Cumulative Speculation related to TES V : The Elder Scrolls Series Discussion

» Fri May 27, 2011 10:12 pm

Now that is some interesting stuff. Where did you see this "last extension" was asked for and recieved? You have my attention and my little heart is happy atm. :unsure:

Go to the http://www.uspto.gov/trademarks/index.jsp http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=4001:5fdmu2.1.1, type "Skyrim" in the search term field, and 4 results should come up. I can't link directly to the search results, as they're dynamically generated and won't work. The first 3 results belong to ZeniMax. 1) is for clothing; 2) and 3) relate to "Computer game programs; downloadable computer game programs offered via handheld computers, wireless telephones and mobile and wireless devices."

4) is the trademark for a small telecommunications company named Skyrim, and it reads: "Current Status: Further action on the application has been suspended."

Now, to be fair, the idea that that the 4th extension is the last extension came from other users who presented this information several threads back, and I haven't found anything as of yet looking through trademark laws to reinforce that the 4th must be the last. But I'm still looking in that dept.

Here's the whole info dump from one of the three:

Thank you for your request. Here are the latest results from the TARR web server.
This page was generated by the TARR system on 2009-12-13 14:46:19 ET

Serial Number: 77017500 Assignment Information Trademark Document Retrieval

Registration Number: (NOT AVAILABLE)

Mark

(words only): SKYRIM

Standard Character claim: Yes

Current Status: A request for the fourth extension of time to file a statement of use has been granted.

Date of Status: 2009-08-26

Filing Date: 2006-10-10

The Notice of Allowance Date is: 2007-08-14

Transformed into a National Application: No

Registration Date: (DATE NOT AVAILABLE)

Register: Principal

Law Office Assigned: LAW OFFICE 108

Attorney Assigned:
WIENER MICHAEL A

Current Location: 700 -Intent To Use Section

Date In Location: 2009-08-26

LAST APPLICANT(S)/OWNER(S) OF RECORD
1. ZeniMax Media Inc.

Address:
ZeniMax Media Inc.
1370 Piccard Drive
Rockville, MD 20850
United States
Legal Entity Type: Corporation
State or Country of Incorporation: Delaware

GOODS AND/OR SERVICES
International Class: 009
Class Status: Active
Computer game programs; downloadable computer game programs offered via handheld computers, wireless telephones and mobile and wireless devices
Basis: 1(B)
First Use Date: (DATE NOT AVAILABLE)
First Use in Commerce Date: (DATE NOT AVAILABLE)

International Class: 041
Class Status: Active
Providing online computer games; providing online computer game programs offered via handheld computers, wireless telephones and mobile and wireless devices
Basis: 1(B)
First Use Date: (DATE NOT AVAILABLE)
First Use in Commerce Date: (DATE NOT AVAILABLE)

ADDITIONAL INFORMATION
(NOT AVAILABLE)

MADRID PROTOCOL INFORMATION
USPTO Reference Number: A0006316
International Registration Number: 0920640
International Registration Date: 2006-11-02
Original Filing Date with USPTO: 2006-11-02
International Registration Status: Application For IR Registered By IB
Date of International Registration Status: 2007-05-24
International Registration Renewal Date: 2016-11-02
Irregularity Reply by Date: (DATE NOT AVAILABLE)

Madrid History:
05-24-2007 - 12:53:39 - Application For IR Registered By IB
04-13-2007 - 21:03:49 - Irregularity Response Sent To IB
04-13-2007 - 11:13:23 - Response To Irregularity Reviewed And Accepted
04-12-2007 - 19:31:49 - Irregularity Response Received From Applicant
01-24-2007 - 09:01:26 - Irregularity Notice Received From IB (Response Required)
11-03-2006 - 21:00:36 - IR Certified And Sent To IB
11-02-2006 - 21:27:24 - New Application For IR Received
11-02-2006 - 21:27:24 - Automatically Certified

PROSECUTION HISTORY NOTE: To view any document referenced below, click on the link to "Trademark Document Retrieval" shown near the top of this page.

2009-08-26 - Extension 4 granted

2009-07-26 - Extension 4 filed

2009-08-26 - Case Assigned To Intent To Use Paralegal

2009-07-26 - TEAS Extension Received

2009-01-27 - Extension 3 granted

2009-01-27 - Extension 3 filed

2009-01-27 - TEAS Extension Received

2008-08-07 - Extension 2 granted

2008-08-07 - Extension 2 filed

2008-08-07 - TEAS Extension Received

2008-02-12 - Extension 1 granted

2008-02-12 - Extension 1 filed

2008-02-12 - TEAS Extension Received

2007-08-14 - Noa Mailed - SOU Required From Applicant

2007-05-22 - Published for opposition

2007-05-02 - Notice of publication

2007-03-22 - Law Office Publication Review Completed

2007-03-20 - Approved for Pub - Principal Register (Initial exam)

