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

[evilref]

Second, invoking the DMCA directly was technically incorrect, as I should have referenced it by analogy. That being said, there has been recent case law that has applied the principles of the DMCA to trademark infringement. The judge in the case where Tiffany sued eBay said that eBay would have certain obligations once directly notified by the trademark holder, "similar to the way the safe harbor provisions of the DMCA works". In hearing about this from our attorney awhile back, I misinterpreted his comments, so I believed he had indicated we could now directly reference the DMCA.

I'm surprised at you referencing the Tiffany case as, well, it rather runs counter to your argument.

1) The Digital Millenium Copyright Act is not mentioned anywhere in Judge Sullivan's summation. The quote you use also does not appear anywhere within the Judge's findings. I don't know where you got it from, but it runs contrary to the findings of the Judge. I suggest you read the Judge's comments as they're a very clear walkthrough of trademark law as it pertains to the tiffany versus ebay case.

2) The Tiffany versus Ebay case is a very different situation. In the one it's exactly the sort of thing Trademarking is there to protect against. Counterfeit goods being sold under the Tiffany mark. That's a clear trademark violation. As opposed to your situation which has general descriptive use of a mark, and/or non-commercial use. Like Tiffany you targeted the venue this takes place in rather than the trademark violaters themselves. But unlike ebay, PP are and were not supplying these goods. As such there's no direct application, therefore no inwood test and, under current law, nothing you can directly charge them with (you could certainly try, but your case would be far weaker than Tiffany's).

2) The Tiffany case revolved around fraud and counterfeit goods being sold under its mark, with Tiffany alleging that the steps taken to prevent this by Ebay were inadequate. I'm sure you're not suggesting that anyone was commiting fraud in your case?

3) Lastly, Tiffany lost. What's more the Judge's summation includes something of relevance to your case:


Nevertheless, the law is clear: it is the trademark owner's burden to police its mark, and companies like eBay cannot be held liable for trademark infringement based solely on their generalized knowledge that trademark infringement might be occurring on their websites.

Edit: Just to clarify this, that doesn't then extend that PP would be liable even if they knew of specific incidents. You'd need to prove they were liable for contributory trademark infringement. This would probably fail, according to my reading of the precedents, given the nature of PP as opposed to those companies who have been found guilty of contributory trademark infringement.

I think you might need to go back to the lawyer again as it would appear there's still some confusion somewhere at your end.

None of which is relevant to naming your product for what it does, then trademarking so other people cannot describe similar products in the same succinct fashion. As far as I know, "army list calculator" is the only synonym that has any traction as a useful alternative. What happens when someone trademarks Army List Calculator? Then where are we?

I like Army Planner which I've read elsewhere. We also have Army planning software, army building software, army plans, Build-a-army etc etc.

 

[Kafen]

Speaking directly to the context of the original request to the other Forum, I have a hard time making sense of the transition from forum post to product in terms of trademark case law.

Just wondering...

 

[rjdafoe]

I started playing miniatures games in the early 90s and the term was not used in any environment I participated in. I gamed with multiple groups across the US in the mid-90s and don't remember encountering the term. I also participated on a number of online forums focused on miniatures games and I think I saw the term used once. Our IP attorney was an avid wargamer from back in the 80s and he definitely believed the term was valid to pursue as a trademark. In past conversations, he has said that he doesn't remember hearing the term used, and we're on opposite ends of the US.

Now, I'm not saying that the term wasn't used anywhere. I'm simply saying that it was not used widely enough to make the radar of myself, our IP attorney, or the USPTO examiner charged with vetting the mark.

So what I said was accurate, to the best of my knowledge. In all the circles I interacted with, the most common terms were "creating a list" or "making a list", sometimes with the word "army" inserted.

Fair enough. What I interpreted was that you were attributing your product to having created the term.

I do have to say though, the words army building was way more widespread than army builder. I just can't imagine that this was an accident as amy builder is a logical conclusion of army building, or building an army or any other related terms.

Good luck at any rate, for I think you will have an uphill battle for that name. In todays world, I think less of these generic names would happen with the internet so common. But way back when there was less communication. Especially if it was thought out of what you could force people to do in the future becuase you "owned" a description of a generic product. (EDIT: That is not to say this is what you are doing - these things seem to be all too common these days)

 

[JohnRTroy]

A question arises...

Say for some unknown reason I decide to trademark the name "John R. Troy Donkey Bong", with full and free permission from a (in this case hypothetical) John R. Troy I happen to know.

Do all the other John R. Troys in the world have to give me their permission as well? And what if one of them doesn't?

Worse yet, what if it's my own name I'm using? Can someone else with the same name deny me the right to use it as I wish just because they disapprove of such use?

Names are tricky.

The primary concern of names is consumer confusion. If there are other John R. Troy's in the world, the use of JRTDB (edited for ease) as a trademark is probably not going to be opposed. (For instance, there is a JohnTroy.com devoted to some signer who is not me. I'm not famous at all. (The only reason I even use my "R" is because my Dad had the same name and it gets confusing if you omit that going to banks and doctors.)

But there's a fame factor involved. Anybody trying to create a trademark with the name "Paul Newman", even if it was created by a Paul Newman, might have trouble if the estate of actor Paul Newman, who also has businesses like Newman's Own, objected. Use of the word Trump or Disney would probably at least be challenged, as both single names have become synonymous with the companies and the people involved.

