Recently I was invited by my friend to play scrabulous online. Unfortunately, two parts of me went along - the scrabble playing individual and the trademark enthusiast and so I logged off quite the disgruntled consumer/lawyer.
This is the conversation in my head.
Scrabble Player: Hmm…the online board looks very similar to the real scrabble board
(Ding! TM enthusiast awakens. Similar!…who owns what?)
Scrabble Player: What is troubling is that the color codes for scoring high points in pink, dark blue and light blue are identical to the original pattern in Scrabble. Yet, there is a difference. Yes! That’s it. The colored boxes just do not state clearly what scoring advantage the color stood for.
(Ha! very smart, but any self respecting scrabble player can easily identify what the box color denotes.)
Scrabble Player (Disgusted): The most annoying part is when words from other languages could be made, for instance pina (Spanish for pineapple)!!!! FAKE
Exit disgruntled scrabble player and the Trademark enthusiast is raring and rearing to go.
Information on Scrabble website says Hasbro owns it all.
(http://www.hasbro.com/games/adult-games/scrabble/home.cfm?page=about)
“SCRABBLE® is a registered trademark. All intellectual property rights in and to the game are owned in the U.S.A. and Canada by Hasbro Inc. and throughout the rest of the world by J.W. Spear & Sons, PLC of Enfield, Middlesex, England, a subsidiary of Mattel Inc. Mattel and Spear are not affiliated with Hasbro.”
http://www.hasbro.com/home/copyright.html
Scrabble at the very least owns a trademark right in the name, a trade dress in the look of the board.
In Two Pesos, Inc., v Taco Cabana, Inc, the Court laid down a five part test for determining whether a trade dress was inherently distinctive or had it acquired a secondary meaning.
i. Does the Plaintiff have “trade dress”?
ii. Is the Trade Dress functional/non-functional?
iii. Is the Trade Dress inherently distinctive?
iv. Has the Trade dress acquired a secondary meaning in the concerned market?
v. Does the alleged infringement create confusion, in the mind of ordinary consumers, as to source/association of product with goods/services?
A trade dress must be non-functional and must be unusual and memorable.( See I.P. Lund Trading ApS v. Kohler Co. “Whether the dress is so unique, unusual and unexpected in this market that it will automatically be perceived by customers as an indicator of origin”.) To be protectable under the Lanham Act, it is necessary for the product trade dress to show secondary meaning i.e. a certain product identifies with the source of the product.
However, an impediment to finding such trade dress is the functionality doctrine. The functionality doctrine as the Supreme Court’s dictum in Re Inwood Labs., established that if the product feature is essential for the use and purpose of the article or effects the cost and quality of a product, then that feature is functional.
But what about the colored tiles?
Qualitex Co. v Jacobson Products Co. Inc settled that concept back in 1995 by showing that though colors cannot be inherently distinctive, they can acquire recognition and a secondary meaning if the color is used over time and three factors are established:
i. This color acted as the source identifying factor
ii. The color did not undermine the need for that color in the industry
iii. Color was not functional
Quite obviously, the color coded tiles in the Scrabble board are easily identifiable as being associated with Scrabble, anybody else can use different colors to follow a similar concept and the colors pink and shades of blue certainly do not mean high points. (See Yankee Candle Company v Bridgewater Candle Co., LLC where the label color was gold implying opulence and thus failing to be inherently distinctive)
On the ground of trademark alone, there is
· Trademark infringement under 15 U.S.C 1114;
· False designation of origin under 15 U.S.C 1125(a);
· Violation of the Anti-dilution provision under TDRA
Otherwise, frustrating software allowing random words. Will SCRABBLE do something about it?
This is the conversation in my head.
Scrabble Player: Hmm…the online board looks very similar to the real scrabble board
(Ding! TM enthusiast awakens. Similar!…who owns what?)
Scrabble Player: What is troubling is that the color codes for scoring high points in pink, dark blue and light blue are identical to the original pattern in Scrabble. Yet, there is a difference. Yes! That’s it. The colored boxes just do not state clearly what scoring advantage the color stood for.
(Ha! very smart, but any self respecting scrabble player can easily identify what the box color denotes.)
Scrabble Player (Disgusted): The most annoying part is when words from other languages could be made, for instance pina (Spanish for pineapple)!!!! FAKE
Exit disgruntled scrabble player and the Trademark enthusiast is raring and rearing to go.
Information on Scrabble website says Hasbro owns it all.
(http://www.hasbro.com/games/adult-games/scrabble/home.cfm?page=about)
“SCRABBLE® is a registered trademark. All intellectual property rights in and to the game are owned in the U.S.A. and Canada by Hasbro Inc. and throughout the rest of the world by J.W. Spear & Sons, PLC of Enfield, Middlesex, England, a subsidiary of Mattel Inc. Mattel and Spear are not affiliated with Hasbro.”
http://www.hasbro.com/home/copyright.html
Scrabble at the very least owns a trademark right in the name, a trade dress in the look of the board.
In Two Pesos, Inc., v Taco Cabana, Inc, the Court laid down a five part test for determining whether a trade dress was inherently distinctive or had it acquired a secondary meaning.
i. Does the Plaintiff have “trade dress”?
ii. Is the Trade Dress functional/non-functional?
iii. Is the Trade Dress inherently distinctive?
iv. Has the Trade dress acquired a secondary meaning in the concerned market?
v. Does the alleged infringement create confusion, in the mind of ordinary consumers, as to source/association of product with goods/services?
A trade dress must be non-functional and must be unusual and memorable.( See I.P. Lund Trading ApS v. Kohler Co. “Whether the dress is so unique, unusual and unexpected in this market that it will automatically be perceived by customers as an indicator of origin”.) To be protectable under the Lanham Act, it is necessary for the product trade dress to show secondary meaning i.e. a certain product identifies with the source of the product.
However, an impediment to finding such trade dress is the functionality doctrine. The functionality doctrine as the Supreme Court’s dictum in Re Inwood Labs., established that if the product feature is essential for the use and purpose of the article or effects the cost and quality of a product, then that feature is functional.
But what about the colored tiles?
Qualitex Co. v Jacobson Products Co. Inc settled that concept back in 1995 by showing that though colors cannot be inherently distinctive, they can acquire recognition and a secondary meaning if the color is used over time and three factors are established:
i. This color acted as the source identifying factor
ii. The color did not undermine the need for that color in the industry
iii. Color was not functional
Quite obviously, the color coded tiles in the Scrabble board are easily identifiable as being associated with Scrabble, anybody else can use different colors to follow a similar concept and the colors pink and shades of blue certainly do not mean high points. (See Yankee Candle Company v Bridgewater Candle Co., LLC where the label color was gold implying opulence and thus failing to be inherently distinctive)
On the ground of trademark alone, there is
· Trademark infringement under 15 U.S.C 1114;
· False designation of origin under 15 U.S.C 1125(a);
· Violation of the Anti-dilution provision under TDRA
Otherwise, frustrating software allowing random words. Will SCRABBLE do something about it?
But a more interesting position to analyze is that of Facebook. More later.
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