Bethesda VP says company 'forced' into Scrolls dispute

Legal experts and Bethesda's Pete Hines have chimed in on the legal dispute with Mojang over the use of the word Scrolls. Experts say the company has a legal obligation to defend its trademark, or risk losing or weakening their defense in the future.

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ZeniMax is pressing forward with legal action against Mojang Specifications over use of the word "Scrolls," but now Bethesda VP of marketing Pete Hines is speaking publicly on the case for the first time, with some expert analysis from lawyers uninvolved in the case.

"Mojang's public comments have not given a complete picture as it relates to their filings, our trademarks, or events that have taken place," Hines said.

Kotaku reports that the legal action is part of ZeniMax's duty to protect its trademark. The US Patent & Trademark office noted the naming similarity in a letter filed two weeks before ZeniMax's suit. The USPTO rejected Mojang's US trademark application.

That would seem to be the end of it, but Mojang's Markus Persson claims ZeniMax has rejected offers to compromise, calling the company "unreasonable." However, ZeniMax may be legally obligated to defend its trademark, and deny any permutation of the word "Scrolls" in Mojang's game. Trademark owners have to protect their marks, or risk losing them, according to trademark legal specialist Angela Bozzuti. Even if Mojang didn't gain a US trademark, ZeniMax would have to gain an injunction to prevent Mojang's use of the name unless the two reach a resolution.

"Failing to protect a trademark could be damaging to an owner's rights," said Bozutti. "Not only could it result in actual consumer confusion, but it could also weaken the strength of the mark in the marketplace. Furthermore, once there is widespread third party use of the term 'Scrolls' as or within a longer game title, it will likely weaken ZeniMax's mark and make protection difficult and limited." In other words, if they fail to defend against this case, the trademark could become diluted and they'd have a weaker position against future cases.

Hines echoed the sentiment. "Nobody here enjoys being forced into this," he said. "Hopefully it will all be resolved soon."

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From The Chatty
  • reply
    October 7, 2011 10:15 AM

    Steve Watts posted a new article, Bethesda VP says company 'forced' into Scrolls dispute.

    Legal experts and Bethesda's Pete Hines have chimed in on the legal dispute with Mojang over the use of the word Scrolls. Experts say the company has a legal obligation to defend its trademark, or risk losing or weakening their defense in the future.

    • reply
      October 7, 2011 10:19 AM

      Pretty much, notch should've just changed the name.

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        October 7, 2011 10:35 AM

        [deleted]

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          October 7, 2011 10:46 AM

          Wait, what? I'm pretty sure that would have ended this whole thing.

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          October 7, 2011 10:48 AM

          "I mean notch is a fuckface most the time" god some of you people have some really balanced and level-headed views on developers!

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          October 7, 2011 10:56 AM

          According to Mojang they offered to halt the process of trademarking the name Scrolls and to use a subtitle in addition to Scrolls. So, "Scrolls: Something."

          Mojang has never offered to abandon the name Scrolls.

        • reply
          October 7, 2011 10:56 AM

          notch offered to change it if Zenimax won a game of Quake. Obviously (even though they have pro Quake players on staff) their lawyers wouldn't allow this.

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          October 7, 2011 10:57 AM

          [deleted]

        • reply
          October 7, 2011 11:02 AM

          "notch is a fuckface most the time"

          Stop smoking whatever you're smoking. Thank you.

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      October 7, 2011 10:22 AM

      It's ONE WORD! ... and it's a word that describes the game that is trying to use it. There is no confusing here... 'The Elder Scrolls' ...three words. Soo my lack of confusion. CRPG... TCG... not the same. Still not confused. Gaa, lawyers are stupid.

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        October 7, 2011 10:55 AM

        It's not a matter of confusion, it's what notch is trying to trademark. They want exclusive rights to the word "scroll" in practically any form of media, at which point Zenimax would lose their "The Elder scrolls" trademark.

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          October 7, 2011 11:02 AM

          Or for that matter, if they want to make an Elder Scrolls movie, they'd have to get permission from Notch.

          Do you have the link to the story where they break this down?

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          October 7, 2011 11:09 AM

          Ah, here it is

          In other words, Mojang intends to own the word "scrolls" in pretty much every form of visual entertainment media, not just in videogames. This means that, if the trademark is upheld, the company could rightly take action against anyone else using the word "scrolls" in any form of media whatsoever. Now, that would only be a problem if you were a successful media company planning to use the word "scrolls" in some form of entrainment media … Oh wait … that's right. If you're Zenimax, this trademark fucks you. Hard.
          http://kotaku.com/5846111/mojang-v-bethesda-or-i-hate-it-when-mommy-and-daddy-fight

          • reply
            October 7, 2011 11:27 AM

            except Mojang then offered to completely drop the trademark application or change the name, which no one can argue is a workable solution.

