Zobmondo Entertainment, LLC v. Falls Media, LLC

                   FOR PUBLICATION
  UNITED STATES COURT OF APPEALS
       FOR THE NINTH CIRCUIT

ZOBMONDO ENTERTAINMENT, LLC, a           
California limited liability
company,
        Plaintiff-counter-defendant-
                                              No. 08-56831
                             Appellee,
                                                D.C. No.
                   v.
                                            2:06-cv-03459-
FALLS MEDIA, LLC, a New York                    ABC-JTL
limited liability company; JUSTIN
                                                OPINION
HEIMBERG, an individual; DAVID
GOMBERG, an individual,
     Defendants-counter-claimants-
                          Appellants.
                                         
       Appeal from the United States District Court
           for the Central District of California
     Audrey B. Collins, Chief District Judge, Presiding

                  Argued and Submitted
            March 3, 2010—Pasadena, California

                     Filed April 26, 2010

       Before: Ronald M. Gould, Sandra S. Ikuta and
              N. Randy Smith, Circuit Judges.

                   Opinion by Judge Gould




                              6093
6096      ZOBMONDO ENTERTAINMENT v. FALLS MEDIA




                        COUNSEL

Bobby A. Ghajar (argued), Kelly W. Craven, Howrey LLP,
Los Angeles, California; Jerrold J. Ganzfried, Howrey LLP,
Washington, D.C., for defendants-counter-claimants-
appellants Falls Media, LLC, Justin Heimberg, and David
Gomberg.

Lawrence Y. Iser, Gregory P. Korn (argued), Gregory S.
Gabriel, Kinsella Weitzman Iser Kump & Aldisert LLP, Santa
Monica, California, for plaintiff-counter-defendant-appellee
Zobmondo Entertainment, LLC.
             ZOBMONDO ENTERTAINMENT v. FALLS MEDIA                  6097
                              OPINION

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 Entertain-
ment, LLC (“Zobmondo”) rejecting Falls Media’s action for
trademark infringement, unfair competition, and related
claims arising from Zobmondo’s use of Falls Media’s feder-
ally 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 fed-
eral 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.

                                    I

   This appeal involves a persistent dispute between two com-
petitors, Falls Media1 and Zobmondo, over the right to sell
products using the “WOULD YOU RATHER . . . ?” mark.
Both competitors use similar marks to identify board games
and books that incorporate questions posing humorous,
bizarre, or undesirable choices.2 As of 2008, both competitors
had established successful businesses earning millions of dol-
  1
     Appellants Justin Heimberg and David Gomberg formed Falls Media,
LLC in 2004. For ease of reference, we use the term “Falls Media” to refer
collectively to Appellants both before and after the formation of Falls
Media, LLC.
   2
     For example, a sample question posed by Falls Media asks, “Would
you rather be able to expedite the arrival of an elevator by pressing the
button multiple times or have the ability to sound incredibly natural and
sincere on answering machines?”
6098         ZOBMONDO ENTERTAINMENT v. FALLS MEDIA
lars in revenues from sales of “WOULD YOU RATHER . . .
?” products.

