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It looks like GZ's trademark application was initially refused by the examining attorney. GZ has 6 months to respond.

http://tsdr.uspto.gov/documentviewer?caseId=sn86131779&docId...

It was denied for two reasons:

1) Moon Designs HeroQuest. Duh.

Quote:
Here, the applicant is providing “Equipment sold as a unit for playing board games” and the registrant is providing “Role playing game equipment in the nature of game book manuals.” The goods of both parties are related, as both parties are providing equipment used for playing games. The goods of both parties are likely to be marketed in the same manner and travel in the same channels of trade, which may lead consumers to believe that the goods emanate from a common source.

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely games and game manuals, are of a kind that may emanate from a single source under a single mark.


2) Refusal of specimen. Basically they registered saying the product was in actual use in commerce, but didn't provide a picture of an actual product. They can either amend their application to be for "intent to use" which doesn't need a specimen provided or provide a picture of an existing product (which doesn't exist yet).

Quote:
Registration is refused because the specimen is merely a drawing or picture which includes a stylized rendering of the applied-for mark, and thus fails to show the applied-for mark in use in commerce with the goods and/or services. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Here, the specimen does not show use of the mark in connection with the board game equipment identified in the application. An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use


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Darth James
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Wow. But what does THIS mean for HQ25?
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Mike Miller

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That it won't be sold on store shelves in the US. We already knew this would happen though, so nothing new.

EDIT: barring some real licensing agreement.
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Andy Emery
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EvilPandaPirate wrote:
Wow. But what does THIS mean for HQ25?


If the ruling stands HeroQuest 25 willbe considered counterfeit goods in the US, meaning it will be illegal to ship to the us or to receive a copy. The definition of counterfeit includes trademark violation, the violating product does not have to be a copy of the TM protected product.

The real result will be that you won't be able to buy it in the US and customs could destroy your copy if you get it shipped to you and they catch it. Lots of CF goods make it past customs every year.

GZ gas 6 months to respond, then the USPTO considers their response and makes a final judgement. The application is still listed as Live. If they somehow get the TM issued Moon Design can then contest it. But I doubt GZ will change the USPTO's mind. They were pretty clear on the reason for refusal.

It is easy to fix the refusal of specimen issue by amending their application to say the want to sell a product in the future rather than that they currently are selling a product, but it is a moot point becuase of the Moon Design ruling.
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Andy Emery
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pinkymadigan wrote:
That it won't be sold on store shelves in the US. We already knew this would happen though, so nothing new.

EDIT: barring some real licensing agreement.


Yeah, Mike it put it much more succinctly. This was expected; I was just reporting that the TM was officially refused by the USPTO.
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The all-seeing, all-knowing, all-trollin' Mike Hutton
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Won't hurt my chances......already have the deck stacked in my favor.
 
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Andy Szymas
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mhutton wrote:
Won't hurt my chances......already have the deck stacked in my favor.


Oh my god, I almost forgot about the HQ25 dumpster fire. These threads have been my favorite to read. In no small part due to quotes like this.
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The all-seeing, all-knowing, all-trollin' Mike Hutton
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AndySzy wrote:
mhutton wrote:
Won't hurt my chances......already have the deck stacked in my favor.


Oh my god, I almost forgot about the HQ25 dumpster fire. These threads have been my favorite to read. In no small part due to quotes like this.


I am always happy to amuse others.......that trademark stuff won't stop me from getting it....just sayin
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Andy Szymas
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mhutton wrote:
AndySzy wrote:
mhutton wrote:
Won't hurt my chances......already have the deck stacked in my favor.


Oh my god, I almost forgot about the HQ25 dumpster fire. These threads have been my favorite to read. In no small part due to quotes like this.


I am always happy to amuse others.......that trademark stuff won't stop me from getting it....just sayin


So to clarify, you are willing to break the law and smuggle the game into the country?
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David Peck
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Buncha savages in this town...

Occupation: "HQ25 Mule-For-Hire"
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The all-seeing, all-knowing, all-trollin' Mike Hutton
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AndySzy wrote:
mhutton wrote:
AndySzy wrote:
mhutton wrote:
Won't hurt my chances......already have the deck stacked in my favor.


Oh my god, I almost forgot about the HQ25 dumpster fire. These threads have been my favorite to read. In no small part due to quotes like this.