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              October 7, 2011 11:35 AM

              He offered to stop the trademark application for "Scrolls" and instead trademark "Scrolls: Something" (Scrolls with a subtitle).

              If he had offered to change the name to "A Game of Scrolls" or something I'm sure the whole thing would be done but since "Scrolls: Something" is more or less the same thing as calling it "Scrolls", he's still in the shit.

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                October 7, 2011 11:46 AM

                I think the issue is he went public about it and due to the way trademarks work Zenimax is fucked if they don't pursue it.

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              October 7, 2011 2:12 PM

              Were you born naive? They *have to* protect their trademark to keep it, that's how it works.

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                October 7, 2011 11:58 PM

                .. and Zenimax saying "Hey UPTSO, here's the licence we gave them to use the word Scrolls, it's all cool" would solve all of this instantly. They've "defended their trademark" and Scrolls can come out with its name.

                Of course, I think Zenimax would ultimately lose in court, because the word Scrolls in itself isn't all that close to their mark "The Elder Scrolls".

                UPTSO were right in denying a TM on "Scrolls", because it's too generic. It's why you see marks all the time that are 'misspellings' of normal words. However, if they wish to go ahead and title a game using the non-protected title "Scrolls" they should be allowed to do so, though it might not be the wisest thing if it's an "IP" they want to build over time.

                This will end with Mohang chosing another title (one that they CAN TM) and Zenimax publicly declaring a GREAT VICTORY, because that's what companies do.

          • reply
            October 7, 2011 11:48 AM

            The application covers

            Entertainment services in the form of electronic, computer and video games provided by means of the Internet and other remote communications device; internet games (non downloadable); organising of games; games (not downloadable) played via a global computer network; education and entertainment services in the form of cinematographic, televisual, digital and motion picture films, radio and television programs and shows; preparation, editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; entertainment services in the form of electronic, computer and video games provided by means of the Internet, mobile telephone and other remote communications device.

          • reply
            October 7, 2011 4:26 PM

            When you start getting into simple everyday words like scroll, apple, rage, etc. Doesn't a trademark start becoming very difficult to enforce? I thought I remembered some other company that tried to trademark a single word like this and was getting beat down in court over it.

      • reply
        October 7, 2011 1:34 PM

        DEY TOOK OUR WERRRRRRRRRRDS

    • reply
      October 7, 2011 10:32 AM

      I kind of feel sorry for Bethesda employees in all of this. They're innocently in the middle of this but on the "evil" side and are probably a little embarrassed of their parent company's legal action. While I can, to a limited degree, understand the desire of Zenimax to set a precedence for protecting their IP, I do think it's absurd in this instance.

      I honestly do not think it's in Mojang's interest, both financially and in time, to fight this. I'm sure if I were in his case I'd feel the same as he does, but it's easier to have perspective on the situation when not involved. For his own sake, he should just change the name of his upcoming game completely to get the case dropped.

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        October 9, 2011 3:45 AM

        I am in agreement. Its not that Mojang has invested much money on advertising their game. Its not even finished, and they have Minecraft fans to keep looking at whatever he wants to say, i.e. the new name of their new game.

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      October 7, 2011 10:34 AM

      How about changing it to Skrollz or Schrolls? Will that make them happy?
      It's just a word, geez...If not, just name it 'Parchments' or something.

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      October 7, 2011 10:34 AM

      Holy shit this is so stupid it makes me eyes hurt to read it.

      I understand that they have to "Defend their trademark from dilution", but it's not like Scrolls isn't already a super-common word.

      Next up - Capcom trademarking the words "Dead", "Devil", "Cry", "Monster", and "Mega".

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        October 7, 2011 10:39 AM

        As well as "Street" and "Fighter".

      • reply
        October 7, 2011 10:45 AM

        [deleted]

        • reply
          October 7, 2011 1:33 PM

          Dead Rising
          Devil May Cry
          Monster Hunter
          Megaman

          Some of their biggest franchises, see where I was going with that? Okay, cool.

        • reply
          October 7, 2011 4:31 PM

          DDMC: TOURNAMENT EDITION.

      • reply
        October 7, 2011 11:16 AM

        Everyone complains about this case as if what's happening is that Zenimax is claiming they own the word "scrolls"

        No it's not, what's happening is that Mojang wants to own the word scrolls

        Do you get it now? You're accusing Zenimax of doing the thing that Mojang is trying to do, and you're taking Mojang's side.

