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[Lare]

I am a creator of virtual products and have concerns about trademark does and don'ts. Today I was contact by my competitor concerning what he calls "Trademark Infringement" and I am confused as to how far a trademark can go.

I design and sell two types of vurtual products: Horses and Saddles. Along with my products I give my buyers the ability to use these products with a rider. Because of this option I have been using the term "Double Rider" in my product name and description. It is an easy term for multiple languages to understand and was the best choice when placing these out for public sale.

Today I was contacted by one of my competitors asking that I remove all reference to "Double Rider" from my products as it infridges on his "Unregistered Trademark". He is asking that I replace the word Double to something related. Can using the phrase "Double Rider" be considered Trademark Infridgement? He has also requested that I remove the term "Double Rider Option Available"  from my Ad pictures. I am including example of these products so that you may compare.

I dont have a lot of money to hire an Attorney to sort this out. I also cant afford to lose the extra money I am earning to supplement my income. This may be virtual, but it provides me with extra money to help with paying my bills and I cant afford to lose the sale of what I make off these. I am hoping someone can give me some guidance as to the legality of using a common term such as "Double" as it is a very common descriptiove word virtually and in every day sales world. He is giving me till Feb 18th to remove my products or he will file a violation notice and ask that my products be removed from the servers.

Examples: Product Names

My Product - Double Rider Deluxe Juanos Saddle

His Product - AKK Double Rider for Standard Horses

Examples: Marketing Ads

My Product (Saddle) - https://marketplace.secondlife.com/p/Double-Rider-Deluxe-Juanos-Saddle-Set-V0-Black-Shiny/1613709

My Product Horse - https://marketplace.secondlife.com/p/Juanos-Blue-Roan-Pony/1593200

His Product - https://marketplace.secondlife.com/p/AKK-Double-Rider-For-AKK-Standard-Horses/170530

Thank you kindly for any guidance you can provide

[Kaitlin]

Hi

First off, please go back into your post and replace any identifying details with a fictitious but parallel set of facts.*  (Anytime you're faced with potential litigation, you want to keep identifying details out of the public arena.)

The question here, as you suspect, is whether the words you are using are generic or descriptive.  If the former, they are unable to serve as a trademark.  If it's the latter, the guy complaining may still have an uphill battle.  Trademarks are not supposed to be used to monopolize generic terms.  You can't use the term "table" as a trademark for a table.  Other people who make tables need to be able to use the word "table" in connection with selling tables and the law won't let you monopolize it.  Similar, though not identical, situation with descriptive terms.  While it is possible to use a descriptive term as a trademark, since other people may be able to use other ways to describe the same kind of goods, such terms need to be used long enough to be recognized by the consuming public as being a brand name before they can be considered to be trademarks.  They are extremely weak and can be hard to enforce.

The terms at issue certainly seem like they could be generic, if they are the usual terms used to identify the real item that functions as the one you're selling virtually, but that's just the first impression of an outsider unfamiliar with either the real or virtual goods -- not a legal opinion (see disclaimer below). 

And of course, even if you would be totally in the clear with respect to infringement, that doesn't mean this competitor can't make life very difficult for you.  There are some good TM attorneys on this list serve who may be able to help you out with a carefully worded response to these folks without breaking the bank.   (I'm a former TM attorney, but not currently set up for IP practice.)



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*Do copy and save what you've set out, however, since you may want to share that in a private PM, if you decide to contact one of the other attorneys here.

[MYK]

It looks like you've been asking this question all over the web.  The replies you've gotten are all pretty similar;  the phrase appears to be in common use to describe the type of product (in the real world) that you are imitating as a game item.  As the other forums have said, it doesn't look like your competitor has much of an argument.

One VERY important question: who was first?  If you created and sold your game item before your competitor put his up for sale under that name, then he'd be the one "infringing" if you wanted to cry "trademark violation!" to the company.  Check the dates (if it's possible to do so).

Looking at his "store" page, he has failed to identify any words or phrases with "TM" or "(R)" except for the name of the game itself.  In particular, he has not used those symbols for what he implies is his "trademark" for his product -- he hasn't given you (or anybody else) any "legal notice" that those words are being used as a trademark.

What's not clear is whether he would try to do anything beyond asking the game company to shut down your store.  Would the company shut you down automatically just because he made the request?  Or would they ignore him?  Or would they hold some sort of hearing or do a sanity check?  If they shut you down, would you be allowed to reopen if you later merely changed the product description to use a synonym, e.g., "two"?

There's also the question of whether he would take it beyond the game company, i.e., try to drag you through the court system for "trademark infringement".  It would depend on whether or not he wanted to waste his own time (and possibly money) on the fight.

As far as the phrase being "a common term", that doesn't always make a difference in trademark law.  I'm aware of one manufacturer in a particular niche market who is absolutely infamous for filing trademark registrations on common words and phrases related to the products, then waiting the five years required for the marks to supposedly develop "secondary meaning", and then suing the everliving crap out of every other company in that niche market for infringing his trademarks.

I should note that there is no such thing as a "virtual trademark" or "virtual trademark infringement".  It would be a trademark, or trademark infringement, period.

[MYK]

Oh yeah, say hi to Ralph Pootawn for me.