Would You Rather... Go To Trial? Ninth Circuit Reverses Order Cancelling Board Game's Registered Trademark

The U.S. Court of Appeals for the Ninth Circuit today reversed a trial court's grant of summary judgment, in case concerning the scope of Federal trademark protection for the registered mark "WOULD YOU RATHER...?" for board games and books.

Falls Media, LLC, Justin Heimberg, and David Gomberg (Falls Media) had federally registered that mark with the united States Patent & Trademark Office. A dispute arose when Zobmondo Entertainment, LLC (Zobmondo) also began to use the mark on similar products.

The two companies were competitors and both were using the mark on board games and books that incorporate questions posing humorous, bizarre, or undesirable choices. (For example, one of Falls Media's sample question asks, “Would you rather be able to expedite the arrival of an elevator by pressing the button multiple times or have the ability to sound incredibly natural and sincere on answering machines?”) By 2008, both companies were operating successful businesses earning millions of dollars in revenues from sales of “WOULD YOU RATHER . . .?” products.

Falls Media filed a complaint alleging trademark infringement, unfair competition, and related claims. Zobmondo took the position that there could be no claim for trademark infringement because the mark was not valid and could not be protected by trademark law. Zobmondo moved for summary judgment, arguing that there were no genuine factual disputes that would permit Falls Media to go to trial on the relevant issues, and that Zobmondo was entitled to judgment as a matter of law.

The district court agreed with Zombondo and rejected Falls Media’s lawsuit, holding that “WOULD YOU RATHER . . . ?” is not entitled to federal trademark protection because the mark is “merely descriptive” and lacks secondary meaning as a matter of law. The court entered summary judgment in favor of Zobmondo and ordered cancellation of Falls Media's registration. Falls Media appealed.

On appeal, the Ninth Circuit found triable issues of fact and determined that in light of the factual disputes, it could not be said as a matter of law that the mark was merely descriptive.

Trademark law is concerned with avoiding confusion among consumers and primarily focuses on the identification of the source of particular goods or services. In a trademark infringement lawsuit, the a plaintiff is required to prove it has a “valid, protectable trademark.” Trademark validity is generally an intensely factual issue. In order for a trademark to be valid and protectable, it must be “distinctive.” In this context, distinctiveness is intended to measure the "primary significance" of the mark to prospective purchasers. Marks are generally classified in one of five categories of increasing distinctiveness: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful.

Which marks belong to which categories is generally a question of fact. Suggestive, arbitrary, and fanciful marks are considered “inherently distinctive” and are automatically entitled to federal trademark protection because “their intrinsic nature serves to identify a particular source of a product.” Generic marks, on the other hand, are not eligible for trademark protection. "Merely descriptive" marks fall somewhere in between: they are not entitled to automatic protection because they are not inherently distinctive, although a merely descriptive mark can acquire distinctiveness over time and can then can become protectable. This is called "secondary meaning.”

In this case, the court found that the registration entitled Media Falls to a presumption of validity, and explained the significance of the two tests that are used to provide guidance in differentiating between marks that are "suggestive" and those that are "merely descriptive," an issue that was critical to the analysis that had been employed by the district court. Those tests are known as the "imagination test" and the "competitors’ needs test."

The imagination test is the primary, and most frequently used, test. It asks whether “imagination or a mental leap is required in order to reach a conclusion as to the nature of the product being referenced.” Falls Media argued that a multistage reasoning process was required to link the mark to the “essential nature of these products . . . that the choices are ridiculous, bizarre, or themed and that they are limited to a two-option format.” The district court disagreed and determined that under this test, “WOULD YOU RATHER . . . ?” is merely descriptive because it requires “no imaginative or interpretive leap to understand that this phrase is the main aspect of the game to which it is affixed.”

The Ninth Circuit rejected Falls Media's argument, at least in part. It explained that the test is not concerned with what information about the product could be derived from a mark, rather, it is concerned with whether “a mental leap is required“ to understand the mark’s relationship to the product.

But the Ninth Circuit also concluded that the district court had erred in concluding that the imagination test indicates that the mark is merely descriptive as a matter of law. No consumer surveys were taken, the mark as a whole was not included in any dictionary, and there is no literal meaning of the phrase “WOULD YOU RATHER . . . ?” (particularly given that the words precede an ellipse). Thus there was insufficient evidence to allow the court to conclude precisely what consumers might understand the phrase “WOULD YOU RATHER . . . ?” to mean.

As for the competitors’ needs test, the trial court had found it difficult to apply and declined to consider it. The Ninth Circuit found this to be reversible error in light of the significant evidence Falls Media had introduced to suggest that its competitors do not need to use “WOULD YOU RATHER . . . ?” to fairly describe their products. Zobmondo itself identified 135 possible alternative names for its game during development and, at one point, had even marketed its game and a related book using the alternative name, “The Outrageous Game of Bizarre Choices,” rather than using the subject mark). There was also evidence that another board game company used the name “Would You Prefer?” on a similar game during the same time period.

The fact that Zobmondo had also filed its own trademark applications for the mark were also considered potential admissions that there was validity to at least some of the elements of the Falls Media marks. At the very least, the court found, there were factual issues and Falls Media was entitled to a trial on those issues.

Accordingly, the appellate court reversed the trial court's grant of summary judgment as well as the order directing cancellation of the mark, and remanded the case for trial.

The full text of the opinion is available on the Ninth Circuit's website.