Blizzards Overwatch might be forced name change due to patent

Yesterday, on January 9, 2015, the United States Patent and Trademark Office (USPTO) sent to Blizzard Entertainment, Inc. a suspension letter for trademark applications 86239314 and 86239318, both connected to the new team-based shooter Overwatch which was revealed at BlizzCon 2014. This action by the USPTO stems from an issue brought to attention in July last year where it was found that the filing date of U.S. Application Serial No. 86056160, Overwatch by Innovis Labs, Inc., preceded Blizzard’s filing date and thus was subject for a likelihoof confusion (the prior application is under goods and services related to game software and similar). Blizzard appears to have made no attempts to present any arguments as to why their application should not be refused, and thus it has been suspended.

For U.S. Application Serial No. 86239314, Overwatch, which deals with computer game software, computer game discs, downloadable computer game programs and so forth, this is what the USPTO is saying:

SUSPENSION NOTICE: NO RESPONSE NEEDED

ISSUE/MAILING DATE: 1/9/2015

INTRODUCTION

In a previous Office Action, dated July 11, 2014, the trademark examining attorney noted a prior pending application that, if it matured to registration, may result in the refusal of applicant’s mark 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.

Rather than issue the noted Office Action, the trademark examining attorney should have suspended the application. The examining attorney apologizes for any inconvenience caused by the issuance of said Action.

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

THE APPLICATION IS SUSPENDED

As previously noted, the effective filing date of the pending application identified below precedes the filing date of applicant’s application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark. 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 is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application is attached.

– Application Serial No. 86056160

RESPONSE GUIDELINES

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.

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.

/Matthew J. Cuccias/
Trademark Examining Attorney
Law Office 116
(571) 272-4648
Matthew.Cuccias@uspto.gov

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the Trademark Electronic Application System (TEAS) form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

Source: http://tsdr.uspto.gov/documentviewer…Index=0&page=1

For U.S. Application Serial No. 86239318, Overwatch, which deals with entertainment services, namely, providing on-line computer games, things are a bit different, but also stems from likelihood of a confusion with the application by Innovis Labs, Inc., in addition to indefinite and too broad wordings for the connected goods and services. The suspension letter for this application is more or less identical to the one already posted, so there’s no need to post that. For the indefinite and too broad G&S, Blizzard discussed this with the USPTO and also amended this later

EXAMINER’S AMENDMENT

ISSUE/MAILING DATE: 1/9/2015

APPLICATION HAS BEEN AMENDED: In accordance with the authorization granted by applicant’s counsel, Rod A. Rigole, Esq., during a January 9, 2015 telephone conference, the trademark examining attorney has amended the application as indicated below. Please advise the undersigned immediately of any objections. Otherwise, no response is necessary. TMEP §707. Any amendments to the identification of services may clarify or limit the services, but may not add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

Identification of Services

The identification of services is amended to read as follows:

IC 041 Entertainment services, namely, providing on-line computer games; Providing computer games that are accessed via a global computer network

See TMEP §§1402.01, 1402.01(e).

Suspension

Subsequent to the issuance of this Examiner’s Amendment, this application will be suspended pending the ultimate disposition of prior-filed application Serial No. 86056160, as discussed in the July 11, 2014 Office Action.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the Trademark Electronic Application System (TEAS) form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.

Source: http://tsdr.uspto.gov/documentviewer…Index=2&page=1

Both applications are suspended pending the ultimate disposition (i.e., allowance vs. abandonment) of the prior application by Innovis.

You might wonder what this other Overwatch thing is, and how it could potentially be confused with Blizzard’s game. Well, this is what the website states:

FROM CONSOLE TO COMBAT, THE NEXT GENERATION OF INTERACTIVE GAMING
IS HERE.

Inspired by classic first-person shooter video games, Overwatch is the next generation of interactive gaming. Using Overwatch, all the technology you’ve come to love from combat and first-person shooter video games is available in real life – right on your smartphone. Overwatch isn’t just another smartphone game; it’s a tactical utility to enhance airsoft, paintball and first-person shooter gameplay. It’s not just game time. It’s game time. For real.

More easily expressed, it is a smartphone app (and mount) bringing the features of combat video games to real life airsoft, paintball, and laser tag matches.

The Smartphone app in question.