“WOULD YOU RATHER…?” Is this Trademark Distinctive?

In Zombonodo Entertainment v. Falls Media, the Ninth Circuit Court of Appeals offers a great refresher course on the law governing trademark registrations.

The case involved a trademark issued to Falls Media, entitled: “WOULD YOU RATHER…?”  Based on the issued trademark, Falls Media sued Zombonodo for trademark violation and related claims arising from Zombonondo’s popular board games that included the mark “WOULD YOU RATHER…?”

The Central District of California, Chief Judge Audrey B. Collins, ruled that (despite the statutory presumption of validity) the mark was “merely descriptive.”  Chief Judge Collins entered summary judgment, cancelling the mark from the federal trademark registry.

The Ninth Circuit Court of Appeals reversed and remanded for trial.  In its step-by-step analysis of trademark registration law, the Court started by explaining the following:

Five Categories of Marks

Marks are generally classified in one of five categories of increasing distinctiveness:

(1) generic, (2) descriptive, (3) suggestive, (4) arbitrary or (5) fanciful. Which category a mark belongs in is 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 are not eligible for trademark protection. 

Merely descriptive marks are somewhere in-between; although they are not inherently distinctive and are therefore not entitled to automatic trademark protection, a merely descriptive mark can become protectable if it has acquired distinctiveness “as used on or in connection with the applicant’s goods in commerce.”  This acquired distinctiveness is referred to as “secondary meaning.”

Is the Mark “Suggestive” or “Descriptive”

The dividing line between marks that are protected and those that are not protected is drawn between “suggestive marks” (protected) and “descriptive marks” (not protected, without proof of secondary meaning).

A suggestive mark is one for which “a consumer must use imagination or any type of multistage reasoning to understand the mark’s significance . . . the mark does not describe the product’s features, but suggests them.”  

By contrast, a merely descriptive mark describes the qualities or characteristics of a good or service.  It “define[s] qualities or characteristics of a product in a straightforward way that requires no exercise of the imagination to be understood.”

In distinguishing between suggestive and descriptive marks, “[d]eciding whether a mark is distinctive or merely descriptive is far from an exact science and is a tricky business at best.”

The Ninth Circuit Court has generally applied one or two “tests” to differentiate between suggestive and merely descriptive marks:

The “Imagination Test” for a Suggestive Mark

The first test (clearly the most-used) is known as 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 imagination test does not ask what information about the product could be derived from a mark, but rather whether “a mental leap is required“ to understand the mark’s relationship to the product.

For example, the mark “ENTREPRENEUR” as applied to a magazine was descriptive, not suggestive, because “an entirely unimaginative, literal-minded person would understand the significance of the reference.”  The “imagination test” is the Ninth Circuit’s primary criterion for evaluating distinctiveness.

The “Competitors’ Needs Test for a Suggestive Mark

The second test, known as the competitors’ needs test, focuses on the extent to which a mark is actually needed by competitors to identify their goods or services. 

If competitors have a great need to use a mark, the mark is probably descriptive; on the other hand, if “the suggestion made by the mark is so remote and subtle that it is really not likely to be needed by competitive sellers to describe their goods or services, this tends to indicate that the mark is merely suggestive.”

The competitors’ needs test is related to the imagination test, “because the more imagination that is required to associate a mark with a product or service, the less likely the words used will be needed by competitors to describe their products or services.”

Burden of Proof

Although the plaintiff in a trademark action bears the ultimate burden of proof that his or her mark is valid, federal registration provides “prima facie evidence” of the mark’s validity and entitles the plaintiff to a “strong presumption” that the mark is a protectable mark. Where the PTO issues a registration without requiring proof of secondary meaning, the presumption is that the mark is inherently distinctive.

If the plaintiff establishes that a mark has been properly registered, the burden shifts to the defendant to show by a preponderance of the evidence that the mark is not protectable.

With respect to a registered mark, the defendant’s burden is not simply to show that the mark describes a feature of the trademark holder’s product; rather, it must show that consumers regard the mark as merely descriptive of that product.”

Summary

A mark may be registered if it is fanciful, arbitrary or suggestive.   A mark may not be registered if it is generic.   In order for a descriptive mark to be registered, it must have acquired a secondary meaning in commerce. 

Evaluation of whether a mark is suggestive or descriptive is done under two tests: the “imagination test” (is the imagination or a mental leap required order to reach a conclusion as to the nature of the product) and the “competitors’ needs test” (the extent to which a mark is actually needed by competitors to identify their goods or services).

Prevailing Counsel in this case was Bobby A. Ghajar, Howery LLP, Los Angeles.

The Ninth Circuit panel included: Judge Ronald M. Gould, Judge Sandra S. Ikuta and Judge N. Randy Smith. 

The excellent and instructive opinion was authored by Judge Gould.