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rob
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Old February 5th, 2010, 10:14 PM
As the result of some illuminating discussions, I believe I now understand the crux of why some people have taken offense at our message to Privateer Press. I'd like to publicly address what appears to have happened – due to the complexities involved, a bit of explanation is called for.

First of all, I'm not a lawyer. I don't even pretend to play one on TV. I'm a software developer that also has to deal with business matters for a tiny company. Like many others, I don't always consult our attorneys on the text of every message before it is sent. The message to Privateer was not vetted by our attorney, and I didn't recognize a critical language issue in the message, which led to a major problem.

Last week, we sent a message to Privateer Press, in which we sought their assistance in addressing both abuse and misuse of our Army Builder trademark on their forum. Since Privateer owns the forum, contacting Privateer was the proper course of action. Specifically, there were two issues concerning the use of our trademark on the forum that we sought to address.

First, there were multiple references to tools that used our trademark in their official name. For example, one such tool was officially named the "Warmachine/Hordes Army Builder". Such tools represent an infringement on our registered trademark, and we're within our rights to seek help from a forum's owner in addressing such cases.

Second, there were instances where our trademark was used in a generic manner on Privateer's forum, such as "I'm looking for an army builder to do X". These posts represent an improper use of our trademark, but they are not an infringement. As such, we cannot reasonably expect assistance in addressing these uses, and we did not expect to have Privateer alter or remove them from the forum. We sought to educate the public as to the fact that "Army Builder" is a trademark, i.e., a proper adjective which modifies a noun, as in the "Army Builder® roster construction tool".

Referring to roster construction tools generally as "army builders" is improper, and if we fail to speak up about it, our trademark could become generic. Perhaps worse, we could potentially have to seek a future injunction against someone for unwittingly infringing upon our trademark. More importantly to Privateer players, awareness of the trademark would hopefully avoid its future use in fan-created tools, which would in turn avoid the need for us to seek removal of such tools.

The core problem was that, in the message to Privateer, I used the term "improper" in a few places where I should have been using the term "infringing". This transformed a perfectly acceptable request for Privateer to address the few infringing uses of our trademark (i.e. people using the name Army Builder in their own tool names) into a wildly unreasonable request to address merely improper use of our trademark. Not being a lawyer, I didn't catch that pivotal distinction when writing the message.

So why wasn't this problem recognized more quickly after there was public reaction? The intent had been for infringing uses of our mark to be addressed, and that's what I believed we had actually done. I even posted as much in a number of places discussing this issue, including on Privateer's own forum (prior to the thread being deleted). Consequently, I didn't notice the terminology error until now.

There were a few additional errors in the message due to misunderstandings on my part, for example, using the term "dilute" to refer to a loss of trademark distinctiveness, never meaning to imply a cause for action under the Trademark Dilution Act, and citing the Digital Millennium Copyright Act directly, when what was appropriate was to simply make an analogy to it. I also believe, in retrospect, that the language I used was unnecessarily stern. However, the core problem was using the term "improper" instead of "infringing".

Unfortunately, the interpretation that was clearly visible to others just didn't register in my brain, since I was stuck on what I thought I'd written and not what I actually wrote.

So, to everyone who took offense at the message, I sincerely apologize for this gaffe. It was an honest mistake, which turned a reasonable request into a very unreasonable one. I truly hope that this clears these matters up for anyone who took offense and that from here on we can keep any fighting confined to our respective gaming tables. I also hope that this explanation enables Privateer to understand that what we sought was a significantly more measured response than what they perceived as required.

Sincerely,
Rob Bowes
Lone Wolf Development

Last edited by rob; February 6th, 2010 at 12:25 AM.
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Sebastrd
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Old February 9th, 2010, 08:39 AM
Quick disclaimer: I am not currently a Lone Wolf customer, I was completely unaware of this issue until I saw it referenced at EN World, and at all times following I am referring to the "improper" use of the Army Builder trademark.

I absolutely recognize Lone Wolf Development's right to keep others from using the term "Army Builder" in the proper name of a competing product. You got to it first, and fair's fair.

However, to expect that should preclude anyone from using the term "army builder" in a generic sense referring to products of its type is absolutely ludicrous. The term is so generic that not using it in reference to such products would actually be a pain in the neck. It would be akin to banning the term "wheelchair" when referring to wheelchairs simply because someone trademarked the name for their product. What else would you call them in everyday conversation?

I don't assume that Lone Wolf is attempting to quash all "improper" casual use of the term "army builder". I would hope you are reasonable enough to understand how foolish that would be.
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Mr_Rose
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Old February 9th, 2010, 11:23 AM
Quote:
However, to expect that should preclude anyone from using the term "army builder" in a generic sense referring to products of its type is absolutely ludicrous. The term is so generic that not using it in reference to such products would actually be a pain in the neck. It would be akin to banning the term "wheelchair" when referring to wheelchairs simply because someone trademarked the name for their product. What else would you call them in everyday conversation?
Take it up with your local Trademark organisation (typically this is a government department, like the USPTO) - trade mark laws are fairly universal and tend to require this sort of action or else the company in question will lose the trade mark and any rights that go with it. I have yet to find any laws which make allowances for avoiding breaches being "a pain in the neck."

