Appeals court lines up trial in trademark spat over Connect 4-style games

(Reuters) - A company accused of ripping off another's four-in-a-row game will have to face trial in a revived trademark dispute, after a U.S. appeals court said Wednesday that the game's design may be trademark-eligible.

Although Hasbro Inc owns the rights to Connect Four, P&P Imports LLC's similar jumbo red, white and blue game could be distinctive enough to merit trade-dress protection under trademark law, the 9th Circuit Court of Appeals said, resuscitating P&P's case against rival Johnson Enterprises LLC.

"Imitation may be the sincerest form of flattery but that does not shield someone from being sued for it," Circuit Judge Kenneth Lee wrote for a three-judge panel.

P&P general counsel Casey Kempner said the decision will "provide useful guidance for future practitioners and is a satisfying win for P&P."

Defendant Johnson Enterprises and its attorneys did not immediately respond to requests for comment.

P&P sells a large outdoor "Giant 4 in a Row Game" under its GoSports brand, which became one of the best-selling games in its category on Amazon. P&P sued Johnson in California federal court in 2019 for creating a "nearly identical" game, in the court's words, with the same size, colors and other design aspects.

Trade dress covers aspects of a product's look and feel that identify it as coming from a particular source. The court ruled for Johnson in 2020, finding P&P's game design did not warrant protection because consumers would not associate it with P&Pspecifically.

The 9th Circuit, however, said the design would only have to indicate that the game is produced by a "single (even anonymous) company" for trade-dress protection, even if consumers could not name the specific company that makes it.

The appeals court said there was enough proof that consumers recognized P&P's distinctive design to justify reviving the case.

P&P provided evidence that Johnson intentionally copied its game design, which the court said "strongly suggests" it was protectable. It also submitted a survey in which 63% of respondents said they believed P&P's game is only produced by one company.

The 9th Circuit said it "may appear a bit rich that P&P accuses Johnson of copying its game when both are essentially oversized knock-offs of Connect 4," and acknowledged that the survey respondents "may have recognized the classic Connect 4 design, not P&P's red-white-and-blue trade dress."

But there was still enough evidence for a jury to theoretically rule for P&P, the court found.

Hasbro is not involved in the case and did not immediately respond to a request for comment.

The case is P&P Imports LLC v. Johnson Enterprises LLC, 9th U.S. Circuit Court of Appeals, No. 21-55013.

For P&P: Mark Yohalem of Wilson Sonsini Goodrich & Rosati; and Xiaonan April Hu of Munger Tolles & Olson

For Johnson: James Doroshow of Fox Rothschild

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