I have been selling my Pip-Boy for the past 8 months to friends and the past 2 months online. Recently Zenimax has taken out a trademark for Pip-Boy 15 days ago. Can I still sell my item since I had it designed and documented sales before the trademark? If not can I change my items name and still sell it? This is an item that was inspired and designed from a game owned by Bethesda but not an exact copy. No trademarks or copyrights were found before the 5th of November pertaining to the item. Sorry for the re-post I wanted to include more information on the situation. Thanks Allen
A “Pip Boy” is the name of a wearable device that appears in the futuristic video game Fallout. The video game and all rights in and to the game are owned by Bethesda Softworks LLC [a subsidiary of ZeniMax Media Inc.]. Bethesda is the originator of the phrase and used the phrase in its game before anyone else used it commercially. The Pip Boy device has a following of its own among fans of the game and so quite a number of people have now created – and sell – toy versions of the Pip Boy [some of which even have some functionality]. The key point, however, is that they all call their toy a “Pip Boy” and use that phrase in their advertising. I do not know if Bethesda sells its own version.
Your own intellectual property attorney must consider whether Bethesda [or its parent ZeniMax] have any trademark rights in the “Pip Boy” name as used to brand the toy device shown in its game. Considering that many others use “Pip Boy” to name and sell their versions of that device it’s quite possible that the phrase “Pip Boy” has become the generic name for that device [which means that NO ONE can own any trademark rights in the phrase and so everyone could use it to name their version of the device]. Good luck.
The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
Consult a trademark attorney to go over all your facts.
First, you need to distinguish between the item (good or service?) you are selling and a trademark. A trademark is a mark used in association with the good/service you are selling. If a good, then the mark might be affixed to the good itself or its packaging. If you are selling a service, then the mark may be affixed to your website. So are you using PIP BOY as a mark or are you only referring to what you call whatever it is you are selling? This distinction is important, because if you are using PIP BOY as a mark, then your use may predate Zenimax's use - which may give you some superior local geographic rights. Because the Zenimax filings (not yet registered) all appear to be under the intent to use filing basis, so Zenimax may not be in use with this proposed mark. And if that is the case, then your use of the PIP BOY mark may predate Zenimax's use. But that may only be the case if you are using PIP BOY as a trademark.
Now with respect to Bethesda you may be looking at other and bigger issues. I don't know Zenimax financial resources, but Bethesda is certainly a big fish with plenty of financial resources to make trouble for you. I don't know the full history, i.e. if Bethesda originated the term or some other did before them, but Bethesda's use of the term certainly predates your use, as you were inspired by the Fallout games. But I don't think Bethesda was ever using the term as a trademark. However, Bethesda may have copyrights in the graphical images of their various Pip-Boys.
It does not appear as though the Pip-Boy mark as been registered. You may have common law rights through the use of the trademark in commerce that predates Zenimax's use. If the application is still pending, you may oppose the trademark based on priority and likelihood of confusion or infringement. You may file a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB). This could prevent Zenimax's use in the local market.
The Pip-Boy name has been used by Bethesda since 1997, when the original Fallout was released. There is no such thing as a Pip-Boy in the real world. It only exists in the fictional universe created for the Fallout series. And they've been making real-world versions since Fallout 3 was released in 2008 -- in fact, I've got one in my storage unit that game with the special edition of the game.
What you are doing is clearly and intentionally infringing on Bethesda/ZeniMax trademarks. If they find out, they will come after you and it will not go well for you. You would do well to immediately cease selling and making knock-off Pip-Boys. Come up with a better business plan that does not involve taking advantage of the hard work of other people.
I focus my practice on (video) gaming industry, casino gambling, and complex internet law issues, electronic free speech, entertainment law, copyright and trademark law, and computer fraud. I primarily represent game developers and founders of emergent internet technologies. The author is a Maryland attorney; however no answer given on Avvo is intended as legal advice or intended to create an attorney-client relationship.
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