   On July 31, 1997, Falls Media filed an intent-to-use
(“ITU”) application with the United States Patent and Trade-
mark Office (“PTO”) stating its intent to use the mark in two
product categories: books and games.3 Falls Media published
its first book using the mark, Would You Rather . . . ? Over
200 Absolutely Absurd Dilemmas to Ponder, in October of
1997. It published a sequel to the book, Would You Rather 2,
Electric Boogaloo, in 1999. These books were carried by
retailers including Borders, Barnes & Noble, and Urban Out-
fitters. To promote the books, Falls Media also established a
website, www.wouldyourather.com, which as of 2008 was
receiving about 30,000 unique visitors per month. Although
the books were not the subject of a paid advertising campaign
at the time of their publication, they received unpaid print,
radio, and television publicity, including mention in maga-
zines such as Rolling Stone and comment on television shows
such as Oprah and The Tonight Show with Jay Leno. Heim-
berg and Gomberg also made personal appearances to pro-
mote their books. As of 2002—when Zobmondo began using
“WOULD YOU RATHER . . . ?” as a mark on its board games4
   3
     Ordinarily, trademark registrants cannot register a trademark until they
have used the mark in commerce. WarnerVision Entm’t Inc. v. Empire of
Carolina, Inc., 101 F.3d 259, 260 (2d Cir. 1996); see also 15 U.S.C.
§ 1051(a)(1). An ITU application, however, allows a person not yet using
a mark to file an anticipatory application for registration on the basis of
an intent to use the mark in the future. Once the PTO issues a “notice of
allowance” of the ITU application pursuant to 15 U.S.C. § 1063(b), the
applicant has six months, absent extension, to begin using the mark in
commerce. WarnerVision, 101 F.3d at 260; see also 15 U.S.C.
§ 1051(d)(1)-(2). If the applicant files a statement of use within the pro-
scribed timeframe, the mark is registered and the date the ITU application
was filed becomes the applicant’s constructive-use date. See 15 U.S.C.
§ 1057(c). This gives the applicant priority-of-use over anyone who adopts
the mark after the constructive-use date. See id.
   4
     The district court concluded that the 2002 self-release was Zobmon-
do’s first use of “WOULD YOU RATHER . . . ?” as a trademark on its
games. Construing the facts in the light most favorable to Falls Media, we
agree that 2002 is the relevant use date for purposes of this appeal.
            ZOBMONDO ENTERTAINMENT v. FALLS MEDIA                6099
—Falls Media had sold about 91,000 total copies of its two
“WOULD YOU RATHER . . . ?” books.

   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.5
Nonetheless, in 1998 Zobmondo began producing games
using a concept similar to the one adopted by Falls Media,
including “Zobmondo!! That Crazy ‘Would You Rather’
Game,” and “Zobmondo!! The Outrageous Game of Bizarre
Choices,” the latter of which was licensed to Hasbro between
2000 and 2002. When Hasbro’s license expired in 2002, Zob-
mondo self-released a new version of the game prominently
featuring the mark “WOULD YOU RATHER . . . ?” on the
game’s packaging. Zobmondo has produced several versions
of its game under the “WOULD YOU RATHER . . . ?” mark
since then.

   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
  5
  Horn later opposed Falls Media’s trademark registration before the
PTO, but his efforts were unsuccessful. He also approached Heimberg and
Gomberg in 2002 about acquiring the “WOULD YOU RATHER . . . ?”
mark, but Heimberg and Gomberg declined to sell.
6100        ZOBMONDO ENTERTAINMENT v. FALLS MEDIA
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, seek-
ing, 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 sum-
mary 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 vio-
lation of California Business and Professions Code §§ 17200
et seq., and Zobmondo’s counterclaim seeking cancellation of
Falls Media’s mark from the federal registry.6 The district
court concluded that, despite the presumption of validity
given to Falls Media’s federal trademark registration, there
was no genuine issue of material fact whether “WOULD
YOU RATHER . . . ?” was a protectable mark: This mark, as
perceived by the district court, was “merely descriptive” of an
aspect of Falls Media’s games, and no rational juror could
find that Falls Media had acquired secondary meaning in the
mark by the time Zobmondo began using it in 2002.
  6
   The district court granted summary judgment to Falls Media on Zob-
mondo’s trade-dress infringement, copyright infringement, and unfair
competition claims, but Zobmondo does not appeal that portion of the
decision. The district court also granted a separate summary judgment to
Falls Media on Zobmondo’s fraudulent-procurement claim, which Zob-
mondo has also not appealed.
           ZOBMONDO ENTERTAINMENT v. FALLS MEDIA         6101
   Falls Media timely appealed. On appeal, Falls Media con-
tends that it raised genuine issues of material fact regarding
whether “WOULD YOU RATHER . . . ?” is a valid, protect-
able mark.

