カテゴリー: Article 4(1)(x)

BULLDOG vs GREEN BULLLDOG

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The Japan Patent Office (JPO) dismissed an opposition against TM Reg no. 6724674 for the wordmark “GREEN BULLDOG” claimed by DAVIDE CAMPARI – MILANO N.V. on the grounds of dissimilarity to and unlikelihood of confusion with earlier IR no. 1141768 for the wordmark “BULLDOG” for use on gin in Class 33.
[Opposition No. 2023-900229, decided on October 1, 2024]

GREEN BULLDOG

On April 15, 2022, Green Wave Unlimited Japan Co., Ltd (GWUJ) filed a trademark application with the JPO for the word mark “GREEN BULLDOG” and its Japanese transliteration arranged in two lines in connection with various goods in Classes 3, 5, and 33, including gin (Cl. 33) [TM App No. 2022-44073].

The applicant sells CBD products bearing the contested mark.

https://www.greenbulldog.jp/

The JPO examiner granted protection of the contested mark on June 2, 2023.

BULLDOG

DAVIDE CAMPARI – MILANO N.V. filed a partial opposition to the contested mark in respect of Western spirits, alcoholic fruit beverages, Japanese shochu-based beverages in Class 33 within the two-month statutory period from the date of publication on August 17, 2023, claiming that “GREEN BULLDOG” should be partially cancelled in contravention of Article 4(1)(x), (xi), (xv) and (xix) of the Japan Trademark Law by citing its own earlier IR no. 1141768 for the word mark “BULLDOG” in Class 33.

CAMPARI argued that since “BULLDOG” gin has achieved a high degree of recognition among relevant consumers and traders in Japan and abroad, the literal part of “BULLDOG” plays a dominant role in identifying the source of the contested mark when used in relation to the goods in question. If so, both marks should be considered similar and consumers are likely to confuse a source of alcoholic beverages bearing the contested mark with CAMPARI or “BULLDOG” gin.

JPO decision

The JPO Opposition Board did not allow a certain degree of recognition of the cited mark due to insufficient evidence provided by CAMPARI.

With respect to the similarity of the mark, the Opposition Board found that both marks are clearly distinguishable from appearance because the contested mark consists of alphabets and Japanese katakana characters arranged in two lines. On the other hands, the cited mark does not contain Japanese katakana characters and is not arranged in two lines.

Aurally, “BULLDOG” and “GREEN BULLDOG” are distinguishable because of a clear difference in the prefix sound.

A conceptual comparison is noteworthy as each mark evokes a different meaning.

Based on the above findings, the Board found that the two marks were dissimilar and unlikely to cause confusion when used for the goods in question.

Consequently, the Board decided to reject the opposition in its entirety and to maintain the contested mark as the status quo.

SpaceX Scores Win in Trademark Invalidation Action

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The Japan Patent Office (JPO) sided with Space Exploitation Technologies Corporation (SpaceX) in an attempt to revoke TM Reg no. 6613282 for the mark “SPACEX / spacex.co.jp” (cl. 25, 26) in contravention of Article 4(1)(viii) and (xv) of the Japan Trademark Law.
[Invalidation case no. 2023-890010, decided on June 4, 2024]

Contested mark

NDR Tech Co., Ltd. filed trademark application for a mark composed of the two word-elements “SPACEX” and “spacex.co.jp”, arranged in two lines (see below) for use on apparels and footwear in class 25 and insignias for wear, buckles for clothing, badges for wear, brooches for clothing, brassards in class 26 with the JPO on December 20, 2021 (TM App no. 2021-163633).

The JPO examiner granted protection to the mark on August 19, 2022.

Invalidation action by SpaceX

Space Exploitation Technologies Corporation, aka SpaceX, filed an invalidation action on February 15, 2023 and claimed the contested mark shall be invalidated in contravention of Article 4(1)(viii), (x), (xv) and (xix) of the Japan Trademark Law.

Article 4(1)(viii) is a provision to prohibit registration of trademark that contains the representation or name of any person, famous pseudonym, professional name, or pen name of another person, or famous abbreviation thereof.

Article 4(1)(xv) prohibits the registration of trademarks that are likely to cause confusion with the business of other entities.

SpaceX could not rely on Article 4(1)(xi) because their attempt to register the mark “SPACEX” in class 25 (TM App no. 2020-125746) was unsuccessful due to a conflict with the earlier TM Reg no. 6222450 for wordmark “SPACEX” owned by NDR Tech.

SpaceX argued that the mark “SpaceX” has been widely recognized as a commercial name of the claimant among the general public in Japan even before the time of initial application of the contested mark due to its frequent appearance in print and broadcast media.

NDR Tech asserted that the domain name “spacex.co.jp” is only available to companies registered in Japan. As the proprietor of the domain, they have a legitimate interest in registering and owning the contested mark.

JPO decision

The JPO Invalidation Board admitted that the mark “SpaceX” has become famous among the general public as an abbreviation of the claimant.

It is obvious that the contested mark contains the term “SPACEX” and “spacex”, which are known as a famous abbreviation of the claimant. Based on the fact that NDR Tech did not obtain the consent of SpaceX, the contested mark does not comply with the requirements of Article 4(1)(viii).

