Via Game File - Nintendo of America Inc. v. Yifei Bao, 91288084, No. 1 (T.T.a.B. Nov. 7, 2023)

ESTTA Tracking number: ESTTA1320639
Filing date: 11/07/2023
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Notice of Opposition
Notice is hereby given that the following party opposes registration of the indicated application.
Opposer information
Name Nintendo of America Inc.
Entity Corporation Incorporated or Washington
registered in
Address 4600 150TH AVENUE NE
REDMOND, WA 98052
UNITED STATES
Attorney informa- BRANDON M. RESS

tion PIRKEY BARBER PLLC
1801 EAST 6TH STREET
SUITE 300
AUSTIN, TX 78702
UNITED STATES
Primary email: tmcentral@pirkeybarber.com
Secondary email(s): bress@pirkeybarber.com, sespen-
shade@pirkeybarber.com, eolson@pirkeybarber.com
512.322.5200
Docket no. NINT965
Applicant information
Application no. 97687157 Publication date 10/10/2023
Opposition filing 11/07/2023 Opposition period 11/09/2023
date ends
Applicant Yifei Bao
GROUP 4, BAOYING VILLAGE
HUANGTAIGANG TOWN, WANCHENG DISTRICT
NANYANG, HENAN, 473033
CHINA
Goods/services affected by opposition

Class 009. First Use: Nov 15, 2022 First Use In Commerce: Nov 15, 2022
All goods and services in the class are opposed, namely: Monoculars; Telescopes; Card reading
equipment; Computer peripherals; Ear buds; Earphone accessories, namely, earphone cushions,
earphone pads, earphone cases, and earphone extension cords; Earphones for cellular telephones;
Memory expansion cards; Motorcycle helmets; Pet collar accessories, namely, signaling bells; Pro-
tective covers and cases for cell phones; Spotting scopes; Sun glasses; Video game cassettes; Wire-
less computer peripherals
Grounds for opposition

Priority and likelihood of confusion Trademark Act Section 2(d)
No bona fide intent to use mark in commerce for Trademark Act Section 1(b), 44(e) or 66(a)
identified goods or services
Marks cited by opposer as basis for opposition
U.S. registration 1213822 Application date 07/18/1980
no.
Register Principal
Registration date 10/26/1982 Foreign priority NONE
date
Word mark NINTENDO
Design mark
Description of NONE
mark
Goods/services Class 009. First use: First Use: Feb 21, 1979 First Use In Commerce: Aug 13,
1979
Coin Operated Electronic and Video Games
Class 016. First use: First Use: Oct 11, 1887 First Use In Commerce: Oct 11,
1935
[ Playing Cards ]
Class 028. First use: First Use: Dec 16, 1967 First Use In Commerce: Apr 1969
[ Toy Equipment Sold as a Unit for Playing a Game-Namely, (1) Toy Automatic
Pitching Machine Including Pitching Device, Balls and Bat, (2) Toy Light Emitting
Rifle, Projector for Projecting an Image of a Flying Duck which Falls When Hit by
Beam of Light and Screen, (3) Toy Light Emitting Pistol and Device Including
Animal or Gunman which Falls When Hit by a Light Beam, and (4) Toy Electron-
ic Battery Operated Hand Held Game and Clock Combination ]

no.
Register Principal
Registration date 08/01/2023 Foreign priority 10/18/2021
date
Word mark NINTENDO
Design mark
Description of NONE
mark
Goods/services Class 003. First use: First Use: None First Use In Commerce: None
Laundry detergent; laundry soap; soap, namely, bath soap, bar soap, body wash
for humans or animals; shampoos; shampoos for pets; non-medicated denti-
frices; toothpaste; non-medicated mouth wash and rinse; cosmetics; bath pre-
parations, not for medical purposes; hair spray; mascara; decorative transfers
for cosmetic purposes; temporary tattoo transfers for use as cosmetics; cosmet-
ics for children; beauty masks; perfumery; air fragrancing preparations; air fra-
grance reed diffusers; room fragrances; fragrance sachets; pet fragrances; false
nails; false eyelashes; nail art stickers
Class 005. First use: First Use: None First Use In Commerce: None
Cough syrups; cough drops; eye drops; antiseptics; first aid kits; adhesive band-
ages; bandages for dressings; cotton for medical purposes; babies' diapers;
powdered milk for babies; nutritional supplements; vitamin supplements; food for
babies
Recorded electronic game programs; downloadable electronic game programs;
recorded video game programs; downloadable video game programs; video
game cartridges; memory cards for video game machines; cases for smart-
phones; covers for smartphones; recorded computer game software; download-
able computer game software for use on mobile and cellular phones; download-
able image files containing artwork, text, audio, videos featuring video games;
downloadable music files; downloadable electronic publications, namely, e-
books featuring fiction stories, booklets, manuals and newsletters in the field of
video games; headphones; earphones; batteries
Electric lights for Christmas trees; lamps; standard lamps
Key rings; key chains comprised of split rings with decorative fobs or trinkets;
charms for key rings; jewelry boxes; commemorative coins; collectible coins;
jewelry; necklaces; bracelets; jewelry charms; earrings; tie pins; rings being jew-
elry; medals; ornamental lapel pins; shoe jewelry; watches; clocks; watch bands
Office requisites, namely, office binders and file folders; wrapping paper; paper
bags and sacks; place mats of paper; coasters of paper; table napkins of paper;
tablecloths of paper; paper; stationery; printed notebooks; pen cases; paint
boxes for use in schools; writing instruments; pens; pencils; rubber erasers; pen-
cil sharpeners, electric or non-electric; printed postcards; printed greeting cards;
stickers; wall decals; printed matter, namely, calendars, children's activities
books, magazines and manuals in the field of video games; Printed books in the
field of children's entertainment, fiction stories, and video games; printed comic
books; printed posters; paintings; photograph stands; paper party decorations
Clothing for pets; collars for animals; bags, namely, book bags, carry-on bags,
shoulder bags, handbags, backpacks, drawstring bags, travel bags, and lug-
gage; school bags; rucksacks; suitcases; credit card cases; purses; wallets; key
cases; luggage tags; garment bags for travel; bags for sports; vanity cases, not
fitted; umbrellas
Pillows; cushions; packaging containers of plastic; nameplates, not of metal;
fans for personal use, non-electric; beds for household pets; furniture; chests for
toys; wind chimes; cradles; infant walkers; camping mattresses; picture frames;
statues of wood, wax, plaster or plastic
Floss for dental purposes; hair brushes; combs; brushes for washing up; tooth-
brushes; fitted vanity cases; cosmetic utensils, namely, cosmetic brushes; con-
tainers for household or kitchen use; drinking flasks; glass bowls; soup bowls;
utensils for kitchen and cleaning purposes, namely, serving spoons, serving
forks, and chopsticks; mugs; cups; dishes; plates; paper plates; cookie jars;
lunch boxes; drinking bottles for sports; drinking straws; coasters, not of paper
or textile; place mats of plastic; tablemats, not of paper or textile; trays for
household purposes; waste baskets; coin banks; soap holders; dishes for soap
Fabrics for textile use; adhesive fabric for application by heat; towels of textile;
handkerchiefs of textile; quilts; children's blankets; bed blankets; picnic blankets;
throws; fleece blankets; travelling rugs; lap robes; covers for cushions; pillow-
cases; bed linen; tablemats of textile; table napkins of textile; place mats of tex-
tile; coasters of textile; flags of textile or plastic; banners of textile or plastic;
blankets for household pets; wall hangings of textile; unfitted fabric furniture cov-
ers; bed covers; curtains of textile or plastic; household linen; sleeping bags
Clothing, namely, polo shirts, sweatshirts, parkas, jackets, raincoats, pants,
dresses, sweatpants, skirts, and sweaters; shirts; tee-shirts; pajamas; under-
wear; bathing suits; socks; scarves; neck scarves; ear muffs; gloves; bibs not of
paper; hats; caps being headwear; cap peaks; belts for clothing; footwear;
sports shoes; sandals; slippers; masquerade costumes; Halloween costumes
Carpets for automobiles; mats, namely, bath mats, door mats, and personal ex-
ercise mats; textile floor mats for use in the home; carpets; carpets and rugs;
rugs; wall hangings, not of textile; wallpaper
Games, namely, card games, promotional game cards, puzzles, trading card
games; toys, namely, toy balls, toy key chains, toy figures, water toys, plush
toys, inflatable toys, party favors in the nature of small toys, toy balloons, toy
building blocks, toy vehicle; ride-on toys; ride-on toys and accessories therefor;
stuffed toys; dolls; portable games with liquid crystal displays; protective films
adapted for screens for portable games; video game machines; controllers for
game consoles; hand-held consoles for playing video games; arcade video
game machines; board games; playing cards; ornaments for Christmas trees,
except lights, candles and confectionery; protective carrying cases specially ad-
apted for handheld video games
Fruit-based snack food; potato chips; milk products excluding ice cream, ice milk
and frozen yogurt; cheese; milk beverages, milk predominating; yogurt; frozen
fruits; preserved meats and sausages; canned fish; processed fish; jellies for
food; jams; prepared nuts; soups; preparations for making soup
Tea; tea-based beverages; coffee; coffee-based beverages; cocoa; cocoa-
based beverages; pastries; candies; ice cream; cookies; chocolate; popcorn;
chewing gum; bread and buns; sandwiches; pizzas; pies; cakes; pancakes;
frozen yogurt; crackers; mints for breath freshening; seasonings; ketchup; dress-
ings for salad; cereal preparations, namely, oatmeal, corn flakes, breakfast cer-
eals, and cereal bars; noodles; pasta; pasta sauce; rice
Soda water; table waters; fruit juice; soft drinks; vegetable juices being bever-
ages; non-alcoholic carbonated beverages; non-alcoholic sparkling fruit juice
beverages; non-alcoholic fruit juice beverages; whey beverages
Advertising; public relations; organization of exhibitions for commercial or ad-
vertising purposes; demonstration of goods; promotion of goods and services
through sponsorship of sports events; marketing services; customer loyalty ser-
vices and customer club services, for commercial, promotional and/or advert-
ising purposes; marketing, advertising, and promoting the retail goods and ser-
vices of others through wireless electronic devices; online retail store services
for downloadable and pre-recorded music and movies; retail store services fea-
turing games; retail store services featuring virtual game goods, namely, virtual
footwear, clothing, headwear, eyewear, bags, art, toys, accessories, digital an-
imated and non-animated designs and characters; retail store services featuring
toys
Providing telecommunications connections to a global computer network; com-
munications by computer terminals; computer aided transmission of messages
and images; video-on-demand transmission; providing online forums for trans-
mission of messages among computer users; providing an online forum for
video games; transmission of greeting cards online; streaming of data; stream-
ing of games and digital media content on the internet; providing information in
the field of telecommunications
Entertainment services, namely, providing non-downloadable images featuring
images of characters and scenes from an electronic game via a global computer
network and wireless networks; entertainment services, namely, providing non-
downloadable prerecorded music and sounds in the field of video games, all on-
line via a global computer network; entertainment services, namely, providing
temporary use of non-downloadable video games; entertainment services,
namely, providing online electronic games; entertainment services, namely,
providing on-line, non-downloadable virtual footwear, clothing, headwear, eye-
wear, bags, art, toys, accessories, digital animated and non-animated designs
and characters for use in virtual environments created for entertainment pur-
poses; entertainment services, namely, providing virtual environments in which
users can interact for recreational, leisure or entertainment purposes; arranging
and conducting of video game events for entertainment purposes; organizing,
arranging, and conducting virtual electronic game events; providing information
in the field of entertainment; providing non-downloadable online electronic pub-
lications, namely, online journals and interactive online blogs featuring user gen-
erated or specified content in the field of video games and online publications in
the nature of e-books in the field of video games; providing on-line videos featur-
ing video games, not downloadable; providing online music, not downloadable;
presentation of live show performances; presentation of musical performances;
arranging and conducting of concerts; organization and arrangement of video
game events for entertainment purposes; organization and arrangement of en-
tertainment shows and events; providing on-line computer games; organization
of electronic game competitions for entertainment purposes; providing amuse-
ment arcade services

