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POKEMON GO Caught By…POKEMON?

Posted in Trademarks, USPTO

Last week was rough.  We went from celebrating America to watching her at her worst.  We saw officers shoot two black men in Baton Rouge, LA and Falcon Heights, MN, a black man shoot cops in Dallas, and resulting social unrest (including my hometown police being hit with concrete last weekend and protests blocking our freeways yesterday).  We read polarizing social media posts.  Everyone seems more on edge than I can ever recall.

Call me a conspiracy theorist if you must, but what a perfect time to release a mind-numbing game called Pokemon Go!

I have not played the game myself – and don’t intend to given the fact that it’s probably “a government surveillance psyop conspiracy” according to a worthwhile read from Mashable) – but my friends say the game is “EVERYTHING.”   To the extent that I understand it, apparently you try to catch cute characters like Pidgey and Pikachu on your smartphone’s screen and, once you get to a certain level, you then can go to “gyms” (real locations) to find things to catch.  It seems somewhat like geocaching with your phone and with unreal objects.  From one friend:  “A kid found a dead body while playing – she indicated that she wasn’t too scared to stop playing, so that’s a positive sign.  I have never taken my dogs on more walks, so I think they like the game too.  The other day I biked by a pack of teens pawing at the door of a locked church trying to get in to take over the ‘gym’ located inside – it’s weird seeing teens desperately trying to get into churches.”  I don’t get it.

Conversations with friends have devolved into “Martha, I’m fine waiting, I just saved [partner] from a Seel and he didn’t even thank me,” and I’ve grown increasingly uncertain about whether “I am going to try to go to the gym later” means a place to work out or a place to play Pokemon Go.   Based on what I’ve seen it do to people’s walking ability, I am scared to be on the roads with anyone trying to “catch” things that don’t exist in reality while trying to drive in reality.

Perhaps dazed itself, the pending U.S. trademark applications for the POKEMON GO logo (here, here, and here) have been refused registration as being likely to be confused with a registration for POKEMON in standard characters.

Mark Image

These three applications were all filed based upon foreign applications, which were filed by Nintendo Co. Ltd. (a Japanese corporation) as the applicant, and thus the Japanese corporation was listed as the applicant on these U.S. filings.  However, Nintendo of America Inc., an American corporation incorporated in Washington, owns the registration for POKEMON.

Nintendo, and companies finding themselves in similar situations, can overcome this issue by claiming ownership of the prior registrations.  In order to do so, Nintendo would need to (1) record an assignment of the prior POKEMON registration from the American corporation to the Japanese corporation, (2) submit copies of documents evidencing the chain of title, or (3) submit an affidavit or declaration stating that the applicant is the owner of the cited registration.   Additionally, when making maintenance filings, it is important that the company that owns the mark have control of the use of the mark, even when that use is made only by the company’s parent company.  As the TTAB ruled earlier this year in  Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, a parent company’s use of a wholly-owned subsidiary’s registered mark does not inure to the benefit of the subsidiary if the parent controls the nature and quality of the goods sold under the mark.  In the alternative to claiming ownership of the marks, Nintendo of America Inc. could file new US-based applications for the mark, and these applications could be abandoned, but Nintendo would lose the priority date of the original filing.   Multinational corporations and corporations with subsidiaries should consider these ownership issues when managing a trademark portfolio that includes filings in the United States.