Has “Choose Your Own Adventure” become a generic term?

On Behalf of | Mar 2, 2020 | Trademark Law |

The publishing company Chooseco owns the “Choose Your Own Adventure” trademark once owned by Bantam Books, and it has been fighting hard to protect its rights.

Over the years, it has filed suit against a number of publishers and other companies that used the phrase to describe any series of guided choices or the ability to re-make choices when they turn out badly.

Chooseco has gone up against companies like Chrysler for using the phrase, along with small game producers who coopted it. It issued takedown notices on four games on Itch.io last year that were using the phrase in various ways, allegedly used under the belief that “Choose Your Own Adventure” was a generic name for a genre of storytelling, not an actual brand.

Now, Netflix has stepped into the fray. In response to a takedown request over its 2018 interactive movie, “Black Mirror: Bandersnatch,” it has requested a court that Chooseco be stripped of its trademark registration.

Netflix admits that it negotiated with Chooseco to license the “Choose Your Own Adventure” brand when it made “Bandersnatch.” However, it denies the movie requires a license to use the term. Indeed, the movie doesn’t use the book series’ trade dress or overtly mention the phrase in the movie.

It goes further, however, and argues that Chooseco should no longer be allowed to claim trademark rights to the phrase.

“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,’” reads Netflix’s response. It goes on to cite judges using the phrase in rulings and the fact that interactive fiction is generally referred to by the phrase.

When does a famous trademarked term become generic?

According to the Trademark Manual of Examining Procedure, there is a two-part test for determining whether a designation is generic. And, in order for a term to be found generic, the examining attorney must prove that it is by clear evidence. Here is the test:

  1. What is the genus of goods or services at issue?
  2. Does the relevant public understand the designation primarily to refer to that genus of goods or services?

That is to say, a term or phrase that was once protected by trademark may become so ubiquitous that the public generally understands the term or phrase to refer to a generic idea, and not identifying a single source of goods or services as is the function of a trademark. It is not necessary to prove the public actually uses the term or phrase to refer to the idea, only that it would understand the word or phrase as referring to that idea.

The evidence put forward that the public has come to regard a phrase as generic can be any competent evidence. Here, as we mentioned, Netflix has pointed to numerous instances in which judges and others referred to a series of guided choices as “choosing your own adventure.”

In this case, the court will have to determine if Netflix has provided “clear evidence” that the phrase is now taken to refer to a genre of stories.

What do you think? Should “Choose Your Own Adventure” be protected by trademark or has the public adopted the phrase to refer to a genre?