3 ms·

The developer uses Nintendo's trademark "Mario" in the title of his video game project. (Edit: As pointed out in the comment below, the name "Mario" itself is

The developer uses Nintendo's trademark "Mario" in the title of his video game project. (Edit: As pointed out in the comment below, the name "Mario" itself is not trademarked, so to be correct the previous sentence should instead read "The developer uses Nintendo's trademark Mario in his video game project.") I'm not a lawyer but as far as I understand (unlike with copyright) Nintendo is legally obliged to react and protect it, right? Edit: Concern about trademark issues is also what apparently led to the Super Mario Clone FOSS project (http://sourceforge.net/projects/smclone/ http://sourceforge.net/projects/smclone/, note the URL) being renamed Secret Maryo Chronicles. I'm not sure if Nintendo ever contacted them or if it was a precautionary change. Edit 2: There's some interesting commentary from a professional lawyer on the issue of trademarking and copyrighting characters at http://www.ivanhoffman.com/characters.html http://www.ivanhoffman.com/characters.html, though it's from 2003.

Weltan 13y ago
They're not obligated to do so, but they do have the right to do so. The name Mario is not a trademark itself since common names cannot be trademarked, although product names containing the name Mario are trademarked by Nintendo, such as Super Mario. I think Nintendo has sufficient grounds to sue because this project uses the name Mario in concert with an actual rework of a Nintendo product which itself is copyright. Most likely they won't resort to a lawsuit right away, instead will send a cease and desist.
- pbhjpbhj 13y ago
  Common names can be used as trademarks. "Mario" is a current EU trademark held by Nintendo for categories 9, 28, 38 and 41. - http://esearch.oami.europa.eu/copla/trademark/data/007061501 http://esearch.oami.europa.eu/copla/trademark/data/007061501 ; - [UK:] http://www.ipo.gov.uk/tmcase/Results/1/UK00001182493 http://www.ipo.gov.uk/tmcase/Results/1/UK00001182493. The USPTO TESS db shows "Mario" is a character mark held by "Mario Camacho Foods, LLC". It may be that the protection afforded is far less as people generally in TM law have an [near] absolute right to trade under their given name.
  - networked 13y ago
    Your reply got me curious, so I tried searching the USPTO TESS [1] to match your results for the EU and the UK. With what appears to me to be the correct query, "(mario)[COMB] AND (nintendo)[OW]" [2], I found 39 results total and of which one was for the word "Mario" on its own [3] but that trademark was dead "because the applicant failed to respond or filed a late response to an Office action". According to what [4] says and given the time frame (filing date: Sep. 30, 1982; date abandoned: Dec. 23, 1983) this seems to imply that the trademark "Mario" was never granted. However, there are 22 trademarks that contain the word "Mario" and at least one other word that are live. Why did Nintendo let the application for "Mario" lapse? I can think of least three options: 1) it was by chance; 2) their lawyers decided the trademark won't be granted; 3) they thought it was somehow undesirable to own the trademark for the word "Mario"; I wonder what it really was. Anyway, you're right. The GP was mistaken that you cannot trademark common names [5]. Looks like he was right that "Mario" isn't a trademark of Nintendo's but for the wrong reason. [1] Trademark Electronic Search System, http://tmsearch.uspto.gov http://tmsearch.uspto.gov. [2] You can paste it into their "Free Form" search form. Unfortunately, it looks like you cannot link to search results directly. [3] http://tsdr.uspto.gov/#caseNumber=73397991&caseType=SERIAL_NO&searchType=statusSearch http://tsdr.uspto.gov/#caseNumber=73397991&caseType=SERIAL_N... [4] http://www.uspto.gov/trademarks/basics/abandon.jsp http://www.uspto.gov/trademarks/basics/abandon.jsp [5] For US examples see, e.g., http://tsdr.uspto.gov/#caseNumber=74259941&caseType=SERIAL_NO&searchType=statusSearch http://tsdr.uspto.gov/#caseNumber=74259941&caseType=SERIAL_N... and http://tsdr.uspto.gov/#caseNumber=85026053&caseType=SERIAL_NO&searchType=statusSearch http://tsdr.uspto.gov/#caseNumber=85026053&caseType=SERIAL_N....
cookiecaper 13y ago
When people claim they're legally "obliged" to enforce their IP, they're saying that if they don't enforce it, it could possibly be argued that their ownership rights are diminished because the work was orphaned, just as abandoned physical property can lapse to the city if the owner is absent and the property unmaintained. They're not actually "obliged" to do anything with their property. Most of the time that argument is a convenient cop-out. You'd have to abandon your trademark pretty hard to lose the rights to it; leaving a few obscure online projects unmolested won't matter. The real deal is that companies are very protective of their IP because they don't want anything to potentially impact their brand(s), and lawyers are eager to bill for as many hours as they can. It's possible that IP owners could commit a small team of goodwill ambassadors to filter alleged infringements and send licenses instead of (or quick on the heels of) C&Ds to good projects, but who's going to do that?
- tedunangst 13y ago
  I believe the concern is that one obscure project becomes two obscure projects becomes four obscure projects becomes a not at all obscure project. Then somebody has to decide what dilutes the brand name and what doesn't. Zero tolerance policies, for all their other flaws, do provide a very simple decision tree.

