Sunday, October 18, 2020

Armchair Legal Aid


A couple of days ago I had the dubious pleasure of watching one of Erik's initial YouTube livestreams and he was mentioning this whole Trademark issue with TSR and the Dungeon Hobby Shop. Since then I've seen some finger-pointing, name calling (well, kind of), and even a little bit of dick measuring.

Now 1st and foremost..... I am NOT a lawyer.

I do however, have degrees in Business, Information Management, and even Library Science. I know....who cares, but if you're reading this you're either looking for flaws to point out (I have many) or you're willing to give me the benefit of the doubt....either way you're still reading, right? In all three of those degrees I've had to take classes in legal issues concerning copyright and trademarks.

Now I'm not going to put myself up as an expert, much less try and train you, dear reader, up on the finer points of these issues, BUT I will take this soapbox opportunity to make a few pertinent points and I'll post appropriate links so you can actually read the important stuff on your freaking own......just think of this blog post as a guided tour.

1st of, what the fuck (we have established I can post swears, right?) is a trademark? If you're up for it, here's a short booklet from the USPTO (United States Patent and Trademark Office). Not into reading, well tough shit....this is a blog post. A trademark is "generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others."

Ok, I'll throw you a bone...here's a video from the USPTO that covers this info:

2nd...and how does this apply to the BS going on right now?

There are several trademarks at issue in this case and they can be looked up here, yet again at the USPTO. For the sake of this "conversation" I'm only going to reference one of the several in question out of the 76 trademarks for "TSR". This one in question, which I'm using as an example, is serial #90124839. Here's a screenshot (click to embiggen):

Now this particular trademark application was made on August 19, 2020 and covers the use of the trademark "TSR THE GAME WIZARDS" for eight specific uses, all of which are gaming related. If you poke around the database a bit you'll undoubtedly come across the "Dead" trademark of serial #73351412, which was an actual awarded trademark #1241135. The one above is just an application for the trademark, it hasn't been awarded yet.

Obligatory screenshot:

You can clearly see that both of these are essentially the same trademark, although the application in progress is planning on being used for more purposes, but still the same two main classes (IC 016 and IC 028).

Clearly the trademark owned by TSR, "died" on November 20, 1989, so this new trademark application is good-to-go, right? What seems to be the problem?

Oh boy.....this is really the meat of the matter. Did you read the pamphlet? No, no you didn't. Of course you didn't. I don't blame you. Go ahead....download it now and give it a once-over. This post isn't going anywhere......

You didn't once over it, did you? You clicked on it and went "36 pages! I'm not doing any effing homework on a Sunday! Screw that!" It's ok, I forgive you, but since you clearly have the booklet, go over to page 13 and look at the sub-section "Is federal registration of my mark required?":

"No. In the United States, parties are not required to register their marks to obtain protectable rights. You can establish “common law” rights in a mark based solely on use of the mark in commerce, without a registration.

So basically you don't have to have a (registered) trademark. Having one basically expands upon your rights and makes certain things easier......but you don't have to actually register your trademark. 

Again, I'm not a lawyer, but (and feel free to disagree with me, plenty will) if TSR actually registered a trademark, and then used it.....the use would establish "common law", then that trademark is a real thing. A real thing that followed TSR to WotC and then to Hasbro. Sure, the registration died in 1989, but the "common law" rights to that "thing" did not expire....and is still in use by Hasbro when they sell stuff branded with that "thing". Part of me says this is just common sense, but a) common sense isn't that common, and b) it's easy for me to come to that conclusion with my particular education/background. I can easily see someone else without that "common sense" just see a "dead" trademark registration and think it's fair game.

In ANY case.....what's going on now with serial #90124839 is just a registration application. Think of it like you registering for your license to drive. You've paid your $50 and taken your test, but you don't know if you've passed and the DMV hasn't given you your license yet. It's a little premature to be out on the road driving, much less selling your ride off as an Uber.....

By my quick math just the filing of this particular application was $450. Multiply that by however many applications there were (IIRC it was five, but I'll be honest in that I'm not searching through all 76 "TSR" entries to make a point) and you've easily got a couple grand, not including any attorney costs. That's a lot of dough for essentially adding your trademark to a federal list that you don't actually have to do in the first place! The USPTO basically maintains the list...they don't do much else. If you've still got that booklet open....and I know you don't, here's a list of stuff they don't do (from page 14):

  • Decide whether you have the right to use a mark (which differs from the right to register). No law requires that you federally register your mark in order to acquire rights in the mark;
  • Enforce your rights in the mark or bring legal action against a potential infringer;
  • Conduct trademark searches for the public;
  • Comment on the validity of registered marks;
  • Assist you with policing your mark against infringers;
  • Assist you with recordation of your mark with U.S. Customs and Border Protection;
  • Answer questions prior to filing on whether a particular mark or type of mark is eligible for trademark registration; or
  • Offer legal advice or opinions about common law trademark rights, state registrations, or trademark infringement claims. 
So the point a few of us have been trying to make is...well, why apply for someone else's trademark? The counter-argument is that these are "dead" trademarks.....but are they really? You don't have to have a trademark application to have a trademark as there are some "common law" protections. Since Hasbro still sells products with these trademarks, are they really dead?

Now I've dumped a lot of words in a blog post that may or may not have helped someone. If you've read the brochure, watched the video, and think you've got a grasp on the issue at hand, here's some advanced topics/information.

1st, a longer video with some good stuff:

2nd, what about the trademark for Gygax magazine? According to the USPTO "The USPTO will also refuse registration of a proposed mark for many other reasons, including if the mark is a surname"

3rd, how much of any of this matters if you get the courts and lawyers involved? If you don't want to watch the whole 41'47" video from above, check out the 16" from this start point....

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