Game developer Ubisoft filed an opposition on Wednesday before the Trademark Trial and Appeal Board over the applied-for KUBI GAMES mark, claiming it is similar to its UBISOFT marks and covers similar products, and is thus likely cause consumer confusion and damage to Ubisoft.
Ubisoft has used the UBISOFT trademark and other marks that include the “UBI” prefix for approximately thirty years in connection with its video games, computer games, electronic games, and related products in class 9, 41, and other classes. In November 2019, applicant One Lap to Go Limited filed an application to register KUBI GAMES in class 9 and 41 for “entertainment services, namely, providing an on-line computer game.” Ubisoft filed for an extension and timely filed its opposition. Ubisoft claimed that its marks predate the applicant’s request and that it has priority over One Lap to Go Limited.
Furthermore, Ubisoft averred that the applicant’s mark, KUBI GAMES, “incorporates the distinctive ‘UBI’ designation that is featured in the UBI Family of Marks” and it “resembles Ubisoft’s previously adopted, used, and registered marks.” Ubisoft claimed that its goods and services under its marks and those of the applicant are “identical.” Consequently, Ubisoft alleged that this is likely to cause confusion, mistakes or deception. According to Ubisoft, it is also likely for consumers to create a false connection or association between the brands, products, and marks. For example, falsely believing that Ubisoft has produced, sponsored, or endorsed the applicant’s products.
Ubisoft claimed it will be damaged if the application is not refused. Ubisoft added that if the applicant’s mark is registered “it would confer upon [the a]pplicant various statutory presumptions to which it is not entitled in view of the prior rights in the Ubisoft Family of Marks.”
In accordance with the Lanham Act, Ubisoft, represented by Stinson LLP, has asked for its opposition to be sustained and for the applicant’s registration of its mark to be refused.
