EA Withdraws Ghost Trademark After Dispute With Ubisoft

Ghost Games, formally known as EA Gothenburg, is a video game developer based in Sweden and Romania. The studio is composed of 80 percent of the employees from iconic British company Criterion Games and produces the latest entries in the Need for Speed franchise. EA filed two trademarks for the term ‘Ghost’ (US Serial No. 86/568,852 and 86/568,854) upon its initial formation. However, Ubisoft wasn’t pleased by this move, and decided to launch a complaint in September last year. Only now, the lawsuit has come into effect, and Ubisoft claims the term ‘Ghost’ will be damaging to their business. The company provided a long list of reasons why they object to EA’s Ghost trademarks which reads:

“NOTICE OF OPPOSITION

Ubisoft Entertainment, a French corporation having a principal place of business at 107
Avenue Henri Freville, Rennes, France, and Ubisoft, Inc. (“Ubisoft”), a California corporation
having a principal place of business at 625 Third Street, San Francisco, California 94107, believe
they will be damaged by registration of the mark shown in Application Serial Nos. 86/568,852
and 86/568,854 (the “Applications”) and hereby oppose the same pursuant to the provisions of
15 U.S.C. § 1063. Ubisoft Entertainment and Ubisoft are collectively referred to as “Opposers.”

The grounds for opposition are as follows:

1. Opposer Ubisoft Entertainment is the parent company of Ubisoft. Therefore,
privity exists between Opposers. Both Ubisoft Entertainment and Ubisoft are video game
developers and publishers and also sell various products and services related to their video games
and entertainment services.

2. Since at least as early as 2001, Ubisoft has used the trademark GHOST RECON
in connection with video games and entertainment services in the nature of online video and
computer games. In addition to its longstanding common law trademark rights, Ubisoft owns
several incontestable federal registrations for marks comprising or containing the distinctive
GHOST RECON trademark, including the following trademarks:

[Several Ghost Recon trademarks listed in the filing omitted from here, check the link]

3. Ubisoft Entertainment also owns several federal registrations for marks
comprising or containing the distinctive GHOST RECON trademark, including the following
trademarks:

[Several Ghost Recon trademarks listed in the filing omitted from here, check the link]

Collectively, the marks that set forth in Paragraphs 2 and 3 are referred to as the GHOST
RECON marks.

4. Notwithstanding Ubisoft Entertainment’s and Ubisoft’s prior rights in the
GHOST RECON mark, on March 18, 2015, applicant Electronic Arts Inc. (“Applicant”) filed
two intent-to-use applications seeking to register the mark GHOST (“Applicant’s Mark”): one
was filed in connection with “Computer game software; Downloadable computer game software
via a global computer network and wireless devices; Video game software” in International
Class 9, which was designated 86/568,854, and the other one was filed in connection with
“Entertainment services, namely, providing an on-line computer game; Provision of information
relating to electronic computer games provided via the Internet” in International Class 41, which
was designated 86/568,852.

5. The Applications were published for opposition on August 4, 2015. Ubisoft
sought, and was granted, two extensions of time to oppose the Applications: one on September 2,
2015 and one on November 30, 2015. As a result, Opposers have until January 31, 2016 to
oppose the Application. Therefore, this Notice of Opposition is timely filed.

6. Opposers began using its GHOST RECON marks in connection with video games
and entertainment services long before Applicant filed the Applications on March 18, 2015 and
long before Applicant’s November 19, 2013 claimed date of first use.

7. Opposers’ common law and statutory priority dates precede the filing date of the
Application and, upon information and belief, any priority date upon which Applicant may rely.

8. Opposers have priority over Applicant.

9. Prior to filing the Applications, Applicant had constructive knowledge of
Opposers’ GHOST RECON marks given Opposers’ federal registrations set forth above.

10. The goods and services identified in the Applications, namely “Computer game
software; Downloadable computer game software via a global computer network and wireless
devices; Video game software” and “Entertainment services, namely, providing an on-line
computer game; Provision of information relating to electronic computer games provided via the
Internet” are identical and highly related to the goods and services offered by Opposers in
connection with the GHOST RECON marks.

11. Upon information and belief, Applicant intends to market the goods and services
identified in the Applications to the same consumers who purchase the goods and services
offered by the Opposers under the GHOST RECON marks.

12. Applicant’s proposed mark GHOST mark is nearly identical to the GHOST
RECON marks used and owned by Opposers.

13. Applicant’s Mark so resembles Opposers’ GHOST RECON marks alleged herein
as to be likely, when used in connection with the goods and services identified in the
Applications, to cause confusion, to cause mistake, or to deceive. Consumers are likely to
believe, mistakenly, that the goods and services Applicant offers under Applicant’s Mark are
provided, sponsored, endorsed, or approved by Opposers, or are in some way affiliated,
connected, or associated with Opposers, all to the detriment of Opposers. Registration of
Applicant’s Mark, therefore, should be refused under 15 U.S.C. §§ 1052(d) and 1063.

14. Registration of Applicant’s Mark would be a further source of damage to
Opposers, as it would confer upon Applicant various statutory presumptions to which it is not
entitled in view of Opposers’ long prior use of the GHOST RECON marks.”

In response to this opposition and the threat of legal action, EA has withdrawn their initial application. Here we can see the documentation which outlines the course of events:

This is an absurd situation and the dispute revolves around Ubisoft’s Ghost Recon brand, which they believe would be negatively impacted by EA’s trademarks. Clearly, Ubisoft isn’t doing themselves any favours, especially when the company could be taken over by Vivendi. EA should have the right to trademark a studio they created without dealing with frivolous lawsuits. Perhaps, publishers should work on creating enriching experiences instead of being embroiled in stupid legal action.

Image courtesy of Collider.