Netflix Seeks Cancellation of “CHOOSE YOUR OWN ADVENTURE” Trademark
Trademarks may be classified on a spectrum from strongest to weakest. The strongest marks bear no relation whatsoever to the goods or services being offered. The weakest marks are merely descriptive of the goods or services and cannot be registered absent a showing of secondary meaning (i.e., that they have become identifiers of source in the minds of consumers). Generic terms, on the other hand, cannot function as identifiers of source and are not protectable as trademarks. A term is generic if it is the actual name for a general class of goods or services (e.g. “SMARTPHONE”; “ESCALATOR”). Generic terms may once have functioned as trademarks, but may now be used as the actual name of the class of goods or services (e.g., “ASPIRIN”). As a result, many companies take proactive steps to ensure that their marks are used properly and not in a generic sense (e.g., the photocopy in your hand is not a “XEROX”, and you definitely did not “XEROX” it, but it was produced on a “XEROX” brand copier). If a trademark becomes generic, it may be cancelled on that basis by a Court or the U.S. PTO’s Trademark Trial and Appeal Board.
Netflix, Inc. (“Netflix”), which offers subscription-based digital video streaming services, released a film entitled Black Mirror: Bandersnatch (“Bandersnatch”). According to Netflix, Bandersnatch “is an interactive film that uses a ‘branching narrative’ storytelling technique by which viewers determine the plot of the film by selecting options using a mouse or other controller as the film progresses. Each selection made by a viewer impacts the subsequent plot of the film and can lead to various different endings.” Early in Bandersnatch, the main character’s father asks him why he is “always flicking backwards and forwards” in a book. The main character responds that “the book is a Choose Your Own Adventure.”
Chooseco LLC (“Chooseco”) is a publishing company that currently publishes a book series under the trademark “CHOOSE YOUR OWN ADVENTURE”. Chooseco owns several live U.S. trademark registrations for “CHOOSE YOUR OWN ADVENTURE”, including for use in connection with “motion picture theatrical films” and “interactive multiple choice, multiple ending stories and games delivered by video on demand.” Notably, Netflix previously attempted to obtain a license from Chooseco to use “CHOOSE YOUR OWN ADVENTURE”, but was not successful.
Chooseco brought suit against Netflix for trademark infringement arising from Netflix’s use of “CHOOSE YOUR OWN ADVENTURE” in Bandersnatch. See Chooseco LLC v. Netflix, Inc., Civil Action No. 2:19-cv-00008-WKS (D. Vt.). Netflix has counterclaimed for cancellation of the “CHOOSE YOUR OWN ADVENTURE” trademark registrations on grounds that the phrase is a generic descriptor instead of a trademark designating source. Netflix contends that numerous third parties are using “CHOOSE YOUR OWN ADVENTURE” in connection with interactive-narrative fiction that allows users to make a series of unguided choices. Netflix argues:
“In contemporary parlance, any situation that requires making a series of unguided choices, or that provides an opportunity to go back and re-make a series of choices that turned out badly, is referred to as a “Choose Your Own Adventure”; and
“Similarly, in the context of narrative fiction, including videogames, the phrase “Choose Your Own Adventure” is now widely used to describe any work that employs ‘branching’ storytelling.”
In order to prevail on its counterclaim, Netflix would need to prove that the relevant consuming public understands “CHOOSE YOUR OWN ADVENTURE” to primarily refer to the general class of interactive-narrative fiction. Appropriate evidence would include consumer surveys.
Ultimately, the persuasiveness of the evidence presented during the cancellation will determine whether Netflix is successful on its counterclaim. If Netflix can present convincing evidence that “Choose Your Own Adventure” is used ubiquitously in connection with interactive-narrative fiction, then it could possibly prevail. Suffice it to say, however, we are skeptical. It is generally difficult to prove that a mark has become generic. In addition, there are many existing trademarks which are arguably closer to generic than “CHOOSE YOUR OWN ADVERNTURE”, but which remain protected (e.g., “KLEENEX for tissue; “TYLENOL” for pain relief medication; “GOOGLE” for Internet search engine services). Often, counterclaims for cancellation are brought in trademark infringement actions in an attempt to create a downside for the plaintiff and to encourage settlement. We suspect that the counterclaim in this case was asserted, at least in part, for this purpose.
We will continue to monitor this case and report on further developments.
