GOULD, Circuit Judge:
Appellants Falls Media, LLC, Justin Heimberg, and David Gomberg (collectively "Falls Media") appeal the district court's summary judgment for Appellee Zobmondo Entertainment, LLC ("Zobmondo") rejecting Falls Media's action for trademark infringement, unfair competition, and related claims arising from Zobmondo's use of Falls Media's federally registered trademark, "WOULD YOU RATHER ... ?". The district court held that "WOULD YOU RATHER ... ?" is not entitled to federal trademark protection because the mark is "merely descriptive" and lacks secondary meaning, and the district court ordered the mark cancelled from the federal trademark registry. We have jurisdiction under 28 U.S.C. § 1291. We conclude that there is a genuine issue of material fact whether "WOULD YOU RATHER ... ?" is merely descriptive. Hence we reverse the summary judgment and remand for further proceedings consistent with this opinion.
This appeal involves a persistent dispute between two competitors, Falls Media
On July 31, 1997, Falls Media filed an intent-to-use ("ITU") application with the United States Patent and Trademark Office ("PTO") stating its intent to use the mark in two product categories: books and games.
In September of 1997 — shortly after Falls Media filed its ITU application — Zobmondo's founder, Randall Horn, also filed an ITU application seeking to register the mark "WOULD YOU RATHER." Horn's application was rejected by the PTO because of the likelihood of confusion with the mark that was the subject of Falls Media's prior ITU filing.
In January of 2002, the PTO issued a Notice of Allowance of Falls Media's ITU application. Falls Media had not yet released a game using the "WOULD YOU RATHER ... ?" mark. Falls Media sought and received five extensions of time from the PTO, finally releasing its first "WOULD YOU RATHER ... ?" board game in December 2004. On July 19, 2005, having received Falls Media's statement of use, the PTO issued Falls Media a registration for the "WOULD YOU RATHER... ?" mark.
Thereafter, and perhaps in response, Zobmondo filed suit against Falls Media in the Central District of California in 2006 alleging, among other things, statutory and common-law trade-dress infringement, copyright infringement, and unfair competition arising from Falls Media's "WOULD YOU RATHER ... ?" board game. Falls Media then filed suit against Zobmondo in the Southern District of New York alleging trademark infringement, unfair competition, and other claims under federal and state law. Zobmondo in the New York action counterclaimed against Falls Media, seeking, inter alia, cancellation of Falls Media's "WOULD YOU RATHER ... ?" trademark registration. The claims in the New York action were transferred to the Central District of California and consolidated with Zobmondo's 2006 action against Falls Media. Thus the claims and counterclaims in both actions came to a district court within the Ninth Circuit.
Falls Media and Zobmondo filed cross-motions for summary judgment. The district court granted summary judgment to Zobmondo on Falls Media's trademark infringement and unfair competition claims, Falls Media's claim alleging a violation of California Business and Professions Code §§ 17200 et seq., and Zobmondo's counterclaim seeking cancellation of Falls Media's mark from the federal registry.
Falls Media timely appealed. On appeal, Falls Media contends that it raised genuine issues of material fact regarding whether "WOULD YOU RATHER ... ?" is a valid, protectable mark.
We review summary judgments de novo. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 632 (9th Cir.2008). Summary judgment for the moving party is appropriate only if "there is no genuine issue as to any material fact and ... the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c)(2). "[S]ummary judgment is generally disfavored in the trademark arena." KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir.2005) (quoting Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir.2002)).
To claim trademark infringement, a plaintiff must have a "valid, protectable trademark." Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1046 (9th Cir.1999). The issue of trademark validity is considered "an intensely factual issue." KP Permanent Make-Up, 408 F.3d at 605. The plaintiff bears the ultimate burden of proof in a trademark-infringement action that the trademark is valid and protectable. Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 927-28 (9th Cir.2005).
To be valid and protectable, a mark must be "distinctive." Distinctiveness measures "the primary significance of the mark to the purchasing public." Quicksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 760 (9th Cir.2006) (quotation marks omitted). In determining distinctiveness, "we are required to consider standards of meaning not our own, but prevalent among prospective purchasers of the article." Bada Co. v. Montgomery Ward & Co., 426 F.2d 8, 11 (9th Cir.1970); see also 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:70 (4th ed.2010)[hereinafter McCarthy]. "The fact-finder is not the designated representative of the purchasing public, and the fact-finder's own perception of the mark is not the object of the inquiry. Rather, the fact-finder's function is to determine, based on the evidence before it, what the perception of the purchasing public is." Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 344 (2d Cir.1999).
