The "Jet Set" Trademark Dispute

Jet Set Radio released in the U.S. on October 31, 2000 (an odd release for Halloween, but whatever). However, Sega had changed its name to "Jet Grind Radio". This was announced earlier in April of that year, supposedly due to multiple trademark disputes:

Sega then went on to release Jet Set Radio Future in the U.S. with its name intact, less than 2 years later. This seems like the trademark issue was resolved, whatever it was, but then "Jet Grind" showed up on GBA on June 23, 2003. Then there was a registered trademark for "Jet Grind Radio" in 2008, with news outlets reporting there was a new game in development for the Wii. So I guess it WASN'T resolved, then? They held onto this trademark and continued to extend it for years, before finally abandoning it in 2011, one year before the HD re-release permanently renamed the game back to "Jet Set". So what the hell happened? I set about trying to solve this mystery of what specifically was getting in Sega's way of the original title, and why JSR had its title changed for both Dreamcast and GBA, but JSRF didn't.

Supposedly, if rumor is to be believed, the source of the trademark issue was the classic 8-bit computer game, Jet Set Willy.

The problem with this theory is that Jet Set Willy was never released in the U.S. prior to 2011. It also doesn't make sense when you consider Jet Set Radio has its intended name in the UK, where this supposed trademark problem would be much more apparent. A quick search of the U.S. trademark database shows that both "Jet Set Willy" AND "Jet Set Radio" are active trademarks, so that simply can't be the source. In addition, IGN cites multiple trademark disputes, so more than one had to be problematic.

I searched the trademark history for the JSR series to find any information about a possible trademark dispute. If there was one, it would've been mentioned within publically available government documents. Unfortunately, trademark records for "Jet Set Radio" from before 2012 aren't available; either their application was outright rejected, or the name was changed internally, before Sega interacted with the USPTO. But then I looked at JSRF's trademark journey, and found that there were indeed some issues that needed to be resolved.

JSRF's trademark was filed in May 2001. In July, the USPTO sent Sega their review of their application, and denied them based on two conflicting marks:

It cites two serial numbers of possibly conflicting mark applications. The first belongs to the JET SET clothing brand, owned by TOMEA AG in Switzerland.

It was filed on July 31, 1996, but was not properly registered until February 11, 2003. Since they operate internationally in countries where JSR has its true title, this ended up not being an issue.

The second belongs to our culprit:

Midway Games had apparently filed a trademark for a game titled "Jet Set" on September 10, 1999, just one week before JSR was announced at TGS '99. This was undoubtedly the source of Sega's trademark troubles with JSR, as it was repeatedly cited by the USPTO as problematic. This was strictly between Sega and the U.S. government; Midway themselves seemingly never went after them, even after JSRF's release.

Rather than simply change the title to "Jet Grind" again, Sega attempted to fight this. In response to the review, they requested their application be suspended, reserving their right to argue in its favor. Sega went on to release JSRF as-is on February 26, 2002 without incident. In July, just 5 months after the game's release, their application was suspended as requested:

In response, in September 2003 (over a year later!), Sega requested a removal from suspension. Their argument was that JSRF's full title, and its logo, made the issue of confusion highly unlikely compared to the first game, and the game's registration in Japan was also cited as evidence in their favor.

This did not work. In November, their request for removal was denied. While their Japanese registration was accepted, their arguments were found "unpersuasive".

Midway's application was eventually abandoned on June 10, 2004, and so, Sega's registration of JSRF was finally accepted on January 4, 2005...three years after the game's release. It was eventually cancelled on August 05, 2011. So that's the end of that.

But wait, if Midway was out of the picture, how come the 2008 trademark was still called "Jet Grind"? I can only assume Sega just didn't want to go through another annoying, lengthy legal battle like this. They were apparently willing to try "Jet Set" again in 2012 though, and it paid off.

OR DID IT?

When applying for "Jet Set" again in 2012, Sega got yet another suspension letter. What was the issue this time?

Goddamnit, Willy.

Yes, between the failed 2008 trademark and Sega's release of the HD port of JSR, Jet Set Willy got a re-release on mobile and Xbox 360, released worldwide, with its own bona fide U.S. trademark. Thankfully, this time, Sega came prepared: they had a much lengthier, more persuasive argument in their favor. This finally convinced the USPTO to let them pass.

And that was it. It took three separate battles with the USPTO across 12 years for the "Jet Set" title to finally clear.

EDIT:

 

You're right, I misread their original application, which mentions that the mark had first been in use since 9/19/2012, and includes screenshots from JSR HD's various store pages. So it had something to do with JSR HD at least, but yes, it's probably moreso for the sake of any future JSR games. Which basically means that they'd been selling JSR without a filed U.S. trademark between 2011 and 2022, which means someone could've potentially stolen the name this whole time.

I wonder if their release of JSR HD was partly to stake their claim to the use of that mark, regardless of a certificate of approval.