Fntastic's THE DAY BEFORE trade mark application blocked: The advice is to file early!

The hotly anticipated THE DAY BEFORE from game developer Fntastic has encountered a block to its own application to register the trade mark in the USA.

A South Korean individual, Sun Jae Lee, applied to register THE DAY BEFORE in relation to a range of Class 9 goods, notably, "Downloadable computer game software" on 21 May 2021, several months after Fntastic announced news of the game in January 2021. Sun Jae Lee's application proceeded to registration on 1 November 2022.

Fntastic's own application was entered on the US trade marks register on 27 January 2022 and met with an official partial objection issued by the US Patent and Trade Mark Office (USPTO) in November 2022 on the grounds that a likelihood of confusion existed with Sun Hae Lee's earlier registration in respect of the goods and services of commercial importance to Fntastic, specifically, "Downloadable game software" and "Providing on-line computer games", among others.

Whether Sun Jae Lee filed their application without knowledge of Fntastic's game is up for debate. However, this commentator notes that Sun Jae Lee's application protects software relating to providing D-day, meeting date and anniversary information and notifications, of which the name THE DAY BEFORE invokes a feature of calendar or diary, so there is an indication of this being an innocent act, albeit nonetheless unfortunate for Fntastic. Classes define the scope of protection of a trade mark. By selecting the correct class and list of goods (products) and/or services it is possible to inform consumers and competitors as to how a trade mark owner intends to use its trade mark.

A take home from this situation is to file names and trade marks of interest as soon as possible, and certainly as a minimum 'the day before' announcing news of the game!