Trademark protection tactics
Filing an Intent to Use trademark application (“ITU”) should be done at the earliest possible moment (currently, thirty-six months prior to launch) to ensure that the video game console maintains the right to that trademark.119 Delay in filing an ITU trademark application can be costly, as Microsoft discovered when it tried to obtain the trademark for the XBOX: Microsoft could have filed for the trademark XBOX in December of 1998, thirty-six months prior to the XBOX’s November 2001 launch.120 However, when Microsoft filed for the trademark in October 1999, it discovered that another company (Xbox Technologies) had already filed for the trademark in March of 1999.121 Since Microsoft had already spent five hundred million dollars marketing the XBOX, Microsoft decided to purchase the trademark from Xbox Technologies.
Console manufacturers should also file for digital trade dress protection for symbols that appear on the console start-up screen, start-up menu, and packaging. For instance, Nintendo would have been wise to copyright the three-dimensional “N-Cube” logo that is found on its packaging and on the N64 start-up screen. In general, console manufacturers have filed for trademark protection for the drawing version of the trademark. For example, Nintendo has trademarked NINTENDO 64. However, Nintendo has not filed for the stylized version as illustrated in Figure 11.123 By filing for the stylized version Nintendo would strengthen the functionality of the protection preserving the firm’s right to litigate against emulator makers that use the trade dress.
119 U.S. PATENT AND TRADEMARK OFFICE, TRADEMARK MANUAL OF EXAMINING PROCEDURE—
APPLICATION REQUIREMENTS § 800 (3d. ed. 2002), h t t p : / / w w w . u s p t o . g o v / w e b / o f f i c e s / t a c / t m e p / 0 8 0 0 . h t m # _ T 8 0 1 ( l a s t v i s i t e d J u l y 4 , 2 0 0 4 ) .
, IT WEEK, May 2, 2001,
http://www.vnunet.com/News/1117216 (last visited July 4, 2004). . . 121 122 123 U.S. Patent and Trademark Office Online, 282 http://www.uspto.gov (last visited July, 2004).