TSR TSR (2) Confirms TSR (3)'s Acquisition of Trademark (Updated!)

Jayson Elliot registered the TSR trademark back in 2011 and used it to launch Gygax Magazine along with Ernie and Luke Gygax. The two Gygax's left the company a few years later after Gary Gygax's (co-founder of TSR (1) back in the 1970s) widow, Gail Gygax, forced the closure of Gygax Magazine. Then, earlier this year, TSR (3) swooped in on the TSR trademark, after Jayson Elliot accidentally let it lapse, as TSR (2) confirms:

We have owned the TSR trademark since 2011. Last year, we missed a filing date, and another company registered it, though we are still using it in commerce. While we could win a lawsuit, we frankly don't have the money to litigate. So, we're licensing it back from them.

As a result, there are two companies now using the name TSR. You can tell when it's us because we're the only ones using the new logo.

They're opening a museum in Lake Geneva at the old TSR house, and we wish them success with it, it's important to celebrate the legacy that Gary Gygax created.

Ernie Gygax, formerly of TSR (1) under Gary Gygax, then working with Jayson Elliot as part of TSR (2), is one of the founders of of TSR (3), and confirmed in his (now infamous) interview --

The other TSR is a licensee because [Jayson Elliot] let it lapse. But he had absolutely ... love for the game and the products. There was no reason to say 'oh you've screwed up, oh it's all ours, ha ha ha ha!' Instead, Justin [LaNasa] came to him and said ... we love that you're doing Top Secret things, we have a much broader goal for the whole thing. But there's no reason for you to stop or even have any troubles. Justin said, I'll take care of the paperwork, you just give me $10 a year, and you put out all this love for old school gaming that you can. And we appreciate that you were there to try and pick up things, and you produced Gygax Magazine, for in its time that you're also working on a game that you love to play ... because Top Secret was Jayson's love, as a young man.

TSR (2), still run by Jayson Elliot, publishes Top Secret, and is not connected to TSR (3) other than now having to license it’s own name from them. TSR (3) has also registered the trademark to Star Frontiers, a game owned by and still currently sold by D&D-owner WotC.

In other news the GYGAX trademark appears to have lapsed.

UPDATE! TSR (2) has decided NOT to license its own name from TSR (3):

Update to our earlier tweet - we will NOT be licensing anything from the new company claiming rights to the TSR logos. We are not working with them in any fashion.

 

[QuentinGeorge]

Thinking of starting TSR (4), can I license the name too?

 

[Enevhar Aldarion]

Not being a "raving bigot" is kinda damning with faint praise though. Most people aren't "raving bigots" but are still holding onto some ... questionable beliefs.

The "quiet" bigots and sexists and phobics will never go away. We just have to hope they do not let it cloud how they interact with the world at large. It is the ones who act out their thoughts and private beliefs that the rest of us have to find a way to deal with and neutralize in a non-violent way and somehow keep out of positions of power.

 

[darjr]

deleted

 

[Gradine]

Not being a "raving bigot" is kinda damning with faint praise though. Most people aren't "raving bigots" but are still holding onto some ... questionable beliefs.

And if I can be blunt, from where I'm standing he doesn't even clear that incredibly low bar

 

[Olaf the Stout]

I think Jayson Elliott needs to do one of two things . . .

1) Start a gofundme for legal fees to challenge TSR 3.0's registration and use of the TSR trademark, name, and logos. Or . . .

2) Just drop the TSR name himself, and put as much distance between himself and this dumpster fire as possible.

Yep, although it seems that Ernie doesn’t respect things like copyright and trademarks anyway.

 

[Olaf the Stout]

Sigh....these are comments he hasn't really said in the past with this much vitriol. He needs to get away from LaNasa and the toxic people who keep pushing him.

He needs an intervention. LaNasa isn't going to provide him the ability to take over his father's legacy or become the next great Gygax creator.

I mean LaNasa is the same guy who forced his female employees to wrestle in grits to see who would get a promotion. That's what kind of guy he is. Ernie would be best served to get as far away from him as possible.

https://www.newsobserver.com/news/state/north-carolina/article240600416.html

Ernie’s not a little kid. The dude is in his 50’s or 60’s. You sound like you’re trying to make Ernie out as a poor misunderstood person who was easily led astray, rather than a grown man who made a number of anti-trans comments (among several other questionable things).

 

[darjr]

LaNasa told the Capt that Tim was comming on board but we now know that Tim wasn't even asked.

Go to time stamp 8:20 if the link below doesn't work.

 

[pemerton]

could anyone who is a lawyer confirm the situation if you trademark the name of someone else's pre-existing business because I'm not sure that TSR (2) aren't being conned here in addition to everything else.

