## Facts

- Falls Media, LLC created and marketed humorous “would you rather” dilemma books and later games, using the phrase “WOULD YOU RATHER...?” as a source identifier.
- Falls Media filed a USPTO intent-to-use application in 1997 for “WOULD YOU RATHER...?” for books and games and obtained registration on the Principal Register.
- Falls Media sold its books nationally through major retailers and promoted them through a dedicated website with substantial traffic.
- Zobmondo Entertainment, LLC began selling competing books and board games using “WOULD YOU RATHER...?” or close variants for similar humorous choice-question products.
- Falls Media sued for trademark infringement and related claims; Zobmondo challenged the validity of the registration, arguing the phrase was not protectable because it was descriptive (or generic) of the product concept.

## Issues

1. Whether “WOULD YOU RATHER...?” used for books and games is merely descriptive of the goods’ contents or suggestive and inherently distinctive.
2. Whether, given the federal registration’s presumption of validity and the record evidence, the mark’s protectability could be resolved on summary judgment and the registration cancelled as a matter of law.

## Decision

- The Ninth Circuit reversed the grant of summary judgment for Zobmondo and the order cancelling Falls Media’s registration.
- The court held there was a genuine dispute of material fact on whether “WOULD YOU RATHER...?” is merely descriptive rather than suggestive.
- The case was remanded for further proceedings to resolve distinctiveness and any infringement-related questions on a fuller factual record.

## Legal Principles

- Trademark distinctiveness is assessed along the spectrum: generic (never protectable), descriptive (protectable only with secondary meaning), suggestive (inherently protectable), arbitrary, and fanciful.
- A mark is descriptive if it immediately conveys an idea of the goods’ ingredients, qualities, or characteristics; it is suggestive if consumers must use imagination or a mental step to connect the mark to the goods.
- Registration on the Principal Register is prima facie evidence of validity and exclusive right to use; the challenger bears the burden to rebut that presumption.
- Distinctiveness classification may present fact questions tied to consumer perception; when evidence supports competing inferences, summary judgment and cancellation are improper.
- That a phrase is common in ordinary speech does not, by itself, establish that it is generic or merely descriptive for trademark purposes.

## Conclusion

The Ninth Circuit ruled that the record permitted differing conclusions about whether “WOULD YOU RATHER...?” immediately describes the books and games or instead suggests their nature through consumer inference, so the mark’s validity could not be invalidated and cancelled on summary judgment.


Zobmondo Ent., LLC v. Falls Media, LLC, 602 F.3d 1108 (9th Cir. 2010)