Mojang's Trademark Application Rejected: Too Many 'Scrolls' For The USPTO
from the uspto-uses-papyrus dept
We have been covering the trademark dispute over ‘Scrolls’ and the pending lawsuit against Mojang’s use of the mark. We have now learned that the United States Patent and Trademark Office (USPTO) has rejected Mojang’s ‘Scrolls’ application for trademark status in the US.
The letter of rejection states that Mojang’s application for ‘Scrolls’ infringes on two registered marks in the US. The first is for Bethesda’s ‘The Elder Scrolls’. The Second is for ‘Scrolls’, a registered trademark by a t-shirt company in California.
The t-shirt mark I can understand. Mojang’s application listed t-shirts and clothing as areas where it is looking to use the mark. It seems pretty easy to understand why the USPTO would reject the application based on that criteria.
However, the logic behind the rejection based on Bethesda’s trademark still makes little sense. According to the USPTO:
Regarding the THE ELDER SCROLLS marks, the applicant has merely deleted the term ELDER from the registered mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. The applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
What really confuses me here is that the USPTO considers Mojang’s mark to be Bethesda’s mark with a few words cut out. This leads me to believe that the USPTO is willing to accept the idea that a trademark is not just limited to the full trademarked phrase but also to the individual parts. So not only does Bethesda own the trademark for ‘The Elder Scrolls’ when used in a game, but also to the words ‘Elder’ and ‘Scrolls’. I hope that doesn’t apply to the word ‘The’. I really hope that this is not the USPTO’s intention. If this ruling is left to stand, applying for a trademark could become an even more complicated process than it currently is. Not only do applicants need to look for exact matches to proposed trademarks, now they will have to make sure that individual words are not part of other trademarks. I don’t think that is how trademark law is meant to function.
However, this rejection seems to leave room for Mojang to alter the title of its game by adding a subtitle or another word to the title as long as it creates a ‘distinct commercial impression’, however that is determined. Mojang has six months from the issue date of the letter to amend its application or appeal the ruling. It will be interesting to see what move Mojang will make in response to this letter.
Filed Under: elder scrolls, scrolls, trademark
Companies: bethesda, mojang
Comments on “Mojang's Trademark Application Rejected: Too Many 'Scrolls' For The USPTO”
Hopefully he offers to battle the USPTO in Quake.
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I would rename the product “The Real Scrolls” and tell Bethesda to choke on it.
The rejection doesn’t say “if your mark includes one work included in another mark, you lose,” it says “The mere deletion of wording from a registered mark *MAY* not be sufficient to overcome a likelihood of confusion.”
Or, in some circumstances, it may.
I agree that the use of “deletion” language is weird, as it presumes you started with the preexising mark and took a term out, but it’s common PTO and trademark law practice that the addition of a single word or the lack of a single word doesn’t *necessarily* mean your mark is clear in light of another mark that shares similar characteristics.
Whether or not this rejection stands will not have any effect on PTO practice, as individual rejections are not binding precedent on examiners in other cases.
I feel that the rejection is the right thing for the wrong reasons.
I feel the only correct reason for this case /should/ be: ‘You cannot trademark dictionary words or common phrases.’
I would also like to add another rule: you cannot trademark a single word derived from the mis-spelling of a common name or word. For example, Wendy’s is a trademark, but it also language pollution that makes an already hard language even /harder/ with yet another word that is an exception to rules.
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Are you saying that Wendy’s is a misspelling?
It’s a common spelling of a common enough first name in the possessive form.
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Huh?
Ok, now I’ve got to hear this, how is “Wendy’s” language pollution? And an exception to what rules?
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Nothing to do with me
but if Wendy’s
on its own is the trademark,
then I would imagine that it is problematical language as you have the possessive form possessing nothing,
Wendy’s what? would be a fairly reasonable response.
I guess, “Wendy’s restaurant”, “Wendy’s drive through auto detailing shop”, “Wendy’s tattoo parlour” and “Wendy’s bad hair day” would all be fine however.
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Having said that, I don’t actually care.
Trademarks are important consumer protection legislation that allow us to have reasonable certainty about the type and quality of whatever goods or service the trademark holder offers and to know who to hold responsible for their failure or success in providing the services they offer.
It has a side benefit for businesses that other people cannot ride on their coat-tails with no effort but that is a secondary benefit and not the purpose of the legislation (As far as I am concerned), it’s not IP, it’s protection for you and me.
If people really want to trademark stupid names, who cares as long as they aren’t allowed to bludgeon other businesses with it unjustifiably.
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However, the name ‘Wendy’ was invented by J.M Barrie for “Peter Pan” – so shouldn’t his heirs own that name until Kingdom Come (or infinity minus a day, whichever is first)?