I am always happy to amuse others.......that trademark stuff won't stop me from getting it....just sayin


So to clarify, you are willing to break the law and smuggle the game into the country?


No...

I am willing to receive them, lol
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mhutton wrote:
AndySzy wrote:
So to clarify, you are willing to break the law and smuggle the game into the country?
No...

I am willing to receive them, lol


Anybody wanna bet how many pages of back-and-forth arguments will be added to this thread before it is finally laid to rest? I'm guessing lots...
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Frank Franco
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At least it adds some life to these forums, which are dead when there is no controversey to talk about.
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Donny Behne
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Sydcomebak wrote:
Occupation: "HQ25 Mule-For-Hire"


But where do they put it... yuk
 
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/sarcasm on

And somewhere in Italy, a GZ exec sits on a pile of American crowdsourced money and laughs, thinking "now I don't even have to ship these things to the US. I get to keep all their $, AND I can sell the US copies for even more $."

/sarcasm off

I don't think this ruling is that much of a surprise to many people.

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Malcolm Solo
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Hold on a second.... doesn't this ruling merely mean that the game will not be able to be SOLD in the United States? who said anything about customs destroying copies at the border?! Or not allowing copies to be shipped to the US! wow, that's taking it a bit far, dontcha think?

Especially since it will legally be sold in Spain, where it was bought. If it is made illegally (like fake Louis Vuitton bags in China), then I can understand it being seized at the border.

I really think BGG needs a trademarks and copyright lawyer to weight his opinion on this stuff! wow! everyone becomes an armchair lawyer overnight on this topic!!
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Jeff Richard
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Delurking briefly just to answer that question:

Yes that is correct. Section 42 of the Lanham Act [15 U.S.C. Section 1124] and Section 526 of the Tariff Act prohibits the importation of goods which “copy or simulate” registered trademarks owned by United States citizens or corporations and the Customs Service is authorized to exclude infringing merchandise from the Customs territory of the United States, seize it and forfeit it.

Also worth reading the US Customs and Border Protection website:
Goods that are seized and forfeited as bearing a mark that is a counterfeit of a registered trademark, piratical of a registered copyright or imported in violation of distribution rights agreements are routinely destroyed, unless the owner of the trademark/copyright gives permission for other disposition, such as charitable donations.

Jeff
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Mike Miller

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pha3drus wrote:

I really think BGG needs a trademarks and copyright lawyer to weight his opinion on this stuff! wow! everyone becomes an armchair lawyer overnight on this topic!!


That certainly didn't happen overnight, it went on all throughout the campaign, as well as input from real lawyers and other legal professionals. It's not easy to find in the mess of threads, but there are a few instances of it that I recall pretty clearly.
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Malcolm Solo
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ahh! Okay, well, that makes sense.

I guess GZ is just banking on the fact that they won't be shipping a whole carton full of thousands of games to the US. It'll be individual games to individual people via UPS, USPS or Fedex, I'm guessing.

Individual packages should probably make it through, I'm guessing.

But it would be good to hear an opinion on this. (I live in Canada, so I don't know if they'll be more or less strict about this. Canadian laws can be extremely limiting in a lot of areas, though)
 
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Malcolm Solo
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Or Moon Design will ask for a cut of the profit, and offer a license... (I think they already even have a licensing system for their RPG rules for the heroquest universe, if I am not mistaken)
 
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pha3drus wrote:
Or Moon Design will ask for a cut of the profit, and offer a license... (I think they already even have a licensing system for their RPG rules for the heroquest universe, if I am not mistaken)


Moon Design made that offer way back at the Kickstarter after Gamezone refused to show they had proof from Hasbro that they had permission and then tried an end run maneuver and got caught. I doubt MD would deal with GZ after their various antics.

The trademark attempt is another try and end running MD.

They could have avoided all this mess way back.
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David Hoffman
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What a shocking and unexpected turn of events.
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David Peck
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Curse your sudden but inevitable betrayal!

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If once all is said and done the trademark ends up being the only issue it can be relatively easily circumvented with some large stickers.
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John "Omega" Williams
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cormor321 wrote:
If once all is said and done the trademark ends up being the only issue it can be relatively easily circumvented with some large stickers.


Sticker: Totally not illegal to sell here. Dont look!

aheh.

They were going to circumvent the problem anyhow so this should not really set them back any.
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