TTABlog Test: Is JIOKIA Confusable with NOKIA for Electronic Mail Services?

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 Nokia Corporation v. Somasundaram Ramkumar, Opposition No. 91238114 (May 22, 2020) [not precedential] (Opinion by Judge Michael B. Adlin).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.

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Text Copyright John L. Welch 2020.