Rockstar Games’ ‘Agent’ and the Issue of Trademark Abandonment

Attribution @TheConmunity
Attribution @TheConmunity

 

In June 2009, Rockstar fans received some very exciting news. Agent, a counter-intelligence espionage video game set sometime in the 1970s during the cold war, was announced at Sony’s press conference during the E3 expo in 2009. Little was said about the upcoming project, and even less footage was shown, and yet still, it amassed national attention as gamers eagerly awaited what was supposed to be a PlayStation exclusive.

Now, after several years have passed, Agent has once again garnered national attention, but not for the long-awaited, highly anticipated debut, but for its sudden departure that has taken fans by surprise.

Take-Two Interactive Software, Inc., the parent company of Rockstar Games, Inc. had filed trademarks for the ‘Agent’ mark. They even filed to renew their ‘Agent’ mark . . . again . . . and again . . . and again . . . and again, each time, giving patiently-waiting fans renewed hope that they weren’t giving up on their project of an Agent game.

Now, it seems that the fire of hope that burned for so long for an Agent game has finally burned through the end of its rope. Once again, the Agent mark was been designated as abandoned by the USPTO on November 19, 2018 (U.S. Serial No. 87257066).

As Polygon explained, “[v]ideo game publishers rarely say a project is abandoned or canceled . . . even if their actions have effectively made it so. That makes a trademark abandonment as close as it gets to definitively saying something that was once announced ain’t never gonna happen.” So the official abandonment of the Trademark seems to indicate not just the death of the trademark, but the death of the project itself.

But what does it mean for a trademark to die, or in this case, be abandoned? According to the Lanham Act, also commonly known as the trademark act (15 U.S. Code § 1127):

 

“A mark shall be deemed to be “abandoned” if either of the following occurs:

(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. . . .

(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. . . .”

 

To simplify all of that, a trademark is viewed as abandoned if “its use has been discontinued with intent not to resume such use,” and the “intent not to resume such use” can be inferred from various circumstances. Therefore, trademark abandonment simply requires two elements: nonuse, and intent not to resume use.

This is different method of abandoning a trademark from abandoning a trademark application due to an applicant’s failure to timely respond to certain deadlines in the trademark application registration process (i.e. failing to timely respond to a USPTO application deadline). This seems to be what happened here with the trademark that was marked as abandoned on the 19th, as the status update for the trademark was noted by the USPTO as “[a]bandoned because no Statement of Use or Extension Request timely filed after Notice of Allowance was issued.”

Maybe there is still hope. As of 00:18:13 EST on November 26, 2018, the Agent design image for the ‘Agent’ mark was still live and under examination, with a status of a second request for an extension of time being approved (U.S. Serial No. 87257072). It has been said that abandoning a trademark application does not necessarily mean that the owner has abandoned their trademark rights; it is still possible for an owner to continue using a trademark even if their trademark application was abandoned.

So just because this latest trademark might be designated as abandoned does not mean that the developers have given up on this project yet; there is still a website up for the game. So if you were one of those fans who were rooting for this game, well then maybe you shouldn’t give up on it just yet either. Maybe.

 

If you’re interested in learning more about trademark abandonment in the U.S., you can check out this link here.

 

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