Board Game Manufacturer Attempts To Take Down App Over The Use Of The Words 'Would You Rather'

from the again-proving-anything-can-be-trademarked dept

A nearly literal war of words has erupted online, prompted by a trademark dispute. The words in question? "Would you rather."

These three words, which have prompted wonderful (and wonderfully disturbing) discussions all over the internet (and IRL, as far as I've heard) apparently "belong" to Spin Master, a toy company whose products involve board games and apps. The company on the receiving end of legal threats for daring to use "would you rather" commercially is One Mighty Roar, whose "You Rather" apps have caught the attention of Pillsbury Winthrop Shaw Pittman LLP, the legal team representing Spin Master.

One Mighty Roar's apps have attracted millions of players over the last four years, but only in the past few weeks has it managed to trigger any sort of legal action.

Earlier this month we were happily debating merits of teleportation when we received an email from Apple. It said that Spin Master, a company with a board game based on “would you rather” questions, had filed a complaint with Apple saying our You Rather apps infringed their “WOULD YOU RATHER..?” trademark. Soon after, we received a matching letter from Google. It was a true Christmas miracle.

Spin Master's claim to the words "would you rather" traces back (rather circuitously) to 1997, but the registered trademark being leveraged here was filed in 2008 and granted in October of this year. The trademark covers board games and claims first use in 2004. Additional trademark owned by Spin Master also cover such areas as printed matter (mainly books and comic strips) and more pertinently, "computer and television DVD games."

Now, as One Mighty Roar's blog post points out, Spin Master hasn't gone so far as to claim it invented the "would you rather" game, but that still hasn't stopped it from making several hefty demands.

- Stop using “You Rather” and any other phrases that are similar to “Would you rather”. This includes one (yes, really) or more of the words “Would”, “You”, or “Rather”.

- Hand over our yourather.com domain immediately

- Tell them how much money You Rather has made (presumably to ask for that too)

- Pay for their lawyers

- Attend a free no-obligation vacation for a hot new timeshare in Wyoming

At this point legally we should clarify that the last item is a joke, although at a certain level we wish they’d just gone the full gambit. Nowadays folks lack ambition, and we’re glad to see we’re not the only ones with big dreams.

These demands are rather extreme, especially for a company that no one thinks of when the words "would you rather" are spoken. One Might Roar clearly points this out in its filing, showing that if anything, "would you rather" is a generic term that is used to describe either/or queries, usually of the subjectively-lesser-of-two-evils variety.

Oddly enough, Spin Master's lawyers went out of their way to suggest several ungainly replacement titles for One Might Roar's apps, including such monstrosities as "this or that" (not really even the same thing) or "do you wanna" (which is at least adjacent to the ballpark, but still not really in it). This bit of "helpfulness" prompted the One Might Roar team to begin a search for a replacement URL equally as awkward.

There’s something wrong if a game of “Would you rather?” questions can’t use any of the words “Would”, “You”, or “Rather” to identify itself. Spin Master enforcing the trademark this way makes people afraid to call a popular game (which they didn’t invent) what it is. Worse still, their demands show similar issue with “Would you choose”, “Would you prefer” and other “Would you” alternatives out there. We’re lucky choosetheoptionpleasingtoonessensibilities.com is available… for now.

One Might Roar isn't just going to sit there and get steamrolled by Spin Master. It has responded by asking for declaratory judgement, pointing out that "would you rather" is all over the web, but none of it (other than Spin Master's site) makes any reference to the presumably underperforming board game.

One Might Roar clearly has a point, not that logic and common sense have much to do with trademark enforcement. This legal filing gives Spin Master the appearance of a company willing to profit off the success of others while simultaneously ensuring the burial of a rival. Not that One Might Roar is a true rival. At this point, Spin Master hasn't crafted an app version of its board game, so the threat it faces hardly even clears the "existential" bar.