Bearing in mind that the mark “SpaceX” has been used on T-shirts, hoodies and caps, the Board has reasons to believe that relevant consumers are likely to confuse a source of goods in question bearing the contested mark with SpaceX. If so, the contested mark shall be revoked under Article 4(1)(xv) as well.

https://shop.spacex.com/

In the decision, the Board noted ‘The fact that NDR Tech owns the domain “spacex.co.jp” is irrelevant to the invalidity of the contested mark based on the above articles.’

ANYTIME FITNESS Unsuccessful Opposition against “anytime 24” mark in relation to fitness service

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On October 17, 2023, the Japan Patent Office (JPO) dismissed an opposition claimed by Anytime Fitness Franchisor LLC against TM Reg no. 6630608 for the mark “anytime 24” in class 41 due to dissimilarity and unlikelihood of confusion with “ANYTIME FITNESS”.

[Opposition case no. 2022-900541]

“anytime 24”

Opposed mark, consisting of “anytime”, “24” and a clock device (see below), was filed by ShinMaywa Industries, Ltd. for use on various services in classes 35, 37, 39 and 41, including sports instruction services; arranging, conducting and organization of seminars relating to sports; production of videotape file in the field of sports; providing electronic publications relating to sports on October 14, 2021.

The JPO granted protection of the “anytime 24” mark on October 19, 2022, and published it for a post-grant opposition on October 31, 2022.

Opposition by ANYTIME FITNESS

Anytime Fitness Franchisor LLC (AFF), an operator of the fastest-growing fitness club “ANYTIME FITNESS” franchise in the world, with more than 4 million members at more than 4,800 gyms on all seven continents, filed an opposition on December 29, 2022.

AFF argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (viii), (x), (xi), (xv) and (xix) of the Japan Trademark Law on the grounds that “ANYTIME FITNESS” has become famous among relevant consumers as a source indicator of the fitness gym opening 24 hours a day, 365 days a year, and the term “ANYTIME” is a dominant portion of cited mark (TM Reg nos. 5284268 and 5742766) in connection with fitness-related services in class 41. If so, the consumers are likely to confuse the source of the opposed mark with AFF when used on fitness-related services because of close resemblance between the opposed mark and “ANYTIME FITNESS”.

JPO decision

The JPO Opposition Board found the opposed mark, from its configuration, gives rise to a pronunciation and meaning of “anytime” because the digit “24” is inherently descriptive.

In the meantime, the Board held the cited mark has a pronunciation of “ANYTIMIE FITNESS” and does not give rise to any specific meaning as a whole. Even if the word “FITNESS” lacks distinctiveness in relation to fitness-related services, the Board has a reason to believe the cited mark shall be assessed in its entirety by virtue of a tight combination with other elements.

When it comes to compare a dominant portion “anytime” of the opposed mark with “ANYTIME FITNESS”, the consumers are unlikely to confuse the source of two marks from visual, phonetical and conceptual points of view, the Board said.

Based on the foregoing, the JPO concluded dissimilarity of mark and unlikelihood of confusion, and decided to dismiss the opposition entirely.

McDonald Unsuccessful in Trademark Opposition against “mac”

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The Japan Patent Office (JPO) did not side with McDonald in opposition against Japanese TM Reg no. 6575774 for stylized wordmark “mac” in class 35 due to dissimilarity to “Mc” and unlikelihood of confusion with McDonald.

[Opposition case no. 2022-900294, decided on August 15, 2023]

Opposed mark “mac”

The opposed mark, consisting of a stylized word “mac” (see below), was filed by Daiya Group Inc. for use on retail services or wholesale services for various goods including, meat, milk, carbonated drinks [refreshing beverages] and non-alcoholic fruit juice beverages, tea, coffee and cocoa in class 35 with the JPO on October 27, 2021.

The applicant has used the opposed mark as a tradename of their drug store “mac”.

Screen capture from Google map

The JPO granted protection of the opposed mark on June 22, 2022 and published it for post-grant opposition on June 30, 2022.

Opposition by McDonald

McDonald International Property Company Limited filed an opposition against the opposed mark on July 20, 2022 with the JPO and claimed cancellation of the opposed mark in contravention of Article 4(1)(x), (xi) and (xv) of the Japan Trademark Law based on earlier trademark registrations and various marks used in relation to their business.

McDonald argued that the mark “Mc” has been remarkably famous as a source indicator of the opponent and it gives rise to a same sound with the opposed mark “mac”. If so, relevant consumers would confuse the source of retail services or wholesale services for meat, milk, carbonated drinks [refreshing beverages] and non-alcoholic fruit juice beverages, tea, coffee and cocoa bearing the opposed mark with McDonald due to close resemblance of the marks and relatedness to food business.

JPO decision

The Opposition Board pointed out McDonald has been regularly using the mark “Mc” in a tight combination with other word. Regardless of the fact that consumers are accustomed to call McDonald as “MAC”, there is no evidence to show the opponent has used “MAC” in connection with their business.

By taking account of insufficient evidence to demonstrate substantial recognition of the cited marks, the Board has no reason to admit famousness of the mark “Mc” as a source indicator of McDonald.

