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

[lonewolfdevel]

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.

According to our IP attorney, neither the title nor the description of a competing tool can utilize our trademark. However, that's in a literal sense only. So a competitor could readily say "The software is used to build or create armies" to describe the tool, just as you proposed. But they could not say "XYZ Tool is an army builder" or "XYZ Tool is army building software". Both of those uses would be construed as potentially causing brand confusion and therefore be a problem.

 

[Xyxox]

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

I've been using the term since 1985 to describe my spreadsheets originally used with the first edition of Battlesystem and I refuse to stop calling my army builder spreadsheets what they are.

 

[Xyxox]

According to our IP attorney, neither the title nor the description of a competing tool can utilize our trademark. However, that's in a literal sense only. So a competitor could readily say "The software is used to build or create armies" to describe the tool, just as you proposed. But they could not say "XYZ Tool is an army builder" or "XYZ Tool is army building software". Both of those uses would be construed as potentially causing brand confusion and therefore be a problem.

If Lone Wolf Development ever took a company to court over it, I'd bet on the defendants.

 

[Perram]

According to our IP attorney, neither the title nor the description of a competing tool can utilize our trademark. However, that's in a literal sense only. So a competitor could readily say "The software is used to build or create armies" to describe the tool, just as you proposed. But they could not say "XYZ Tool is an army builder" or "XYZ Tool is army building software". Both of those uses would be construed as potentially causing brand confusion and therefore be a problem.

While I completely disagree with your point that it is NOT descriptive, would someone explain to me how your trade mark for "Army Builder" extends to "army building?"

And while your Trade Mark may be incontestable on the grounds that it is descriptive, that does not prevent fair use of a descriptive trade mark, as referenced earlier in this thread.

You are over reaching here.

 

[lonewolfdevel]

I've been using the term since 1985 to describe my spreadsheets originally used with the first edition of Battlesystem and I refuse to stop calling my army builder spreadsheets what they are.

Are you actively promoting your spreadsheets to the public at large as a competing solution to our product? From everything you've described above and in previous posts, that's not even remotely the case. That's the only context under which this could become even worthy of discussion.

So, by all means, keep calling them whatever you want.

 

[lonewolfdevel]

While I completely disagree with your point that it is NOT descriptive, would someone explain to me how your trade mark for "Army Builder" extends to "army building?"

The rules for trademarks extend to usage that is similar or derivative in nature. The ultimate question is whether a use could be potentially confusing to the consumer. Based on this, using the term "army building" would generally be viewed as meeting that requirement vis-a-vis the "Army Builder" trademark.

This is how I understand things work from our attorney. You are welcome to a different opinion.

And while your Trade Mark may be incontestable on the grounds that it is descriptive, that does not prevent fair use of a descriptive trade mark, as referenced earlier in this thread.

You are over reaching here.

Now I'm confused. Your argument hinges on the fact that the trademark be declared as descriptive for it to be valid. However, the USPTO has officially accepted that the Army Builder mark is *not* descriptive. So this appears both circular and conflicting to me. What am I missing here?

 

[Xyxox]

Are you actively promoting your spreadsheets to the public at large as a competing solution to our product? From everything you've described above and in previous posts, that's not even remotely the case. That's the only context under which this could become even worthy of discussion.

So, by all means, keep calling them whatever you want.

Quite frankly, I had been nearly cnvinced to give up my army builder spreadsheets in favor of the software you produce until this recent event and I discovered the troubles your company had with credit cards and hackers via another forum.

So I'm sticking to my army builder spread sheets, though I may offer them for free via a yahoo group.

 

[Perram]

Now I'm confused. Your argument hinges on the fact that the trademark be declared as descriptive for it to be valid. However, the USPTO has officially accepted that the Army Builder mark is *not* descriptive. So this appears both circular and conflicting to me. What am I missing here?

Alright, Looking at your Word Mark, I don't see anything from the USPTO that says they made any ruling on whether or not your mark is descriptive. And since its been around for 5 years, it can not be ATTACKED simply for being descriptive. Meaning that your mark can not be invalidated (taken away) because it was simply descriptive.

(Referencing This Post)

However, that doesn't mean that it isn't descriptive.

You build armies with army building software, and Army Builder is such software. This thread has found previous references before your software to building armies, the exact phrase 'Army Builder' is the part that wasn't found in the archives.

And as a descriptive mark, there are fair use laws that allow its use as a description. (See this post specifically the link.) Such use does not constitute infringement.

 

[pawsplay]

According to our IP attorney, neither the title nor the description of a competing tool can utilize our trademark. However, that's in a literal sense only. So a competitor could readily say "The software is used to build or create armies" to describe the tool, just as you proposed. But they could not say "XYZ Tool is an army builder" or "XYZ Tool is army building software". Both of those uses would be construed as potentially causing brand confusion and therefore be a problem.

See this? This is why you are not on my popular list.

 

[pawsplay]

I'm not sure Army Builder can fall under that, specifically because there are many synonyms that can be used.

There always synonyms that can be used. I can call something an air suction floor cleaner, or a zoomeroo, but guess what? No one does. We call it a vacuum cleaner. Hoover had a case because people were already calling the things electric carpet sweepers, vacuum cleaners, electric suction devices, and so forth.

But Army Builder? Look on the web site and see if you can find a place where Army Builder it is a ___. It is described as a "tool" and it is used for "army construction" according to the website. Somehow, I don't think "army tool" is sufficiently descriptive, and "army constructor" is an odd neologism. "Army construction tool" is, I'm going to say, a burdensome phrase. "Army list calculator" is the closet thing I can find to a useful synonym, and that doesn't convey the idea that it stores data used in the calculations.

Army Builder is an army builder.