Wednesday, June 08, 2011

TTAB Sustains GAME BOY v. FLASHBOY Opposition: Likelihood of Confusion and Lack of Bona Fide Intent

The fame of Ninetendo's registered GAME BOY mark for video game programs and hand-held video games was a major factor in the Board's decision sustaining a Section 2(d) opposition to registration of the mark FLASHBOY for "plug and play interactive video games of virtual reality comprised of computer hardware and software" and "hand-held units for playing video games and electronic games, namely, stand alone video game machines." The Board also found for Nintendo on its claim that Applicant Golad lacked the requisite bona fide intent when he filed his application to register. Nintendo of America, Inc. v. Adar Golad, Opposition No. 91178130 (May 31, 2011) [not precedential].

Section 2(d): The Board found the mark GAME BOY to be famous for purposes of its likelihood of confusion analysis, based on staggering sales and advertising figures and significant media recognition. The Board also found the involved goods to be legally identical in part and otherwise substantially related. With the goods overlapping and the mark famous, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

As to the marks, the Board denied Nintendo's claim to a family of "BOY" marks due to insufficient evidence that it has promoted "a group of marks for which the common characteristic is the term 'BOY.'"

Noting the definitions of the word "flash" in the record, the Board found that "[c]onsumers are likely to see the mark FLASH BOY, and believe that it is a version of GAME BOY intended to be used on or in connection with flash memory. Alternatively, they may believe that FLASH BOY is a 'speedier' version of GAME BOY." In any case, the Board found the commercial impressions of the marks to be similar.

Applicant Golad argued that "BOY" is suggestive, relying on 19 use-based registrations in class 28. The Board, however, found the registrations to be of little probative value. For one thing, they are not evidence that the marks are actually in use or that the public is familiar with them.

The Board concluded that the dissimilarities in sight and sound between the marks are outweighed by the similar commercial impressions, "especially in light of the fame of the GAME BOY mark, and considering the overlap in goods."

Balancing the du Pont factors, the Board found confusion likely and it sustained Nintendo's Section 2(d) claim.

Lack of Bona Fide Intent: In discovery, Applicant admitted that he did not have a business plan or any other documentation reflecting plans to "advertise, manufacture or otherwise use the mark FLASHBOY in commerce on the goods for which applicant seeks registration." That was enough to establish a prima facie case of lack of bona fide intent. Applicant failed to overcome that prima facie case.

"To show a bona fide intent to use, there must be 'objective evidence,' that is evidence in the form of 'real life facts and by the actions of the applicant.' J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Sec. 19:14 (4th ed. 2009). There should be some 'definite' (if not necessarily 'concrete') plan by applicant. For example, 'written plan of action for a new product or service,' or a 're-branding of an existing line of goods or services.' Id."

Here, Applicant pointed to his foreign trademarks and to a European patent, but failed to establish "a nexus as to how these would be used to launch FLASH BOY for the presently applied-for goods." Applicant also pointed to three prior Board decisions, but the Board noted that they are both non-precedential and factually distinguishable.

And so the Board sustained Nintendo's claim of lack of bona fide intent.

TTABlog comment: This lack-of-bona-fide-intent attack is gaining momentum. I think it's going to be the next big thing at the TTAB (now that the fraud phenomenon has subsided).

Text Copyright John L. Welch 2011.


At 10:09 AM, Anonymous Orrin A. Falby said...

I throw it into almost all of the oppositions against applications based on 1(b), 44 and 66 we file. You don't have the heightened standard of pleading, so I plead it upon information and belief. You, me and others have had a very thorough discussion about this issue in the past on this very blog and good comparison with fraud was made. We some what predicted that this would be a decent alternative to the post-Bost/pre-Medinol fraud standard.


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