Zobmondo Entertainment, LLC v. Falls Media, LLC
602 F.3d 1108, 602 F. Supp. 3d 1108, 94 U.S.P.Q. 2d (BNA) 1491 (2010)
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Rule of Law:
A federally registered trademark is entitled to a strong presumption of validity, and a defendant challenging the mark's distinctiveness bears a heavy burden to overcome that presumption at the summary judgment stage, especially where the classification of the mark as suggestive versus merely descriptive is an intensely factual issue dependent on consumer perception.
Facts:
- In July 1997, Falls Media filed an intent-to-use (ITU) trademark application with the United States Patent and Trademark Office (PTO) for the mark 'WOULD YOU RATHER ... ?' for books and games.
- In September 1997, Zobmondo's founder also filed an ITU application for the mark 'WOULD YOU RATHER,' which the PTO rejected due to a likelihood of confusion with Falls Media's prior filing.
- Falls Media published its first book using the mark in October 1997 and a sequel in 1999, selling approximately 91,000 copies by 2002.
- In 2002, Zobmondo began prominently featuring the mark 'WOULD YOU RATHER ... ?' on the packaging of a board game it self-released.
- After being granted several extensions, Falls Media released its first 'WOULD YOU RATHER ... ?' board game in December 2004.
- On July 19, 2005, the PTO issued Falls Media a federal registration for the 'WOULD YOU RATHER ... ?' mark based on its statement of use.
Procedural Posture:
- Zobmondo sued Falls Media in the U.S. District Court for the Central District of California for trade-dress infringement and other claims.
- Falls Media sued Zobmondo in the U.S. District Court for the Southern District of New York for trademark infringement.
- In the New York action, Zobmondo filed a counterclaim seeking cancellation of Falls Media's 'WOULD YOU RATHER ... ?' trademark registration.
- The New York case was transferred to the Central District of California and consolidated with the initial action.
- The parties filed cross-motions for summary judgment in the federal trial court.
- The district court granted summary judgment for Zobmondo, finding the mark 'merely descriptive' without secondary meaning and ordering its cancellation from the federal registry.
- Falls Media, as the appellant, appealed the district court's decision to the United States Court of Appeals for the Ninth Circuit.
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Issue:
Is summary judgment appropriate to invalidate a federally registered trademark on the grounds that it is 'merely descriptive' when there is a genuine issue of material fact as to whether the mark is suggestive?
Opinions:
Majority - Gould, Circuit Judge
No. Summary judgment is not appropriate because the defendant did not meet its heavy burden to show that the mark is merely descriptive as a matter of law. A federally registered mark is presumed valid and distinctive, and in this case, a genuine issue of material fact exists as to whether 'WOULD YOU RATHER ... ?' is suggestive or merely descriptive. The court reasoned that trademark validity is an intensely factual issue, and summary judgment is generally disfavored. Applying the 'imagination test,' the court found it was inconclusive, as some consumers might require a mental leap to connect the open-ended phrase to a game of bizarre choices, while others might not. Application of the 'competitors' needs test' favored Falls Media, as evidence showed that competitors, including Zobmondo itself, had used alternative names to market similar games. Given the presumption of validity from the PTO registration and the disputed facts regarding consumer perception and competitors' needs, the issue must be resolved by a trier of fact at trial, not by a judge on summary judgment.
Analysis:
This decision reinforces the significant procedural advantage granted by a federal trademark registration and underscores the judiciary's reluctance to resolve the fact-intensive question of a mark's distinctiveness on summary judgment. By emphasizing that the PTO's expertise in granting registration deserves deference, the court sets a high bar for challengers seeking to invalidate a mark without a full trial. This case serves as a strong precedent that unless evidence of a mark's descriptiveness is 'so one-sided' that no reasonable juror could find otherwise, the determination of whether a mark is descriptive or suggestive is a question for the fact-finder, especially when consumer perception is central to the inquiry.
