Frank Schilling’s company files petition for cancellation after trademark owner threatens it.
If you’ve ever filed for a trademark, you know that it can be a challenging process to get approval. Just ask hotels.com and mattress.com, which have failed in their attempts.
But trademarks are inevitably improperly approved by the Unites States Patent and Trademark Office every day. Such is the case with “Cheat Code”, a generic term referring to codes in video games that unlock secret levels, provide players with new powers, etc.
Somehow, CheatCodes.com LLC managed to slip this through and got a trademark for the term “Cheat Code”. The company operates at CheatCodes.com. So who owns CheatCode.com? Frank Schilling’s Name Administration.
According to Name Administration’s publicly available filing with USPTO (pdf), CheatCodes.com, LLC threatened owners of domains similar to “Cheat Code”. But then the company messed with the wrong guy: it threatened Name Administration over its CheatCode.com domain name, which it has owned since 2000.
The petition for cancellation claims Cheat Code is generic and descriptive, and should not have been issued as a trademark. By aggressively pursuing a weak trademark, CheatCodes.com has landed itself hot water.
The petition for cancellation might not be decided until early 2011.
Trademark owners are worse than cyber squatters.
Notice how they only go after the .com and never the .net or .org or etc…..
“Notice how they only go after the .com and never the .net or .org or etc…..”
//////////////////
These people aren’t stupid.
Frank for president 😉
You’re the best !
couponcode is also tm’ed
retardedly ridiculous
The TM attorneys are tards.
if applicant has a sharp attorney and can provide evidence that consumers identify
applicant with cheat codes there will be an answer filed in this uspto ap.the attorney could ask to be then placed on the supplemental register.in addition the ttab review board will then review the examing attorneys search record.this is how this application slipped on to the principal record.
Frank is the man. You gotta love frank.
This is an excellent approach, and one that more domain holders should follow.
If you’re going to go after ’em in court anyway, it’s wise to go for a cancellation of their TMs.
Another great legal lever to try to get them to back off.
Go get ’em Frank.
My fist is in the air and I’m yelling “kick their ass!”
I believe this story will have a happy ending but its so long to wait…
“I believe this story will have a happy ending but its so long to wait…”
Unless the owner decides they don’t want to spend the money to fight it and just rolls over…
Have to admire their ability to get a tm on the term, smart, crafty and if they were a domainer we’d be singing their praise. If it stands some how I say good for them, the best man won.
“Frank is the man. You gotta love frank.”
No you don’t.
good Job Frank. This is what the guy that lost all those freecreditreport domains should have done.
“Willful ignorance is no excuse in any legal proceeding.” SR
——— Quotes ———–
“8. Upon information and belief, Registrant has threatened other users of internet
domain names pre-dating Registrant’s trademark registration.” FS
“12. The term “cheat code” is the generic term” FS
“15. The term CHEAT CODE is highly descriptive of the cheat codes” FS
“the attorney could ask to be then placed on the supplemental register.” Domain Guy
—————————–
Look up the meaning of this – “PRINCIPAL-2(F)”
This exercise by Frank Shilling is nothing but a ploy and here knows better. “pre-dating Registrant’s trademark registration”? Common. the Registrant filed the trademark application in 2007, yes, but its first use was back in 1996; effectively predating Shilling’s use by 4 years.
The Registrant filed for Principle 2F because they were able to demonstrate through the specimens (evidence) that they had earned SECONDARY MEANING. That means that even a generic and descriptive term like “cheat codes” can become PRINCIPLE within its category of usage. It does not mean they have broad rights over the term. This is where Shillings chances truly lie.
Shillings best opportunity was during the opposition period. Now that that has passed and the trademark was approved Shillings endeavor has become that much harder. Panels do not like overturning and deleting trademarks. Shilling would have to show deception and fraud by the registrant. There was none of that here; just a threat by the Registrant to Shillings company for his use (same category?) 4 years afterward.
This sort of case inevitably ends up in Federal Court, that’s if the Registrant has the cahoonas to back up their threat. Probably not. Shilling? he’s merely shadow boxing.
@ Soundly Reasoned – I remember throwing around cheat codes when I was 8 playing the Sega Master System.
