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Changing game name still covered by Trademark?

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boardgameguru
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Joined: 05/11/2009

I took out a Trademark in UK in 1989 with a single word game name.

IF I change the game name still having the original game name and 2 words after it will it still be covered with the original Trademark?

Thanks

FrankM
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Joined: 01/27/2017
Not a lawyer

boardgameguru wrote:
I took out a Trademark in UK in 1989 with a single word game name.

IF I change the game name still having the original game name and 2 words after it will it still be covered with the original Trademark?

Thanks


I'm not a lawyer, but I'm pretty sure it depends on the role of those two words.

Suppose you trademarked Foo™.

My understanding is that you could market Foo™: The Sequel without problems because "Foo" is the actual mark. But you couldn't stretch the original trademark over a phrase like Foo and Bar™.

In either case you'd probably want to register the trademark for the full name anyway, but in a way that preserves your 1989 priority in case a dispute arises.

boardgameguru
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Joined: 05/11/2009
Expensive

Trademarking is expensive.

IF I had "in minutes" after the name would that be covered by original Trademark you think?

polyobsessive
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Joined: 12/11/2015
Ask a lawyer

I'm pretty sure that what we think on this website would be utterly irrelevant if you had to defend your trademark. You really need to talk to someone qualified in UK trademark law.

questccg
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Joined: 04/16/2011
My experience with Trademarks

boardgameguru wrote:
I took out a Trademark in UK in 1989 with a single word game name.

IF I change the game name still having the original game name and 2 words after it will it still be covered with the original Trademark?

I'm NOT a lawyer or well versed in Trademarking ... but we DID have a "Trademark" issue with "TradeWorlds". Originally the name was "Tradewars"... And my game was called "Tradewars - Homeworld"... Well although the "trademark" was for "Trade Wars" and in the category of "Computer Gaming". But my Publisher decided to CHANGE the name after they contacted the original owner of the trademark. He wanted 3% of the KS and 6% of any and all eventual sales (besides being the KS).

Personally I don't have problems with the "change" but I still felt like the "Terms of the Trademark" were specific enough that I had NOT violated his "Trademark"...

The other way of looking at it is this:

  • The trademark was "Trade Wars"
  • The category for the trademark was "Computer Games"

If we allowed everyone to "Trademark" all the words in the dictionary nobody would be able to create companies and brands - because SOMEONE would OWN that trademark...

So the "Category" and how the trademark is written are relevant.

From my OWN "understanding" (Which could be 100% wrong), I would say "NO". Your "Trademark" is very specific like all other trademarks. Add or removing words constitutes a different reference.

In our specific case with "Tradewars", there was a "Video Game" called "TradeWars 2002" which made it more probable for confusion with our game... And so in that context I think the name change to "TradeWorlds" was more relevant and correct.

But again I'm not a lawyer and the laws may be different in the UK. I too would advise to consult a patent lawyer in the UK... Best.


And just as a NOTE. Up here in Canada we have "Dove Soap" and "Dove Chocolate"... They are different companies going by the same name "Dove". But because they are in different markets - both companies can LEGALLY use the name "Dove". Go figure...

Trademarks and copyrights are much more complex than just a word or two extra.

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