no.
Register Principal
date
Word mark NINTENDO 64
Design mark
Description of NONE
mark
Goods/services Class 009. First use: First Use: Sep 29, 1996 First Use In Commerce: Sep 29,
1996
electronic game programs; electronic game software; [electronic game cart-
ridges; video game cartridges;] video game programs; and video game software

no.
Register Principal
date
Word mark NINTENDO DS
Design mark
Description of NONE
mark
Goods/services Class 009. First use: First Use: May 12, 2004 First Use In Commerce: May 12,
2004
cartridges featuring entertainment content; electronic game cartridges; [ elec-
tronic game machines; ] electronic game programs; electronic game software; [
electronic handheld units for receipt and/or transmission of text, graphics and
multimedia content; handheld communication devices, namely, video game ma-
chines enabled for receipt and transmission of information, namely, data, text,
graphics, images, sound, music, audio, video, video games, signals, and mes-
sages; handheld wireless communication devices, namely, video game ma-
chines enabled for receipt and transmission of information, namely, data, text,
graphics, images, sound, music, audio, video, video games, signals, and mes-
sages; interactive electronic game machines; interactive video game cartridges;
interactive video game programs; interactive video game software; ] video game
cartridges; [ video game machine accessories, namely, carry cases, computer
stylus; video game machines with memory devices, namely, flash memory; ]
video game programs; video game software; [ wireless communication devices,
namely, video game machines enabled for receipt and transmission of informa-
tion, namely, data, text, graphics, images, sound, music, audio, video, video
games, signals, and messages; writing instruments for use with computer/video
game machine touch screen displays, namely, computer stylus ]

no.
Register Principal
date
Word mark NINTENDO 3DS
Design mark
Description of The mark consists of the words "Nintendo 3DS" on one line.
mark
Goods/services Class 009. First use: First Use: Mar 27, 2011 First Use In Commerce: Mar 27,
2011
(Based on Use in Commerce and Based on Section 44(e)) [ Computer game
programs for consumer video game apparatus; ROM cards, and ROM cartridges
recorded with programs for consumer video game apparatus; digital storage me-
dia recorded with programs for consumer video game apparatus; electronic stor-
age media recorded with programs for consumer video game apparatus; ] [ con-
trollers and memory cards for consumer video game apparatus; ] AC adapters
for consumer game apparatus; parts and fittings for consumer video games,
namely, power supplies and battery chargers; computer game programs for
hand-held game apparatus with liquid crystal displays; ROM cards and ROM
cartridges recorded with programs for hand-held game apparatus with liquid
crystal displays; digital storage media recorded with programs for hand-held
game apparatus with liquid crystal displays; electronic storage media recorded
with programs for hand-held game apparatus with liquid crystal displays; [ hand-
held terminals for displaying electronic publications; ] electronic machines, ap-
paratus and their parts, namely, electronic game software; [ digital cameras;
video cameras; ][ audio players; ][ audio recorders; storable music files down-
loadable via a global computer network; storable image files downloadable via a
global computer network featuring photographs, art, video/computer game char-
acters, video/computer game scenes, and video/computer game images; ] elec-
tronic publications, namely, [ magazines, ] manuals [ and players' guides ] fea-
turing video games, recorded on computer media; [ pedometers; cameras; ] [
photographic machines and apparatus, namely, hand-held video game apparat-
us with liquid crystal display, with an internal camera; cinematographic machines
and apparatus, namely, hand-held video game apparatus with liquid crystal dis-
play, with an internal video camera; ] pre-recorded cartridges and memory cards
featuring entertainment, educational, and informational content, pertaining to
video games, computer games, puzzles, music and stories; specially adapted
cases for video game cartridges and video game memory cards; [ computer
game cartridges; computer game memory cards; computer game programs;
computer game software; ] electronic game cartridges; electronic game memory
cards; electronic game programs; electronic game software; [ headphones and
headsets; interactive electronic game cartridges; interactive electronic game
memory cards; interactive electronic game programs; interactive electronic
game software; interactive video game cartridges; interactive video game
memory cards; interactive video game programs; interactive video game soft-
ware; pre-made wraps and skins for video game machines; ] video game cart-
ridges; video game memory cards; video game programs; video game software;
writing instruments for use with computer/video game machine touch screen dis-
plays, namely, computer stylus; downloadable multimedia files, namely, games;
downloadable computer game programs; downloadable computer game soft-
ware; downloadable electronic game programs; downloadable electronic game
software; downloadable interactive electronic game programs; downloadable in-
teractive game software; downloadable video game programs; downloadable
video game software; downloadable electronic publications, namely, game in-
struction booklets; (Based on Section 44(e)) [ Video game consoles for use with
an external display screen or monitor; optical discs, CD- ROMs, and DVD-ROMs
recorded with programs for consumer video game apparatus; ] [ joysticks for
consumer video game apparatus; ][ parts and fittings for consumer video games,
namely, transformers and cables; optical discs, CD-ROMs, and DVD-ROMs re-
corded with programs for hand-held game apparatus with liquid crystal displays;
] batteries; chargeable batteries

no.
Register Principal
date
Word mark NINTENDO SWITCH
Design mark
Description of NONE
mark
Goods/services Class 009. First use: First Use: Mar 3, 2017 First Use In Commerce: Mar 3,
2017
Cartridges and memory cards containing puzzles, stories, and video games;
Computer game programs; Computer game software; Computer programs for
parental controls in the field of video games; Downloadable computer game pro-
grams; Downloadable computer game software; Downloadable computer pro-
grams; Downloadable electronic game programs; Downloadable electronic
game software; Downloadable multimedia files containing computer games,
puzzles, stories and video games; Downloadable video game programs; Down-
loadable video game software; Electronic game programs; Electronic game soft-
ware; Electronic video game programs; Electronic video game software; Game
programs for hand held video game apparatus; Game programs for video game
apparatus; Video game cartridges; Video game memory cards; Video game
memory devices, including, cartridges and memory cards; 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 Adapters, chargers, earphones, microphones, power adapters;
Electronic memory devices for use with electronic video and computer game
systems
Class 028. First use: First Use: Mar 3, 2017 First Use In Commerce: Mar 3,
2017
Action figures; Computer game machines; Electronic game consoles; Electronic
game controllers and electronic game joysticks; Electronic game controllers with
an integrated video display; Electronic game machines; Electronic memory
devices for use with electronic video and computer game systems; 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; Toy action
figures; Video game consoles; Video game controllers; Video game joysticks;
Video game machines
Class 041. First use: First Use: Oct 20, 2016 First Use In Commerce: Oct 20,
2016
Providing information about video games, including downloadable video games,
non-downloadable video games and online game services by computer net-
works, handheld game apparatus and video game apparatus; Providing enter-
tainment- 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 pictures and photographs by computer networks, hand held game
apparatus and video game apparatus; providing non-downloadable videos in the
field of video games by computer networks, handheld game apparatus, and
video game apparatus; Providing non-downloadable video games and video
game samples by computer network, handheld game apparatus and video game
apparatus; Providing online games and game samples by computer network,
handheld game apparatus, and video game apparatus
Attachments Dkt 1 - Notice of Opposition.pdf(287274 bytes )
Signature /Brandon M. Ress/

Name Brandon M. Ress
Date 11/07/2023
UNITED STATES PATENT AND TRADEMARK OFFICE
TRADEMARK TRIAL AND APPEAL BOARD
In Re Serial No.: 97687157 §

