Monday, August 13, 2007

Rhode Island Federal Court Finds "MEMORY" to be Generic for a Card Game

On July 31, 2007, Judge William E. Smith of the United States District Court for the District of Rhode Island, denied a motion for preliminary injunction brought by Hasbro, Inc., ruling that Defendant MGA Entertainment, Inc. had carried its burden to show that the term "'Memory' is and has been a generic term not entitled to trademark protection." Hasbro, Inc. v. MGA Entertainment, Inc., C.A. No. 06-262 S (D.R.I. July 31, 2007).

Hasbro charged MGA with infringement of the registered mark MEMORY for a line of card-matching games. MGA sells a three-dimensional version of a memory game under the name "3-D Memory Match-Up."

3-D Memory Match-Up

According to the court, over the course of a seven-day evidentiary hearing, "the parties fought unsparingly over every inch of legal ground *** proving that when it comes to fun and games, there is no fooling around." The crux of the matter was simple: "whether the term 'memory/ is a generic name for a class of card (or card-variant) matching games."

After discussing the issue of who bears what burden of proof when "an incontestable mark is challenged as generic," and noting a difference in the law of the sixth and ninth circuits as compared to the seventh, the court concluded that MGA had met the more stringent test: proof by a preponderance of the evidence that the term is generic. Consequently, Hasbro was unable to demonstrate likely success on the merits, and its motion for preliminary injunction was denied.

MGA's evidence of genericness was "compelling." Although Hasbro's registration issued in 1967, game books and rule books dated 1946, 1958, 1964, and 1968 referred to a generic card game called "Memory" or "Concentration (Memory)". Various dictionaries also defined "memory" as a card game, sometimes referred to as "concentration." Hasbro's own website used the term generically, and "substantial evidence" showed use of the term "memory" by competitors. And finally, MGA submitted "considerable evidence of the term 'Memory' being used in conjunction with internet card-matching 'memory games.'"

Hasbro offered brand penetration surveys which it claimed demonstrated that "consumers associate Hasbro's specific game with the term 'Memory.'" However, such evidence is "not dispositive," but rather is considered as one of several factors. In any case, there was no evidence that "consumers associate the term 'Memory' with Hasbro's game, just that Hasbro's game occupies a large market share."

In closing, the court noted, however, that "a party losing the battle on likelihood of success may nonetheless win the war at a succeeding trial on the merits."

Text Copyright John L. Welch 2007.


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