We are an indie game developer and would like to use the term 'Orcs'
as our game title. Can you let me know whether this would be a
trademark infringement.

Hi 23v!

I'll assume you're asking this mainly for the US market. Trademarks
are dependant on intellectual property laws in different countries. In
most countries trademarks have to be registered individually for that
market, taking into account a variety of local laws. In other
countries trademarks are practically gained by simply using the term
in commerce. Other countries don't respect trademarks.

Trademarks are also seperated into different classes, which means that
even if somebody has a trademark on "Orcs" they might not own it in
the area of computer games.

If you want to know if the term Orcs exists in the US trademark
database, you can look that up online at the United States Patent and
Trademark Office ( http://www.uspto.gov/ )

Currently there are a number of trademarks containing the word
"orc(s)" as you can see at this search page (
http://tess.uspto.gov/bin/showfield?f=toc&state=9tlblk.1.1&p_search=searchstr&Search+History=&p_L=100&p_plural=no&p_s_PARA1=orc&p_tagrepl%7E%3A=PARA1%24ALL&expr=PARA1+or+PARA2&p_s_PARA2=orcs&p_tagrepl%7E%3A=PARA2%24ALL&a_default=search&a_search=Submit+Query
).
Some of those trademarks are inactive, some are for images. The one
that might be relevant to your line of inquiry is this one:

http://tess.uspto.gov/bin/showfield?f=doc&state=9tlblk.2.6
It is a word mark "ORC", owned by "The DBA Tolkien Enterprises
CORPORATION" (Saul Zaentz Company, The/2600 Tenth Street/Berkeley, CA
94710/United States)
 and including class 28 which might be what your game would fit into.

Of course I cannot give you direct legal advice on this issue. What I
can give you is personal experience. My company has been in a legal
battle with another company about trademark infringement for nearly a
year now and there's no end in sight yet. If there is any chance
whatsoever that you might infringe on a trademark, choose another
name. It's much cheaper and you won't have to destroy your
advertisement material in the middle of a product launch because
somebody else dragged you in front of a court.

The best strategy might be to apply for a trademark of your own -
applications are not that expensive - before you launch your product.
Be aware though, that a granted trademark does not automatically give
you total security. If somebody can proof that he used the trademarked
word or image in commerce before you did then he has a good chance to
wrest control of that trademak away from you, too.

Specifically with the word "Orcs", Blizzard ( http://www.blizzard.com
) and anybody related to Tolkien (like the film companies, publishers,
etc.) might not like your use of this word. If you still want to name
your game "orcs", you might want to ask a specialized lawyer for
advice. Everything else could get you in serious trouble.

I hope this information will be helpful. I'm sorry it's probably what
you wanted to hear, though - trademarks are one of the main assets of
companies and as such they are well protected.

If you require additional information feel free to ask (especially if
you didn't want info on the US, although most western nations have
similar rules).

Additional Sources:

Basic facts about trademarks:
http://www.uspto.gov/web/offices/tac/doc/basic/

Trademark FAQ
http://www.uspto.gov/web/offices/tac/tmfaq.htm

Avoiding Patent, Copyright and Trademark Problems
http://www.fplc.edu/tfield/avoid.htm#ATI

Trademarks & Business Goodwill
http://www.fplc.edu/tfield/trademk.htm

Northwest Entrepreneur Network: Legal Considerations
http://www.nwvg.org/resource/falegalweb.htm#patents

World Intellectual Property Organization
http://www.wipo.org/

Search Strategy:

entrepreneur network trademark
://www.google.com/search?sourceid=navclient&q=entrepreneur+network+trademark

trademark us
://www.google.com/search?sourceid=navclient&q=trademark+us

---

Clarification of Answer by voyager-ga on 22 Jul 2002 07:37 PDT

I'm sorry that two of the links I provided expired, so I'll post a
clarification of how to obtain the information step by step:

1. Go to http://www.uspto.gov/ and click on "trademarks" in the right
bottom corner.
2. Select option (1)
3. enter orc (or orcs) as the search term (now you have dead link one)
4. Click on serial number 76319169 for dead link two.

Sorry for the inconvenience.

voyager-ga

I am aware of at least two computer games I used to own that had orcs
as characters. One was the popular fantasy-strategy game Warcraft 2,
in which the Orcs were the bad guys. The other game, older and much
less-known, was a football game called Grave Yardage, in which teams
of monsters tried to score touchdowns and bludgeon each other. Orcs
were big, slow characters that made good linemen.

From what I gather at the page
(http://www.glyphweb.com/arda/default.htm?http://www.glyphweb.com/arda/o/orcs.html),
Tolkien himself popularized the word "orc."  That would explain the
Tolkien trademark. However, this page
(http://tft.brainiac.com/archive/0012/msg00005.html) dates the word to
Beowolf and even to Roman mythology. I don't know exactly what bearing
that has on your question, but my guess is the older the word, the
better for you.

That said, if Saul Zaentz really does have a claim to the name, he
might not be the best guy to test. He once sued musician John Fogerty
for plagerizing one of Fogerty's own songs for which Zaentz held the
rights. (Zaentz didn't win, though.)

From the Tolkien Enterprises page
(http://www.tolkien-ent.com/new/index.html):

"Anyone desiring to use one or more of the Tolkien fanciful names
and/or characters in connection with merchandise, stage adaptations,
or services offered to the public is requested to submit a written
proposal to Laurie Battle, Director of Licensing, 2600 Tenth Street,
Berkeley, California 94710."