RetroPie.org recently posted an article asking for help to fight a trademark troll. RetroPie.org alleges that the owner of the RETROPIE mark is sending take down requests to retailers of RETROPIE branded consoles and accessories.
Who is RetroPie.org?
RetroPie.org is the developer of emulation software for the Raspberry PI. Emulators allow users to play ROMs on the Raspberry Pi without the original console. ROMs are copies of games, which are usually unlicensed, although some sites host licensed ROMs. With RetroPie’s software, users can play older, out-of-production games. RetroPie.org’s site prominently displays the RETROPIE mark, and they have been using the mark on its site at least as far back as February 10th, 2013.
Who is the owner of the mark?
The registrant of the RETROPIE mark is Aditya Rawat. The mark was registered on December 27th, 2016 and goods related to “[v]ideo game consoles and accessories, namely, cables, gaming keypads, and instructional manuals distributed therewith.” According to RetroPie.org, Rawat has been using the mark to send take down requests, and he sells his own RETROPIE branded goods.
How was Rawat able to register the RETROPIE mark?
Rawat could register the RETROPIE mark because RetroPie.org never registered the mark. Without a registration at the USPTO, there was nothing to bar him from obtaining trademark protection. The USPTO relies on other means to prevent improper registration of a mark. It does not perform an extensive search of every possible interfering name, but instead uses opposition or cancellation proceedings.
What can RetroPie.org do to challenge Rawat?
Generally, there two paths to challenge a mark: opposition and cancellation. Oppositions must be filed within 30 days of publication of the mark. An extension may be obtained, but it must be timely filed. RetroPie.org missed the opposition filing deadline of November 11th, 2016. Now they must try and get the mark cancelled, which is time consuming and expensive.
Takeaway–be proactive and protect your Intellectual Property!
Retropie.org would have barred Rawat’s application had they been proactive and registered RETROPIE before using the name. This would have saved them thousands of dollars in legal fees, which is why it’s critical to protect your name before you publicly use it. Registration is—relatively—inexpensive and takes about a year to complete.