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<blockquote data-quote="S'mon" data-source="post: 5078309" data-attributes="member: 463">Some IP attorneys may claim that offering of free fan-created software constitutes 'commercial use' of a mark: use in the course of a trade offering goods or services.&nbsp; My reading of the Lanham Act doesn't support that interpretation, but I am not an expert on it (I spend my time on the UK's EU-derived 1994 Trade Marks Act) and certainly some US judges seem remarkably willing to stretch the statutory definition.Secondly, as a practical matter you don't want people using your mark as a generic term for a certain sort of software; you have a problem because your mark is highly descriptive of what that software does.&nbsp; But technically people could use the mark descriptively &quot;I was so hungry, I hoovered up that seafood&quot; while the mark itself remains distinctive.&nbsp; So, IMO:&nbsp; &quot;I use Zappot Beeblefutz software as my army builder&quot; probably does not directly threaten your mark (this is a finely graded area though, no guarantees).&nbsp; And anyway it's not something you can or should take action against: here the phrase is used descriptively, which is a defense to an allegation of TM infringement, not distinctively, as a mark of origin.(Incidentally, in the UK TM owners cannot lose their mark because it's used generically by the public, as long as other businesses don't use it generically).None of this is to say that you should not take action against a product marketed by another company as &quot;Zaphod Beeblefutz Army Builder&quot; - you need to do that to avoid genericisation of the mark.As a practical matter, I suspect that the commercial benefit to you of maintaining a monopoly over the Army Builder mark may be outweighed by the negative publicity that doing so gets you, but that's your call to make.</blockquote>

[QUOTE="S'mon, post: 5078309, member: 463"] Some IP attorneys may claim that offering of free fan-created software constitutes 'commercial use' of a mark: use in the course of a trade offering goods or services. My reading of the Lanham Act doesn't support that interpretation, but I am not an expert on it (I spend my time on the UK's EU-derived 1994 Trade Marks Act) and certainly some US judges seem remarkably willing to stretch the statutory definition. Secondly, as a practical matter you don't want people using your mark as a generic term for a certain sort of software; you have a problem because your mark is highly descriptive of what that software does. But technically people could use the mark descriptively "I was so hungry, I hoovered up that seafood" while the mark itself remains distinctive. So, IMO: "I use Zappot Beeblefutz software as my army builder" probably does not directly threaten your mark (this is a finely graded area though, no guarantees). And anyway it's not something you can or should take action against: here the phrase is used [B]descriptively[/B], which is a defense to an allegation of TM infringement, not [B]distinctively[/B], as a mark of origin. (Incidentally, in the UK TM owners cannot lose their mark because it's used generically by the public, as long as other businesses don't use it generically). None of this is to say that you should not take action against a product marketed by another company as "Zaphod Beeblefutz Army Builder" - you need to do that to avoid genericisation of the mark. As a practical matter, I suspect that the commercial benefit to you of maintaining a monopoly over the Army Builder mark may be outweighed by the negative publicity that doing so gets you, but that's your call to make. [/QUOTE]

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