Huh. TSR are putting in trademarks for this stuff. Exhibit 1. Exhibit 2. I'm curious of the status of making a trademark on art you presumably don't own.

I said a bit about this in one of the other threads. (I think the one that didn't get locked.)

My view - tentative, as I'm not an IP expert, and doubly not a US IP expert - is that TSR(3) are infringing WotC's copyrights in using those logos for trademark filings and on their products. WotC's copyrights will have been acquired from TSR as part of their purchase of the TSR assets.

A work can be protected by both copyright and by trademark. If I design a logo for my company, I own the copyright to that artwork. I can then register that logo as a trademark as well, granting me a separate set of intellectual property rights over that logo. If I don't register the trademark or allow the trademark to lapse, I still own the copyright of that image.

This distinction is what will be important in what ends up happening with this mess. Justin LaNasa and Ernie Gygax can register the trademark for "TSR", but that does not give them the copyright to TSR's work nor does it make them the same company founded in 1973 by Gary Gygax and Don Kaye. They also do not have the copyright to the old logos of TSR just because they own the trademark "TSR". The copyright to those logos resides with the current rights-holder, which (unless they're some weirdness going on) would be Wizards of the Coast and/or Hasbro. This is why Wizards of the Coast can continue reprinting the old Basic, 1st, and 2nd Ed Dungeons & Dragons materials with the TSR logo as-is - they own the copyright to that logo even if they've allowed the copyright to lapse.

Agreed. This is why I have doubts about the legal permissibility of the use that TSR(3) is making of those old TSR logos.

So, if I'm understanding correctly, Wizards could sue TSR(N) over the copyrighted logos even though they no longer hold the trademark?

That's my view - or maybe it would be better to say that's my tentative conjecture, in the absence of correction by someone with a better knowledge of the relevant law.

Somewhere in one of the other threads, I believe someone mentioned that failure to defend a trademark, esp. one where the registration has lapsed, could actually be used of evidence that you no longer have a claim to it. If that's true (and I'm guessing it's a "Well, it's complicated" answer), Hasbro might have to go after the TSRs who are trying to use them. Is there any accuracy to that?

How does the Star Frontiers trademark enter into this? Since Wizards is still selling books with the Star Frontiers name on them (via DriveThruRPG) does it muddy things up when/if TSR Games (LaNassa) starts publishing their own Star Frontiers books?

Failure to defend a trademark is not the same as letting a registered trademark lapse. This is actually a very good example, actually. Wizards let the registration lapse even though they continued to use the trademark for reprints. That is not a lack of defense of the trademark in and of itself because they continued to use it and their rights are protected under common law.

When TSR Games (Elliot) registered the trademark in 2011 and began using it and Wizards/Hasbro did not respond to their use of the trademark, that is a failure to defend the trademark. Another company in the same industry began using it.

However, that would be a defense that TSR Games (Elliot) or TSR Games (LaNasa) could use if they are sued on trademark grounds by Wizards/Hasbro - that by not defending the trademark from 2011 onward, they lost the right to protection under trademark law. Or at least lost protection against TSR Games (Elliot) but they could argue they're defending the trademark against TSR Games (LaNasa). And both arguments are potentially valid, it depends on what arguments are made and what a judge decides. This is what I mean by intellectual property law is complicated - both are right and both are wrong depending on how the facts are presented.

I speculated a bit about this on the other thread.

I think WotC are entitled to trade - ie sell Star Frontiers and other TSR-branded materials via DriveThruRPG - using the distinctive mark that they have been using. I don't think the registration by TSR(3) can oblige them to give up that trading. Whether it entitles TSR(3) to concurrent use of the mark I'm not sure.

TSR(2) - as per the OP of this thread - has said that it could fight for the right to keep trading as TSR if it wanted to, but for the sake of avoiding a fight is prepared to pay a rather nominal licence fee. I think TSR(2) is right to think it could keep trading. Whether they, or WoTC, could block the new TSR(3) is what I'm not sure about. I'm not sure exactly what suite of rights travels with registration in the US when that registration is subsequent to someone other traders use of the same, but non-registered, mark.

 

[pemerton]

There seems to be an element in the RPGing community that thinks it reinforces its OSR credentials by linking that style of play to reactionary political/social views.

One can see the "moderate" side of this every time someone refers to the AD&D random harlot table with fondness or levity.

TSR(3) seems to be moving beyond "moderate" to full throttle reaction.

 

[Zardnaar]

Last OSR material I bought was 2014.

I like the playstyle but never ran it like these muppets seem to think one should run a game.