Mark: NIETNEDO §
Filed: November 21, 2022 §
Published: October 10, 2023 §
§
Nintendo of America Inc., §
§ Opposition No. ________________
Opposer, §
§
v. §
§
Yifei Bao, §
§
Applicant. §
NOTICE OF OPPOSITION
Opposer Nintendo of America Inc. (“Opposer” or “Nintendo”) believes it will be
damaged by registration of the mark shown in Ser. No. 97687157 (the “Application”)
for the goods recited in Class 9. Opposer brings this opposition against the
Application under 15 U.S.C. § 1063. Opposer asserts as its grounds for opposition
priority and likelihood of confusion under 15 U.S.C. § 1052(d) based on Opposer’s
registered and common-law rights.
THE PARTIES
1. Opposer Nintendo is a Washington corporation with an address of 4600
150th Avenue NE, Redmond, Washington 98052.
2. According to USPTO records, Applicant Yifei Bao is a Chinese citizen
with an address of Group 4, Baoying Village Huangtaigang Town, Wancheng District
Nanyang, Henan CHINA 473033.
1
FACTS
Nintendo and its NINTENDO Mark
3. Nintendo is an industry leader in the fields of video games, gaming
consoles, handheld gaming devices, entertainment services, and related goods and
services.
4. For decades, Nintendo has used the mark NINTENDO in the United
States in connection with its goods and services, including video game consoles, video
games, video game accessories, toys, clothing, and other goods and services.
5. Nintendo’s NINTENDO video game consoles are among the best-selling
and most famous video game consoles of all time. Nintendo first released its
NINTENDO ENTERTAINMENT SYSTEM video game console in the United States
in 1985. Nintendo has sold hundreds of millions of NINTENDO video game consoles
worldwide and its current console, the NINTENDO SWITCH, has sold over 129
million units worldwide.
6. Nintendo’s also sells many of the most famous video game franchises in
connection with its NINTENDO brand, including THE SUPER MARIO BROS., THE
LEGEND OF ZELDA, and POKÉMON video game franchises.
7. In addition to video games and consoles, Nintendo also offers a wide
variety of merchandise under the NINTENDO mark, including video game
accessories such as memory cards, headsets, and protective cases, as well as toys,
clothing, and other accessories.
2
8. Nintendo has extensively advertised and promoted the goods and
services offered under the NINTENDO mark to consumers across the United States
through a variety of different means, including on its website at the domain
www.nintendo.com. As a result of such efforts, the NINTENDO mark has become
widely recognized and well-known as a designation of the products and services
offered by Nintendo.
9. Nintendo’s NINTENDO mark is inherently distinctive, serving to
identify and indicate the source of Nintendo’s goods and services to the consuming
public, and to distinguish Nintendo’s goods and services from those of others.
10. Additionally, as a result of Nintendo’s long use and promotion of its
NINTENDO mark, the mark has become distinctive and is recognized by consumers.
Nintendo has invested significant effort and resources in advertising and promoting
its NINTENDO mark and the products and services sold under the mark, with the
result that the purchasing public has come to know, rely on, and recognize the
products and services of Nintendo by the mark.
11. Nintendo enjoys strong goodwill and common law rights in the
NINTENDO mark. These common law rights include rights in the NINTENDO mark
for toys, clothing, accessories, and other goods and services.
12. In addition to its strong common law rights, Nintendo owns numerous
United States trademark registrations covering the NINTENDO mark. Nintendo’s
registrations include, but are not limited to, those listed below:
3
Mark Reg. No. Goods/Services
NINTENDO 1213822 Class 9: Coin Operated Electronic and Video
Games
NINTENDO 7123503 Class 9: Recorded electronic game programs;

downloadable electronic game programs; recorded
video game programs; downloadable video game
programs; video game cartridges; memory cards for
video game machines; cases for smartphones;
covers for smartphones; recorded computer game
software; downloadable computer game software
for use on mobile and cellular phones;
downloadable image files containing artwork, text,
audio, videos featuring video games; downloadable
music files; downloadable electronic publications,
namely, e-books featuring fiction stories, booklets,
manuals and newsletters in the field of video
games; headphones; earphones; batteries
NINTENDO 2372472 Class 9: electronic game programs; electronic game

64 software; video game programs; and video game
software.
NINTENDO 3166135 Class 9: cartridges featuring entertainment

DS content; electronic game cartridges; electronic
game programs; electronic game software; video
game cartridges; video game programs; video game
software;
NINTENDO 4165097 Class 9: electronic publications, namely, manuals

3DS featuring video games, recorded on computer
media; re-recorded cartridges and memory cards
featuring entertainment, educational, and
informational content, pertaining to video games,
computer games, puzzles, music and stories;
specially adapted cases for video game cartridges
and video game memory cards; electronic game
cartridges; electronic game memory cards;
electronic game programs; electronic game
software; video game cartridges; video game
memory cards; video game programs; video game
software; writing instruments for use with
computer/video game machine touch screen
displays, namely, computer stylus; downloadable
multimedia files, namely, games; downloadable
4
Mark Reg. No. Goods/Services
computer game programs; downloadable computer
game software; downloadable electronic game
programs; downloadable electronic game software;
downloadable interactive electronic game
programs; downloadable interactive game software;
downloadable video game programs; downloadable
video game software; downloadable electronic
publications, namely, game instruction booklets;
batteries; chargeable batteries
NINTENDO 5477313 Class 9: Cartridges and memory cards containing

SWITCH puzzles, stories, and video games; Computer game
programs; Computer game software; Computer
programs for parental controls in the field of video
games; Downloadable computer game programs;
Downloadable computer game software;
Downloadable computer programs; Downloadable
electronic game programs; Downloadable electronic
game software; Downloadable multimedia files
containing computer games, puzzles, stories and
video games; 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; Video game cartridges; Video game
memory cards; Video game memory devices,
including, cartridges and memory cards; 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 Adapters,
chargers, earphones, microphones, power adapters;
Electronic memory devices for use with electronic
video and computer game systems.
13. Each registration listed above is valid and subsisting, and U.S. Reg. Nos.
1213822, 2372472, and 4165097 are incontestable pursuant to 15 U.S.C. § 1065.
5
Printouts of the TSDR records for these registrations showing status and title are
attached as Exhibit A.
14. The registrations owned by Nintendo for its NINTENDO mark cover
goods identical to, or closely related to, the goods in the opposed Application.
Similarly, Nintendo’s common law rights in its NINTENDO mark extend to goods
identical to, closely related to, the goods in the opposed Application.
The Opposed Application
15. Applicant filed Serial No. 97687157 on November 21, 2022, pursuant to
15 U.S.C. § 1051(a) for the mark NIETNEDO (the “Applicant’s Mark”) covering the
Class 9 goods “Monoculars; Telescopes; Card reading equipment; Computer
peripherals; Ear buds; Earphone accessories, namely, earphone cushions, earphone
pads, earphone cases, and earphone extension cords; Earphones for cellular
telephones; Memory expansion cards; Motorcycle helmets; Pet collar accessories,
namely, signaling bells; Protective covers and cases for cell phones; Spotting scopes;
Sun glasses; Video game cassettes; Wireless computer peripherals.” The Application
claims a date of first use of November 15, 2022.
16. Nintendo commenced use of its NINTENDO mark prior to the
November 21, 2022 filing date of the Application and the November 15, 2022 date of
first use alleged in the Application, and Nintendo’s use of the NINTENDO mark has
been continuous since it commenced use of the NINTENDO mark.
6
17. Nintendo has priority based on its prior use and registration of the
NINTENDO mark in the United States before any priority date in the Applicant’s
Mark that can be claimed by the Applicant.
GROUND FOR OPPOSITION—LIKELIHOOD OF CONFUSION

(15 U.S.C. § 1052(D))
18. Nintendo repeats the allegations above as if set forth fully here.
19. Nintendo has priority in its NINTENDO mark over any priority date in
the Applicant’s Mark that can be claimed by the Applicant.
20. The Applicant’s Mark is confusingly similar to Nintendo’s NINTENDO
mark.
21. The goods recited in the Application are identical to, or closely related
to, the goods and services for which Nintendo has used and/or registered its
NINTENDO mark.
22. Upon information and belief, the Applicant’s goods will travel in the same
or similar channels of trade as Nintendo’s goods and services and will be purchased by
the same or similar types of consumers who purchase and use Nintendo’s goods and
services.
23. Nintendo has not given Applicant permission to use or register the mark
NIETNEDO or any other marks confusingly similar to Nintendo’s NINTENDO mark.
24. The Applicant’s Mark so resembles the NINTENDO mark as to be likely,
when used on or in connection with the goods identified in the Application, to cause
confusion, or to cause mistake, or to deceive. Applicant’s goods are closely related to
the goods and services offered by Nintendo under its NINTENDO mark. Purchasers
7
and prospective purchasers are likely to believe that the goods offered under
Applicant’s Mark are sponsored, endorsed, or approved by Nintendo, or are in some
way affiliated, connected, or associated with Nintendo or its products and services.
25. The Application should thus be refused registration under 15 U.S.C.
§ 1052(d).
GROUND FOR OPPOSITION—NO BONA FIDE USE OF THE MARK IN COMMERCE

(15 U.S.C. § 1051(A))
26. Nintendo repeats the allegations above as if set forth fully here.
27. On information and belief, Applicant was not using NIETNEDO in
United States commerce with all or some of the goods identified in the Application as
of the November 21, 2022, filing date of the Application. Because there was no bona
fide use of the Applicant’s Mark by Applicant on or in connection with the goods
identified in the Application in United States commerce at the time Applicant filed
its use-based application, such non-use renders the Application void ab initio for
failure to comply with the requirements of Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).
STANDING & DAMAGE TO OPPOSER
28. Allowing the Application to proceed would damage Nintendo because, as
explained, consumers are likely to confuse Applicant’s goods offered under the
NIETNEDO mark with Nintendo and its NINTENDO mark.
29. Also, allowing the Application to proceed would damage Nintendo
because registration would give Applicant statutory presumptions and legal rights to
8
which it is not entitled. Those statutory presumptions and legal rights would weaken
Nintendo’s prior common law and registered rights in its NINTENDO mark.
CONCLUSION
30. The Board should sustain the opposition and refuse registration of the
Application, Ser. No. 97687157.
This Notice of Opposition is being filed electronically, along with the filing fee
required by 37 C.F.R. § 2.6(a)(17). The Commissioner is authorized to draw on the
Deposit Account of Pirkey Barber PLLC, Account No. 50-3924/NINT965/SME if there
is any problem with the processing of the electronically submitted fee.
DATED: November 7, 2023 Respectfully submitted,
_/Brandon M. Ress/_____
Steven M. Espenshade
Brandon M. Ress
PIRKEY BARBER PLLC
1801 E. 6th Street, Suite 300
Austin, Texas 78702
(512) 322-5200
(512) 322-5201 (fax)
sespenshade@pirkeybarber.com
bress@pirkeybarber.com
tmcentral@pirkeybarber.com
Attorneys for Opposer
9
EXHIBIT
EXHIBIT A
A
Generated on: This page was generated by TSDR on 2023-11-07 08:23:58 EST
Mark: NINTENDO
US Serial Number: 73271433 Application Filing Jul. 18, 1980

Date:
US Registration 1213822 Registration Date: Oct. 26, 1982
Number:
Register: Principal
Mark Type: Trademark
TM5 Common Status LIVE/REGISTRATION/Issued and Active
Descriptor:
The trademark application has been registered with the Office.
Status: The registration has been renewed.