                              II

   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)).

   [1] 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).

   [2] To be valid and protectable, a mark must be “distinc-
tive.” Distinctiveness measures “the primary significance of
the mark to the purchasing public.” Quicksilver, Inc. v. Kym-
sta 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
6102          ZOBMONDO ENTERTAINMENT v. FALLS MEDIA
McCarthy]. “The fact-finder is not the designated representa-
tive of the purchasing public, and the fact-finder’s own per-
ception 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).

   [3] 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 (1992). Which category
a mark belongs in is a question of fact. See Lahoti v. Veri-
Check, Inc., 586 F.3d 1190, 1195-96 (9th Cir. 2009). Sugges-
tive, arbitrary, and fanciful marks are considered “inherently
distinctive” and are automatically entitled to federal trade-
mark protection because “their intrinsic nature serves to iden-
tify a particular source of a product.” Two Pesos, 505 U.S. at
768. 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 auto-
matic 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.

   Although the plaintiff in a trademark action bears the ulti-
mate burden of proof that his or her mark is valid, federal reg-
istration 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 the
PTO issues a registration without requiring proof of second-
ary meaning, the presumption is that the mark is inherently dis-
tinctive.7 See Quicksilver, 466 F.3d at 760. If the plaintiff
  7
   A corollary of this principle is that the registrant is not entitled to a pre-
sumption of secondary meaning unless the PTO required proof of second-
             ZOBMONDO ENTERTAINMENT v. FALLS MEDIA                   6103
establishes that a mark has been properly registered, the bur-
den shifts to the defendant to show by a preponderance of the
evidence that the mark is not protectable. Tie Tech, Inc. v.
Kinedyne Corp., 296 F.3d 778, 783 (9th Cir. 2002); Vuitton
et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 775-76
(9th Cir. 1981).

   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 sugges-
tive and not merely descriptive, and whether Falls Media had
acquired secondary meaning in the mark. We address these
issues in turn.

                                   III

   [4] 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, con-
cluding instead that the mark is merely descriptive.8 A sugges-
tive mark is one for which “a consumer must use imagination
or any type of multistage reasoning to understand the mark’s
significance . . . the mark does not describe the product’s fea-
tures, but suggests them.” Kendall-Jackson Winery, Ltd. v. E.
& J. Gallo Winery, 150 F.3d 1042, 1047 n.8 (9th Cir. 1998).
By contrast, a merely descriptive mark “describes the quali-

ary meaning as part of the application for registration of the mark. See
PaperCutter, Inc. v. Fay’s Drug Co., 900 F.2d 558, 564 (2d Cir. 1990)
(“[The] burden [to prove secondary meaning] does not shift upon a deci-
sion of the [PTO] to register the mark, absent evidence that the [PTO] reg-
istered the mark upon finding that it had acquired secondary meaning.”).
   8
     The district court concluded that “WOULD YOU RATHER . . . ?” is
not generic, and Zobmondo does not press that argument on appeal. Falls
Media conceded before the district court that “WOULD YOU RATHER
. . . ?” is not an arbitrary or fanciful mark. We assume without deciding
that “WOULD YOU RATHER . . . ?” is either a suggestive or a merely
descriptive mark, which is how the parties have framed the issue.
6104        ZOBMONDO ENTERTAINMENT v. FALLS MEDIA
ties or characteristics of a good or service.” Park ‘N Fly, Inc.
v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985). It “de-
fine[s] qualities or characteristics of a product in a straightfor-
ward way that requires no exercise of the imagination to be
understood.” Entrepreneur Media, 279 F.3d at 1141-42 (quot-
ing Kendall-Jackson, 150 F.3d at 1047 n.8); see also Union
Nat’l Bank of Tex., Laredo, Tex. v. Union Nat’l Bank of Tex.,
Austin, Tex., 909 F.2d 839, 845 (5th Cir. 1990) (“[I]n many
cases, a descriptive term will be an adjective such as ‘speedy,’
‘friendly,’ ‘green,’ ‘menthol,’ or ‘reliable.’ ”). “Whether a
mark suggests or describes the goods or services of the trade-
mark holder depends [on] what those goods or services are[,
and w]e therefore adjudge a mark’s strength by reference to
the goods or services that it identifies . . . .” Entrepreneur
Media, 279 F.3d at 1142 (quotation marks omitted). In distin-
guishing between suggestive and descriptive marks, we are
aware that “[d]eciding whether a mark is distinctive or merely
descriptive is far from an exact science and is a tricky busi-
ness at best.” Lahoti, 586 F.3d at 1197 (quotation marks omit-
ted); 2 McCarthy § 11:66 (“The descriptive-suggestive
borderline is hardly a clear one”), § 11:71 (observing that the
descriptive-suggestive dichotomy is not “some kind of con-
crete and objective classification system”).

