Recently, the PTO denied Google’s trademark application for NEXUS ONE, stating that “Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3554195.”
Here, the applicant seeks registration of the mark NEXUS ONE for use in connection with “mobile phones”. The registrant uses the mark NEXUS in connection with “providing telecommunication services, namely, transmission of data and voice, and enhanced calling features, namely, conference calling, call forwarding, call rejection, call return, call waiting, caller ID, caller ID block, continuous redial, specialized ringing services, fax overflow services, line hunting, speed calling, long distance telephone service, inbound toll-free service, voice mail, and high-speed access to a global computer network, all of the foregoing excluding providing multiple-user access to a global computer information network for participants in the physical oil industry”.
The applied-for mark encompasses the registered mark. Likelihood of confusion is often found where the entirety of one mark is incorporated within another. In re Denisi, 225 USPQ 624, 626 (TTAB 1985) (PERRY’S PIZZA for restaurant services specializing in pizza and PERRY’S for restaurant and bar services); Johnson Publishing Co. v. International Development Ltd., supra (EBONY for cosmetics and EBONY DRUM for hairdressing and conditioner); and In re Sought Bend Toy Manufacturing Co., Inc., 218 USPQ 479, 480 (TTAB 1983) (LIL’ LADY BUGGY for toy doll carriages and LITTLE LADY for doll clothing). Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982)(“the presence of the additional term ‘DRUM’ in applicant’s mark would for many customers, serve only to suggest that this may be a new or special line of variation within opposer’s ‘EBONY’ and ‘EBONE’ cosmetic groups”).
It’ll be interesting to see how this plays out.
Tracking Trademarks 5/12/10
Using Scribblelive to track mentions of “trademark” on Twitter today.