USPTO Suspends Nintendo’s Super Mario Odyssey Trademark Application

Posted on by Ryan

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Huge news to report as the United States Patent and Trademark Office has issued an office action suspending further action on Nintendo’s trademark application for Super Mario Odyssey. The US serial number for reference is 87299743.

Below is the suspension letter…

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

U.S. APPLICATION SERIAL NO. 87299743

MARK: SUPER MARIO ODYSSEY

*87299743*
CORRESPONDENT ADDRESS:

JERALD E. NAGAE, REG. NO. 29,481
CHRISTENSEN O’CONNOR JOHNSON KINDNESS
1201 THIRD AVENUE, SUITE 3600
SEATTLE, WA 98101

GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/trademarks/index.jsp

VIEW YOUR APPLICATION FILE

APPLICANT: Nintendo of America Inc.

CORRESPONDENT’S REFERENCE/DOCKET NO:
NOAM-2-56343
CORRESPONDENT E-MAIL ADDRESS:
[email protected]

SUSPENSION NOTICE: NO RESPONSE NEEDED

ISSUE/MAILING DATE: 2/1/2017

The trademark examining attorney is suspending action on the application for the reason(s) stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.

PRIOR-FILED PENDING APPLICATION(S) FOUND: The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark(s) in a prior-filed pending application(s) may present a bar to registration of applicant’s mark.

The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application. If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application(s) is attached.

– Application Serial No(s). 87258466

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.

No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.uspto.gov/rsi/rsi.

If the mark(s) in the potentially conflicting prior-filed application(s) has been assigned to applicant, applicant may provide evidence of ownership of the mark(s) to avoid a possible refusal under Trademark Act Section 2(d) based on a likelihood of confusion. See 15 U.S.C. §1052(d); TMEP §812.01.

Applicant may provide evidence of ownership of the mark(s) by satisfying one of the following:

(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

(2) Submit copies of documents evidencing the chain of title.

(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of Application Serial No(s). 87258466.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, check the box for “Miscellaneous Statement” and write in the free form text field for the “Miscellaneous Statement” that “Applicant is the owner of Application Serial No(s). 87258466,” inserting the relevant application serial number(s); and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).

/rscb/
Robin S. Chosid-Brown
Trademark Examining Attorney
Law Office 102
571-272-9252
robin.chos[email protected]