When you invest the time and effort to apply for a registered trademark for your brand, logo, catchphrase, or identifying mark, the work doesn’t stop there. Situations can arise that force you to challenge another trademark application or initiate trademark litigation to protect your reputation and future profits. The recent Activision lawsuit is an example of how a company can enforce its trademark rights and challenge a similar-sounding trademark.
Trademark litigation cases can be filed in state or federal courts depending on the specific circumstances. However, if an application is still pending, the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) can resolve certain disputes. Trademark lawsuits often address legal issues such as:
The Activision lawsuit raises legal issues including trademark infringement and dilution, as well as requesting the USPTO to reject the proposed TactiVision application because it would confuse consumers and lead them to believe the two companies are somehow related.
Video gaming company Activision Publishing Inc. is best known for its first-person shooter, war reenactment game franchise entitled, “Call of Duty.” As an aside, Activision’s net income for the past few years has averaged $2.5 billion dollars per year with more than 100 million users logging in every month.
Armorworks Enterprises Inc. is an Arizona-based military contractor that manufactures digital imaging software and armor plating for military vehicles. Unlike Activision’s success, Armorworks previously filed for Chapter 11 Bankruptcy protection and was recapitalized in 2014 with the support of a private equity firm.
In July 2021, Armorworks filed a trademark application seeking to register the name, “TactiVision” for its armor-related products. Arguing the proposed name is too similar and would cause confusion since it is simply the letter “T” in front of its company name, Activision opposed this request and brought an action against Armorworks before the TTAB. The Activision lawsuit requests the TTAB to block the application because the name “TactiVision” was too similar to the game producer’s name which is already a registered trademark and would lead people to believe the two companies were related.
The pending Activision v. Tactivision TTAB trademark lawsuit focuses on one of the most important factors considered by the USPTO when granting or rejecting trademark applications—whether there is a likelihood that consumers will be confused by similar brands in the marketplace. However, this case also raises another important factor, namely whether the two proposed marks fall within the same class of products or services or whether they are in distinctly different categories. Since Armorworks does not produce video games, and Activision does not manufacture military vehicle armor products, this factor may play a deciding role in the TTAB’s decision.
Large companies with vast profits like Activision often attract legal disputes. (Read how Apple Inc. is also a common trademark litigation target.) These businesses may be forced to defend their rights or bring lawsuits to protect their interests in situations that smaller businesses don’t face. Activision certainly seems to be a magnet for trademark lawsuits in the past few years. Here are a few examples of the disputes brought by and against Activision.
In June 2020, Activision applied for trademark protection for the brand words, “Call of Duty” and “Warzone.” Another strategic game company, Warzone.com opposed Activision’s requests because it had already created a mobile platform game in 2017. Warzone sent a cease and desist letter to Activision and attempted to file its own trademark application in October 2020, four months after Activision’s application. The matter is still pending.
In 2017, AM General, the manufacturer of Humvee vehicles, brought a lawsuit against Activision claiming trademark infringement, false advertising, and trademark dilution violations because some Call of Duty video games featured Humvee vehicles. In the game, players interacted with the Humvee vehicles, called them by brand name, and the Humvee was used in a promotional trailer to advertise Call of Duty. AM General was concerned consumers would be confused and think there was an affiliation between AM and Activision.
Activision argued that the First Amendment protected the Humvee depiction under free speech. The court balanced trademark rights against First Amendment free speech rights and ruled in favor of Activision. The court agreed with Activision’s argument that the references to Humvee were part of an expressive work that only used the name for an accurate depiction of modern warfare. The court also stated that the realistic depiction was an “artistic goal” and using authentic military vehicles furthered that goal so the inclusion of Humvees was protected by the First Amendment.
You may not be as big as Activision, but If you are facing a trademark lawsuit or need to initiate trademark litigation to protect your rights, you can count on the team at the Trademark Lawyer Law Firm for all of your legal needs. Give us a call at 888-504-0336 or complete our short online form to schedule an appointment for a free 15-minute consultation with an experienced trademark attorney today.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.