As for a suitable generic term, have you considered "(army) list generator" or something similar?
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rob
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Old February 9th, 2010, 11:58 AM
Quote:
Originally Posted by Sebastrd View Post
However, to expect that should preclude anyone from using the term "army builder" in a generic sense referring to products of its type is absolutely ludicrous. The term is so generic that not using it in reference to such products would actually be a pain in the neck. It would be akin to banning the term "wheelchair" when referring to wheelchairs simply because someone trademarked the name for their product. What else would you call them in everyday conversation?
The widespread use of the term "army builder" is substantively due to the popularity of the Army Builder product. Prior to the product's release 12 years ago, the predominant terms used for roster construction included "making a list", "writing a list", "creating a roster", etc. The term "building an army" was used extensively to refer to the process of collecting the models, assembling them, and painting them. In other words, physically building the troops for the army. The Army Builder product changed all that. After 12 years, the term is now synonymous with creating an army roster for play.

We prefer using the generic term "roster construction tool", since it quite clearly embodies the nature of the product category. But anyone is welcome to use their own generic description.

Quote:
Originally Posted by Sebastrd View Post
I don't assume that Lone Wolf is attempting to quash all "improper" casual use of the term "army builder". I would hope you are reasonable enough to understand how foolish that would be.
Absolutely! We need to make people *aware* of the trademark - not impose it's use. If someone knows that the term is trademark and uses it anyways, there's nothing wrong with it. For example, in the South, most folks refer to any soft drink as "a coke" (e.g. "What kinda coke ya'll want?"), but they know it's also a specific brand as well. We need to ensure the same is true for Army Builder.

Last edited by rob; February 9th, 2010 at 12:01 PM.
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Sebastrd
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Old February 10th, 2010, 01:04 PM
Quote:
Originally Posted by rob View Post
Absolutely! We need to make people *aware* of the trademark - not impose it's use. If someone knows that the term is trademark and uses it anyways, there's nothing wrong with it. For example, in the South, most folks refer to any soft drink as "a coke" (e.g. "What kinda coke ya'll want?"), but they know it's also a specific brand as well. We need to ensure the same is true for Army Builder.
Very apt analogy and exactly the kind of thing I was referring to. It's too bad the law creates such a catch 22. Your average consumer is unaware of the intricacies of the law, and will probably see your "reminder" as annoying at best. But if you don't remind them you could end up losing your trademark. I don't envy you there.
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rkunisch
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Old February 11th, 2010, 07:22 AM
I think the main problem the people have is not the intend of the mail but its tone. It sounded more like a threat than a friendly reminder. This may be needed if people do not cooperate but is not helpful for a first contact.

Cheers,

Rolf.
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Colen
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Old February 11th, 2010, 10:09 AM
Unfortunately, we found that if we used a "friendly reminder" as the first contact, people just ignored it. We almost always needed to send a follow-up message in a harsher tone to get them to do anything, otherwise they assumed it was just a request and not a requirement.
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michael123
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Old April 1st, 2010, 03:58 AM
hi, i think Army Builder product. Prior to the product's release 12 years ago, the predominant terms used for roster construction included "making a list", "writing a list", "creating a roster", etc. The term "building an army" was used extensively to refer to the process of collecting the models, assembling them, and painting them. In other words, physically building the troops for the army. Regards

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gitback12
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Old April 19th, 2010, 09:42 PM
I'm sorry, but I have to agree with the poster who said that trademarking the term "army builder" is like trademarking "wheelchair" or "bunk bed." Moreover, the claim that the term "Army Builder" is prevelant because of Lone Wolf's use of the phrase is like NASA claiming that the term "space shuttle" has only entered our lexicon because they were the first to build it and chose to call it a "space shuttle." It seems pretty obvious to me that we would call anything that "shuttles" stuff into "space" a SPACE SHUTTLE, regardless of whether anyone had ever actually built one, and anyone who wants to build something that "shuttles" stuff into "space" should be able to put the words "space" and "shuttle" together to appropriately describe such. Just because NASA was the first entity to make one doesn't mean they should get to bar anyone else from making similar use of two generic words that, when combined, create an equally generic term.

