Using the word "Dash" infringes on Playfirst's rights

izam

Hi everyone just letting you guys know of the above. Apparently Monster Dash is embroiled in this issue as well.

I have to change my app's name to remove the word "Dash" to something else.

Can anyone tell me how can I do this Without submitting a totally new app (with a new name)?

Is it possible to just submit a new binary as an update?

Any help will be appreciated!

Fetaboy

As far as I know, when you submit a new binary, you can change the name in iTunesConnect.

izam

Thanks Fetaboy! That worked for me

Chaser

Don't change your title. Tell them to go F off. You only need 30% difference in name in which if your app has 2 words therefore 50% is more than enough. There case will never hold ground

scitunes

Whew! I thought I was going to have to pull angry birdies

expired_012

This would be the same as something like doodle jump reserving the name "jump"...Its ridiculous

Dont let them do that to you

izam

I don't know guys, I feel like a total pushover now... I did reply to them and told them I'd change the word "Dash" to "Baker"....
ahhhhh....

BarkBarkCo

There are tons of games/apps with "dash" in the title. They think they've made a "brand" out of "dash", but that's like facebook.com trying to trademark "face" & "book" separately...not gonna happen. Stand your ground! I guarantee, Monster Dash will not change anything, neither will Doodle Dash (shout out to Jon Beebe!)...and Apple is definitely not going to do anything about this.

Snow

There's at least 20 apps that have Apple in the name. Please change your game back to Dash. Screw whatstheirfaces. If using the word "dash" infringes on THEIR rights, I bet that their use of Diner infringes on someone else's, not to mention, they don't have a trademark or anything on the word and it is as common as "angry", "jump", "run", "runner", etc.

I'm now going to make sure that I too upload a game with the word "dash" in it. We should have a blitz of titles with that word in them. Same thing happened when a bunch of pissed off Indies changed the names of their games to have the word "Edge" within the title. Edge was trademarked for real by none other than the vile, slime dripping, putrid pit of stench trademark troll - Tim Langdell. www.chaosedge.wordpress.com has the entire story of that creep. His case was that he could actually go after someone legally.

In your case however, they cannot force you legally. Send them an email with "FU" for a message back and ignore any of their whining that might result after.

izam

Thanks everyone...

to get a better picture, I include part of the mail that had been sent by PlayFirst to Apple:

2. Intellectual Properties being infringed.
The following registered trademarks owned by PlayFirst, Inc.: DASH (U.S. Reg. No. 3,719,384), DASH (U.S. Reg. No. 3,719,385), DINER DASH (U.S. Reg. 3,127,997), WEDDING DASH (U.S. Reg. No. 3,386,893), FITNESS DASH (U.S. Reg. No. 3,555,176), PARKING DASH (U.S. Reg. No. 3,555,175), COOKING DASH (U.S. Reg. No. 3,555,174), DINER DASH FLO ON THE GO (U.S. Reg. No. 3,520,560), FASHION DASH (U.S. Reg. No. 3,555,167), DIAPER DASH (U.S. Reg. No. 3,617,222), DAIRY DASH (U.S. Reg. No. 3,513,966), DOGGIE DASH (U.S. Reg. No. 3,541,440), and DINER DASH SIZZLE & SERVE (U.S. Reg. No. 3,528,090). In addition, DINER DASH is a registered trademark in Canada (TMA677,886), the E.U. (CTM Reg. No. 4483541), Japan (Reg. No. 5002947), and Korea (Reg. No. 40-0728617).

3. Description of the infringing material. Contact information.
The following Apps, which are likely to create confusion as to PlayFirst’s affiliation or sponsorship and are infringing PlayFirst’s trademarks, including those trademarks stated above:

C******e Dash by ********, available at http://itunes.apple.com/jp/*******

My contact information is at:
*******
*******
*******
*******
*****@playfirst.com

4. I have good faith belief that the disputed use is not authorized by the copyright owner, its agent, or the law.
5. Under penalty of perjury, the above information in the notice is accurate and that PlayFirst is the copyright owner and I am authorized to act on the copyright owner’s behalf.