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          October 7, 2011 11:25 AM

          stop it with your reasoning.

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          October 7, 2011 12:43 PM

          whoa

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          October 7, 2011 1:33 PM

          Yes, that's exactly what Zenimax is doing ,otherwise there would be no legal action.

          Mojang wants to claim the word Scrolls to be used in their IP

          Zenimax claims they already own the word.

          I'm making fun of them both.

    • reply
      October 7, 2011 10:37 AM

      look at all the lawyers in this thread

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      October 7, 2011 10:37 AM

      brb, trademarking "Parchment" for my upcoming japanese tentacle-sex simulator.

    • reply
      October 7, 2011 10:40 AM

      Why can't Lovecraft's estate sue them for using the word 'elder', because to me that denotes elder gods..

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      October 7, 2011 10:41 AM

      So, what' s next in the world? Apple to trademark the word Apple and we'll be force to spend $1 to Apple, Inc. for every "apple(TM)" we eat? Or maybe Apple and Samsung will get into yet another pissing match about the word phone in how calling anything a phone is diluting the iPhone brand causing untold consumer confusion since other things may have the same parent word in their use.

      Big business has gotten too big for it's britches.

      • reply
        October 7, 2011 10:42 AM

        [deleted]

        • reply
          October 7, 2011 11:21 AM

          Unable to determine sarcasm? Besides, I've been in school. Multiple degrees in fact. "I am the smrt" - Homer

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        October 7, 2011 10:50 AM

        Shows how much history you know.

        Apple Computer got sued by Apple Corps (the media company that handles all things Beatles, especially Apple Records) back in the day because they used the word Apple.

        Apple Computer reached a settlement of cash and the mutual agreement not to get in each others business (i.e., Apple Computer stays out of the music business and Apple Corps stays out of the computer business).

        And then Apple made the iTunes Music Store, thereby entering the music business, and Apple Corps sued them again.

        http://en.wikipedia.org/wiki/Apple_Corps_v._Apple_Computer

        You act like this is a new thing and it's just not.

    • reply
      October 7, 2011 10:42 AM

      [deleted]

      • reply
        October 7, 2011 10:47 AM

        [deleted]

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          October 7, 2011 10:52 AM

          Trademark law prevents the patenting of common words but has let stupid things go through ( I think Trump has trademarked the phrase "You're fired" for example).

          If I were in B's lawyers shoes, I would be uncomfortable not perusing action on the assumption that "scrolls" is a common word. At worst, the judge says "Common word, sorry, no action", which means that they never will have to sue for a game with "scrolls" in the name, and can rest that its "elder scrolls" that's their trademark, which they have suitably defended.

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            October 7, 2011 11:08 AM

            That's the biggest thing here - people don't understand lawsuits.

            Lawsuits are seen as these horrible viscous things that only total assholes would ever file.

            No, Zenimax thinks that Mojang's attempt to copyright the word "Scrolls" in all forms of media isn't right, and more specifically could pose an issue for them.

            So the matter will be settled in court. Where these things are decided. They're not trying to squash Notch like some bug, they're trying to make sure that they can't take the word "Scrolls" in all media if they're not supposed to be able to.

            • reply
              October 7, 2011 11:15 AM

              [deleted]

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                October 7, 2011 11:20 AM

                So then you agree that Mojang shouldn't own the word "Scrolls"?

                Because that's what's happening here - Mojang wants to own the word "Scrolls" and if they get their wish they they could legally force Zenimax to change the name of their Elder Scrolls series, pull Skyrim off of shelves, etc. Zenimax is saying "wait, you can't claim to own the word 'Scrolls', it's too generic and besides we already have games with that word in their title"

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                October 7, 2011 11:29 AM

                But assuming there's no prior case on the explicit word "scrolls", and you in the multi-million dollar shoes of Zenimax, would you be willing to presume that there's no trademark conflict here?

                It is a shame this needs to go to court: I would think that there should be a binding arbitration board set up by the USPTO to review cases like these conflicts and make a preliminary, from which then if one side is upset with, it can go to court, but otherwise counts as "defending trademark".

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              October 7, 2011 11:35 AM

              QUESTION

              So - and I don't claim to know anything about the law here, so try with all your might to resist insulting me - if Mojang doesn't get the trademark for "Scrolls", can they still legally name their game "Scrolls"? I mean, it seems to me you should be able to use a common word as a name for your product without having the right to block everyone else from using that word as part of a bigger name for theirs.

