In March this year, Swedish Minecraft developer Mojang and Zenimax/Bethesda Softworks settled a lawsuit over the trademark “Scrolls.” Mojang had filed a trademark registration for this mark on May 17, 2011, intending for it to be used as the title of Mojang’s latest game. Mojang’s founder Marcus “Notch” Persson revealed through twitter that he had received a letter from Zenimax/Bethesda alleging that the name “Scrolls” infringed upon Bethesda’s trademarks for The Elder Scrolls. Meanwhile, The USPTO issued a letter on September 13th, 2011, that refused the trademark, stating that it was likely to be confused with The Elder Scrolls trademarks: “The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods and services, so resembles the marks in U.S. Registration Nos. 2634683, 2861127, 3375520, 3421731 and 3584564 (THE ELDER SCROLLS) and 4010219 (SCROLLS) as to be likely to cause confusion, to cause mistake, or to deceive.” Zenimax/Bethesda ended up filing suit against Mojang on September 27, 2011, in Swedish court.
In this high profile case, trademark issues were highlighted by individuals on both sides of the fence. In his blog, Perrson stated “The implication that you could own the right to all individual words within a trademark is also a bit scary. We looked things up and realized they didn’t have much of a case, but we still took it seriously. Nothing about Scrolls is meant to in any way derive from or allude to their games.” As reported by Kotaku, Vice president of Bethesda Pete Hines explained that “This is a business matter based on how trademark law works and it will continue to be dealt with by lawyers who understand it, not by me or our developers…Nobody here enjoys being forced into this. Hopefully it will all be resolved soon.” What both Perrson and Hines are alluding to are the nuances in Trademark law. Trademark infringement can occur if a company uses a mark that would cause confusion, mistake, or deception regarding another mark. Furthermore, if a mark holder does not act to protect his trademark, his mark may become weakened or he may lose rights over the mark.