Welcome back to Legal Geek. This week, we investigate the Sony trademark application for Let's Play, and whether Sony will be able to obtain and enforce such a trademark against Youtube content creators who have made Let's Play videos.
https://archive.org/details/LegalGeekEp61
Sony filed a trademark application in late October for Let's Play, specifically for services described as "Electronic transmission and streaming of video games and other audio or visual materials via global and local computer networks." A first Office Action containing a rejection from the Trademark Office was received at the end of December, which is when this application hit the public eye and news agencies. There are a number of grounds on which registration of a trademark can be refused, but instead of relying on the prior use of Let's Play by many Youtube video creators, the Trademark Examining Attorney went a different way.
Instead, the rejection is based on a likelihood of confusion with an earlier registered trademark for Let'z Play (with a Z), which was registered in 2013 by a small Georgia company. This is typical practice for Examining Attorneys because it is often easier for them to conduct searches of their internal systems to find conflicting similar marks than look for external evidence like the widespread use in Youtube videos. However, such rejections can often be overcome with arguments or minor amendments to the application.
That may not be an easy option for Sony here, as the prior registration is for very similar goods and services. The description of those services is highly similar to Sony's, specifically, "Entertainment services, namely to provide online and offline opportunities for video game enthusiasts to meet and participate in live video game tournaments and on-demand console gaming." There's enough overlap for the Trademark Office to deem these covering substantially the same services, leading to an alleged likelihood of confusion for consumers that would prevent the latter registration by Sony.
Speaking from experience in prosecuting my own client's trademarks, there's a potential important difference in Sony providing content to just be watched and the Georgia company letting consumers actively participate and play, and that could open a door for argument or amendment to the description of services that will allow this trademark application to be allowed. This refusal is not final and Sony will likely respond, and even in a close case like this, there's perhaps a 50/50 chance this rejection is overcome. The application could then be allowed.
But that won't end the process, as an allowed trademark is published for opposition before final registration, and the public has 30 days to file oppositions. Given the now-public nature and seeming outcry over this application, there's little doubt one or more oppositions would be filed based on Let's Play being generic or merely descriptive in this field, and that could very likely be a hurdle too high for Sony to clear. So even if the Examining Attorney at the Trademark Office doesn't do the legwork to find the online evidence to reject this application, it will find the opposition process difficult.
What's interesting is that Youtube Let's Play videos were around a lot in 2013 as well when the Georgia company registered its trademark, and it never faced any Office Action refusal or opposition. So hypothetically, Sony could buy out this company's rights and then try to enforce those, even if their own application submarines. Of course, such rights could still arguably be invalidated as being a generic term if litigation ever came of this.
Bottom Line: Sony may make it past the current refusal but it seems unlikely that a final registered trademark will result in the end. Nevertheless, even if they obtain some rights by their own application or by buying someone else's rights, Sony likely would just use this as a positive marketing tool rather than an offensive weapon against Youtube content creators, as such moves would risk losing the trademark in litigation challenges while also leading to a likely massive negative PR hit. And Sony appears to be savvy enough to understand that in trying to procure such intellectual property in the first place.
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