Lone Wolf sends Cease & Desist letters to anyone using the term 'Army Builder'

[rjdafoe]

But that doesn't matter.

Here's the thing, Trademark law is limited to what it can do. It is designed solely to product vendors and consumers from false advertising. It does not prevent anybody saying "Army Builder". All it does is the following: prevent other creators from using the term to describe their particular product (even if it's for free).

But because of that, this isn't a patent thing where you can invalidate it through proof of prior art. The only way the USPTO would reject it is if (a) they felt it was way too generic a term or (b) if somebody with an existing trademark would object if it was the same or too similar. Just because people used that term to describe software doesn't mean it is not a good trademark.

The thing is, Army builder passes a synonym test--you can easily call the software something that can convey the message...army maker, army creator, army constructor, army complier, etc. There are many synonyms for the term "builder" to convey the idea of the software, thus, when combined with the work army it makes a decent, if not spectacular.

And part of it is "first come, first serve". Like LoneWolfDevel said, they've had this software for a long time. People are assigned motive based on the awkwardness of the communication. I can understand the anger in referencing the DMCA, or the tone of the communication--but as far as the Trademark goes, it seems fine. There doesn't appear to be any evidence that they are "sneaking around" to get a trademark, which some people assume.

All that is in response to the message that Lone Wolf Development said they could find no reference to the words army builder. This has nothing do with invalidating anything. I know for a FACT, that those words were used in the BBS days in talking about spreadsheets, that build armies for miniature games.

That is all it means. When you claim to have no knowledge of two common descriptive words put together in a certain way, people are going to call you out on it.

It doesn't matter what the purpose of trademarking it was, the fact is, it is making everyone else's life difficult - including his own. I am sure he would rather code than track down misuse of his common description trademark.

I still don't know wether to believe him or not that it was not intentional, in order to corner the market. The reason for this is that he continues to say that people cannot use the phrase army builder in a description of a product.

 

[S'mon]

This is not the case in the U.S. If you use someone's trademark on a free product and they can demonstrate a likelihood of confusion, you've got trouble.

If you're a company and your offering the product is ancillary to some other money-making activity, such as drawing people to your website to click on advertising links, or upgrading to a paid-for product, then there may be commercial use of the mark.

Now, I've seen judges decide all kinds of things without any legal basis, so it's not impossible a judge could say that published speech or writing, eg of a book or of software code, in itself constituted commerce, but those kinds of judgements tend to get overturned.

 

[Steerpike7]

Look, take a look at what the Lanham Act says:

§1114. Remedies; infringement; innocent infringment by printers and publishers

(1)
Any person who shall, without the consent of the registrant--

use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive...

15 USC 1114, Remedies; infringement; innocent infringment by printers and publishers (BitLaw)

This isn't a question of my opinion. There is question about the exact scope of trademark protection but it clearly does not extend to non-commercial use.

The Lanham Act doesn't back up your conclusion. I don't intend to get into a bit argument over it because I do this for a living and making a case in a forum is irrelevant, but I'd hate for anyone to be misled by the things you have been posting here.

"Use in commerce" is a broad phrase, and as the act itself says, "distribution" is covered, not just a sale. If you inject your free goods into the stream of commerce, whether charging for them or not, you're going to have trouble.

In addition, the Lanham Act isn't the only thing you have to worry about. There are all kinds of claims for unfair business practices that may be available to the trademark owner. One that comes to mind is Passing Off, which has different elements than trademark infringement and those elements are usually easier to meet.

No one should take from the discussions in these forums that you can't get in trouble for using someone else's trademark if you are not charging for your product. It is simply not true, and that kind of disinformation can lead a person who doesn't know better to get themselves into legal trouble they could have avoided. Anyone thinking along these lines should talk to competent IP counsel before acting.

Also, the fact that this isn't a safe course of action should be self-evident in some ways. If what you are saying is true, then if I start a new software company, a company like Microsoft could ruin me by making a crappy knock-off of my product, slapping my trademarks on it, and giving it away free online. Sure, it costs them some money but they completely ruin me as a startup who is trying to establish good will for my mark. I think it should be rather clear to everyone that a variety of claims, some trademark-related and some not, would arise out of that course of action.

