Can’t Pass Go : Inventors of Game About Illegal Immigrants Stuck in Trademark Dispute

Invent a Monopoly-like game that makes sport of the travails of illegal immigrants trying to sneak across the U.S.-Mexico border and you can figure on getting some flak.

When three San Diego men first introduced their politically incorrect board game a couple of years ago they expected some criticism from liberals and immigrant activists.

What Roland Fisher, Jose Mata and Frank Rodriguez did not expect was to be bogged down in a messy legal fight over the game’s title, “Run for the Border.” Taco Bell Corp. and its corporate parent Pepsico Inc. have accused the three nascent entrepreneurs of ripping off one of the fast-food giant’s marketing slogans.

After selling briskly at first, the game has been withdrawn from store shelves. The exhilaration of the marketplace has given way to the terror of the court system.

“I got into this to make some money and have some fun, but it’s beaten me down mentally, physically and socially,” said Fisher, a former Border Patrol agent in Calexico.

The goal of the game is for an immigrant to dodge unscrupulous smugglers, bandits, rattlesnakes and the Border Patrol. Beware of landing in the Tijuana jail or getting deported. First one to Los Angeles wins!

Fisher does not view the game as being denigrating to immigrants and if he survives the court action he plans to dedicate a new edition of “Run for the Border” to immigrants who possess “the cunning courage to take the risk” to find a better life. He also plans to update the game: with a narco-tunnel, sponsorship by a Mexican beer company, and maybe some Chinese immigrants.

But that’s all in the future. Right now the court action is proceeding at its own petty pace.

“Taco Bell is trying to squash me like an ant but I’m not going to let them,” said Fisher.

Taco Bell, based in Irvine, sees it differently. Company lawyers say Taco Bell spent $420 million over four years to promote the “Run for . . .” slogan and a variant, with ads by cyclist Greg Lemond and singers T. Graham Brown, Johnny Cash and Little Richard. The company is not ready to let all that goodwill and name identification be scooped up by three upstarts.

Just who started using the “Run for . . .” slogan first is open to dispute. The game makers assert they started in late 1988. Ditto Taco Bell.

A federal judge recently decided that that’s the sort of thing a jury should decide and he turned down Taco Bell’s request for a pretrial verdict. Taco Bell is appealing, and both sides are preparing for trial.

The court file in San Diego federal court is eight inches thick and growing. So labor intensive does the case appear that it has been selected by court officials for a “time-study case” to see how much time it is draining from judges and magistrates.

Truth be told, it was the game makers who struck first and have lived to regret it.

After making a media splash with the game (including a write-up in Playboy magazine) and selling 700 copies at $19.95 a piece at video stores in El Centro, Brawley, Calexico and El Cajon, the three decided in 1990 that they needed a marketing expert to crack the big-time game market.

They signed with San Diego marketeer Thomas Magee of HGI Marketing Services Inc., whose experience had been with trivia books and “cityopoly games.” Magee noticed that Taco Bell was using the slogan “Make a Run for the Border” to sell its burritos and tostadas.

After negotiations between Magee and Taco Bell fell flat, Magee decided to sue Pepsico Inc. for trademark infringement.

Pepsico and Taco Bell lashed back with a countersuit accusing Magee and his partners with “nothing more than a blatant attempt to hold up two major corporations by claiming ownership of Taco Bell’s famous (trade) mark.” The suit was transferred from New York to San Diego.

Ross Getman, an attorney from Arlington, Va., representing Magee and HGI Marketing Services Inc., says the lawsuit against Pepsico was a preemptive strike. He figures Pepsico or Taco Bell would have sued anyway once the game got successful beyond a regional market.

“Large corporations don’t care about the little guy as long as they’re not making any money,” Getman said. “As soon as they get taken over and start to go somewhere, they come after you. You have to protect your intellectual property ahead of time.”

Taco Bell had received a trademark designation for “Make a Run for the Border” from the U.S. Office of Patents and Trademarks on Feb. 7, 1989. The game makers got a trademark for “Run for the Border” from the same office on June 12, 1990.

Three days later Taco Bell also requested a trademark on “Run . . .,” which the patent office promptly rejected. Undaunted, Taco Bell continued using “Make a Run . . .” and “Run . . .” interchangeably in its print, television and radio advertising, in a campaign that the independent research agency Video Storyboard Tests Inc. called one of the most successful ever employed in the fast-food industry.

Like all ad campaigns, it finally ran its course and was replaced by Taco Bell with other eye-catching, consumer-enticing ideas.

Just why Taco Bell would continue hardball litigation over a slogan it no longer uses is unclear. “It is Taco Bell policy never to comment on pending litigation,” said Taco Bell spokeswoman Janis Smith.

Fisher, though, is commenting and he’s sick of the whole business. He hasn’t made a nickel from the game since signing with Magee.

He says Taco Bell has it all wrong: that he and his buddies thought up “Run for the Border” during a brainstorming session and that they had never heard of the Taco Bell ad campaign. “We were eating pizza when we thought of the name,” said Fisher, 33, who now runs a business providing disc jockey and karaoke services for parties.

His relationship with Mata, a nursing assistant, and Rodriguez, a martial arts teacher and operator of an urgent-care center, has suffered under the weight of depositions and differences of opinion about strategy. The three longtime friends are barely speaking.

Fisher thinks the game would be a best-seller on both sides of the border, designed for two to four players per game, ages 8 and up. He sees it as an entertaining mix of risk, skill and luck, as fun as Monopoly, as real-life as today’s headlines.

The instructions say: “Travel as a migrant through the Baja, from Ensenada through Rosarito and across the border at Tijuana. Destination Los Angeles, if you’re lucky.”

Land in the Tijuana jail and lose one turn. Fall prey to desert profiteers and be forced to pay $100 for water. Land on a la migra square in San Diego and get deported and start over.

“I just wish we could be left alone to make our games and let Taco Bell sell its products,” Fisher said. “I never figured a phrase like ‘Run for the Border’ would be such a big deal.”