Status Date: Nov. 03, 2022
Publication Date:Aug. 03, 1982
Mark Information
Mark Literal NINTENDO
Elements:
Standard Character No
Claim:
Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
Type:
Foreign Information
Foreign 452,381 Foreign Sep. 28, 1954
Registration Registration Date:
Number:
Foreign JAPAN Foreign Expiration Sep. 28, 1984
Application/Registration Date:
Country:
Foreign 1,097,289 Foreign Nov. 18, 1964

Number:
Foreign JAPAN Foreign Expiration Nov. 18, 1984
Country:
Goods and Services

Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
Brackets [..] indicate deleted goods/services;
Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
Asterisks *..* identify additional (new) wording in the goods/services.
For: Coin Operated Electronic and Video Games

International 009 - Primary Class U.S Class(es): 022
Class(es):
Class Status: ACTIVE
Basis: 1(a) 44(e)
First Use: Feb. 21, 1979 Use in Commerce: Aug. 13, 1979
For: [ Playing Cards ]

International 016 - Primary Class U.S Class(es): 002, 005, 022, 023, 029, 037, 038, 050
Class(es):
Class Status: SECTION 8 - CANCELLED
Basis: 1(a) 44(e)
First Use: Oct. 11, 1887 Use in Commerce: Oct. 11, 1935
For: [ Toy Equipment Sold as a Unit for Playing a Game-Namely, (1) Toy Automatic Pitching Machine Including Pitching Device, Balls and
Bat, (2) Toy Light Emitting Rifle, Projector for Projecting an Image of a Flying Duck which Falls When Hit by Beam of Light and Screen,
(3) Toy Light Emitting Pistol and Device Including Animal or Gunman which Falls When Hit by a Light Beam, and (4) Toy Electronic
Battery Operated Hand Held Game and Clock Combination ]
International 028 - Primary Class U.S Class(es): 022, 023, 038, 050
Class(es):
Class Status: SECTION 8 - CANCELLED
Basis: 1(a) 44(e)
First Use: Dec. 16, 1967 Use in Commerce: Apr. 1969
Basis Information (Case Level)

Filed Use: Yes Currently Use: Yes
Filed ITU: No Currently ITU: No
Filed 44D: No Currently 44E: Yes
Filed 44E: Yes Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information

Owner Name: NINTENDO OF AMERICA INC.
Owner Address: 4600 150th Avenue NE
Redmond, WASHINGTON UNITED STATES 98052
Legal Entity Type: CORPORATION State or Country WASHINGTON
Where Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: Steven M. Espenshade Docket Number: NINT440US1
Attorney Primary tmcentral@pirkeybarber.com Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent Steven M. Espenshade
Name/Address: Pirkey Barber PLLC
1801 East 6th Street, Suite 300
Austin, TEXAS UNITED STATES 78702
Phone: (512) 482-5242
Correspondent e- tmcentral@pirkeybarber.com sespenshade@pirke Correspondent e- Yes
mail: ybarber.com kcilino@pirkeybarber.com mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Nov. 03, 2022 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Nov. 03, 2022 REGISTERED AND RENEWED (THIRD RENEWAL - 10 YRS) 70833
Nov. 03, 2022 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 70833
Oct. 28, 2022 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 70833
Oct. 14, 2022 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Oct. 14, 2022 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
Oct. 14, 2022 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
Apr. 28, 2022 TEAS SECTION 8 & 9 RECEIVED
Apr. 09, 2021 NOTICE OF SUIT
Jul. 02, 2020 NOTICE OF SUIT
Oct. 17, 2018 NOTICE OF SUIT
Apr. 24, 2013 NOTICE OF ACCEPTANCE OF SEC. 8 - E-MAILED
Apr. 24, 2013 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 67603
Apr. 24, 2013 REGISTERED - SEC. 9 GRANTED/CHECK RECORD FOR SEC. 8 67603
Apr. 24, 2013 REGISTERED - PARTIAL SEC. 8 (10-YR) ACCEPTED 67603
Apr. 17, 2013 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED 67603
Apr. 17, 2013 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Aug. 08, 2012 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888
Aug. 08, 2012 TEAS CHANGE OF OWNER ADDRESS RECEIVED
May 05, 2011 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888
May 05, 2011 TEAS CHANGE OF OWNER ADDRESS RECEIVED
Apr. 09, 2008 CASE FILE IN TICRS
Jan. 18, 2003 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS)
Jan. 18, 2003 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Oct. 07, 2002 REGISTERED - COMBINED SECTION 8 (10-YR) & SEC. 9 FILED
Oct. 07, 2002 PAPER RECEIVED
Jan. 24, 1989 REGISTERED - PARTIAL SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK.
Oct. 24, 1988 REGISTERED - SEC. 8 (6-YR) & SEC. 15 FILED
Oct. 26, 1982 REGISTERED-PRINCIPAL REGISTER
Aug. 03, 1982 PUBLISHED FOR OPPOSITION
TM Staff and Location Information

TM Staff Information - None
File Location
Current Location: GENERIC WEB UPDATE Date in Location: Nov. 03, 2022
Assignment Abstract Of Title Information

Summary
Total Assignments: 1 Registrant: Nintendo Co., Ltd.
Assignment 1 of 1
Conveyance: ASSIGNS THE ENTIRE INTEREST AND THE GOODWILL

Reel/Frame: 0430/0518 Pages: 2
Date Recorded: Dec. 13, 1982
Supporting No Supporting Documents Available
Documents:
Assignor
Name: NINTENDO CO.LTD. Execution Date: Nov. 25, 1982
Legal Entity Type: CORPORATION State or Country JAPAN
Where Organized:
Assignee
Name: NINTENDO OF AMERICA INC.
Where Organized:
Address: 18340 SOUTHCENTER PARKWAY
SEATTLE, WASHINGTON 98188
Correspondent
Correspondent HOLMAN & STERN
Name:
Correspondent 2401 19TH ST. N.W.
Address: WASHINGTON, DC 20009
Proceedings
Summary
Number of 1
Proceedings:
Type of Proceeding: Opposition
Proceeding 91088060 Filing Date: Jun 19, 1992

Number:
Status: Terminated Status Date: Sep 10, 1996
Interlocutory TERRY E HOLTZMAN
Attorney:
Defendant
Name: TEXAS ENDOSURGERY INSTITUTE
Correspondent GARY W. HAMILTON
Address: AKIN, GUMP, STRAUSS, HAUER & FELD, LLP
1900 FROST BANK PLAZA 816 CONGRESS AVENUE
AUSTIN TX UNITED STATES , 78701
Associated marks
Registration
Mark Application Status Serial Number
Number
GYN-T-ENDO 74162106
Plaintiff(s)
Name: NINTENDO OF AMERICA, INC.
Correspondent JERALD E. NAGAE
Address: CHRISTENSEN, O'CONNOR, JOHNSON &
KINDNESS 2800 PACIFIC 1ST CENTRE, 1420 5TH AVE.
SEATTLE WA UNITED STATES , 98101-2347
Associated marks
Registration
Mark Application Status Serial Number
Number
NINTENDO 73271433 1213822
Prosecution History
Entry Number History Text Date Due Date
30 TERMINATED Sep 10, 1996
29 BOARD'S DECISION: SUSTAINED Sep 10, 1996
28 WITHDRAWAL OF APPLICATION Aug 20, 1996
27 P'S MOT FOR EXTEN. OF TIME W/ CONSENT Jun 11, 1996
26 TRIAL DATES RESET May 23, 1996
25 ANSWER TO AMENDED NOT. OF OPPOSITION Apr 29, 1996
24 BOARDS DEC: APPS MOTION DENIED/ OPPOSERS MOTION GRANTED/TD RESET Mar 29, 1996
23 SUSPENDED PENDING DISP OF OUTSTNDNG MOT Dec 09, 1993
22 STIPULATION FOR AN EXTENSION OF TIME Nov 05, 1993
21 STIP TO EXT Jul 09, 1993
20 D'S RESPONSE TO PL'S OPPOSITION TO MOT FOR SJ Jun 24, 1993
19 PL'S REPLY TO D'S OPPOSITION TO MOT FOR LEAVE Jun 17, 1993
18 STIP TO EXT Jun 14, 1993
17 PLS LETTER RE:COMMUNICATION Jun 08, 1993
16 DEF'S MEMO IN SUPPORT OF RESPONSE IN OPP TO PLS MOT FOR LEAVE Jun 07, 1993
15 DEF'S RESPONSE IN OPP TO PLS MOT FOR LEAVE Jun 07, 1993
14 PLS ORIGINAL SIGNED DECLARATION OF STACY QUAN Jun 07, 1993
PLS SUBMISSION OF NEW DECLARATION OF STACY QUAN IN OPP TO DEF'S MOT
13 FOR SJ Jun 01, 1993
12 PLS OPP TO DEF'S MOT FOR SUMMARY JUDGE- MENT Jun 01, 1993
11 PL MOT FOR LEAVE TO FILE AMENDED OPP May 11, 1993
10 DEF'S BRIEF IN SUPPORT OF SUMMARY JUDGMENT May 10, 1993
DEF'S DECLARATION OF DR. T.G. VANCAILLIE TO SUPPORT SUMMARY
9 JUDGMENT May 10, 1993
8 DEF'S MOT FOR SUMMARY JUDGMENT May 10, 1993

7 STIPULATION FOR AN EXTENSION OF TIME Mar 05, 1993
6 STIP. TO RESET TRIAL DATES Jan 11, 1993
5 TRIAL DATES SET Oct 09, 1992
4 ANSWER Sep 28, 1992
3 PENDING, INSTITUTED Aug 19, 1992
2 NOTICE SENT; ANSWER DUE (DUE DATE) Aug 19, 1992 Sep 28, 1992
1 FILED AND FEE Jun 19, 1992
Mark: NINTENDO
US Serial Number: 79344950 Application Filing Apr. 11, 2022

Date:
US Registration 7123503 Registration Date: Aug. 01, 2023
Number:
Register: Principal
Mark Type: Trademark, Service Mark
Descriptor:
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Aug. 01, 2023
Publication Date:May 16, 2023
Mark Information
Mark Literal NINTENDO
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Related Properties Information

