Legal Notice About Trademark Infringement

Hello guys, this is my first post here and i'd really like to hear your answers about it.

A year ago i published my first game "Idle CEO Tycoon". As the name suggests it is in the hugely popular idle tycoon games genre. Link to play store https://play.google.com/store/apps/details?id=com.kapptan.Idle_Ceo_Tycoon

Today i received a notice from one of the big players in this genre, Kolibri Games. They are claiming that the naming convention "Idle ... Tycoon" is their trademark and that i should change the name of my game.

Here's the full message:

====

The developer of “Idle CEO Tycoon” is using a name that contains the distinctive feature from our trademark series "Idle ... Tycoon", including the following trademarks:
Idle Miner Tycoon
Idle Factory Tycoon
Idle City Tycoon
Idle Farm Tycoon
Idle Restaurant Tycoon
Idle Zoo Tycoon
Idle Tycoon

The links attached can confirm our statement.

The developer of “Idle CEO Tycoon” is thus likely to cause confusion regarding the relationship between them and Kolibri Games, or to falsely suggest that Kolibri Games sponsors, approves of, or endorses this game.

We demand the renaming of the developer's app to stop the infringement of our trademark rights. We expressly do not demand a takedown of this app.

=====

I am fairly confident that neither the words Idle nor Tycoon can be trademarked and that i have the right to publish a game with this name. There are literally thousands of games with this naming so how can they claim that it is their trademark?

What do you guys think i should do? Its not that i am earning anything from it , i just think it's a good name and i dont want to change it because i think i'm right...

Thanks in advance...

 

---
Apparently the uspto's websearch is a pile of c..p, so here is what you need to do:
go here: https://www.uspto.gov/trademarks-application-process/search-trademark-database
hit the button 'search our trademark database (TESS)"
select: basic word search
write in: idle tycoon
and hit the search
---


We Are Not Lawyers Here.

Talk To A Lawyer!

 

If I were you, I would ask them about prove and reference, to trademark claim. Also, in which countries trademark applies to, with official prove.

More over, I would ask, how their claim functions, with already existing games on the market, since 5-10 years.
See for example
Armor Games, which exists at least since flash games. And used Idle and Tycoon words together, since long time.

@Lurking-Ninja
"This search session has expired. Please start a search session again by clicking on the TRADEMARK icon, if you wish to continue."

 

They have a (vaguely) reasonable point that the naming could cause confusion with their brand. A quick trademark search reveals that they do have a large number of trademarks using this pattern. Certainly* their case is not so weak that it would get thrown out of court.

Could you take them to court and possible win? Maybe. Would you end up out of pocket? Probably.

I agree that its a S***ty practice but is this the point where you want to make a stand? It could easily cost you tens if not hundreds of thousands of dollars.

So some options:

1. Change the name
2. Assume that they are just fishing and ignore the request
3. Talk to a lawyer with the likely outcome that they advise you to do number 1 or 5 both which will be at your cost
4. Register your own trademark (which may be enough to turn them off from further action, will be at your cost of course)
5. Commit to fighting to the bitter end

Your game has 5-10k downloads ... is it really worth the fight?

If so I would go for option 4 as a starting point, and be ready to get a a lawyer involved if it escalates

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* Based on my limited experience as a tech advisor involved in a couple of Trademark and IP disputes

 

I read something in similar context to OP question.
It is far from being comprehensive, but I think got few valid points.

https://www.startups.com/community/...e-us-trademark-office-if-someone-else-was-the

 

From a moral point-of-view, you copied their name, right? You knew about those older games when you picked the name for yours, right? I mean, the "tycoon" at the end is redundant. "Idle CEO" makes more sense. But CEO is boring. "Idle Mogul" or "Idle Robber Baron" (if you have a steam-punk theme) is better.

