Tim Lince

A trademark filing by Sony for the term LET’S PLAY has caused a storm of negative PR for the tech giant, with both media reports and gaming communities decrying the move. While there is more to the story than often reported, one prominent trademark attorney, who is usually a staunch defender of trademarks in the face of public backlashes, tells World Trademark Review that this is one example that he cannot defend. The angry reaction highlights the reputational challenges that can be faced when a passionate online community is stirred into action.

Sony Computer Entertainment America filed for the LET’S PLAY trademark on October 28 last year, and the application is in class 38 covering “electronic transmission and streaming of video games”.  The term ‘Let’s Play’ is a commonly used name for videos documenting playthrough of a video game, and is one of the most widely used terms on YouTube on numerous gaming channels (including PewDiePie and VanossGaming, which have over 50 million subscribers between them). The trademark application was discovered by the gaming community last week, leading to an angry backlash. Later articles appeared to defuse the situation somewhat by stating the USPTO had “refused” the application.

However, this is not strictly the case and the story is far from over, notes Stephen McArthur, founding attorney of McArthur Law Firm. The USPTO has not refused the application but rather issued an initial office action that momentarily blocks it (due to a perceived likelihood of confusion with another mark). Sony has six months to respond and McArthur tells World Trademark Review the office action appears to be a small hurdle for Sony to overcome: “The other trademark is not in use and the company who owns it has dissolved and no longer exists. That means that all Sony has to do to overcome the USPTO's sole issue with their application is to show that the other trademark is abandoned. That will not be difficult for Sony to do. If the issue is overcome, then the USPTO will grant the trademark registration, barring a formal objection proceeding from a third party.”

So incensed is McArthur by the application, he took it upon himself to be one such third party. His firm filed a letter of protest with the USPTO last Friday, listing over 50 examples of how the term ‘Let’s Play’ has become generic. In a blog post, he acknowledges that letters of protest “are obscure” and that “many experienced trademark attorneys do not know how to properly use them to their advantage”. On the flipside, however, he adds: “They can be extremely useful in situations where you learn of a trademark application in its infant stage before it is published and you know of very strong evidence that demonstrates on its face that the trademark application should be denied.”

Ryan Morrison, who also runs a firm that specialises in representing independent games companies, is equally baffled by the application. Morrison explains that he is often the defender of trademark law on forums and social media when users or news reports claim a mark is ‘over-reaching’ or ‘bullying’. He argues, though, that this time “it really is as bad as it looks”, explaining. “I am used to hearing the cry of 'can you believe this company is trying to trademark this word?’, which is usually because somebody doesn't understand trademark law and the specific class of goods and services that trademarks are filed for. But in this case, it's outrageous that Sony tried to skirt this under the radar because the application is absolutely in the class that would affect all Let's Play videos. I've actually seen people mimic what I often say, that ‘it isn't as bad as it looks’, but this is one of those rare times where it absolutely is as bad as it looks. When the Playstation 4 and the Xbox One were announced, Sony came out looking like a hero to the gaming community [while reaction to rival Microsoft’s console was largely negative]. And then it turns around and does this? This is how you screw up your reputation.”

Reflecting on Sony’s decision to apply for the mark, McArthur contends: “There is no legitimate reason that Sony would apply for this trademark registration other than to monopolise the already ubiquitous term ‘Let's Play’. A simple Google search of the term in question should have led any attorney to the conclusion that the term is descriptive and generic. In very few industries will you get negative press for a trademark application or for enforcing your intellectual property, but the video game industry is different and unique.”

World Trademark Review did contact Sony for comment but has not yet received a response. However, the media storm that has resulted from the application highlights the reputational challenges that can arise when a passionate audience base is stirred into action. And in this instance, the PR backlash has been magnified when even the usual defenders see no justification for the mark. 

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