When you start an escape room business, one of the most valuable assets you have is your brand.
You spend time and money building up considerable goodwill for that brand, through advertising and connecting with your customers.
Don’t you want to protect it?
In this post, I’ll discuss the ways you can protect your escape room’s brand name using trademark law.
Any tips you’d like to share? Leave a comment below.
What is a trademark and why is it important?
A “trademark” is a word, phrase, or design that identifies the source of certain goods and services.
Imagine you walk into a store and see the Coca-Cola logo on some products. Because that name and logo are on there, you can feel secure knowing that The Coca-Cola Bottling Company is the one that made that product and you know what to expect as far as the product goes.
If anyone could use that logo and name on their products, you wouldn’t know what you’re getting. That’s the advantage of trademarks and the exclusive rights they give to companies.
What does this mean for your escape room?
When you start any business, and escape rooms in particular, you want to build goodwill with your customers. You want them to love not just the escape room that they experienced, but your overall brand.
Cultivating this brand goodwill allows you to keep them coming back for more.
This branding all starts with a strong, distinctive trademark.
What makes a good trademark for an escape room?
The thing that makes any trademark a good one is something called “distinctiveness.”
This basically means that when someone sees the name of your brand, they’re going to instantly connect it with your products because the brand name is so special.
In legal terms, distinctiveness falls along a spectrum of five levels, from very distinct to totally generic.
- Fanciful trademarks (the most distinctive) – these trademarks are completely made up names, like Exxon or Xerox.
- Arbitrary trademarks – these brand names use words that are completely disconnected from the products being sold, like using “Apple” for selling computers and smartphones.
- Suggestive trademarks – these will use words that “suggest” the actual product, but don’t explicitly describe it. The big requirement is that there needs to be some mental “leap” from the trademark to the products. One good example would be Microsoft, which has portions of words stuck together which are suggestive of their products and services.
- Descriptive trademarks – these are bad, because they just describe the product or service or some specific characteristics of the product. There’s no distinctiveness there. In the escape room context, this would be something like “Puzzle Room” – it’s just describing what’s going on.
- Generic trademarks – these kind of trademarks are the least distinctive, since they are literally the term for the thing being sold. If you named your apple-selling business “Apple,” you’ve got a generic trademark. Similarly, if you named your escape room “Pittsburgh Escape Room,” that would be generic and have no strength.
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I realize that coming up with a strong trademark is difficult. Most new businesses err on the side of descriptive trademarks, because they want customers to instantly know what their business does.
However, this can be a double-edged sword.
If there’s no trademark strength there, you can’t stop others from using the same or a similar name. So any goodwill you’re building up under your brand name is essentially worthless if competitors start using a similar name.
On the other hand, if you choose a powerful, distinctive name for your escape room business, you may have a more difficult time getting potential customers to know about your business and what you do.
In the end, a balance between the two is probably best.
How do you do this?
You have most of the business name be something that’s truly distinctive to you, and have the words “Escape Room” or something to that effect tagged onto it.
So rather than making your whole name descriptive, you just make, at most, 30% of the name describe what it is.
- Neptune’s Revenge Escape Room
- Equinox Puzzle Escape
In fact, this is how most of the existing live escape room trademarks that are registered with the US Patent and Trademark Office (USPTO) are put together.
In order to get a trademark registered in the US that has a descriptive or generic part in it (like “Escape Room” for an escape room trademark), you need to “disclaim” it.
This means, essentially, that you’re not claiming any exclusive trademark rights over that descriptive or generic part of the trademark. You’re simply using it as part of the trademark.
In the case of one registered trademark, Ze:ro Hour Escape Rooms, they’ve included a disclaimer that says:
“NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “ESCAPE ROOMS” APART FROM THE MARK AS SHOWN.”
They’re basically saying that only the “Ze:ro Hour” part of their name is what they’re claiming rights to, and anyone else can use the term “Escape Rooms” whenever they want.
Trademark clearance searches
How do you know you’re not going to be infringing on anyone else’s trademarks?
Trademark “clearance” is one of the most important parts of coming up with a name for your business.
The clearance process involves doing searches for both:
- exact matches to your proposed trademark, and
- “confusingly similar” names that are close to your proposed trademark
In our example of Neptune’s Revenge Escape Room above, you’d want to be searching for different variations that may be similar, but not exact. I do this by searching for just one word or the other, or portions of the word with an asterix at the end (usually, this is seen as a wildcard in search engines).
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Where should you search?
- The USPTO’s search engine
- The EU and WIPO trademark databases, if you plan to go international.
- Any other industry-specific search engines, if applicable.
I’ve had plenty of clients say that they’ve done a clearance search, but I still find risky conflicts out there. This is because a lot of non-attorneys don’t really have the knowledge or experience to judge whether something is too close to an existing name. After doing hundreds of clearance searches and registrations, you get a feel for what will be a conflict or how much of a risk it will be – the whole thing is more of an art than a science!
That’s why I generally would recommend having an attorney perform the clearance search for you.
