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The USPTO suspends Nintendo's Super Mario Odyssey trademark application

R

Rösti

Unconfirmed Member
On February 01, 2017, the United States Patent and Trademark Office (USPTO) issued an office action suspending further action on Nintendo's trademark application, US Serial Number, 87299743, Super Mario Odyssey. The suspension letter mentions as reason for suspension a potential likelihood of confusion with a prior-filed pending application. The crux here is that this prior-filed pending application, US Serial Number 87258466, is for Nintendo's own Super Mario Run (which is filed by Nintendo Co., Ltd., while the one for Odyssey is filed by Nintendo of America Inc.).

Below is that suspension letter in almost full entirety:

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

U.S. APPLICATION SERIAL NO.
87299743

MARK: SUPER MARIO ODYSSEY



*87299743*
CORRESPONDENT ADDRESS:

JERALD E. NAGAE, REG. NO. 29,481
CHRISTENSEN O'CONNOR JOHNSON KINDNESS
1201 THIRD AVENUE, SUITE 3600
SEATTLE, WA 98101


GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/trademarks/index.jsp

VIEW YOUR APPLICATION FILE

APPLICANT: Nintendo of America Inc.



CORRESPONDENT’S REFERENCE/DOCKET NO:
NOAM-2-56343
CORRESPONDENT E-MAIL ADDRESS:
Efiling@cojk.com



SUSPENSION NOTICE: NO RESPONSE NEEDED

ISSUE/MAILING DATE: 2/1/2017



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.

PRIOR-FILED PENDING APPLICATION(S) FOUND: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark(s) in a prior-filed pending application(s) may present a bar to registration of applicant’s mark.

The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application. If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s). 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(s) is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application(s) is attached.

- Application Serial No(s). 87258466

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.

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.

If the mark(s) in the potentially conflicting prior-filed application(s) has been assigned to applicant, applicant may provide evidence of ownership of the mark(s) to avoid a possible refusal under Trademark Act Section 2(d) based on a likelihood of confusion. See 15 U.S.C. §1052(d); TMEP §812.01.

Applicant may provide evidence of ownership of the mark(s) by satisfying one of the following:

(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

(2) Submit copies of documents evidencing the chain of title.

(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of Application Serial No(s). 87258466.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, check the box for “Miscellaneous Statement” and write in the free form text field for the “Miscellaneous Statement” that “Applicant is the owner of Application Serial No(s). 87258466,” inserting the relevant application serial number(s); and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).



/rscb/
Robin S. Chosid-Brown
Trademark Examining Attorney
Law Office 102
571-272-9252
robin.chosid-brown@uspto.gov

Source: http://tsdr.uspto.gov/documentviewer?caseId=sn87299743&docId=SUL20170201085040#docIndex=0&page=1

This is nothing out of the ordinary really and will likely have no impact on development. One could think though USPTO's system could need some modernization, for to me this seems like something that could be easily avoidable with a group account of sorts, where a large multinational company can register its wholly owned subsidiaries, so patent attorneys won't have to just because of protocols issue suspensions.

Again, nothing major and should impact the game in no way. But I found it slightly interesting.

In other news, trademark applications to the below series were approved for publication earlier this week:

  • Arms
  • Eternal Darkness
  • Excite Truck
  • Snipperclips
 

BiGBoSSMk23

A company being excited for their new game is a huge slap in the face to all the fans that liked their old games.
Mar 17, 2014
3,836
70
720
Fuckin' Trump.
 

Eolz

Member
Jun 1, 2014
10,192
21
605
That's pretty stupid, nobody would mistake Super Mario Odyssey with Super Mario Run.
Did they have the same issue with other Mario games in the past?
 

L~A

Member
Jan 19, 2013
12,188
0
610
That's pretty stupid, nobody would mistake Super Mario Odyssey with Super Mario Run.
Did they have the same issue with other Mario games in the past?

Just another sign the whole trademark system is utterly broken, though at least it's not something as ludicrous as a company trademarking common words.
 

Alienous

Member
Jan 20, 2013
35,669
2
0
The crux here is that this prior-filed pending application, US Serial Number 87258466, is for Nintendo's own Super Mario Run (which is filed by Nintendo Co., Ltd., while the one for Odyssey is filed by Nintendo of America Inc.)

 

Darklor01

Might need to stop sniffing glue
Jan 28, 2012
7,204
4,776
1,115
I see the problem. They confused Mario with these guys.



 

frankie_baby

Member
May 3, 2007
18,400
1
0
They got eternal darkness renewed again? Thought they'd got to the point where they had to actually do something with it or loose the trademark?
 
R

Rösti

Unconfirmed Member
They got eternal darkness renewed again? Thought they'd got to the point where they had to actually do something with it or loose the trademark?
Not renewed. They simply filed an entirely new application as the previous one they had used all Requests for Extension of Time to File a Statement of Use for. I originally thought the previous application would be abandoned sometime in January this year, but now it looks abandonment could come a bit later, perhaps in February. I'll keep monitoring it.
 

JaseC

gave away the keys to the kingdom.
Jul 30, 2009
73,799
7
1,030
Western Australia

Super Mario Odyssey was considered too similar to Super Mario Run and Nintendo has to prove that it owns the latter in order for the suspension on the former to be lifted. This happened because Super Mario Run was registered by Nintendo Japan while Super Mario Odyssey was registered by Nintendo US, so while it's obvious to everyone that they're both Nintendo companies, they're technically separate parties. It's a silly technicality, but at the same time Nintendo should have ensured that the registration information was consistent across both of the trademarks.
 

frankie_baby

Member
May 3, 2007
18,400
1
0
Rösti;229701552 said:
Not renewed. They simply filed an entirely new application as the previous one they had used all Requests for Extension of Time to File a Statement of Use for. I originally thought the previous application would be abandoned sometime in January this year, but now it looks abandonment could come a bit later, perhaps in February. I'll keep monitoring it.

Ah i see

I think
 

JaseC

gave away the keys to the kingdom.
Jul 30, 2009
73,799
7
1,030
Western Australia
How'd they get ARMS?
lol

You can trademark ordinary words. The trademark just exists within the specific context/s that you selected when completing the submission, and trademarking a word doesn't entitle you to legal claim over other trademarks that are partially composed of that word, regardless of context (e.g. Nintendo owning the trademark to ARMS doesn't preclude another developer from trademarking, say, Legs and Arms: Shut Up and Move, although it could try in vain to argue that they're too similar and likely to be confused). These are both things that Tim Langdell failed to understand... or did understand but chose to ignore.
 
Jan 17, 2014
3,834
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So they say they are the legal owners of the super Mario run trademark and then it's solved. You had me intrigued for a second, thought it was a case like the iPad mini not being trademarked because mini is merely an added descriptive word of the already trademarked iPad.