It might seem axiomatic that whenever you develop a new product or service you ought to immediately register a trademark or servicemark to ensure marketplace protection. And I’m not talking about trademarking “That’s Hot” or “You’re Fired!” I’m talking about real, useful stuff. Like Oxyclean.® Or Chia Pet.®

(Fun fact of the day: you can only use the ® symbol if your mark is registered with the USPTO. Otherwise you are stuck using the ™ symbol, which is just a claim of ownership over a mark.)

Most of the time, promptly registering a trademark is a good idea — not only does it help you establish rights in your own mark, it gives you early warning if you’re going to wind up in a dispute (and ample opportunity to change your mark before you invest too much time, money, and heart into it). But not always. For a good example of the latter situation, just look at the current dispute between ZeniMax Media, the publisher of a series of role-playing games called The Elder Scrolls and forthcoming game entitled The Elder Scrolls V: Skyrim, and Mojang, creator of the popular game Minecraft, and forthcoming game entitled, Scrolls.

Scrolls vs. The Elder Scrolls

According to Mojang’s website, Scrolls is “a new and unique game where you fight to outmaneuver your opponent on the battlefield using the destructive powers in your collection of magical scrolls.” In Scrolls, you can “explore the world and cleanse the lands of harm, one monster at the [sic] time.” The developer describes it as a “strategic game with a strong foundation in tactical game play but with a touch of random [sic] and chance guaranteeing a never-ending stream of curve balls.” To me it sounds like a computerized blend of Magic: The Gathering and DragonStrike (“Feeling brave tonight?” [Ed. Note: Don’t worry, I didn’t get the reference either. But that link looks amazing.])

The Elder Scrolls games are also fantasy-themed. And I can tell you from thousands of hours of personal experience that they have almost nothing to do with wrapped pieces of parchment. Like ScrollsThe Elder Scrolls games also involve exploring the world and cleaning the lands of harm one monster at a time. And yes, you can cast magic spells using scrolls in some of the Elder Scrolls games (although it is far more satisfying to snipe your opponents from afar with daedric arrows using a x3 sneak multiplier…or so I’ve heard).

The Dispute

On May 17, 2011, Mojang AB Corporation Sweden filed an application with the United States Patent and Trademark Office to register the word “Scrolls” for a slew of categories, including computer games, video games, computer software, CD-ROMS, clothing, games, toys, entertainment services in electronic form and even knitwear. Little did Mojang realize that ZeniMax had already registered its mark “The Elder Scrolls,” years ago, in all of these same categories (except for knitwear…for some reason ZeniMax chose “fleece pullovers” instead).

On August 5, 2011, Mojang’s head developer wrote on his blog: “Today, I got a 15 page letter from some Swedish lawyer firm, saying they demand us to stop using the name Scrolls, that they will sue us (and have already paid the fee to the Swedish court), and that they demand a pile of money up front before the legal process has even started.” (What a threat…like having to go through with a wedding because your dad already paid the caterer!) In the letter, ZeniMax takes the position that its use of “Elder Scrolls” is a common sign-element like Nintendo’sMario Brothers series or Blizzard’s Warcraft series, and that consumers will be confused about the commercial origin of Scrolls.

Many gamers are upset with ZeniMax because The Elder Scrolls games all have distinctive names by which they are known to gamers, e.g., DaggerfallMorrowindOblivion, and (soon)Skyrim — in practice, few people actually refer to the games as The Elder Scrolls. And as mentioned above, the games do not involve scrolls to any meaningful degree, unlike Scrolls, which is apparently all about rolled parchment. On the other hand, if you do a Google search for the word “scrolls” the first hit is for Mojang’s game, but the 3rd and 4th hits are for The Elder Scrolls games, demonstrating at least a potential for consumer confusion.

Likelihood of Confusion?

The general test for trademark infringement is whether there is “a likelihood of confusion” — a phrase our regular readers should know well by now.

Whether Scrolls is confusingly similar to The Elder Scrolls is complicated. Weighing in favor of ZeniMax’s position is: the marks are phonetically and visually similar in that they share an identical word; both marks are being used in the fantasy computer-game context; both games are marketed to the same audience (i.e., gamers); and The Elder Scrolls is a suggestive mark, making it somewhat “strong.” Weighing in favor of Mojang’s position is: Mojang probably did not intend to cause any confusion or steal business from ZeniMax; there is probably not much evidence of actual confusion; there is little likelihood of Mojang expanding into other markets; and gamers — whose tendencies toward neuroses and obsession actually make them pretty sophisticated as consumers — are probably not likely to get the products mixed up.

In sum, it’s a close call. Which is why it wasn’t necessarily the best decision for Mojang to try to register Scrolls before the game attains some degree of commercial success. Because “scrolls” is so similar to “elder scrolls” and the genre is basically the same, Mojang essentially forced ZeniMax’s hand by registering in the United States. If Mojang had waited until Scrollsbecame popular, it would have been a lot easier to tell ZeniMax to buzz off because (presumably) there would be no evidence of actual consumer confusion. If the game was a success, Mojang would have cash in the bank account to pay the lawyers and a property worth fighting about; if the game never went anywhere, ZeniMax would have little incentive to be aggressive with Mojang (and Mojang would have little incentive to strenuously resist).

As it is, the only thing Mojang gained by applying to register Scrolls now was a dispute with a much bigger fish over some intellectual property that might be valuable to Mojang one day. I wonder if the game comes with a scroll spell for “takebacks.”