Microsoft’s Killer Instinct Trademark Denial

When Microsoft filed for trademark registration of the KILLER INSTINCT mark in connection with its planned revival of the classic fighting game franchise, the application ran headlong into one of the most common and frustrating hurdles in trademark prosecution: a Section 2(d) likelihood of confusion refusal. The USPTO examining attorney cited an existing registration for KILLER INSTINCT covering a failed television drama. This type of denial is not uncommon, and it is not necessarily fatal—but handling it correctly requires skill and a clear understanding of how the likelihood of confusion analysis works.

Background: The KILLER INSTINCT Trademark Application

Killer Instinct first appeared in arcades in 1994, developed by Rare and published by Midway. The game was subsequently ported to the Super Nintendo and Nintendo 64. After the N64 version in 1996, the franchise went dormant. When Microsoft acquired Rare, it inherited the franchise rights and, in 2012, filed for trademark registration of KILLER INSTINCT in anticipation of a relaunch.

The examining attorney issued an Office Action refusing registration under Section 2(d) of the Lanham Act, citing a prior registration for KILLER INSTINCT covering a television drama that had aired briefly in 2005. The fact that the registered mark belonged to an obscure, failed television show rather than a competing video game franchise illustrates how the likelihood of confusion analysis can produce counterintuitive results.

Understanding Section 2(d): Likelihood of Confusion

Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), prohibits registration of a mark that is likely to cause confusion with a prior registered mark. The USPTO examines likelihood of confusion under the multi-factor test derived from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). The key factors include:

• Similarity of the marks: The appearance, sound, and meaning of the marks are compared. Identical marks carry a strong presumption of likely confusion.
• Similarity of the goods and services: The more closely related the goods or services, the more likely confusion is to occur.
• Strength of the cited mark: Strong, distinctive marks receive broader protection. Weak or descriptive marks may coexist with similar marks.
• Actual confusion: Evidence of actual confusion in the marketplace is strong evidence of likelihood of confusion.
• Channels of trade: If the marks are sold through the same channels to the same consumers, confusion is more likely.

In Microsoft’s case, the marks were identical. The critical question was whether video games and a television drama are sufficiently related goods and services to make confusion likely. While these are distinct categories, the USPTO and courts regularly find that entertainment products can be related because consumers may be confused about source or affiliation.

Responding to a Section 2(d) Office Action

A Section 2(d) refusal is not a final rejection. An applicant has six months from the mailing date of the Office Action to file a response. Possible arguments include:

• The marks are sufficiently different in appearance, sound, or meaning to avoid confusion
• The goods and services are distinct and travel in different channels of trade to different consumers
• The cited mark is weak—commercial or conceptual weakness limits its scope of protection
• There is no actual confusion despite concurrent use in the marketplace
• Consent agreement: a letter from the owner of the cited mark consenting to concurrent registration

In Microsoft’s case, a strong argument would be that the KILLER INSTINCT television drama was a single-season failure from 2005, had no ongoing commercial presence, and that the consuming public of video game players would not associate the KILLER INSTINCT video game brand with that defunct television property.

The Importance of a Pre-Filing Trademark Clearance

The Microsoft situation illustrates why a thorough trademark clearance search before filing is essential. A clearance search would have identified the KILLER INSTINCT registration before the application was filed, allowing the applicant to assess the risk of a Section 2(d) refusal and plan a response strategy in advance. In many cases, clearance searches also reveal registrations that pose a higher conflict risk than a defunct television drama—and where the best strategy is to choose a different mark before investing in the brand.

Contact Revision Legal

Revision Legal’s trademark attorneys regularly handle Section 2(d) Office Actions and help clients overcome likelihood of confusion refusals through strategic arguments and evidence. If you have received a trademark refusal or want to assess your trademark’s registration prospects before filing, contact us today.

How Microsoft Overcame the Refusal

In practice, Microsoft ultimately did revive the Killer Instinct franchise. At E3 2013, Microsoft announced Killer Instinct as a launch title for the Xbox One, published by Microsoft Studios and developed by Double Helix Games. The trademark issues were resolved, likely through a combination of arguments to the USPTO examining attorney about the weakness of the cited KILLER INSTINCT television mark and, possibly, a consent agreement or other arrangement with the owner of that registration.

The resolution of the trademark dispute in Microsoft’s favor illustrates a key principle: even an identical mark can often be registered when the goods and services are sufficiently distinct and the cited mark is commercially weak. A television drama that aired for a single season and has been off the air for years has limited commercial vitality, making it difficult for the registration owner to argue that consumers would actually be confused about the source of a major video game franchise.

Section 2(d) Responses: A Strategic Overview

When facing a Section 2(d) likelihood of confusion Office Action, an applicant has several strategic options beyond simply abandoning the application:

• Argue differences between the marks: Even if the marks are identical on paper, differences in commercial impression, how they are used in practice, and the channels in which they appear can support a finding of no likely confusion.
• Argue the relatedness of goods and services: A video game and a television drama are both entertainment products, but their audiences, purchasing channels, and contexts of use differ significantly. Expert evidence and third-party registration evidence can support this argument.
• Cite the weakness of the cited mark: A mark that was commercially unsuccessful, has been inactive for years, or belongs to a company with no active business has a narrower scope of protection than a commercially strong mark.
• Seek a consent agreement: The owner of the cited mark may be willing to provide a letter of consent allowing both marks to coexist. The USPTO generally accepts consent agreements as strong evidence against likely confusion.
• Amend the identification of goods or services: Narrowing the scope of the application to exclude goods or services where confusion is most likely to occur can sometimes resolve the conflict without requiring a substantive argument.

The Trademark Trial and Appeal Board

If the examining attorney maintains the Section 2(d) refusal after the initial response, the applicant can appeal to the Trademark Trial and Appeal Board (TTAB). The TTAB is an administrative tribunal within the USPTO that reviews trademark application refusals and also adjudicates opposition and cancellation proceedings. TTAB decisions can be appealed to the Federal Circuit or to a U.S. District Court.

TTAB proceedings are less expensive than federal court litigation but are not trivial. A well-prepared brief addressing the DuPont likelihood of confusion factors, supported by evidence of the marks’ commercial contexts, the weakness of the cited mark, and the distinctness of the goods and services, gives the applicant the best chance of reversal.

Contact Revision Legal

Revision Legal’s trademark attorneys handle Section 2(d) refusals, TTAB proceedings, and federal trademark litigation. If your trademark application has been refused on likelihood of confusion grounds, contact us immediately—you have a limited window to respond, and the arguments you make in your initial response set the stage for everything that follows.