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[Rösti]

The clashing trademark, Switch by Griffin Technologies, a company that designs and manufactures accessories for common devices (mobile, computers etc.).

On Feb. 07, 2017, the United States Patent and Trademark Office (USPTO) issued a non-final Office action on Nintendo's trademark application, US Serial Number 87209606, Nintendo Switch. This particular application is under various goods and services and could be considered the main Nintendo Switch trademark (in the US). Reasons for the office action are as follows:

• PRIOR-FILED APPLICATION
• MULTIPLE-CLASS APPLICATION REQUIREMENTS
• CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES

The items regarding Multiple-Class Application Requirements and Classification and Identification of Goods and Services are standard and should not be difficult to sort out. The Prior-filed Application however is another story (a common story). Below is the letter detailing the office action in almost full entirety:

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

U.S. APPLICATION SERIAL NO. 87209606

MARK: NINTENDO SWITCH



*87209606*
CORRESPONDENT ADDRESS:
JERALD E. NAGAE, REG. NO. 29,418
CHRISTENSEN O'CONNOR JOHNSON KINDNESS
1201 THIRD AVENUE, SUITE 3600
SEATTLE, WA 98101


CLICK HERE TO RESPOND TO THIS LETTER:
http://www.uspto.gov/trademarks/teas/response_forms.jsp

VIEW YOUR APPLICATION FILE

APPLICANT: Nintendo of America Inc.



CORRESPONDENT’S REFERENCE/DOCKET NO:
NOAM-2-55524
CORRESPONDENT E-MAIL ADDRESS:
[email protected]



OFFICE ACTION

STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.


ISSUE/MAILING DATE: 2/7/2017

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

PRIOR-FILED APPLICATION

The filing date of pending U.S. Application Serial No. 86551851 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

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 in a prior-filed pending application may present a bar to registration of applicant’s mark.

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services that are classified in at least 7 classes; however, applicant submitted a fee(s) sufficient for only 5 class(es). In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.uspto.gov/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 7 classes; however, applicant submitted a fee(s) sufficient for only 5 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.uspto.gov/trademarks/law/multiclass.jsp.


CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES

The identification for computer programs in International Class 9 is indefinite; applicant must specify the purpose or function of the programs. See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d). If the software is content- or field-specific, applicant must also specify its content or field of use. See TMEP §1402.03(d). The USPTO requires such specificity in identifying computer programs in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

The following are examples of acceptable identifications for software in International Class 9: “downloadable mobile applications for managing bank accounts,” “desktop publishing software,” “tax preparation software.”

In class 16, the literary subject-matter of the catalogs, magazines, and pamphlets must be specified.

Applicant has classified “accessories for electronic video and computer game systems, namely, AC adaptors, chargers, earphones, microphones, power adapters,” in International Class 16; however, the proper classification is International Class 9.

The wording “stylus pens” in the class 16 identification of goods must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass computer stylus in class 9 or steel pens in class 16.

Applicant has classified “Electronic memory devices for use with electronic video and computer game systems;” in International Class 28; however, the proper classification is International Class 9.

Applicant classified “Fitted plastic films known as skins for covering and protecting hand-held video game units and video game consoles,” in International class 28; however, the proper classification if International Class 9.

The wording “Pre-made wraps and skins for hand-held units for playing video games; Pre-made wraps and skins for video game machines” in the class 28 identification of goods is misclassified, indefinite and must be clarified because the nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “fitted plastic films known as skins for covering and protecting hand-held units for playing video games and video game machines,” in Class 9.

In class 28, the wording, “Accessories for action figures,” is indefinite because the nature of the accessories is not specified. The applicant must identify the accessories, e.g., clothing for action figures.

The wording, “Protective carrying cases and storage cases for video game systems,” in class 28 is indefinite and must be amended to specify that the cases are specially adapted for video game systems.

In class 38, the wording “including” in the identification of services is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). The identification must be specific and all-inclusive. This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific services. See TMEP §1402.03(a).

In class 38, the wording, “Telecommunications services, namely, enabling users to electronically transmit messages, text, multimedia content and images via a global computer network,” is indefinite because of the wording, “enabling.” The “enabling” wording is often used to identify class 42 technology services. The nature of the services identified is unclear and must be amended.

