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Nintendo's Pokémon Shuffle trademark opposed by Cartamundi (playing card company)

R

Rösti

Unconfirmed Member
Update (March 08, 2016): Settlement discussions continue, Nintendo requests additional extension of time to answer.

Update (January 06, 2016): Settlement discussions continue, Nintendo requests extension of time to answer.

Update (October 09, 2015): Parties are engaged in settlement discussions

Update: Second opposition filed: http://www.neogaf.com/forum/showpost.php?p=178111820&postcount=78



Cartamundi's Shuffle, a combined app and playing cards featuring several themes/games, here exemplified by Disney Monopoly.

On September 1, 2015, the playing card company Cartamundi Services NV filed an opposition against Nintendo of America Inc.'s App. Ser. No. 86/502,847 – Pokémon Shuffle on that it would be damaged by registration of this mark. Cartamundi is the owner of U.S. Trademark Application Serial No. 79156054, Shuffle, filed June 16, 2014, and published for opposition on August 4, 2015. This is the notice of opposition:

NOTICE OF OPPOSITION

Cartamundi Services, NV, a Naamloze Vennootschap organized under the laws of Belgium, having its principal place of business at Visbeekstraat 22, B-2300 Turnhout, Belgium (“Cartamundi”), hereby opposes registration of the following application owned, according to the records of the U.S. Patent and Trademark Office, by Nintendo of America Inc. (“Applicant”) and referred to herein as “Applicant's Mark”:

App. Ser. No. 86/502,847 – POKÉMON SHUFFLE for “Downloadable electronic game programs; downloadable electronic video game software; electronic game programs; electronic game software; video game programs; video game software,” filed January 14, 2015 and published for opposition July 7, 2015

Cartamundi would be damaged by registration of Applicant's Mark and hereby opposes the same on the following grounds (continued in next quote):
1. Applicant, Nintendo of America Inc., is a corporation organized under the laws of the state of Washington and has a mailing address of 4600 150th Avenue NE, Redmond, Washington 98052.

2. On January 14, 2015, Applicant filed an Application, namely Serial No. 86/502,847 for the mark POKÉMON SHUFFLE, as a trademark for use in connection with “Downloadable electronic game programs; downloadable electronic video game software; electronic game programs; electronic game software; video game programs; video game software,” which was published in the Official Gazette on July 7, 2015.

3. Cartamundi is the owner of U.S. Trademark Application Serial No. 79156054 (“Cartamundi’s Mark”), filed June 16, 2014 with a priority date of December 16, 2013 and published for opposition on August 4, 2015, for SHUFFLE & Design in connection with “Apparatus for recording, transmission or reproduction of sound, images or other data; apparatus for receiving of sound, images or other data, namely, audiovisual receivers and mobile data receivers; magnetic, optical, numerical and electronic data carriers, namely, prerecorded magnetic data carriers featuring games; data processing equipment and computers; computer game software and computer hardware; computer software platforms for playing games; electronic and computerized video games software; downloadable electronic greetings cards and trading cards, namely, digital trading cards in the nature of multimedia software recorded on magnetic media featuring games; downloadable electronic publications in the nature of magazines and books in the field of games; downloadable electronic manuals and handbooks in the field of computer games; electronic diaries; electronic memo books in the nature of handheld computers; downloadable electronic books in the field of computer games, downloadable electronic game programs; downloadable audio and video recordings featuring games; downloadable music files; downloadable video and computer game programs; downloadable digital music from the Internet; downloadable electronic game programs” and “Games and playthings, namely, game cards; playing cards and cards for games; electronic hand-held game units; musical games, namely, musical arcade games; electronic playthings, namely, electronic learning toys; handheld electronic games, namely, hand held units for playing electronic games; apparatus for games, namely, handheld game consoles; decorations for Christmas trees” and “Education services, namely, providing classes, seminars and workshops in the field of card games; providing of training in the field of card games; entertainment, namely, providing an online board card game; provision of on-line entertainment, namely, providing on-line computer card games; providing of non-downloadable electronic publications online in the nature of magazines and books in the field of games; electronic publication of books and magazines online; games services provided online from a computer network, via computer databases or via the Internet, namely, providing online electronic games; providing information online relating to computer games and computer enhancements for games; providing information from an on-line computer database in the field of computer games; information relating to entertainment, provided on-line from a computer database or the Internet; providing on-line music, not downloadable; arranging of online computer games via the Internet; rental of books, films and computer game programs; games equipment rental; rental of video games” (“Cartamundi’s Goods”).