As relates to the infringement in the current case, PlayFirst owns the following registered trademarks: DASH (U.S. Reg. No. 3,719,384), DASH (U.S. Reg. No. 3,719,385), DINER DASH (U.S. Reg. 3,127,997), WEDDING DASH (U.S. Reg. No. 3,386,893), FITNESS DASH (U.S. Reg. No. 3,555,176), PARKING DASH (U.S. Reg. No. 3,555,175), COOKING DASH (U.S. Reg. No. 3,555,174), DINER DASH FLO ON THE GO (U.S. Reg. No. 3,520,560), FASHION DASH (U.S. Reg. No. 3,555,167), DIAPER DASH (U.S. Reg. No. 3,617,222), DAIRY DASH (U.S. Reg. No. 3,513,966), DOGGIE DASH (U.S. Reg. No. 3,541,440), and DINER DASH SIZZLE & SERVE (U.S. Reg. No. 3,528,090). In addition, DINER DASH is a registered trademark in Canada, the E.U., Japan, and Korea.

PlayFirst has also built the “Dash” franchise into one of Apple App Store’s most successful with three top 100 Gross Games: Diner Dash®, Cooking Dash®, and Wedding Dash®, which together totaled over 100 million play sessions to-date in 2010. In addition, Diner Dash now boasts more than half-a-billion downloads.

The infringing games in Section 3 above infringe on PlayFirst’s well-known DASH trademark and its other marks containing the term “Dash” because they aresubstantially similar to PlayFirst’s trademarks listed above and are highly likely to create customer confusion as to PlayFirst’s sponsorship or affiliation with such products identified in Section 3 above. The success of these games in Section 3 above is directly attributable to their respective owners’ infringement of PlayFirst’s trademarks, including those referenced above and their exploitation of any such consumer confusion associated with the infringement.

Accordingly, please act expeditiously to take down the infringing Apps identified in Section 3 above. Please feel free to contact me directly if you have any questions. Thank you.

butterbean

Sounds a lot like this case that was thrown out by a judge in a case against EA, using the word "Edge" in Mirror's Edge.

http://www.gamasutra.com/view/news/30784/Court_Refuses_Preliminary_Injunction_In_Edge_Trademark_Case.php

It's total B.S and they don't have a case. I guess if you don't mind the hassle, you could fight them on it, but it could cost time and money.

I can tell you with confidence that they would probably lose the case much like the scenario above.

JamesZeppelin

I think the issue that really sucks is it does not matter about right or wrong.
The nerfy part is that even if you are right .....is it worth spending money to prove it if they sue your nerf.

Snow

Trademarking a single word should not be allowed. A 2 word title like Diner Dash, ok... but not a single word. What if someone wants to make a running game with the word "Dash" in it? The word is appropriate to be used in a title of a game that features running as the word is related to running. If I saw "Olympic Dash", I'm not going to sit there and say, "Hmm, this reminds me of Diner Dash. I was going to buy that today, but instead I will by this Olympic Dash instead."

Plus isn't Diner Dash pretty much a copy of Sally's Salon anyway... of course we all do the clones, but don't be a hypocrite.

peachpellen

This is like Donald Trump trying to sue some charity in New Zealand because they have the world "Trump" in their name - I forget what exactly their name is, I just woke up - but it clearly refers to cards. >.<'

Chunkypixels

Sadly its not exactly the same as the Tim Langdell Edge fiasco. In that situation, its not that he'd trademarked a word (which I personally think is ludicrous) where his case fell apart, its that he hadnt actually produced any projects over a 20 year period to back up his right to keep and enforce the trademark. It was then proven that he'd provided false documentation in order to retain the trademark over the years. Thats why hes losing the trademarks and possibly facing criminal charges....

PlayFirst have obviously trademarked the word Dash for use in games, and have built a series of games over the past few years built upon that hook, that demonstrate their continued use and ownership of the trademark. So in this case, if it did go to court, its highly unlikely that they'd lose in a US based court.

I know its a bitch that companies are allowed to trademark a word in the US for use in specific markets/industries, but thats more an issue with Trademark laws, and until theyre changed, you'd be fighting a very big uphill struggle to try and fight PlayFirst on the issue.

So writing to them and telling them "F*** Y**" like some people have suggested really might not be the best advice your being given....

Personally I'd like to think that both Trademark owners and developers could use some common sense here. I think PlayFirst are well within their rights to chase down blatant opportunistic ripoffs (eg: a time management game based in a cafe that might be called Cafe Dash), but they shouldnt be allowed to lay claim on a rooftop chase game that might include the word Dash in the title... I think it should all be about context, and how the word is used in relation to the game and its gameplay.

Im not a lawyer though... and lawyers rarely tend to take a common sense approach.

jonbeebe

More info about my case here:

http://jonbeebe.tumblr.com/post/1469603910/doodle-dash-copyright-infringement-really

Didn't know Monster Dash is in the same boat, I thought that was one of Playfirst's titles. Also, some of the stuff mentioned here is very encouraging, so thanks for that.

