“Let’s Play” not for trade mark!

let-s-play-1425697Co-authored by Ms. Divya Srinivasan, LexOrbis Associate and Mr. Amitesh Giroti, Fifth Year student of Vivekananda Institute of Professional Studies, IP University, Delhi.

Intellectual property (IP) is one of the most key tools in ensuring a smooth and successful running business to flourish. With more and more competition increasing in markets each day, IP has become a brandishing sword to claim priority over mental and physical creations. Recently the electronic business giant, Sony, popular for having introduced new recording and storage technologies, tried to trademark the phrase “Let’s Play”.

Sony has over 1000 trademarks to its name and enjoys an internationally acclaimed presence. The said application for the trademark was refused by the United States Patent and Trademark Office (USPTO) on the ground that it is “likely to cause confusion” in the minds of consumers.

The phrase “Let’s Play” commonly referred to as ‘LP’ is a video or a series of screenshots which documents play-through of video games, also including commentary by the gamer. It was commonly used as a title on YouTube for the said videos being uploaded. Considering the common usage of the phrase by the gaming fraternity, it is a generic word in that sense. Furthermore, the USPTO also stated that the phrase “Let’s Play” was similar to the trademark “Let’z Play Of America”, which is a company well known for organising online and offline events for gamers and based in Georgia, Atlanta. The company filed an application to trademark the above phrase in 2013, subsequently getting it registered thereafter.

USPTO also added that the owing to the similarity in marks and the services closely related, consumer confusion was likely to occur. The refusal to register the trademark “Let’s Play” was carried out under the provision of section 2(d) under the Lanham (Trademark) Act.[i] The said provision states that a trademark shall be refused registration if it consists of or comprises of a mark which resembles a mark registered in the USPTO, or a mark or trade name previously used in the United States by another and not abandoned, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive; except in certain circumstances.[ii]

While it is yet to be ascertained as to why Sony applied for the said trademark, it has been conjectured that Sony may have applied for the trademark “Let’s Play” for the service relating to electronic transmission and streaming of video games via global and local computer networks; streaming of audio, visual, and audio-visual material via global and local computer networks under international class code 38,[iii] with respect to Play Station 4.

Since the official decision rendered by the USPTO was late in 2015, Sony has 6 months to file an appeal against the said decision. The gaming industry is one of largest industries and the recent attempt to register a ‘generic term’ as a trademark has caused much stir in this industry. It is yet to be seen whether Sony will be able to win this legal battle.

[i] 15 U.S.C, §1052, Section 2 of the Lanham (Trademark) Act; Section 2 (d).

[ii] Ibid.

[iii] Serial Number: 86801899, Principal Register, Trademark/Service Mark Application, Available at: http://tmng-al.uspto.gov/resting2/api/casedoc/ts/cd/86801899/APP20151031075301/1/webcontent.