International 1671924A
Registration
Number:
International Apr. 11, 2022
Registration Date:
Goods and Services

Note:
For: Laundry detergent; laundry soap; soap, namely, bath soap, bar soap, body wash for humans or animals; shampoos; shampoos for
pets; non-medicated dentifrices; toothpaste; non-medicated mouth wash and rinse; cosmetics; bath preparations, not for medical
purposes; hair spray; mascara; decorative transfers for cosmetic purposes; temporary tattoo transfers for use as cosmetics; cosmetics
for children; beauty masks; perfumery; air fragrancing preparations; air fragrance reed diffusers; room fragrances; fragrance sachets;
pet fragrances; false nails; false eyelashes; nail art stickers
International 003 - Primary Class U.S Class(es): 001, 004, 006, 050, 051, 052
Class(es):
Basis: 66(a)
For: Cough syrups; cough drops; eye drops; antiseptics; first aid kits; adhesive bandages; bandages for dressings; cotton for medical
purposes; babies' diapers; powdered milk for babies; nutritional supplements; vitamin supplements; food for babies
International 005 - Primary Class U.S Class(es): 005, 006, 018, 044, 046, 051, 052
Class(es):
Basis: 66(a)
For: Recorded electronic game programs; downloadable electronic game programs; recorded video game programs; downloadable video
game programs; video game cartridges; memory cards for video game machines; cases for smartphones; covers for smartphones;
recorded computer game software; downloadable computer game software for use on mobile and cellular phones; downloadable
image files containing artwork, text, audio, videos featuring video games; downloadable music files; downloadable electronic
publications, namely, e-books featuring fiction stories, booklets, manuals and newsletters in the field of video games; headphones;
earphones; batteries
International 009 - Primary Class U.S Class(es): 021, 023, 026, 036, 038
Class(es):
Basis: 66(a)
For: Electric lights for Christmas trees; lamps; standard lamps

Class(es):
Basis: 66(a)
For: Key rings; key chains comprised of split rings with decorative fobs or trinkets; charms for key rings; jewelry boxes; commemorative
coins; collectible coins; jewelry; necklaces; bracelets; jewelry charms; earrings; tie pins; rings being jewelry; medals; ornamental lapel
pins; shoe jewelry; watches; clocks; watch bands
Class(es):
Basis: 66(a)
For: Office requisites, namely, office binders and file folders; wrapping paper; paper bags and sacks; place mats of paper; coasters of
paper; table napkins of paper; tablecloths of paper; paper; stationery; printed notebooks; pen cases; paint boxes for use in schools;
writing instruments; pens; pencils; rubber erasers; pencil sharpeners, electric or non-electric; printed postcards; printed greeting cards;
stickers; wall decals; printed matter, namely, calendars, children's activities books, magazines and manuals in the field of video games;
Printed books in the field of children's entertainment, fiction stories, and video games; printed comic books; printed posters; paintings;
photograph stands; paper party decorations
Class(es):
Basis: 66(a)
For: Clothing for pets; collars for animals; bags, namely, book bags, carry-on bags, shoulder bags, handbags, backpacks, drawstring bags,
travel bags, and luggage; school bags; rucksacks; suitcases; credit card cases; purses; wallets; key cases; luggage tags; garment
bags for travel; bags for sports; vanity cases, not fitted; umbrellas
Class(es):
Basis: 66(a)
For: Pillows; cushions; packaging containers of plastic; nameplates, not of metal; fans for personal use, non-electric; beds for household
pets; furniture; chests for toys; wind chimes; cradles; infant walkers; camping mattresses; picture frames; statues of wood, wax, plaster
or plastic
Class(es):
Basis: 66(a)
For: Floss for dental purposes; hair brushes; combs; brushes for washing up; toothbrushes; fitted vanity cases; cosmetic utensils, namely,
cosmetic brushes; containers for household or kitchen use; drinking flasks; glass bowls; soup bowls; utensils for kitchen and cleaning
purposes, namely, serving spoons, serving forks, and chopsticks; mugs; cups; dishes; plates; paper plates; cookie jars; lunch boxes;
drinking bottles for sports; drinking straws; coasters, not of paper or textile; place mats of plastic; tablemats, not of paper or textile;
trays for household purposes; waste baskets; coin banks; soap holders; dishes for soap
Class(es):
Basis: 66(a)
For: Fabrics for textile use; adhesive fabric for application by heat; towels of textile; handkerchiefs of textile; quilts; children's blankets; bed
blankets; picnic blankets; throws; fleece blankets; travelling rugs; lap robes; covers for cushions; pillowcases; bed linen; tablemats of
textile; table napkins of textile; place mats of textile; coasters of textile; flags of textile or plastic; banners of textile or plastic; blankets
for household pets; wall hangings of textile; unfitted fabric furniture covers; bed covers; curtains of textile or plastic; household linen;
sleeping bags
International 024 - Primary Class U.S Class(es): 042, 050
Class(es):
Basis: 66(a)
For: Clothing, namely, polo shirts, sweatshirts, parkas, jackets, raincoats, pants, dresses, sweatpants, skirts, and sweaters; shirts; tee-
shirts; pajamas; underwear; bathing suits; socks; scarves; neck scarves; ear muffs; gloves; bibs not of paper; hats; caps being
headwear; cap peaks; belts for clothing; footwear; sports shoes; sandals; slippers; masquerade costumes; Halloween costumes
International 025 - Primary Class U.S Class(es): 022, 039
Class(es):
Basis: 66(a)
For: Carpets for automobiles; mats, namely, bath mats, door mats, and personal exercise mats; textile floor mats for use in the home;
carpets; carpets and rugs; rugs; wall hangings, not of textile; wallpaper
Class(es):
Basis: 66(a)
For: Games, namely, card games, promotional game cards, puzzles, trading card games; toys, namely, toy balls, toy key chains, toy
figures, water toys, plush toys, inflatable toys, party favors in the nature of small toys, toy balloons, toy building blocks, toy vehicle; ride-
on toys; ride-on toys and accessories therefor; stuffed toys; dolls; portable games with liquid crystal displays; protective films adapted
for screens for portable games; video game machines; controllers for game consoles; hand-held consoles for playing video games;
arcade video game machines; board games; playing cards; ornaments for Christmas trees, except lights, candles and confectionery;
protective carrying cases specially adapted for handheld video games
Class(es):
Basis: 66(a)
For: Fruit-based snack food; potato chips; milk products excluding ice cream, ice milk and frozen yogurt; cheese; milk beverages, milk
predominating; yogurt; frozen fruits; preserved meats and sausages; canned fish; processed fish; jellies for food; jams; prepared nuts;
soups; preparations for making soup
Class(es):
Basis: 66(a)
For: Tea; tea-based beverages; coffee; coffee-based beverages; cocoa; cocoa-based beverages; pastries; candies; ice cream; cookies;
chocolate; popcorn; chewing gum; bread and buns; sandwiches; pizzas; pies; cakes; pancakes; frozen yogurt; crackers; mints for
breath freshening; seasonings; ketchup; dressings for salad; cereal preparations, namely, oatmeal, corn flakes, breakfast cereals, and
cereal bars; noodles; pasta; pasta sauce; rice
Class(es):
Basis: 66(a)
For: Soda water; table waters; fruit juice; soft drinks; vegetable juices being beverages; non-alcoholic carbonated beverages; non-alcoholic
sparkling fruit juice beverages; non-alcoholic fruit juice beverages; whey beverages
International 032 - Primary Class U.S Class(es): 045, 046, 048
Class(es):
Basis: 66(a)
For: Advertising; public relations; organization of exhibitions for commercial or advertising purposes; demonstration of goods; promotion of
goods and services through sponsorship of sports events; marketing services; customer loyalty services and customer club services,
for commercial, promotional and/or advertising purposes; marketing, advertising, and promoting the retail goods and services of others
through wireless electronic devices; online retail store services for downloadable and pre-recorded music and movies; retail store
services featuring games; retail store services featuring virtual game goods, namely, virtual footwear, clothing, headwear, eyewear,
bags, art, toys, accessories, digital animated and non-animated designs and characters; retail store services featuring toys
Class(es):
Basis: 66(a)
For: Providing telecommunications connections to a global computer network; communications by computer terminals; computer aided
transmission of messages and images; video-on-demand transmission; providing online forums for transmission of messages among
computer users; providing an online forum for video games; transmission of greeting cards online; streaming of data; streaming of
games and digital media content on the internet; providing information in the field of telecommunications
Class(es):
Basis: 66(a)
For: Entertainment services, namely, providing non-downloadable images featuring images of characters and scenes from an electronic
game via a global computer network and wireless networks; entertainment services, namely, providing non-downloadable prerecorded
music and sounds in the field of video games, all on-line via a global computer network; entertainment services, namely, providing
temporary use of non-downloadable video games; entertainment services, namely, providing online electronic games; entertainment
services, namely, providing on-line, non-downloadable virtual footwear, clothing, headwear, eyewear, bags, art, toys, accessories,
digital animated and non-animated designs and characters for use in virtual environments created for entertainment purposes;
entertainment services, namely, providing virtual environments in which users can interact for recreational, leisure or entertainment
purposes; arranging and conducting of video game events for entertainment purposes; organizing, arranging, and conducting virtual
electronic game events; providing information in the field of entertainment; providing non-downloadable online electronic publications,
namely, online journals and interactive online blogs featuring user generated or specified content in the field of video games and online
publications in the nature of e-books in the field of video games; providing on-line videos featuring video games, not downloadable;
providing online music, not downloadable; presentation of live show performances; presentation of musical performances; arranging
and conducting of concerts; organization and arrangement of video game events for entertainment purposes; organization and
arrangement of entertainment shows and events; providing on-line computer games; organization of electronic game competitions for
entertainment purposes; providing amusement arcade services
Class(es):
Basis: 66(a)

Filed Use: No Currently Use: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: Yes
Filed 66A: Yes Currently No Basis: No
Filed No Basis: No

