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Howrey Wins Ninth Circuit Reversal of Summary Judgment on Issue of Trademark Distinctiveness

Thursday, April 29, 2010

On Monday the Ninth Circuit issued a published opinion in Zobmondo v. Falls Media, Case No. 08-56831, slip op., (9th Cir. April 26, 2010) reversing the district court's grant of summary judgment in favor of a trademark infringement defendant on grounds that the trademark owner’s mark was descriptive, and remanding the case for trial. The full text of the decision appears at

This case will inevitably become part of the standard for summary judgment dealing with the line between suggestive and descriptive marks. In contrast with Lahoti v. VeriCheck, Inc., 586 F.3d 1190 (9th Cir. 2009), where the Ninth Circuit made enforcement more difficult for plaintiffs with arguably descriptive marks, this decision suggests that the line between descriptive and suggestive marks is still a grey area raising a triable issue.


Howrey's client, Falls Media, is the owner of the federally registered trademark, WOULD YOU RATHER…? for books and board games presenting humorous, bizarre and undesirable choices. A direct competitor, Zobmondo, had unsuccessfully opposed Falls Media's intent-to-use ("ITU") application, attempted to register the mark for itself, and tried to buy the rights to the mark but Falls Media declined to sell. After Falls Media's books had gained traction, but before its board game launched, Zobmondo came out with a board game using the WOULD YOU RATHER…? mark in its entirety. The parties each filed several claims which were consolidated into a case heard by Judge Collins in the Central District of California. After Howrey won two summary judgment motions dismissing Zobmondo’s copyright, trade dress, fraud, and unfair competition claims against Falls Media, the district court granted summary judgment on Falls Media's trademark claims against Zobmondo, finding that the mark was descriptive and lacked secondary meaning. Howrey appealed this ruling on behalf of Falls Media.

Ninth Circuit Opinion

The Ninth Circuit reversed and remanded based on the district court's error in finding the WOULD YOU RATHER…? mark merely descriptive as a matter of law. The opinion states that distinctiveness must be considered using standards of meaning among prospective purchasers, not the fact-finder's own perception of the mark.

A federal registration bears some weight in the distinctiveness analysis

The Ninth Circuit criticized the district court for giving improper weight to Falls Media's federal registration. While a registration may not be used as the sole basis to survive summary judgment, the presumption of validity it provides is "a strong one" and the burden to overcome it is "heavy." The court noted that the USPTO has special expertise in assessing distinctiveness such that its decision to register a mark should not be entirely ignored.

The "imagination" and "needs" tests are both valid

There are several tests which courts across the country employ to determine whether a mark is suggestive or descriptive. In the Ninth Circuit, the most commonly used test 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." While it is true that mark may be descriptive if it describes some aspect of the product (as opposed to its essential nature), the court found that there is no literal meaning of WOULD YOU RATHER…? – such that some imagination is required to know that the product poses bizarre or humorous choices. For example, the phrase is not defined in any dictionary, and absent consumer surveys proving what consumers understand the phrase to mean, it cannot be said to be merely descriptive.

Additionally, while the district court found it could rely on the imagination test alone, the Ninth Circuit recognized the relevance of the "competitors' needs" test. This “needs” test is inherently related to the imagination test -- the more imagination needed to associate the mark with its goods or services, the less likely the words need to be used by competitors to describe their competing products. The district court had found the needs test "difficult to apply" and therefore ignored it, but the Ninth Circuit agreed with Falls Media that exclusion of the test was error. Among other factors, the court noted that the fact that Zobmondo had identified 135 alternative names for its game at least created a disputed issue of fact making summary judgment inappropriate. The court declined to decide whether a third test – “extent of third party use” – was controlling, but noted that it could be an informative factor.

Genuine Issues of Material Fact

The Ninth Circuit found that the totality of the evidence, including Falls Media’s trademark registration, created several genuine issues of material fact regarding the mark’s distinctiveness. For example:

  • Despite alleged admissions by Falls Media’s witnesses that WOULD YOU RATHER…? was descriptive, the court focused the inquiry on how consumers perceive the mark -- not the smaller subset of those already familiar with the products.
  • The court also noted that evidence of books, websites and copyright registrations utilizing the WOULD YOU RATHER…? phrase prior to Falls Media's trademark application could not be relied upon as “third party use” without proof of sales and distribution figures.
  • The court also noted that the fact that Zobmondo had tried to register and otherwise acquire trademark rights in the identical mark at least supported an inference that it believed the mark was inherently distinctive.
  • The court also recognized that Zobmondo’s use of descriptive tag-lines with the WOULD YOU RATHER…? mark could be evidence that the mark alone is suggestive.

Founded in 1956, Howrey LLP is a global law firm with over 625 attorneys and more than 35 economic, financial and regulatory consultants. Howrey has offices in Washington DC; Northern Virginia; Houston, Texas; New York, New York; Los Angeles, Irvine, East Palo Alto and San Francisco, California; Salt Lake City, Utah; Chicago, Illinois; London, England; Brussels, Belgium; Paris, France; Amsterdam, The Netherlands; Munich, Germany; Madrid, Spain and Taipei, Taiwan. Howrey's affiliate, The CapAnalysis Group, LLC (economic, financial, and litigation consultants) teams with Howrey attorneys as a strategic business resource. A consistent American Lawyer “A-List” and PLC Which Lawyer? “Global 50” firm, Howrey is one of the most frequently used law firms by the world’s leading companies. Howrey’s Intellectual Property practice was ranked as a top national IP practice and the Top IP Appellate practice by IP Law & Business. The Antitrust practice topped Global Competition Review’s “GCR 100” and recently received the prestigious Legal Business award as the Competition Team of the Year. The firm was also named by The Lawyer as one of the world’s “Top 50 Litigation Practices of 2009”. As the winner of the Thomas L. Sager Award from the Minority Corporate Counsel Association, Howrey is committed to the ideals of diversity and is equally committed to the tenets of pro bono and public service. Howrey's “Advantage of Focus” makes it the clear choice for antitrust, intellectual property and complex business dispute resolution. For more information, visit our Web site at

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