   [5] Because Falls Media showed that “WOULD YOU
RATHER . . . ?” was registered without proof of secondary
meaning, Falls Media was entitled to a presumption that the
mark is inherently distinctive—i.e., suggestive—and the bur-
den shifted to Zobmondo to show that the mark is “merely
descriptive” by a preponderance of the evidence. See Tie
Tech, 296 F.3d at 783; Quicksilver, 466 F.3d at 760. Federal
registration in itself does not mean that Falls Media can nec-
essarily survive summary judgment solely on the basis of its
registration. “[A]ssuming the defendant can demonstrate
through law, undisputed facts, or a combination thereof that
the mark is invalid, the evidentiary bubble [created by the fed-
eral registration] bursts and the plaintiff cannot survive sum-
mary judgment. In the face of sufficient and undisputed facts
           ZOBMONDO ENTERTAINMENT v. FALLS MEDIA            6105
demonstrating [invalidity], the registration loses its evidenti-
ary significance.” Tie Tech, 296 F.3d at 783; see also Talking
Rain Beverage Co. v. S. Beach Beverage Co., 349 F.3d 601,
603 (9th Cir. 2003). Nonetheless, the presumption of validity
is a strong one, and the burden on the defendant necessary to
overcome that presumption at summary judgment is heavy.
See, e.g., Americana Trading, Inc. v. Russ Berrie & Co., 966
F.2d 1284, 1287 (9th Cir. 1992) (reversing a district court’s
grant of summary judgment because the district court “gave
insufficient weight to the presumptive effect of [the plain-
tiff’s] federal registration.”). “There can be no serious dispute
with the principle that a federal trademark registration of a
particular mark supports the distinctiveness of that mark,
because the PTO should not otherwise give it protection. Reg-
istration alone may be sufficient in an appropriate case to sat-
isfy a determination of distinctiveness.” Lahoti, 586 F.3d at
1199. Stated another way, the federal officials who register a
mark are perceived to have some expertise in assessing if it
is entitled to registration, and absent a presentation of second-
ary meaning, their registration is entitled to a presumptive
validity, a presumptive conclusion that the mark was distinc-
tive else they would not have registered it. Nonetheless, while
the registration adds something on the scales, we must come
to grips with an assessment of the mark itself.

   We have generally applied one or two “tests” to differenti-
ate 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] guid-
ance,” 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.

   [6] The first, and clearly the most-used, test is known as
the “imagination” test, and asks whether “imagination or a
6106       ZOBMONDO ENTERTAINMENT v. FALLS MEDIA
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.” Entre-
preneur Media, 279 F.3d at 1142. On the other hand,
“ROACH MOTEL” was held suggestive because “an ordi-
nary 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, 107 (2d Cir. 1978). We have said
that the imagination test is our “primary criterion” for evaluat-
ing distinctiveness. Self-Realization, 59 F.3d at 911.

