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:
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.
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”
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):
Source (Notice of Opposition in full): http://tsdr.uspto.gov/caseviewer/pdf?caseId=86502847&docIndex=0#docIndex=21. 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”
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.
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.
