Do I have any legal options if a game is released with the same name as one I already publicly have under development?

Question

I have had a game in development since October 2020. There is an audit trail in the form of public GitHub code commits showing how long I have been using the name. Unfortunately I had not yet done any public marketing for the game so there isn't really anything in the way of press or social media presence.

In November 2021, a wordmark application was filed for the same name by a major studio and the game was released on major retailers later that year. I could find no public usage of that name by them or even an announcement that they were working on such a game at all until that point.

I am now under a year away from being ready for release and am wondering what my options are.

I understand that trademarking is a "first come, first serve" deal and I imagine I have no legal grounds (or resources) to stop them from using it but my question is, do I have any protections or options that I can take to allow me to continue using the name/prevent them from forcing me to change it? Or if I must change it, am I still bound by normal rules that would prevent me from making the name too similar to the existing name?

Answer 1

Trademark rights are generally based on actual use of a mark in commerce, so the first party to use the mark in connection with goods or services has priority. In your case, it sounds like the major studio started using the same name after you had already started using it in your game development.

However, without conducting a full trademark search and analysis of both parties' rights, it is not possible to determine whether you have any legal grounds to prevent the major studio from using the name. In some cases, it is possible to argue that you have acquired "common law" rights in a mark through your use, even if you have not registered the mark with the trademark office. However, these rights can be limited and difficult to enforce.

If the major studio has filed a trademark application for the same name and you believe that your use of the name may infringe on their rights, it may be wise to consider changing the name of your game to avoid any potential legal issues. You may want to consult a trademark attorney to discuss your specific situation and any potential legal risks.

Regarding the similarity of the new name to the existing name, there are rules against creating a "confusingly similar" mark that may infringe on another party's rights. These rules apply regardless of whether the other party has a registered trademark.