The US Court of Appeals ruled in favour of Falls Media - an Imagination Company - reversing the district court’s ruling that cancelled Falls Media’s Would You Rather…? trademark.
The decision the Court reversed the district court’s ruling that Would You Rather…? is descriptive and lacked "secondary meaning" when Zobmondo started using
the trademark on its game in 2002 – years after Falls Media started using the mark for a successful line of books.
The Court found that Falls Media’s Federal Trademark registration is strong evidence that the mark "satisfies the statutory requirements for distinctiveness necessary for trademark protection."
It went on to say, "Zobmondo’s attempt to acquire the trademark rights in the mark supports an inference that Zobmondo believed, at one time,that the mark was inherently distinctive."
Also, Randy Horn, owner of Zobmondo, approached Falls Media in 2002 about acquiring its Would You Rather…? mark, but Falls Media declined to sell.
Imagination CEO, Shane Yeend, said: "The lower court previously ruled that we have the right to sell Would You Rat her…? products, but the issue on appeal was whether Falls Media could enforce its Would You Rather…? mark against Zobmondo.
"I am happy the appellate court has agreed with our position and we are going to trial on this issue after winning on all other issues in the case. We have always maintained we have acted properly since we first licensed Would You Rather…? and then purchased Falls Media, the owners of the only Would You Rather…? registered trademarks at the United States Patent and Trademark Office.
"We believe that Zobmondo has continued to create a smoke screen with game buyers and the marketplace around it, advertising that it 'won summary judgment' on the descriptiveness of the mark. That ruling has now been reversed and a jury will get to decide if Zobmondo must stop selling its Would You Rather…? products altogether and pay Imagination damages and royalties,"