Petition for Cancellation Petitioner Information
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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1065227 Filing date: 06/30/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Petition for Cancellation Notice is hereby given that the following party has filed a petition to cancel the registration indicated below. Petitioner Information Name Trident, Inc. d/b/a/ Atlas Games Entity Corporation Citizenship Minnesota Address 202 3rd Ave Proctor, MN 55810 UNITED STATES Attorney informa- Eugene Beliy tion Azora Law 15600 NE 8th St. Ste B1-178 Bellevue, WA 98008 UNITED STATES [email protected] 2069106574 Registration Subject to Cancellation Registration No. 1693244 Registration date 06/09/1992 Registrant INDEX CORPORATION 4-1-1 TAISHIDO, SETAGAYA-KU TOKYO, 154-0004 JAPAN Goods/Services Subject to Cancellation Class 028. First Use: 1990/09/10 First Use In Commerce: 1990/09/10 All goods and services in the class are subject to cancellation, namely: computer game cartridges, video game cartridges, [ and coin operated video gamemachines ] Grounds for Cancellation Abandonment Trademark Act Section 14(3) Fraud on the USPTO Trademark Act Section 14(3); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) Attachments Petition to Cancel - ATLUS.pdf(457523 bytes ) Signature /EB/ Name Eugene Beliy Date 06/30/2020 1 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE 2 BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD 3 4 ) Trident, Inc. // DBA Atlas Games ) Cancellation No. ______________ 5 Petitioner, ) ) 6 ) v. ) Mark: ATLUS 7 ) ) Registration No. 1693244 8 Index Corporation ) Respondent. ) 9 ) 10 PETITION TO CANCEL 11 Petitioner, Trident, Inc. d/b/a Atlas Games (“Petitioner”) is a corporation organized in 12 the state of Minnesota with an address of 202 3rd Ave, Proctor, Minnesota 55810. Petitioner 13 believes it is being damaged by Registration No. 1693244 for ATLUS (the “Registration”) 14 with respect to “computer game cartridges, video game cartridges, [ and coin operated video 15 game machines ]” in International Class (“IC”) 028, and hereby petitions to cancel the 16 registration of said mark. 17 As grounds in support for this Cancellation, Petitioner alleges the following: 18 1. On information and belief, the listed owner of the Registration is Index Corporation with 19 an address of 4-1-1 Taishido, Setagaya-Ku Tokyo, Japan 154-0004 (“Respondent”). 20 2. Petitioner is the owner of U.S. Application Serial No. 88210212, filed on November 29, 21 2018, for the mark ATLAS GAMES for “tabletop games” in IC 028 (the “Application”). 22 3. On January 08, 2020, the United States Patent and Trademark Office issued a Final 23 Office Action for Petitioner’s Application stating, inter alia, registration of the applied- for mark is refused because of a likelihood of confusion with the Registration under 24 Trademark Act Section 2(d), 15 U.S.C.A. § 1052(d); see TMEP §§ 1207.01 et seq. 25 PETITION TO CANCEL Page 1 of 8 1 2 4. Respondent’s Registration causes injury to Petitioner and Petitioner’s rights in its 3 ATLAS GAMES mark. 4 REGISTRATION’S OWNERSHIP AND PROSECUTION HISTORY 5 5. On May 07, 1990, Asuka Technologies, Inc. (“Asuka”), filed an application to register 6 ATLUS, the mark that would become the Registration (the “Mark”), based on a section 7 1(a) filing basis claiming use in commerce as early as September 1990. 8 6. On May 28, 1991, Asuka entered into an assignment agreement with Atlus Software, Inc. 9 (“Atlus Software”) with respect to the interest and goodwill in the Mark. 10 7. No supporting documents are available on the USPTO database with respect to the 11 assignment between Asuka and Atlus Software. 8. On June 09, 1992, the Registration was issued, naming Asuka as the owner of the mark. 12 9. On May 31, 1996, Atlus Software executed a Certificate of Dissolution, naming Atlus 13 Corporation, Ltd. (“Atlus Corp”) the assignee of the Registration. 14 10. On November 11, 1997, the assignment between Atlus Software and Atlus Corp was 15 recorded with the USPTO. 16 11. No supporting documents are available on the USPTO database with respect to the 17 assignment between Atlus Software and Atlus Corp. 18 12. On May 23, 2002, Atlus Corp filed a Section 8 & 9 renewal of the Registration. 13. On May 30, 2012, Atlus Corp executed a Nunc Pro Tunc Assignment of all right, title, 19 interest, and goodwill in the Mark to Respondent, effective as of May 10, 2010. 20 14. On June 04, 2012, Respondent filed a Section 8 & 9 renewal of the Registration. 21 15. Petitioner now timely files this Petition to Cancel the Registration. 