I'm not so sure "idle" needs to be in the title. A name made from search terms is ugly (Idle Apocalypse gets a pass, since the contrast is funny). My favorite, to play, is "Realm Grinder" -- no Idle. "Soda Dungeon" did OK, and it's an idle game with no explicit Idle. I'm thinking a name for yours like "turn-key empire" has more character (after all those super-scammy late-night Ads about turn-key businesses).

What I'm saying is "there are only so many logical names, so of course they'll all seem similar" isn't so true.

 

On the other hand, the Trademark Office likely would refuse to register that trademark. So it is possible that it would mean just money thrown away.

 

It's like it's pretty much the same game play and roughly similar looking. They would have a fairly easy time convincing a court that your game is intentionally trying to trade on their mark. That is pretty the point of trademark, to prevent people from essentially trying to do what you are doing. If you would have made it more distinctive, of used a different name, you could maybe fight it, but this... it will be expensive, time-consuming and in the end, you won't win. Change the name.

 

imo calling something 'idle ... tycoon' is too descriptive of what the game is to be identifiable as a name. Both are commonly used descriptive terms for genres and styles of game. i very much doubt it would hold up as a trademark in court. But it'll cost you $$$ to find out with the risk that it'll cost you a LOT of $$$ to have found out if it doesn't go your way. Either change the name or get a lawyer (who will probably tell you it'd be far easier to just change the name). Personally I'd just change the name.

 

I've just received similar email today from Kolibri Games. (I have game in the store called Idle Tower Tycoon). It looks like they are trying to block the use of the words "idle" and "tycoon" in the names of the games. For now, they have no right to do so, because their trademark application for the "Idle Tycoon" name is still pending.

If they will got that trademark then we will have to change the names of our games. I think this is stupid because the words "idle" and "tycoon" are more indicative of the genre and type of games than their specific name. It's like claiming the word "simulator" or something similar.

 

If they don't actually have the trademark then that's another story. sometimes silly marks slip through but something like this should be refused. Better yet it makes life easier for you if you want to fight it, you may be able to file an objection/opposition to their application for the mark instead of a costly lawsuit after the fact. Still something to consult a lawyer about tho.

 

It doesn't seem like they invented the genre, artstyle or word combo.

Unless you're pulling in real money and want to discuss w/ a lawyer, ignoring it seems pretty safe.

 

I would really poke them and ask for proves of claims.
Then most likely will leave you alone, as they have nothing on you.

They can not force you to do anything, without prove.
They are just trying scare others and take advantage, of popular genre and key words.

That should not become new fashion of the game market to monopolize things.
Imaging trying to trademark 'zombie' word.

And even if they get trade mark, then they should send you notice, not before.
Not sure however, if that applies as well, when you prove of your name existence, before they trademarked theirs.

I just can not see happening that someone reserves rights to use 'Idle' and 'Tycoon'.

 

Agree with above.

It sounds like they're just trying to corner the market on 'idle ... tycoon' games because they made a few of the larger ones.

In moral terms, I don't think "idle ... tycoon" games exist in a moral universe. That whole area is so dirty and crossbred with seo optimization that to imagine one company trying to claim ownership seems pretty absurd, especially in moral terms.

 

Thanks for the replys, great help. I sent them an email asking for proof or a legal binding document. Let see what happens... I'll post an update here if they answer.

My message:

====

Hi,

I recently received a notice from your legal team concerning trademark matters. I've discussed this issue with my lawyer and as far as we are concerned neither the term Idle or the term Tycoon cannot be bound to one company. These are generic names that are used by thousands of games online. I too live in Europe so I know how this works.

Might I demand a proof or statement that your company, and only your company, has the rights to this naming?

Thanks,

====

I too think that this shouldnt be the way of doing things. I've been playing their games since the beginning and i know them verry well, this doesn't mean that i've copied them. All the idle games resemble to each other and as a fact when I published my game they had only 2 games on the market, one of them was just launched. So they can't claim that i referenced or copied from their 'series'.

Funny fact i even considered applying for an internship at them

We'll see what happens. I'll keep you guys up to date.

