Killer Instinct trademark application/renewal refused by the USPTO

R

Rösti

Unconfirmed Member
#1
On the 17th of September, Microsoft announced via their PlayXBLA hub that they for Killer Instinct "either renewed or refiled a trademark application in various jurisdictions.", as discussed here: http://www.neogaf.com/forum/showthread.php?t=491782&highlight=killer+instinct

New data as of the 29th of November shows that this application has been refused by the The United States Patent and Trademark Office (USPTO) because of likelihood of confusion:

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3370331. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
Trademark 3370331 is a simple word mark "KILLER INSTINCT", and it's owned by Fox Television Studios, Inc.:

Applicant’s mark is KILLER INSTINCT for “video game software” and “entertainment services, namely, providing online video games.” Registrant’s mark is KILLER INSTINCT for “entertainment services in the nature of a television series featuring drama.”
The most apparent use of the mark by Fox is that of the Killer Instinct crime drama television series aired in 2005, which is also what is directly referenced. There may be other uses of the mark in Fox's shows.

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).

In the present case, applicant’s mark is KILLER INSTINCT and registrant’s mark is KILLER INSTINCT. Thus, the marks are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and services.

Therefore, the marks are confusingly similar.
A few examples of tv series that have been turned into video games are given, with Lost being a prime example. Upon these examples, this is stated:

Thus, upon encountering KILLER INSTINCT for “video game software” and “entertainment services, namely, providing online video games” and KILLER INSTINCT for “entertainment services in the nature of a television series featuring drama, “consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source.
Seemingly, Microsoft (and Rare?) has been halted a bit, and who knows what might happen to this game now, a name change maybe? Though with Fox being Fox and Microsoft being Microsoft, this could potentially turn into an ugly fight. If Killer Instinct is deemed important enough that is.

Microsoft may respond to the refusal by providing evidence and arguments in support of the registration.

The document in full: http://tsdr.uspto.gov/documentviewer?caseId=sn85727092&docId=OOA20121129134915
 
#11
They probably let the original trademark run out; didn't they? So it would mean they can no longer claim prior rights on a trademark.
 
R

Rösti

Unconfirmed Member
#14
So...they can prove that Killer Instinct; the game, existed in 1994 or it's a lot more complicated than that?

Kinect Instinct.

There.
Sure they can provide evidence that the game series started in 1994, but that alone will probably not solve much as they still have to deal with the conflicting names and goods & services connected. And even though Killer Instinct precedes the television series of same name, it's the latter and not the former that is an established trademark. I'm not into IP litigation though so these are just guesses, but I doubt it would be as easy as showing a cartridge to Rupert and expecting him to be ok with it.

And as grandjedi6 mentioned, Microsoft had nothing to do with the trademark back then.
 

grandjedi6

Master of the Google Search
#16
They probably let the original trademark run out; didn't they? So it would mean they can no longer claim prior rights on a trademark.
Microsoft actually never had a trademark on Killer Instinct before. Nintendo held the trademark until 2006 when they finally abandoned it.
 
#18
Maybe it should go back to the original name "Brute Force" or maybe "Brutal Instinct" LOL. I blame Ken Lobb for letting his child become so estranged. What about "Killer Instincts" or just "KI".
 
#19
Queue up the blog post, "Top 10 Canceled Fox Shows with Titles Better Suited for Games". It's a bit BS given Fox's spaghetti meet wall approach to TV series. I wonder how Wipeout will factor into this discussion as a game series with a similar name as a TV show (that in turn was adapted into a game)
 
#20
Rösti;45017542 said:
Sure they can provide evidence that the game series started in 1994, but that alone will probably not solve much as they still have to deal with the conflicting names and goods & services connected. And even though Killer Instinct precedes the television series of same name, it's the latter and not the former that is an established trademark. I'm not into IP litigation though so these are just guesses, but I doubt it would be as easy as showing a cartridge to Rupert and expecting him to be ok with it.

And as grandjedi6 mentioned, Microsoft had nothing to do with the trademark back then.
Ah, gotcha.

I'm still curious about this:

Nintendo held the trademark until 2006 when they finally abandoned it.
Who owns that trademark now? I'm ignorant about how IP litigation works, but I'm genuinely curious about this. :p

EDIT: Thanks for the responses jedi. :)
 

grandjedi6

Master of the Google Search
#21
So who owns the original SNES/Arcade copyright? Nintendo? Rare? Zynga?
copyright =/= trademark


As far as the USPTO cares, Nintendo held the trademark until 2006 when they abandoned it. Fox entered the trademark in 2005 and finally got it in 2008 (probably in part due to Nintendo's abandonment of it). And now Microsoft is trying to fill for the trademark but has been denied due to the similarity to Fox's trademark.

Who owns that trademark now? I'm ignorant about how IP litigation works, but I'm genuinely curious about this. :p
There are trademarks for "Killer Instinct" in the categories of golf tees, beer, and entertainment in the form of tv shows. Fox holds the latter which is the important one here.
 
#29
BAHAHAHAHAHHAAHAHHAHAHAAHAHAHAHAAHA
So MSFT never using the trademark finally bit them in the ass?
Sorry but this is too funny!
 
#32
I wouldn't think KI would have much value as a brand at this point. Games weren't that great to begin with.
Pretty much.

The people who are familiar with the game(s) will more than likely follow up on a remake, regardless of whether or not it has the same name.
 
#40
This begs the question - a new Killer Instinct is in the works?
They were definitely doing something with it, the fact that MS actually announced they were looking to renew the rights pretty much says it all. Whether a HD re release or a completely new game, who knows.
 

grandjedi6

Master of the Google Search
#42
The silver lining I suppose is that Fox is going to have to file a Section 8 declaration sometime in 2013 to maintain their trademark. So perhaps they just won't and will abandon it instead
 

Chacranajxy

I paid good money for this Dynex!
#46
So how did Fox get the Killer Instinct mark in the first place? Was the video game registration deemed abandoned? I suppose it could've been since it just laid dormant since KI Gold (unless there's a GBA release I'm forgetting or something, but even then, that would've been years prior to the 2005 show.)

Kinda sucks for MS/Rare, because the Killer Instinct name is literally the only thing that'll get people excited about the game.

Let this be a reminder: Protect your IP, kids.
 
#48
How the fuck did Nintendo retain the TM for four years after the buyout?

Wouldn't that have allowed them to make a new entry, or did Rare/MS own everything (characters, assets) and just couldn't make a new game with the exact name?

Nintendo should've done this with Banjo. :(