It would depend on the field involved. Disney is famous for multiple endeavors, and the first thing most people across the world would think of them first when they see anything is the guys who made Mickey Mouse.

However, some people have narrower realms of fame. Gygax, for instance, is a common Swiss name. There are companies called Gygax, so Gary's estate can't complain about a Gygax watches. (EGG did have a gygax.com at one point, then lost it to those guys after retiring a web site).

However, if somebody in the US named Gygax tried to create a trademark called "Gygax Creations" that developed computer or tabletop RPGs, and it wasn't clear that it was by some other Gygax, Gail and Co. could complain. If the guy used his full name "Frank Otis Gygax" in the Trademark, then he'd had more protection.

The key is potential consumer confusion.

 

[JohnRTroy]

For those looking for more information (and who feel like reading a lot of stuff) about Trademark Law (at least how it's applied in the US, including a lot of references to court cases and specific examples), I highly recommend this link.

US TMEP 2009 Chapter 1200

 

[S'mon]

But there's a fame factor involved. Anybody trying to create a trademark with the name "Paul Newman", even if it was created by a Paul Newman, might have trouble if the estate of actor Paul Newman, who also has businesses like Newman's Own, objected.

Are you a lawyer? As someone whose surname is Newman and who teaches TM law, I assure you that TM law entitles me to good faith use of my own name, should I choose to launch a range of vegetable condiments. Of course that might not stop someone 'objecting', but the law is clear.

Edit: You're entitled to your opinion of course, but you've been making a lot of assertive-sounding statements on this thread that seem unduly erroneous even for the Internet.

 

[S'mon]

I'm surprised at you referencing the Tiffany case as, well, it rather runs counter to your argument.

1) The Digital Millenium Copyright Act is not mentioned anywhere in Judge Sullivan's summation. The quote you use also does not appear anywhere within the Judge's findings. I don't know where you got it from, but it runs contrary to the findings of the Judge.

I'm very glad to hear that as it didn't seem like something a sensible judge would say even obiter, being wide open to misinterpretation.

 

[JohnRTroy]

Are you a lawyer? As someone whose surname is Newman and who teaches TM law, I assure you that TM law entitles me to good faith use of my own name, should I choose to launch a range of vegetable condiments. Of course that might not stop someone 'objecting', but the law is clear.

Edit: You're entitled to your opinion of course, but you've been making a lot of assertive-sounding statements on this thread that seem unduly erroneous even for the Internet.

Well, I am trying to be informed. I spent last night reading the entire link I showed above.

You can use your own name, but there can be objections based on other factors.

First, in the US, you can't register a trademark that is solely based on a surname. There's a whole set of rules on that. So, your Trademark can't be simply "Newman". If you weren't careful, having a salad dressing might imply False Suggestion of a Connection. They might also object due to the Fame Factor, or the Fame of the Mark.

Of course, I have no idea what the rules are in the UK and/or if Newman's stuff is as popular there as it is here. I can bet the names Trump and Disney might be much more protected due to their use in commerce. And keep in mind I'm talking about Federal Registered Trademark, and not necessarily common-law interpretations.

As you teach TM Law in the UK, I'd be happy to see any links or any quotes from the sources that you find from your interpretation. After all, one of the things we're all her to do is learn more information. I'm always willing to learn the facts.

 

[pawsplay]

Just because YOU and a handful of others here think "Army Builder" is a stupid name for this product and somehow "douchey" to trademark it . . . doesn't make it so.

And conversely, the chorus claiming otherwise doesn't make it okay. I'm not asking for a show of hands. I'm saying, "This is not a good thing to do."

John has proved multiple times in this thread that he knows what he is talking about . . . it's getting sad to hear the repeated cries of foulplay over the naming of the software and the trademarking of that name.

That's not my impression. At all. So far, he's proved that several lawyers felt the need to correct him on some points, and he's argued at length with me on a position I don't hold.

LoneWolfDevel made the mistake of sending a letter he should have let his attorney send and used some incorrect terminology. He FUBARed the situation and created a mini-internet firestorm when it could have been handled much more elegantly . . . . but he and his company hasn't really done anything morally or legally wrong.

Other than trademarking a generic term, threatening people with legal action over descriptive uses of the term, and involving uninvolved third parties in trying to prop up their case through the legal action. Is trying to un-generic the generic unethical? I'm going to say, yes, yes it is.

When people try to get IP rights to the dirt we walk on and the air we breathe, it makes me angry. In this case, it's a small player, but I don't hold a different opinion just because the people affected is a small group of people.

"Illegal" is a red herring. Apart from counterfeiting and certain willful acts, there are not a lot of crimes involved in trademark law.

 

[S'mon]

As you teach TM Law in the UK, I'd be happy to see any links or any quotes from the sources that you find from your interpretation. After all, one of the things we're all her to do is learn more information. I'm always willing to learn the facts.

The UK Law is in the Trade Marks Act 1994:

"S. 11 Limits on effect of registered trade mark...

(2) A registered trade mark is not infringed by—

(a) the use by a person of his own name or address"

Trade Marks Act 1994 (c. 26)