Trade mark ‘Nexus’ too close for comfort

(For those of you interested in following the various issues arising out of Google’s bid for the “NEXUS ONE” trade mark, be sure to read our previous blog on claims by the estate of science fiction writer Philip K Dick that the name has been taken from his novel Do Androids Dream of Electric Sheep?, later made into the movie Blade Runner.)  
 
Quite apart from its unresolved issues with androids and electric sheep, Google has hit another hurdle in its application for the “NEXUS ONE” trade mark which it is currently using for its recently released smartphone. The U.S. Patent and Trademark Office issued a notice of refusal on 9 March 2010 denying the application to register the mark. The basis of the refusal was that it is too similar to the “NEXUS” trade mark (U.S. Registration No. 3554195) registered by the Portland based company Integra Telecom.
 
Google had applied to have the mark registered back in December 2009, but Integra has held the “NEXUS” trade mark since 2008. U.S. Trade Mark Examining Attorney David Taylor stated the basis of his decision to be that the “NEXUS ONE” mark so resembles the mark of Integra that it is likely to cause confusion. Factors relevant to the decision were the similarity of the marks, the similarity of the goods and/or services to which they were applied, and the similarity of trade channels used for each.
 
Mr Taylor pointed out in his decision that the goods and/or services of the parties need not be identical or directly competitive to make a finding of likely confusion. It is sufficient that they be related in some way, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers in circumstances that would give rise to a mistaken belief that the goods and/or services originate from a common source.
 
Google is seeking the trade mark in connection with “mobile phones” whereas Integra has the trade mark in respect of the provision of “telecommunication services”. Mr Taylor indicated that the result is that the applied for mark encompasses the registered mark. Google has 6 months within which to respond to the refusal by submitting further evidence and arguments in support of the registration. Failing that, other options include reaching a licence agreement of some form with Integra or engaging in a post-release re-branding of the smartphone product.      
 
The full text decision of the U.S. Patent and Trademark Office can be found here.