Nokia saw no jokia when Somasundaram Ramkumar applied to
register the mark JIOKIA for electronic mail and
other online services. Claiming that its mark
NOKIA is famous, Nokia opposed on the ground of
likelihood of confusion and likelihood of dilution by blurring. The
Board decided only the Section 2(d) issue. How do you think this
came out? Nokia Corporation v. Somasundaram
Ramkumar, Opposition No. 91238114 (May 22, 2020) [not
precedential] (Opinion by Judge Michael B. Adlin).
Nokis is one of the world's leading providers of
telecommunications products and services. Applicant Ramkumar is an
individual who has filed a number of applications to register
telecommunications and Internet-related marks in the United States.
He also has applied to register other marks associated with Opposer
(HMD, HMDGLOBAL and LUMIA),and marks associated with other major
providers of telecommunications products and services (AMAZON,
ANDROID and ANDROIDONE).
Ramkumar submitted no testimony or evidence. Nokia submitted
evidence of staggering sales figures and widespread notoriety. The
Board found, and applicant did not contest, that the mark NOKIA is
famous for Section 2(d) purposes. As we know, fame, when found,
plays a dominant role in the du Pont analysis.
Because the marks at issue end in the same four letters, "they
will most likely rhyme when spoken and in any event will sound
quite similar. It is even possible that one of these marks might be
taken for the other when encountered aurally if a listener does not
hear the first part of one of the marks well or in its
entirety." The marks also look similar because of the same
last four letters. Neither mark has any meaning or
connotation.
The Board concluded that the first du Pont factor favored
Nokia.
Nokia argued Ramkumar's actions "strongly suggest"
bad faith. The Board observed that it need not decide that issue in
order to sustain the opposition. [What does applicant's intent
have to do with consumer perception of the marks? - ed.].
The Board also declined to reach Nokia's dilution claim.
And so the Board sustained the opposition.
Article originally published on 26 May 2020
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