Why the federal Court decided Sexual Pursuit was too intimate a knock-off of Trivial Pursuit
One of the top 10 marketing stories of the 1980's has to be the board game, "Trivial Pursuit". Invented by Canadians Chris Haney and Scott Abbott, it was a phenomenal international success. Almost 4 million games were sold in Canada between 1983 and 1984 alone, and in 1984, 20 million games were sold in the United States. It had the distinction of being sold in some of the most prestigious carriage-trade stores in the world -- Creeds in Toronto, Bloomingdales in New York and Harrods in London.
After playing Trivial Pursuit, Tom Hayes and Brian Thurston came up with the idea for the game "Sexual Pursuit," in which all of the questions and answers would relate to sexual topics. A great deal of thought and effort was put into developing their game, with particular care being given to ensuring that the questions and answers were not offensive or exploitative. In place of the "roll again" spaces found on Trivial Pursuit, Sexual Pursuit had a unique category of question called "E-zone" or "erogenous zone" questions, which were personal questions a player was expected to answer to which there were no right answers printed on the reverse side of the card.
There were similarities (for example, identical number of spaces between spoke ends) and differences (Sexual Pursuit used a hexagonal rather than Trivial Pursuit's round board) between the two games. Suffice it to say, that while there were differences, Sexual Pursuit was patterned on Trivial Pursuit, and copied many aspects of it (though copyright infringement did not form part of the case).
Trivial Pursuit took Sexual Pursuit to court alleging trademark infringement and passing off through such trademark usage. In 1984, they were granted a preliminary injunction that required the Sexual Pursuit game to be pulled off the market and stored in a warehouse until a full trial could be held. That full trial took place 13 years later (and $102,000 in storage costs later) -- in September 1997, the Federal Court made the preliminary injunction permanent, awarded the storage costs to the Trivial Pursuit people and ordered all Sexual Pursuit games in storage to be destroyed.
The judge concluded that the two trademarks were confusingly similar, noting that there was the identical second word and that "the first word in each is a three syllable word of approximately the same length, both ending with the letters 'al.'"
The judge decided that the trademark Trivial Pursuit was not descriptive (this was important since descriptive trademarks are not valid trademarks). Here is the judge's conclusion on that issue:
"while pursuit is a generic name used to describe some board games in which there is a pursuit or chase element, for example where one player chases the game token of the others with a view to overtaking them and perhaps knocking them back to a preceding place on the board (such as in) Sorry, Parcheesi, Aggravation, Trivial Pursuit is not a pursuit game in that sense. There is a contest among the players as to who can amass the requisite number of correct category answers most quickly, but there is no pursuit of the other players' token pieces. ...the name of the game was a 'send-up.' Trivial pursuit, in common parlance, describes an activity that is useless or frivolous. As applied to the (Trivial Pursuit) board game it pokes fun at the game, or at those who play it..."
The judge then examined how the "trade dress", or "get-up" of the packaging might confuse the public from a trade mark sense. The judge noted that the Sexual Pursuit trademark was placed on the face and sides of its box in almost the same place as that with Trivial Pursuit. Both names were in a florid script that, while not the same, were reminiscent of the other. In each case, the names were inscribed on the four corners of the game board, and on the interior box that contained the question cards.
Another aspect of the similar get-up that the judge felt could contribute to possible confusion was the similar square shape and chubby outer box, and the judge commented upon this:
"one must look at the situation in the market in late 1984. ...(the Trivial Pursuit) packaging was very distinctive. None of the games introduced into evidence from that era and earlier had a package similar to (Trivial Pursuit). Most board games were packaged in rather shallow rectangular boxes.
The ultimate question before the judge was whether the public would be confused by the similar trademarks and get-up into believing that the two board games were marketed and sold by the same person. The judge felt that there could be a likelihood of confusion, stating her view in quite blunt terms:
"an average consumer would make an automatic association between the two games and assume that they came from the same source."