## Facts

- Affiliated Hospital Products, Inc. sold tabletop games under the trademarks CARROM/CARROMS (carom-board game) and KIK-IT (tabletop soccer).
- Merdel Game Manufacturing Co. sold a “100 Play Game Board” whose packaging and materials referenced “caroms,” and sold a tabletop soccer game named “Kick’er.”
- The parties previously resolved trademark litigation by a written settlement later embodied in a consent judgment, under which Merdel withdrew a counterclaim challenging validity and stipulated Affiliated’s trademarks were valid.
- Under the settlement, Merdel agreed not to expand its then-current use of “carom/carro(m)s” and not to use those words to describe its game board for three years; after three years Affiliated agreed to lift restrictions on Merdel’s use.
- Affiliated later claimed Merdel breached the agreement by using “carom” on price lists and catalogs and by redesigning cartons to make “carom” appear more prominently when stacked.
- Affiliated sued seeking, among other relief, trademark infringement (CARROM(S) and KIK-IT), copyright infringement of its rulebook, and rescission of the settlement/consent judgment.
- After a bench trial, the district court dismissed Affiliated’s claims (finding at most a limited contract breach), and entered a final judgment; Affiliated appealed only on trademark, copyright, and rescission.

## Issues

1. Whether Merdel’s marketing and naming of its products (including “Kick’er” and uses of “carom”) infringed Affiliated’s CARROM(S) and KIK-IT trademarks.
2. Whether alleged post-settlement breaches were sufficiently material to warrant rescission of the settlement and related consent judgment rather than limiting Affiliated to damages.
3. Whether Merdel’s caroms rulebook infringed Affiliated’s copyrighted rulebook where both described the same game rules.

## Decision

- The Second Circuit affirmed the judgment for Merdel.
- The court upheld rejection of Affiliated’s trademark claims, including the finding of no likelihood of confusion between KIK-IT and Kick’er.
- The court denied rescission, holding any breaches shown were not substantial enough to justify setting aside the settlement given the overall bargain.
- The court held there was no copyright infringement because game rules are not copyrightable and Merdel’s rulebook presentation was sufficiently distinct.

## Legal Principles

- Trademark infringement requires a showing of likely consumer confusion; a trademark owner cannot claim exclusive rights to all ordinary variations of a common word absent proof of likely confusion.
- Rescission is an exceptional remedy; it is generally unavailable for non-material breaches, especially where damages can compensate and where rescission would unwind a bargained-for exchange involving substantial concessions.
- Copyright does not protect the rules, systems, or methods of play of a game; protection extends only to original expression, and infringement requires copying of protectable expressive elements rather than functional or public-domain content.

## Conclusion

The Second Circuit affirmed dismissal of Affiliated’s trademark, copyright, and rescission claims, holding that Affiliated failed to prove likely confusion, that alleged breaches did not justify rescission of the settlement, and that the unprotectable nature of game rules and the distinct expressive presentation defeated the rulebook infringement claim.


Affiliated Hosp. Prods., Inc. v. Merdel Game Mfg. Co., 513 F.2d 1183 (2d Cir. 1975)