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

[S'mon]

Regarding Morrus, though, and this forum, that entirely depends on where this forum is hosted. I'm guessing in the UK which I think would make all U.S.-based trademark law comments irrelevant. U.S. trademark law doesn't apply to websites hosted outside the U.S., does it? See, now this area is where I think S'mon's expertise lies, though as a non-attorney he still shouldn't provide legal advice.

1. I'm not providing legal advice. "Opinion about the law" =/= legal advice. Legal advice is "You have a case against X, because of Y and Z, but they may raise a defence of AA." Anyone is entitled to an opinion about the law, even law lecturers from other jurisdictions.

2. You apparently don't know this, but TM law is fairly heavily internationally harmonised, thanks partly to a variety of conventions including the 1994 TRIPS treaty. There are certainly national differences, which I am interested in finding out more about. We do deal with a fair number of US TM cases though on the courses I teach, and I haven't seen a big difference in their outcome compared to how it'd go in the UK.

 

[S'mon]

U.S. trademark law doesn't apply to websites hosted outside the U.S., does it?

US law applies in US courts. If I have a website in the UK, and you're in the US and want to sue me for TM infringement, you persuade a US court to take the case. If you can show I'm targetting my business at the US then they'd take the case. Enforcing the US court's judgement in the UK is another matter, though. There are conventions on cross-border enforcement of judgements, but it can be difficult and as a practical matter few companies want to mess with that.

Now I'm going to be late getting home.

 

[Mark]

"Prosecute" is a term in criminal law. You mean "sue"?

Perhaps he means "prosecute" as in prosecute a war in which case he will need to utilize some sort of device to determine the best troop configurations needed. If only there were such an application . . .

 

[Mark Chance]

Perhaps he means "prosecute" as in prosecute a war in which case he will need to utilize some sort of device to determine the best troop configurations needed. If only there were such an application . . .

If that application individually outfitted soldiers with weapons and gear, would it be an Arm Me Builder?

 

[S'mon]

FWIW - like I thought, I came across a comment that Playboy v Welles restated that 'the “fair use” defense forbids a trademark owner from appropriating a descriptive term for his or her exclusive use and preventing others from accurately describing a characteristic of their goods' - see eg:
ELECTRONIC BILLBOARDS ALONG THE INFORMATION SUPERHIGHWAY: LIABILITY UNDER THE LANHAM ACT FOR USING TRADEMARKS TO KEY INTERNET BANNER ADS
case ref: Playboy Enter., Inc. v. Welles, 7 F. Supp. 2d 1098, 1104 (S.D. Cal. 1998), aff’d, 162 F.3d 1169 (9th Cir. 1998).

I believe that's a pretty famous case which any US IP lawyer working on TM law & the Internet should be aware of.

 

[pawsplay]

FWIW - like I thought, I came across a comment that Playboy v Welles restated that 'the “fair use” defense forbids a trademark owner from appropriating a descriptive term for his or her exclusive use and preventing others from accurately describing a characteristic of their goods' - see eg:
ELECTRONIC BILLBOARDS ALONG THE INFORMATION SUPERHIGHWAY: LIABILITY UNDER THE LANHAM ACT FOR USING TRADEMARKS TO KEY INTERNET BANNER ADS
case ref: Playboy Enter., Inc. v. Welles, 7 F. Supp. 2d 1098, 1104 (S.D. Cal. 1998), aff’d, 162 F.3d 1169 (9th Cir. 1998).

I believe that's a pretty famous case which any US IP lawyer working on TM law & the Internet should be aware of.

Certainly, it would make the world a difficult place if I could trademark a word or combination of words, and through legal intimidation causing others to stop using it in a generic sense, make it true that the word was not generic.

 

[Sabriel]

Wow. Long thread. But interesting.

I used to think that unlike copyright and patent law (for which IMO the scales are in the middle of tipping over), trademark law was still a case of the Good outweighing the Evil. Now... I'm not so sure. At least, threads like this indicate the laws and precedents thereof are, or are becoming, onerous.

Do I understand correctly that - whereas the trademarks "X's Foo" and "Y's Foo" might happily coexist(?) - if X instead trademarks simply "Foo", Y cannot use "Y's Foo" to sell their own product? Thus Army Builder / Y's Army Builder, likewise Hot Apple Sauce / Y's Hot Apple Sauce... and so on?

The short fiction story "Melancholy Elephants" weighs upon me; I am concerned that its analysis of copyright also covers trademarks (perhaps all "IP"). I note that language, like music, has practical combinatorial limits, and trademarks already have terms that can extend indefinitely.

The consequences of our laws are not always apparent on their enactment. We must from time to time look upon our actions and our capabilities, and decide if they are still appropriate for our future; merely because "the law" allows us to do something, does not mean we should.

It can come back and bite us in places Grandma would not approve.

 

[JohnRTroy]

Wow. Long thread. But interesting.

I used to think that unlike copyright and patent law (for which IMO the scales are in the middle of tipping over), trademark law was still a case of the Good outweighing the Evil. Now... I'm not so sure. At least, threads like this indicate the laws and precedents thereof are, or are becoming, onerous.

