Posted by Nicholas Stewart
Do you remember Nintendo's Game Boy handset? It followed Nintendo's Game & Watch series and brought versatile hand-held gaming to kids and adults around the world. Indeed, the Game Boy and Game Boy Colour handsets were powerhouse brands for Nintendo; 185.48 million of the handsets were sold in the United States
How do you think Nintendo reacted then when Adar Golad applied in February 2006 to register the mark FLASHBOY for 'plug and play interactive games of a virtual reality comprised of computer hardware and software' in International Class 9 and 'hand-held units for playing video games and electronic games, namely, stand alone video game machines' in International Class 28? After a bit of consideration, Nintendo filed opposition proceedings, of course!
On 31 May 2011, the United States Patent and Trade Mark Office's Trade Mark Trial and Appeal Board agreed with Nintendo, holding that Nintendo's opposition to the "FLASHBOY" trade mark should be sustained (Nintendo decision) on the basis that it was likely to cause confusion with Nintendo's GAMEBOY trade mark. The following factors were inherent to the Judges' finding:
How do you think Nintendo reacted then when Adar Golad applied in February 2006 to register the mark FLASHBOY for 'plug and play interactive games of a virtual reality comprised of computer hardware and software' in International Class 9 and 'hand-held units for playing video games and electronic games, namely, stand alone video game machines' in International Class 28? After a bit of consideration, Nintendo filed opposition proceedings, of course!
On 31 May 2011, the United States Patent and Trade Mark Office's Trade Mark Trial and Appeal Board agreed with Nintendo, holding that Nintendo's opposition to the "FLASHBOY" trade mark should be sustained (Nintendo decision) on the basis that it was likely to cause confusion with Nintendo's GAMEBOY trade mark. The following factors were inherent to the Judges' finding:
- Famous marks are accorded more protection because they are more likely to be remembered and associated in the public mind than a weaker mark.
- Sales and revenue are relevant to determining whether a mark is famous.
- "GAMEBOY" is a famous mark for video game hardware, evidenced by the large volume of sales of Game Boy handsets between 1989 and 2005 and the fact that Nintendo has spent hundreds of millions of dollars advertising Game Boy products between 2000 and 2005.
- As the goods described by the "FLASHBOY" application are in part identical to those covered by "GAMEBOY", the channels of trade and classes of purchasers are the same with the effect that consumers would be more likely to be confused.
- The marks are sufficiently similar in terms of their overall commercial impression because the goods overlap and "GAMEBOY" 'enjoys the "wide berth" of fame', notwithstanding that the terms "GAME" and "FLASH" do not look or sound alike.
- Adar Golad did not have a bona fide intent to use the "FLASHBOY" mark. This finding turned on the fact that Adar Golad had no business plan or agreements to manufacture, distribute, create, or market any product under the mark.
How does this case affect upcoming gaming entrepreneurs?
For a start, they should be mindful that well-established brands will not tolerate piggy-backing. Sure, there is room for new players, however, entrants to any new market would benefit from significant research and preparation, as well as an original, non-perplexing mark that signifies autonomy. The Nintendo decision is prescriptive in its illustration of how a new player might go about successfully registering a United States
Partner: Charles Alexander
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