A trademark applicant’s bid to compete with the major players of electronic gaming has reached a final-level defeat at the US Trademark Trial and Appeal Board (TTAB). In a case that should prompt other entrepreneurs to think twice before attempting to register soundalike brands, the word ‘Flashboy’ has been formally turned down following opposition proceedings brought by Nintendo of America. The plaintiff took action against the application – lodged by board games inventor Adar Golad in February 2006 – on the grounds of similarities to its long-established Game Boy brand.

In assessing the opposition, the TTAB took into account the plaintiff’s sales and advertising figures, as outlined by Nintendo of America’s former senior vice president of marketing and corporate communications, George S Harrison.

According to Harrison’s deposition, in the years between 1989 and 2005, Nintendo sold an estimated 185.5 million Game Boy handsets around the world. Advertising spend, which totalled hundreds of millions of dollars, paid for numerous, high-profile campaigns in publications such as Rolling Stone, Boy’s Life, Disney Adventures and the Marvel Comics range. To demonstrate the devices’ reputation, Harrison also submitted reviews from the New York Times, CBS, the Chicago Sun Times and USA Today.

‘The goods listed in the [Golad] application,’ noted the TTAB opinion, ‘are “plug and play interactive video games of virtual reality comprised of computer hardware and software,” and “hand-held units for playing video games and electronic games, namely, stand alone video game machines.” The goods listed in the opposer’s [USPTO trademark no] 1622675 are “game equipment, namely, electronic game equipment for playing video game programs; toys, namely, electronic memory device toys.” We find that there is substantial overlap between the goods in Class 28, and they are legally identical.’

With all that in mind, wrote the TTAB, ‘the goods overlap and are otherwise substantially related, and are likely to be marketed through the same channels of trade to generally unsophisticated consumers’.

Golad’s application was also hamstrung by the nature of his responses to document-discovery requests during the proceedings. According to the TTAB, ‘applicant was unable to identify, locate, or produce documents evidencing his plans to use the mark “Flashboy” in commerce for the applied-for goods’. To each of 12 separate demands for practical details relating to the relevant goods – such as technical specifications or regulatory approval – Golad replied that he was ‘not in possession of any responsive documents’.

This failure to establish a genuine intent to use ‘Flashboy’ in the course of trade was the final straw for Golad’s application.


To download a PDF of the full TTAB opinion, click the link below