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                October 7, 2011 11:45 AM

                Yeah, no idea. Another matter for the courts I suppose. Maybe you can trademark the concept of calling your game Scrolls and only Scrolls and that's it. Same way there's been lots of games with the word "Doom" in the title but no other games just called "Doom"

              • reply
                October 7, 2011 11:55 AM

                [deleted]

                • reply
                  October 7, 2011 12:08 PM

                  The lawsuit is about Mojang calling their game Scrolls. Not about their earlier attempt at getting a trademark. Seriously.

                  I even read the damn lawsuit, and although my swedish isn't great, I'm pretty sure I have it right, and the people claiming that this is an attempt at blocking a trademark application got it wrong.

                  Of course, if the trademark application had gone through, Mojang would probably have ended up in the same situation as Bethesda is in now.

                  I'm curious how this will end. This is a lawsuit in a Swedish court. I don't think we have a lot of experts on Swedish trademark law here.

                  • reply
                    October 7, 2011 12:16 PM

                    [deleted]

                    • reply
                      October 7, 2011 12:22 PM

                      [deleted]

                    • reply
                      October 7, 2011 12:26 PM

                      But even in the US, why would you say that they couldn't use the name, if they couldn't get a trademark?

                      Do you mean that they couldn't because Bethesda would sue them for trademark infringement, or that they simply wouldn't be allowed to release a product with a name they couldn't trademark?

                      I don't think the latter is true in the US. As I understand it, there can be some amount of room between:
                      - not being able to get a trademark on a name "A" because it's too close to trademark "B"
                      - "A" infringing on trademark "B"

        • reply
          October 7, 2011 11:23 AM

          see, that's what watcherxp means. you are wrong.

          • reply
            October 7, 2011 12:20 PM

            [deleted]

            • reply
              October 7, 2011 1:02 PM

              you do understand the base issue of the word "scroll" causing problems with already existing games? it's not that hard to parse.

    • reply
      October 7, 2011 10:43 AM

      FORCED. lol ya, my ass.

      • reply
        October 7, 2011 11:50 AM

        Read up on how trademarks work, if you don't defend it, you lose it.

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          October 7, 2011 11:52 AM

          That doesn't necessarily mean going through the entire process all the way to a suit, though. If they raised it and came to some undisclosed settlement I doubt that would affect any future actions.

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            October 7, 2011 11:56 AM

            If they get a judgement on it though that helps with any further cases.

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              October 7, 2011 12:09 PM

              Sure, but that's not the same thing.

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                October 7, 2011 12:57 PM

                I'm saying that may be why they're still pursuing it.

                • reply
                  October 7, 2011 1:06 PM

                  Yes, but that wasn't what your original post said. I'm not saying it's not valid, just that they're hardly forced to go all the way to trial.

    • reply
      October 7, 2011 10:47 AM

      the longer this goes on, the weirder that todd howard/notch round table appears

      http://www.gameinformer.com/b/features/archive/2011/06/14/notch-and-todd-howard-the-one-on-one-interview.aspx

      • reply
        October 7, 2011 10:56 AM

        Why? Notch has said he doesn't consider this to reflect on the actual Devs at Bethesda.

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          October 7, 2011 11:00 AM

          I know! It's just funny. I mean I think it's pretty obvious if there weren't so many huge fans of MC @ Bethesda, this never would've happened. It's just a weird thing. I hope it's resolved soon.

      • reply
        October 7, 2011 12:21 PM

        [deleted]

    • reply
      October 7, 2011 10:48 AM

      So do they own the rights to the Dead Sea Scrolls too? =)

    • reply
      October 7, 2011 10:49 AM

      [deleted]

      • reply
        October 7, 2011 11:10 AM

        Yeah I agree, Mojang is really being an asshole here.

      • reply
        October 7, 2011 12:11 PM

        [deleted]

        • reply
          October 7, 2011 12:13 PM

          This is the core issue.

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            October 7, 2011 7:23 PM

            Bullshit! Should SQUARE have attacked CAPCOM for making Final Fight?

        • reply
          October 7, 2011 12:24 PM

          what is the issue with someone putting scrolls in a video game name? I agree no one should put "elder scrolls" in a video game name, but forbidding people from using one of the words from the title of their series?

          Not that Mojang went about it the right way, I just don't like seeing a company that owns "elder scrolls" also owning "scrolls"

        • reply
          October 7, 2011 1:04 PM

          apple records wouldn't have a claim against a software developer named appleOH WAIT..