4. Applicant's Mark was filed on January 14, 2015 on the basis of an intent to use in commerce.

5. The priority date for Cartamundi’s Mark in the United States precedes the filing date of Applicant's Mark.

6. Cartamundi’s trademark rights in Cartamundi’s Mark are superior in time to Applicant's rights in Applicant's Mark.

7. Applicant lists downloadable electronic game programs, downloadable electronic video game software, electronic game programs, electronic game software, video game programs, and video game software in its application for registration of Applicant’s Mark.

8. Cartamundi lists computer game software, electronic and computerized video games software, computer software platforms for playing games, downloadable electronic game programs, downloadable video and computer game programs, and downloadable electronic game programs in its application for registration of Cartamundi’s Mark.

9. Applicant's Mark is intended to be used in connection with goods that overlap with and closely relate to Cartamundi’s Goods.

10. Applicant's Mark so resembles Cartamundi’s Mark in terms of appearance, sound, connotation and commercial impression as to be likely, when applied to Applicant's goods, to cause confusion and mistake and to deceive.

11. Applicant’s targeted customer base includes the general public.

12. Applicant's targeted customer base overlaps with the customers of Cartamundi.

13. As Applicant's goods description contains no restrictions or limitations as to Applicant's channels of trade, Cartamundi may assume that Applicant's Mark will be used in all accepted channels of trade.

14. Applicant's intended channels of trade for its game software overlap with the channels of trade used by Cartamundi in marketing, selling, or otherwise distributing its game software under Cartamundi’s Mark.

15. Applicant's Mark is confusingly similar to Cartamundi’s Mark so that registration of Applicant's Mark would be inconsistent with and damaging to Cartamundi. Persons familiar with Cartamundi’s Mark would likely perceive Applicant's goods as associated or affiliated with or sponsored by Cartamundi, or vice versa. Such confusion would inevitably result in damage to Cartamundi.

16. Any defect, objection to or fault found with Applicant's goods marketed under Applicant's Mark would necessarily reflect on and seriously injure the reputation that Cartamundi has established for its goods.

17. Registration of Applicant's Mark would give Applicant prima facie evidence of the validity and ownership of Applicant's Mark and of Applicant's exclusive right to use Applicant's Mark, all to the detriment of Cartamundi.

WHEREFORE, Cartamundi prays that Applicant's Mark be refused registration and that this Opposition be sustained.
Source (Notice of Opposition in full): http://tsdr.uspto.gov/caseviewer/pdf?caseId=86502847&docIndex=0#docIndex=2

A standard opposition really, quite decent grounds for it. How strongly Nintendo feels for the name Shuffle in this context I don't know, but if they'll lose this I guess the Japanese name PokéToru (ポケとる) could be used instead. A lesser cash settlement wouldn't be surprising for them to use in this case however. There you have it.
 

BY2K

Membero Americo
Sep 12, 2010
37,301
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Welcome to Mobile Gaming, Nintendo.

That said, Nintendo's lawyers are godlike, they can win this.
 

Exile20

Member
Jun 7, 2013
10,886
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I really don't understand trademarking dictionary words. Made up words? Fine, trademark them but if we keep trademarking everyday words shit is going to get worst and worst.
 

KingBroly

Banned
Mar 18, 2015
23,759
1
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Nintendo can probably counter that the name ia too generic. Its why they couldnt trademark duck hunt after all.
 

chrisPjelly

Member
Jan 16, 2015
4,213
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They should heavily fine every company that files a frivolous lawsuit on the grounds of using a common english verb.
 

MrV4ltor

Member
May 16, 2015
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twitter.com
Nintendo will probably win this anyway. They have some of the best lawyers in the business. Tradmarked the word shuffle..... give me my pocketbook, I'm leaving.
 

BY2K

Membero Americo
Sep 12, 2010
37,301
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0
30
Canada
If this is anything like King trying to sue companies that used the word Saga, this is gonna be over quick.
 

Vena

Member
Sep 2, 2014
16,385
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0
Trying to trademark fight Nintendo seems like a bad idea, especially given their track record with patent trolls.
 

Eusis

Member
Apr 15, 2011
36,667
1
615
If this is anything like King trying to sue companies that used the word Saga, this is gonna be over quick.
This is probably more akin to if Square Enix were the ones running around suing people over the word Saga. There seems to be a higher likelihood of a real case here, but I can see Nintendo and them reaching a settlement rather than it getting really nasty.
 

