## Facts

- Nintendo of America, Inc. (Nintendo) produced and sold video games and related products under the POKÉMON franchise, a shortened form of “Pocket Monster,” the name used in Japan.
- The POKÉMON mark appeared in a yellow, cartoon-like typeface with a blue border.
- Morrison Entertainment Group Inc. (Morrison) produced Monster in My Pocket games, a similar type of product concept aimed at a comparable market.
- Morrison used the MONSTER IN MY POCKET mark in a green, gothic-style font, with the words “in My Pocket” on a second line inside a box.
- Morrison sued Nintendo for trademark infringement under a reverse-confusion theory, alleging that Nintendo’s commercially dominant POKÉMON mark would cause consumers encountering Monster in My Pocket to believe Morrison’s product was made by, affiliated with, or approved by Nintendo.
- As evidence, Morrison offered testimony that its marketing representative was asked whether Monster in My Pocket was a “Pokémon rip-off,” reflecting claimed marketplace association between the products.
- Nintendo introduced consumer survey evidence indicating that children in the target age group were unlikely to confuse the two trademarks or their source.
- The district court granted summary judgment to Nintendo on Morrison’s infringement claim based on lack of evidence creating a triable issue of likely confusion.
- Nintendo filed a counterclaim seeking cancellation of Morrison’s trademark registration, asserting that Morrison’s enforcement efforts would damage Nintendo and the POKÉMON mark.
- After granting summary judgment against Morrison, the district court dismissed Nintendo’s cancellation counterclaim for lack of standing, reasoning that Nintendo’s asserted harm depended on Morrison’s infringement claim and disappeared once Morrison lost.
- Morrison appealed the summary judgment ruling, and Nintendo cross-appealed the standing dismissal.

## Issues

1. Whether Morrison produced sufficient evidence to create a triable issue of likelihood of confusion under the Sleekcraft factors on a reverse-confusion theory.
2. Whether Nintendo had standing to pursue a Lanham Act counterclaim seeking cancellation of Morrison’s trademark registration after Morrison’s infringement claim was resolved against Morrison.

## Decision

- The Ninth Circuit affirmed summary judgment for Nintendo on Morrison’s reverse-confusion trademark infringement claim.
- The Ninth Circuit held that Morrison’s showing, including limited anecdotal evidence, was insufficient to allow a reasonable factfinder to find likely confusion, particularly given the marks’ differences and Nintendo’s survey evidence.
- The Ninth Circuit affirmed dismissal of Nintendo’s trademark-cancellation counterclaim for lack of standing.
- The court agreed that Nintendo’s asserted basis for cancellation was tied to harm from Morrison’s infringement litigation, and once Morrison’s claim failed, Nintendo lacked a continuing, legally cognizable interest required to maintain the cancellation request.

## Legal Principles

- Reverse confusion is analyzed under the same likelihood-of-confusion framework applied in forward-confusion cases.
- To defeat summary judgment in a trademark case, the plaintiff must present evidence from which a reasonable jury could find a likelihood of confusion.
- Likelihood of confusion is evaluated using the Sleekcraft factors, with courts focusing on the factors most informative on the record.
- Mark similarity in sight and sound is a central consideration; substantial visual and phonetic differences between marks weigh against likely confusion.
- Evidence of actual confusion may support likelihood of confusion, but isolated anecdotal incidents may be insufficient when countered by stronger record evidence.
- Properly designed consumer surveys addressing the relevant purchasing audience can be persuasive evidence on the likelihood-of-confusion question.
- Standing to seek cancellation of a trademark registration requires a real commercial interest and a reasonable basis to believe the registration causes, or will cause, damage; if the alleged harm is dependent on a claim that has been rejected, standing may fail.

## Conclusion

The Ninth Circuit upheld summary judgment for Nintendo because Morrison did not present evidence sufficient to support a jury finding of likely confusion under a reverse-confusion theory, especially in light of the marks’ dissimilar appearance and sound and Nintendo’s survey results. The court also upheld dismissal of Nintendo’s cancellation counterclaim, concluding Nintendo lacked standing once Morrison’s infringement claim failed and Nintendo’s asserted harm from the litigation no longer supplied a basis to pursue cancellation.


Morrison Entertainment Group Inc. v. Nintendo of America, Inc., 56 Fed. App’x 782 (2002)