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Nintendo's trademark for "Hyrule Warriors" has been abandoned

R

Rösti

Unconfirmed Member

Hyrule Warriors for Wii U was released in 2014. Hyrule Warriors: Legends for 3DS was released in 2016.

On April 22, 2016, Nintendo Co., Ltd. in the United States of America via the United States Patent and Trademark Office (USPTO) abandoned its trademark application, US Serial Number 86305092, for "Hyrule Warriors" (under G&S Computer video game programs for consumer video game machines). The records were updated with a notice of this yesterday on May 18, 2016. The reason for abandonment as follows:

Abandoned because the applicant failed to respond or filed a late response to an Office action. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this page.
Source: http://tsdr.uspto.gov/#caseNumber=86305092&caseType=SERIAL_NO&searchType=statusSearch

On March 26, 2015, this application was suspended for the following reasons:

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

FOREIGN REGISTRATION: Applicant is required to provide a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin that will be in force at the time the United States registration issues. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §§1003.04(a)-(b), 1004.01, 1004.01(a). Action on this application is suspended until the USPTO receives a copy of such foreign registration or proof of its renewal. TMEP §§716.02(b), 1003.04(a)-(b), 1004.01(a). If the foreign registration or renewal document is not in English, applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b). Further, applicant should notify the trademark examining attorney in the event that the foreign application abandons or the foreign registration is not renewed. See TMEP §§1003.08, 1004.01(a). In such case, applicant may amend the application to rely on another basis, if appropriate, and will retain the priority filing date, if applicable. TMEP §§1003.08, 1004.01(a).
Source: http://tsdr.uspto.gov/documentviewer?caseId=sn86305092&docId=SUL20150326122538#docIndex=1&page=1

On October 20, 2015, USPTO sent a Suspension Inquiry with a notice of necessary actions needed for the application not to be abandoned:

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

X FOREIGN REGISTRATION: The trademark examining attorney previously suspended action on this application pending receipt of a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin or proof of renewal of the foreign registration.

Applicant must specify the status of the relevant foreign application or registration renewal. TMEP §§716.02(b), 716.05, 1003.04(c); see 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii).

Applicant must respond to this inquiry to avoid abandonment and may do so by (1) stating that the foreign application or renewal is still pending or (2) submitting a true copy, a photocopy, a certification, or a certified copy of the foreign registration or renewal document. TMEP §§716.05, 1003.04(c), 1004.01(a). If the foreign registration or renewal document is not in English, applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b).

CIVIL PROCEEDING(S): The trademark examining attorney previously suspended action on this application pending termination of a civil proceeding(s) relevant to the registrability of applicant’s mark.

Applicant must specify the status of the civil proceeding(s). TMEP §§716.02(d), 716.05.

Applicant must respond to this inquiry to avoid abandonment and may do so by (1) providing a statement that the civil proceeding(s) is still pending, (2) specifying that the proceeding has been stayed and the reason for such stay to determine if removal from suspension is appropriate, or (3) specifying that the proceeding(s) has been terminated and providing a copy of any final decision or relevant agreement. See TMEP §716.05.
Source: http://tsdr.uspto.gov/documentviewer?caseId=sn86305092&docId=SUL20150326122538#docIndex=0&page=1

As Nintendo failed to take these actions, the application has now been abandoned.

Furthermore, the corresponding applications in Europe and Japan have also been abandoned/surrendered/ended, though earlier:

Europe

012785606, HYRULE WARRIORS: Registration surrendered on 11/12/2015

Source: https://euipo.europa.eu/eSearch/#details/trademarks/012785606

Japan

2013099093, HYRULE WARRIORS: Application dismissed 2014-08-25

Source: https://www.tmdn.org/tmview/get-detail?st13=JP502013000099093 (I can no longer find this application via JPO/J-PlatPat)

Of course, in Japan this game is called ゼルダ無双 (Zelda Musō), so a dismissal/abandonment in Japan is less important. Japanese registration 5733320, HYRULE (ハイルール) is still active however.
It is possible the abandonment is a product of human error as seen with the trademark for Sony's The Last Guardian. We'll see what happens. This abandonment should impact the games very little regardless.
 

georly

Member
Apr 23, 2013
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Woops.

"Hey tecmo you got that HW trademark thing handled?"

"I thought you had it!"
 

Oppo

Member
Jan 22, 2010
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fascinating how Nintendo has laser scrutiny on its biz dealings in the vacuum of new public info.
 

Dee Dee

Member
May 4, 2014
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I have to assume that even if another company applies for it now, Nintendo could easily dispute it.
However between now and some point in the future where they re-apply and get granted rights again, I hope to see some shitty mobile games picking up the name, while Nintendo and Koei have to sit and watch unable to stop anyone from doing that.
 

mrmickfran

Member
Apr 13, 2013
10,955
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605
Trump steals the trademark. After you start the game expecting Hyrule Warriors, out comes Trump Warriors.
 

Jackano

Member
Jan 19, 2006
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Was there a need for it?
"Hyrule" no one was gonna use this and they already have the trademark, and "Warriors" is too simple. If they want to secure the "Hyrule Warriors" name, the "Hyrule" trademark alone should be enough.
 

DownGrader

Member
Jun 7, 2014
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Was there a need for it?
"Hyrule" no one was gonna use this and they already have the trademark, and "Warriors" is too simple. If they want to secure the "Hyrule Warriors" name, the "Hyrule" trademark alone should be enough.
I suppose that technically requires renaming the game from "Hyrule Warriors™" (that's how it's written on a box, by the way) to "Hyrule™ Warriors."
 
R

Rösti

Unconfirmed Member
Was there a need for it?
"Hyrule" no one was gonna use this and they already have the trademark, and "Warriors" is too simple. If they want to secure the "Hyrule Warriors" name, the "Hyrule" trademark alone should be enough.
Yes. The "Hyrule" trademark should be enough for them to exploit further titles in that universe. "Hyrule Sports", "Hyrule Siege" (an RTS like Age of Empires) and so forth.

Added: Though as dallow_bg mention below, it is of course good to secure rights as much as possible, as long as it doesn't become silly.
 

Brandon F

Well congratulations! You got yourself caught!
Jun 7, 2004
21,120
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Well Nintendo is still learning how to use the internet afterall...
 

jabberwocker

Banned
Apr 23, 2013
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Didnt this happen recently with something else of theirs? Maybe it was another company. This sounds familiar though.
 

Tom Nook

Member
Apr 2, 2014
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Some game developer gets the trademark name, make a Legend of Zelda Clone game and title it "Hyrule Warriors".