” good Job Frank. This is what the guy that lost all those freecreditreport domains should have done. ”
No, its what the company that spent millions marketing themselves should have done years ago to him. While the world at large may have a skewed view of domainers the reality is a lot of them have a right to.
excuse me but I do think the real legal question here is what came first the US patent office and the registrations there or the .com phenom?
Who is that you in the registration business answer to in the final analysis? the highest cash bid?
How is it you speak amongst yourselves in acronyms and make deals to own phrases and words exclusive to your ends to make money without any governemnt over sight?
Then say it is your peers (ICANN) who make the decisions and enforce business and proffession standards?
As the rest of us answer to local, county, state, and federal regs but not you all?
I really dont understand and want to know how you fell you are exempt form the laws the rest of us are obliged to observe?
“I remember throwing around cheat codes when I was 8 playing the Sega Master System.”
me too…in this order:
6 pm Friday “lets play video games”
6:15 pm Friday “what are the cheat codes?”
@ Tim – you’re bringing back memories. Unfortunately I was one of those losers with the Sega Master System instead of Nintendo 8-bit. There weren’t as many places to get Sega cheat codes.
“because they were able to demonstrate through the specimens”
O Rly?
And have you looked through the file at those “specimens”?
🙂
Berryhill said specimens
Please explain JB? What are you suggesting in your quotation of “specimens”?
Are you asserting JB that the “specimens” are fraudulent, deceptive, non-use by the Registrant? I’d love to see you take that argument before the USPTO, JB. Please do.
Where is this C&D from the Registrant to Shillings company? I’d love to see it. What rights are they claiming? Idle threats mean nothing.
“but its first use was back in 1996; effectively predating Shilling’s use by 4 years.
The Registrant filed for Principle 2F”
Hey there, Soundly…
Go read Section 2(f) of the Lanham Act, add five years to 1996, and let me know how your math works out.
I understand your reasoning JB but you yourself know that “five years” is not written in stone when it comes to judging distinctiveness. It can happen in less time. Can the Registrant here give evidence to this? We don’t know.
All in all your argument certainly protects Shilling if distinctiveness cannot be shown before 2001 and a 2(f) obviously limits the Principle rights the Registrant has, but this argument will fail when it comes to an attempt at overturning the trademark.
If you look through the TDR you will see that the UDRP lawyer was not fooled by anything and in fact made the registrant clear several hurdles before finally granting the mark.
“Can the Registrant here give evidence to this? We don’t know.”
In fact, we do know.
As I suggested, go take a look at the specimens filed in the application itself. They are particularly noteworthy for their lack of use of claimed mark at issue – at all.
Then, among other things, you might want to look at archive.org for cheatcodes.com for a couple of years prior to 2002.
On the question of “substantially exclusive” – yet another 2F criterion – the prior registration to Cheat Code Central, with the USPTO required disclaimer of “cheat code” therein, bears a first use date of 1997.
There is, of course, quite a body of evidence that “cheat code” is a non-distinctive term. It is one of the nice facts of ex parte prosecution that one can frame an argument in a vacuum. I particularly like the whopping $5000 spent on advertising.
As you might guess, quite a bit of pre-filing diligence was done here.
“If you look through the TDR you will see that the UDRP lawyer was not fooled by anything”
O Rly? Cite the specimen in which the term “cheat code” even appears on an alleged specimen? Yes, there are descriptive non-mark references to “cheat codes” all over the specimens as in statements to the effect of “get cheat codes for such-and-so games”. There is actually not a single instance of “CHEAT CODE” on any of the specimens.
Now, color me simple, but establishing “distinctiveness” in a short time for a common industry term without even USING it is…. quite the feat.
I agree, “Cheat Codes” would have been the better application.
Yes, I noticed that discrepancy on archive.org as well. I also know that archive.org has flaws in capturing everything and it does not show everything from that time period dating back to 1996. Was there use back then? We don’t know.
Lawyers lie about material matters all the time to the benefit of their clients. I’m certain this instance will be no different. Is it enough to overturn this registration? probably not because even if you were to start the clock at 2001 the Registrant would have cleared the five years you noted to earn 2(f).