   The district court determined that the imagination test indi-
cated that “WOULD YOU RATHER . . . ?” is merely descrip-
tive 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 prod-
ucts . . . 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 prod-
uct. 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).
           ZOBMONDO ENTERTAINMENT v. FALLS MEDIA            6107
   [7] But we conclude that the district court erred in con-
cluding 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 determina-
tive, 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 con-
sumers, the mark “WOULD YOU RATHER . . . ?” may not
“describe” anything, except that a question is asked, and may
indeed require imagination and multistage reasoning to under-
stand 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 differ-
ence between descriptiveness and suggestiveness”). Given the
record before us, which lacks comprehensive consumer sur-
veys, we cannot say with confidence precisely what consum-
ers will understand the phrase “WOULD YOU RATHER . . .
?” to mean, nor are we confident that our own understanding
6108         ZOBMONDO ENTERTAINMENT v. FALLS MEDIA
of the phrase is an adequate substitute.9 “With respect to a
registered mark . . . the putative infringer’s burden is not sim-
ply to show that the mark describes a feature of the trademark
holder’s product; rather, it must show that consumers regard
the mark as merely descriptive of that product.” Borinquen
Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 119 (1st
Cir. 2006). When we give all reasonable inferences to Falls
Media, and credit its evidence as true, we conclude that the
imagination test is inconclusive by itself to determine if the
challenged mark is descriptive or suggestive of a board game.

   [8] 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 sug-
gestion 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 omit-
ted). The competitors’ needs test is related to the imagination
test, “because the more imagination that is required to asso-
ciate 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).

   [9] The district court concluded that the competitors’ needs
test was “difficult to apply in this case” and declined to con-
sider it because these tests “are merely factors to consider”
and other tests favored Zobmondo. Falls Media argues that
  9
    The underlying issue is the standard of meaning “prevalent among pro-
spective purchasers of the article.” Bada, 426 F.2d at 11. On that basis,
some terms may not be susceptible to abstract “imagination test” analysis
at summary judgment, and instead the application of the imagination test
will be informed by expert testimony offered at trial suggesting how con-
sumers will view this phrase on a board game.
           ZOBMONDO ENTERTAINMENT v. FALLS MEDIA           6109
this was error, and in this case we agree. Drawing all infer-
ences in favor of Falls Media, the competitors’ needs test
strongly favored Falls Media’s argument that “WOULD YOU
RATHER . . . ?” is suggestive. Falls Media proffered signifi-
cant 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 Zob-
mondo 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.

   [10] Zobmondo argues that “WOULD YOU RATHER . . .
?” is needed to fairly describe its products because the mean-
ing 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, how-
ever, depends on a disputed issue of fact regarding the mean-
ing of the phrase to consumers, an issue that we have already
suggested cannot adequately be decided at summary judgment
on the basis of abstract theorizing alone. Giving all reasonable
inferences from the evidence in favor of Falls Media, compet-
itors do not need to use “WOULD YOU RATHER . . . ?” to
describe their products. They can say “Would you prefer” or
“Would you most like” or use some other verbal formula to
convey a choice of alternatives.
6110         ZOBMONDO ENTERTAINMENT v. FALLS MEDIA
   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 simi-
lar commercial context use the word.”). Zobmondo intro-
duced 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 with-
out making all inferences in Falls Media’s favor.10

   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 sum-
mary 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) (con-
cluding 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 deter-
mined for purposes of summary judgment that the imagina-
tion test is inconclusive and that the competitors’ needs test
  10
    Falls Media also argues that the district court ignored its objections to
the admissibility of Zobmondo’s extent-of-use evidence. After reviewing
the record, we conclude that the district court considered and correctly
overruled Falls Media’s objections to this evidence.
           ZOBMONDO ENTERTAINMENT v. FALLS MEDIA            6111
favors suggestiveness, we are not persuaded that the result of
the extent-of-use test, based on Zobmondo’s proffered evi-
dence, 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 con-
cluding that “WOULD YOU RATHER . . . ?” is merely
descriptive:

    •   A statement by Falls Media’s literary agent that
        the mark was “an utterly obvious title” for books
        “[b]ecause it was a clear explanation of the con-
        tent of the book.”