Along these same lines, I disagree with the assertion that prior to Lone Wolf's "Army Builder" trademark no one used that term. The term might not necessarily have been "prevelant," but it almost certainly would have been one of the common terms that would have been used, along with things like "list maker" or "army creator," to describe such tools. Finally, as far as the situation with the proper noun "Coke" being used as a blanket term for all soft drinks in the south... sorry but that analogy is off the mark. "Coca-Cola" (or "Coke") was a completely original PROPER noun with absolutely no prior meaning within the soft drink industry prior to its creation. Only after the drink became popular did certain segments of the general public begin to use it as a descriptor for soft drinks as a whole (like Kleenex for tissues or Xerox for copies). That's the OPPOSITE of what we have here. Instead of creating an original proper noun which heretofore had nothing to do with designing table top army lists, Lone Wolf essentially appropriated what would otherwise have been a completely generic and intuitive term used to describe such a tool and trademarked that, essentially removing a phrase which would have otherwise naturally existed within the public domain. The more applicable analogy would be if the inventors of Coca-Cola had instead named their product "Soft Drink" or "Carbonated Beverage" and then trademarked that. That is essentially what Lone Wolf has done; indeed this analogy highlights the absurdity of it.

To me, the real test is whether or not a person, with no prior knowledge of the Lone Wolf software, when describing a program such as this, would instinctively call it an "army builder program" or "army builder" for short. I'm sorry, but the answer is CLEARLY yes. It's simply one of about four or five instinctive phrases that come to mind when attempting to describe a tool used to BUILD an ARMY; in my opinion no one should be allowed to essentially "take" such a phrase and bar competitors from using it to also describe their product. There is absolutely nothing creative or unique about throwing the words "army" and "builder" together.

That being said, the real issue to me are the threatening "cease and desist" letters being sent out to small time software dabblers just because it didn't occur to them that the term "Army Builder" was (or even could be) trademarked. I dunno, it's just.... what's the best word... let's go with "douchey." There is really no other way to describe it. YES, you properly trademarked the phrase. YES, the law is on your side. YES, pursuant to the law, you are within your rights to "demand" that the term not be "infringed" upon and you'll "lose the value" of your trademark if you don't "enforce" it. YES, we get all that. But, seriously. "Army Builder?" Really? If you really cared this much about other people trading on your good will, I would think you'd have been a little more creative and original about what to call it.

Now that we've covered your rights, I feel compelled to point out that members of the gaming community are within their rights to think that trademarking such a completely generic term like "army builder," and then getting all legal-pissy anytime someone dare use the term to describe their own army building software, simply smacks of DOUCHYNESS.

I mean, I'd give you something like "Table Top Force Creator," or "Lone Wolf Army Maker," but just "Army Builder?" Seriously? Douchey. Sorry.

Last edited by gitback12; April 19th, 2010 at 09:52 PM.
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rob
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Old April 23rd, 2010, 12:36 AM
I encourage you to go back and look at archives of numerous public forums, bulletin boards, and mailing lists from 13 years ago. Look closely at the terms that were in use back then. You will find that the common terminology at the time was to "write a list", "make a list", or "create a roster". The concept of "building" an "army" was used exclusively in those days for collecting, assembling, and painting the miniatures. The term "army builder" was simply not in use back then - at least not in any of the major miniatures gaming discussion forums.

With the release of the Army Builder product in 1998, that began to change. For many years, the general terminology remained the same as before, with people saying things like "I use Army Builder to make my lists". As the Army Builder product's popularity grew and it became an industry standard, the term "building an army" began to appear in reference to creating rosters as well as collecting and painting the models. Here we are 12 years later and the terminology has changed. This is due in substantively to the success and popularity of the Army Builder product.

This fact is borne out by a close look at the history and how the terminology has evolved. The US Patent & Trademark Office concurred with that interpretation as well. If you look at the details, you'll note that the Army Builder trademark registration was applied for and granted in 2003 - five years after we first released the product. At that time, the USPTO did a thorough search for the term and concluded that it uniquely referred to our product. Had the term been used widely in a generic manner, the USPTO would never have granted us the trademark, regardless of whether we had a product with the name. Over the subsequent 7 years, the Army Builder product has become a standard and the commonly used terminology has changed as a result.

The facts of the situation are exactly that - facts. If we had trademarked the term "Army Builder" last month, an argument against our choice of terminology would be valid. However, the reality is that we coined the term 12 years ago and our product's success is demonstrably responsible for the widespread change in terminology used by gamers today.

Now that our product's success has been established, other competitors want to write their own tools and use our product's name. It may be due to lack of awareness or it may be intentional so they can leverage the name recognition and associate their tool with a popular product. We can't know for sure, but we have to put a stop to it either way. If someone tried naming their new miniatures game "Jim's Warhammer Fantasy Battles" or "Fred's Warmachine", don't you think a couple of prominent companies in the industry would take exception? Our situation is no different.

The registered trademark provides us with legal protections. It also establishes clear rules for how we have to police the mark. Unfortunately, those rules don't afford us the ability to choose when to act. So we have to deal with a "small time software dabbler" the same way as with a large corporation. If you don't agree with that, then lobbying your congressman to change the laws is the proper course of action. Until the laws are changed, we are obligated to abide by them as they are written.
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