How can I use a trademark name in my app title?

Question

I am a student software developer in NY, USA. As a learning project, I created a mobile application for calculating scores of my favorite crossword board game and posted it on the famous online markets. I am making no money on it. The name of the application is the following "[CROSSWORD GAME NAME] Score Calculator".

6 months after I published my app, I received a copyright infringement letter from the [CROSSWORD GAME NAME] company. The reason for complain is following:

This developer uses [CROSSWORD GAME NAME] trademark as the dominant portion of the name of their apps, which is not distinguished by any other mark that would identify an alternative source for the goods/apps.

I suggested the new name for my app "Calculator for [CROSSWORD GAME NAME] Score" to the company's trademark lawyers. In my understanding, the newly proposed game name would be considered nominative fair use of the trademark. But the lawyers opposed to my suggestion:

It is not acceptable, nor is it nominative fair use of the [CROSSWORD GAME NAME] trademark. Nominative fair generally applies to comparative advertising, parody and noncommercial use of trademarks. Including someone else's trademark in your own trademark (which is what an app title is) does not fall within the nominative fair use exception because you use [CROSSWORD GAME NAME] trademark as a trademark for your product – an app – and the statutory language in 15 U.S.C. 1115(b)4) specifically states that the defense applies only where “the use of the name, term, or device charged to be an infringement is a use, *otherwise than as a mark" (*emphasis added). An app name functions as a trademark for the goods.

If I remove the game's name from my app title, I'm afraid people won't be able to find my app anymore. I see that many other apps on the markets whose app title includes the game name. Do you think it is possible to use "Calculator for [CROSSWORD GAME NAME] Score" despite what their lawyers say?

If not, how can I keep the game's name in the app title? How is it different from a book entitled like "Become an expert in [GAME NAME]" ?

Answer 1

If not, how can I keep the game's name in the app title?

Pay them a licence fee. Of course, they may not be willing to licence their trademark to you or you may not be willing to pay what they ask - that’s their prerogative; you can’t force people to sell you their stuff.

Hasbro’s, sorry, I mean [CROSSWORD GAME NAME] owner’s lawyers, have explained the trademark law very well and while nothing is impossible, your chance of winning a lawsuit is as close to 0 as makes no difference. Here’s another point of view about similar circumstances.

If you lose you will have to change the name anyway and pay damages (everything the game has earned is typical) and, probably, [CROSSWORD GAME NAME] owner’s costs. They are offering you a really good deal in allowing you to change the name and not suing you.

If I remove the game's name from my app title, I'm afraid people won't be able to find my app anymore.

Tough. The fact that people are finding your app because of [CROSSWORD GAME NAME] only strengthens the case against you.

How is it different from a book entitled like "Become an expert in [GAME NAME]" ?

It isn’t because the publisher almost certainly paid them a licence fee.