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Zobmondo Entm't, Ltd. Liab. Co. v. Falls Media, Ltd. Liab. Co. - 602 F.3d 1108 (9th Cir. 2010)


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. 15 U.S.C.S. §§ 1057(b)1115(a). Where the United States Patent and Trademark Office (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. A corollary of this principle is that the registrant is not entitled to a presumption of secondary meaning unless the PTO required proof of secondary meaning as part of the application for registration of the mark. The burden to prove secondary meaning does not shift upon a decision of the PTO to register the mark, absent evidence that the PTO registered the mark upon finding that it had acquired secondary meaning.


The parties used similar marks to identify board games and books that incorporated questions posing humorous, bizarre, or undesirable choices. The trademark holder filed an intent-to-use application with the United States Patent and Trademark Office (PTO) regarding the "Would you rather.?" mark. The PTO issued the trademark holder a registration for the mark. A competitor sued the trademark holder and its founders, alleging trade-dress infringement. The trademark holder, on the other hand, asserted counterclaims for trademark infringement and unfair competition. The district court found that the mark was not entitled to federal trademark protection because the mark was "merely descriptive" and lacked secondary meaning, granted the competitor summary judgment as to defendants' claims and ordered the mark cancelled from the federal trademark registry. Defendants appealed.


Was summary judgment proper?




The appellate court determined that summary judgment was inappropriate because there was a genuine issue of material fact whether the mark was suggestive or merely descriptive as a mark for a board game since, inter alia, (1) a presumption of validity was afforded to the registered mark under 15 U.S.C.S. § 1057(b), (2) the imagination test was inconclusive by itself to determine if the mark was descriptive or suggestive of a board game, (3) the competitors' needs test strongly favored the trademark holder's argument that the mark was suggestive, and (4) the extent-of-use test did not render the mark merely descriptive as a matter of law. Thus, the appellate court reversed the summary judgment and remanded for trial.

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