There are also so-called “comprehensive” trademark searches, which search every state trademark database, as well as federal trademarks (the USPTO) and other sources. However, I’ve found that the amount of info that they return isn’t very helpful – the signal to noise ratio is very high. These searches basically return every possible overlap with other trademarks, which honestly isn’t very useful for you.
However, they remain an option for those who want to go the extra mile. I don’t often recommend them. They generally run about $400 or so.
After you’ve done a thorough clearance search, it’s time to get your trademark registered.
Why should you register your trademark?
As soon as you start using your trademark “in commerce” (selling a product or service, basically), you have trademark rights.
However, there’s not a whole lot you can do with those rights.
A federal trademark registration gives you a few important benefits that you wouldn’t have without it:
- Allows you to sue someone who is infringing on your trademark in federal court
- It stops others from registering a similar trademark on the USPTO
- It makes it easier to get the websites and social media pages of infringing companies taken down
Another big advantage of trademark registration is the “Intent to Use” application.
Normally, you need to wait until you’re actually using your trademark “in commerce” before you have any exclusive rights. If you’ve got a name for your escape room business that you’re not using yet, you can file a special kind of trademark registration to essentially “reserve” your name.
This prevents others from coming in and starting to use the same (or similar) name for their own escape room in the time between you choosing the name and you starting to use it.
This can save a lot of headache if you are advertising your escape room in the months leading up to your grand opening, only to find you’ve lost those rights to another prior user. Then you’ve got to change your name – losing time and money you’ve spent advertising that name!
Do you need a lawyer to file your trademark application?
No, you can theoretically do it yourself or use one of those done-for-you services like LegalZoom.
However, I’ve found that many clients come to me after doing this, only to have me clean up the mess afterwards. This can be for a few reasons:
- They chose a descriptive trademark, which got rejected by the USPTO
- They didn’t do a proper clearance search and their trademark got rejected because it was too similar to another
- The description they chose doesn’t adequately cover their goods and services, limiting their trademark protection
- They tried to file as an “in use” trademark rather than “intent to use,” and they got rejected because they couldn’t produce the right evidence
These are just a few of the ways that a trademark application can go wrong without an experienced hand guiding it.
For that reason, I will always recommend you have an attorney do your clearance search and file you escape room trademark.
If you have any questions about the process or about getting a trademark application, feel free to contact me or set up a free consultation through my website here.
Can Trademarks Expire?
Yes, for a few reasons.
One would be if you stop using the trademark “in commerce.” This is known as abandonment. Generally, if you stop using the trademark for 3 years, it’s going to be considered “abandoned.” If someone starts using it, you will have to prove that you were actually making moves to start using it again.
Your trademark registrations can expire, as well, if you don’t file the correct “maintenance” filings. These are called Section 8 and 9 renewal filings, and take place during the fifth year after your registration is granted and every 10 years after your registration is granted.
What happens when I sell my escape room business?
Because the brand name and the goodwill are such an important asset of the business, you’re generally going to be selling that trademark to the new buyer.
That is, unless you want to retain that brand and they’re just interested in the physical location and the escape room itself (for instance, if they have their own escape room brand and want to add a new location under their original branding).
Trademarks vs copyrights vs patents - What’s the difference?
Each type of intellectual property protects a different thing.
Here’s a quick breakdown:
- Trademarks – protects your brand name from the possibility of confusing consumers about where those goods and services come from. Your rights last as long as you’re using the brand “in commerce.”
- Patents – protect new inventions and processes, and improvements on other inventions. Lasts for 20 years.
- Copyrights – protect original creative expressions (writing, drawing, photographs, software code) from unauthorized copying. Your rights last for a long time, but it depends on who the author is.
Trademarks vs registered marks - What’s the difference?
Basically, any time you’re using a name, logo, or slogan to identify the source of goods or services, you’ve created a trademark.
However, not all trademarks are going to be able to be registered. Sometimes they’re too similar to others, and other times they’re descriptive or generic, as we discussed above.
Any trademark can use the symbol ™ to show that they are using that name, logo, or slogan to identify the source of those goods and services. However, you need to have a registered mark in order to use the more powerful ® symbol.
Also, in order to sue for trademark infringement in federal court, you’re going to need a federally registered mark.
Does it ever make sense to register a trademark with the state (but not federally)?
If your business is only operating and advertising within one state and not meeting the requirement of “interstate commerce” as defined by the USPTO, it may not meet the minimum requirements for a federal trademark registration.
In those cases, a state registration may be something to look into. However, state registrations don’t generally grant any more rights than those granted automatically under the law. You would still be able to file a lawsuit in state court for “unfair competition.”
However, some recent trademark cases have set a pretty low bar for what constitutes “interstate commerce.” For example (and one that’s pretty on point), in the case of Larry Harmon Pictures Corp. v. Williams Rest. Corp., a trademark was used for a single-location restaurant. Someone challenged their trademark, but eventually the courts found that by serving interstate travelers, they have met the definition of “use in commerce.”
In the escape room context, if you’re advertising and offering your escape room experience to those from out of state, you’re probably meeting this low bar. Always talk to your own trademark attorney, though, for legal advice specific to your situation!