Yahoo! Opposes Registration of YAHOOSHI Trademark
Shenzhen Tianzhuo Yaomei Technology Co., Ltd. filed for registration of the YAHOOSHI trademark. The application has been opposed by Oath Inc, a subsidiary of Verizon and owner of YAHOO! The company has filed an opposition before the Trademark Trial and Appeal Board.
Yahoo Business, including its messaging and communication software and its websites and the YAHOO! trademark associated with the business is owned by Oath Inc.
The applicant company has filed for a trademark in international class 21, that deals with covers “Dental flossers; Electric face cleaning brushes; Electric toothbrushes; Electric toothbrush replacement heads…”
While asserting that it filed opposition before the Trademark Trial and Appeal Board in a timely manner,
In its response, Oath Inc. claims that registration of the applicant's trademark can damage its reputation and goodwill.
Oath Inc has also stated in its application that the YAHOO! trademark “has enjoyed substantial commercial success during its 20+ years using the YAHOO! mark” and it has promoted and advertised itself using the YAHOO! mark.
Here are the following contentions that Oath Inc. raised in its opposition application:
1. The Well-Known Mark: The YAHOO! mark has become famous and synonymous with the Yahoo brand, as well as its goods and services. Oath Inc. also sells household items, such as mugs, portable chargers, and reusable bottles with the YAHOO! branding.
2. First Come, First Serve: YAHOO! mark has priority based on its registration and prior use of the mark and trade name in commercial use.
3. Similarities: Oath Inc said that YAHOOSHI, the applicant’s mark “is confusingly similar” to the registered YAHOO! mark and trade name, adding that the “Applicant’s Mark encompasses the YAHOO portion of the famous YAHOO! Mark and the YAHOO! trade name in its entirety.”
4. Similar Goods and Services:
Oath Inc. stated that the applicant’s goods and services are related because they both offer and sell household items. Therefore, because of the similarities between the marks, there is an “increase (in) the likelihood of confusion.” Moreover, consumers could create a false association between the two marks or entities.
It will be interesting to see how this trademark battle shapes up.
