(CN) – The 9th Circuit could not decide if the phrase “Would You Rather…?” used by two entertainment competitors is suggestive or merely descriptive and ordered the “difficult” and “complex” issue to trial.
Falls Media and Zobmondo, makers of board games and books, both use the “Would You Rather … ?” phrase on their games. Both are successful and earn millions of dollars in revenue, according to the ruling.
Falls Media, which used the phrase first, filed suit in California district court against Zobmondo for trademark infringement but lost because the court ruled that the phrase was “merely descriptive” and “lacks secondary meaning.” The court also found that the company is not entitled to federal trademark protection.
The court relied on the “imagination test,” which determines whether or not imagination or a mental leap is required by the consumer to come to a conclusion on the nature of the product.
Falls Media appealed, arguing that multistage reasoning is needed to link the mark to the essential nature of the products, which are games and books that offer ridiculous or bizarre scenarios for the consumer to ponder and choose.
Fall Media also claimed the phrase was protectable and that Zobmondo is engaging in unfair competition and infringement by using it.
The three-judge panel agreed that the district court’s ruling was in error because even though the evidence it relied on from the test was persuasive, “it was not necessarily conclusive of how consumers in fact perceive the mark,” the panel ruled.
“Looking at the totality of the evidence proffered by Zobmondo and Falls Media and taking into account the ‘strong presumption’ accorded to Falls Media’s federal registration, we conclude that there is a genuine issue of material fact whether ‘Would You Rather … ?’ is inherently distinctive to consumers,” Judge Ronald Gould wrote.