        • reply
          October 9, 2011 3:52 AM

          INF

    • reply
      October 7, 2011 10:52 AM

      [deleted]

    • reply
      October 7, 2011 11:19 AM

      [deleted]

    • reply
      October 7, 2011 11:29 AM

      You can't own fucking words. How stupid do we have to be to think that we can?

      • reply
        October 7, 2011 11:30 AM

        So why is Mojang trying to apply for the ownership of "Scrolls" in all media?

      • reply
        October 7, 2011 11:31 AM

        [deleted]

      • reply
        October 7, 2011 11:37 AM

        I know, why is Capcom trying to stop me from making Street Fighter 5, a city building simulation?

        • reply
          October 7, 2011 1:09 PM

          Wouldn't "Street Builder" or "NBA Street" a better example? Or just "Street". The game isn't called "El Derscrolls or "Elder Scrolls 5".

    • reply
      October 7, 2011 11:40 AM

      If you bother to actually read the article, you'll see that they're suing to stop Mojang from NAMING their game "Scrolls: Whatever", NOT to block them from getting a trademark.

    • reply
      October 7, 2011 11:59 AM

      Trademark law IS fucked up in this regard.

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      October 7, 2011 12:11 PM

      This ordeal is just a clusterfuck of ignorance more than anything.

    • reply
      October 7, 2011 12:47 PM

      I'm am totally in favor of Zenimax winning this one. Mojang's Scrolls will never get my money anyway.

    • reply
      October 7, 2011 1:06 PM

      Total bullshit, don't change nothing notch, you've got the cash to fight this

      • reply
        October 7, 2011 1:08 PM

        Ahh where is the edit button, didnt read far down deep enough, I thought he was being fucked over

        • reply
          October 7, 2011 3:03 PM

          Yup. Bandwagon mob mentality. BUT I LIKE NOTCH, HE'S AN INDIE DEVELOPER, HE MUST ALWAYS BE IN THE RIGHT. Gimme a break.

        • reply
          October 8, 2011 4:28 AM

          [deleted]

    • reply
      October 7, 2011 1:10 PM

      I bet half the people who played oblivion or morrowind hardly associated it as Elderscrolls anyway.

      • reply
        October 7, 2011 1:57 PM

        Yeah exactly, most people i know say the "new oblivion" when they talk about Skyrim.
        Most of them don't even know that they were other games before Oblivion.

    • reply
      October 7, 2011 1:58 PM

      I think Bethesda is a bit behind on how we refer to their games. As far as everyone is concerned, they have made

      Arena
      Daggerfall
      Morrowind
      Oblivion
      Skyrim

      not:

      Elder SCROLLS I
      Elder SCROLLS II
      Elder SCROLLS III
      Elder SCROLLS IV
      Elder SCROLLS V

    • reply
      October 7, 2011 2:27 PM

      I demand a trial by Quake Combat

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      October 7, 2011 4:24 PM

      If anything, it just proves how broken the system is when one game named 'Elder Scrolls' cant exist in the same reality as one called 'Scrolls'.

      Ludicrous. Just because the movie 'Lethal Weapon' exists, doesn't mean you cant have one just called 'Weapon', so what is the issue here?

      Fuck the system.

    • reply
      October 7, 2011 7:26 PM

      [deleted]

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      October 8, 2011 12:03 AM

      It's lame that Bethesda has to do this, but I don't blame them at all. If Notch wants to patent the shit out of some game, he should just pick a different name. No one will care if its called Scrolls or not.

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      October 8, 2011 7:21 AM

      I work in the USPTO I will find this case and change it to approve by tuesday since Monday is a holiday =D Game over case dismissed.

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      October 8, 2011 1:25 PM

      Note to self: Never name my game Elder

      • reply
        October 10, 2011 6:10 AM

        "Note to self- Never name my game Elder then apply to Trademark the word Elder to make Bethesda have to pay me money next time they release and Elder Scrolls game."

        Fixed it for you.

    • reply
      October 8, 2011 2:17 PM

      why dont they just sell mojang a license for the trademark for $1

      • reply
        October 9, 2011 3:50 AM

        With a non-disclouse on the price tag? Sounds like a GREAT idea.

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      October 8, 2011 7:30 PM

      Imho Notch is acting HIGHLY unprofessional, especially with the "imma release the legal papers ONLINE!" >_

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        October 9, 2011 12:03 PM

        +1 A lot of people don't seem to realize that Notch has essentially forced ZeniMax to take action. First with just the application for 'Scrolls' and second by making everything public. This isn't a major corporation on an IP warpath, this is a company being forced into defending IP rights they legitimately own.

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