Trademarks and Other Hazards: “About Jenga” (Part 2)

By Guest Author Leslie Scott

[Leslie Scott, author of “About Jenga: The Remarkable Business of Creating a Game that Became a Household Name”, continues her series with a discussion of a sometimes difficult but often unavoidable process that many entrepreneurs face: registering trademarks.]

Following Jenga, although most of the games I produced were published through my own company, Oxford Games Ltd, my business partner, Sara Finch,  and I designed and published many games on commission for a wide variety of venerable institutions, and successful businesses.

For one such business, Past Times, we devised Tabula, Joust, The Sailor’s Knot, Victorian Parlour Games and many more that I can’t at this moment recall. But there’s one I could never forget, and that’s the one we named “Hazard,” which proved to live up to its name.

In a briefing meeting with John Beale, the founder of Past Times, he mentioned that he thought The Canterbury Tales would be the up-to-the-minute historical topic in the coming year. Reading through my school edition of Geoffrey Chaucer’s The Canterbury Tales, I came across mention of a dice game called hasard, which the pilgrims played from time to time along their route:

As riot, hasard, stywes, and tavernes
Wher as with harpes, lutes and gyternes
They daunce and pleyen at dees, bothe day and nyght

This sparked the idea to construct a board game around this medieval game of hazard. Past Times approved the idea, the design, and the name “Hazard: A Game of the Canterbury Tales,” and by the end of the year we had published the game and it was on sale across the country through Past Times stores.

After several months Oxford Games and Past Times both received a cease-and-desist letter from a patent lawyer on behalf of his client who owned the trademark “Hazard,” which he had registered in respect of Class 28 goods as defined by the government patent and trademark office as including “games and playthings, gymnastic and sporting articles not included in other classes, and decorations for Christmas trees.”

Sara and I were pretty startled to receive the letter, but Past Times calmly advised us to acquaint ourselves with the background of this particular story and then contact its patent lawyer for advice. Meanwhile, we would continue to produce, and they would continue to sell our game.

I discovered that the lawyer’s client had devised a board game based on golf, which he had called “Hazard.’ He had exhibited a prototype of the game at the previous year’s London Toy Show, and the patent lawyer and convinced him that he should protect his game by registering the word hazard as a trademark. That the lawyer succeeded in acquiring a registered trademark for this word must have been as much of a surprise to him as it was to me.

He must have known, as I did, that to be allowed to register one in the first place, a trademark must be distinctive and “not descriptive of the nature or purpose of the goods or services for which the registration is sought,” as is stated in a pamphlet issued by the UK Patent and Trademark Office.

You can’t, for example, register “chair” as a trademark for seat with a back that usually has four legs and sometimes arms. Similarly, you can’t register “chess” as a trademark for a game of skill played by two persons, on a checkered board divided into sixty-four squares.

Nor, in my opinion, should you be able to register the word hazard as a trademark for a game when the first dictionary definition of the word is “a game of dice in which the chances are complicated by a number of arbitrary rules” (The Compact Edition of the Oxford English Dictionary, 1971) and when all other meanings of the word hazard derive from its first meaning as this particular game of chance or risk.

Yet hazard, the slippery little word, had somehow managed to dodge reviewers in the trademark registration department of the Patent and Trademark Office. Clearly, when considering the word, they had failed to pick up a dictionary, encyclopedia, or indeed any book describing the history of games. And clearly no similar trademark owner opposed it during the three months it was advertised in the Trade Mark Journal.

When I first raised the issue with John’s patent lawyer and filled in the background to our game of Hazard, he was gung-ho for us to stand firm and challenge the validity of the trademark. But tens of thousands of pounds of lawyer’s fees later we withdraw from this fight and took our game off the market. Revenue from the sales of the game simply did not justify an expensive battle, even though we were very likely to win.

The onus of proof of the validity of a trademark lies with the registered owner of the mark, however, John felt – and I agreed -that if anyone was “at fault” in this case, it was the Patent and Trademark Office, for granting the mark. As the office could not be held accountable, the only people to benefit from continuing with this matter would be the lawyers. So we took the game off the market, it was the economically sensible thing to do.

This taught me an expensive yet valuable lesson, to always check to find out if a word had been granted a trademark before using it as the name of a game.. Even though “the ‘fair use’ defence in essence forbids a trademark registrant to appropriate a descriptive term for his exclusive use and so prevent others from accurately describing a characteristic of their goods” (Sowevo, Inc v.Shell Oil Co. [5^th Circ. 1980]), if a word has been registered as a trademark, I had learned that it was advisable to avoid that word.