ZeniMax has to protect Prey, even if it looks like a bully while doing so

ZeniMax Media requested that the developers of successfully Kickstarted game Prey for the Gods (clever title, that) change the game’s name to the still-easy-to-say-but-not-entirely-legible Praey for the Gods. This request stems from the title’s similarity to ZeniMax’s trademarked, and newly released, title Prey. No Matter Studios, developers of the independent title, made the adjustment and will now have to make every effort to change official mentions of the game to reflect the dispute’s resolution.

The optics, I admit, aren’t great for ZeniMax. They weren’t great in 2012, either, following their dispute with Mojang regarding a trademark for Scrolls. The giant, rich publisher looks like it’s bullying smaller games with the threat of legal action over trademarked, but still rather general, words.

Besides, how could anyone confuse the two games? One is a BioShock-like in space, and the other is a Shadow of the Colossus-like on land.

This isn’t how the law sees it

To understand why ZeniMax doesn’t deserve your ire over this, we need to talk about trademark law. And I know what I’m talking about.

I’m an independent game developer with seven years of experience, and I’ve owned or partially owned two development companies and one film production company.

I’m an MBA with an emphasis on digital media management from St. Edward’s in Austin, Texas. I’ve been sent cease-and-desist letters for my creative works. I’ve been scolded by my own attorneys for being reckless. I’m not bragging; these mistakes have cost me a lot of time and money. I’m trying to warn others about these issues before it’s too late.

Arkane Studios/Bethesda Softworks

So let’s say you’re an independent developer with a game prototype and you have a killer title. It’s called Omega Heck and you think Omega Heck is going to do gangbusters when it comes out in 24 to 48 months.

It’s time to trademark Omega Heck. You pay a lawyer to search the Trademark Electronic Search System (TESS) database of the U.S. Patent and Trademark Office, and file the necessary paperwork. You can search yourself, and maybe you should in the beginning to try to save some money, but TESS isn’t very intuitive and a lawyer is worth the money to help explain what’s a threat and what’s not. You’ll be asked to decide how the trademark will be used, based on the 45 classifications of goods and services defined by the federal government.

You can file under multiple classifications, but you’ll have to pay for the additional filings. You also have to prove that the mark is being used in the market and that it refers to the project in question. That means it’s time to mention you’re making Omega Heck, maybe on a Kickstarter page!

Fast-forward a little while and you receive a notice or two — maybe even a formal cease-and-desist order — mentioning trademarks in your classification being held by other entities.

No Matter Studios

It turns out that Omega Animation Studio holds a trademark for “Omega” under several classifications. In addition, another game developer holds the mark for its upcoming game Heck. In this scenario, both trademark holders would have an obligation to dispute the attempted filing of Omega Heck.

Under U.S. trademark law, trademark holders must defend the mark against all threats, lest they risk losing the mark in future proceedings. All the trademark holder needs to show is that someone is attempting to file a trademark in their chosen classification.

“We really didn’t have much of a choice,” Bethesda Softworks vice president Pete Hines told Polygon last week. “If we don’t oppose the mark, we risk losing our Prey trademark and that isn’t acceptable. Unfortunately, that’s how trademark law works.”

It matters not an iota that your average game player would never confuse the different properties. The important thing is that you defended your trademark whenever it was even conceivably at risk. You’re not allowed to pick and choose who gets to use the word in your classification and who doesn’t; to be safe, you have to send a cease-and-desist — every single time.

“And just so you know, they first heard from us about this in November of 2015,” Hines continued. “Well before they even began their Kickstarter. And multiple times since then. This is not new information to them, nor the first thing we’ve done or tried.”

When it comes to Prey, the intended audience of all the articles I’ve read on the matter are avid game players. Most Polygon readers would never confuse the two games. That fact is legally irrelevant, however. If the potential is there to confuse a single consumer, the trademark is in dispute.

The dangers can be great. ZeniMax creates risk if it fails, either consciously or accidentally, to challenge No Matter Studios on the trademark for Prey in software. For example, if in two years, a small team creates a space marine shooter called Prey RELOADED and tries to trademark that name, the courts have a much higher likelihood to grant the trademark, since ZeniMax failed to protect the mark against Prey for the Gods.

Prey RELOADED actually does sound like the name of a game that could confuse fans of Prey, ZeniMax Media’s title that was developed at great cost while increasing the value of that trademark. ZeniMax can’t risk being put in that position, so it has to go after everybody to prove to the courts it doesn’t mess around when it comes to Prey.

For clarity’s sake, if the roles were reversed and No Matter Studios owned the mark for Prey for the Gods before ZeniMax filed its trademark for Prey, No Matter Studios would be protected from the major AAA studio from using the title if it challenged the mark. And No Matter Studios could be put in a situation where it had to defend that trademark in order to keep it secure in the long term, even if it seems frivolous to gaming fans who know the difference between the two games at a glance.

Furthermore, it’s reasonable to expect ZeniMax to be able to file multiple marks in multiple classifications, as the company has. My findings when searching TESS, for the record, found Prey filed for apparel, conveying information via the internet, instruction manuals and computer software — all under ZeniMax control.

