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

[guivre]

I've read most of the back and forth. It's a trademark that shouldn't have been granted. It's descriptive, generic, and weak. It is and was a common term regardless of whether you can Google it. I've been using it for well over 20 years, as have been many I've encountered playing wargames.

Trademarks *should* be used to try to differentiate yourself and get a brand name out there, not to snatch up something generic to try and capitalize on it.

Unlike many here I don't care how they went about defending it, though it was ham-handed, it shouldn't be a trademarkable phrase to begin with.

It doesn't really matter. I won't stop using the term. I doubt others will either and I'll encourage them to every chance I get. I'll consider it my tiny contribution to ensuring the phrase is genericized.

If I decide to create an army builder you can bet I'll name it Guivre's Army Builder or something similar and invite Lone Wolf to sue me.

 

[falcarrion]

Here is an actual arrest made on trademark infrigment that happen in Chicago on Feb 4.

Police arrest 4 and seize counterfeit trademark goods
February 4, 2010 8:46 PM | No Comments
Counterfeit designer-label items were seized and four people arrested when authorities served a search warrant on the North Side, Chicago police said today.

The search Wednesday afternoon at the business in the 4500 block of North Clark Street turned up "a large quantity" of reproduction consumer goods such as Coach handbags and Chanel sunglasses, police said.

Officers from a Town Hall District tactical team also found various mock designer labels and tools used for attaching the labels to merchandise.

Police said four people were arrested.

Chae W. Kim, 67, and Sun Kim, 62, both of Glenview, were charged with one felony count each of Unauthorized Use of Trademarks -- More Than 500 Items. The other two people, whose names were not released, were charged with one misdemeanor each of Unauthorized Use of Trademark, police said.

The Kims had been scheduled for bond hearings today but court information was not available.

 

[lonewolfdevel]

This thread seems to have reached the point where what remains is a clash of opinions. Everyone is entitled to their own opinion, and it's unlikely anyone is going to change theirs at this point. So I'm going to step out and allow those who remain interested to continue the discussion.

Please understand that I don't make the rules for how trademarks work. However, a company with a trademark is obligated to abide by those rules. And so we follow the rules as outlined by our IP attorney.

Do I enjoy having to do any of this policing stuff? Not in the slightest. Would I rather be working on a cool new feature for one of our products? Absolutely. Do I have a choice in the matter? Not really, unless you expect the company to abandon the trademark, in which case the company stakeholders would be mighty upset.

Thanks for everyone's contributions to the thread and the heartfelt discussion. It's been most illuminating!

 

[S'mon]

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.

Wow, that is really misleading! That's not what generic means at all. A generic term is simply one that is general, common, or inclusive rather than specific, unique, or selective. A generic mark is thus one incapable of distinguishing the origin of goods/services as coming from a particular company.

People have criticised me, erroneously as far as I can tell, for talking about US TM law when I mostly teach UK & EU law. There are fine points about the approach of the US courts where I could certainly learn more. But there are repeated statements by others here that are just clearly wrong.

 

[S'mon]

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.

Hi lonewolf - I guess if I was your IP lawyer and arguing it in court I'd make the arguments he makes. From my POV (not being a US attorney, but teaching TM law, and giving my academic perspective) I don't think there's any question that it's a descriptive mark (like 'Sweet'n'low for sweetener) rather than a merely suggestive mark (like 'Timberland' for boots, 'Playboy' for adult magazines), the software as I understand it helps people build/create their virtual army rosters. Even 'Dungeons & Dragons' is a somewhat descriptive mark since the game normally involves both dungeons and dragons, but it's only weakly descriptive, edging into merely suggestive. Your mark looks much further down towards the descriptive end since it directly describes what the product does.

But I think there's a reasonable case that your mark has acquired distinctiveness through use, your point #3 above. It's arguable, anyway.

Obviously the finding in Welles did not depend on the Playboy mark being generic, it's a valid mark, she was using the term descriptively to refer to the title which Playboy magazine had awarded her, and that's a fair use (it also touches on nominative use, ie referring to the actual product Playboy magazine by its own name).

I got your email, I'm happy to talk with talk with your attorney if he wants to email me and I'll contact him if there's something I want to ask him.

BTW when we're teaching our students, we teach them how to present a client's case with the best arguments available, but we also teach them to consider what arguments the other side would raise, and not to hide those from the client, because they don't want the client rushing off to court thinking he has a cast-iron case. Our UK students are fine with this, but I've noticed that many foreign students are very reluctant to tell the (virtual) client something they think he doesn't want to hear. So I hope your lawyer has given you both sides of the argument. You may be wise not to want to discuss it on a public forum though!

Edit: I was thinking of emailing your attorney to see if he supported your earlier statement which appeared to say that descriptive use of a mark could infringe, but I was going through a bunch of US TM law cases* yesterday for my TMs-on-the-Internet LLM tutorial and it became very clear to me that descriptive use is still non-infringing in the US, so I'm taking it that he didn't say that.

*Wow, Playboy sure like to litigate!

 

[S'mon]

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.

You can't police it in regards to Fan Y at all, if Fan Y is making non-commercial use of the mark. Which is what being a Fan would seem to imply. This is the source of your PR disaster; you appeared to indicate you were trying to prevent non-commercial use of your mark, hence the title of this thread.

 

[S'mon]

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.

I'll email about this point & take it off-list.

 

[S'mon]

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.

That's right - a similar mark for identical or similar goods/services can infringe, if you can show a likelihood of customer confusion. In the UK this falls under section 10(2) of the 1994 Trade Marks Act.

 

[S'mon]

However, the USPTO has officially accepted that the Army Builder mark is *not* descriptive.

No they haven't.

 

[Perram]

This thread seems to have reached the point where what remains is a clash of opinions. Everyone is entitled to their own opinion, and it's unlikely anyone is going to change theirs at this point. So I'm going to step out and allow those who remain interested to continue the discussion.

Please understand that I don't make the rules for how trademarks work. However, a company with a trademark is obligated to abide by those rules. And so we follow the rules as outlined by our IP attorney.

Do I enjoy having to do any of this policing stuff? Not in the slightest. Would I rather be working on a cool new feature for one of our products? Absolutely. Do I have a choice in the matter? Not really, unless you expect the company to abandon the trademark, in which case the company stakeholders would be mighty upset.

Thanks for everyone's contributions to the thread and the heartfelt discussion. It's been most illuminating!

Well here is a question I have for you:

What do you want? What made you decide to take this path? You keep telling us what you don't want to do, but not what you want to do. You could have simply gone after 'Jim's Army Builder' if you wanted to show that you defend your patent. You could have let your lawyer do his thing and actually send out C&D letters to actual solid cases of infringement.