If you are an Amazon seller, it is highly recommended you obtain trademark protection for your brand and enrol in the Amazon Brand Registry.  Amazon’s Brand Registry provides a variety of tools to monitor brand representation and prevent the sale of counterfeit goods on Amazon.

in order to take advantage of the Amazon Brand Registry you first must have:

1. A trademark with an active or pending registration;
2. A trademark registration number, or application number granted that the trademark is pending registration; and
3. A list of categories that the brand falls under.

The Amazon Brand Registry provides registered users with the ability to directly address counterfeit products. Those suspected of being bad actors are automatically removed from Amazon and the sale of these counterfeit products halted. Through Amazon’s ‘Counterfeit Crimes Unit’, the company additionally holds bad actors responsible through “building cases, undertaking investigations, and pursuing civil litigation”. Furthermore, trademarked brands registered under the Amazon Brand Registry are protected under ‘Project Zero’, which offers several benefits:

1. Suspected counterfeits are proactively blocked from being listed on Amazon;
2. Brand owners can directly remove products they think are counterfeits, which information is fed into Amazon’s algorithms to better catch counterfeits proactively in the future; and
3. Product serialization allows brand owners to apply a 2D code similar to QR codes on their products that uniquely identifies and authenticates the legitimacy of their brand.

There are also numerous ways that the Amazon Brand Registry helps registered merchants grow, including:

1. Access to prioritized product advertisements, displayed on headlines of search pages;
2. Customizable brand storefronts and the ability to specify in-depth product descriptions; and
3. Prioritized search results that are pushed by Amazon’s internal algorithm.

If you have a brand you want trademarked in Canada or the US, please feel free to contact one of our IP attorneys. We are licensed to practise in both Canada and the US and can assist new business owners obtain trademark protection for Amazon Brand Registry enrolment.

Weekly, we receive phone calls from prospective clients inquiring about provisional patent applications. While provisional patent applications have a number of benefits, especially for cost-conscious startups and entrepreneurs, we too often encounter misconceptions concerning the protections that a provisional patent application provides. In this blog post we will cover what a provision patent application is, its positives and negatives.

What is a provisional patent?

A provisional patent application is essentially a placeholder patent application filed with the US Patent and Trademark Office. Once filed, you have up to 1 year to convert the provisional patent application into a full utility patent application and, if not converted, the provisional automatically expires. Once the utility patent application is filed, the subject matter of the utility patent application (ie. invention) will be granted a claim date effective as of the date the provisional patent application was filed.

There are a few formal provisional drafting requirements, including a title, the name(s) of the inventor(s), address of the inventor(s), correspondence address, and a written description. At times, a drawing on the back of a napkin can be sufficient. The provisional application is not publicly available, and the USPTO does not conduct any review of it.

It is critical to understand that no patent rights are granted by the provisional patent application, except for the ability to file for a full utility patent application within the 1-year time frame for the invention described in the provisional patent application.

Positives

There are a number of benefits to a provisional patent application, namely:

1. Preserves your intellectual property rights as of the provisional’s filing date, which is critical in advance of any public disclosures you are contemplating;
2. Relatively inexpensive, with the cost of a provisional application being substantially less than a full utility patent application;
3. Is not made publicly available;
4. You are “Patent Pending”; and
5. May appeal to investors by beginning an intellectual property portfolio.

Negatives

The downsides to a provisional patent application are:

1. Does not issue as a patent;
2. Is not a utility patent and, unless converted into one, lapses after one year;
3. Since it is not reviewed by the USPTO, no stance is taken on whether the invention is patentable; and
4. Only exists under US law with no similar structure existing in Canada or Europe.

We believe that provisional patent applications are an immensely valuable resource for our clients, especially where deployed as a cost-effective means to secure a filing date for a subsequent utility patent in advance of contemplated public disclosures of the invention. However, when considering a provisional patent application, it’s critical to keep in mind that it’s a stepping stone to a full utility patent, and not a stand-alone patent application itself.

Feel free to reach out to the Voyer Law team to discuss provisional patent applications and a filing strategy for your invention.

When creating realistic video games, developers often desire to render real-world items digitally but neglect considering rights held in these items.  A failure to investigate rights held in real-world items is not limited to smaller studios as major developers (ex. Activision) have been sued for using real-world items in their games, such as AM General’s Hummer and certain firearms.   To assist in avoiding these issues, consider the following steps when inserting real-world items into your game:

1.  Check to see if the item you are adding to the game is based on a real-world item.  For example, modes of transportation, firearms and luxury goods in games could all be based off a real-world item.
2. When purchasing assets from marketplaces be sure to ensure that the asset creator has not  infringed the rights of third parties.  This has been an issue on the UE marketplace leading to an audit of most firearm asset packages.
3. If your item is based on a real-world item, determine the rights held in that item.  For example, the design could be covered by a design patent while the name or logo could be trademarked.
4. If there are rights held in the item be sure to secure a license from the rights holder before proceeding, otherwise you risk litigation and will be running afoul of most representations and warranties contained in publishing and platform agreements you sign.

In many cases, it’s cheaper to design your own items rather than seeking a license for real-world items, which may not be granted.  Take the GTA series and its use of cars of its own design – it’s doubtful that an automaker would license their rights to a game in which the same car is used to commit (digital) criminal offences, including murder.

If you are in doubt whether the particular item or its name is protected, be sure to contact your legal counsel before spending time integrating it into your game.

Streamers are increasingly important to the success of indie video games and our clients often encourage streaming as a way to increase exposure without substantial expense.  However, recent streamer controversies illustrate the need for developers to include an explicit streaming license and code of conduct within the game’s End User License Agreement (EULA) with broad grounds for termination.

What is a streaming license?  A streaming license expressly grants users a license to stream the video game but makes it clear that this license can be revoked at any time, without notice or compensation.  Without this language, substantial ambiguity remains concerning the scope of the license and impact of termination.  Consider the following example:

DEVELOPER grants you a license to publicly display the Game on online video streaming websites, such as youtube.com and twitch.com, and social media, such as tweeting a GIF. DEVELOPER may terminate or modify the scope of this license at any time without notice or compensation and will not be liable to you or any third party for any loss incurred relating thereto.

You can also draft the license to fit your company’s particular needs.  For example, the streaming license could prohibit monetization of the stream.

Do you have a Code of Conduct?  In addition to a streaming license, we recommend that the EULA contain a user code of conduct that prohibits certain conduct, such as profanity, nudity etc.  Breach of this code could provide a basis for terminating a user’s streaming license, although not the only basis.

Can’t I just use the DMCA?  Yes, a Digital Millennium Copyright Act (DMCA) claim is the quickest way to secure removal of a stream and  a clear streaming license (with termination language) provides a clear basis for making the DMCA claim.  Without a streaming license, unnecessary ambiguity remains concerning the impact of termination (for example, could liability follow if you terminate a lucrative stream that was previously permitted?).

In sum:  It benefits your streaming community to receive a clear streaming license and to understand the basis upon which the license can be used and revoked.  While you can remove an offensive stream without such a clause (under the DMCA), ambiguity does little to benefit your company or streaming community.