J.W. Spear & Sons v. Zynga Inc.
By Michelle Goldring – Edited by Jennifer Wong
J.W. Spear & Sons v. Zynga Inc.,  EWHC 3348 (Ch)
[caption id="attachment_3900" align="alignleft" width="150"] Photo By: Brian Burger - CC BY 2.0[/caption]
The England and Wales High Court of Justice, Chancery Division held that infringement of Scrabble’s trademarked name did not occur when Zynga titled its games “Scramble” and “Scramble with Friends.” J.W. Spear & Sons v. Zynga, Inc.,  EWHC 3348 (Ch) at 147. It also held that the word “Scramble” was used to refer to games of that type and therefore did not infringe on Mattel’s trademark of that word. Id. at 158–59. However, the court also expressed concern that the “Scramble” logo created a likelihood of confusion because of its design. Id. at 142.
The court relied largely on Mattel’s previous actions to prove that the company itself did not seem to acknowledge confusion or infringement in a timely fashion to defeat Mattel’s trademark infringement claims. Id. at 46. Beyond its official holding, the court also noted that Zynga’s “Scramble” logo could potentially be misleading to consumers. Id. at 145. In the “Scramble” logo, the “m” is placed on its side such that it resembles the Scrabble name,. Id. at 142.
BBC News and PC Mag provide brief descriptions of the case and the reactions of the parties. World IP Review gives a fuller description of the judge’s reasoning.
Mattel claimed that Zynga had infringed on four trademarks, including the words “Scramble” and “Scrabble,” the Scrabble logo, and the image of a tile, id. at 3–4, and that consumers would be misled to believe Mattel was the producer of those games. Id. at 5. First, in holding as it did, the court reasoned that Mattel had been aware of Zynga apps that resembled Scrabble as early as 2008, but did not take action. Id. at 46. Since Mattel did not act until Zynga’s game was in its fifth version, id. at 35, the court felt that “Mattel did not perceive any threat to the Scrabble brand” from Zynga’s prior similar games. Id. at 54.
Second, the court noted that prior to filing this action alleging that Zynga was “passing off” its products as if they were Mattel’s, Mattel had attempted to negotiate an agreement to license Zynga’s products to create board games. Id. at 100. The court stated that it was “startling” that Mattel would try to enter a licensing agreement if it felt its trademarks were being misused. Id. Similarly, the court noted that Mattel employees did not seem to think “there was any realistic prospect of confusion between the words Scrabble and Scramble . . . .” Id. at 145.
Lastly, the court noted that while Mattel’s trademark claims did not stand, the logo of Zynga’s game could invite confusion. As the court explained, “Zynga’s present logo with the m on its side gives the impression that the word is Scrabble when one looks at it quickly . . . .” Id. at 147.
According to BBC News, Mattel plans to appeal the judgment. Since this was a case heard in an initial trial court, it remains to be seen if the judgment will reversed.