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Can It Still Be On Like Donkey Kong.

Posted in Trademark Law

By: Scott Hervey

In early November, 2010 Nintendo of America filed a trademark registration application for the mark ITS ON LIKE DONKEY KONG for, among other items, video games.   Nintendo filed its mark on an intent to use basis in preparation for the launch of its video game, Donkey Kong Country Returns, for the Wii game system.   The fact that Nintendo filed a trademark registration application for the upcoming release of a video game is not necessarily newsworthy. The interesting thing about Nintendo’s application is that the mark is a phrase that has become well entrenched in the common lexicon. This raises the question, will the common use of the phrase have an effect on Nintendo’s ability to register the mark?

According to the Urban Dictionary (www.urbandictionary.com) “Its on like Donkey Kong” is:  

a phrase to denote that it’s time to throw down or compete at a high level; something is about to go down. The use of the comical video game character Donkey Kong provides comic relief but the phrase itself has greater or more significance than simply its on. Many people incorrectly assume the phrase’s origins are from various movies in which it is used but term was popularized by rapper Ice Cube when he used the phrase in the song "Now I gotta Wet’cha" off his Predator album in 1992. It is unknown at this time whether Ice Cube was the person that originally coined the phrase.

The registrability of Nintendo’s mark could be adversely affected by a finding that the mark is either merely descriptive or generic. Marks that describe the intended purpose, function or use of the goods, the size of the goods, desirable characteristics of the goods, the nature of the goods or the end effect upon the user are considered merely descriptive and are not registrable absent establishing secondary meaning.   For example, NICE ‘N SOFT® for bathroom tissue or PARK ‘N FLY® for off-airport auto parking services are descriptive marks. The same is true with respect to marks that identify the place in which the goods or services originate and therefore are geographically descriptive. The major reasons for not protecting marks that are merely descriptive is to prevent the owner of a mark from inhibiting competition in the sale of particular goods and to maintain freedom of the public to use language that naturally describes the goods or services, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own product.

Marks that are merely self laudatory and descriptive of the alleged merit of a product are regarded as being descriptive. Laudation does not per se prevent a slogan or mark from being registrable. Like other descriptive marks, a mark that is self-laudatory may be registrable on establishing secondary meaning. However, courts have refused registration even on the Supplemental Register of marks that are so highly laudatory and descriptive of the alleged product that they are incapable of functioning as a trademark.

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. These terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Principal Register or on the Supplemental Register.

Nintendo’s application covers a video game program featuring the character Donkey Kong. Even though the phrase is commonly used as a call to action (so to speak), such common usage is not related to the subject matter of Nintendo’s application. While its highly likely that Nintendo will ultimately secure registration, this should not be seen as granting Nintendo’s right to chill the manner in which the phrase has commonly been used. It can still be on like Donkey Kong.