Ubisoft opposes EA registration of "Ghost" trademark because of Ghost Recon

R

Rösti

Unconfirmed Member
#1


On January 29, 2016, Ubisoft Entertainment and Ubisoft, Inc., filed via the USPTO an opposition against Electronic Arts Inc.'s two trademark applications for "Ghost" (US Serial No. 86/568,852 and 86/568,854). An opposition against these filings was initiated in September last year, but the actual lawsuit did not come until now. Ubisoft believe they will be damaged by registration of these marks, and cites a long list of Ghost Recon related trademarks as grounds for opposition. Below is the opposition:

NOTICE OF OPPOSITION

Ubisoft Entertainment, a French corporation having a principal place of business at 107
Avenue Henri Freville, Rennes, France, and Ubisoft, Inc. (“Ubisoft”), a California corporation
having a principal place of business at 625 Third Street, San Francisco, California 94107, believe
they will be damaged by registration of the mark shown in Application Serial Nos. 86/568,852
and 86/568,854 (the “Applications”) and hereby oppose the same pursuant to the provisions of
15 U.S.C. § 1063. Ubisoft Entertainment and Ubisoft are collectively referred to as “Opposers.”

The grounds for opposition are as follows:

1. Opposer Ubisoft Entertainment is the parent company of Ubisoft. Therefore,
privity exists between Opposers. Both Ubisoft Entertainment and Ubisoft are video game
developers and publishers and also sell various products and services related to their video games
and entertainment services.

2. Since at least as early as 2001, Ubisoft has used the trademark GHOST RECON
in connection with video games and entertainment services in the nature of online video and
computer games. In addition to its longstanding common law trademark rights, Ubisoft owns
several incontestable federal registrations for marks comprising or containing the distinctive
GHOST RECON trademark, including the following trademarks:

[Several Ghost Recon trademarks listed in the filing omitted from here, check the link]

3. Ubisoft Entertainment also owns several federal registrations for marks
comprising or containing the distinctive GHOST RECON trademark, including the following
trademarks:

[Several Ghost Recon trademarks listed in the filing omitted from here, check the link]

Collectively, the marks that set forth in Paragraphs 2 and 3 are referred to as the GHOST
RECON marks.

4. Notwithstanding Ubisoft Entertainment’s and Ubisoft’s prior rights in the
GHOST RECON mark, on March 18, 2015, applicant Electronic Arts Inc. (“Applicant”) filed
two intent-to-use applications seeking to register the mark GHOST (“Applicant’s Mark”): one
was filed in connection with “Computer game software; Downloadable computer game software
via a global computer network and wireless devices; Video game software” in International
Class 9, which was designated 86/568,854, and the other one was filed in connection with
“Entertainment services, namely, providing an on-line computer game; Provision of information
relating to electronic computer games provided via the Internet” in International Class 41, which
was designated 86/568,852.
5. The Applications were published for opposition on August 4, 2015. Ubisoft
sought, and was granted, two extensions of time to oppose the Applications: one on September 2,
2015 and one on November 30, 2015. As a result, Opposers have until January 31, 2016 to
oppose the Application. Therefore, this Notice of Opposition is timely filed.

6. Opposers began using its GHOST RECON marks in connection with video games
and entertainment services long before Applicant filed the Applications on March 18, 2015 and
long before Applicant’s November 19, 2013 claimed date of first use.

7. Opposers’ common law and statutory priority dates precede the filing date of the
Application and, upon information and belief, any priority date upon which Applicant may rely.

8. Opposers have priority over Applicant.

9. Prior to filing the Applications, Applicant had constructive knowledge of
Opposers’ GHOST RECON marks given Opposers’ federal registrations set forth above.

10. The goods and services identified in the Applications, namely “Computer game
software; Downloadable computer game software via a global computer network and wireless
devices; Video game software” and “Entertainment services, namely, providing an on-line
computer game; Provision of information relating to electronic computer games provided via the
Internet” are identical and highly related to the goods and services offered by Opposers in
connection with the GHOST RECON marks.

11. Upon information and belief, Applicant intends to market the goods and services
identified in the Applications to the same consumers who purchase the goods and services
offered by the Opposers under the GHOST RECON marks.

12. Applicant’s proposed mark GHOST mark is nearly identical to the GHOST
RECON marks used and owned by Opposers.

13. Applicant’s Mark so resembles Opposers’ GHOST RECON marks alleged herein
as to be likely, when used in connection with the goods and services identified in the
Applications, to cause confusion, to cause mistake, or to deceive. Consumers are likely to
believe, mistakenly, that the goods and services Applicant offers under Applicant’s Mark are
provided, sponsored, endorsed, or approved by Opposers, or are in some way affiliated,
connected, or associated with Opposers, all to the detriment of Opposers. Registration of
Applicant’s Mark, therefore, should be refused under 15 U.S.C. §§ 1052(d) and 1063.

14. Registration of Applicant’s Mark would be a further source of damage to
Opposers, as it would confer upon Applicant various statutory presumptions to which it is not
entitled in view of Opposers’ long prior use of the GHOST RECON marks.
WHEREFORE, pursuant to Section 13 of the Lanham Act, 15 U.S.C. § 1063, Opposers
respectfully request that their opposition be sustained and that registration of the mark shown in
Application Serial Nos. 86/568,852 and 86/568,854 be refused.
Please charge the Notice of Opposition fee to the Deposit Account of Stinson Leonard
Street LLP Account No. 19-4409.
Respectfully submitted,

Date: January 29, 2016 /Joel D. Leviton/
Joel D. Leviton
Laila S. Wolfgram
STINSON LEONARD STREET LLP
150 South Fifth Street, Suite 2300
Minneapolis, MN 55402
Telephone: (612) 335-1562
Facsimile: (612) 335-1657

Attorneys for Ubisoft, Inc. and
Ubisoft Entertainment
Source: http://ttabvue.uspto.gov/ttabvue/v?pno=91226091&pty=OPP&eno=1

Notice and trial dates have been sent, and are as follows:

CONFERENCE, DISCOVERY, DISCLOSURE AND TRIAL SCHEDULE

Time to Answer 3/9/2016
Deadline for Discovery Conference 4/8/2016
Discovery Opens 4/8/2016
Initial Disclosures Due 5/8/2016
Expert Disclosures Due 9/5/2016
Discovery Closes 10/5/2016
Plaintiff's Pretrial Disclosures 11/19/2016
Plaintiff's 30-day Trial Period Ends 1/3/2017
Defendant's Pretrial Disclosures 1/18/2017
Defendant's 30-day Trial Period Ends 3/4/2017
Plaintiff's Rebuttal Disclosures 3/19/2017
Plaintiff's 15-day Rebuttal Period Ends 4/18/2017
Source: http://ttabvue.uspto.gov/ttabvue/v?pno=91226091&pty=OPP&eno=2

Electronic Arts has thus until 9th of March to answer, though time to answer can be extended by request.

Ghost is an EA studio and is responsible for the development of Need for Speed Rivals (2013) and Need for Speed (2015), and is currently working on a new racing title.

Oppose me if old.
 
#21
This is some 'scrolls' level of trolling on Ubi's part... If Ghost at least made FPS or something I could ALMOST ALMOST see something... but they make racers. No one is confusing a Ghost Recon game to a game made by Ghost Studios that's just racing.
 
#27
Sue Mario because Boo is a Ghost. I don't see their point except maybe calling out a name?

They own an IP versus the latter which references the first word in a two word IP.

Like a bad case of the Monday's.