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[Rösti]

Yesterday, on January 9, 2015, the United States Patent and Trademark Office (USPTO) sent to Blizzard Entertainment, Inc. a suspension letter for trademark applications 86239314 and 86239318, both connected to the new team-based shooter Overwatch which was revealed at BlizzCon 2014. This action by the USPTO stems from an issue brought to attention in July last year where it was found that the filing date of U.S. Application Serial No. 86056160, Overwatch by Innovis Labs, Inc., preceded Blizzard's filing date and thus was subject for a likelihoof confusion (the prior application is under goods and services related to game software and similar). Blizzard appears to have made no attempts to present any arguments as to why their application should not be refused, and thus it has been suspended.

For U.S. Application Serial No. 86239314, Overwatch, which deals with computer game software, computer game discs, downloadable computer game programs and so forth, this is what the USPTO is saying:

SUSPENSION NOTICE: NO RESPONSE NEEDED

ISSUE/MAILING DATE: 1/9/2015


INTRODUCTION

In a previous Office Action, dated July 11, 2014, the trademark examining attorney noted a prior pending application that, if it matured to registration, may result in the refusal of applicant’s mark under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.

Rather than issue the noted Office Action, the trademark examining attorney should have suspended the application. The examining attorney apologizes for any inconvenience caused by the issuance of said Action.

The trademark examining attorney is suspending action on the application for the reason stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.

THE APPLICATION IS SUSPENDED

As previously noted, the effective filing date of the pending application identified below precedes the filing date of applicant’s application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application is attached.

- Application Serial No. 86056160


RESPONSE GUIDELINES

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.uspto.gov/rsi/rsi.

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.


/Matthew J. Cuccias/
Trademark Examining Attorney
Law Office 116
(571) 272-4648
Matthew.Cuccias@uspto.gov

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the Trademark Electronic Application System (TEAS) form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

Source: http://tsdr.uspto.gov/documentviewer?caseId=sn86239314&docId=SUL20150109152215#docIndex=0&page=1

For U.S. Application Serial No. 86239318, Overwatch, which deals with entertainment services, namely, providing on-line computer games, things are a bit different, but also stems from likelihood of a confusion with the application by Innovis Labs, Inc., in addition to indefinite and too broad wordings for the connected goods and services. The suspension letter for this application is more or less identical to the one already posted, so there's no need to post that. For the indefinite and too broad G&S, Blizzard discussed this with the USPTO and also amended this later

EXAMINER’S AMENDMENT

ISSUE/MAILING DATE: 1/9/2015

APPLICATION HAS BEEN AMENDED: In accordance with the authorization granted by applicant’s counsel, Rod A. Rigole, Esq., during a January 9, 2015 telephone conference, the trademark examining attorney has amended the application as indicated below. Please advise the undersigned immediately of any objections. Otherwise, no response is necessary. TMEP §707. Any amendments to the identification of services may clarify or limit the services, but may not add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

Identification of Services

The identification of services is amended to read as follows:

IC 041 Entertainment services, namely, providing on-line computer games; Providing computer games that are accessed via a global computer network

See TMEP §§1402.01, 1402.01(e).

Suspension

Subsequent to the issuance of this Examiner’s Amendment, this application will be suspended pending the ultimate disposition of prior-filed application Serial No. 86056160, as discussed in the July 11, 2014 Office Action.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the Trademark Electronic Application System (TEAS) form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

Source: http://tsdr.uspto.gov/documentviewer?caseId=sn86239318&docId=EXA20150109151534#docIndex=2&page=1

Both applications are suspended pending the ultimate disposition (i.e., allowance vs. abandonment) of the prior application by Innovis.

You might wonder what this other Overwatch thing is, and how it could potentially be confused with Blizzard's game. Well, this is what the website states:

FROM CONSOLE TO COMBAT, THE NEXT GENERATION OF INTERACTIVE GAMING
IS HERE.

Inspired by classic first-person shooter video games, Overwatch is the next generation of interactive gaming. Using Overwatch, all the technology you’ve come to love from combat and first-person shooter video games is available in real life - right on your smartphone. Overwatch isn’t just another smartphone game; it’s a tactical utility to enhance airsoft, paintball and first-person shooter gameplay. It’s not just game time. It’s game time. For real.

More easily expressed, it is a smartphone app (and mount) bringing the features of combat video games to real life airsoft, paintball, and laser tag matches.

USPTO has sent a Notice of Allowance (NOA) to Innovis Labs, and the app is evidently already in use (for iPhone anyway). So I'm not sure what is going to happen with Blizzard's applications. USPTO is notorious for making rather silly decisions however, just look at the case between Microsoft and Fox over the Killer Instict name. We'll have to wait and see.

 

[Sinfamy]

Underwatch incoming.

 

[Escalario]

Guess they will have to change the name of the game.

 

[BossRush]

Holy shit I don't know how to react to this.

 

[BY2K]

Well this is stupid...

 

[Pudge]

They could always just go back to calling it Titan.

 

[Grimsen]

Good. Now they can come up with a better name.

Yesterday, on January 10, 2014, the United States

But January 10th is today in North America.

 

[NotLiquid]

Change it to Overstrike.

 

[Rösti]

Good. Now they can come up with a better name.



But January 10th is today in North America.

Sorry about that, it's supposed to be January 9, was too quick on writing there. Fixed now.

 

[Deft Beck]

They could always just go back to calling it Titan.

That would be even more generic.

