In this article, makers of the game named “The Day Before” announced they had to delay the product launch because of a trademark dispute. What happened, could is happen to you, and how would you avoid it?
According to the article, “[Developer Fntastic and publisher Mytona] said when [they] announced The Day Before in January 2021, the name ‘The Day Before’ was available to trademark as a video game. After this, a person registered that name with the US Patent and Trademark Office, beating Fntastic to the punch.”
So, Fntastic announced the name of a new game. At that time they checked the US trademark database and there was no other registration of “The Day Before” here.
But according to public records at the Trademark Office, (see https://tsdr.uspto.gov/#caseNumber=79314174&caseType=SERIAL_NO&searchType=statusSearch) an individual applied for trademark on “The Day Before” in the United States in May of 2021, just four months after Fntastic’s announcement. The goods and services of the application included “computer game software.” The May application was a request to extend into the USA an existing trademark that already existed in South Korea. That trademark registration was issued on Nov. 1, 2022.
Then Fntastic waited a year after its announcement to file an application for trademark in the US on January 7, 2022. The trademark office issued a refusal on Nov 16, 2022, citing the existing mark that had been issued two weeks prior as conflicting.
While the individual’s registration in Korea alone would not have prevented Fntastic from getting a US trademark, the Korean trademark holder’s application and registration in the USA became a bar to Fntastic.
In my opinion, Fntastic is going to have a difficult time with this mess, unless they buy out the prior trademark holder.
Could this have been avoided?
When you decide on a name for your company or product, you may immediately file an application for trademark with the USPTO.gov. If you are not already using the mark to sell a product or service you can certify that you “intend to use” (ITU) the mark in commerce within six months after receiving a notice of allowance from the Trademark Office. That six-month deadline may be extended several times so that you actually have over three years from the time you file the ITU application to start using the mark. During the pendency of the ITU application, no one else can get a trademark on the same name for the same services.
In this case, Fntastic could have filed an ITU trademark application the day before they announced the game in January 2021 (see what I did there?). They would have had the time they needed to create the game and they would have kept the Korean trademark holder from getting that mark in the US during that time.
There are extra fees and procedures for the process of filing an ITU trademark application, but those costs are minor compared to the hassles of rebranding or settling a dispute over a name.
People are proud of the names they assign to companies and products, and rightfully so! Brands are built around those names. Trademark is the legal vehicle to protect your brand. Apply for a trademark as soon as you commit yourself to a specific name or logo, and avoid the headache of having to rebrand.
Entrepreneurs are going to save the world, and Argent Place® Law wants to help. Whether you are ready to start your own company now, or you are expanding your business, or you’re getting ready to sell your business, Argent Place Law can help you succeed. Think how great it will be to have a lawyer with entrepreneurial experience on your speed dial whom you can call up and say, “I am about to roll out a new product and I need a trademark to protect that name! What do I do next?” Schedule an appointment, or just call Argent Place Law to find out: 703-539-2518.