    •   A statement by Falls Media’s sales agent that
        “WOULD YOU RATHER . . . ?” is a better
        name than “Zobmondo” because “somebody
        looking at Zobmondo would not know that it
        contains would you rather questions.”

    •   A statement by James Pressman, who optioned
        Falls Media’s game, that “WOULD YOU
        RATHER . . . ?” was a good name for the prod-
        uct because “it gave you a good idea of what the
        game was all about” because “the questions
        always started with would you rather.”

    •   An e-mail from Gomberg stating that “most peo-
        ple that make the purchase [of a “WOULD YOU
        RATHER . . . ?” game] do it because they’re
        familiar with the concept—as opposed to the
        actual game play or content.”
6112       ZOBMONDO ENTERTAINMENT v. FALLS MEDIA
    •   Zobmondo’s evidence of books, websites, and
        copyright registrations suggesting that the
        “WOULD YOU RATHER . . .?” concept pre-
        dates Falls Media’s trademark application.

   We agree with the district court that this evidence collec-
tively has some persuasive weight, but we do not believe it is
“so one-sided that there can be no doubt about how the ques-
tion [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
             ZOBMONDO ENTERTAINMENT v. FALLS MEDIA                     6113
locations, falls short of establishing a long-standing consumer
understanding of the “WOULD YOU RATHER . . . ?” con-
cept for purposes of summary judgment.11 See Scarves by
Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167, 1173 (2d Cir.
1976) (observing that “[t]he significance of third-party trade-
marks depends wholly upon their usage” including whether
the marks “were actually used by third parties, that they were
well promoted or that they were recognized by consumers”).

    Falls Media has not rested solely on its federal registration
to survive summary judgment. See Tie Tech, 296 F.3d at 784
(distinguishing between cases in which a trademark holder did
or did not adduce additional evidence to supplement its feder-
ally registered trademark to survive summary judgment). Falls
Media proffered the testimony of a game-industry expert,
Philip E. Orbanes, who said that “WOULD YOU RATHER
. . . ?” had never been used as the title of a board game before
Zobmondo’s entry into the market. The district court con-
cluded that this testimony was “entirely irrelevant” because
the issue was whether the societal concept of a “WOULD
YOU RATHER . . . ?” dilemma predated Falls Media’s use
of the mark. We disagree. The ultimate issue at summary
judgment was whether the mark “WOULD YOU RATHER
. . . ?” should receive trademark protection as applied to Falls
Media’s board and card games. The fact that the mark had not
been used previously to describe a board game is relevant to
that inquiry; it suggests that competitors do not find the mark
useful in describing their products. See, e.g., Sec. Ctr., 750
F.2d at 1300 (“We look into actual and likely use of a mark
in order to determine whether its protection, i.e., its exclusion
from the language freely available for commercial use, inter-
  11
    Zobmondo has established that collections of bizarre questions begin-
ning with the words “would you rather” were posed in printed media
before Falls Media began using the phrase as a mark. But this does not
establish that there is no genuine issue of material fact that these types of
questions were understood by consumers to be part of a “WOULD YOU
RATHER . . . ?” game of questions.
6114         ZOBMONDO ENTERTAINMENT v. FALLS MEDIA
feres with competition among providers of the same product
or service.”). Zobmondo asks us to conclude that the mark is
merely descriptive on a board game because of Zobmondo’s
showing that consumers’ understanding of the “WOULD
YOU RATHER . . . ?” game concept predates the parties’ use
of the mark. But that idea does not render Orbanes’s testi-
mony irrelevant. To the contrary, Orbanes’s testimony about
lack of third-party use on games tends to negate the inference
that Zobmondo seeks to establish: that the mark is widely
understood by consumers to refer to a type of question game.