I honestly don't think this is the case. In fact, one of the reasons I've been debating so much in this thread is that so many people nowadays have a knee-jerk reaction to any sort of IP law, or they start foaming at the mouth regarding lawsuits (as in, anybody who is the "victim" of a lawsuit is good and the instigator is always the bad or "villain"). That's why I started going to the USPTO site to find some facts.

The key thing is the perception of "generic", which is very subjective. Granted, Army Builder is a weaker trademark than others, but it does seem to pass the test, at least based on some of the examples I posted way back.

The key term I believe is "generic", as in a word that can't be replaced by a synonym. There is no way you could trademark a single word like pencil, because there is not another good English word for pencil. A term like "red pencil" is descriptive, but it would also depend on how that trademark is used--a pencil manufacturer might not be able to trademark that--or at least if somebody else had a product of red pencils they couldn't use the trademark to prevent that product from being sold. However, Red Pencil might be a good name for a gaming company, and thus a legitimate trademark in that context. In this case I don't see Army Builder as being as generic as Hot Apple Sauce.

The key thing is Trademarks can't be used to prevent language from being used. They are simply to prevent brand confusion.

The Playboy case S'Mon invokes involves a concept called nominative use, which means Trademarks can't be used to prevent discussion of the product itself. In the Playboy case, the Playboy Playmate had the rights to indicate she was a playboy playmate, because there is no way to describe that elsewhere.

I'm not sure Army Builder can fall under that, specifically because there are many synonyms that can be used. You can call it an army maker or an army constructor and that would still convey the means. You can't tell me that you absolutely can't communicate what your software does without using the word combo "army builder", because there are several effective synonyms. That is not the case of "playboy playmate", because the centerfold has the right to mention where she worked.

I think the key thing is a competing product can't TITLE itself Army Builder, you might be able to say "The software is used to build or create armies" in describing it, but the key thing would be the title--because even if you give your software away for free this may count as trade. At least that's how I interpret the law, and others appear to agree with me. Anybody creating a free tool IMO would need to make sure they don't use the Trademark in the Title.

Trademark Law can be abused by some--Monster Cable tried to sue others who used the name including Monster.com and Pixar for Monsters, Inc. But they have a history of being over-litageous. But I don't think the general trademark laws are bad--in fact out of all three IP laws, they are very good. They protect abuse--without them anybody could use the terms and cause consumer confusion. I don't want to Eat Piratecat's version of Chef Boyadee, I don't want to read Joe Shmoes version of Superman, and I don't want to use the Nigerian Hacker's version of Windows 7.

 

[lonewolfdevel]

FWIW - like I thought, I came across a comment that Playboy v Welles restated that 'the “fair use” defense forbids a trademark owner from appropriating a descriptive term for his or her exclusive use and preventing others from accurately describing a characteristic of their goods' - see eg:
ELECTRONIC BILLBOARDS ALONG THE INFORMATION SUPERHIGHWAY: LIABILITY UNDER THE LANHAM ACT FOR USING TRADEMARKS TO KEY INTERNET BANNER ADS
case ref: Playboy Enter., Inc. v. Welles, 7 F. Supp. 2d 1098, 1104 (S.D. Cal. 1998), aff’d, 162 F.3d 1169 (9th Cir. 1998).

I believe that's a pretty famous case which any US IP lawyer working on TM law & the Internet should be aware of.

Your argument hinges on the position that the trademark is either generic or descriptive. From a legal standpoint, though, all presumptions are just the opposite regarding the Army Builder trademark. There are four reasons why:

1. The term was not in general use before we began using it. This fact has been confirmed by other posters here already.

2. The term is suggestive at best - not descriptive. We acknowledge that it isn't fanciful, but the program isn't "building" anything, per se, as it operates virtually, and the end result is not an "army" but a roster sheet.

3. The trademark has acquired secondary meaning after all these years. When someone posts to a miniatures forum that they need an "army builder data file", virtually everyone on that forum knows that what is being sought is a data file for Lone Wolf Development's product.

4. Under US trademark law, our mark is presumptively incontestable on grounds of descriptiveness (and certain other grounds) by virtue of 5 years of continuous use without having been canceled and us having filed the necessary affidavits.

Ultimately, this should all be taken into account through the lens of case law, which is VERY reluctant to strip a trademark owner of rights merely because there has been some generic usage of a mark.

This is a paraphrased version of the response I received from our IP attorney about this. He also said that he didn't hear from you today, so I have to ask whether you received his contact info successfully.

 

[lonewolfdevel]

The consequences of our laws are not always apparent on their enactment. We must from time to time look upon our actions and our capabilities, and decide if they are still appropriate for our future; merely because "the law" allows us to do something, does not mean we should.

This is generally true and, with most types of property, the owner can elect when to enforce its rights and when not to. Unfortunately, the rules for trademarks are very clear, and there is no selectivity afforded to the rights owner. If you have a trademark, you must police it equally with everyone. So there is no option to enforce it against Company X but allow it to slide with Fan Y. If a trademark is knowingly allowed to slide with Fan Y, then Company Z can come in later and use that fact to argue the trademark rights should be lost.

So, with regards to trademarks at least, it's not a case of the law allowing something. It's a case of the law requiring something. Unless we want to abandon the trademark, of course, but that's not in the best interests of the company and its stakeholders. Hence the need to do these things.

Oh, and thanks for taking the time to read all the way through.