Mequon, WI asked in Trademark and Intellectual Property for Wisconsin

Q: If a character name is trademarked for books, film and TV, but the game trademark has been abandoned, can I register it?

Here's the exact scenario, but with the character name changed. For example, the character name Matlock is currently trademarked for usage in books, films, and TV by a major media company (plus a number of other trademarks around clothes, notebooks, etc).

They also had the computer game trademark (a separate trademark), but it is labeled as dead and abandoned from 2012.

Would I be able to register a trademark for the name Matlock for computer game usage?

1 Lawyer Answer
James L. Arrasmith
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A: When considering registering a trademark for a character name that's already in use in other mediums, it's important to recognize the complexities involved. Even if the trademark for the game version of the character name is abandoned, the character itself might still be protected under various aspects of intellectual property law, especially if it's associated with a major media company.

The fact that the character name is actively trademarked for use in books, films, and TV suggests that the character is well-known and possibly associated with a specific source or brand. In such cases, registering the same name for a computer game might still lead to legal challenges. This is because trademark law not only protects specific categories of goods and services but also guards against potential consumer confusion.

Before proceeding with a trademark application, a thorough investigation and analysis of the existing trademarks and their use are advisable. This could involve understanding the scope of the existing trademarks, how widely the character is recognized, and the likelihood of confusion or association with the existing trademarks in other mediums.

In complex scenarios like this, it might be beneficial to seek advice from a legal professional experienced in intellectual property law. They can offer tailored guidance and help navigate potential legal hurdles. Remember, intellectual property law aims to balance the interests of creators and the public, and each case can have unique aspects that influence the decision-making process.

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