cease-and-desists from Atari (which is now owned by Infogrames, but that’s another matter). And AFAIK, Infogrames is actively using and protecting their Atari trademarks.

#8

IAAL, but not an expert in trademark, although I have done some research on it.

(you are not my client, this is not legal advice, blah blah blah)

I have a feeling that if you ask permission, the answer will be “no”, out of abundance of caution on their side and their duty to defend their mark against infringment.

Using the same name for a band and a video game is not “confusingly similar” because one is a band, and the other is a game.

For example, I don’t think the British Xmas band “Band-Aid” was ever confused with medical adhesive strips. No infringement.

#9

Well, looks like we really don’t have anything to worry about.

Our band is Revenge of Doh. Named after the sequel to Arkanoid, a Breakout-style game. We just recorded a CD (which I missed the SanDiegDopeFest to record.) If you feel secure enough in your insanity to purchase a CD over the Internet from someone you’ve never heard play before, give me an E-Mail. We are a weird hard rock band.

#10

I think a couple of the examples given are not relevant to your situation:

  1. “Atari” is a regular (Japanese) word. You can use “Check” in a band name quite safely even though there might be thousands of companies using “Check” in their name. It’s like the difference between “Kodiak” and “Kodak”. The first, a lot of companies use, the second, only one.

  2. No one’s going to sue “Band-Aid”, a high profile charity. Definitely a “shoot yourself in the foot” idea that most (but not all) lawyers would have sense to avoid.

But “Revenge of Doh” sticks out like a sore thumb. You run a big risk of getting That Nasty Letter. Whether they have a legal case is not material. They have a lot more money for lawyers than you do. That’s what wins in the US judicial system.

Think like a lawyer making a BS case: Hey, they’re making movies out of video games, what if we make a movie out of “Revenge of Doh”? Movies have soundtracks, what if we have a soundtrack for our movie? People go into Tower Records asking for “Revenge of Doh” might get the wrong CD. We lose money. Defendant therefore owes us lost revenue for all these imaginary unsold CDs, reparations for decreased value of money making trademark, their first born child and their immortal souls.

I am surprised no one mentioned “Chung King” which became “Wang Chung.” Chung King sells (bad) Chinese food. If a food company can sue a band, Atari definitely can sue you.

#11

Actually Taito makes the game, but I guess we’ll have to change it then. That kinda sucks. Thanks, though.

#12

ftg makes a good point. You could end up in costly litigation whether you are in the right or not.

#13

One example of trademarks and bands…