Shenzhen Weike Technology, a China-based manufacturer of cell phone cases, may be fighting Nintendo for its right to use the WIIKOO mark on its accessories cause Nintendo doesn’t like that “Wii” being in there.
WIIKOO is a line of cheap phone, laptop, and camera accessories can be found on Chinese websites like AliExpress. WIIKOO is mostly known as one of the many brands offering a variety of colorful, oddly specific phone case designs, such as a biscuit patterned case.
The application for the WIIKOO mark was filed on December 28, 2016 and the application went through quite the process throughout 2017. The application was first rejected on March 30, 2017 when the USPTO found that the specimen presented in the application was not actually the WIIKOO mark that was being used in commerce.
One of the requirements for registration of a trademark is that you must be using the mark in commerce. This essentially means that you have to be making sales and that those sales must be across state lines – not just within your state. There are ways to file a mark that hasn’t been used in commerce yet through an intent-to-use application, but it depends on the circumstances around filing the mark. The original specimen provided by Shenzhen Weike Technology to the USPTO was a photo of a hand holding a speaker. This doesn’t work because it doesn’t show that the mark is actually being used in commerce
Fortunately for Shenzhen Weike Technology, the new specimen was submitted on August 23, 2017 and it showed that their mark was being used in commerce. The successful specimen was a screenshot of one of their sales – from China to Ohio – and was good enough for the USPTO to commence to publishing the WIIKOO mark in the Official Gazette on October 18, 2017. Publication in the Official Gazette acts as a tool to put everyone else “on notice” of the mark’s pending registration. This notice gives other mark holders the opportunity to oppose pending marks that may be similar, and hence damaging, to their own registered marks.
Shenzhen Weike Technology was probably feeling pretty good about the chances of obtaining a successful registration of the WIIKOO mark, but Nintendo of America put those hopes to a halt when it filed an extension of time to file an opposition on December 7, 2017, and another extension of time to oppose on January 5, 2018. The opposition was finally filed on March 9, 2018.
In its opposition, Nintendo cited over 24 of its WII and WII-adjacent marks in protest of WIIKOO’s registration. The many WII marks cited in the 166-page document include WII U, WII FIT, WII SPORTS RESORT, WII REMOTE, WIIWARE, WII ZAPPER, and more.
Nintendo’s argument is made extra strong by the success of the WII branded game consoles and all of its accessories. Additionally, Nintendo noted that the striking similarity between the “ii sequence” utilized in its products alongside the “ii sequence” in WIIKOO’s branding. The opposition stated that based on this information, Nintendo believes that Shenzhen Weike Technology “selected the [WIIKOO] Mark and the ‘ii sequence’ to imitate and call to mind Nintendo’s Family of [WII] Marks and to trade off the goodwill and global recognition of the [WII] Marks.”
Nintendo also made the argument that registration of the WIIKOO mark would result in dilution of the famous WII mark as well as the other WII-adjacent marks owned by Nintendo. Nintendo has a really good point here. The WII is an incredibly popular system that appeals to not only gamers themselves, but to families and children as well as seniors using the Wii Fit system. If other companies are allowed to use variations of the WII mark, especially in the field of technology, the mark may no longer signify Nintendo as the source of WII products and would essentially become meaningless.
What do you think? Should Nintendo own the rights to the WII mark in commerce?
Regardless of how you feel about the issue of Nintendo monopolizing the WII mark, I think that fighting this is going to be a lot more expensive for Shenzhen Weike Technology than it’s worth. WIIKOO cell phone cases only sell for between $3 – $6 and Nintendo, being the giant that it is, likely doesn’t mind spending a bit to protect one of its most important marks.
Additionally, it’s important to note that consumers aren’t buying WIIKOO cases because they expect quality from WIIKOO, but it’s simply because the phone cases are super cheap. To Shenzhen Weike Technology, the WIIKOO name may not be all that important in the marketplace. Perhaps sacrificing WIIKOO, changing the name, and moving on may be the best idea for Shenzhen Weike Technology.