In class 41, the wording, “managing . . . video game events for entertainment purposes,” appears to identify class 35 services that is an activity that must be done for others.

In class 41, the applicant must specify the subject matter of the non-downloadable videos. Also the wording, “featuring user generated or specified content,” in class 41 with respeict to the online journals and blogs is indefinite. The applicant must specify the subject-matter or fields, e.g., video games.

Applicant may adopt the following identification, if accurate:

Class 9: Compact discs, optical discs, cartridges and memory cards containing music, puzzles, stories, and video games; Computer game programs; Computer game software; Computer programs for {specify the function of the software, e.g., use as a spreadsheet, word processing, and, if software is content- or field-specific, the content or field of use}; Downloadable computer game programs; Downloadable computer game software; Downloadable computer programs; Downloadable electronic game programs; Downloadable electronic game software; Downloadable multimedia files, including, computer games, music, puzzles, stories and video games; Downloadable music files; Downloadable video game programs; Downloadable video game software; Electronic game programs; Electronic game software; Electronic video game programs; Electronic video game software; Game programs for hand held video game apparatus; Game programs for video game apparatus; Parts and accessories for cellular phones, namely, cellular phone cases and cellular phone straps; Video game cartridges; Video game discs; Video game memory cards; Video game memory devices, including, cartridges, compact discs, memory cards, and optical discs; Video game operating system software programs and utility programs; Video game programs; Video game software; Accessories for electronic video and computer game systems, namely, AC adaptors, chargers, earphones, microphones, power adapters, computer stylus pens; Electronic memory devices for use with electronic video and computer game systems; Fitted plastic films known as skins for covering and protecting hand-held units for playing video games and video game machines; Fitted plastic films known as skins for covering and protecting hand-held video game units and video game consoles

Class 16: Ballpoint pens; Book covers; Books regarding video games; Calendars; Catalogs in the field of {indicate the specific field}; Children's books; Children's activity books; Day planners; Erasers; Pens; Gift bags; Gift wrapping paper; Greeting cards; Invitation cards; Magazines in the field of {indicate the subject-matter}; Mechanical pencils; Memo pads; Office stationery; Pamphlets {specify the field of the pamphlets}; Paper banners; Paper gift cards; Pencil cases; Pencils; Pencil toppers; Photo albums; Photograph stands; Photographs; Posters; Scratch pads; Stickers; Sticker albums; Trading cards; steel pens


Class 28: Action figures; Accessories for action figures, namely, {specify the accessories}; Board games; Card games; Cases for action figures; Computer game machines; Dolls; Electronic game consoles; Electronic game controllers and electronic game joysticks; Electronic game controllers with an integrated video display; Electronic game machines; Electronic video game machines for use with a monitor or television; Hand-held units for playing electronic games; Hand-held units for playing video games; Playing cards; Plush dolls; Plush toys; Promotional game cards; Protective carrying cases and storage cases specially adapted for video game systems; Protective films adapted for screens for portable game machines; Puzzles; Sports balls; Stuffed toys; Toy action figures; Toy balloons; Toy key chains with and without sound device; Trading card games; Video game consoles; Video game controllers; Video game joysticks; Video game machines

Class 35: Managing video game events for others for entertainment purposes

Class 38: Communication by handheld game apparatus with liquid crystal displays; Communication by video game apparatus; Electronic bulletin board communication services via the Internet; Electronic bulletin board services and providing information thereon; Message, voice, video transmission and exchange via computer network communication; Providing information on communication by consumer video game apparatus; Providing information on communication by handheld game apparatus with liquid crystal displays; Providing online chat room services; Providing online forums for transmission of messages among video game users; Telecommunication services, namely, transmission of audio, data, graphics, images, music, text, video, and voice, by means of wireless communications networks and the Internet; Telecommunications services, namely, electronic transmission of data and digital messaging via wired and wireless communication devices; Wireless electronic transmission of audio, data, graphics, images, music, news, text, video, and voice, pertaining to video games