Marks are generally classified in one of five categories of increasing distinctiveness: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). Which category a mark belongs in is a question of fact. See Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1195-96 (9th Cir.2009). Suggestive, arbitrary, and fanciful marks are considered "inherently distinctive" and are automatically entitled to federal trademark protection because "their intrinsic nature serves to identify a particular source of a product." Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753. Generic marks are not eligible for trademark protection. Entrepreneur Media, 279 F.3d at 1141. Merely descriptive marks are somewhere in-between; although they are not inherently distinctive and are therefore not entitled to automatic trademark protection, a merely descriptive mark can become protectable if it has acquired distinctiveness "as used on or in connection with the applicant's goods in commerce." 15 U.S.C. § 1052(f). This acquired distinctiveness is referred to as "secondary meaning." Two Pesos, 505 U.S. at 769,112 S.Ct. 2753.
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. §§ 1057(b), 1115(a); KP Permanent Make-Up, 408 F.3d at 604. Where
In this appeal, we review the district court's conclusion that Falls Media raised no genuine issue of material fact on two issues: whether "WOULD YOU RATHER... ?" is suggestive and not merely descriptive, and whether Falls Media had acquired secondary meaning in the mark. We address these issues in turn.
Falls Media first contends that the district court erred by concluding that there was no genuine issue of material fact whether "WOULD YOU RATHER ... ?" is suggestive, concluding instead that the mark is merely descriptive.
We have generally applied one or two "tests" to differentiate between suggestive and merely descriptive marks. Because the district court found the application of these tests, the imagination test and the competitors' needs test, important to its summary judgment inquiry, we examine each in turn. We stress that these tests are only "criteria offer[ing] guidance," Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 911 (9th Cir.1995), and that the burden to show that there is no genuine issue of material fact is on the moving party, Zobmondo, while the non-moving party, Falls Media, gets the benefit of reasonable inferences.
The first, and clearly the most-used, test is known as the "imagination" test, and asks whether "imagination or a mental leap is required in order to reach a conclusion as to the nature of the product being referenced." Rudolph Int'l, Inc. v. Realys, Inc., 482 F.3d 1195, 1198 (9th Cir.2007) (quotation marks omitted). For example, the mark "ENTREPRENEUR" as applied to a magazine was descriptive, not suggestive, because "an entirely unimaginative, literal-minded person would understand the significance of the reference." Entrepreneur Media, 279 F.3d at 1142. On the other hand, "ROACH MOTEL" was held suggestive because "an ordinary consumer having read or heard on television the words `roach motel' would remember the conception ... a fanciful abode for roaches in an establishment normally frequented by human [travelers]." Am. Home Prods. Corp. v. Johnson Chem. Co., 589 F.2d 103,
The district court determined that the imagination test indicated that "WOULD YOU RATHER ... ?" is merely descriptive as a matter of law because it requires "no imaginative or interpretive leap to understand that this phrase is the main aspect of the game to which it is affixed." Falls Media argues that the district court erred because multistage reasoning is needed to link the mark to the "essential nature of these products ... that the choices are ridiculous, bizarre, or themed and that they are limited to a two-option format."
We reject Falls Media's argument in part. The imagination test does not ask what information about the product could be derived from a mark, but rather whether "a mental leap is required" to understand the mark's relationship to the product. Rudolph Int'l, 482 F.3d at 1198 (quotation omitted and emphasis added). Our prior precedent makes it clear that merely descriptive marks need not describe the "essential nature" of a product; it is enough that the mark describe some aspect of the product. See, e.g., Bada, 426 F.2d at 11 (holding the mark "Micro-Precision" merely descriptive when applied to wheel balancers and weights).
