What would you do if you had a well-recognized brand name that came to be used as a generic term for a certain kind of video? Let everybody use it as they liked — or register the name as a trademark that no one else can use?
For Digital Playground, that question was a no-brainer. They went after trademark registration for Virtual Sex®, the widely misused title of their line of interactive sex videos.
After all, this was the title that gave birth to the interactive genre — a high-quality line that, over the years, featured most of the industry’s top stars, including Jenna Jameson, Janine, Tera Patrick, Jesse Jane, Devon and Teagan Presley.
The process was long and arduous, but it paid off. On Nov. 15, 2005, the trademark registration (#3014320) of Virtual Sex® became official.
Digital’s Virtual Sex® began in 1994, on CD-ROM, as Virtual Sex Shoot, starring Nici Sterling. By the time DVDs were perfected, around 1997, the series was well established, and other companies were using the term “virtual sex” to describe their own product.
“And that was not cool with us at all,” said Samantha Lewis, Digital Playground president. “People were using it just like ‘Kleenex,’ and that wasn’t the case. Consumers had definitely come to associate the Virtual Sex® mark with Digital Playground, because our product line is high production value, higher, I think, than any other interactive sex title.
“Our competitors repeatedly attempted to capitalize on our branding. That’s no secret. And we needed to stop it.”
On April 12, 2000, DP filed for registration. Their attorney was Anna Vradenburgh, a specialist in patent and trademarks, of the Thousand Oaks, Calif. firm Koppel, Patrick and Heybl.
First of all, DP had to prove that the name was indeed theirs.
“You just can’t say, 'This is mine,'” Lewis said. “Absolutely, we had to prove it. They don’t mess around. We had to go back as far as we could and show from Day One how we came up with this mark. Endless, endless paper trail. It was a lot of work.”
“Digital Playground was a great client,” Vradenburgh added. “They did what I needed them to do. Many people cannot really prove what they claim. This never would have happened if Digital Playground didn’t have the proof.”
The administration and registration of trademarks, Vradenburgh explained, is overseen by the Patent and Trademark Office, which was established by the federal government as an administrative branch in the Commerce Department.
Commerce is key, Lewis said. “You just can’t say, 'This is what I’ve come up with,' it’s actually got to be in commerce. You have to sell to the consumer before you have a legal right to trademark registration. People just can’t come up with ideas and try to trademark them.”
“What we did here,” Vradenburgh continued, “is [prove that] Virtual Sex was a trademark of Digital Playground throughout the ’90s, by virtue of the fact that they were using it in a manner to identify their goods.”
It was a big win for the company, but it was also a fight. “They were giving us a very hard time,” Lewis said, “because it was so misused and people were abusing it.”
The process took longer than usual because of some opposition. During the process there is a publication period where people in the industry or the public are entitled to oppose a mark.
“We had two such oppositions filed against us,” Vradenburgh said, “and we successfully won both. The fact that two oppositions were filed shows that people see the value of this mark, and they wanted to continue, in my opinion, to infringe.”
Now comes the problem of enforcement.
“We constantly have to police it,” Lewis said. “If we find someone using the trademark, we give them the courtesy to remove it, and if they don’t want to do that, then we’ll have to seek legal action to protect it. So far everyone that has infringing has been good about it; they remove the product from the marketplace. A lot of them don’t know it is a registered trademark, so we give them the benefit of a doubt. I’m not here to make anyone’s life hard, but — I do want them to know.”
“Virtual Sex® has been featured in the New York Times, the History Channel, MSNBC, ABC, Fox News, CNN,” she emphasized. “They all associate it with Digital Playground, and we want to protect that. It’s a very valuable asset.”
