Monday, September 7, 2015

Trademark Law: It's Super Effective, But For Whom?

Another piece of recent news to talk about! The Pokemon Company International (PCI), last seen shutting down parties in Seattle, is on the other side of the aisle for this new trademark suit. In the process of bringing their cash cow free-to-play puzzle game, Pokemon Shuffle, to the United States, PCI might not have covered all its bases in making sure they could actually use that name and get a trademark on it.

A notice opposing PCI's application for a trademark on the title "Pokemon Shuffle" was filed on September 1st by the company Cartamundi. Cartamundi is a Belgian company that already has a trademark on the Principal Register of the Patent and Trademark Office (the PTO, as we cool kids call it) of the United States for the word "Shuffle" as the name of an entire line of card games it produces. Before we all stoke the fires of outrage at the idea of someone holding exclusive rights to the word "shuffle," I want to shoot that down. Cartamundi doesn't straight up own the word. It owns the exclusive right to call its line of card games "Shuffle," and a quick lookup of the company shows that they have a lot of licenses with board game properties to make card version of those games. So they have "Shuffle: Monopoly, "Shuffle Trumps," and "Shuffle: Battleship," where "Shuffle" is the product line and the individual product is "Monopoly." Moreover, Cartamundi has apps for Android and iPhone to go with the card games. I know I'd never heard of this company, but I'm pretty sure I've seen some of these things at my local Target. This isn't some troll trying to get that sweet, sweet Pikachu money. They seem like a legit, established business that was here first and genuinely has something to lose if Pokemon Shuffle gets its own trademark..

When a company sees a threat like this, they can't just rely on the fact that they had a trademark first. Honestly, though, that's a hugely important part of winning a trademark suit. Especially if they've had ownership of the mark for 5 or more years. If you were there first and it's been more than 5 years, there is very little the next guy can say to get around that. The Lanham Act, which is the US's primary piece of legislation on trademarks, places a huge emphasis on firstsies. Cartamundi hasn't owned the mark for that long, and only filed for it about a year ago, but first is first.

So the United States government and obnoxious Youtube comments have one more thing in common.
Still, as much as the PTO would love to just be able to make black and white decisions based on who showed up to the office earlier, anyone who's claiming that they're going to be harmed by something has to show what that actual harm is going to be. Parties who want to shut down someone they think is honing in on their trademark territory need a cause of action, and that usually comes down to allegations of either dilution of a famous mark or consumer confusion. We're going to focus on consumer confusion since, if you look at the opposition that was actually filed by Cartamundi, that's what they alleged.

It's pretty much exactly what it says on the tin: the party that got the mark first is alleging that the new user is going to cause people to be confused about who they are buying from. There's supposed to be a consumer protection angle to it, and that's mainly because the law is too old to really contemplate just how many products and services we have out there these days taking out trademarks, and is structured as if anyone who is late to the TM party is some shady business making a knockoff product. That isn't always that case, and it certainly isn't in the case between Cartamundi and PCI. These are both very established companies.

I've spent hours trying to come up with a "TM" joke, but it's just not working.
Have a cheap visual pun instead. (source)
Beyond consumer protection, the real question for deciding whether the mark holder is going to be harmed by the the newcomer causing confusion is: "whether a consumer who is somewhat familiar with the plaintiff's mark would likely be confused when presented with the defendant's mark alone." (that comes straight from the Lanham Act). In our case, we want to be asking whether someone on the app store downloading Pokemon Shuffle would think it was associated with those apps and physical card games being put out by Cartamundi. Cartamundi's argument is that it risks being dragged down by any bad feelings associated with Pokemon Shuffle, and that it might lose customers because of it. 

How do we decide if that's a real risk? By looking at the overlap. On one hand, we have a card game company that calls a product line "Shuffle," a term generally associated with cards, trying to make sure that their products are the ones people think of when they buy something card based called "Shuffle," even if it's a mobile app instead of a physical deck of cards. On the other, we have a company with a multi-media presence that is trying to associate the term "shuffle" with a match-3 style puzzle game based on their intellectual property. That kind of licensed "shuffle" game is exactly what Cartamundi has as its bread and butter, and it's the foundation of their trademark. So when they allege consumer confusion, that's the reason why. Consumers might see "Pokemon Shuffle," and think it's the electronic version of a card game about Pokemon brought to them by the same people who created card games on other properties. They'll download it, see the puzzle game, get confused, and take it out on Cartamundi. 

And then there's the question of how strong PCI's application is. Between Cartamundi getting there first, and the strength of their argument that people will get confused, there's a lot for PCI to overcome if they want to get that trademark but they definitely get the opportunity to try. My reading is that it doesn't look good for the Pokemon Company based on what we've seen so far. They can't even rely on the idea that their use of  the word "shuffle" makes as much thematic sense as Cartamundi's, and courts reviewing patent disputes do look at that sort of thing. What does the word "shuffle" have to do with match-3 puzzles? They could just as easily call it something else and still be successful with their product based on the Pokemon tie-in alone. There's an argument to be made that it's called Pokemon Shuffle in other parts of the world, so giving it a different name in North America would create confusion and harm PCI, but I'm not sure that would be enough to overcome all the factors Cartamundi has in its favor.

It's too early to tell, but if I had to predict, I'd say this was going to go Cartamundi's way. It's odd to think that a company of PCI's size and significance didn't make sure they wouldn't end up in a spot like this before making the application. Unless there's a big piece of information I missed, I really don't see how PCI gets to keep calling its game "Pokemon Shuffle." This one looks ripe for an out of court settlement, but given how established Cartamundi is, I don't know if they'd go for it. In that case, be on the lookout for a name change on Pokemon Shuffle.

And remember, kids! Always check for trademark availability before launching a new product in a major consumer market.

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