But we conclude that the district court erred in concluding that the imagination test indicates that "WOULD YOU RATHER... ?" is merely descriptive as a matter of law. We cannot look the entire mark up in a dictionary; there is no literal meaning of the "WOULD YOU RATHER... ?" phrase, given that the words precede an ellipse; one may infer that there is a question, but only imagination can tell us that the question will serve up a bizarre or humorous choice. See Surgicenters of Am., Inc. v. Med. Dental Surgeries, Co., 601 F.2d 1011, 1015 n. 11 (9th Cir.1979) ("While not determinative, dictionary definitions are relevant and often persuasive in determining how a term is understood by the consuming public ...."); cf. Entrepreneur Media, 279 F.3d at 1142 (holding that "Entrepreneur" is merely descriptive as the name of a magazine because an "entirely unimaginative, literal-minded person" would understand its meaning). On the one hand, consumers who already understand the phrase "WOULD YOU RATHER ... ?" to refer specifically to a game of questions involving bizarre or humorous choices might not consider the mark very suggestive as the name of a board game, but to consumers who do not share such an understanding, "WOULD YOU RATHER ... ?" is simply the first three words of an open-ended question. For those consumers, the mark "WOULD YOU RATHER ... ?" may not "describe" anything, except that a question is asked, and may indeed require imagination and multistage reasoning to understand the mark's relationship to the game to which it is affixed. See Rudolph Int'l, 482 F.3d at 1198; Self-Realization, 59 F.3d at 911 (observing that the mark "recovery" in the self-help context is descriptive, but the same mark is suggestive when used as the name of a business teaching counselors to teach self-help because "[the] extra step constitutes the difference between descriptiveness and suggestiveness"). Given the record before us, which lacks comprehensive consumer surveys, we cannot say with confidence precisely what consumers will understand the phrase "WOULD YOU RATHER ... ?" to mean, nor are we confident that our own understanding of the phrase is an adequate substitute.
The second test, known as the "competitors' needs" test, "focuses on the extent to which a mark is actually needed by competitors to identify their goods or services." Rodeo Collection, Ltd. v. W. Seventh, 812 F.2d 1215, 1218 (9th Cir.1987). If competitors have a great need to use a mark, the mark is probably descriptive; on the other hand, if "the suggestion made by the mark is so remote and subtle that it is really not likely to be needed by competitive sellers to describe their goods or services[,] this tends to indicate that the mark is merely suggestive." Id. (internal punctuation omitted). The competitors' needs test is related to the imagination test, "because the more imagination that is required to associate a mark with a product or service, the less likely the words used will be needed by competitors to describe their products or services." Id. (internal punctuation omitted).
The district court concluded that the competitors' needs test was "difficult to apply in this case" and declined to consider it because these tests "are merely factors to consider" and other tests favored Zobmondo. Falls Media argues that this was error, and in this case we agree. Drawing all inferences in favor of Falls Media, the competitors' needs test strongly favored Falls Media's argument that "WOULD YOU RATHER ... ?" is suggestive. Falls Media proffered significant evidence suggesting that its competitors do not need to use "WOULD YOU RATHER... ?" to fairly describe their products. Perhaps most important is the experience of Zobmondo itself. Zobmondo identified 135 possible alternative names for its game during development. Also, Zobmondo marketed and sold its game and a related book for a period of time without using the phrase "WOULD YOU RATHER ... ?" (instead using the name "The Outrageous Game of Bizarre Choices"), and another board game company used the name "Would You Prefer?" during the same time period. These titles are not linguistically inferior to "WOULD YOU RATHER... ?". Cf. Entrepreneur Media, 279 F.3d at 1143 (observing that others need the term "entrepreneur" because "[w]e are not aware of, nor has EMI suggested, any synonym for the word"). In the face of this evidence, credited as true on summary judgment, it's difficult to say that Zobmondo necessarily needs to use "WOULD YOU RATHER ... ?" for its version of the board game of bizarre or humorous choices.
Zobmondo argues that "WOULD YOU RATHER ... ?" is needed to fairly describe its products because the meaning of the phrase "WOULD YOU RATHER... ?" is entrenched in the minds of consumers in a way that renders other possible marks inherently inferior. This argument, however, depends on a disputed issue of fact regarding the meaning of the phrase to consumers, an issue that we have already suggested cannot adequately be decided at summary judgment
The district court also employed a third test, known as the "extent-of-use" test, which evaluates "the extent to which other sellers have used the mark on similar merchandise." 2 McCarthy § 11:69; see also 555-1212.com, Inc. v. Commc'n House Int'l, Inc., 157 F.Supp.2d 1084, 1089 (N.D.Cal.2001) ("[I]n determining whether a word has a descriptive or suggestive significance as applied to a commercial service, it is proper to take notice of the extent to which others in a similar commercial context use the word."). Zobmondo introduced evidence of six published books with the words "would you rather" in the title, as well as printouts from Google.com search results using the phrase. Falls Media argues that the district court improperly credited this disputed evidence over Falls Media's objections without considering whether the words "would you rather" were used as a trademark and without making all inferences in Falls Media's favor.
