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

[JohnRTroy]

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.

You missed Army Maker. In short, I'd agree with you if it would clearly make it hard to communicate what a product does, but army constructor doesn't feel like a neologism, it's definitely not what I would call and awkward euphemism. We'll just have to agree to disagree on this.

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.

This, I believe, would not contribute to so-called generizide. As long as Lone Wolf is educating people, even if you disagree with the fact that it's a trademark, by posting your opinion her in this forum you recognize it as a trademark. The existence of this very thread means more people are becoming aware. I may be wrong about this, but having "contempt" for a trademark is not the same as not recognizing a trademark. I don't think a judge or jury would be sympathetic to someone actually trying to make a trademark generic.

(People should never assume these posts would ever be ignored by a lawsuit. When I looked into the WoTC lawsuits, I noticed at least one defendant's post was used in the complaint on a message board.)

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.

Understood. I'll gladly admit to being wrong about that.

It may not have legal value, but my own judgements come if a descriptive trademark is good or bad comes from how easilly you can use another term to describe something. But then again, that's not a legal opinion.

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

People need to know that serious Trademark violations like that do have severe consequences. Passing off your goods as somebody else's is akin to Identity Theft.

There was a family that owned a Kentucky Fried Chicken franchise and had three restaurants in the surrounding towns around here. At some point, there was some dispute between the family and KFC, and they lost the rights to KFC. The family continued to operate as KFC for over a year. Finally, US Marshalls had to come in and seize all the stuff that indicated the KFC trademark or franchise--signs, any products with the trademarked logos, etc.

*Wow, Playboy sure like to litigate!

Well, I believe in part Playboy wants to prevent their trademark from becoming a generic term for nude cheescake magazines or porn, which it was in danger of, at least back when there were fewer of those types of magazines. So I can understand why they take those steps.

 

[guivre]

This, I believe, would not contribute to so-called generizide. As long as Lone Wolf is educating people, even if you disagree with the fact that it's a trademark, by posting your opinion her in this forum you recognize it as a trademark. The existence of this very thread means more people are becoming aware. I may be wrong about this, but having "contempt" for a trademark is not the same as not recognizing a trademark.

Your belief is incorrect. A trademark making it's way into common usage is precisely something that will cause it to be cancelled. Here is a list of examples: List of generic and genericized trademarks - Wikipedia, the free encyclopedia

In this case the phrase already is common usage and has been for a long time completely independent of this product.

I don't think a judge or jury would be sympathetic to someone actually trying to make a trademark generic.

(People should never assume these posts would ever be ignored by a lawsuit. When I looked into the WoTC lawsuits, I noticed at least one defendant's post was used in the complaint on a message board.)

I guess we'll see if I care enough to make my own army builder out of principle...and they have the bad sense to attempt a lawsuit over it.

 

[JohnRTroy]

Your belief is incorrect. A trademark making it's way into common usage is precisely something that will cause it to be cancelled. Here is a list of examples: List of generic and genericized trademarks - Wikipedia, the free encyclopedia

The Wikipedia article is a little misleading. First of all, a lot of the trademarks referenced in those cases were established ages ago, and in some cases due to other factors--aspirin for instance was made generic because of War Reperations against Germany after World War I, and it's still a trademark in many European countries.

The key test would probably be, in the US, Section 1209 of the TMEP. There are several examples there, including ones of generic (as opposed to descriptive marks). Based on what I've read--I'm not sure Army Builder counts as generic. There's a small subsection on generic case references.

I'm also not sure what test they use for generic or descriptive marks. Does it depend on the audience? If so, if only hardcore gamers use the term army builder (as opposed to the general public with thermos and yo-yo), if that small audience would be enough to prove a trademark generic.

I think the key thing in my mind is this--why is this suddenly being brought up now? The people who've built it have used this term for 1998, and got registration in 2004. That has given plenty of people time to challenge the trademark, and I'm pretty sure LWP did their due diligence, and it doesn't look like there's a lot of competition in the industry anyway for this tool, and I believe the representative when he said they have acted before on these violations. I feel if this was a serious issue the gaming community would have heard about it by now and protested earlier. I don't buy the argument that they "snuck this under the radar".

