Michelle
Morgante

By Michelle Morgante
Regional Managing Editor, The Recorder

  What You Need to Know

• Wonderbow found counterfeiters seized on early success for its game Kelp.
• USPTO says attorneys can help creators position themselves to fend off IP theft.
• Experts say board and card games can be especially vulnerable to counterfeiting.

Did that board game unwrapped over the holidays feel a little off? Were the pieces not as sturdy as expected? Did the box have odd misspellings or were crucial parts simply missing? If so, the problem may not be an issue of quality control, but of counterfeiting.

With tabletop games seeing a surge in popularity—the global market value is forecast to grow by 80% to $49.2 billion in the next four years, according to a recent report from Research and Markets—legal experts say counterfeiters are infringing on trademarks and copyrights as fast as developers can bring hit games to market.

Or, as the developers at Wonderbow Games discovered, the counterfeiters can be even faster.

Laia Gonzalez, who runs the independent business with her husband in Hamburg, Germany, was cheering the early success of a crowdfunding campaign to launch their flagship game "Kelp" in late 2023 when the problems surfaced.

While browsing online to track support for the project, Gonzalez felt her stomach drop when she discovered sales listings for Kelp, a game that was still a year away from delivery.

“There were a lot of product listings with our game, with the images that we had on the Kickstarter campaign, and people just pretending to sell our game,” Gonzalez told The Recorder in a December interview.

The counterfeiters were “taking advantage of our creation, our ideas, our work and our money,” she said, pointing to the investments Wonderbow made to create and promote Kelp. “They were just riding the wave of our success.”

Eric Perrott, a trademark and copyright attorney with Gerben Perrott in Washington, D.C., said tabletop games and card games in particular are easy targets for bad actors because the marketing materials, and even the products themselves, can be easily replicated.

Perrott, who spoke on a panel hosted by the U.S. Patent and Trademark Office in December, recalled a client who had self-published a card game using her own art and found success through sales on Amazon.

“And then the floodgates opened with the counterfeiters,” he said. It was easy to spot the fakes because the creator had slipped a misspelling into the product, creating a “tell,” he said.

As with many independent and new game publishers, the creator hadn’t yet registered a trademark, he said. The counterfeit versions of her game allowed Perrott to petition for an expedited trademark, enabling her to obtain rights in about half the time it would normally take. With the trademark secured, the creator has been able to fend off counterfeits from Amazon, he said.

Holly Lance, an attorney adviser in the U.S. Office of Policy and International Affairs at the USPTO, said securing trademark and copyright protections is critical but she noted that creators and entrepreneurs can take protective steps even before they’ve brought their product to market.

As a first step, creators should work with intellectual property experts to ensure the name and other identifiable elements are not already registered by someone else. A lawyer can conduct an availability search and look through the USPTO's database to “make sure that there’s no one else who has a similar trademark already registered.” It’s also smart to see whether the mark is being used in other key markets, such as in Canada and Europe or beyond. Many trademark registries around the world are available online at no cost, she said.

In the United States, she said, creators should consider filing an “intent to use” application.

“So, even before you make your first sale, you can actually file a trademark application and put your name in line—or sort of mark your spot—so that any sort of future filed applications would be refused based on that client’s prior application,” she told The Recorder in an interview.

Federal copyright registration, she noted, can protect rights-holders when any of the design elements—art, photographs and product design, for example—are stolen.

Having such protections is critical not only for cases that go to court, but in pushing e-commerce platforms to take down counterfeit products. The USPTO, Lance said, has resources to help IP owners enforce their rights on such platforms, although enforcement on foreign platforms, where “bad actors” may be more difficult to bring into compliance, may require the help of local counsel.

For attorneys working with such creators, it’s important to work with the various e-commerce platforms whether or not the client is selling there, she said. The client may end up using those platforms down the road, or they may need to fend off counterfeit products being sold there.

