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ZeniMax, Mojang Settle "Scrolls" Dispute

By - Source: ZeniMax Press Release | B 15 comments

ZeniMax gets the name while Mojang can license it for its card game and add-ons, nothing more.

On Monday, ZeniMax Media, parent company to Bethesda Softworks, announced that it finally reached an agreement with Minecraft developer Mojang over the use of "Scrolls."

The battle over "Scrolls" had been ongoing for quite a while. It began after the latter, smaller studio submitted applications covering a range of "Scrolls" trademarks for an upcoming game and other media. The controversy should be obvious: the word "Scrolls" is used in Bethesda's The Elder Scrolls trademarked label. ZeniMax and Bethesda argued that Mojang's use of "Scrolls" would not only conflict with their own RPG trademark, but cause consumer confusion and thus possibly damaging the Elder Scrolls franchise itself.

Last we heard, Mojang won an intern junction which allowed the studio to continue its use of "Scrolls" even after the U.S. Patent and Trademark Office saw that it would be confusing, and thus rejected the studio's U.S. trademark application. Still, it was a given that Zenimax and Bethesda would not give up despite the slight victory.

"Failing to protect a trademark could be damaging to an owner's rights," said Angela Bozzuti, an associate specializing in trademark law at Davis & Gilbert LLP in New York City, back in October 2011. "Not only could it result in actual consumer confusion, but it could also weaken the strength of the mark in the marketplace. Furthermore, once there is widespread third party use of the term 'Scrolls' as or within a longer game title, it will likely weaken Zenimax's mark and make protection difficult and limited."

Mojang offered to settle the dispute outside court in a game of Quake 3 Arena, but that never transpired. Instead, the two finally settled the matter in court seven months after Bethesda's lawyers initially sent their warning. Under the terms of the new settlement, all ownership rights to the "Scrolls" trademark will transfer to ZeniMax, and Mojang will assign to ZeniMax ownership of any pending "Scrolls" trademark applications.

While it sounds as if ZeniMax won the battle, Mojang got to keep a souvenir at least: the use of "Scrolls." ZeniMax has licensed the "Scrolls" mark to Mojang to be used solely in conjunction with its existing Scrolls digital card game and any add-on material it makes to that game. Other than that, the terms of the settlement prevents Mojang from using the Scrolls mark for any sequel to the current card game, or any other video game.

"We are pleased to have settled this matter with Mojang amicably," said Robert Altman, Chairman and CEO of ZeniMax. "The Elder Scrolls is an important brand to us, and with this settlement we were able to protect our valuable property rights while allowing Mojang to release their digital card game under the name they preferred."

"The settlement is that we give them the trademark, get to keep the name, and won't make an Elder Scrolls competitor using the name," Markus "Notch" Persson said via Twitter. "The actual document I signed was like a billion pages, so at least we know a bunch of lawyers got rich. Good, wouldn't want them to starve."

"For us this was never about a trademark, but being able to use Scrolls as the name of our game which we can," reads the Mojang website.

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  • 14 Hide
    stridervm , March 13, 2012 9:54 AM
    I better trademark the name "Dark Revolution Call of Fantasy Scroll of Mass Star Super Online World Chrono : Dragon Edition"

    Sure, it sounds like a Chinese bootleg but I'll be frickin RICH! >.>
Other Comments
  • 4 Hide
    mouse24 , March 13, 2012 5:38 AM
    Quote:
    "We are pleased to have settled this matter with Mojang amicably," said Robert Altman, Chairman and CEO of ZeniMax. "The Elder Scrolls is an important brand to us, and with this settlement we were able to protect our valuable property rights while allowing Mojang to release their digital card game under the name they preferred."


    Uhm, Why even bother with the lawsuit in the first place if you are worried about company relations with them? And for that matter who in there right mind would confuse a Card game called Scrolls with an immense RPG world game called Elder Scrolls: Skyrim

    not a single person I know refers to Skyrim simply as Scrolls.

    Quote:
    "Scrolls" would not only conflict with their own RPG trademark, but cause consumer confusion and thus possibly damaging the Elder Scrolls franchise itself.
  • 3 Hide
    neiroatopelcc , March 13, 2012 6:50 AM
    So any word contained in a product title is potentially reserved for that company, if it has the money to sue anyone using it?
  • 3 Hide
    GenericUser , March 13, 2012 6:55 AM
    Oh no, because everyone will totally confuse the game with Oblivion, Skyrim and the like. This case might have had merit if the average persons IQ was 40.
  • 4 Hide
    virtualban , March 13, 2012 7:31 AM
    waiting for the time when new products will have to be named "vvadduuggglll12345" and similar.
  • 4 Hide
    alidan , March 13, 2012 8:28 AM
    mouse24Uhm, Why even bother with the lawsuit in the first place if you are worried about company relations with them? And for that matter who in there right mind would confuse a Card game called Scrolls with an immense RPG world game called Elder Scrolls: Skyrimnot a single person I know refers to Skyrim simply as Scrolls.


