When you come up with an idea, it’s a natural reaction to worry about protecting that idea. After all, you’ve put time and effort into inventing something to improve someone’s quality of life. After spending time on the invention, your natural instincts lead you down the path toward patent protection. If you can obtain a patent, you know you could a foothold in the marketplace for over a decade. However, even in that best-case scenario – what happens twenty or thirty years down the road? What happens once your patent expires? Luckily, there are ways to protect your device beyond a patent.
Of the three major forms of intellectual protection – patents, trademarks, and copyrights – two forms expire by statute. Patents expire after a period of time – twenty years for a utility or plant patent; and fifteen years for a design patent. In addition, copyrights expire, generally seventy years after the creator passes away. However, trademarks, uniquely, do not expire so long as use remains continuous and routine renewals occur. In that way, trademarks provide a potentially indefinite way to protect your device, even after a patent expires.
Nintendo’s GAME & WATCH protection expands beyond a patent
A tangible example of the importance of a strong trademark comes from the video game industry. In the 1980s, Nintendo released a highly successful handheld gaming device that doubled as a clock with an LCD screen. The device, the Game & Watch, provided kids with a clock in their room that they could also use to play relatively simplistic games. Nintendo obtained a number of patents on the device, including one on the device’s functionality; another covered the D-pad on the device; and a design patent on the aesthetic look of the device. Throughout the 1980s, Nintendo grew its patent portfolio to protect its successful Game & Watch device.
However, knowing that the patents would expire around 2000, Nintendo diversified its intellectual property portfolio. In 1985, Nintendo obtained a trademark on GAME & WATCH NINTENDO. The trademark covered an illustration of the mark, likely because GAME & WATCH by itself would be difficult to register. By the time the 2000s came around, Nintendo filed for stronger trademark protection, right after the patents expired. As such, Nintendo gained secondary meaning in the GAME & WATCH mark, and obtained standard character trademarks for the device. Fast-forward to 2020, and Nintendo released a special edition Super Mario Bros. Game & Watch; one device is now displayed in my office, and includes copies of Super Mario Bros. 1 & 2.
Any company could make a combined clock and handheld game, now that Nintendo’s patents expired. However, no company could sell out a collector’s edition of a similar device as quickly as Nintendo did this week. That is due to Nintendo’s strong intellectual property protection that protected its device beyond a patent.
The original registration covered a design mark; the new registration covers a standard character mark, providing broader trademark protection.
Yes – since Nintendo’s patents on the device expired around 2000, anyone is free to make a competing device.
Yes – if you stop using your trademark, or if you fail to renew your trademark, your trademark rights can expire.