Elderwood Academy’s Dicey Trademark Application

Elderwood Academy (technically, Three Frog LLC) has filed an application for a trademark on one of its products. It’s an interesting trademark because it is for the design and shape of the product, rather than a word, mark, or image associated with a good or service. It is the kind of trademark that IP attorneys describe as “trade dress,” which has a special niche place in the world of intellectual property.

A fundamental role of trademarks is to prevent consumer confusion. I actually have two of these products. The first time I saw this product, I believed the manufacturer was Wyrmwood. I was confused about this for over a year—until I tried to buy one from  Wyrmwood’s booth at PAXUnplugged. This is the kind of anecdote that suggests a need for trademark protection.

How Competitors Can Respond to a Trademark Application

When a trademark is filed, it is reviewed by a Trademark Examiner. If there are no problems, the examiner publishes it for opposition from the public. If there are no filings in opposition, the trademark is granted. Wyrmwood is one company that might have an interest in this trademark application; if Wyrmwood wants to eventually make hexagonal dice vaults, this trademark would present a problem for them. Wyrmwood will likely have an internal meeting to decide how to respond to this, and select one of three actions: 1) do nothing and forfeit entry into the hexagonal dice container market, 2) file an opposition with the USPTO explaining why the trademark should not be granted to Elderwood Academy, 3) contact Elderwood Academy and negotiate a co-existence agreement.

The “do nothing” option always has the appeal of being the easiest. However, it is much more difficult to undo that choice later. Even if Wyrmwood has never before thought about making hexagonal dice vaults, and even if they currently have no plans or designs for future production of them, it is good business to imagine the possibility of one day getting in to that market.

The option to file a notice of opposition with the USPTO has some challenges. First, the application is pretty strong. I think there are some weaknesses that could reasonably be highlighted in an opposition filing, but I doubt the trademark would be denied on the basis of the problems I can see. Regardless of the result of the opposition filing, the act of fling it may create tension between Wyrmwood and Elderwood. Preserving positive business relations is important, even between competitors. (In my view, especially between competitors!)

The third option is to work together and negotiate a co-existence agreement. These kinds of agreements are contracts made by parties that have competing or potentially competing interests when a trademark is filed. Sometimes the agreement includes an acknowledgment that a trademark does not infringe or create a likelihood of confusion. Sometimes the agreement will effectively relinquish the use of a trademark in a certain area, or will include a promise to not attempt to enter a certain market or create a certain kind of product.

In this case, Wyrmwood might offer to promise to never make hexagonal dice vaults in exchange for Elderwood’s promise to never make dice towers or deck boxes. There are many promises and exchanges that the two companies might offer in order to avoid any opposition or conflict over the trademark. The two companies (or their attorneys) might create the agreement collaboratively, or they might enlist the services of a mediator to help them explore value-creating opportunities.

Cooperating Competitors

The products made by both Wyrmwood and Elderwood are used by tabletop game players- especially D&D players. The game D&D works best when everyone at the table cooperates, even when characters have conflicting goals/drives/motives. The Dungeon Master likes it when players and characters can work through their differences to cooperate. Otherwise, the DM has to make a ruling and that usually makes at least one player unhappy. In the same way, the Trademark Trial and Appeals Board (the authority that adjudicates trademark disputes) likes it when competitors can reach their own agreements and get along without needed a ruling.

Will Wyrmwood file an opposition? It depends a little on their business philosophy, their future plans, and their relationship with Elderwood. It’s certainly best if they work together.

 

 

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