 

[pawsplay]

You missed Army Maker. In short, I'd agree with you if it would clearly make it hard to communicate what a product does, but army constructor doesn't feel like a neologism, it's definitely not what I would call and awkward euphemism. We'll just have to agree to disagree on this.

"Army maker" is not something I've seen used generically, but it is the name of a Warhammer 40K web-based utility. So I disagree that army maker is an acceptable generic term; it is neither used generically nor is it, it appears, generic.

 

[S'mon]

I'm also not sure what test they use for generic or descriptive marks. Does it depend on the audience? If so, if only hardcore gamers use the term army builder (as opposed to the general public with thermos and yo-yo), if that small audience would be enough to prove a trademark generic.

The gamers are the relevant market for the product, so yes it matters how they use the term. UK law is more rightsholder-friendly here - in the UK it would not matter that the market used the term generically, as long as rival suppliers did not do so. Plus the term has to be capable of being distinctive in the first place - "butter" for instance is not a distinctive mark if the product is butter.

 

[pawsplay]

The gamers are the relevant market for the product, so yes it matters how they use the term. UK law is more rightsholder-friendly here - in the UK it would not matter that the market used the term generically, as long as rival suppliers did not do so. Plus the term has to be capable of being distinctive in the first place - "butter" for instance is not a distinctive mark if the product is butter.

Well, that could always call it "dairy fat coagulation."

 

[nexgen]

Absolute Absurdity

Self-aggrandizement aside, LoneWolf, I'm a U.S. Attorney and MBA, so listen up. I'm not giving you legal advice (although I have a fairly strong opinion as to the strength of your claims); I'm merely offering you friendly advice: Back Off!

My clients protect their IP to protect the commercial viability of both their products and their goodwill. By attacking posts on company forums for references to armies and builders, you probably reduced the strength of your mark by reducing your image. From a corporate standpoint, you shot yourself in the foot and by backpeddling around this thread, you look downright comedic. (And stop thanking people for reading your posts. They're likely only doing so to find more ammo.)

The real aim of this thread should be to give a nod to PRIVATEER. They had a right to challenge the claim. Instead, they avoided looking equally ratty by simply removing all blunt references to your "trademark". In the end, PRIVATEER wins (and so do their stakeholders) and you lose. Good job.

 

[JohnRTroy]

As far as trademarks becoming generic, while there are some examples of where they successfully became generic, in many cases the conversion of them to a verb does not necessarily negate the trademark, if this particular list comes into play:

List of generic and genericized trademarks - Wikipedia, the free encyclopedia

 

[AngelDeath82]

Just posted this onto their forum after their post about this:

I think perhaps the biggest problem with sending any form of "Cease and Desist" type of mailing (be it formal or not) regarding this particular trademark is that you began by registering a trademark on a far too generic phrase to begin with. Yes, it makes it easy to remember, but because you used a name of such generic construction to begin with, you never should have been granted the trademark for it in the first place to be perfectly honest.
This really does seem like a issue revolving around common sense (which unfortunately, is not remotely common these days).

Hard to say how long it will actually stay up though :S

 

[Infiniti2000]

Infiniti2000, when asked to provide legal support for his claim

Nice. Ask a random internet guy to cite case law, and then call him out when he doesn't? Are you for real? Still, I'd feel better about it if you quote it in context, especially the fact that you provided incorrect advice/opinion. Specifically, your post #336 point #2.

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

It's perfectly legitimate with regards to any court of law from my understanding. Really, though, this is bad form to try and correct someone on language usage on the internet unless it grossly perturbs the meaning of a statement.

Prosecute - Definition and More from the Free Merriam-Webster Dictionary

You do accept that the respondent/defendant making commercial use of the mark is a prerequisite for a finding of TM infringement under the Lanham Act, don't you?

Quote me again, when I say "That would only be decided in a court of law." The plaintiff's (correct word?) attorney is the one that needs to justify the TM infringement. Not me, not the defendant. And, the court system (judge, jury, etc.) would be the ones to decide the application of law. Steerpike7, who apparently is a lawyer, already corrected you on this and you conceded so why belabor the point with an average Joe?

That is not helpful to me, and it wouldn't get you far in a court of law, either.

Exactly right and you seem to have forgotten that this isn't a court of law. So, have your opinions, but that's all they are, and no better than mine in a court of law.