On October 28, 2015 Sony filed an intention to use application for the mark “Let’s Play.” When news of Sony’s application broke on January 8, 2016 the public’s reaction was overwhelmingly negative.
Sony’s application was refused for Likelihood of confusion in a non-final office action on December 29, 2015. A Georgia company, Let’z Play of America, LLC, had registered a design mark with the words LP Let’z Play. The examiner found that there would be likelihood of confusion between the two marks based on the similarity of the marks, nature of the goods associated with the marks, and similarity of the trade channels of the goods.
On January 15, 2016 The McArthur Law Firm filed a letter of protest against Sony’s Let’s Play application. The letter included over 50 different webpages which made use of the phrase Let’s Play. The law firm believed that Sony would have no trouble overcoming the rejection of December 29, because, Let’z Play of America, LLC has been dissolved and the LP Let’z Play mark abandoned.
The McArthur Law Firm’s letter of protest was successful, and Sony’s application was refused for being merely descriptive in a second non-final office action on January 25, 2016. For evidence that the mark was merely descriptive, the action cited to a Wikipedia article for the term Let’s Play, and the r/letsplay subreddit, the first two sources cited to in the McArthur protest letter.
Another letter of protest was accepted into evidence on February 10, 2016. This letter incorporates evidence from The Let’s Play Archive, a website dedicated to archiving and preserving Let’s Plays; an article from Kotaku entitled, Who Invented Let’s Play Videos?; as well as Wikipedia articles on famous Let’s Player PewDiePie, and an episode of South Park on which he guest starred.
The case for Sony doesn’t look great. Because Sony filed an intention to use application, its options for rebutting the finding that its mark is descriptive are limited. In order to register a descriptive mark, the applicant must show that mark acquired distinctiveness. Because a claim of acquired distinctiveness requires evidence of prior use, it is very difficult to show that a mark has acquired distinctiveness in an intention to use application.
Sony would have to show that it has used the Let’s Play mark for other goods or service, and that the mark has acquired distinctiveness as to those goods or services. Next Sony would have to show that those goods or services were sufficiently related to the goods or services covered in its application, that the distinctiveness would automatically transfer to the new goods or service. See Generally Trade Mark Manual of Examining Procedure 1212.09(a).
Sony’s other option is to try and show that Let’s Play is not a descriptive term. This would be no easy task. According to the evidence included in the two letters of protest. The term Let’s Play has been in use since at least 2006-2007. The term is believed to have originated in a thread entitled “Let’s Play Oregon Trail” on a website called Something Awful. Early Let’s Plays typically consisted of screenshots with commentary with video eventually becoming the preferred medium.
Today Let’s Plays have become incredibly popular. At the time of writing PewDiePie, arguably the most well-known Let’s Player, has over 40 million subscribers on his YouTube channel. His channel is the most popular channel on YouTube and has the most views. As a result of this popularity, the term Let’s Play has become widely used to describe a video of a person playing a video game.
Let’s Play is not only used in video games media. Sources cited to in The McArthur Law Firm’s letter include parenting websites, local news sources, and business journals, including Forbes. The term Let’s Play is becoming more and more ubiquitous. Let’s Players have been featured on Jimmy Kimmel live and South Park. Conan O’Brien has even created a series of Let’s Plays entitled, The Clueless Gamer.
While Sony still has time left to respond to the two office actions, the odds are not in its favor. The amount of evidence in the two letters of protest is impressive. Ultimately one has to question Sony’s decision to pursue trademarking Let’s Play in the first place. Sony should have known that pursuing the mark would be unpopular in the gaming community; King’s attempts to trademark the words Saga and Candy received tremendous backlash. Furthermore, as the manufacturer of the PlayStation 4 Sony must have known about the popularity of Let’s Plays. Was this simply a blunder, or did Sony know this was a long shot and decided that potentially holding the trademark to Let’s Play was a prize worth the risk? We may never know, but for now at least the future looks bright for Let’s Players.
By Tyler Barbacovi
Originally appeared in Game On! Issue 5, The John Marshall Law School’s Video Game Law Society Newsletter