Mojang Lawyer: Little Chance of Brand Confusion between 'Scrolls' and 'Elder Scrolls'

October 3, 2011 -

Alex Chapman, head of the law firm Sheridans, thinks that a consumer with even a small iota of common sense can distinguish between Mojang’s Scrolls and Bethesda’s Elder Scrolls franchise. Chapman's firm has been retained by Minecraft maker Mojang to deal with Bethesda's trademark lawsuit claiming that "Scrolls" will cause brand confusion among consumers when it comes to their popular RPG franchise "The Elder Scrolls."

"The question here is whether the relevant consumers are or are likely to be confused into thinking that Mojang's Scrolls game is connected with [Bethesda parent company] ZeniMax's The Elder Scrolls series," Chapman told Eurogamer. "In determining the answer the judge will have to take account of a number of factors including the overall impression of the marks and the relative significance of the component words, as well as the level of sophistication of the applicable consumers and the channels through which the applicable products may be sold or marketed."

"In simple terms would consumers buy one thinking it was connected to the other," he added. "We think not, given the sophistication of consumers of each game type, the types of game and the respective channels of marketing and distribution, amongst other things."

Clearly a fight is brewing and it will go to court at some point. The question is how far it will go. We will continue to follow this story as it develops.

Source: Eurogamer


Comments

Re: Mojang Lawyer: Little Chance of Brand Confusion between ...

I love playing Minecraft, but it seems some people are just missing the issue with this case based on what one party is saying.  The lawyers for Mojang are making the claim that it would not be confused in stores (which seeing people shop in the past, they very well could), but the issue with Bethesda (and their parent company Zenimax) is that if Mojang wins this case they run the risk of losing the ability to continue the "Elder Scrolls" series under its own name because the request pur forth is incredibly broad and covers everything from movies, TV, games, music, etc.

There is a good article that goes into this over at Kotaku (http://kotaku.com/5846111/mojang-v-bethesda-or-i-hate-it-when-mommy-and-daddy-fight-[update])

​Here are two parts that show how broad they have made this claim:

Entertainment services in the form of electronic, computer and video games provided by means of the Internet and other remote communications device; internet games (non downloadable); organising of games; games (not downloadable) played via a global computer network; education and entertainment services in the form of cinematographic, televisual, digital and motion picture films, radio and television programs and shows; preparation, editing and production of cinematographic, televisual, digital and motion picture films, radio and television programs; entertainment services in the form of electronic, computer and video games provided by means of the Internet, mobile telephone and other remote communications device.

​And here is the section in regards to videogames:

Computer games; video games; computer software; computer and video games software; computer software downloaded or downloadable; computer software publications downloaded; interactive entertainment software; data recorded electronically from the Internet; data recorded in machine readable form from the Internet; discs, tapes, cartridges, CD-ROMs and other magnetic, electronic or optical media, all bearing computer games software or video games; electronic amusement apparatus for use with television receivers; electronic games apparatus; home video game machines.

​If Bethesda did nothing about this and somehow it passed, it could be very damaging to a very long running series that they have put a great deal of time into over the years.

And in regards to the comment that it should be allowed because everyone calls the games by their partial name (Oblivion, Skyrim, etc.) that is a moot point because while people shorten the name for reference does not change the fact that the full name is "The Elder Scrolls: .....".  There are many different forms of media that use this and people shorten the names.  "Star Trek: ....", "The Lord of the Rings:....", etc.  

So while everyone thinks this is just a bully fight, we need to step back and see what all is going on here.  

 

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Re: Mojang Lawyer: Little Chance of Brand Confusion between ...

And in regards to the comment that it should be allowed because everyone calls the games by their partial name (Oblivion, Skyrim, etc.) that is a moot point because while people shorten the name for reference does not change the fact that the full name is "The Elder Scrolls: .....".

Except for the fact that it is Bethesda doing the shortening. They are the ones who put the version name of the game (Oblivion, Skyrim etc) in a font size 3 times bigger than the "Elder Scrolls" portion. You really can't blame the customer for doing what the game company conditioned them to do.

On the point of Mojang's trademark, you will find the exact same language if you looked up any game related trademark. They want to be able to use that name anywhere they may have the game.

On the actual terms, Is the word "scrolls" found in Bethesda's trademark? Yes. Is that the key part of their trademark? No. Their trademark is on the full phrase "The Elder Scrolls" They do not have a trademark on the individual words.

Re: Mojang Lawyer: Little Chance of Brand Confusion between ...

It's like I said last week-



"Bethesda is going to fail.

This is why the case will fail.

Question:

What did you call the first Elder Scrolls game?

And the second?

The third?

And the fourth?


Answers:

1. Arena

2. Daggerfall

3. Morrowind

4. Oblivion


And NOBODY uses the words "The Elder Scrolls" before them, either."


These isn't going to BE brand confusion.

Re: Mojang Lawyer: Little Chance of Brand Confusion between ...

i was thinking the same thing.

no one refers to them as the elder scrolls tmk, and if you say that, people will look at you like you just spoke of some great unknown.

tbh it reminds me of the whole thing over the Fallout triple pack, and the complaint it could take sales away from Fallout 3 somehow just because its name was similar..... ummm is bethesda thinking straight?

Re: Mojang Lawyer: Little Chance of Brand Confusion between ...

And I would argue that if I asked my mother for scrolls for Christmas, and went into a retail store saying "scrolls something..." it's entirely possible that she could walk out with a copy of Oblivion. While I think Bethesda is being a bit picky, I can see them having a case, and Mojang is a real competitor who has the potential to take sales away from them by use of scrolls.

Still support Mojang, but I think this case can go either way.

-Austin from Oregon

Feel free to check out my blog.

Re: Mojang Lawyer: Little Chance of Brand Confusion between ...

I find it highly unlikely, because...well, hop over to Wikipedia and look up the Elder Scrolls games. There is a picture of the box. And, yes, it does in fact say "The Elder Scrolls" with a number on it, but it's in a much smaller font. The name of the installation (Morrowind, Oblivion, and Skyrim) are considerably larger, and obviously the focus. As has been said elsewhere, nobody talks about Elder Scrolls 4 and Elder Scrolls 5, it's Oblivion and Skyrim.

Re: Mojang Lawyer: Little Chance of Brand Confusion between ...

"Hi, I'm looking for the game 'The'. Can you help me out?"

Re: Mojang Lawyer: Little Chance of Brand Confusion between ...

*sets poster on fire*

Re: Mojang Lawyer: Little Chance of Brand Confusion between ...

The only problem with this is that as far as I am aware, Scrolls will not be sold in retail outlets.

Re: Mojang Lawyer: Little Chance of Brand Confusion between ...

I wouldn't be so sure.

More specificity, while I agree consumers would be unlikely to be confused, trademark cases have a bad habit of overdoing it.  Look how many times Apple Records sued Apple Computer, and won every time.  I doubt even a single consumer would be confused who the recording label for the Beetle was vs builder of fruit themed computers.. but time and time again the judge said 'sorry, Apple Records has the trademark, and your computer makes sound'.

I would not be surprised in the least if Mojang lost.

Re: Mojang Lawyer: Little Chance of Brand Confusion between ...

All that Mojang really needs to do is show all of the games that use the word "scroll" there are a good amount of them.

 
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