Facts

Activision is a publisher of video games and interactive entertainment products, including the Call of Duty video game series, a first person shooter series that has sold more than 300 million copies. On March 10, 2020, Activision released a "free to play" online multiplayer games title Call of Duty: Warzone, which features a large computer-generated battlefield that accommodates up to 200 players at one time. Meanwhile, Warzone.com LLC develops and makes available a browser-based game titled Warzone, a free-to-play, turn-based strategy game in which players control armies across a map to take control of countries or territories. Warzone was released on 2017 and is not available on video game consoles. On June 25, 2020, Activision filed applications for registration of the trademarks WARZONE and CALL OF DUTY WARZONE. On October 30, 2020, Warzone.com filed applications for registration of the trademark WARZONE and filed a Notice of Opposition to the registration of the Activision marks. The opposition is currently pending before the United States Patent Trademark Office (USPTO). On November 20, 2020, Warzone's counsel sent a cease-and-desist letter to Activision's counsel , demanding that Activision "change the name of its game, stop using Warzone's WARZONE mark, and abandon the trademark applications." Activision filed suit seeking a declaration of non-infringement under the Lanham Act that its use and registration of the word marks WARZONE and CALL OF DUTY WARZONE do not infringe Warzone.com's purported trademark rights in the title of its game Warzone. On June 8, 2021, Warzone.com LLC filed counterclaims for unfair competition and trademark infringement under the Lanham Act.

PLAINTIFF'S CONTENTIONS: Plaintiff alleged that its use of the term "Warzone" was artistically relevant to the content of Call of Duty: Warzone since the game took place in a large, computer-generated warzone. Plaintiff also contended that its use of the term "Warzone" could not be explicitly misleading because it is a common English word with general meaning independent of defendant's game. Moreover, plaintiff argued that its marketing made clear that Call of Duty Warzone was part of the broader Call of Duty franchise and that any suggestion that it intended to mislead its customers into believing that it was associated with a browser-based strategy game defied common sense.

DEFENDANT'S CONTENTIONS: Defendant alleged that it has been using its WARZONE mark in commerce since at least November 13, 2017, and it has a pending application before the USPTO for the mark WARZONE. Further, defendant contended that plaintiff's use of WARZONE has saturated the market in a manner that has overwhelmed defendant. Moreover, defendant argued that plaintiff could have chosen other relevant non-infringing names for its Call of Duty game. Finally, Defendant maintained that the use of the term "Warzone" was explicitly misleading because consumers searching for its video game would be diverted to plaintiff's game.

Result

The court entered judgment for plaintiff.