We are not aware of any prior case in our circuit employing the extent-of-use test as a controlling measure of trademark validity, and we need not do so here. If, as we see it, a summary judgment is disfavored by both the imagination test and the needs test, then extent of use at most could only be one factor to be considered, and could not command a summary judgment in the face of disputed facts about how a mark might be perceived by consumers. Extensive use of a mark by third parties might indicate that the mark is merely descriptive of a given class of products. See, e.g., Sec. Ctr., Ltd. v. First Nat'l Sec. Ctrs., 750 F.2d 1295, 1300 (5th Cir.1985) (concluding that the mark "security center" is descriptive in part because of "the number of enterprises throughout the nation that use `security center' in some form"). But having determined for purposes of summary judgment that the imagination test is inconclusive and that the competitors' needs test favors suggestiveness, we are not persuaded that the result of the extent-of-use test, based on Zobmondo's proffered evidence, renders "WOULD YOU RATHER ... ?" merely descriptive as a matter of law. Zobmondo's evidence of third party use is relevant, and may be considered by the trier of fact. But it must be measured, not merely against the results of abstract theoretical tests, but against the presumption of validity afforded to Falls Media's registered mark and against any other evidence of distinctiveness that Falls Media has proffered.
The district court relied on the following evidence in concluding that "WOULD YOU RATHER ... ?" is merely descriptive:
We agree with the district court that this evidence collectively has some persuasive weight, but we do not believe it is "so one-sided that there can be no doubt about how the question [regarding the distinctiveness of the mark] should be answered." Packman v. Chi. Tribune Co., 267 F.3d 628, 637 (7th Cir.2001) (quoting Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 171 (7th Cir.1996)). That "WOULD YOU RATHER ... ?" is an "utterly obvious" title for a book does not necessarily mean the mark is an equally obvious title in the context of a board game. See Lahoti, 586 F.3d at 1201; 2 McCarthy § 11:71 ("It must be kept in mind that a term that is in one category for a particular product may be in a quite different category for another product."). The statement that "WOULD YOU RATHER ... ?" is more descriptive than "Zobmondo" does not exclude the possibility that it is still suggestive, nor does Pressman's comment that "WOULD YOU RATHER ... ?" gives a person a "good idea" of what the game is about; a mark can be suggestive and still convey information about a product. See, e.g., 2 McCarthy § 11:72 (listing marks that have been found "suggestive," including "CITIBANK" for an urban bank, "CLASSIC COLA" for a soft drink, "DIAL-A-MATTRESS" for mattress sales, and "FLORIDA TAN" for suntan lotion). Gomberg's e-mail that purchasers are generally familiar with the "WOULD YOU RATHER ... ?" concept says nothing about how board-game consumers — a larger group than ultimate purchasers of the "WOULD YOU RATHER ... ?" game — understand the mark. Viewing this evidence in the light most favorable to Falls Media, all of this evidence suggests only Falls Media's belief regarding how consumers perceive the mark, and is not necessarily conclusive of how consumers in fact perceive the mark. And Zobmondo's evidence of third-party use, without contextual information such as sales figures and distribution locations, falls short of establishing a long-standing consumer understanding of the "WOULD YOU RATHER... ?" concept for purposes of summary judgment.
Falls Media has not rested solely on its federal registration to survive summary judgment. See Tie Tech, 296 F.3d at 784
Other evidence in the record also supports Falls Media's claim that "WOULD YOU RATHER ... ?" could be seen by consumers as suggestive. For example, that Zobmondo included descriptive information on its game boxes after it began using the "WOULD YOU RATHER... ?" mark may suggest that Zobmondo itself thought that the mark did not fully describe its products.
Because we reverse summary judgment in favor of Zobmondo on the ground that there is a genuine issue of material fact whether or not "WOULD YOU RATHER... ?" is inherently distinctive, we need not reach Falls Media's additional claim that there is a genuine issue of material fact regarding secondary meaning. The issue of secondary meaning must be reached only if the fact-finder determines that "WOULD YOU RATHER ... ?" is merely descriptive; in that scenario, the fact-finder will have to make the ultimate determination of secondary meaning in the context of the total record of evidence offered at trial.
This is a difficult case, and we express no opinion on how it may be resolved after findings of fact at trial. But this appeal is from a summary judgment granted in the face of complex issues of fact, in a trademark context where summary judgment is ordinarily disfavored, and despite the fact that the non-moving party has a federally registered trademark constituting "prima facie evidence" of the mark's validity. 15 U.S.C. § 1057(b). Considering Falls Media's federal registration, crediting all of Falls Media's evidence and drawing all reasonable inferences in Falls Media's favor, and placing the burden of proving mere descriptiveness on Zobmondo, we conclude that application of the imagination and the competitors' needs tests are inconclusive on the disputed facts. We reverse and remand for trial.