Trademark infringement on product name
This may seem a little off topic and I apologize, but this is the closest SE site I can think to post on regarding my issue.
I live in the state of Illinois. I have an app in the Apple iPhone AppStore called "The Dirty Mind Test". The other day, I got a letter from the lawyers of a company called TDC Games. They claimed they own the right to the trademark "Dirty Minds", and that my app is clearly infringing on their copyright. They said we must take our app down by the 1st of February to avoid legal action.
I dont see how they can own a trademark or copyright on a totally generic term. They claim they own "Dirty Minds", but my app is called "The Dirty Mind Test". Do they have a case? What should I do?
3 Answers
TDC Games has a pretty good case.
- They makes a (board) game called Dirty Minds.
- You make a (phone) game called The Dirty Mind Test.
Since they're both games, it creates confusion in the marketplace. Especially if someone's browsing the app store and thinks "oh, I love Dirty Minds, I'll totally download their app". At least, that's what they're thinking. I'm not that convinced that this is true, but it's their opinion that matters.
Your best bet is to bend over and rename your app ("The Filthy Mind Test" or whatever). You could try to be nice (Tim's suggestion is good), but remember that lawyers can be complete assholes, and you will have to defend a federal lawsuit (likely, in their jurisdiction) if they decide to sue you. That won't be fun, and it certainly won't be worth the hassle... especially for you, since you clearly don't have a lawyer you've asked about this already.
Remember, Hasbro felt pretty serious about this with Scrabulous, and put a whole bunch of effort into shutting it down. They eventually won their case in India (well, partially won), and Scrabulous is now called Lexulous.
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they did not get a trademark for "dirty minds" rather "DIRTY MINDS THE GAME OF NAUGHTY CLUES" - I'd call their case tenuous. But I am not familiar enough with TM case law and precedents to know if they are just blowing hot air or actually have a chance to win. I don't see how there is confusion. They are pretty distinct. – Tim J 14 years ago
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@Tim I guess a lot of variables go into trademark cases - it's not cut and dry like copyright can be. The key metric seems to be "marketplace confusion" - I know, for example, if someone created a product called "MasterBuilder" or "BuildMeister" it would definitely confuse people who have a hard enough time remembering "BuildMaster", and we'd almost certainly be victorious in a trademark dispute. But, no one's going to name their product that since they don't want to create confusion either. – Alex Papadimoulis 14 years ago
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I really have no idea. – Tim J 14 years ago
- Do not reply to them.
- Contact a trademark attorney right away.
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Do you think they have a valid case though? I'd really rather not deal with attorneys.. – Maq 14 years ago
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It doesn't matter what we think about whether their case is valid. If these folks sue you, only the court's opinion will matter. You really only have four choices. (1) Comply with their demand. (2) See an attorney who's competent to advise you. (3) Ignore them and hope they don't follow through with their threats. (4) Engage in some kind of discussion with their lawyer without you having a lawyer; that's not likely to end well. – Bob Murphy 14 years ago
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It doesn't matter whether or not they have a valid case. They have an attorney. You do not. You don't know the law. They do. Anything you say **will** be used against you. You are poor, and they already have a lawyer! You could be completely right, but they will sue you and you will loose because you can't afford to fight them. – Gary E 14 years ago
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So lets say I just decide to change the name. They said I have till Feb 1st to reply. Do I call them or send them a letter? – Maq 14 years ago
If it were me I'd respond and ask them how they can claim that when it should be pretty clear that you:
- Did not take any copyrighted material
- Are not using their trademarks - just the "dirty mind" is common but since yours is not a board game I see no issue. (I'm not a lawyer, but this seems like them just searching for "dirty minds" and sending letters to everyone.
I'd politely assert that you are not trying to confuse the public and that if they can show proof that you are or are hurting their company then offer to stop, but I see no reason for it.
Here is their trademark Note that the trademark is for "DIRTY MINDS THE GAME OF NAUGHTY CLUES" not "DIRTY MINDS". (as well as other things)
Go see for yourself and then make a decision. maybe you do want to avoid it - but I'd talk to them - no need right now to get a lawyer involved.
DIRTY MINDS THE GAME OF NAUGHTY CLUES
Goods and Services IC 028. US 022 023
038 050. G & S: Board games. FIRST
USE: 19900201. FIRST USE IN COMMERCE:
19900601 Mark Drawing Code (3) DESIGN
PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 02.01.02 - Men
depicted as shadows or silhouettes of
men; Silhouettes of men
02.01.37 - Busts of men in profile; Heads of men in profile; Men - heads,
portraiture, or busts in profile;
Portraiture of men in profile
02.11.25 - Blood vessels, human; Brain, human; Buttocks, human; Human,
other parts of the body; Intestines,
human; Lungs, human; Nerves, human;
Nose, human; Spine, human; Tongue,
human
26.03.02 - Ovals, plain single line; Plain single line ovals
26.11.02 - Plain single line rectangles; Rectangles (single line)
26.17.13 - Letters or words underlined and/or overlined by one or more
strokes or lines; Overlined words or
letters; Underlined words or letters
Trademark Search Facility
Classification Code HUM Accurate
representation of a human form, or any
portion of a human form
SHAPES-GEOMETRIC Geometric figures and
solids including squares, rectangles,
quadrilaterals and polygons
SHAPES-OVALS Oval figures or designs
including incomplete ovals and one or
more ovals Serial Number 77440549
Filing Date April 4, 2008 Current
Filing Basis 1A Original Filing Basis
1A Published for Opposition
September 9, 2008 Registration Number
3536564 Registration Date November
25, 2008 Owner (REGISTRANT) Trivial
Development Corporation DBA TDC Games,
Inc. CORPORATION ILLINOIS 1456 Norwood
Ave Itasca ILLINOIS 60143 Description
of Mark Color is not claimed as a
feature of the mark. The mark consists
of stylized type and graphics. Type of
Mark TRADEMARK Register PRINCIPAL
Live/Dead Indicator LIVE