Class 41: Organizing, arrangement, and producing video game events for entertainment purposes; Providing information about video games, including downloadable video games, non-downloadable video games and online game services by computer networks, handheld game apparatus, telecommunications network and video game apparatus; Providing entertainment-related blogs, information and news on video games, computer games and related products, and on the video game and computer game industries; Providing non-downloadable images and photographs by computer networks, handheld game apparatus and video game apparatus; Providing non-downloadable movies about social, entertainment, cultural and general interest by computer networks, handheld game apparatus and telecommunications network, and video game apparatus; Providing non-downloadable pictures and photographs by computer networks, hand held game apparatus, telecommunications network, and video game apparatus; Providing non-downloadable videos {specify the field or subject-matter} by computer networks, handheld game apparatus, telecommunication network, and video game apparatus; Providing non-downloadable video games and video game samples by computer network, handheld game apparatus, telecommunications network and video game apparatus; Providing online games and game samples by computer network, handheld game apparatus, telecommunications network and video game apparatus; Providing online electronic publications, namely, online journals, and interactive online blogs featuring user generated or specified content {specify the field, e.g., in the field of video games}

Class 42: Telecommunications services, namely, providing a web site featuring technology that enables users to electronically transmit messages, text, multimedia content and images via a global computer network

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

Source: http://tsdr.uspto.gov/documentviewer?caseId=sn87209606&docId=OOA20170207212946#docIndex=2&page=1

As mentioned, of interest here is the likelihood of confusion between marks "Nintendo Switch" (US Serial Number 87209606) by Nintendo of America Inc. and "Switch" (US Serial Number 86551851) by Griffin Technology, Inc. What's peculiar is that Griffin's mark itself has been met with an office action, in fact further action on that mark has been suspended and registration is refused:

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4998632 and 4902119.

Source: http://tsdr.uspto.gov/documentviewer?caseId=sn86551851&docId=OOA20161216102730#docIndex=0&page=1

U.S. Registration No. 4998632 is for “SWITCHFORM” by SWITCHFORM, LLC
U.S. Registration No. 4902119 is for “SWITCHEASY” SwitchEasy Limited LLC

The office action letter against the Nintendo Switch mark mentions "If the mark in the referenced application registers". Considering the referenced application has been met with registration refusal, I don't think this will be a too great hurdle for Nintendo to overcome. If the other marks, Switchform and Switcheasy will provide any further problems only time will tell. There you have it anyway.

Remember that Nintendo experienced issues with the Wii U trademark in England back in 2012: http://www.neogaf.com/forum/showthread.php?t=472418

 

[Neoxon]

But didn't Nintendo trademark the name as "Nintendo Switch"?

 

[Mariolee]

But didn't Nintendo trademark the name as "Nintendo Switch"?

Which is why I don't think this case is actually going anywhere.

 

[Tecnniqe]

Isn't it common for companies to fight over trademarks because they more or less have to show that they fight for it to keep it?

 

[Neoxon]

Which is why I don't think this case is actually going anywhere.

Fair enough, though it may be a matter of Griffin fighting over the trademark for the sake of staking their claim on it (like Tecnniqe said).

 

[Corleth the Fey]

Nintendo may need to rename it - to the Swiitch!

 

[Hexa]

Isn't it common for companies to fight over trademarks because they more or less have to show that they fight for it to keep it?

If I understand this correctly, Griffith isn't involved at all. Just when an examiner was looking over the application, they thought it was too similar and rejected it. This isn't a court case, just beuracracy.

 

[Pagusas]

Nintendo may need to rename it - to the Swiitch!

Ugh

 

[Grylvak]

That's unfortunate but yeah I don't think this will go far since Nintendo filed it under "Nintendo Switch".

Nintendo may need to rename it - to the Swiitch!

As amazing as that is, I don't think that would work well for Nintendo.

 

[Owari]

Man, if these idiots delay the Switch I'm gonna be really pissed off.

 

[Plumpbiscuit]

Nintendo Switch is different to Switch. It's like the Scrolls lawsuit all over again, Elder Scrolls is still different to Scrolls despite sharing a common name. I can't see this case getting anywhere conclusive.

