Mojang's Trademark Application Rejected: Too Many 'Scrolls' For The USPTO
from the uspto-uses-papyrus dept
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.