Or.. goodness help us all… Disney!
Anyone know where I can get a good dictionary dump of the entire english language? I’m going to register that as a trademark and sue the world!
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I’m afraid you are already being sued yourself, blaktron, because the mere deletion of the words “Officially Sponsored by Disney” from your name is not sufficient to clear you of trademark infringement.
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Damnit Marcus, but oh well. I hear deleting ‘ESPN’ from your own name has been deemed equally infringing, so check your inbox for the flood of nastygrams…
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It’s probably easiest to google, “dictionary attack word list.”
He should change his application to “Younger Scrolls”.
Not surprising
Monster Cable has been building precedent for this reasoning for years.
Bethesda doesn't want them to use the word "Scrolls" at all, TM or No TM.
Markus “Notch” Persson has Tweeted (http://twitter.com/#!/notch) and posted in his blog (http://notch.tumblr.com/post/10990169550/a-short-response) that Bethesda doesn’t want them to use the word “Scrolls” at all.
They’ve offered to give up the trademark request and even change the name to “Scrolls: ” but Bethesday/Zenimax has refused to give up the suit.
Re: Bethesda doesn't want them to use the word "Scrolls" at all, TM or No TM.
That should be “…change the name to “Scrolls: some subtitle”…”
Re: Bethesda doesn't want them to use the word "Scrolls" at all, TM or No TM.
Thats great that Bethesda doesn’t want them to use scrolls at all but it still is up to the USPTO. And it appears from the ruling that renaming it to “The Old Scrolls” would comply according to their ruling.
It’s not as if they hae to trademark the word in order to use it, right? Most movie titles aren’t trademarked, yet people can tell them apart just fine. Why not the same for games?
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Bethesda/Zenimax apparently disagrees. Mojang has offered to give up the trademark request and even change the name to “Scrolls: some subtitle” but Bethesda doesn’t want them using the word “Scrolls” at all and are continuing with the suit.
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Yes, but if people ever start selling counterfeit ‘scrolls’ merchandise, Mojang will be able to ask them to change the name.
Counterfeit is a charged word though; I mean that if someone sells similar merchandise or games, and consumer confusion occurs, then mojang can legally force the issue if needed. (For example, there are minecraft clones that have been confused with the real minecraft before. Lawyers were not required there).
name it ‘new scroll’ or ‘mokjang’s scroll’
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Mojang’s Scrolls of loooove baybe, ohhh yeah. Feeel the magic.
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Aight, I put on my robe and wizard hat.
I hope that doesn’t apply to the word ‘The’.
“Mojang’s Trademark Application Rejected: Too Many ‘Scrolls’ For The USPTO”
WARNING: Incoming lawsuit detected!
I vote for “Scrolls: Bethesda are douchebags”, myself.
The correct information
1. The PTO did not say there was “infringement.” Infringement is what may or may not happen in the real world. (It’s also a different statutory section of the Lanham Act. Registration was refused under section 2(d); infringement is under sections 32 and 43(a).) This is a preliminary decision that the marks are similar enough that the PTO is refusing registration. Scrolls can still use the name if it wants, but would be doing it without the benefits of registration.
2. If the marks in question were “New Tide” and “Tide” for detergent, would you be having such trouble with it? Of course not, because you would accept that people would likely be confused there was some relationship. Why do you think this same reasoning doesn’t apply to “Scrolls”?
Mojang's trademark application
ANOTHER great news story! Fair and balanced (and not in the sense of Fox News).
Being an IP attorney (but for small entities only, so of no help; in fact, a hindrance; to trolls) I share your concern
with this ruling. Hopefully the trademark office will reverse that holding.
In my opinion Notch fell to the same level as copyright trolls when he decided to trademark a single word. That’s just evil.
Anyway, why not rename that game “Rolled up parchment papers” and be done with it?
I would use 'The Eldest Scrolls' personally.... If they are going to be a douch, only fair to play the same game
If they really want to be jerks about the whole thing, just use ‘The Eldest Scrolls’ or ‘The Oldest Scrolls’, neither of which are synonyms for ‘The Elder scrolls’ (which are only a little older than old, not really the oldest, and not the Eldest….).
So basically this ruling says that if I have a two word trademark, I can sue anyone using any one of those words by claiming that their mark is not original, and if they just removed one of their words, their title would be the same as my trademark. I’m sure there’s a trademark on ‘The Chicago Bears’ so they should be able to sue anyone with Bears in their name, since they can claim that, “The applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.”
Re: I would use 'The Eldest Scrolls' personally.... If they are going to be a douch, only fair to play the same game
It’s when you apply that logic to anything with the word “Chicago” in it…