2007-03-20 - Examiner's Amendment Entered

2007-03-20 - Examiners amendment e-mailed

2007-03-20 - Examiners Amendment -Written

2007-03-19 - Previous allowance count withdrawn

2007-03-17 - Withdrawn From Pub - Og Review Query

2007-02-24 - Law Office Publication Review Completed

2007-02-23 - Assigned To LIE

2007-01-19 - Approved for Pub - Principal Register (Initial exam)

2007-01-11 - Assigned To Examiner

2006-10-14 - Notice Of Pseudo Mark Mailed

2006-10-13 - New Application Entered In Tram

» Fri May 27, 2011 2:05 pm

So I took yet another look at the Skyrim trademark. The extensions, from what I can see, last for 6 months. Bethesda received for their fourth and (IIRC) last extension on September 22nd. Which would put the expiration of that extension in late March. If the 4th really is the last, then they have to file a statement of use before that time. Because of that, E3 is too late to expect an announcement. GDC is March 9-13, so it might be a possibility there. Game Informer has a few issues between now and then. If the 2nd novel is getting released before that time, it might also serve as a candidate for info. What other events or possible info hooks are we forgetting?

You're starting to scare me a little here. Are you saying that there's actually evidence suggesting an announcement before E3?

» Fri May 27, 2011 10:54 am

You're starting to scare me a little here. Are you saying that there's actually evidence suggesting an announcement before E3?

Assuming they can't renew a fifth time, and assuming that a 'statement of use' actually requires the game to be publicly announced (and I'm hardly an expert on trademarks, so I can't tell you how accurate those assumptions are), then yes, we may actually be seeing an announcement in the next month or two.

» Fri May 27, 2011 6:44 pm

Still haven't found anything regarding limitations on extensions. But as I see it, come end of March, here are all the possible things that could happen:
1. Bethesda is granted a fifth extension, and life keeps on rolling.
2. Bethesda files a statement of use, but does not announce a title.
3. Bethesda files a statement of use and announces TES:V.
4. Bethesda allows the trademark to expire.

» Fri May 27, 2011 12:53 pm

I found out the law:
http://www.uspto.gov/trademarks/process/file/addreq.jsp

What is a Request for an Extension of Time to file a Statement of Use?

An Extension Request is a sworn statement signed by the owner or a person authorized to sign on behalf of the owner ( see signature ), stating that the applicant still has a bona fide intention to use the mark in commerce, and needs additional time to use the mark in commerce. A filing fee of $150 per class of goods/services must accompany the Extension Request. The form for filing the Extension Request is available at http://www.uspto.gov/teas/index.html .

The Extension Request, if granted, gives the owner an additional six (6) months to either:

* use the mark in commerce and file a Statement of Use; or
* file another Extension Request.

You may continue to file Extension Requests every six (6) months. However, you must use the mark and file a Statement of Use within three (3) years of the date the Notice of Allowance issues. The USPTO will not register a mark if, after thirty-six (36) months of the mailing date of the Notice of Allowance, no Statement of Use has been filed.

Since it was registered in 06, and we are now it 09, they pretty much have to use it within the next 6 months, or they lose the mark.

» Fri May 27, 2011 5:29 pm

Still haven't found anything regarding limitations on extensions. But as I see it, come end of March, here are all the possible things that could happen:
1. Bethesda is granted a fifth extension, and life keeps on rolling.
2. Bethesda files a statement of use, but does not announce a title.
3. Bethesda files a statement of use and announces TES:V.
4. Bethesda allows the trademark to expire.

I also noticed that all three cases were handed off to intent to use paralegals in August or September. That doesn't happen unless things are in motion for a product release and there isn't anything complicated or the games were already released. Obviously ESV hasn't been released so I'm assuming things are in motion and it's such a no brainier that paralegals were able to take over.

I also found that when trademark cases are handed to intent to use paralegals they are release less than a year later with the average being eight months. That puts the release date as early as 4/10 and no later than 8/10.

» Fri May 27, 2011 9:57 pm

Looking at what Orzorn posted, Bethesda can extend one last time (five extensions is 30 months, plus the initial period before the extension would bring us to the maximum 36 months).

To add to that, I was just doing some studying for the final in a business class, and lo and behold, I came across this in the study guide:

"After the US Patent and Trademark Office examines the application and determine that the mark could be registered, the applicant must show actual use within 6 months"

Now, to me, "actual use" of a trademark would logically require the mark to be out in public viewing, so the game would have to be at least announced by then.

» Sat May 28, 2011 12:11 am

Looking at what Orzorn posted, Bethesda can extend one last time (five extensions is 30 months, plus the initial period before the extension would bring us to the maximum 36 months).

To add to that, I was just doing some studying for the final in a business class, and lo and behold, I came across this in the study guide:

"After the US Patent and Trademark Office examines the application and determine that the mark could be registered, the applicant must show actual use within 6 months"

Now, to me, "actual use" of a trademark would logically require the mark to be out in public viewing, so the game would have to be at least announced by then.

