TSR "TSR Games is Back"... how come they can use TSR's logos?

[pemerton]

TSR Games is Back

The studio behind the original Dungeons & Dragons has returned to Lake Geneva, Wisconsin, under the guidance of Gary Gygax Jr. with the help of Wonderfilled,...

www.pr.com

E. Gary Gygax Jr. and others are heading a new company called TSR Games, and I'm surprised to see them using the old TSR logos.

I vaguely understand there is something in US trademark law about losing a trademark through disuse, but Wizards of the Coast is selling PDFs with the TSR logo right now.

Anyone informed enough to be able to explain why this wouldn't get them in trouble with WotC, and/or why that trouble might be worth it for a new company?

A bit late to this party, and there have been a number of other threads where you might have found an answer to your question.

But my (tentative, not fully expert, but not completely amateur either) view is that (i) WotC still owns the copyright in those illustrations that constitute those non-word trademarks, and therefore (ii) the new TSR (3SR) is violating WotC's copyright in reproducing those illustrations in its own trademark applications and in reproducing them on its products.

This is different from the word trademark "TSR" which can't itself be the object of copyright, and which WotC has not registered. There are complexities here too, though, because in US law you don't need to register a trademark to enjoy property in respect of it (though registration can generate legal advantages) and WotC is still using the TSR trademark (both the word trademark and some of those illustrations) in its own trade (ie on some pdfs that it is selling). I'm not sure if WotC's continued use is enough to preclude 3SR from using the same TM, or to contest 3SR's registration of the TSR trademark. I'm pretty sure, though, that it's enough to mean that 3SR can't have any complaint about WotC's ongoing use.

(My understanding is that when TSR 2 - now rebadged as Solarian - registered the word trademark TSR, WotC was not selling those PDFs and hence was not using TSR as a distinguishing mark in the course of trade. 3SR thus finds itself in a different position from what that earlier company was in.)

The summary version is this: 3SR seem to be infringing copyrights owned by WotC, and perhaps infringing a non-registered trademark owned by WotC. Or in other words, their IP situations seems to be as bad as every other part of their situation.

 

[darjr]

Something like that, yes.

Wait, they were using it, just didn’t register it.

those things are different? Right?

 

[Bolares]

Aw man... I got all excited thinking the trash fire just got some new fuel...

 

[Snarf Zagyg]

Wait, they were using it, just didn’t register it.

those things are different? Right?

Marks (trade, service) are acquired in America through use under the common law.

You can register a mark that you are using through a state (or states), or through the federal government - or some combination.

Registration entitles the mark holder to certain advantages, but is not required. Use of the mark is what matters.

 

[pemerton]

@Snarf Zagyg

Are you able to add anything about 3SR's (purported) registration, as non-word trademarks, of illustrations/images in which WotC enjoys the copyright?

 

[Snarf Zagyg]

@Snarf Zagyg

Are you able to add anything about 3SR's (purported) registration, as non-word trademarks, of illustrations/images in which WotC enjoys the copyright?

Wouldn't want to comment specifically, but supposedly, if a company were to ... federally register a bunch of trademarks in August of 2020, with TSR (the word mark, and associated graphics, including the classic The Game Wizard logo), and they stated that the first use of this in commerce was in 2021...

Well, there would be some issues given that assumedly certain graphics used to identify the mark were likely works-for-hire and likely transferred as IP (copyright) when TSR was sold.

But c'mon. These guys seem reputable and like they have their act together, right?

 

[darjr]

Wouldn't want to comment specifically, but supposedly, if a company were to ... federally register a bunch of trademarks in August of 2020, with TSR (the word mark, and associated graphics, including the classic The Game Wizard logo), and they stated that the first use of this in commerce was in 2021...

Well, there would be some issues given that assumedly certain graphics used to identify the mark were likely works-for-hire and likely transferred as IP (copyright) when TSR was sold.

But c'mon. These guys seem reputable and like they have their act together, right?

Does WotC selling products with the logos on drivethru count as use?

 

[pemerton]

Does WotC selling products with the logos on drivethru count as use?

I'm not the person you asked, and am far from expert, but I think this would be something that would need to be pleaded and proved. I think the relevant question would be something like is the mark - the word mark TSR and/or non-word logos - a mark that distinguishes WotC's goods and services in the market into which they are being sold?

I don't know in any detail how one goes about answering this question, especially when what is being sold is an entitlement to download an electronic file, and on the website itself it is WotC (not TSR) which is flagged as the seller of the file (TSR only appears on the "cover" of the file itself). But here's a blog that talks in general terms about ecommerce and US-law trademark rights.

I've just checked out the Star Frontiers page on DriveThruRPG, and its available in print. I don't know what difference that makes - I think not much because the cover of the book isn't encountered by the customer until after the transaction has taken place, and so the cover of the book is not itself part of what distinguishes the book in commerce. But I can think of some arguments that might push against the previous sentence (eg I might come to your house and see your copy of Star Frontiers with the TSR logo and think about buying it for myself).