Fraud? Now that’s a whole other matter. Can that be proven here? That’s always a high hurdle and we don’t know all the evidence. But, ignorance is no excuse.
In the end, I hope this trademark holder has no “skeleton in the closet.” They would have been better served to “let a sleeping dog lie” because their greed led them to swallow a bait they can’t cough up. At what cost?
Yet to be determined.
Just my opinion.
Henry.
At what cost? Cheaper than buying from Frank!
“Is it enough to overturn this registration?”
Issues with the prosecution file are one thing, and this file has more than a few chuckles in it. Archive.org is an “under construction” or “coming soon” page for at least three years (and that time period should ring another bell with you) after 1996 – even if it wasn’t a deadly dull mundane term by 1996. For more chuckles on the prosecution file, the Wikipedia “conflict of interest” discussion archive post-2008, when a certain Energizer Bunny decided he wanted to change the Wikipedia entry cited during prosecution of the application, is also amusing. People criticize Wikipedia on all sorts of grounds, but Wikipedia is pretty good about archiving a lot of interesting behavior and statements.
“Was there use back then?”
Was there use ever? It is one thing to say in principle that a descriptive term can become distinctive. But you can ask any mildly engaged video game consumer what is a cheat code, and it is instantly known to them. Here, the claim that some chimerical “use” that can’t be found in archive.org (pre-2001 or even after 2001), can’t be found in a pile of trade magazines, and can’t even be found in the prosecution file itself, is an odd sort of way of acquiring distinctiveness…. particularly when ordinary use of the term in reference to what is a cheat code CAN be found in all sorts of places, such as in the disclaimer of a prior registered mark and the generic descriptions of goods and services in other marks (let alone outside the walls of the USPTO).
“even if you were to start the clock at 2001 the Registrant would have cleared the five years you noted to earn 2(f)”
…of substantially exclusive use? (or, again, of any use as a mark at all?) Purina can use “dog food” for a century, it doesn’t change the situation relative to exclusivity. Mere use of a non-exclusive term doesn’t do it. But the challenge remains, go find use of this term as a mark by this claimant – at any time – and not within the context of admitted descriptive or generic reference to a cheat code by this claimant (which are abundant).
Aside from which if you start the clock at 2001, the petitioner is the senior party – not a very soundly reasoned alternative argument for the trademark claimant.
But the bottom line question is – does the claimed mark serve as a indicator of goods or services emanating from a particular source in such a way as to distinguish the goods or services of that source from others among relevant consumers. Ever since Mario took his first barrel hit on a Nintendo 8-bit, the meaning of the term has been very well known in this market, and certainly is very well known and widely used today.
“But, ignorance is no excuse.”
Positively asserting that a specimen shows something which is nowhere to be found in the actual specimen is an odd sort of ignorance, don’t you agree?
JB, if this case ever gets to the discovery stage, which I doubt, then we may be looking at the addition of a fraud claim but, as you know, that standard has changed since the CAFC’s heinous decision in In Re Bose now making it a heck of a lot tougher these days to plead and prove fraud.
““You gotta love frank.”
No you don’t.”
I’m sorry, Kevin, but you do.
It’s in the DomainNameWire Terms of Service.
Funny you really believe “Cheaper than buying from Frank!”
What do you think will happen if, depending on how many businesses, domainers and/or domain owners alike they have threatened, the threatened entities decide to take similar action to challenge the trademark individually, severally, or collectively?
The action or actions may not necessarily be to win but to create fracas within their business arrangements. That for sure can be very costly especially if they end up losing the very trademark protection for which the risk was taken in the first place. Even if it’s a mere dilution of the mark, there is an inherent cost associated with that given the potential business disruptions.
The point is, it depends on how each threatened entity decides to fight. One of these days they will pick on a prickly entity that’s just looking for the opportunity to create mayhem for bullies like that. Win or lose, they may not like the outcome.
Just a thought or two!
Henry.
so how long do people have to petition for cancellation of a trademark?
i’m all for protecting generic domains and also all for tm holders. theres fairness on both sides. hope frank wins.
if you’re a tm holder though, how long do people have to challenge your trademark via cancellation process once you get granted a tm?
anyone know?
ha ha this is hilarious. they deserve to cancel the tm
these companies think they can do whatever they wish