We see examples of this interaction usually going in the direction it went this week, with the huge multinational mega-corporation protecting its trademark against a studio that cannot reasonably harm the mega-corporation’s bottom line. The reason for this disparity is pretty simple. Searching the TESS is free, but filing a trademark costs between $250 and $1,000, depending on how you file and the cost of your filing service or attorney. Multiple classifications add up, so smaller companies may be conservative with how many marks they file or how broadly they try to protect them.

Trademark law in the U.S. favors active participants in the free market, one might say. And by that I mean it favors the rich.

ZeniMax is playing by the rules to keep its trademarks safe

Anger toward ZeniMax ignores the actual origin of the problem, and I would argue it confuses the issue for independent developers trying to make it in a crowded marketplace. People seem to think that if enough people get mad at big corporations defending trademarks, companies will stop doing this.

No amount of anger will stop big companies from defending their trademarks; their hands are pretty much tied. Trademark law itself would need to change to prevent these sorts of one-sided disputes.

I’m a business owner who fundamentally disagrees with aspects of U.S. marketplace practices, but I am beholden to them and so is every game developer who wants to protect their trademarks and sell games in the U.S. I can’t change my behavior, and neither can any other publisher or developer, until the law changes. The risk of not defending your trademark is too great.

Developers ought to use TESS to their advantage early and often to prevent disputes. If you can’t afford to file a trademark, at least consider using a title not currently being trademarked in your classification. Additionally, don’t get too attached to a title until you’re at the stage where you can afford to file a trademark. Again, use TESS to your advantage. Click through the examples that pop up to see if your mark is being used in the same or an adjacent classification. There are search options available that allow looking at the terms with amended plural variants, as well as dead trademarks, to see who might have owned similar marks in the past and didn’t reestablish them.

These are reasonable steps for independent developers to take, and they require no budget and maybe an evening of your time. It’s also more proof that, if you’re a smaller developer, making the game itself is only part of your job.

Developers can’t afford to assume their game is different enough from a trademark holder’s game to prevent the trademark holder from protecting the mark. Again, the degree of difference between the games themselves isn’t material. It’s a silly cliché, but this is truly a case of “don’t hate the player, hate the game.” The game, in this case, requires the players to behave a certain way to protect their marks, even if it means a black eye when it comes to public perception. The silver lining is that the law will work for you in the other direction if you’re able to file a successful trademark, which means doing so is absolutely worth your money. Be sure to add the cost to your Kickstarter!

This system isn’t fair

If this is how trademark law works and independent developers can only do so much to protect themselves, isn’t this unfair to smaller developers?

Yeah! Yeah, it is! So while I do think it’s misguided to aim your anger at ZeniMax over trademark protection, I completely acknowledge that the playing field is not even. Big publishers can trademark everything they want, as broadly as they can get away with, and the cost barely makes a dent in their budget. Indies don’t have the same luxury, and the difference is strictly financial.

But you can be responsible by worrying about this stuff before it gets to this point. If you’re raising money for your project, make sure you earmark $1,000 to $3,000, at least, for legal fees. Doing so can go a long way toward protecting the title and marketing of your game.

Don’t sleep on this step. It is a drag to do 12 months of marketing for a game, only to have to change the title because you brushed up against an existing trademark. At that point, you can only hope casual followers find you again. Or maybe you’re stuck having to use the word “praey,” which isn’t going to show up in many Google searches unless someone knows what they’re looking for already. What started as a clever pun ended up as an awkward word they’re going to have to explain to everyone who hears the game name spoken verbally.

To No Matter Studios and any other small developer this has happened to: This sucks! I’m sorry this happened!

Believe me, because it happened to me. Remember that amazing hypothetical game Omega Heck? Well, my former studio made a game called The Sun at Night, but it was known as Laika Believes for months. Despite the game referencing the historical dog Laika, Laika Animation Studio sent a cease-and-desist. The company isn’t involved in games, but it had an entertainment classification mark and that was close enough. It had to protect its trademark.

I’m still salty about it! However, the studio was doing its job protecting the mark it paid for, and we couldn’t afford to fight it. I knew of Laika Animation, but I assumed its positioning and the historical significance of Laika the dog would keep me safe. The lawyers — on both sides — were quick to tell me how wrong I was. I made the classic mistake of assuming that there was such a difference between the properties that the similarities in name wouldn’t matter. The government doesn’t care, and neither should you as long as the law remains the same. I won’t make the mistake again.

Focus your energy on avoiding these pitfalls and petitioning for changes in trademark law, rather than getting mad at companies, even big ones, which don’t have many options in how they can respond in these situations. The law doesn’t recognize common sense, but common sense is a very hard thing to write into legal code. Until that law changes, expect this situation to happen again and again if smaller developers aren’t careful about how they name their games.

The longer you wait to worry about these issues in business, the more expensive the mistake may become. ZeniMax Media didn’t have much of a choice in sending a cease-and-desist to Prey for the Gods, and if you don’t like what happened, the best course of action is to work to change the law, not shame those adhering to it.

John Warren is a producer and business development person for Unburnt Witches. Project Tingler, the Chuck Tingle FMV game, is currently in development. Follow him on Twitter @FloppyAdult and yell about professional wrestling and trademark law.