 

[btkadams]

I really hope this means that they change the name.

 

[Lord of Castamere]

Overwatch is a crappy name anyway.

 

[SpiceMelange]

Blizzard's chance for a fourth HotS acronym.

 

[Tenki]

They could always just go back to calling it Titan.

But this isn't Titan.

 

[StudioTan]

Sorry about that, it's supposed to be January 9, was too quick on writing there. Fixed now.

It's also 2015

 

[HK-47]

They could always just go back to calling it Titan.

I guess they could go with a terrible name.

 

[SatelliteOfLove]

In Morhaime's office: "Fuck it, rename it to Edge!"

 

[bomer]

Titan Returns.

Also pretty keen to play this asap. Hope it launches in the first half of the year. I don't think the name matters. The biggest online games are called wow, lol and dota. Capturing people's imaginations is what will make it a success.

 

[Forkball]

Over Fortress 2

 

[veloxStrix]

Classy Shooty Game << I expect my royalties in the mail.

 

[Yoshichan]

Blizzard can't be happy about this. Blizzcon 2014 was all about hyping up the name (Overwatch) and by switching name even once, will confuse the market.

 

[Kade]

They're going to rename it Havoc of the Skirmish.

 

[LDAF]

I'm a little confused, would Blizzard just be able to do the same thing Microsoft did with the Killer Instinct situation cited in the OP? They seem to be in a position where they can throw money at a problem until it's fixed. I'm definitely not an expert on law by any means though, so I'm not sure if they can/can't do that.

Spoiler

I wouldn't be TOO upset with a name change, Overwatch is nice and all, but not amazing

 

[strafer]

Does this mean they dont have the rights to the name anymore?

 

[NEO0MJ]

How about Excessive Monitoring?

 

[sleepykyo]

Soldiers of the storm?
Storm Fortress 2?

 

[RK9039]

Density: The Love Below.

I'd buy that game.

 

[Guy.brush]

They should call it Overstrike.

 

[Bomber Bob]

Nice opportunity to cancel the game altogether

 

[Gentleman Jack]

Maybe they can call it Overstrike

Edit: crap, late

 

[Yoshichan]

How about taking this opportunity and change the name so the abbreviation fits Heart of the Swarm (HotS) and Heroes of the Storm (HotS)?

 

[Liha]

Heroes of the Fortress 2

 

[mclem]

In Morhaime's office: "Fuck it, rename it to Edge!"

Edgy Edge Saga, just to be on the safe side.

 

[Rösti]

Does this mean they dont have the rights to the name anymore?

If Innovis Labs files a Statement of Use, Blizzard will likely see their applications abandoned, and thus could have great problems using the name Overwatch in commerce (in the United States at least).

 

[grandjedi6]

I'm a little confused, would Blizzard just be able to do the same thing Microsoft did with the Killer Instinct situation cited in the OP? They seem to be in a position where they can throw money at a problem until it's fixed. I'm definitely not an expert on law by any means though, so I'm not sure if they can/can't do that.

Spoiler

I wouldn't be TOO upset with a name change, Overwatch is nice and all, but not amazing

The difference is that Killer Instinct was a forgotten about TV show that Fox didn't care about. Plus the game technically preceded it even if the trademark did lapse.

Here the other Overwatch is another game related property, that the owner presumedly does care about, and precedes Blizzard's overwatch. I can't see Blizzard winning this one. They don't have any ground to stand on, which is probably why they didn't even fight it and let the trademark lapse. I expect a rebranding to occur shortly.

 

[Dawg]

Blizzard's chance for a fourth HotS acronym.

How about taking this opportunity and change the name so the abbreviation fits Heart of the Swarm (HotS) and Heroes of the Storm (HotS)?

What's the third one?!

 

[Falk]

If they change the name, it wouldn't be the first time. (Blizzard DotA lol)

 

[Gala]

Future Dota of the Ancient it is then.

 

[Dinjooh]

Change it to Overstrike.

Exactly what I was thinking.

 

[BokehKing]

They can just go back and call it a project Titan again

 

[suzu]

Overwatch is a pretty meh name.

 

[Donos]

Let's call it Titan Fortress!

 

[LDAF]

The difference is that Killer Instinct was a forgotten about TV show that Fox didn't care about. Plus the game technically preceded it even if the trademark did lapse.

Here the other Overwatch is another game related property, that the owner presumedly does care about, and precedes Blizzard's overwatch. I can't see Blizzard winning this one. They don't have any ground to stand on, which is probably why they didn't even fight it and let the trademark lapse. I expect a rebranding to occur shortly.

Ahh, that makes sense. That's kind of strange, I would assume that Blizzard's attorneys would've seen this coming and rebranded the game before revealing it at Blizzcon. This is only a few months after the revealing.

 

[Duxxy3]

I was not a big fan of that name anyhow. This is for the best.

 

[Guy.brush]

Spoiler

Couldn't find a way to cut off the head of the dwarfen dude

 

[UnluckyKate]

Blizzard's chance for a fourth HotS acronym.

Hex of the Steel

 

[Gnub]

"League of Nobodies" would be a better name.

 

[Rygar 8 Bit]

team shoot game with mans 2: the second one

 

[inky]

Name sucked anyway. Just come up with something better.

 

[LurkerPrime]

You know what to do, Blizzard. Call it Battlecraft.

Spoiler

Couldn't find a way to cut off the head of the dwarfen dude

NSFC logo!