The fact that you aren't charging for an item that has an infringing mark on it will not protect you.

 

[S'mon]

You can do this on your house. If you were independently wealthy and opened up a restaurant where all you did was give away free burgers to the public, and you called them McDonald's hamburgers and had the McDonald's golden-M trademark on it, you'd have a problem on your hands.

And using McDonald's as an example opens, potentially, another can of worms because that's a famous mark.

Well, the word 'restaurant' implies a commercial enterprise, ergo commercial use of the mark.

The Dilution/Tarnishing protections for famous marks still require commercial use of the mark. If I say bad things about McDonalds they need to sue me in libel, not TM law. If I use McDonalds as a generic term for fast food burgers they can't do anything.

 

[Steerpike7]

If I use McDonalds as a generic term for fast food burgers they can't do anything.

Totally separate issue. The Federal Trademark Dilution Act is more broad in terms of protections it gives owners of famous marks (they recently removed the need to show actual dilution, for example). But it has exceptions as required by the First Amendment. Clearly no trademark owner can stop all mention of a mark other than its own use. You can write about, comment on, and engage in all kinds of other behavior with respect to a trademark. My point in this thread is that the idea that distributing goods without charging for them protects you from problems with respect to the trademark owner is false.

As for your comment about the restaurant, you are conceding that free distribution of a product can still be "commercial," which is my point.

 

[S'mon]

T
In addition, the Lanham Act isn't the only thing you have to worry about. There are all kinds of claims for unfair business practices that may be available to the trademark owner. One that comes to mind is Passing Off...

...Also, the fact that this isn't a safe course of action should be self-evident in some ways. If what you are saying is true, then if I start a new software company, a company like Microsoft could ruin me by making a crappy knock-off of my product, slapping my trademarks on it, and giving it away free online. Sure, it costs them some money but they completely ruin me as a startup who is trying to establish good will for my mark. I think it should be rather clear to everyone that a variety of claims, some trademark-related and some not, would arise out of that course of action.

1. Passing Off also requires commerce.

2. Your example is ridiculous. Think about it. Microsoft certainly won't put your trade marks on their rip off. And you'd be suing them for copyright infringement, not TM infringement. Anyway, as I said above, a free product given away by a company as part of a commercial enterprise (eg bundling internet explorer with windows) certainly can be a commercial activity. But a private individual writing software, putting it on a website for free download, and calling it 'army builder software', is clearly not making commercial use of the mark, IMO.

 

[S'mon]

As for your comment about the restaurant, you are conceding that free distribution of a product can still be "commercial," which is my point.

Well then we agree on that!

 

[Infiniti2000]

But a private individual writing software, putting it on a website for free download, and calling it 'army builder software', is clearly not making commercial use of the mark, IMO.

Your humble opinion on this is wrong as far as the US is concerned, though, and hopefully no one who actually needs to know about this will listen to it.

 

[carmachu]

Not wading through the thread, but lone wolf posted an update on dakka and their site(the paragraph is from dakka):

I have a quick update for those of you interested in the situation that unfolded earlier this week between Lone Wolf Development and Privateer Press. In short, it turns out I used an incorrect word in a very critical way, which dramatically changed the message to something never intended. Unfortunately, I didn't realize that issue until a short while ago. A public acknowledgment of this, along with a full explanation, has now been posted on our forums, which can be found at the link below:

Explanation and Apology Regarding Message to Privateer Press - Lone Wolf Development Forums

 

[S'mon]

Your humble opinion on this is wrong as far as the US is concerned, though, and hopefully no one who actually needs to know about this will listen to it.

Source?

Edit: Statute, precedent, or at least an obiter statement. I've seen all kind of specious claims by rightsholders, but I haven't seen anything to back them up. There may be though - I teach UK law not US - but I've looked and haven't seen it.

My advice is directed against rights holders, especially smaller companies - don't sue or threaten to sue unless you have a case, and be clear what you need to have a case. Large companies often do make legally groundless threats & claims, as in the Super Bowl case discussed above, and that may work for them. My advice to non-rightsholders would be different again - there are lots of things you are wise not to do, even though you legally can do them, because there are people and corporations who can and may make your life uncomfortable if you do so. That certainly extends to non-commercial uses of trade marks. This current situation is an example.