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Will Nintendo sue?

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Re: Will Nintendo sue?

#21

Nintendo definitely won't. Namco on the other hand appears to still be somewhat reliant on sales of their 30-year-old Pac-Man game. They issued a DMCA on my silly Pac-Man project last year [1][2]. My goal was to archive and educate people about the internal mechanics of the game. [1] http://pacman.shaunew.com/play/index.htm#learn [2] http://pacman.shaunew.com/play/index.htm#cheat_pac

Nintendo sent out 491 DMCA notice as far as I can see on Chillingeffect, while I can only see 26 DMCA notices from Namco. I guess not every DMCA notices ends up in Chillingeffect, but it sounds like Nintendo has been bit active.

Re: Will Nintendo sue?

#22
post #8

Earlier quoted context omitted.

They're not obligated to do so, but they do have the right to do so. The name Mario is not a trademark itself since common names cannot be trademarked, although product names containing the name Mario are trademarked by Nintendo, such as Super Mario. I think Nintendo has sufficient grounds to sue because this project uses the name Mario in concert with an actual rework of a Nintendo product which itself is copyright.…

Common names can be used as trademarks. "Mario" is a current EU trademark held by Nintendo for categories 9, 28, 38 and 41. - http://esearch.oami.europa.eu/copla/trademark/data/007061501 ; - [UK:] http://www.ipo.gov.uk/tmcase/Results/1/UK00001182493 . The USPTO TESS db shows "Mario" is a character mark held by "Mario Camacho Foods, LLC". It may be that the protection afforded is far less as people generally in TM law…

Your reply got me curious, so I tried searching the USPTO TESS [1] to match your results for the EU and the UK. With what appears to me to be the correct query, "(mario)[COMB] AND (nintendo)[OW]" [2], I found 39 results total and of which one was for the word "Mario" on its own [3] but that trademark was dead "because the applicant failed to respond or filed a late response to an Office action". According to what [4] says and given the time frame (filing date: Sep. 30, 1982; date abandoned: Dec. 23, 1983) this seems to imply that the trademark "Mario" was never granted. However, there are 22 trademarks that contain the word "Mario" and at least one other word that are live.

Why did Nintendo let the application for "Mario" lapse? I can think of least three options: 1) it was by chance; 2) their lawyers decided the trademark won't be granted; 3) they thought it was somehow undesirable to own the trademark for the word "Mario"; I wonder what it really was.

Anyway, you're right. The GP was mistaken that you cannot trademark common names [5]. Looks like he was right that "Mario" isn't a trademark of Nintendo's but for the wrong reason.

[1] Trademark Electronic Search System, http://tmsearch.uspto.gov.

[2] You can paste it into their "Free Form" search form. Unfortunately, it looks like you cannot link to search results directly.

[3] http://tsdr.uspto.gov/#caseNumber=73397991&caseType=SERIAL_N...

[4] http://www.uspto.gov/trademarks/basics/abandon.jsp

[5] For US examples see, e.g., http://tsdr.uspto.gov/#caseNumber=74259941&caseType=SERIAL_N... and http://tsdr.uspto.gov/#caseNumber=85026053&caseType=SERIAL_N....

Re: Will Nintendo sue?

#23

Nintendo definitely won't. Namco on the other hand appears to still be somewhat reliant on sales of their 30-year-old Pac-Man game. They issued a DMCA on my silly Pac-Man project last year [1][2]. My goal was to archive and educate people about the internal mechanics of the game. [1] http://pacman.shaunew.com/play/index.htm#learn [2] http://pacman.shaunew.com/play/index.htm#cheat_pac

Nintendo sent out 491 DMCA notice as far as I can see on Chillingeffect, while I can only see 26 DMCA notices from Namco. I guess not every DMCA notices ends up in Chillingeffect, but it sounds like Nintendo has been bit active.

Wow you're right. That is a good resource, thanks!
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