 

[EatinOlives]

Nintendo should change the name to Ultra

 

[tedrotheredro]

I'm still getting my Switch on March 3rd.....right?

 

[Rösti]

I'm still getting my Switch on March 3rd.....right?

This matter should have no impact on availability of Nintendo Switch come March 3rd.

 

[Skittzo0413]

But didn't Nintendo trademark the name as "Nintendo Switch"?

I think in this case it's the mark, as in the symbol, rather than the actual trade name which is too similar to Griffin Technologies' own symbol.

 

[Tecnniqe]

If I understand this correctly, Griffith isn't involved at all. Just when an examiner was looking over the application, they thought it was too similar and rejected it. This isn't a court case, just bureaucracy.

Ahh

 

[mclem]

I'm still getting my Switch on March 3rd.....right?

Due to this problem, you'll get a Swatch instead.

 

[Piston Hyundai]

Hey, the man needs to protect his IP or risk losing it.

That's what you guys have been saying all this time, right?

 

[Madao]

time for Nintendo's Witch

 

[KHlover]

Due to this problem, you'll get a Swatch instead.

You are aware that watches with that name are already being sold, right?

 

[Buggy Loop]

Always in M'urica.

What about the litteral use of the word switch for what the device actually does?

Why not those?

 

[Danny Dudekisser]

I would disagree. The word "Switch" has not acquired the requisite distinctiveness in its current uses that Nintendo's Switch creates a likelihood of confusion.

 

[daxgame]

I'm still getting my Switch on March 3rd.....right?

Nope, sorry.

 

[Ashby]

I'm still getting my Griffin Technologies Switch on March 3rd.... right?

 

[gspat]

So, if a order a swatch, I might get a switch instead?

 

[franklyshankly]

But didn't Nintendo trademark the name as "Nintendo Switch"?

This distinction doesn't necessarily matter that much. The standard is "likelihood of confusion" not exact likeness, and looks to multiple factors beyond simply the similarity of the marks.

Always in M'urica.

What about the litteral use of the word switch for what the device actually does?

Why not those?

Because the use of Switch to describe those products is descriptive of them and would not be registrable for trademark protection.

So, if a order a swatch, I might get a switch instead?

Nintendo did not apply for the mark in connection with any goods or services that might be confused with a watch, so this is meaningless.

 

[v1oz]

There was a similar issue with the iPhone trademark. I think AT&T owned the trademark and Apple had to end up paying them money to use it.

 

[WordAssassin]

Can't wait to play my Nintendo Swetch on March 3rd!

 

[AzaK]

Can't wait to play my Nintendo Swetch on March 3rd!

I loled. You are deserving of your handle.

 

[CertifiedFP]

There was a similar issue with the iPhone trademark. I think AT&T owned the trademark and Apple had to end up paying them money to use it.

Wait, is that why iPhones were AmericanTerribly&bysmalTelephone exclusive for the first few years?

 

[Metalmarc]

Just go back to NX, everyone already knew it as that codename anyway

 

[AtomicShroom]

So, what alternative names should Nintendo consider?

- Nintendo Swiitch
- Nintendo Switcharoo
- Nintendo Swap
- Nintendo SW
- Nintendo That-Underpowered-Hybrid-Game-Machine-That-You-Can-Play-At-Home-Or-On-The-Go

 

[malfcn]

Nintendo may need to rename it - to the Swiitch!

Wait for the sWiitch U.

 

[Kilrogg]

Though I'm not a lawyer myself, let alone an IP lawyer, my line of work involves this kind of issues all the time. I know a bit about it...

... And man, the USPTO doesn't joke around, does it? Trademark offices have varying degrees of strictness and control over what can and can't be trademarked. France, for instance, basically lets you trademark whatever you want. The downside is that they won't warn you if your trademark is too descriptive to hold any legal value, or if the goods and services are too broad, or if there could be a likelihood of confusion with prior existing trademarks. They'll just let you do whatever lol. Only if another trademark owner opposes your trademark will you be notified by the French office.