But we're once again back to One Mighty Roar being at the mercy of the court at this point. It should be pointed out that Spin Master (represented by Pillsbury Winthrop et al) managed to nail down an $8.6 million settlement from Zobmondo Entertainment LLC back in 2012 over its use of the phrase "would you rather." That court battle dragged on for over six years, with the final decision finding in favor of Spin Master following a reversal that kicked it back to Ninth Circuit court. The key here, though, is the fact that Zobmondo was making its own board game, in direct competition with Spin Master's. Unfortunately, the decision that was reversed was one that stated the words "would you rather" were descriptive and "lacked secondary meaning." The Ninth Circuit (and its California jury) found otherwise on appeal, declaring the phrase to be protectable.

This puts One Might Roar's petition for declaratory judgement on unsure footing. Part of what it's asking for is to find the trademarked term merely descriptive and undeserving of trademark protection. The Ninth Circuit court has already made its declaration on the matter. This battle will take place in an entirely different jurisdiction (Massachusetts) but Spin Master's previous win can't be entirely discounted.

Based on what can be observed on the net, "would you rather" is for all intents and purposes generic. Spin Master's site is the only place (outside of board game databases) where one will find this phrase being used commercially. Otherwise, it's fair game for subreddits, standalone sites and any descriptions of the game describe the premise only, making no reference to Spin Master's trademarked product.

In order to keep their registrations from lapsing, trademark owners do have to make efforts to protect their brands, but Spin Master's attempt to drain these developers has very little to do with protecting its branded product. The You Rather? app bears no resemblance to the board game other than the use of the words "would you rather," words that can only very imaginatively be thought of as holding any sort of commercial viability. Giving Spin Master a win in this case will do nothing to discourage trademark trolling and frivolous filings.

Filed Under: generic, trademark, would you rather
Companies: one mighty roar, spin master

Bank Threatens Reporter Over Trademark For Using The Term 'Virtual Wallet'

from the virtual-wallet,-virtual-wallet dept

We've written many times in the past about how, thanks to the ridiculous sense of "ownership society" that is often presented to the world around copyright, patents and trademarks, it's unfortunately common to see massive overclaiming of certain rights. That's especially true of trademarks, which really shouldn't be lumped in with patents and copyrights, since they're very very different. Trademarks, as we've noted before, are really about avoiding consumer confusion, so they don't buy one product trusting that it's another product. It is not about "ownership" in any sense. And yet so many companies (and individuals) think that if they get a trademark on a word or phrase, they can basically stop anyone else from ever using it.

The latest example of trademark overreach comes from PNC Bank, who threatened a reporter at the San Francisco Chronicle for having the gall to use the phrase "virtual wallet" in an article. PNC sent a legal nastygram, telling the SF Chronicle that it must "refrain from misuse of our client's VIRTUAL WALLET trademark." Except, of course, that's hogwash. Nothing in trademark law could possibly make that true, and the Chronicle's James Temple responded appropriately:

To which I say: virtual wallet, virtual wallet, virtual wallet, virtual wallet.

Furthermore, he notes that the trademark itself is almost certainly invalid, as the phrase was in widespread common usage for many years before 2008 when the bank sought the trademark (and, ridiculously, the USPTO granted it).

In late 1994, Newsweek published an article titled "The Age of Cybercash" that informed readers: "Your virtual wallet may soon be here."

By the end of 2007, the term "virtual wallet" had appeared more than 700 times in the English press, including in American Banker, the Economist, the New York Times and Consumer Reports.

Nevertheless, the following year, PNC Financial Services Group launched a "Virtual Wallet" product. It sought trademark protection, asking to own the commercial rights to two consecutive words that had been pushed together by the press and industry more than a decade earlier.

Temple goes on to call out others who have sought to abuse trademark law to "homestead" the English language -- including our favorite trademark troll ever, Leo Stoller, who "trademarked" all kinds of words including "stealth," "all goods and services," "chutzpah," and (oh yeah) "Google" which he claimed to have been using since 1981.