Owner Name: Nintendo of America Inc.
Redmond WA 98052
UNITED STATES
Legal Entity Type: Corporation State or Country WASHINGTON
Where Organized:
Attorney of Record
Attorney Name: Steven M. Espenshade Docket Number: NINT440US
Correspondent
1801 East 6th Street
Suite 300
Phone: 512-482-5242
Correspondent e- tmcentral@pirkeybarber.com ninprosteam@pirkey Correspondent e- Yes
mail: barber.com mail Authorized:
Prosecution History
Proceeding
Date Description
Number
Nov. 02, 2023 FINAL DISPOSITION NOTICE SENT TO IB
Nov. 02, 2023 FINAL DISPOSITION PROCESSED 70029
Nov. 01, 2023 FINAL DISPOSITION NOTICE CREATED, TO BE SENT TO IB
Aug. 01, 2023 NOTICE OF REGISTRATION CONFIRMATION EMAILED
Aug. 01, 2023 REGISTERED-PRINCIPAL REGISTER
May 17, 2023 NOTIFICATION PROCESSED BY IB
May 16, 2023 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
May 16, 2023 PUBLISHED FOR OPPOSITION
May 02, 2023 REFUSAL PROCESSED BY IB
Apr. 26, 2023 NOTIFICATION OF POSSIBLE OPPOSITION SENT TO IB
Apr. 26, 2023 NOTICE OF START OF OPPOSITION PERIOD CREATED, TO BE SENT TO IB
Apr. 26, 2023 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Apr. 12, 2023 APPROVED FOR PUB - PRINCIPAL REGISTER
Apr. 12, 2023 EXAMINER'S AMENDMENT ENTERED 88888
Apr. 12, 2023 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED
Apr. 12, 2023 EXAMINERS AMENDMENT E-MAILED
Apr. 12, 2023 EXAMINERS AMENDMENT -WRITTEN 83191
Apr. 02, 2023 NON-FINAL ACTION MAILED - REFUSAL SENT TO IB
Apr. 01, 2023 REFUSAL PROCESSED BY MPU 74217
Feb. 14, 2023 NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
Feb. 13, 2023 NON-FINAL ACTION WRITTEN 83191
Feb. 05, 2023 NON-FINAL ACTION (IB REFUSAL) WITHDRAWN FOR REVIEW 70029
Nov. 22, 2022 NON-FINAL ACTION (IB REFUSAL) PREPARED FOR REVIEW
Nov. 21, 2022 NON-FINAL ACTION WRITTEN 83191
Nov. 17, 2022 ASSIGNED TO EXAMINER 83191
Nov. 10, 2022 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888
Nov. 10, 2022 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Nov. 10, 2022 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
Nov. 10, 2022 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
Nov. 10, 2022 TEAS CHANGE OF OWNER ADDRESS RECEIVED
Aug. 12, 2022 CHANGE OF OWNER RECEIVED FROM IB
Jul. 26, 2022 APPLICATION FILING RECEIPT MAILED
Jul. 21, 2022 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
Jul. 20, 2022 LIMITATION FROM ORIGINAL APPLICATION ENTERED 92867
Jul. 14, 2022 SN ASSIGNED FOR SECT 66A APPL FROM IB
International Registration Information (Section 66a)

International 1671924A International Apr. 11, 2022
Number:
Priority Claimed Yes Date of Section 67 Oct. 18, 2021
Flag: Priority Claim:
Intl. Registration REQUEST FOR EXTENSION OF PROTECTION Date of Jul. 14, 2022
Status: PROCESSED International
Registration
Status:
Notification of Jul. 14, 2022 Date of Automatic Jan. 14, 2024
Designation Date: Protection:
International Apr. 11, 2032
Registration
Renewal Date:
First Refusal Flag: Yes

File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Aug. 01, 2023
Mark: NINTENDO 64
US Serial Number: 75688943 Application Filing Apr. 21, 1999

Date:
US Registration 2372472 Registration Date: Aug. 01, 2000
Number:
Register: Principal
Descriptor:

Status Date: Aug. 06, 2020
Publication Date:Mar. 14, 2000
Mark Information
Mark Literal NINTENDO 64
Elements:
Claim:
Mark Drawing 1 - TYPESET WORD(S) /LETTER(S) /NUMBER(S)
Type:
Goods and Services

Note:
For: electronic game programs; electronic game software; [electronic game cartridges; video game cartridges;] video game programs; and
video game software
Class(es):
Basis: 1(a)
First Use: Sep. 29, 1996 Use in Commerce: Sep. 29, 1996

Filed Use: Yes Currently Use: Yes
Filed 44E: No Currently 66A: No
Filed No Basis: No
Where Organized:
Attorney of Record
Correspondent
Phone: (512) 482-5242
Prosecution History
Proceeding
Date Description
Number
Apr. 09, 2021 NOTICE OF SUIT
Aug. 06, 2020 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Aug. 06, 2020 REGISTERED AND RENEWED (SECOND RENEWAL - 10 YRS) 77074
Aug. 06, 2020 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 77074
Aug. 06, 2020 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 77074
Jun. 09, 2020 TEAS SECTION 8 & 9 RECEIVED
Aug. 01, 2019 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Oct. 17, 2018 NOTICE OF SUIT
Jul. 30, 2010 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 68973
Jul. 30, 2010 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED
Jul. 29, 2010 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 68973
Jul. 27, 2010 TEAS SECTION 8 & 9 RECEIVED
Oct. 23, 2007 CASE FILE IN TICRS
Mar. 26, 2007 REGISTERED - SEC. 8 (6-YR) ACCEPTED 61619
Mar. 14, 2007 ASSIGNED TO PARALEGAL 61619
Feb. 01, 2007 REGISTERED - SEC. 8 (6-YR) FILED
Feb. 01, 2007 TEAS SECTION 8 RECEIVED
Aug. 01, 2000 REGISTERED-PRINCIPAL REGISTER
Feb. 11, 2000 NOTICE OF PUBLICATION
Dec. 28, 1999 PUBLISHED FOR OPPOSITION
Nov. 26, 1999 NOTICE OF PUBLICATION
Oct. 05, 1999 APPROVED FOR PUB - PRINCIPAL REGISTER
Sep. 21, 1999 ASSIGNED TO EXAMINER 76938

File Location
Current Location: GENERIC WEB UPDATE Date in Location: Aug. 06, 2020
Mark: NINTENDO DS

Date:
US Registration 3166135 Registration Date: Oct. 31, 2006
Number:
Register: Principal
Descriptor:

Status Date: Jan. 08, 2017
Publication Date:Nov. 15, 2005Notice of Allowance Date:Feb. 07, 2006
Mark Information
Mark Literal NINTENDO DS
Elements:
Claim:
Type:

Claimed Ownership 1213822, 1497674, 2372472 and others
of US
Registrations:
Goods and Services

Note:
For: cartridges featuring entertainment content; electronic game cartridges; [ electronic game machines; ] electronic game programs;
electronic game software; [ electronic handheld units for receipt and/or transmission of text, graphics and multimedia content; handheld
communication devices, namely, video game machines enabled for receipt and transmission of information, namely, data, text,
graphics, images, sound, music, audio, video, video games, signals, and messages; handheld wireless communication devices,
namely, video game machines enabled for receipt and transmission of information, namely, data, text, graphics, images, sound, music,
audio, video, video games, signals, and messages; interactive electronic game machines; interactive video game cartridges; interactive
video game programs; interactive video game software; ] video game cartridges; [ video game machine accessories, namely, carry
cases, computer stylus; video game machines with memory devices, namely, flash memory; ] video game programs; video game
software; [ wireless communication devices, namely, video game machines enabled for receipt and transmission of information,
namely, data, text, graphics, images, sound, music, audio, video, video games, signals, and messages; writing instruments for use with
computer/video game machine touch screen displays, namely, computer stylus ]
Class(es):
Basis: 1(a)
First Use: May 12, 2004 Use in Commerce: May 12, 2004

Filed Use: No Currently Use: Yes
Filed ITU: Yes Currently ITU: No
Filed No Basis: No

Where Organized:
Attorney of Record
Attorney Name: Jerald E. Nagae, Reg. No. 29,418 Docket Number: NOAM-2-31466
Attorney Primary efiling@cojk.com Attorney Email Yes
Correspondent
Correspondent Jerald E. Nagae, Reg. No. 29,418
Name/Address: Christensen O'Connor Johnson Kindness
1201 Third Avenue, Suite 3600
Seattle, WASHINGTON UNITED STATES 98101-3029
Phone: 206.682.8100 Fax: 206.224.0779
Correspondent e- efiling@cojk.com Correspondent e- Yes
mail: mail Authorized:
Prosecution History
Proceeding
Date Description
Number
Jan. 08, 2017 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Jan. 08, 2017 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 71359
Jan. 08, 2017 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 71359
Jan. 07, 2017 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 71359
Oct. 28, 2016 TEAS SECTION 8 & 9 RECEIVED
Oct. 31, 2015 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Nov. 26, 2012 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Nov. 26, 2012 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 69471
Nov. 26, 2012 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 69471
Oct. 31, 2012 TEAS SECTION 8 & 15 RECEIVED
Jun. 07, 2012 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888
Jun. 07, 2012 TEAS CHANGE OF OWNER ADDRESS RECEIVED
Oct. 31, 2006 REGISTERED-PRINCIPAL REGISTER
Sep. 26, 2006 LAW OFFICE REGISTRATION REVIEW COMPLETED 78287
Sep. 22, 2006 ASSIGNED TO LIE 78287
Sep. 14, 2006 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Sep. 14, 2006 EXAMINER'S AMENDMENT ENTERED 88888
Sep. 14, 2006 EXAMINERS AMENDMENT E-MAILED
Sep. 14, 2006 SU-EXAMINER'S AMENDMENT WRITTEN 76505
Sep. 05, 2006 STATEMENT OF USE PROCESSING COMPLETE 76569
Aug. 04, 2006 USE AMENDMENT FILED 76569
Aug. 04, 2006 TEAS STATEMENT OF USE RECEIVED
Feb. 07, 2006 NOA MAILED - SOU REQUIRED FROM APPLICANT
Nov. 15, 2005 PUBLISHED FOR OPPOSITION
Oct. 26, 2005 NOTICE OF PUBLICATION
Sep. 27, 2005 LAW OFFICE PUBLICATION REVIEW COMPLETED 73797
Sep. 23, 2005 ASSIGNED TO LIE 73797
Sep. 21, 2005 APPROVED FOR PUB - PRINCIPAL REGISTER
Sep. 10, 2005 TEAS/EMAIL CORRESPONDENCE ENTERED 70997
Sep. 01, 2005 CORRESPONDENCE RECEIVED IN LAW OFFICE 70997
Sep. 01, 2005 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Mar. 02, 2005 NON-FINAL ACTION E-MAILED 6325
Mar. 02, 2005 NON-FINAL ACTION WRITTEN 76505
Mar. 01, 2005 ASSIGNED TO EXAMINER 76505
Aug. 06, 2004 NEW APPLICATION ENTERED

File Location
Current Location: GENERIC WEB UPDATE Date in Location: Jan. 08, 2017
Mark: NINTENDO 3DS

Date:
US Registration 4165097 Registration Date: Jun. 26, 2012
Number:
Register: Principal
Descriptor:

Status Date: Oct. 28, 2022
Publication Date:Aug. 09, 2011Notice of Allowance Date:Oct. 04, 2011
Mark Information
Mark Literal NINTENDO 3DS
Elements:
Claim:
Mark Drawing 5 - AN ILLUSTRATION DRAWING WITH WORD(S) /LETTER(S)/ NUMBER(S) INSTYLIZED FORM
Type:
Description of The mark consists of the words "Nintendo 3DS" on one line.
Mark:
Color(s) Claimed: Color is not claimed as a feature of the mark.