Other country offices, such as Japan and the US (i.e. USPTO), on the contrary, are very strict. I just didn't know they were that strict. Some of those remarks seem incredibly nitpicky to me, but what the hell do I know. Again, I'm no lawyer. On the flipside, this meticulous examination of trademark applications ensures 1) a much healthier trademark market in the US than in some countries, 2) that if you manage to get your trademark approved by the USPTO, that means your trademark application is rock solid, and you likely won't be bothered by anyone else as a result. Not successfully, anyway.

That's why, even though it might seem weird, the attack against the trademark doesn't necessarily always come from a prior trademark holder (e.g. Griffin), but can also come from the IP office itself. The USPTO determined that, given how the trademark filing for Griffin's "Switch" and Nintendo's "Switch" look, there is a "likelihood of confusion". "Likelihood of confusion", by the way, is the most common reason why a newer trademark may be rejected or canceled. Griffin is not attacking Nintendo. The USPTO is.

On "Switch" vs "Nintendo Switch": just because you put the name of your mother brand (e.g. Nintendo) before the trademark of the actual product/service (i.e. Switch) doesn't mean you're set and nobody can win against you. It doesn't work like that. Imagine if that were the case: you could get every trademark under the sun as long as you put your mother brand before it. Doesn't make sense. That's why the USPTO is warning Nintendo. They don't care that the word "Nintendo" is part of the trademark. It holds little, if any, legal weight against a prior existing trademark.

Finally, on "Switch" vs. "Swiitch" or anything similar: it wouldn't help (much). Again, we're back to the "likelihood of confusion" argument. "Swiitch" would be confusing too. It looks and sounds almost exactly like "Switch". The USPTO would still think there's a likelihood of confusion - rightly so, I might add. Even something like, say, "Swotch", some would argue, carries some likelihood of confusion. Depending on who's examining your case, they might judge that it's too close to "Switch" to lift any likelihood of confusion.

 

[Effect]

Hope this gets resolved quickly. It would suck for everyone if this somehow delayed the release of the system.

 

[mclem]

You are aware that watches with that name are already being sold, right?

Yep. I had a Flik Flak as a kid.

 

[Lanrutcon]

Still can't believe the best they could come up with is "Switch" :/

 

[Skittzo0413]

Hope this gets resolved quickly. It would suck for everyone if this somehow delayed the release of the system.

Whether or not a trademark is granted has no bearing on their ability to sell the system.

 

[Noitshado]

Nintendo Switched (name)

 

[w0s]

Just go back to NX, everyone already knew it as that codename anyway

Yea everyone on this board. Not the people who saw commercials for switch.

 

[Noitshado]

Imagine the casual market confusion yet again if they have to actually change names. Folks walk into a store asking for a Switch and an I don't care department store worker say sorry we dont have Switch only NX or something like that. I cant imagine the nightmare of having to change all their boxes marketing materials etc this late in the game. I wonder has this ever actually happened before.

 

[The Big N]

I don't see this turning into anything. Worst case scenario is Nintendo can slap a big ole NX sticker on my Switch instead.

 

[franklyshankly]

Imagine the casual market confusion yet again if they have to actually change names. Folks walk into a store asking for a Switch and an I don't care department store worker say sorry we dont have Switch only NX or something like that. I cant imagine the nightmare of having to change all their boxes marketing materials etc this late in the game. I wonder has this ever actually happened before.

This is why you vet your potential names, do trademark searches, and file an intent-to-use application before you actually go to market with a trade name. I'm sure Nintendo has very sophisticated IP counsel, so I am surprised they're in this position.

That said, a trademark examiner isn't a judge and a likelihood of confusion rejection isn't a judgment of infringement. It's an administrative process, and Nintendo can and will respond to this office action, outlining legal and factual arguments why their name, product, or other factors are different enough that no likelihood of confusion exists. The examiner can be convinced to overturn such an objection fairly often, but not always.

