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

[S'mon]

Trademarks like VISION CENTER have been found to be descriptive. They describe one or more characteristics of the goods or services, but they're not generic. This is where, it seems to me, ARMY BUILDER falls.

Bravo Steepike, you do a better precis than 90% of my Undergrads could manage. But I think Army Builder is a much weaker mark than Vision Center. People don't talk generically about going to the "vision center" for new glasses, they go to the optician's. Whereas it's clear that people do talk about using generic army builder software to build their army rosters.

My knowledge of army roster building software doesn't extend much beyond this thread, but it seems to me that if the USPTO did any kind of enquiry on marks the way European TM offices do then this would not have been registered. As it is they leave it 5 years for challenges to emerge, and this area of business is obscure enough none did, so the mark is currently valid (can't be struck off without a court action). If it came to court though I'd think the balance of probabilities would be heavily against it surviving.

BTW here's some advice on s. 15 Incontestability - note that a filing of Incontestability does not prevent a challenge for genericness or functionality:
Incontestability: Does Anybody Really Understand It? | The Association of Patent Law Firms

 

[Jared Rascher]

While I respect the Lone Wolf presence to defend their position, and also greatly respect the amount of potential grief that could open up, I have to say that I'm not thrilled to have all of the concerns expressed on the forums here catagorized under "you don't understand" or "you are confusing multiple issues."

I have zero problem with the fact that they have trademarked Army Builder. I have zero problem if they had asked Privateer to change, for example, a reference that they themselves made to their own program as an "Army Builder." I do have a problem with them demanding that those two words cannot appear together without a trademark, or that they cannot appear on the forums at all, and Privateer has to bear the brunt of editing their boards because of this.

I can understand that even "free" sites might be a problem for Lone Wolf, but again, that isn't Privateer's problem. At worst I could see asking specifically for Privateer to strike a link in a forum leading to a free resource that infringes on a name, for example.

While it is a slightly different issue, this would be similar to WOTC not only asking Ema's Character Sheets to take down their character creation section, but also to go onto, say, EN World and demand that the site edit all references to the site. If you have a "little guy" infringing on your trademark, its your job to track them down and tell them what they did wrong, not someone that may or may not even know what they are talking about on an internet forum.

Also, while I can appreciate that Lone Wolf has had legal counsel on the matter, it seems to me that its not much of a leap of the imagination to realize that even lawyers can make mistakes regarding the law, so I'm not completely convinced that this is the One True Way of having handled this situation.

 

[rjdafoe]

Well, the USPTO disagreed with you in this matter.

As for "army builder" being a common term long before the company existed, I invite you to provide any evidence of this. For example, you can check the archives on YahooGroups and look for the "direwolf_wh" forum. This forum was one of, if not "the", primary online group for discussion of the Warhammer Fantasy game from GW. The available archives only go back to 1999, but that was one year after we released the Army Builder product. Do a search for "army bulider". You will find no references to that term that are not specifically related to our product. There are many different terms used for roster construction in those archives, but the term "army builder" is not among them.

I can't point to a specific instance, but I can assure you this was the case. Before the internet, there were BBSs and I can say for certain, that army builder was used frequently when building armies for miniature games through FidoNet messages, WWIV network messages and any number of other BBS networks that were in use back then.

I am sure somebody, somewhere has some archive of these messages. I assure you - I am not imagining this. I PARTICIPATED in this in the mid 1980s into the early 1990s at conventions, BBS messages, and face to face converations.

EDIT: While I do not care wether you have a trademark for army builder or not, you must know that what you wrote above is wrong, if you where ever into miniature games before. I don't know if there was specifically software called that, but it was certainly in the description of alot of things that helped you to create armies.

 

[JohnRTroy]

My knowledge of army roster building software doesn't extend much beyond this thread, but it seems to me that if the USPTO did any kind of enquiry on marks the way European TM offices do then this would not have been registered. As it is they leave it 5 years for challenges to emerge, and this area of business is obscure enough none did, so the mark is currently valid (can't be struck off without a court action). If it came to court though I'd think the balance of probabilities would be heavily against it surviving.

Maybe in Europe, but I posted several examples of descriptive trademarks in other posts. Just do a search for "builder" on the USPTO search form. Combinations of nouns and verbs work. There's enough legal precedent and practical use that I don't see this being a special case.

 

[S'mon]

Also, while I can appreciate that Lone Wolf has had legal counsel on the matter, it seems to me that its not much of a leap of the imagination to realize that even lawyers can make mistakes regarding the law, so I'm not completely convinced that this is the One True Way of having handled this situation.

Even when lawyers get the law right, as in "You have a case against X" or "It's not illegal to do X", they can get the PR wrong. Public Relations is not their job.

And they do get the law wrong - well into the '90s I'd still be talking to US lawyers who thought copyrights had to be registered, for instance. And I remember talking to a T$R in-house lawyer ca 1995 who seemed genuinely convinced that copyrights had to be proactively enforced, Trade Mark style.

 

[Dragonhelm]

If you don't want people using your product's name in a generic manner, my suggestion would be to come up with a more original - and thus less generic - name for your product. Given your company's name, something like Wolf Players' Army Construction Kit (a.k.a. WolfPACK) ought to do. And seeing as it took me less than a minute to dream that name up, surely someone on your team can do better.

I'd like to second this. WolfPACK would be a great name for Lone Wolf's product. They could put, "The Original Army Builder" as a tagline for the product as a nice tie-in. In essence, you relaunch the brand with a spiffy new name and then say that you incorporated the suggestion from the public in order to help with the PR.

If Lone Wolf did that, and issued an apology, they might come out of this with a much stronger trademark that wouldn't cause these issues and, hopefully, with a better image. People are more likely to forgive companies that admit mistakes. Otherwise, I fear that Lone Wolf has crafted an online legacy that they really don't want.

Again, I believe success comes from building your own house and not tearing down the houses of others. Just make certain that the house you build is not the doghouse.

 

[S'mon]

Maybe in Europe, but I posted several examples of descriptive trademarks in other posts. Just do a search for "builder" on the USPTO search form. Combinations of nouns and verbs work. There's enough legal precedent and practical use that I don't see this being a special case.

A mark can be descriptive and still valid, even in the UK (though apparently not EU-wide, going by the ECJ finding in Doublemint), as long as the public has come to associate the descriptive phrase with a particular product. The example we use for our students is Sweet'n'Low for artificial sweetener. The mark still has to be capable of distinguishing one company's product from another company's, or else it's generic and not protectable.

Note that a publicity campaign to raise awareness can increase distinctiveness, and that is exactly what this thread is! I and lots of people who would previously have thought of 'army builder' as a generic term, now associate it with this product. Even bad publicity can be beneficial, for TM distinctiveness.

 

[JohnRTroy]

If Lone Wolf did that, and issued an apology, they might come out of this with a much stronger trademark that wouldn't cause these issues and, hopefully, with a better image.

You might have a point about apologizing to Privateer, but they don't need to apologize for getting the Trademark itself.

Plus, they've likely invested time and money get this trademark. They should give it up for the sake of a few people going off the wall, whose potential "boycott" might only end up being a couple dozen people?

 

[Obryn]

I'd like to think the latter, but my experiences over the fallout from this matter imply the former may be much more common. As you can imagine, that's extremely frustrating.

I think you may be unfamiliar with the Internet.

-O

 

[jaerdaph]

As a tribute to Gary Gygax's memory, I am going to support a boycott.