So, are we safe? We don't have to change our name?
Having to change the name as a result of a court decision was never a realistic risk to begin with.
Activision is going for a rather weak trademark- a descriptive word mark with acquired secondary meaning (i.e., "warzone" just describes
Call of Duty: Warzone, which takes place in a virtual warzone, and
Warzone Classic, which also has players fight for control of warzones, so both of those games just use the term "warzone" to describe what they are-
but when someone hears "warzone," they think
Call of Duty: Warzone, since it's so wildly successful- and therefore Activision should have a trademark to "warzone" because they have a "warzone" brand they have legal rights to protect from others who try to pass their products as
Call of Duty: Warzone-related by misusing the word "warzone"). It's the same logic as the trademark for Sharp-brand televisions: sharp just describes the resolution, but if you hear "sharp television" you think Sharp brand- so they need/have the legal right to make sure no one else misuses the word "sharp" to make their product look like it's actually coming from Sharp. To make this concrete, EA and CDProjekt have had similar trademark registrations for "battlefield" and "cyberpunk," respectively. (And before you say, "How are they able to trademark cyberpunk? It's just the name of the genre!" - that's exactly the point. It's a weak trademark that they can't just use against everyone who uses the word "cyberpunk" and instead have to jump through a bunch of hoops to apply when defending themselves from actual bad-faith users who want to try to pass off their products as related to CDProjekt's well-known
Cyberpunk video game series.)
If you check the internet, you'll find that there's
plenty of unaffiliated games, apps, and pieces of software with "battlefield" or "cyberpunk" in their names and/or descriptions, from both before and after EA and CDProjekt got their trademark registrations; clearly those trademarks didn't prevent others from simply using those words. The scenario where Activision gets the "warzone" trademark and then successfully goes after
prior user Warzone.com, LLC, gets their domain taken away (ICANN's Uniform Domain Name Dispute Resolution policy has strict requirements that Activision won't be able to meet), gets their apps taken down (Apple has their legal team manually review trademark disputes like this one, and if you check Google's Play Store you'll find plenty of "cyberpunk"s and "battlefield"s), and forces Warzone.com to drop the word "warzone" (or just cease operation entirely) through legal and semi-legal means seems exceedingly unlikely to me given the weakness of the trademark (if Activision wins) and Warzone.com's position as a good-faith prior user that- per Activision's own claims- no reasonable consumer would mistakenly believe to have anything to do with Activision.
If Activision wanted to make Warzone force-change its name, they could have bundled that into this prayer for relief in this case. The same arguments they're making to claim the trademark lend themselves to arguing someone else is infringing on their mark. But they haven't, because with or without the registration that legal avenue doesn't exist for them.
If a name change happens, it would probably be for business reasons or as part of a settlement agreement where Activision funds Warzone.com, LLC's rebranding costs in exchange for Warzone.com, LLC getting out of their hair.
Why was Warlight rebranded Warzone?
Warlight is a portmanteau of "War" and "Silverlight," which is the name of the original software that Warzone was developed in. Moreover, the owner of warlight.com did not want to sell the domain so Warlight was forever consigned to warlight.net.
The rebranding of Warlight to Warzone was originally announced in 2015, iirc, but was not well-received by the community and didn't happen until 2017, when it was bundled into the rewrite of Warlight from Flash/Haxe into Unity. You can find further speculation and commentary about this in old (2017) forum threads like
https://www.warzone.com/Forum/286054-choose-worse-name-warlightIt's worth noting here that, since the rebrand, a Canadian author came out with a book called
Warlight (about growing up in war-torn Rwanda or something to that tune) and so, if Warzone.com renames itself to Warlight, there's a high chance they still won't show up at the top of search engine results for their own name. Although, for what it's worth, I doubt a "Warlight" Twitch category would get taken over by people who want to livestream themselves reading the novel
Warlight. So there's that.
On the whole, after the information that's come out in this case and the sheer
oddity of it all*, an especially cynical part of me thinks this thread should be renamed from "Activision is suing us!" to "Fizzer is using us!" Starting to look a lot like a play to mislead well-intentioned donors into funding a zero-downside-high-upside trademark shakedown play (others pay the legal costs, hire discount lawyers, pocket the gains if the play works out and ofc hold onto any leftover donation funds) to go after a massive company with a shaky, barely-there legal case and hope they settle for a large sum. Either that or Activision's lawyers are right and Warzone is just
really invested in the word "warzone" and salty about its search engine performance:
At base, Counterclaimant’s lawsuit is premised on its apparent annoyance that Activision’s game is more popular than Counterclaimant’s game, and thus now appears before Counterclaimant’s game in a Google search for the word “Warzone."
* What's with these settlement negotiations that keep falling through? How much is Warzone asking for that Activision would rather spend their money on likely at least six figures in court costs and legal fees? Why is there this whole dispute around the cease-and-desist letter and all these efforts by Fizzer to paint Activision as an out-of-the-blue aggressor when Warzone first showed up on Activision's radar after opposing their trademark registration and asking for 0.25% (millions of dollars) of CoD:WZ profits? Why are we being fed doomsday risk scenarios that won't happen? Why does the claimed justification for this case keep changing (from "I’m being sued by Activision for being an indie game developer." to "they can remove my apps from the app store" to asking the court to prevent Activision from using "warzone" and to make them pay Warzone.com, LLC)? Why does the GoFundMe try to claim things that aren't even relevant to proving trademark confusion constitute proof of actual consumer confusion? Why do Activision's lawyers seem
unusually confident and keep making ballsy moves instead of just parting with a rounding error's worth of money and moving on with their lives? If this is all just a sincere, root-for-the-underdog, David-against-Goliath play, what's with all the sketchiness, misdirection, and burying of information ("I actually never sent them a cease and desist, they're lying about that. All I did was file opposition to the trademark, which I had to do or they could pull my apps off the app store." leaves out the Nov. 2020 letter, the demand for millions in damages, and implies Fizzer didn't do anything beyond file an opposition with USPTO)?
Then again, I might be wrong and missing something huge. And maybe Warzone.com, LLC, is really just gearing up to kick Activision's ass and hold onto the trademark rights that are naturally theirs. Sure hope so.
Edited 8/4/2021 05:15:41