22 23 24 25 PETITION TO CANCEL Page 2 of 8 1 2 COUNT I: LIKELIHOOD OF CONFUSION – PRIORITY OF USE 3 16. Petitioner repeats and re-avers every allegation contained in Paragraphs 1-15, inclusive, 4 as if fully recited herein. 5 17. With respect to Petitioner’s Application, Petitioner claims first use in commerce as early 6 as August 1990, one month before the Registration’s claimed date of first use in 7 commerce. 8 18. Accordingly, Petitioner’s mark claimed under the Application has priority of use in 9 commerce over the Registration and Petitioner is the senior user of either mark at issue. 10 19. As evidenced by the Office Actions issued with respect to the Application, 11 Respondent’s mark so resembles Petitioner’s mark as to be likely, when used in connection with the goods or services of Respondent, to cause confusion, or to cause 12 mistake, or to deceive. 13 COUNT II: ABANDONMENT DUE TO NONUSE – DISSOLUTION OF OWNER 14 15 20. Petitioner repeats and re-avers every allegation contained in Paragraphs 1-19, inclusive, 16 as if fully recited herein. 21. On information and belief, on or around June 2013, Respondent was struggling with 17 major debt and finance issues, including allegations of fraudulent business transactions. 18 22. On information and belief, on June 12, 2013, Respondent’s offices were raided by the 19 Japanese Securities and Exchange Surveillance Commission, which subsequently 20 concluded that Respondent had been artificially inflating video game sales through a 21 process called “window dressing” or “round-trip transactions.” (Exhibit A). 22 23. On information and belief, “window dressing” or “round-trip transactions” is a practice in which assets are sold under an agreement to later be repurchased by the original owner, 23 and is illegal in Japan. 24 25 PETITION TO CANCEL Page 3 of 8 1 2 24. On information and belief, on or around June 2013, Respondent filed for civil 3 rehabilitation bankruptcy as a consequence of the Japanese fraud investigation. 4 25. On information and belief, on November 1, 2013, Respondent transferred many of its assets to Sega Dream Corporation. (Exhibit B). 5 26. On information and belief, no right, title, interest, or goodwill in the Registration was 6 ever transferred to Sega Dream Corporation or any other entity. 7 27. On information and belief, Respondent has dissolved as a result of its bankruptcy or 8 acquisition by Sega Dream Corporation. 9 28. On information and belief, the Mark has not been used in commerce by Respondent 10 since at least November 1, 2013. 29. The Mark is not currently being used in interstate commerce by Respondent and 11 Respondent has no objective intent to begin using the Mark in interstate commerce, 12 assuming Respondent even exists. 13 30. Respondent has not used the Mark in bona fide commerce within the last three years and 14 has abandoned any and all rights in the Mark and Registration. 15 COUNT III: ABANDONMENT DUE TO NONUSE – NO USE IN COMMERCE OF 16 CLAIMED GOODS 17 31. Petitioner repeats and re-avers every allegation contained in Paragraphs 1-30, inclusive, 18 as if fully recited herein. 32. In connection with its June 04, 2012 Section 8 & 9 filing, Respondent submitted a 19 specimen of use depicting the packaging of the Nintendo DS game, Shin Megami Tensei 20 Devil Survivor (the “Game”). 21 33. On information and belief, the North America release date of the Game was June 23, 22 2009. 23 34. On information and belief, if the owner in interest of the Mark released other video 24 games in connection with the Mark after June 23, 2009, it was in a format or medium 25 PETITION TO CANCEL Page 4 of 8 1 2 other than the specific computer game cartridges, video game cartridges goods claimed 3 in the Registration (the “Claimed Goods”), such as CDs or downloadable software. 4 35. On information and belief, the Mark has not been used in commerce by Respondent or any other entity in connection with the Claimed Goods since at least June 23, 2009. 5 36. On information and belief, Respondent has not offered the Claimed Goods in connection 6 with the Mark in interstate commerce within the last three years. 7 37. The Claimed Goods are not currently being offered by Respondent in connection with 8 the Mark in interstate commerce and Respondent has no objective intent to begin offering 9 the Claimed Goods in connection with the Mark in interstate commerce. 10 38. Respondent has not used the Mark in bona fide commerce in connection with the Claimed Goods within the last three years, and has abandoned any and all rights in the 11 Mark and Registration. 12 13 COUNT IV: RESPONDENT IS NOT THE RIGHTFUL OWNER OF THE REGISTRATION 14 15 39. Petitioner repeats and re-avers every allegation contained in Paragraphs 1-38, inclusive, as if fully recited herein. 16 40.