Transcript Can My Game be a Brand?

Can My Game be a
Brand?
J. Michael Monahan
Pattishall, McAuliffe, Newbury,
Hilliard & Geraldson LLP
Dr. Sunny Handa
Blake, Cassels & Graydon LLP
INTRODUCTION

Brand: marketing concept
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.
BRANDING – Marketing
Tool
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.
BRANDING – Marketing
Tool
Brand Basics (continued)
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A brand...
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- may be expressed through written,
audio and visual content.
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ex. BMW: logo + emphasis on design +
“The Ultimate Driving Experience” =
luxury brand.
BRANDING – Marketing
Tool
Brand Basics – Games
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Sound + Graphic Design + Characters =
desired gaming experience.
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ex. Rock Band and Guitar Hero
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Logo design
Artist roster
Music catalogue
BRANDING – Marketing
Tool
Brand Basics – Games (Continued)
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What can be a brand?
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Consoles, platforms, games, publishers,
online games.
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).
BRANDING – Marketing
Tool
Brand Basics – Games (continued)
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Characters as brands
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SUPER MARIO BROS.
LARA CROFT
SAM FISHER
DONKEY KONG
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
BRANDING – Marketing
Tool
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. COCACOLA) enhances image of videogame.
Real-life brand presence enhances immersive
videogame experience by rendering it more
realistic.
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.
BRANDING –
Marketing Tool
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.
BRANDING – Marketing
Tool
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.
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ex. Marvel – publisher deals for online games based
on Marvel characters.
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.
BRANDING – Marketing
Tool
Brand Strategies:
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Brand Strategy
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Creates the desired image to set
product apart from the competition.
Strong Brand Strategy
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Establishes strong feelings and
reactions and favorable view towards
company as a whole.
BRANDING – Marketing
Tool
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.
BRANDING – Marketing
Tool
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
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BRANDING – Marketing
Tool
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.
Trademarks as Brand
Value
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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A Few Terms of Art
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“trademark” is a mark for a product
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“service mark” is a mark for a service.
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HALO game
WII console
LOGITECH peripheral
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
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BLIZZARD is a company and trademark
Types of
Trademarks
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Common words used arbitrarily
(BLIZZARD)
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Invented words (ATARI or WII)
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Personal names (SID MEIER’S
PIRATES)
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Alphanumeric combinations (PS3)
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Logos (ROCKSTAR)
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Packaging (XBOX peripheral
blister/card)
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Colors/Color Schemes (XBOX
white/green packaging)
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Product shapes (XBOX 360
console, PS3 controller)
Choosing a Brand
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Coined - invented word (EIDOS games).
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Arbitrary - common word with no ordinary meaning
when applied to the goods (APPLE computers,
BLIZZARD games).
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Suggestive – word that suggests an attribute of the
product, without describing the product itself
(PLAYSTATION consoles).
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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.
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Generic - A generic term is not a trademark at all but
simply the name of the product itself (GAME or MMO).
Distinctive Brands
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Coined
Arbitrary
Suggestive
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instant protection
easier
enforcement
swifter registration
long-term
branding benefits
Less Distinctive
Brands
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Suggestive/Descriptive
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need exclusive use for
“secondary meaning”
rely on design elements
exist in “crowded field”
Advantages In Selecting A
Distinctive Trademark
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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.
Brands from Games
Titles
 Characters
 Symbols
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More Brands from
Games
Enemies
 Settings
 Weapons
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Trademark Clearance
Process
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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
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Follow-up Investigation – Confirm
the use and ownership of problem marks
found in the search. Is there really a
conflict?
Limitations of Trademark
Searches
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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.
Registered & Unregistered
Trademarks
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In the United States, trademark rights come from
use, not registration.
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The first person to use a trademark generally gets
rights to it.
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Unregistered or “common-law” marks may be valid
and enforceable.
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.”
Why Register Trademarks
in the U.S.?
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easier to prove that the trademark is valid.
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evidence of ownership and of nationwide
rights.
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establishes the exclusive right to use the
mark for the goods or services listed in the
registration.
®
Trademark Registration
Process
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Apply to USPTO, usually electronically
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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
Trademark Use Guidelines
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Trademarks are adjectives, not nouns. “XBOX
360 gaming console” is better than “XBOX 360.”
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Trademarks should not be used possessively.
“The gaming power of the PLAYSTATION 3 console” is
better than “The PLAYSTATION 3’s gaming power.”
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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.
Don’t Let Trademarks
Become Generic
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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
Proper Trademark
Attribution
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® only for trademarks federally registered in the
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“TM” for unregistered trademarks
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“SM” for unregistered service marks
U.S.
Trademark Infringement
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You must show
Priority
 Likelihood of Confusion, based on:
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Strength of Your Mark
 Similarity of the Marks
 Similarity of the Goods
 Same Channels of Trade
 Intent
 Actual Confusion
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Trademark Infringement
Remedies
Injunction
 Profits
 Damages
 Destruction Order
 Attorneys’ Fees
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CANADIAN TRADEMARK
LAW DIFFERENCES
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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.
FINAL THOUGHTS
Licensing and Building a Successful Brand
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License = permission to use a trademark
not your own under certain agreed
terms.
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Examples of the power of licensed
trademarks to enhance videogame
brands:
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EA and John Madden.
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SCRABBLE for FACEBOOK v. LEXULOUS.
FINAL THOUGHTS
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Identify possible brands in the creative
process
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Develop marketing strategies to fully
exploit those brands
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Identifying,managing and policing
trademarks secures your brand strategy
Questions?
Thanks for your attention.
J. Michael Monahan
Pattishall, McAuliffe, Newbury,
Hilliard & Geraldson LLP
Dr. Sunny Handa
Blake, Cassels & Graydon LLP