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The Last Guardian Trademark Abandoned, But Don't Worry

by Jim Reilly on Aug 09, 2012 at 10:13 AM

The Internet is buzzing today about the discovery that SCEA has abandoned the trademark for The Last Guardian. What does this mean? We spoke to Eric Chad, an intellectual property attorney at the law firm of Merchant & Gould in Minneapolis, Minn. to help break down the situation for us.

"Trademark law is pretty tricky because, while you don’t need to register a trademark with the government in order to sue others for infringing it, registering it does provide certain benefits that make enforcing your trademark earlier," Chad says. "The abandonment that has taken place here is not of trademark rights but rather of Sony’s trademark application."

He says that in order to register a trademark, you need to show the government that you’re either currently using the trademark in commerce or that you intend to use the trademark in commerce in the near future. This prevents someone from registering every word in the dictionary and then suing everyone for everything they sell.

"In this instance, Sony filed an 'intent-to-use' application, where they essentially told the Patent & Trademark Office, 'Hey, we’d like to register this trademark on certain classes of goods, and we’re not using it in commerce yet, but we will,' Chad explains. “Under the Lanham Act (the statutes governing most of trademark law), Sony then had to submit to the PTO, within a certain period of time (usually one year), a statement saying they were actually using the trademark.  Obviously, they’re not doing that yet, so they couldn’t submit such a statement.”

Chad says Sony could file another application for the same mark, either a use-based application or another intent-to-use application. “They could keep this process going on without a time limit. Alternatively, they could release the project without a trademark registration. Even without a registration they could sue an infringer as long as they could prove they were using the trademark in commerce first.”

Lastly, Chad says “The Last Guardian” is available for others to use until Sony begins using it or files another intent-to-use application. While the abandonment of the trademark application doesn’t mean the game is dead, it bears watching. “If Sony doesn’t file another intent-to-use application in the next several months, that would be telling.”

When asked for comment on today's report, a SCEA spokesperson said the game was still in development. At E3 2012 in June, Sony worldwide studios president Shuhei Yoshida said, "There are some technical issues being addressed. There’s not much to show what it looks like," he told Game Informer.