Tuesday, April 27, 2010

Ninth Circuit Decision on the line between descriptiveness and suggestiveness

In Zobmondo Entertainment, LLC v. Falls Media, LLC, No. 08-56831 (9th Cir. Apr. 26, 2010), the 9th Circuit reversed the district court’s ruling, on summary judgment, that the registered mark “WOULD YOU RATHER . . . ?” for books and games was merely descriptive and that its registration should be canceled.

While largely fact-specific, the 9th Circuit opinion is notable in a least a couple of respects. First, it discusses three different tests that could be employed to determine whether a challenged mark is suggestive or descriptive: the “imagination” test, which focuses on how much thought consumers need, when confronted with the mark, to make conclusions about the nature of the product; the “competitors’ needs” test, which focuses on the extent to which, if any, competitors need to use the mark to describe their competing products; and the “extent of use” test, which looks at the frequency with which competitors actually use the mark on similar merchandise. (To me, there looks to be little difference between the “competitors’ needs” test and the “extent of use” test.)

Second, the court gave substantial weight to the fact that the PTO registered the mark without requiring proof of secondary meaning.

Finally, the court highlighted the challenger’s citation of statements by people associated with the registrant that seemed to indicate that they thought “WOULD YOU RATHER . . . ?” was a good mark for the precise reason that it described the subject of the book and the game. Good evidence to look for in discovery.

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