–Dan Kelly, Attorney
Long time DuetsBlog readers may recall the lawsuit between Spin Master and Zobmondo regarding infringement of the “Would You Rather…?” trademark. Prior DuetsBlog coverage is here and here. The jury is in, literally, and unanimously found that the Would You Rather…? trademark is protectable and that Zobmondo infringed it to the tune of $5.1 million in compensatory damages. The jury also found Zobmondo liable for $3.5 million in punitive damages. According to Law360’s coverage, Zobmondo intends to appeal, and it sounds like the appeal will focus on the jury’s determination that the Would You Rather…? trademark is protectable as a mark. Zobmondo’s position is that the Would You Rather…? trademark is merely descriptive of the game that Spin Master provides under that mark.
Zobmondo has been to the Ninth Circuit before in this case on the issue of descriptiveness, with unfavorable results. Several years ago, the District Court had determined that the Would You Rather…? trademark was descriptive, and on that basis summarily ruled in favor of Zobmondo. The Ninth Circuit reversed that decision, holding that there were questions of fact surrounding the issue of whether the Would You Rather…? trademark is descriptive, and sent the case back to the District Court.
Now, although the issue is the same, the procedural posture is different. We now have a jury determination that the Would You Rather…? trademark is protectable, which means that the jury has found facts in support of the mark either being inherently distinctive, or that if it is descriptive, secondary meaning supports the distinctiveness of the mark. I do not know off the top of my head what the standard of review is at the Ninth Circuit for an issue like this, but generally speaking, appellate courts do not lightly overturn a jury’s factual findings on appeal. Appeals courts in cases like this tend to be deferential to the jury, which sees live witnesses and can assess credibility as well as the substance of testimony and evidence. In contrast, appellate courts review a “cold” record and need to see strong evidence that the jury blew the call. In short, and I say this myself not knowing what the evidence looks like in this case, Zobmondo is almost certainly facing an uphill battle on appeal on the issue of descriptiveness.
Having said that, here’s an experiment that you can try to play along at the home or at the office. Surf over to your favorite Internet search engine and type in the words “would you rather” (without the quotes). Out of the results that come up, see how quickly you can find the website or page of the “official” Would You Rather…? game–meaning, the one published or distributed by the owner of the federally registered Would You Rather…? trademark. I believe that you will see widespread use of the phrase Would You Rather…? and that it is not easy to find the “official” one. This is not necessarily conclusive on the issue of descriptiveness, but it should make you sympathetic to Zobmondo’s position on the issue. From a commercial standpoint, the Would You Rather…? trademark does not appear to be terribly distinctive.
Stay tuned for further developments.