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Message: <blockquote data-quote="S'mon" data-source="post: 5083326" data-attributes="member: 463">Hi lonewolf - I guess if I was your IP lawyer and arguing it in court I'd make the arguments he makes.  From my POV (not being a US attorney, but teaching TM law, and giving my academic perspective) I don't think there's any question that it's a descriptive mark (like 'Sweet'n'low for sweetener) rather than a merely suggestive mark (like 'Timberland' for boots, 'Playboy' for adult magazines), the software as I understand it helps people build/create their virtual army rosters.  Even 'Dungeons & Dragons' is a somewhat descriptive mark since the game normally involves both dungeons and dragons, but it's only weakly descriptive, edging into merely suggestive.  Your mark looks much further down towards the descriptive end since it directly describes what the product does.But I think there's a reasonable case that your mark has acquired distinctiveness through use, your point #3 above.  It's arguable, anyway.     Obviously the finding in Welles did not depend on the Playboy mark being generic, it's a valid mark, she was using the term descriptively to refer to the title which Playboy magazine had awarded her, and that's a fair use (it also touches on nominative use, ie referring to the actual product Playboy magazine by its own name).I got your email, I'm happy to talk with talk with your attorney if he wants to email me and I'll contact him if there's something I want to ask him. BTW when we're teaching our students, we teach them how to present a client's case with the best arguments available, but we also teach them to consider what arguments the other side would raise, and not to hide those from the client, because they don't want the client rushing off to court thinking he has a cast-iron case.  Our UK students are fine with this, but I've noticed that many foreign students are very reluctant to tell the (virtual) client something they think he doesn't want to hear.  So I hope your lawyer has given you both sides of the argument.  You may be wise not to want to discuss it on a public forum though!Edit:  I was thinking of emailing your attorney to see if he supported your earlier statement which appeared to say that descriptive use of a mark could infringe, but I was going through a bunch of US TM law cases* yesterday for my TMs-on-the-Internet LLM tutorial and it became very clear to me that descriptive use is still non-infringing in the US, so I'm taking it that he didn't say that.*Wow, Playboy sure like to litigate!</blockquote>

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