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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Are Trademarks a Data Security Alternative to Sad, Weak, Outdated Copyrights?

If you’ve been on the web for a while, you’ve seen an advertisement that looks like the user interface of the website you’re viewing- or maybe an ad that has a false close button, and clicking it just navigates you to the advertised page. These are blatant ways to trick consumers into taking actions they don’t want to take. Sometimes, these inadvertent actions can create security vulnerabilities such as malware.

Despite all of the focus on applying copyright law to the internet, I wonder if there are hints of trademark and trade dress protections that could become relevant to data privacy issues. I will cautiously, even timidly, explore a few of those possibilities (which several others have explored over the last few years).

I. Trademarks: When it Comes to Data Privacy, Accept No Imitations.

Trademarks have a simple purpose: to let consumers know the origin of a good or service. Trademarks are often a word, phrase, or image (logo), but can also be a sound or smell (on rare occasion, it can get a bit more abstract ).

A major category of trademark infringement is counterfeiting. That $20 “ROLEX” watch from the guy in the alley? That’s a counterfeit (sorry), and one of the legal issues involved in the sale of that watch is the use of a trademark without the legal right to use it. There haven’t been a lot of counterfeit websites on the internet, especially since SSL and other authentication processes got better. However, there are plenty of imitation apps and games. One of the reasons such apps and games fail and are quickly removed from distribution is that they infringe trademarks.

However, some countries do not have the same standards regarding trademark (or copyright) enforcement. Consider an imitation League of Legends game, lampooned here. At the end of the video, the player says “Oh, and it’s also a virus,” as his security software reports malware after playing the game. This humorously underscores the point that many infringing* products pose a security and privacy threat. Using trademark law to limit the proliferation of readily accessible, easily confused programs is a valuable practice in maintaining computer security for consumers.

II. Trade Dress: No One Really “Owns” That Icon… But You Know Who Owns That Icon.

Trade dress is a sort of sub-category of trademarks. It’s rarely talked about or used, but it can be thought of as the totality of design and aesthetics that go into a product, place, or service that make consumers identify the source. Color palette, patterns, shapes, and other factors go into the evaluation of trade dress. Crucially (and perhaps fatally), elements of a trade dress must be considered “non-functional.”  For example, the major case in trade dress concerned a Tex-Mex restaurant that used the same colors and layout of another Tex-Mex restaurant.

Here’s the controversial idea I think deserves consideration: Could misleading, camouflaged web content be considered an infringement of trade dress? (Think of the kinds of ads that make you believe you’re not clicking on an ad, but rather some piece of actual content on the site- especially regarding navigation buttons that match the navigation icons of the site.)

The reason I look to trade dress for a solution is that icons and interfaces, even stylized ones, are not subject to trademark, copyright, or patent protections. Furthermore, websites are increasingly treated as the digital equivalent of stores and offices of businesses- so much so that designs and layouts can come to be the trade dress of that business. Thus, there is a gap in the legal protection of user interfaces, and a need to cover that gap.

(Treating websites as subject to trade dress might have the added benefit of discouraging UX and UI designers from fiddling with the location and arrangement of navigation tools every other month just to justify their paycheck. And that’s the kind of change this world really needs.)

Conclusion: Trademark Protection is Already Working, Trade Dress is Still Vague and Untested

Trademark law is already quietly making the digital ecosystem a little bit safer by eschewing threatening knock-off games and apps. I think there’s a case to be made for applying trade dress to websites and UIs, but it would be a novel application and courts may be hesitant to apply the law so creatively.

 

* “300 Heroes” Infringes both copyrights and trademarks, but it’s the funniest example.