Claimed Ownership 1213822, 1440706, 1628966 and others
of US
Registrations:
Foreign Information
Foreign 5368117 Foreign Nov. 12, 2010
Number:
Foreign JAPAN Foreign Expiration Nov. 12, 2020
Country:
Foreign 5354504 Foreign Sep. 17, 2010

Number:
Foreign JAPAN Foreign Expiration Sep. 17, 2020
Country:
Goods and Services

Note:
For: (Based on Use in Commerce and Based on Section 44(e)) [ Computer game programs for consumer video game apparatus; ROM
cards, and ROM cartridges recorded with programs for consumer video game apparatus; digital storage media recorded with programs
for consumer video game apparatus; electronic storage media recorded with programs for consumer video game apparatus; ] [
controllers and memory cards for consumer video game apparatus; ] AC adapters for consumer game apparatus; parts and fittings for
consumer video games, namely, power supplies and battery chargers; computer game programs for hand-held game apparatus with
liquid crystal displays; ROM cards and ROM cartridges recorded with programs for hand-held game apparatus with liquid crystal
displays; digital storage media recorded with programs for hand-held game apparatus with liquid crystal displays; electronic storage
media recorded with programs for hand-held game apparatus with liquid crystal displays; [ hand-held terminals for displaying electronic
publications; ] electronic machines, apparatus and their parts, namely, electronic game software; [ digital cameras; video cameras; ][
audio players; ][ audio recorders; storable music files downloadable via a global computer network; storable image files downloadable
via a global computer network featuring photographs, art, video/computer game characters, video/computer game scenes, and
video/computer game images; ] electronic publications, namely, [ magazines, ] manuals [ and players' guides ] featuring video games,
recorded on computer media; [ pedometers; cameras; ] [ photographic machines and apparatus, namely, hand-held video game
apparatus with liquid crystal display, with an internal camera; cinematographic machines and apparatus, namely, hand-held video
game apparatus with liquid crystal display, with an internal video camera; ] pre-recorded cartridges and memory cards featuring
entertainment, educational, and informational content, pertaining to video games, computer games, puzzles, music and stories;
specially adapted cases for video game cartridges and video game memory cards; [ computer game cartridges; computer game
memory cards; computer game programs; computer game software; ] electronic game cartridges; electronic game memory cards;
electronic game programs; electronic game software; [ headphones and headsets; interactive electronic game cartridges; interactive
electronic game memory cards; interactive electronic game programs; interactive electronic game software; interactive video game
cartridges; interactive video game memory cards; interactive video game programs; interactive video game software; pre-made wraps
and skins for video game machines; ] video game cartridges; video game memory cards; video game programs; video game software;
writing instruments for use with computer/video game machine touch screen displays, namely, computer stylus; downloadable
multimedia files, namely, games; downloadable computer game programs; downloadable computer game software; downloadable
electronic game programs; downloadable electronic game software; downloadable interactive electronic game programs;
downloadable interactive game software; downloadable video game programs; downloadable video game software; downloadable
electronic publications, namely, game instruction booklets; (Based on Section 44(e)) [ Video game consoles for use with an external
display screen or monitor; optical discs, CD- ROMs, and DVD-ROMs recorded with programs for consumer video game apparatus; ] [
joysticks for consumer video game apparatus; ][ parts and fittings for consumer video games, namely, transformers and cables; optical
discs, CD-ROMs, and DVD-ROMs recorded with programs for hand-held game apparatus with liquid crystal displays; ] batteries;
chargeable batteries
Class(es):
Basis: 1(a) 44(e)
First Use: Mar. 27, 2011 Use in Commerce: Mar. 27, 2011

Filed 44D: Yes Currently 44E: Yes
Filed 44E: Yes Currently 66A: No
Filed No Basis: No

Where Organized:
Attorney of Record
Correspondent
Phone: (512) 482-5242
Domestic Representative
&nbspDomestic Jerald E. Nagae, Reg. No. 29,418 Phone: 206-682-8100
Representative
Name:
Fax: 206-224-0779
&nbspDomestic efiling@cojk.com &nbspDomestic Yes
Representative e- Representative e-
mail: mail Authorized:
Prosecution History
Proceeding
Date Description
Number
Oct. 28, 2022 NOTICE OF ACCEPTANCE OF SEC. 8 & 9 - E-MAILED
Oct. 28, 2022 REGISTERED AND RENEWED (FIRST RENEWAL - 10 YRS) 76293
Oct. 28, 2022 REGISTERED - SEC. 8 (10-YR) ACCEPTED/SEC. 9 GRANTED 76293
Oct. 28, 2022 CASE ASSIGNED TO POST REGISTRATION PARALEGAL 76293
Jun. 26, 2021 COURTESY REMINDER - SEC. 8 (10-YR)/SEC. 9 E-MAILED
Jul. 03, 2018 NOTICE OF ACCEPTANCE OF SEC. 8 & 15 - E-MAILED
Jul. 03, 2018 REGISTERED - SEC. 8 (6-YR) ACCEPTED & SEC. 15 ACK. 67110
Jun. 21, 2018 TEAS SECTION 8 & 15 RECEIVED
Jun. 26, 2017 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
Jun. 20, 2016 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Apr. 14, 2016 CORRECTION UNDER SECTION 7 Â– PROCESSED 68973
Jul. 25, 2012 TEAS SECTION 7 REQUEST RECEIVED
Jul. 25, 2012 TEAS CHANGE OF CORRESPONDENCE RECEIVED
Jun. 26, 2012 REGISTERED-PRINCIPAL REGISTER
May 22, 2012 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
May 21, 2012 LAW OFFICE REGISTRATION REVIEW COMPLETED 68123
May 15, 2012 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Apr. 25, 2012 STATEMENT OF USE PROCESSING COMPLETE 76874
Apr. 04, 2012 USE AMENDMENT FILED 76874
Apr. 25, 2012 CASE ASSIGNED TO INTENT TO USE PARALEGAL 76874
Apr. 04, 2012 TEAS STATEMENT OF USE RECEIVED
Dec. 15, 2011 APPLICANT/CORRESPONDENCE CHANGES (NON-RESPONSIVE) ENTERED 88888
Dec. 15, 2011 TEAS CHANGE OF OWNER ADDRESS RECEIVED
Oct. 04, 2011 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Aug. 17, 2011 ASSIGNMENT OF OWNERSHIP NOT UPDATED AUTOMATICALLY
Aug. 09, 2011 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Aug. 09, 2011 PUBLISHED FOR OPPOSITION
Jul. 01, 2011 LAW OFFICE PUBLICATION REVIEW COMPLETED 68123
Jun. 29, 2011 ASSIGNED TO LIE 68123
Jun. 11, 2011 APPROVED FOR PUB - PRINCIPAL REGISTER
Jun. 09, 2011 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Jun. 08, 2011 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Jun. 08, 2011 TEAS RESPONSE TO SUSPENSION INQUIRY RECEIVED
May 16, 2011 NOTIFICATION OF LETTER OF SUSPENSION E-MAILED 6332
May 16, 2011 LETTER OF SUSPENSION E-MAILED 6332
May 16, 2011 SUSPENSION LETTER WRITTEN 81899
Apr. 21, 2011 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Apr. 21, 2011 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Apr. 21, 2011 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Oct. 27, 2010 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Oct. 27, 2010 NON-FINAL ACTION E-MAILED 6325
Oct. 27, 2010 NON-FINAL ACTION WRITTEN 81899
Oct. 27, 2010 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Oct. 27, 2010 NON-FINAL ACTION E-MAILED 6325
Oct. 27, 2010 NON-FINAL ACTION WRITTEN 81899
Oct. 20, 2010 ASSIGNED TO EXAMINER 81899
Jul. 13, 2010 NOTICE OF PSEUDO MARK MAILED
Jul. 12, 2010 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
Jul. 12, 2010 NEW APPLICATION ENTERED

File Location
Current Location: GENERIC WEB UPDATE Date in Location: Oct. 28, 2022
Assignment Abstract Of Title Information

Summary
Total Assignments: 1 Registrant: Nintendo of America Inc.
Assignment 1 of 1
Conveyance: ASSIGNS THE ENTIRE INTEREST

Reel/Frame: 4603/0550 Pages: 14
Date Recorded: Aug. 12, 2011
Supporting assignment-tm-4603-0550.pdf
Documents:
Assignor
Name: NINTENDO CO., LTD. Execution Date: Jul. 25, 2011
Legal Entity Type: CORPORATION State or Country JAPAN
Where Organized:
Assignee
Name: NINTENDO OF AMERICA INC.
Where Organized:
Address: 4600 150TH AVENUE NE
REDMOND, WASHINGTON 98052
Correspondent
Correspondent JERALD E. NAGAE, ESQ.
Name:
Correspondent CHRISTENSEN O'CONNOR JOHNSON KINDNESS
Address: 1420 FIFTH AVENUE, SUITE 2800
SEATTLE, WA 98101-2347
Mark: NINTENDO SWITCH
US Serial Number: 87977045 Application Filing Oct. 20, 2016