 

Thanks!

Quick update:
I checked for patents and it looks like Kolibri Games has a patent on many game titles with the format "Idle ... Tycoon".

Here's a screenshot:





However, they do not have a patent on "Idle Tycoon".

 

@ridakzemlo if you look through that list in more detail - there are really two companies in there. Kolibri is one of the companies but Fluffy Fairy Games owns at least 3 or 4 of those.

If you look a little further, Kolibri filed most of those in april of this year - AFTER - the others had already been registered. They basically blitzed a bunch of those marks on April 26th.

Honestly, it looks like they're just trying to abuse trademark law to take over that SEO combination (although I donno the whole history).

________
Edit: NM, Fluffy fairy is actually Kolibri: https://www.gamesindustry.biz/articles/2018-10-22-fluffy-fairy-games-rebrands-to-kolibri-games

 

If they persist with it too far, email it all to Jim Stirling or a few other similar people in games journalism. They usually appreciate an opportunity to highlight S***ty behavior in the industry. a larger studio abusing the copyright/trademark system to try and monopolize common game terms and push small studios/indies out might get a bit of interest. If you don't feel like risking $$ fighting it legally then making some negative press about their bullying behavior might end up being the best you can do about it.

 

Yea, but if he, or similar, bothers or cares, they are equally likely to attack/rant on low effort knock-offs. It really won’t go well. There are hundreds of stories of indies getting the shaft or frivolous lawsuits (sky vs no mans sky) this just isn’t one of those cases.

 

Unless you have something serious to gain by not complying, just comply. Honestly what difference does it make to your game?

Unless you have an established large user base who recognise the brand already, you wont be losing anything. If anything see it as an opportunity to diferentiate yourself from all those other games.

That said from searching patents they (probably - no-one here is a laywer and all advise should be treated as such) dont have a legal footing to actually stop you using "idle tycoon" and they themselves only applied for patents well after the first "idle tycoon" game hit phones.

 

This, which would backfire in the case of the OP as the majority of his reviews are one-star. In fact he appears to be one of the very few exceptions when it comes to high ratings. I wasn't able to count ten games that were less than four stars. If I were the OP I wouldn't worry about trademarks. I would worry about becoming successful first.

 

Sky vs No Man's Sky wasn't frivolous. I went through and read all of the filed trade mark applications and the associated counter claims. No Man's Sky filed an incredibly broad trade mark application, which included the right to broadcasting and a bunch of other areas Sky operates in. Had their trade make been approved, they could have produced products able to compete directly with Sky.

Sky's counter claim, which No Man's Sky accepted, limited No Man's Sky to only using the trademark in full, and only using it on games or game related products.

The only reason anyone made a big deal out of it is because it fit No Man's Sky's marketing narrative. That of a little indie studio fighting it out against the big evil mega corps.

 

Well, I thought it was a significant(ish) issue mostly based on my own ignorance. I didn't read the claim itself, and was concerned by the idea of multinational corporations taking ownership of everyday words.

 

While this is a genuine concern, that ship sailed a long time ago.

 

If they take you to court, I suspect you would win in the end. It would take hiring a lawyer, one you'd have to pay, and you might still lose.

If you don't want to risk fighting it out, change the name to something unlikely to get this kind of attention.

 

I'm wondering if they might simply ask for a Takedown from Apple, GooglePlay, and so on. They'd show the "friendly" email they sent, the disingenuous reply (the issue was "Idle xxx Tycoon", not just those 2 words in any order), and see what happens. But Apple's page, for example, isn't all that clear if that's a thing.

My understanding is that it's mostly about actively protecting a trademark, so as not to lose it. That way they can go after when someone really rips them off.

 

I'd talk to a trademark expert, to check whether or not they really have a leg to stand on. As others have said, though, if they have a budget and you don't... fighting it might not be practical either way?