    you know i think the same way... but people continue to supprise me with their stupidity every day...

    so now we cant use the word

    part
    cart
    revolution
    dark
    heros
    game
    dead

    to name a few in the title of games, because they are used in other games...

    god i hate this world.
  • 4 Hide
    Maxor127 , March 13, 2012 8:52 AM
    Call of Juarez vs. Call of Duty. Ubisoft and Activision better get their lawyers ready. Any noun or adjective that happens to compose part of a title is up for grabs now. Sword, Legend, Ninja, Dragon, and let's throw in roman numerals while we're at it. I always confuse Red Dead with Red Steel. Or Mario Golf with Tiger Woods Golf.
  • 14 Hide
    stridervm , March 13, 2012 9:54 AM
    I better trademark the name "Dark Revolution Call of Fantasy Scroll of Mass Star Super Online World Chrono : Dragon Edition"

    Sure, it sounds like a Chinese bootleg but I'll be frickin RICH! >.>
  • 4 Hide
    senkasaw , March 13, 2012 3:00 PM
    stridervmI better trademark the name "Dark Revolution Call of Fantasy Scroll of Mass Star Super Online World Chrono : Dragon Edition"Sure, it sounds like a Chinese bootleg but I'll be frickin RICH! >.>


    Dude...you made my day.
  • 0 Hide
    iceonfire014 , March 13, 2012 4:46 PM
    Personally I don't think Elder Scrolls and Scrolls is confusing...

    By the way, the "it would be confusing" link (http://tdr.uspto.gov/jsp/DocumentViewPage.jsp?85323305/%20OOA20110913203209/Offc%20Action%20Outgoing/18/13-Sep-2011/sn/false#p=1) leads to a page that says 500 Server Error.
  • 2 Hide
    bustapr , March 13, 2012 7:23 PM
    Quote:
    The actual document I signed was like a billion pages, so at least we know a bunch of lawyers got rich. Good, wouldn't want them to starve

    never knew exactly why things as simple as this would require the signing of a giant contract. I mean, its just giving over a trademark and a keeping a name, and agree to not make a fantasy rpg like elder scrolls. a valid agreement can be made in 1 or 2 pages...
  • 1 Hide
    senkasaw , March 13, 2012 7:29 PM
    bustaprnever knew exactly why things as simple as this would require the signing of a giant contract. I mean, its just giving over a trademark and a keeping a name, and agree to not make a fantasy rpg like elder scrolls. a valid agreement can be made in 1 or 2 pages...

    But that would make too much sense...
  • 1 Hide
    alextheblue , March 13, 2012 10:45 PM
    I'm thinking of making a sci-fi RPG called Mass Affect. What do you guys think?
  • 1 Hide
    parasite057 , March 14, 2012 5:47 AM
    Mojang should now call their game "The Elder: Scrolls"
  • 0 Hide
    shrapnel_indie , March 14, 2012 8:47 PM
    This is sooooooooo stupid.

    TES, The Elder Scrolls, Elder Scrolls being confused with Scrolls?!?!?!

    Only to a Moron. (Unfortunately the USPTO office must be a magnet for them. Look at how many stupid patents get passed through as accepted when in reality there is nothing new about them, only an abstract legalese-like description designed to confuse a dumb-dumb.)

    Legalese, at least the kind in contracts is a language meant to bind one tighter than Houdini in a straight jacket, mummification wrap, and ropes combined with electric shocks and a convenient noose which will be instantaneously applied, with the chair kicked out from underneath should you go against any part of the micromanaged details.

    Here's another reason it's stupid.

    We now have a big teen-party movie coming soon if not already in theaters called Project X. How's THIS for confusion? Back in the '80s there was another movie with the same title. This one starred Mathew Broderick and some chimps, where the chimps were used in radiation exposure experiments to see how long they could fly simulators after being exposed. I'm sure there are other examples out there too of same-name different content movies and songs (and maybe even books.) We surely can get confused there, but apparently it's Okay there, but not elsewhere.
  • 0 Hide
    AstralWraith , April 5, 2012 2:49 PM
    For some reason I have a feeling that far fewer people will be buying ZeniMax titles, Pirate Bay usage for their titles will skyrocket(especially after their lie to the Fallout original creator that they would create an MMO from it after a few titles as he wished/dreamed of, and then used their lawyers to screw him and run off with HIS franchise AND this happening), and Mojang will be enjoying quite a few sales of their titles from now on.....