On December 10, 2009 Google filed for the NEXUS ONE trademark, assigned the US Federal registration number of 77891022. The class the mark applied under was 009. Google sought registration of the mark NEXUS ONE for use in connection with “mobile phones”. Unfortunately for Google, someone goofed up on their initial conflict search report.
Turns out that there is a similar mark “NEXUS” (US Federal Registration number 3554195) already registered under the same class of goods with the description “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”.
Not to mention there are already several other similar existing marks bearing the name “NEXUS” in the identical category which can be viewed on Trademarkia.com. This apart, the application filed for by Google is a TEAS-Plus application which means that if Google cannot sufficiently overcome the objections raised by the examining attorney at the USPTO in this office action, the result may just be an outright rejection and refusal to register the mark “NEXUS ONE”.
Also, the TEAS-Plus form which costs just $275 per class of goods and/or services has stricter filing requirements, which are : To obtain a filing date under Rule 2.22(a), any application must include at least these five (5) elements: (1) the name of the applicant; (2) a name and address for correspondence; (3) a clear drawing of the mark; (4) a listing of the goods and/or services; (5) a filing fee for at least one class of goods or services. Obviously, a “complete” application must include other elements; however, merely providing these five elements at least ensures that the application will not be held “informal” and returned.
The rejection issued by the examining attorney of Google’s “Nexus One” mark states that, The applied-for mark encompasses the registered mark. Likelihood of confusion is often found where the entirety of one mark is incorporated within another AND that the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.
Ok, so maybe Google can overcome these objections. What about the one raised by author Philip K. Dick’s daughter Isa Hackett who alleges, that Google has lifted the name Nexus from the author’s book , “Do Androids Dream of Electric Sheep?”and ultimately in Blade Runner. On the other hand, Google can worry indirectly that the Nexus One phone’s infringed Apple’s iPhone.
As Steve Jobs noted when accusing HTC of swiping the iPhone’s user interface, underlying architecture and hardware,“We think competition is healthy, but competitors should create their own original technology, not steal ours.” HTC produces the Nexus One phone, which uses the Android operating system and is designed and sold by Google Inc. directly to consumers.
But the main crux is can Google overcome its Nexus One Trademark objections raised by the USPTO? Keep watching this space for more.
And before we forget, Have a wonderful St.Patrick’s Day!