Valve Software has, on September 29, 2013, filed for registration of a CTM trademark for Half Life 3 in the European Union. Under EU law, one must have a genuine intent to use a trademark in the future in order to obtain and maintain a CTM trademark registration.
Under Article 15 of the Community Trademark Regulation, one must “put the Community trademark to genuine use in the Community in connection with the goods or services in respect of which it is registered” in order to acquire CTM protection. The current Article 15(1) states that the trademark must be used in commerce within five (5) years. Consequently, Valve’s filing indicates that Half Life 3 is actually on its way and will be making its appearance within the European Union within the next five years.
Valve’s trademark filing for HALF-LIFE 3 attracted widespread attention not for its legal significance but for what it implied about the game’s development status. Under EU trademark law — specifically the European Union Trade Mark (EUTM) framework administered by the European Union Intellectual Property Office (EUIPO) — a trademark registration can be canceled for non-use if the mark is not genuinely used in commerce within five years of registration. This creates a strategic constraint: companies do not file for trademark registration unless they intend to use the mark within the required period.
That logic, while sound in principle, slightly overstates the practical significance of a trademark filing as product evidence. Trademark applications are frequently filed by large companies as defensive registrations — to prevent third parties from registering confusingly similar marks — and the genuine use requirement has some flexibility in how courts and the EUIPO interpret use “in commerce.” Nevertheless, the filing did confirm that Valve was actively thinking about the HALF-LIFE 3 brand at the time, whether or not the game was imminent.
The EU trademark system operates differently from the USPTO system in several important respects that game developers and other technology companies should understand:
Video game companies face a distinctive set of trademark considerations. The core elements requiring protection include: the game title (word mark and stylized design), the publisher and developer studio names, character names and likenesses, and the franchise brand. These marks should be registered in the relevant product categories under the Nice Classification:
Beyond registration, video game companies should monitor the USPTO and EUIPO publication databases for pending applications that could conflict with their marks, and should be prepared to file TTAB oppositions or EUIPO oppositions against infringing registrations. The 30-day opposition window at the USPTO and the three-month opposition period at the EUIPO are narrow — missing them can result in a competing mark achieving registration that is difficult and expensive to challenge later.
Many video game companies file trademark applications for unreleased titles as part of a defensive strategy to prevent competitors, cybersquatters, and merchandise pirates from registering similar marks before the game launches. This is particularly important for sequels and franchise extensions, where the brand equity of the existing franchise makes the sequel mark inherently valuable to third parties who would exploit it.
In the United States, intent-to-use applications under 15 U.S.C. § 1051(b) allow trademark protection to be secured before a game ships, provided the applicant has a bona fide intent to use the mark in commerce. The applicant has up to three years from the initial Notice of Allowance — with extensions — to file a Statement of Use showing actual use in commerce. This window accommodates the typically long development cycles of major video game releases.
Trademark registration should be complemented by domain name protection. Game studios should register the .com, .net, and .org domain names corresponding to their game titles, as well as common typosquatting variations, before public announcement of a new title. Waiting until announcement is a common mistake — within hours of a major game announcement, cybersquatters register associated domains in anticipation of monetizing traffic or selling the domains back to the rights holder.
For registered trademarks, ACPA and UDRP provide remedies for cybersquatted domains. However, UDRP proceedings take two to three months and ACPA litigation takes longer. Proactive domain registration is significantly cheaper and faster than litigation to recover domains after the fact.
If you have questions about trademark law, contact the trademark attorneys at Revision Legal. Call us at 855-473-8474 or complete our contact form.
One of the most delicate trademark questions for game developers and technology companies is when and how to file trademark applications for unannounced products without inadvertently leaking information to the public. Trademark applications become publicly visible in the USPTO database shortly after filing, and industry watchers routinely monitor new filings from major publishers and developers for hints about upcoming releases.
Several strategies are available for companies wishing to file trademark protection for an unannounced title while minimizing disclosure risk. Some companies file applications through holding companies or subsidiaries whose name does not immediately identify the ultimate parent. Others file in foreign jurisdictions (including the EU) before filing in the United States, under the theory that foreign filings receive less attention from English-language gaming press. Neither strategy provides complete secrecy, but they can delay the connection between a new application and a specific company.
These strategies have significant tradeoffs and should only be pursued with experienced trademark counsel who can evaluate the international priority implications and the risk of a successful challenge to the filing basis if the concealment strategy is later discovered. The core compliance requirement — genuine intent to use the mark within the applicable period — must be satisfied regardless of the filing strategy.
Contact the trademark attorneys at Revision Legal with questions about trademark registration or enforcement. Call 855-473-8474 or complete our contact form.
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