Combining this with what Hokie said, we should be hearing about TES V any time now!

» Fri May 27, 2011 2:44 pm

Combining this with what Hokie said, we should be hearing about TES V any time now!

September 2010 would be the absolute max that they could stretch it to, but I'm inclined to agree that will see an announcement sooner than that.

» Sat May 28, 2011 1:08 am

Combining this with what Hokie said, we should be hearing about TES V any time now!

My educated guess is August 2010 for ES V.

» Fri May 27, 2011 9:30 pm

Hi!

Sorry but they can have five extensions:

http://tmportal.uspto.gov/external/portal/tow?SRCH=Y&isSubmitted=true&details=&SELECT=US+Serial+No&TEXT=77017500

Click on "notice of allowance". They say that "Applicant may file a total of five (5) extension requests".

So, as Mirander, I think they have until september to announce the game...

» Fri May 27, 2011 4:28 pm

That's still pretty damn closer than what I would have expected! This is like unraveling a plot twist in a good book, I'm totally

» Fri May 27, 2011 1:41 pm

Hi!

Sorry but they can have five extensions:

http://tmportal.uspto.gov/external/portal/tow?SRCH=Y&isSubmitted=true&details=&SELECT=US+Serial+No&TEXT=77017500

Click on "notice of allowance". They say that "Applicant may file a total of five (5) extension requests".

So, as Mirander, I think they have until september to announce the game...

"You may continue to file Extension Requests every six (6) months for up to a total of five (5) extensions of time. You must use the mark in commerce and file an SOU within three years (36 months) of the NOA issuance date. For more information, see TMEP Section 1108.01.
NOTE: The six-month periods are based solely on the issuance date of the NOA, and NOT from the filing date of any extension; i.e., the six-month period following issuance of the Notice of Allowance (or any subsequent six-month extension period) will not be cut short by the grant of an extension."

http://www.uspto.gov/teas/eTEASpageB2.htm

The notice of allowance date is 8/14/2007 which means Bethesda has to use SKYRIM in commerce before 8/14/2010 or risks losing the trademark.

» Sat May 28, 2011 1:04 am

8/14/2010
Thats when my mom turns 50!
And Infernal city took place 50 years after oblivion.......

» Sat May 28, 2011 12:41 am

8/14/2010
Thats when my mom turns 50!
And Infernal city took place 50 years after oblivion.......

coincidence? I dont think so.....

» Fri May 27, 2011 12:44 pm

8/14/2010
Thats when my mom turns 50!
And Infernal city took place 50 years after oblivion.......

Your mom=Oblivion. I recommend you let her know of her condition.

» Fri May 27, 2011 8:41 pm

Your mom=Oblivion. I recommend you let her know of her condition.

:rofl:

Well, hopefully by 8/14/2010 we'll at least have an announce. :rolleyes:

» Fri May 27, 2011 1:39 pm

I cant wait that long.

» Fri May 27, 2011 9:34 pm

I cant wait that long.

And I doubt you'll have to. There will most likely be an announcement around the time of the 2nd book or at E3.

» Fri May 27, 2011 9:52 pm

Im going to throw a date out there
January 16 2010, through bethblog.

» Fri May 27, 2011 9:39 pm

Im going to throw a date out there
January 16 2010, through bethblog.

I'm 99.7% sure it's not going to be this date

» Fri May 27, 2011 12:13 pm

Hmm... well, at least we have a guideline to run with now. I still personally think it'll probably be either GDC or E3 the latest, but more likely a magazine/online reveal in the interim.

» Fri May 27, 2011 10:36 am

And I doubt you'll have to. There will most likely be an announcement around the time of the 2nd book or at E3.

Though I'm not inclined to see E3 as an influence on the announcement date, given all the recent information, I'm at least compelled to give a nod to the notion. It now seems we may well be reasonable to expect an announcement anytime between now and E3. I don't see the 2nd book coming out until late next year, so I'm not sure how that plays into everything. Although, the book's release within the span of time between TES:V's announcement and release could benefit from greater sales while also keeping the rabid fans' insatiable appetite for information somewhat quelled.

» Fri May 27, 2011 11:03 am

*sigh* i'm gonna miss the days when we ran in circles aimlessly begging something else to speculate about...

...and i'm done.

There's still something that's bugging me though, this wouldn't be the first time that Beth tagged a trademark, then let it expire, what are the chances of that happening again?

» Fri May 27, 2011 10:52 am

There's still something that's bugging me though, this wouldn't be the first time that Beth tagged a trademark, then let it expire, what are the chances of that happening again?

Really? What trademarks have they tagged and then left to expire? Did they seem TES related? And had they renewed them the full five times before letting them expire, or just suddenly drop them? Because it seems to me that if they have been renewing this Skyrim trademark for 3 years now, they must have a damn good reason to do so.