   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.12 And Zobmondo’s attempt to
acquire trademark rights in the mark supports an inference
that Zobmondo believed, at one time, that the mark was inher-
ently distinctive.13 This evidence is no less relevant to the dis-
tinctiveness inquiry than the evidence that persons associated
with Falls Media thought the mark provided descriptive infor-
mation. Both the evidence of Zobmondo’s trademark applica-
  12
      Several Zobmondo game boxes follow up the mark “WOULD YOU
RATHER . . . ?” with the tag-line “the game of mind-boggling questions.”
Another Zobmondo game box includes sample questions. The need to
explain what a “WOULD YOU RATHER . . . ?” question entails cuts
against Zobmondo’s argument that “WOULD YOU RATHER . . . ?” is
a well-established, culturally-pervasive concept.
   13
      Zobmondo argues that its trademark applications were filed by Horn
before he had obtained legal advice about the distinctiveness of marks.
Maybe so, but this is a contested fact, and, whatever might be the conclu-
sion on that after trial and findings of fact, for purposes of summary judg-
ment we must give all reasonable inferences in favor of Falls Media. For
these summary judgment purposes, Falls Media is entitled to the inference
that Zobmondo’s trademark applications are to a degree an admission that
at the time Zobmondo viewed the mark as suggestive.
           ZOBMONDO ENTERTAINMENT v. FALLS MEDIA            6115
tions and the evidence that some persons in business relations
with Falls Media thought the mark descriptive demonstrate
that there is a factual contest at bottom in assessing the
descriptiveness or suggestiveness of the “WOULD YOU
RATHER . . .?” mark, rendering that issue unsuitable for a
summary judgment determination.

   [11] Looking at the totality of evidence proffered by Zob-
mondo and Falls Media and taking into account the “strong
presumption” accorded to Falls Media’s federal registration,
we conclude that there is a genuine issue of material fact
whether “WOULD YOU RATHER . . . ?” is inherently dis-
tinctive to consumers. “Deference to the PTO’s classification
decision is sensible because the PTO has special expertise that
we lack on this fact-intensive issue.” Lahoti, 586 F.3d at 1199
(citing Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va.,
Inc., 43 F.3d 922, 934 (4th Cir. 1995)). This principle applies
meaningfully at the summary judgment stage, where we are
not permitted to weigh evidence or draw inferences against
Falls Media. “[T]he fact that a mark is registered is strong evi-
dence that the mark satisfies the statutory requirements for
distinctiveness necessary for trademark protection.” Retail
Servs., Inc. v. Freebies Publ’g, 364 F.3d 535, 542 (4th Cir.
2004). Giving Falls Media the benefit of the presumptive
effect of its federal registration, crediting the testimony of
Falls Media, placing the burden of challenge to the mark’s
distinctiveness on Zobmondo, and giving all reasonable infer-
ences to Falls Media, we conclude that there is a genuine
issue of material fact whether “WOULD YOU RATHER . . .
?” is suggestive or merely descriptive as a mark for a board
game. The issue of descriptiveness or suggestiveness in this
case cannot correctly be resolved by summary judgment, and
we remand for trial.

                               IV

 Because we reverse summary judgment in favor of Zob-
mondo on the ground that there is a genuine issue of material
6116       ZOBMONDO ENTERTAINMENT v. FALLS MEDIA
fact whether or not “WOULD YOU RATHER . . . ?” is inher-
ently 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 evi-
dence offered at trial.

   [12] 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 sum-
mary 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 registra-
tion, 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 competi-
tors’ needs tests are inconclusive on the disputed facts. We
reverse and remand for trial.

  REVERSED AND REMANDED.