Date:
US Registration 5477313 Registration Date: May 22, 2018
Number:
Filed as TEAS RF: Yes Currently TEAS RF: Yes
Register: Principal
Mark Type: Trademark, Service Mark
Descriptor:
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: May 22, 2018
Publication Date:Apr. 25, 2017Notice of Allowance Date:Jan. 16, 2018
Mark Information
Mark Literal NINTENDO SWITCH
Elements:
Claim:
Type:

Child Of: 87209606
Goods and Services

Note:
For: Cartridges and memory cards containing puzzles, stories, and video games; Computer game programs; Computer game software;
Computer programs for parental controls in the field of video games; Downloadable computer game programs; Downloadable
computer game software; Downloadable computer programs; Downloadable electronic game programs; Downloadable electronic
game software; Downloadable multimedia files containing computer games, puzzles, stories and video games; 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; Video game cartridges; Video game memory cards; Video game memory devices, including, cartridges and memory cards;
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 Adapters, chargers, earphones, microphones, power adapters; Electronic
memory devices for use with electronic video and computer game systems
Class(es):
Basis: 1(a)
For: Action figures; Computer game machines; Electronic game consoles; Electronic game controllers and electronic game joysticks;
Electronic game controllers with an integrated video display; Electronic game machines; Electronic memory devices for use with
electronic video and computer game systems; 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; Toy action figures; Video game consoles; Video game controllers;
Video game joysticks; Video game machines
Class(es):
Basis: 1(a)
For: Providing information about video games, including downloadable video games, non-downloadable video games and online game
services by computer networks, handheld game apparatus 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 pictures and photographs by computer networks, hand held game apparatus and video game apparatus;
providing non-downloadable videos in the field of video games by computer networks, handheld game apparatus, and video game
apparatus; Providing non-downloadable video games and video game samples by computer network, handheld game apparatus and
video game apparatus; Providing online games and game samples by computer network, handheld game apparatus, and video game
apparatus
Class(es):
Basis: 1(a)
First Use: Oct. 20, 2016 Use in Commerce: Oct. 20, 2016

Filed No Basis: No

Where Organized:
Attorney of Record
Attorney Name: Steven M. Espenshade Docket Number: NINT589US1
Correspondent
Phone: (512) 482-5242
Prosecution History
Proceeding
Date Description
Number
May 22, 2023 COURTESY REMINDER - SEC. 8 (6-YR) E-MAILED
Jul. 02, 2020 NOTICE OF SUIT
May 22, 2018 REGISTERED-PRINCIPAL REGISTER
Apr. 17, 2018 NOTICE OF ACCEPTANCE OF STATEMENT OF USE E-MAILED
Apr. 16, 2018 ALLOWED PRINCIPAL REGISTER - SOU ACCEPTED
Apr. 14, 2018 TEAS/EMAIL CORRESPONDENCE ENTERED 70138
Apr. 14, 2018 CORRESPONDENCE RECEIVED IN LAW OFFICE 70138
Apr. 13, 2018 ASSIGNED TO LIE 70138
Apr. 04, 2018 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Apr. 03, 2018 ATTORNEY/DOM.REP.REVOKED AND/OR APPOINTED
Apr. 03, 2018 TEAS REVOKE/APP/CHANGE ADDR OF ATTY/DOM REP RECEIVED
Mar. 30, 2018 NOTIFICATION OF NON-FINAL ACTION E-MAILED
Mar. 30, 2018 NON-FINAL ACTION E-MAILED
Mar. 30, 2018 SU - NON-FINAL ACTION - WRITTEN 77654
Mar. 13, 2018 STATEMENT OF USE PROCESSING COMPLETE 69302
Feb. 14, 2018 USE AMENDMENT FILED 69302
Mar. 13, 2018 DIVISIONAL PROCESSING COMPLETE
Feb. 14, 2018 DIVISIONAL REQUEST RECEIVED
Feb. 14, 2018 TEAS REQUEST TO DIVIDE RECEIVED
Feb. 23, 2018 TEAS POST PUBLICATION AMENDMENT RECEIVED
Feb. 21, 2018 ITU OFFICE ACTION ISSUED FOR DIVISIONAL REQUEST 69302
Feb. 20, 2018 CASE ASSIGNED TO INTENT TO USE PARALEGAL 69302
Feb. 14, 2018 TEAS STATEMENT OF USE RECEIVED
Jan. 16, 2018 NOA E-MAILED - SOU REQUIRED FROM APPLICANT
Dec. 06, 2017 TTAB RELEASE CASE TO TRADEMARKS 235038
Dec. 06, 2017 OPPOSITION TERMINATED NO. 999999 235038
Dec. 06, 2017 OPPOSITION DISMISSED NO. 999999 235038
Jun. 13, 2017 OPPOSITION INSTITUTED NO. 999999 235038
May 24, 2017 EXTENSION OF TIME TO OPPOSE RECEIVED
Apr. 25, 2017 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Apr. 25, 2017 PUBLISHED FOR OPPOSITION
Apr. 05, 2017 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Mar. 14, 2017 APPROVED FOR PUB - PRINCIPAL REGISTER
Mar. 14, 2017 EXAMINER'S AMENDMENT ENTERED 88888
Mar. 14, 2017 NOTIFICATION OF EXAMINERS AMENDMENT E-MAILED 6328
Mar. 14, 2017 EXAMINERS AMENDMENT E-MAILED 6328
Mar. 14, 2017 EXAMINERS AMENDMENT -WRITTEN 77654
Mar. 11, 2017 TEAS/EMAIL CORRESPONDENCE ENTERED 88889
Mar. 10, 2017 CORRESPONDENCE RECEIVED IN LAW OFFICE 88889
Mar. 10, 2017 TEAS RESPONSE TO OFFICE ACTION RECEIVED
Feb. 07, 2017 NOTIFICATION OF NON-FINAL ACTION E-MAILED 6325
Feb. 07, 2017 NON-FINAL ACTION E-MAILED 6325
Feb. 07, 2017 NON-FINAL ACTION WRITTEN 77654
Feb. 07, 2017 LETTER OF PROTEST EVIDENCE REVIEWED-NO FURTHER ACTION TAKEN 77654
Feb. 06, 2017 LETTER OF PROTEST EVIDENCE FORWARDED
Jan. 30, 2017 ASSIGNED TO EXAMINER 77654
Oct. 25, 2016 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED
Oct. 24, 2016 NEW APPLICATION ENTERED

File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Apr. 16, 2018

Via Game File - Nintendo of America Inc. v. Yifei Bao, 91288084, No. 1 (T.T.a.B. Nov. 7, 2023)

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Via Game File - Nintendo of America Inc. v. Yifei Bao, 91288084, No. 1 (T.T.a.B. Nov. 7, 2023)

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ESTTA Tracking number: ESTTA1320639

Filing date: 11/07/2023

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Attorney informa- BRANDON M. RESS

Goods/services affected by opposition

Grounds for opposition

U.S. registration 7123503 Application date 04/11/2022

U.S. registration 2372472 Application date 04/21/1999

U.S. registration 3166135 Application date 07/27/2004

U.S. registration 4165097 Application date 07/08/2010

U.S. registration 5477313 Application date 10/20/2016

Attachments Dkt 1 - Notice of Opposition.pdf(287274 bytes )

Signature /Brandon M. Ress/

In Re Serial No.: 97687157 §

Opposer Nintendo of America Inc. (“Opposer” or “Nintendo”) believes it will be

priority and likelihood of confusion under 15 U.S.C. § 1052(d) based on Opposer’s

registered and common-law rights.

1. Opposer Nintendo is a Washington corporation with an address of 4600

150th Avenue NE, Redmond, Washington 98052.

2. According to USPTO records, Applicant Yifei Bao is a Chinese citizen

with an address of Group 4, Baoying Village Huangtaigang Town, Wancheng District

Nanyang, Henan CHINA 473033.

Nintendo and its NINTENDO Mark

3. Nintendo is an industry leader in the fields of video games, gaming

5. Nintendo’s NINTENDO video game consoles are among the best-selling

NINTENDO ENTERTAINMENT SYSTEM video game console in the United States

million units worldwide.

LEGEND OF ZELDA, and POKÉMON video game franchises.

7. In addition to video games and consoles, Nintendo also offers a wide

variety of merchandise under the NINTENDO mark, including video game

clothing, and other accessories.

through a variety of different means, including on its website at the domain

www.nintendo.com. As a result of such efforts, the NINTENDO mark has become

widely recognized and well-known as a designation of the products and services

9. Nintendo’s NINTENDO mark is inherently distinctive, serving to

10. Additionally, as a result of Nintendo’s long use and promotion of its

products and services of Nintendo by the mark.

for toys, clothing, accessories, and other goods and services.

United States trademark registrations covering the NINTENDO mark. Nintendo’s

NINTENDO 7123503 Class 9: Recorded electronic game programs;

NINTENDO 2372472 Class 9: electronic game programs; electronic game

NINTENDO 3166135 Class 9: cartridges featuring entertainment

NINTENDO 4165097 Class 9: electronic publications, namely, manuals

NINTENDO 5477313 Class 9: Cartridges and memory cards containing

1213822, 2372472, and 4165097 are incontestable pursuant to 15 U.S.C. § 1065.

The Opposed Application

Class 9 goods “Monoculars; Telescopes; Card reading equipment; Computer

peripherals; Ear buds; Earphone accessories, namely, earphone cushions, earphone

telephones; Memory expansion cards; Motorcycle helmets; Pet collar accessories,

claims a date of first use of November 15, 2022.

16. Nintendo commenced use of its NINTENDO mark prior to the

been continuous since it commenced use of the NINTENDO mark.

Mark that can be claimed by the Applicant.

GROUND FOR OPPOSITION—LIKELIHOOD OF CONFUSION

the Applicant’s Mark that can be claimed by the Applicant.

20. The Applicant’s Mark is confusingly similar to Nintendo’s NINTENDO

NIETNEDO or any other marks confusingly similar to Nintendo’s NINTENDO mark.

24. The Applicant’s Mark so resembles the NINTENDO mark as to be likely,

confusion, or to cause mistake, or to deceive. Applicant’s goods are closely related to

Applicant’s Mark are sponsored, endorsed, or approved by Nintendo, or are in some

25. The Application should thus be refused registration under 15 U.S.C.

GROUND FOR OPPOSITION—NO BONA FIDE USE OF THE MARK IN COMMERCE

27. On information and belief, Applicant was not using NIETNEDO in