PSqueak

Banned
Jan 31, 2015
14,161
1
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Yet Apple and Windows are trademarked?
I believe the trademarks are actually things like "Apple Computers" and "Windows operating System", because MS and Apple can't sue you if you, say, make a game about an antropomorphic apple breaking windows calling it "Apple vs Windows".
 

L~A

Member
Jan 19, 2013
12,188
0
610
I really don't understand trademarking dictionary words. Made up words? Fine, trademark them but if we keep trademarking everyday words shit is going to get worst and worst.
Exactly. This has got nothing to do with mobile gaming. Trademarks of common words are amuch bigger problem, that is certainly not limited to mobile gaming.

Hell, I believe even Nintendo owns a couple of such trademarks, though I forgot which ones.
 

Het_Nkik

Member
Jun 26, 2012
3,821
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505
This is the company who won a case to use the name "Kong" on their giant, girl kidnapping, building climbing, gorilla.

Good luck, Cartamundi, whoever you are.
 

Tempy

don't ask me for codes
Feb 6, 2005
13,695
0
1,285
Who'd confuse "Pokemon Shuffle" with "Cartamundi Shuffle"?

Go for the win; don't settle.
 

Vital Tundra

Member
Apr 13, 2015
8,032
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Wilmington, NC
Damn that was fast. I have a feeling a lot of what Nintendo eventually puts on smartphones will be challenged.

Watch, a Mario game will come up, and they will try challenging that too.
Who'd confuse "Pokemon Shuffle" with "Cartamundi Shuffle"?

Go for the win; don't settle.
No one, Pokemon isn't something you want to compete against, though.
 

JazzmanZ

Member
Aug 18, 2010
5,816
1
0
Trademarking words again eh?

What's to stop me from trademarking the air we breath? everyone will have to pay me a royalty everytime they continue to have life!
 

Eusis

Member
Apr 15, 2011
36,667
1
615
Pokémon shuffle on mobile is The Pokémon Company's doing, no Nintendo nor Creature Inc, do you really thing they'll help?
I wouldn't be surprised if they shared resources, pulled from the same law firms, or whatever. It's in both of their best interests to make something like this as painless as possible anyway.
 

Hexa

Member
May 31, 2013
7,512
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575
If hardcore gamers are still confused about TPV v. Nintendo, do you think a random mobile dev won't lol.
Nintendo is the one that applied for the mark. Hence they're obviously the ones being opposed.
Also no one is suing anyone yet.
 

Regiruler

Member
Jun 4, 2013
28,952
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0
That list of items the trademark applies too is so bloated that I'm half convinced it's some form of troll.
 

Umibozu

Member
Apr 21, 2015
1,564
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This is the company who won a case to use the name "Kong" on their giant, girl kidnapping, building climbing, gorilla.

Good luck, Cartamundi, whoever you are.
That's because the company suing them for that, Universal, didn't have the rights to king kong either.
 

Exile20

Member
Jun 7, 2013
10,886
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I believe the trademarks are actually things like "Apple Computers" and "Windows operating System", because MS and Apple can't sue you if you, say, make a game about an antropomorphic apple breaking windows calling it "Apple vs Windows".
Oh ok, thanks for the response.
 

ConceptX

Member
Aug 29, 2014
723
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This isn't as throwaway as King's whole Saga...saga...

This has more merit as an actual case.

Cartamundi will be hoping for an out of court settlement, most companies don't really want the hassle and expense of going to court when threats can often (sadly) be nicely profitable.

Not that I think it would go far in a court either way, especially as it's only currently an opposition to a trademark.
 

foltzie1

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Dec 12, 2013
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For anyone curious about how someone can register a dictionary word here is a list of the types of trademarks

https://en.wikipedia.org/wiki/Trademark_distinctiveness

In this particular case Cartamundi has what is likely a descriptive trademark, which isnt very strong.

Cartamundi will try to argue that their use of Shuffle is arbitrary or suggestive, which is a stronger trademark than descriptive, but I don't know how far they make it with that approach. Still, they could potentially get a preliminary injunction against TPC while the case is heard which would delay the launch of any Pokemon Shuffle related items (at least under that title)

IANAL
 
Jan 23, 2015
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They think they actually have a chance against Nintendo and TPC? This sounds like a cheap PR stunt to ride on Nintendo's coattails.
 

Remembrance

Member
May 5, 2014
3,969
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This is interesting.

Cartamundi is the owner of U.S. Trademark Application Serial No. 79156054 (“Cartamundi’s Mark”), filed June 16, 2014 with a priority date of December 16, 2013 and published for opposition on August 4, 2015
Cartamundi's trademark is not registered yet. An opposition could be filed against their trademark application up until the 4th of this month.