Elizabeth Borland and Scott Woldow successfully represented Evonik Degussa GmbH in a trademark opposition against Basic & Co. SRL before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.
The Trademark Trial and Appeal Board focused its analysis on Evonik's AEROSIL mark for agricultural, insulation and building products and found confusion between that mark and Basic's AEROSILEX mark that was approved for publication in association with similar chemicals and building products.
The marks were found to be quite similar in appearance, sound, connotation and commercial impression. Moreover, the Board ruled that consumers are likely to focus on the first part of Basic's mark, which is identical to Evonik's AEROSIL mark. The Board suggested that consumers may even perceive the AEROSILEX mark as a modified version of Evonik's AEROSIL mark. These factors weighed strongly in favor of a finding of likelihood of confusion.
Because the parties' marks are highly similar and their goods were found to be related agricultural chemical products and insulation products, the Trademark Trial and Appeal Board presumed that the channels of trade overlap, and confusion in the trade is likely. The opposition was sustained and registration of Basic's AEROSILEX mark was refused in all three classes.
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