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We feel we would be remiss if we did not respond to statements which imply that Lone Wolf Development (LWD) "does not have much of a legal leg to stand on" or that the law is not favorable to our type of mark. Thus, for the sake of putting our side of this issue on the record, I spoke to our attorney, who has 21 years of trademark litigation experience. The following is a summary of his, and by extension LWD's, position on these matters.

The Army Builder trademark is in fact a Federally Registered mark, and as such has been held by the US Patent and Trademark Office to not constitute a generic or descriptive name. Registration creates a prima facie presumption that a mark is distinctive as opposed to merely descriptive. This presumption becomes incontestable, under Section 15 of the Lanham Act, after 5 years of continuous use in commerce, which is the case with the Army Builder trademark.

Our lawyer also points out that under trademark law, there is a very heavy burden placed on anyone seeking to declare that a trademark has lost its distinctiveness. Indeed, section 14(3) of that Act reads that "a registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service." To put this in simpler language, the burden of proof on a party asserting that a trademark has become generic is considerable, and courts are very loath to strip a trademark owner of its rights. In this regard it is well settled that trademarks are looked at as a whole against any potentially rival mark. They are not, as has been suggested, dissected into their component parts.

Furthermore on this point, a trademark does not become generic simply because it has some significance to the purchasing public as the common name for a product. To become generic, its principal significance, that is its significance to a majority of the purchasing public, must be that the trademark denotes the class of the product rather than the product itself. Some courts have gone even farther, holding that a party alleging genericness must show that to the relevant public the term has lost "all" its trademark significance or that a registered mark should be protected unless there is "conclusive evidence" of its having become generic.

This is certainly not the case here. Any search of the term "army builder" on the internet will find, for example, people inquiring about "army builder data files". In the vast majority of cases that we have reviewed, the responses indicate a clear understanding that what is being sought is data files for LWD's product.

Despite the strength of the Army Builder(R) trademark, if LWD wishes to maintain the Army Builder mark, it must police its use and educate the public on the correct usage of the mark. In this sense, LWD is "legally required" to take action. We certainly do not mean to imply that anyone is legally obligated to assert their rights, however failing to do so does have potential legal ramifications. Thus, to the extent that LWD was also aware of misuses of the term in a generic manner, it also sought to educate the public as to the proper use of its mark. This is consistent with the manner in which Xerox, Google and other companies routinely seek to instruct the public that a trademark is a proper adjective which modifies a noun and should not be used as a verb, etc. To say that LWD is absolved of this duty because we are a small company and not in the same league as Xerox or Google is just bad legal advice. The same laws apply to us as to them.

LWD is fully aware that descriptive terms are available for use by the public to describe their products and services in marketing them, provided that the words are used in their primary or descriptive sense and are not used deceptively or untruthfully. Thus, LWD has no beef with anyone claiming that their product's function is to "build army lists." On the other hand, naming a rival program "Joe's Army Builder" or "Army Builder 2010" would be considered an infringing use and be subject to legal action.

The fact is that LWD sought Privateer Press' permission to use Privateer's forum to instruct the public on these issues, or to be advised whether Privateer would prefer to do that job itself. LWD in no way requested, demanded or agreed with the "drastic" policies that Privateer Press claimed it was being compelled to implement. To the extent that any ambiguity existed on this point, LWD followed up its initial letter with several clarifications. Some were sent privately to PP, while others were posted on PP's forums, the latter of which were immediately deleted by PP, presumably to preserve its narrative of what happened.

We note that PP did not in fact take many of the drastic actions it claimed it was being compelled to take. As a search of the PP forums will show, the term "army builder" is not in fact being filtered and/or replaced with another term. This is just as well, as LWD does not endorse or condone the actions that PP claims it was being required to undertake.

On the other hand, where infringing use of the Army Builder mark is taking place on a public forum, LWD does reserve the right to contact the forum owner and demand that such uses be addressed and corrected. Although internet law is constantly evolving, we believe the law is clear enough that, where a forum owner has been placed on notice of a particular violation of trademark rights, the forum owner is obligated to do something about it or risk liability for contributory infringement.

On a final note, we again wish to point out that none of LWD's claims rest upon the Trademark Dilution Act. Therefore, our position is that any arguments against LWD's ability to avail itself of rights created by that act are irrelevant to this discussion.

Hopefully, the foregoing clarifies our position in regards to the developments with Privateer. We also hope is sheds further light on trademark issues in general as they pertain to our industry and hobby. Thanks to everyone for taking the time to listen.

Note: A substantively similar post has been made within the dakkadakka.com thread identified above, since many of the claims are being made in that thread.