As Temple notes, PNC is trying to avoid having the phrase "virtual wallet" be declared generic such that their registered trademark can be eliminated, but if they didn't want that to happen, they probably shouldn't have gone with such an already generic and descriptive phrase.

Filed Under: descriptive, generic, homesteading speech, reporting, trademark, virtual wallet
Companies: pnc bank, sf chronicle

If You Have A Generic Domain Name, Don't Expect Trademark Protection On It

from the but-does-that-matter? dept

I remember, when first learning about trademark law, thinking how bizarre it was that having your name be considered "generic" was a bad thing. After all, when your brand became synonymous with the product you were selling (think Kleenex, Xerox, Band-Aid etc.) it meant that you had really dominated the product category. Except... if you're a lawyer. Because the fear, of course, is that if your brand becomes generic, you lose the trademark, and then suddenly others can make use of that brand that you worked so hard to build up. I'm still not convinced that's really a problem if you're a savvy business person, but it's the way things are.

However, as something of "natural" proof of this, just look at how much of a gold rush there was in the early dot com era for "generic" dot com domain names. Everyone involved in those businesses just knew why this was important. They believed that by having those key generic terms, "books.com," "pets.com," and even "sex.com" that you would be one of the first places people would go, even if they didn't know who you, as a company, were. Of course, it actually didn't turn out that way for many players who ended up with those domains. A lot of the early companies who had "great" domains faded pretty quickly. Execution matters more than just a good name.

And, of course, this whole generic business really gets in the way of that backwards trademark view, where having your name be generic is "bad." For example, in a recent lawsuit, AOL learned that its advertising.com domain name isn't really valid as a trademark because of its generic nature. In fact, the court notes that if people are asked about a company, it's perfectly reasonable to describe it as "an advertising dot com." I also like how the court smacked down AOL's claim that without getting a trademark on advertising.com it would take business away from the company:

this is the peril of attempting to build a brand around a generic term.

Exactly. If you want the advantages of building around a generic term, you also have to realize there are some trade-offs, and one is that you don't get to trademark it. However, as we noted when a similar ruling came down last year against hotels.com, it's not clear how much this really matters. It only matters if you overvalue the trademark. The domain itself is still unique and the brand is still unique. So does the trademark really even matter?

Filed Under: advertising.com, domain names, generic, trademark
Companies: aol

Should ICANN Dump The Idea Of Generic Top Level Domains?

from the yes-or-no dept

For years, we've scolded ICANN for its bizarre policies when it came to new top level domains (TLD) (the things like .com, .net, .org, .biz, .info etc.). For the most part, the whole process seemed like a big money grab, where each new TLD was being introduced not because of any need, but because it would generate extra cash. Take, for example, the creation of the .jobs domain. It's designed to be the place where people can go to find job openings for a company. As if it wasn't easy enough to either go to the site directly and look for the "jobs" link, or to do a quick Google search (though, we must admit to an adolescent snicker, when someone recently pointed out that RIM had amazingly signed up for the unfortunately named rim.jobs).

On the whole, though, there seemed to be no legitimate reason for dribbling out TLDs in this manner. If the world needed more TLDs, why not open the process up entirely, and let people use whatever TLD made the most sense. Last year, it looked like it was making a step in that direction, by announcing plans to offer such generic TLDs, but at the astronomical price of somewhere between $100,000 and $500,000. So, once again, it was all about the money grab, rather than anything useful.

However, with overwhelming opposition to the idea of super high priced generic TLDs, ICANN has delayed the entire project and some are wondering if ICANN should drop the idea entirely. Personally, it still seems like the real plan should be not to do away with generic TLDs entirely, but to just open up the system, so that any TLD can be used, but that you can register for one at the regular domain price, rather than one that's many orders of magnitude higher.

Filed Under: generic, icann, top level domains