 

As ever with IP, things can get complicated. Their original letter mentions possible confusion, which could mean they are trying to include "passing off" as well as trademarks. Some countries (and if you are selling internationally it can involve the laws of a lot of countries), including the UK where I live, have passing off, which refers to show false representation (intentional or otherwise) that the public could believe the goods / product / service of the defendant are that of the plaintiff. Basically they have to show customers might buy your goods because they think they are buying theirs. How likely to cause confusion includes a brilliant law term. It does not include a "moron in a hurry".

 

My bad, I had just read that Sky broadcasting sued the game developers, not that the devs were filing a broad trademark application. (I actually think I read the post on the game's site).

 

Indeed. In the very remote chance that you do can win, it is still going to cost you a ton of money. Does your game make a ton of money?

 

I'm not sure why it's worth keeping the name the same, honestly.

 

Established customers, any previous marketing, etc.

 

Established customers have the game already and "Idle CEO Tycoon" is hardly a name that can't be replaced in marketing.

 

Maybe I'd get more irritated than most if I tried to play a game I've been playing for a year, but can't find it on my phone because the developer changed the name to something entirely different.

 

I feel like treating this as a reason to not rename a game (especially with Kolibri, who kinda do have this whole idle thing tied to their brand) is making a mountain out of a molehill.

 

Considering how important retention rates are and how easy it is to lose users I wouldn't discard it out of hand as a legitimate concern. As for whether it's one worth acting on... gotta speak to an expert.

 

I don't think this game with 19 reviews has much of a retention rate to worry about.

 

Because most "legal notices" these days are either scammers or some blustery idiot. 9 times out of 10 if you look into one, it's such blatant nonsense that it's not even worth a reply -- like those phone calls in America you get from "IRS". I'd say ignoring emails from "a lawyer" is the default action.

But this one seems non-fake. It uses "demand", but I think only as a legal term. It doesn't threaten like the fake ones do -- even makes a point of saying they have no problem with the App itself.

 

Yeah, the fact that they say this isn't a takedown notice is key.

THAT SAID I do think it's kind of a jerk move to look at a game that's been up for a year and isn't really doing anything threatening and send this kinda notice.

 

This. I hinted at it with an earlier post but since it seems to have been ignored let me point out that this game is almost a year old, has only around 5,000 installs, and only 19 reviews. For mobile markets that's a failure. If I were the OP I would rename it and move on. Because any effort invested into fighting for the name at this point would just be wasteful.

 

If anything, a rename might trigger the Play Store algorithm and bump it back into listings.

 

Indeed 5k, especially on the play store is literally nothing. That can happen anything over year just by accident. Unless there is some uber crazy, unprecedented retention rate going on, this game could only have made a couple of bucks at most. And given 2.6 stars, that is clearly not happening. Even really blatant ad driven crap games will fake a higher review.

Companies have defend their marks or risking losing them. But the reality is that any, even moderately successful mark/ip is going have way more infringers than they have lawyers. Most likely they have queue of infringement actions to take, and they just got to this. At Disney, people always wondered why there was so many infringing things that were "being ignored". They weren't, they were just lower on a priority list, which was massive, practically endless. Legal action takes time to be investigated, documented and action taken on. Legal staff can't just see something and fire off an email. At a minimum it is going to take a several hours to prepare and act on something. Not counting follow ups and other related time or issues that are bigger. The time adds up very quickly. So it gets put in a queue and it constantly gets worked through.

 

Is this even a defendable mark?

When I talked to a trademark solicitor last they were very clear that "descriptive" names were difficult to register and/or defend. "Idle ? Tycoon" is very much a descriptive name.

Also, looking at Frosted's screenie it seems like this is a pretty common naming scheme, also in use by other significant players.

It wouldn't surprise me if neither of those things matter, of course.

 

It was issued to them. And the game in question is basically a clone of their games. In the right situation, someone could probably win a case against them, but this ain’t it. This is clearly a knock off trying to bank off a more popular game.