“They can still be working with them,” Lance said. “They can still belong as part of their brand partner programs and they [the platforms] will still act on your behalf.”

Amazon, for its part, said it has a “zero tolerance policy” against counterfeit goods and takes quick action to remove counterfeit listings and block accounts when necessary.

“We have proactive measures in place to prevent counterfeit products from being listed and continuously monitor our store,” the company said in a statement sent to The Recorder on Tuesday. “We will continue to collaborate with brands and law enforcement to protect our customers from bad actors attempting to abuse our store.”

Amazon maintains a Brand Registry to help brand owners protect their IP and a Project Zero tool that allows brands to directly remove counterfeit listings from the site.

Wonderbow found, however, that the system of protections doesn't always work for the IP owners. Even though it had trademarks and copyrights in place and used tools offered by the e-commerce sites, such as Amazon's brand registry, the counterfeiters could circumvent such obstacles, such as by creating fake brand names, Gonzalez said.

Gonzalez said her fight to take down the counterfeits became like a game of “whack-a-mole,” with new listings going up to replace those being removed. The vendors, she said, appeared to resurface under new names that often were just a combination of random letters.

The fake products were being listed by companies in China that, she said, also appeared to create new identities and addresses to make them hard to track. They were popping up on large sites such as eBay and Walmart as well as sites she’d never heard of before. It became a second job to fight them all, she said.

“I spent five, six hours a day just reporting listings, which really messed with my mental health,” she said. “We actually wanted to spend our time making board games. … So, at some point, we were just like, yeah, I just have to leave it. Otherwise, I’m going to go crazy. We have to focus on manufacturing the game. We have a lot of supporters. They will receive a very beautiful game from us, and this is where our focus needs to go.”

Then, last January, Gonzalez said she felt another blow when she received an email from a Kelp fan who complained the game they had purchased was missing the instruction book, even though the actual game had yet to be produced.

That was when Gonzalez realized the fake listings were not just intended to dupe buyers into sending in money; the criminals were actually stealing the entire product. They had produced poorly made versions of Kelp by copying images and files that had been shared to Tabletop Simulator, a popular site for testing games in development, she said.

“They started actually delivering a fake game, a fake copy of our game, throughout the whole world,” she said. “So we had people reach out to us from everywhere that you can imagine … saying, like, ‘Oh, we received it and it's not that good, and there are things missing.’”

Berserk Games, which produces Tabletop Simulator, did not respond to an email seeking comment.

Gonzalez and her husband decided to go public with their battle to let their 21,000 Kickstarter supporters know the versions of Kelp being sold online were fake. The community ended up helping Wonderbow fight off the fraudsters through crowdsourced takedown demands across the e-commerce sites.

“They reported the listings all over the world,” she said. “That was really, really moving to have this support.”

Kelp—the real Kelp—finally began shipping to investors in August and, as 2024 approached its end, Gonzalez was sending out the last of those shipments.

Looking forward, Gonzalez said she hopes Wonderbow’s experience will help other emerging creators and has asked contacts at Kickstarter and Amazon to do more to educate creators on how to better protect their work.

“There seems to be a trend for counterfeiters to look at successful crowdfunding campaigns and just copy whatever is not on the market yet because they have guaranteed sales, because people are waiting for the project to arrive,” she said.

While Gonzalez said she’s learned enough from the experience to write a book, she’s trying to focus on continuing to grow Kelp and on finding the next game Wonderbow can bring to market.

As for the counterfeiters, which continue to pop up, “I just hope that they get tired of it and then just move on,” she said. “I still try to focus on the positive things because, in the end … I want to spend my time and energy just making great products, great games.”

USPTO Resources on Trademarks and Protecting IP:

Attorneys, agents and paralegals | USPTO

Protect against trademark scams | USPTO

USPTO video—YouTube

Trademarks | USPTO

Editor's Note: This story was updated on Jan. 2, 2025, to clarify that Wonderbow had trademark and copyright protections in place for Kelp.