Client Alerts
Would You Rather Be Distinctive
July 2010
Zobmondo Entertainment, LLC v Falls Media, LLC (the “Zobmondo Case”) teaches us a lot about the line between suggestive and descriptive trademarks.
For nearly a decade Zobmondo Entertainment, LLC (“Zobmondo”) and Falls Media, LLC (“Falls Media”) have sold competing board games and books that incorporate questions posing humorous, bizarre or undesirable choices under similar trademarks. In 1997, Falls Media filed an intent-to-use trademark application for “WOULD YOU RATHER . . . ?” in connection with books and board games. In 1999, Falls Media published its first book using the trademark “WOULD YOU RATHER . . .?” and shortly thereafter published a sequel. These books were widely distributed by retailers such as Barnes & Noble and Borders. In addition, Falls Media publicized the books through Oprah and The Tonight Show with Jay Leno, among other media outlets.
In 1997, shortly after Falls Media filed its intent-to-use application, Zobmondo filed an intent-to-use application for “WOULD YOU RATHER . . .?,” but it was rejected by the Patent and Trademark Office (“PTO”) because of likelihood of confusion with Falls Media’s application. Nevertheless, in 1998, Zobmondo began distributing a board game based on the same concept as Falls Media’s books under the names “Zobmondo!! That Crazy ‘Would You Rather’ Game” and “Zobmondo!! The Outrageous Game of Bizarre Choices”. Since then, Zobmondo has released several versions of the game under the WOULD YOU RATHER . . .? brand.
Falls Media released its first board game in 2004 and obtained a registration for WOULD YOU RATHER . . .? in connection with board games in 2005. Thereafter, Zobmondo filed a lawsuit against Falls Media for trade-dress infringement, copyright infringement and unfair competition, among other claims. Falls Media countered against Zobmondo claiming trademark infringement, unfair competition, and other claims.
The Central District of California granted a summary judgment motion in favor of Zobmondo on the issue of trademark infringement finding that there was no genuine issue of material fact whether the mark “WOULD YOU RATHER . . .?” was protectable. The District Court concluded the mark was merely descriptive and therefore not entitled to trademark protection.
Falls Media appealed and the 9th Circuit Court of Appeals found that there was a genuine issue of material fact and reversed the District Court’s finding of descriptiveness. The court’s analysis provides a guide for selecting a new trademark and protecting it.
To claim trademark infringement, a plaintiff must have a valid trademark. The plaintiff bears the ultimate burden of proof in a trademark infringement action that the trademark is valid and protectable. To be valid and protectable, a mark must be distinctive. Distinctiveness is measured from the perspective of the prospective purchasers and focuses on the connection between the proposed trademark and the goods or services it identifies.
Trademarks are classified into one of five categories: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. Suggestive, arbitrary and fanciful marks are inherently distinctive and are therefore entitled to trademark protection. Generic terms (those whose dictionary definitions relate directly to their products, such as Speedy Delivery Services and Skin Renewing Cream) are not entitled to trademark protection.
While suggestive marks are inherently distinctive and entitled to trademark protection, descriptive marks are not. Put simply, if a trademark describes the goods or services it identifies, it is descriptive. If a mark suggests features of the mark but requires the consumer’s imagination to understand the mark’s significance, the mark is suggestive. The issue in the Zobmondo Case is whether WOULD YOU RATHER . . .? is suggestive (and therefore inherently distinctive and entitled to trademark protection allowing Falls Media to sue Zobmondo for trademark infringement) or descriptive (and therefore not entitled to trademark protection causing Falls Media’s claims to be thrown out).
The Court of Appeals noted that there is a strong presumption that a mark is suggestive where the PTO grants registration without requiring proof of secondary meaning. The Court of Appeals also noted that distinguishing between suggestive and descriptive marks is “far from an exact science and is a tricky business at best”. Because “the descriptive-suggestive dichotomy is not ‘some kind of concrete and objective classification system’”, distinguishing between the two requires a complex factual analysis and thus not entitled to a summary judgment.
In trademark infringement cases, the 9th Circuit generally applies one of two tests to differentiate between suggestive and descriptive marks. First and most often used is the imagination test which asks whether “imagination or a mental leap is required in order to reach a conclusion as to the nature of the product being referenced”. The court applied the imagination test to the examples of Entrepreneur and Roach Motel. Entrepreneur was found to be descriptive and not suggestive because “an unimaginative, literal-minded person would understand the significance of the reference”. On the other hand, Roach Motel was found to be suggestive because it described a concept that required multistage reasoning to understand the mark’s relationship to the goods. The court found that applying the imagination test to the Zobmondo Case required a complex factual analysis and did not justify a summary judgment in favor of Zobmondo.
Then, the court applied the “competitors’ needs” test which “focuses on the extent to which a mark is actually needed by competitors to identify their goods or services” and found this test to strongly support Falls Media’s claim of suggestiveness because competitors do not need to use the terms WOULD YOU RATHER to describe their products. In fact, Zobmondo identified 135 possible alternative names for its game during its development and had marketed some of its games without WOULD YOU RATHER on the box.
The Court of Appeals remanded to Zobmondo Case for trial so that evidence could be presented on both sides to determine whether WOULD YOU RATHER is descriptive or suggestive.
What business owners can learn from Zobmondo:
- It is very difficult to distinguish between suggestive and descriptive marks. Selecting a trademark that falls within this grey area could be problematic for the future of your business. When selecting a trademark, you should try to select an arbitrary or fanciful mark, meaning a term that does not reference any feature of your products. Some examples of arbitrary and fanciful marks are Xerox for photocopies, Kleenex for facial tissues and Apple for computers.
- When selecting a potential trademark ask whether imagination or a mental leap will be required by your customers to understand the nature of your product. If the answer is no or maybe not, select another mark.
- When selecting a potential trademark also ask whether the mark is needed by your competitors to identify their goods or services. If the answer is yes or possibly, select another mark.
- Federal registration accords a “strong presumption” that the mark is inherently distinctive. It is very important to obtain a federal trademark registration for any trademark that you may want to enforce.
- Obtaining a trademark registration alone is not sufficient. Business owners should routinely analyze the use of their trademarks to ensure that they are properly and consistently using them.
- Do not assume that if you have a federal trademark registration your rights are bullet proof. Conversely, do not assume that a third party’s trademark registration is conclusive. If there is any question about the strength of a particular trademark, obtain expert advice because the line between descriptive and suggestive marks is often blurry.