@Izam: That's the exact email I received also lol

butterbean

Hopefully a precedent has been set with the case of Claims made to the word "Edge", and it was dismissed when they decided to go up against E.A's Mirror's Edge, but from what you've said Chunky, it makes sense.

The difference is, as you stated, that the company attempting to make claims to the word "Edge" had no claim because they hadn't produced any projects.

Sounds much different than the situation with "dash" as they've produced many titles with that word.

But overall it just doesn't make sense that they can copyright a single "Word"

I can understand if they want to copyright their individual titles for their apps, but a single word?

This is concerning, because it could set a precedent in the app store, and more and more developers could try to make claims to individual words. Where is the line drawn?

Chaser

If you are going to give in then change it to Dasher or Dashster, Dashing and so on. The fact that our gov let them register Dash which is common and not a unique word such as pepsi or xerox is absurd. Now if everybody said go xerox that paper for me or could you xerox that compact disk so I have 2 of them, then xerox could lose it trademark because the word became common.

BarkBarkCo

Chaser said:
If you are going to give in then change it to Dasher or Dashster, Dashing and so on. The fact that our gov let them register Dash which is common and not a unique word such as pepsi or xerox is absurd. Now if everybody said go xerox that paper for me or could you xerox that compact disk so I have 2 of them, then xerox could lose it trademark because the word became common.

Like "google"? Not sure that argument applies to all cases... ;-0

Chaser

BarkBarkCo said:
Like "google"? Not sure that argument applies to all cases... ;-0

Go Google that for me, is different as it specifically refers to searching on google not searching on bing or yahoo.
The 30% difference works all day long.
Another example I had seen; Air Jordan to Air Jumpman. It's funny but they can get away with it.
I also dealt with o e firmy old Halloween props employer. They titled a mask Frankenstien Head and were hit with cease and desist Letter then just changed it to Frank And Stein

izam

@JamesZeppelin and Chunky, you're right mates, this will is a case which I can't really win. It's not a matter of who's right. It all comes down to the money eventually.

@jonbeebe: didn't know your famous doodle dash is affected as well. Ah well....I've already submitted the update to the game and made the change in name.

ahhh....I'm such a pushover...

Snow

You're not a pushover and I posted bad advice. It is very petty of whatstheirfaces to actually trademark a single word. It means that no one else can use it. Imagine if someone trademarked "jump"? Obviously, if this went to court, I actually doubt that they would win ultimately, but may put up a fight, and yeah, is it really worth losing money over?

You've changed the name, so that's over and done with, but to both of you who have been affected by their douchebaggery should definitely send them an email expressing your disappointment at their childish, greedy nature. They may not read it or care, but then they might.

You're just making a game like they are and their fictional 500 million downloads doesn't mean squat. It certainly doesn't mean that their products are solely deserving of having the word "dash" attributed to only their titles or business.

There is a way to challenge a trademark and trademark laws most certainly need to be rewritten and strengthened to prohibit this vulgar abuse of the system.

peachpellen

I think I'm going to start using "Dash" as a keyword in every single game; I imagine they probably regularly search iTunes - might irritate them to see a whole bunch of results that weren't there before but that they can't do sh*t about.

izam

@Snow: That's alright, I know you meant well and I think anyone would feel the same way about this matter too...

I'm just a small fry trying to make a living, keep my nose clean and keep out of trouble...as best as I can!

izam

@peach: Hahahahaha I think that will be awesome!

scitunes

Angry Dash of Doodle Birds!

coming soon!

skn3

Well I am in a similar boat with a game in development. "Delidash" however the interesting bit, for me at least is that I have UK copyright (unregistered) on delidash from 2003.

http://delidash.acsv.net

I released delidash (1 word) for the pc in 2003. Checking all of the Trademarks it seems they were filed in 2004. So my use of delidash pre-dates their trademark. According to a lawyer I spoke with this means that they have trade-marked a "common" name. Which means well that it would be like if I went and trademarked the word "tweet". It is a commonly used word and recognised to a brand so any trademark based after becomes weakend.

I don't know whether to continue with the word delidash or go with another, but Im looking into it.

MagoNicolas

I recieved the same email for my game ePig Dash 2 days ago!

izam

hi Magonicholas, have you replied to the lawyer who sent you that email? I settled with the guy by changing my game's name. I felt because my game is kind of a similar genre (cooking, baking). But I think for your case, that email was uncalled for. You should negotiate with them. Because as I know that the developers who made monster dash, also received a similar email from them. I don't know how things went with them, but seems like their game monster dash is still in the app store.