 

[Rösti]

On Mar. 11, 2017, Nintendo filed its response to this office action:

The Office Action has referenced pending U.S. application Serial No. 86/551851 ("'851 application") as a potentially conflicting prior-filed application. The Office Action notes that if the cited '851 application registers, it may be a basis for refusing registration of the present application. Applicant disagrees that there would be a likelihood of confusion between the present mark and the mark of the '851 application. In this regard, applicant notes that the present mark consists of the two words "Nintendo Switch," whereas the referenced application is for the word "Switch" with an image of a house formed in the letter "H." In the present mark, the designation "Nintendo" is without doubt a famous mark in the United States.
Moreover, the goods in the cited application primarily pertain to accessories for laptop computers, tablets and smartphones. The focus of the present application is different. Nonetheless, to facilitate examination of the present application, applicant has removed the below-listed goods and services in Classes 28 and 41. It has also deleted Class 38 from the present application. These amendments to Classes 28, 38 and 41 further differentiate the present mark from the cited pending '851 application. Accordingly, applicant respectfully submits that there is now no potential conflict between applicant's mark and the mark of the referenced application.

AMENDMENT TO THE GOODS AND SERVICES
Please delete from Class 28 the underlined goods:
Fitted plastic films known as skins for covering and protecting hand-held video game units and video game consoles;
Pre-made wraps and skins for hand-held units for playing video games;
Pre-made wraps and skins for video game machines;
Protective carrying cases and storage cases for video game systems;
Protective films adapted for screens for portable game machines;
Please delete Class 38 in its entirety.
Please delete from Class 41 the underlined services:
Organizing, arrangement, managing and producing video game events for entertainment purposes;
Providing information about video games, including downloadable video games, non-downloadable video games and online game services by computer networks, handheld game apparatus, telecommunications network and video game apparatus;
Providing non-downloadable movies about social, entertainment, cultural and general interest by computer networks, handheld game apparatus and telecommunications network, and video game apparatus;
Providing non-downloadable pictures and photographs by computer networks, hand held game apparatus, telecommunications network, and video game apparatus;
Providing non-downloadable videos by computer networks, handheld game apparatus, telecommunication network, and video game apparatus;
Providing non-downloadable video games and video game samples by computer network, handheld game apparatus, telecommunications network and video game apparatus

CONCLUSION
Based on the foregoing remarks and the amendments to the descriptions, applicant respectfully requests that the refusal to register be withdrawn and the mark be approved for publication without further delay. If the Examining Attorney has any questions, she is invited to contact Applicant's attorney at 206-695-1705.

Source: http://tsdr.uspto.gov/documentviewer?caseId=sn87209606&docId=ROA20170311162003#docIndex=0&page=1

The now deleted Class 38 was:

Class 038 for Communication by handheld game apparatus with liquid crystal displays; Communication by video game apparatus; Electronic bulletin board communication services via the Internet; Electronic bulletin board services and providing information thereon; Message, voice, video transmission and exchange via computer network communication; Providing information on communication by consumer video game apparatus; Providing information on communication by handheld game apparatus with liquid crystal displays; Providing online chat room services; Providing online forums for transmission of messages among video game users; Telecommunication services, including, transmission of audio, data, graphics, images, music, text, video, and voice, by means of wireless communications networks and the Internet; Telecommunications services, namely, electronic transmission of data and digital messaging via wired and wireless communication devices; Telecommunications services, namely, enabling users to electronically transmit messages, text, multimedia content and images via a global computer network; Wireless electronic transmission of audio, data, graphics, images, music, news, text, video, and voice, pertaining to video games

Quite interesting development in my opinion, especially as the deleted goods and services regard carrying cases, video game events and whatnot.

We'll see if this has any greater impact on current and future Nintendo Switch merchandise.

 

[AmyS]

Rename it NX.

 

[UncleSporky]

Hmm, does that mean they're now longer not going to be able to hold a "Nintendo Switch World Championship," but instead will simply hold a "Nintendo World Championship" with plenty of Switch emphasis?

 

[Rösti]

Hmm, does that mean they're now longer not going to be able to hold a "Nintendo Switch World Championship," but instead will simply hold a "Nintendo World Championship" with plenty of Switch emphasis?

I was wondering the same. Not that I think much trouble would come from calling an event "Nintendo Switch World Championship" or similar, but they wouldn't have the same legal protection as with a trademark under goods and services related to such events.

 

[sixteen-bit]

Swiitch incoming?