Gotta catch ‘em all
Nintendo owns a number of trade marks with the “Poké” prefix, some of which have been registered for almost 20 years. These include a variety of “Pokémon” trade marks that are used in relation to clothing and electronics (A.K.A. the Nintendo “Poké family”).
The US trade mark register reveals approximately 60 trade mark applications and registrations with the “Poké” prefix (including trade marks related to “Pokémon Go” that were filed in March 2016, ahead of the game’s release in July last year).
Surrender now or prepare to fight
In December 2016, a couple based in Oklahoma filed an application with the United States Patent and Trademark Office (USPTO) to register “Poké Go” as a trade mark (for use in relation to clothing i.e. in class 25).
In April 2017, Nintendo filed an opposition with the USPTO, arguing that “Poké Go” trade mark (if registered) would be confusingly similar to its own trade marks, would cause dilution, burring and tarnishment of its own trade marks, and would be deceptive.
There are a few points to take away from this ongoing Poké-brand battle –
Trade mark searching. It is always worth spending a little time/money carrying out searches before filing trade mark applications, rather than finding out about potentially conflicting trade mark registrations later on (e.g. after significant investment has gone into the development of the brand and significant goodwill and reputation in the brand has been established).
Avoid obvious conflicts. If you file a trade mark that is similar to an existing trade mark, beware of the risks associated with this strategy (particularly if the existing trade mark that you are emulating is part of a distinctive and well-known brand). The existing trade mark owner may well claim that you are unfairly ‘riding on its coat-tails’ or that your trade mark (if registered) would dilute or tarnish the reputation of the existing trade mark.
Be vigilant. If you are in Nintendo’s position, it is worth having a trade mark watching service in place to ensure that you are notified of applications for competing trade marks in advance and have sufficient time either to negotiate with the applicant or to oppose the application if negotiation does not lead to a satisfactory result. If the opposition deadline passes, and the application proceeds to registration, it can be cumbersome, time-consuming and expensive to have trade marks struck of the register later on.
Briffa advises on contentious and non-contentious trade mark matters and assists its clients with trade mark applications, opposition proceedings, cancellation proceedings and infringement disputes in various jurisdictions around the world through its network of international agents. If you have any queries or concerns regarding your trade mark portfolio or brand management generally, or if you would just like some general advice, please do not hesitate to contact us.