Weltan 13y ago

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

pbhjpbhj 13y ago
Common names can be used as trademarks. "Mario" is a current EU trademark held by Nintendo for categories 9, 28, 38 and 41. - http://esearch.oami.europa.eu/copla/trademark/data/007061501 http://esearch.oami.europa.eu/copla/trademark/data/007061501 ; - [UK:] http://www.ipo.gov.uk/tmcase/Results/1/UK00001182493 http://www.ipo.gov.uk/tmcase/Results/1/UK00001182493. The USPTO TESS db shows "Mario" is a character mark held by "Mario Camacho Foods, LLC". It may be that the protection afforded is far less as people generally in TM law have an [near] absolute right to trade under their given name.
- networked 13y ago
  Your reply got me curious, so I tried searching the USPTO TESS [1] to match your results for the EU and the UK. With what appears to me to be the correct query, "(mario)[COMB] AND (nintendo)[OW]" [2], I found 39 results total and of which one was for the word "Mario" on its own [3] but that trademark was dead "because the applicant failed to respond or filed a late response to an Office action". According to what [4] says and given the time frame (filing date: Sep. 30, 1982; date abandoned: Dec. 23, 1983) this seems to imply that the trademark "Mario" was never granted. However, there are 22 trademarks that contain the word "Mario" and at least one other word that are live. Why did Nintendo let the application for "Mario" lapse? I can think of least three options: 1) it was by chance; 2) their lawyers decided the trademark won't be granted; 3) they thought it was somehow undesirable to own the trademark for the word "Mario"; I wonder what it really was. Anyway, you're right. The GP was mistaken that you cannot trademark common names [5]. Looks like he was right that "Mario" isn't a trademark of Nintendo's but for the wrong reason. [1] Trademark Electronic Search System, http://tmsearch.uspto.gov http://tmsearch.uspto.gov. [2] You can paste it into their "Free Form" search form. Unfortunately, it looks like you cannot link to search results directly. [3] http://tsdr.uspto.gov/#caseNumber=73397991&caseType=SERIAL_NO&searchType=statusSearch http://tsdr.uspto.gov/#caseNumber=73397991&caseType=SERIAL_N... [4] http://www.uspto.gov/trademarks/basics/abandon.jsp http://www.uspto.gov/trademarks/basics/abandon.jsp [5] For US examples see, e.g., http://tsdr.uspto.gov/#caseNumber=74259941&caseType=SERIAL_NO&searchType=statusSearch http://tsdr.uspto.gov/#caseNumber=74259941&caseType=SERIAL_N... and http://tsdr.uspto.gov/#caseNumber=85026053&caseType=SERIAL_NO&searchType=statusSearch http://tsdr.uspto.gov/#caseNumber=85026053&caseType=SERIAL_N....

cookiecaper 13y ago

When people claim they're legally "obliged" to enforce their IP, they're saying that if they don't enforce it, it could possibly be argued that their ownership rights are diminished because the work was orphaned, just as abandoned physical property can lapse to the city if the owner is absent and the property unmaintained. They're not actually "obliged" to do anything with their property. Most of the time that argument is a convenient cop-out. You'd have to abandon your trademark pretty hard to lose the rights to it; leaving a few obscure online projects unmolested won't matter. The real deal is that companies are very protective of their IP because they don't want anything to potentially impact their brand(s), and lawyers are eager to bill for as many hours as they can. It's possible that IP owners could commit a small team of goodwill ambassadors to filter alleged infringements and send licenses instead of (or quick on the heels of) C&Ds to good projects, but who's going to do that?

tedunangst 13y ago
I believe the concern is that one obscure project becomes two obscure projects becomes four obscure projects becomes a not at all obscure project. Then somebody has to decide what dilutes the brand name and what doesn't. Zero tolerance policies, for all their other flaws, do provide a very simple decision tree.