Would You Rather … ?

That’s the trademark at issue in Zobmondo Entertainment v. Falls Media, a case heard by the U.S. Ninth Circuit Court of Appeals earlier this year. The district court found the mark merely descriptive and, thus, not entitled to federal trademark protection. On appeal, the Ninth Circuit applied both the “imagination test” and the “competitors’ needs test” to determine whether it agreed with the district court’s findings.

Manufacturer rolls the dice

Falls Media filed an intent-to-use (ITU) application with the U.S. Patent and Trademark Office (USPTO) on July 31, 1997, for the mark WOULD YOU RATHER … ? for books and games. It published its first book using the mark, WOULD YOU RATHER …? Over 200 Absolutely Absurd Dilemmas to Ponder, in October 1997. A sequel was published in 1999, and both were sold in major retail stores. They also received unpaid national publicity on television and radio and in print.

In September 1997, Zobmondo’s founder filed an ITU application to register the mark WOULD YOU RATHER … ? The application was rejected due to the likelihood of confusion with the Falls Media mark. Undaunted, Zobmondo began producing games in 1998 using a concept similar to the Falls Media mark, including “Zobmondo!! That Crazy WOULD YOU RATHER Game.”

Falls Media released its first WOULD YOU RATHER … ? board game in December 2004, and the USPTO issued it a registration for the mark in July 2005. Litigation ensued, and the district court eventually ruled that WOULD YOU RATHER … ? wasn’t entitled to federal trademark protection because it was “merely descriptive” of the goods and had not acquired secondary meaning.

The Ninth Circuit’s turn

On appeal, Falls Media contended that its mark was “suggestive” rather than “descriptive.” Under federal trademark law, marks are placed into one of five categories of increasing distinctiveness:

1. Generic,
2. Descriptive,
3. Suggestive,
4. Arbitrary, and
5. Fanciful.

Suggestive marks are considered inherently distinctive and subject to federal trademark protection. A descriptive mark, though, is protectable only if it has acquired a secondary meaning — in other words, when consumers have come to associate the mark with the source of the goods, rather than the underlying product.

As the court explained, with a suggestive mark, “[A] consumer must use imagination … to understand the mark’s significance,” as the mark suggests only a feature of the product. Conversely, a descriptive mark explicitly describes a quality of the product and requires no exercise of the imagination.

2 tests to play

The Ninth Circuit generally has relied on two tests to differentiate between suggestive and descriptive marks:

1. The imagination test. The most-often-used test, it asks whether imagination or a mental leap is required to reach a conclusion on the nature of the product being referenced. The court found that the imagination test by itself was insufficient to determine whether the mark here was descriptive or suggestive of a board game. Without comprehensive consumer survey evidence, it could not “say with confidence” how consumers would understand the phrase WOULD YOU RATHER …?

2. The competitors’ needs test. This focuses on the extent to which competitors need the mark to identify their goods or services. If the need is great, the mark is probably descriptive. The court found that the test “strongly favored” Falls Media’s argument: “[I]t’s difficult to say that Zobmondo necessarily needs to use WOULD YOU RATHER … ? for its version of the board game of bizarre or humorous choices.”

Game on

Ultimately, the Ninth Circuit ruled that both tests were inconclusive at this stage. It therefore remanded the case to the district court for trial on the issue of whether the mark is suggestive or merely descriptive as a mark for a board game.

About the trademark law firm:

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. 

 Klemchuk LLP hosts Culture Counts, a blog devoted to the discussion of law firm culture and corporate core values with frequent topics about positive work environment, conscious capitalism, entrepreneurial management, positive workplace culture, workplace productivity, and corporate core values.