Also consider, going after one like this that is cut and dry is either going to result the other party conceding or losing in court. Which is, in the end, is evidence of them successfully defending their ip. In subsequent cases, it strengthens their argument. It sounds a bit shady, but only effective/possible because there are people being more shady that enable it to happen.

 

Note that I'm shooting the breeze here, not arguing a point. I'm not even remotely equipped to argue one way or the other.

When the traqemark solicitor was talking to us, one of the things he was very clear about was that there were some trademarks that he would recommend against registering, because (paraphrasing) "it'll cost you a lot of money, and even if you get it you won't be able to defend it".

If you're going to be "shady" then it potentially still makes business sense. Get the trademark and then use it to bully little people into staying out of your space so they can't as easily get established, and/or don't add noise around your common search terms. (Though in this case I get the impression that boat has sailed either way.)

I wonder if Kongregate and Codigames and Hothead have received similar letters?

On the note of cloning someone else's game and then getting upset when they challenge you... well, yeah, if that's what you're doing then you're asking for trouble.

 

Thanks for the replies. What happened is we exchanged some emails and in the end google play store has taken down my game. I accepted to change my name, so i guess it will be re-published with a different name.

For the record. I was not cloning their game. The gameplay in its core is different. All idle tycoon games are somewhat similar. So we could argue untill next morning what cloning exactly means. Like i said before they had only one game when i published mine. So of course i did my research and made a game of a combination of styles and ideas of different games (including their one game at that time)... which is completely normal in my opinion.

All the talk about cloning or multinationals or ideas made me think twice about this. So here's my question; since i am the first one to use the exact name on play store "Idle CEO Tycoon", what happened to intellectual rights? Does this mean that every big company can claim they "invented" a genre or a game and claim ownership of it? i guess not...

I think you probably can guess from what i've written i'm pretty upset

did they contact you further? what did you do?

 

Have you talked to a lawyer? Nothing else anyone here says is of any use to you.

That's not relevant, though. Their claim is that you're infringing against their trademark, and that is a valid claim regardless of what games they have published where. Trademarks are one specific type of IP among many. You have incorrectly talked about "patents" in this thead, which are also not relevant. You don't have the relevant knowledge to take informed actions here, and none of us are experts able to give you legal advice.

So, once again... have you talked to a lawyer?

Being upset is reasonable, but it won't solve anything. Nobody here can tell you how to solve this. However, one piece of useful advice has been raised multiple times:

And I'd be doing that sooner rather than later in case it's time sensitive. (Eg: someone mentioned a generic trademark that's still pending. Probably not relevant, but in case it is... they're only pending for a limited time.)

Pragmatically, though... as others have said, your game isn't a commercial success, so you may be commercially better off doing a rebranding anyway.

 

Big mistake.

What did you expect?

If you do republish it.

No one relevant told that you did. They didn't.

Irrelevant in the case.

Relevant. Favors their case.

Research is normal. But irrelevant. No one said you stole their game or their copyrighted material.

Nothing. This is nothing to do with the Play Store. Please educate yourself in Trademarks. Or talk to an effing lawyer who can tell you that trademark works on similarity. If two names are in the same business and they can be mixed up by the consumers, the SECOND one is infringing on the first one's trademark. They don't have to have registered, it helps in the court room, but it is not a requirement. Whomever arrives first to the market and starts to sell under the name takes it. Unless it is a very generic word or phrase. Obviously this only comes to light in the court room if you have money to fight.

I will spell it out for you because you seemingly don't understand: T A L K T O A L A W Y E R. Or comply.

 

Looks like these turds have deep pockets.
https://play.google.com/store/apps/details?id=com.fluffyfairygames.idleminertycoon&hl=en

 

Sadly, I read about this sort of thing all the time. Copyrights, Patents and Trademarks are not something to mess with. I've avoided several game titles just because they were similar to another's, or had been used years and years back. It has puzzled me why some books can have the same name and there isn't a problem, but there are a lot more published books than there are games. And a Copyright isn't the same as a Trademark.