In assessing the similarity of mark, the Board found the cited marks are aurally dissimilar to the opposed mark since they are pronounced as “emˈsiː” or “mækˈkæfˈeɪ” in its entirety. Besides, there is no ground to find visual and conceptual similarity of respective mark. If so, the Board believes the opposed mark is clearly dissimilar to the cited marks.

To the extent that there is insufficient evidence to support how the term “MAC” has played a significant role in indicating the source of McDonald, the Board held it unlikely that relevant consumers confuse the opposed mark with McDonald when used on the services in question.

Based on the foregoing, the Board dismissed the opposition entirely and decided that the opposed mark “mac” shall remain valid as the status quo.

Shangri-La Unsuccessful in Trademark Opposition Over “Shangri-La Golf”

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The Japan Patent Office (JPO) dismissed an opposition claimed by Shangri-La Hotels against TM Reg no. 6610570 for the mark “Shangri-La-Golf” in class 35 due to dissimilarity between “Shangri-La” and “Shangri-La-Golf”.

[Opposition case no. 2022-900465, decided on July 26, 2023]

Opposed mark

A Japanese individual filed a stylized word mark “Shangri-La-Golf” (see below) for use on retail and wholesale services in relation to woven fabrics, beddings, clothing, footwear, and personal articles in class 35 with the JPO on June 22, 2020.

The JPO examiner rejected the mark in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier trademark registrations for wordmark “SHANGRI-LA”.

However, as a result of the JPO Appeal Board’s decision that found dissimilar to “SHANGRI-LA”, the mark could be registered on September 6, 2022.

Opposition by Shangri-La Hotels

Shangri-La International Hotel Management Ltd filed an opposition against the opposed mark on November 11, 2022 and argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (viii), (x), (xi), (xv), and (xix) of the Japan Trademark Law due to a remarkable degree of recognition of the cited mark “Shangri-La” and close resemblance between the opposed mark and “Shangri-La”.

JPO decision

The JPO Opposition Board questioned a remarkable degree of recognition of the cited mark among relevant public in Japan by stating that the produced evidence is insufficient to find such recognition objectively.

As for appearance, sound and meaning of the opposed mark, the Board found

“The opposed mark consists of “Shangri”, “La”, and “Golf” written in the same font and size, and tightly united by a hyphen (-). Visually, there is no reason to find respective element perse independently plays a role in source indicator of the opposed mark. Besides, the sound arising from the opposed mark as a whole can be pronounced easily.

Even if the term “Golf” has the meaning of a kind of ball game, it is reasonable to find that the term would not be recognized as directly indicating a descriptive meaning or specific quality of the services in question. Relevant consumers would see the opposed mark as a whole.

Therefore, the opposed mark shall be assessed in its entirety and give rise to a pronunciation of “Shangri-La-Golf” and no specific meaning.”

Based on the above finding, the Board decided the opposed mark “Shangri-La-Golf” is dissimilar to the cited mark “Shanri-La” because there is visual and phonetical distinction between the marks by virtue of the term “Golf” and the opposed mark does not give rise to a meaning related to ‘a remote usually idyllic hideaway’.

Accordingly, the Board found the opposition baseless and decided the opposed mark remains as the status quo.

HERMES Victory in trademark dispute against HAIRMES

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On July 26, 2023, the Japan Patent Office (JPO) sided with Hermes International in an invalidation trial against TM Reg no. 6275593 for the wordmark “HAIRMES” by finding the owner’s unjustified intention to free-ride and dilute the famous fashion brand “HERMES” and cause confusion.

[Invalidation case no. 2022-890082]

Disputed mark

Dog Diggin Designs, LLC applied a wordmark “HAIRMES” in standard character for use on beds for household pets; pillows for pets; pet cushions in class 20, and toys for pets in class 28 with the JPO on October 16, 2019. Apparently, the company promotes parody dog toys & dog beds, and other pet supplies.

https://www.dogdiggindesigns.com/

Hermes International filed a post-grant opposition against the disputed mark with the JPO on October 15, 2020, and argued the disputed mark shall be canceled in contravention of Article 4(1)(x), (xi), (xv), and (xix) of the Trademark Law because of the remarkable reputation and popularity of the HERMES brand in the fashion industry and a high degree of similarity between “HAIRMES” and “HERMES” likely to cause confusion among relevant consumers in Japan.

The JPO Opposition Board decided to dismiss the opposition by finding unlikelihood of confusion due to a low degree of similarity between the marks. Click here.

Invalidation action by Hermes

Hermes International filed an invalidation action with the JPO based on the same grounds on October 18, 2022, and repeatedly argued the owner must have had an intention to imitate and free-ride on reputation and goodwill of the famous fashion brand “HERMES” by making use of similar trade dress with Hermes packaging color and design in addition to similar HAIRMES mark.

JPO decision

The JPO Invalidation Board admitted that “HERMES” has been widely recognized as a luxury fashion brand and source indicator of Hermes International.

In the assessment of similarity of mark, the Board found both marks are dissimilar in sound and concept. However, these marks give a similar visual impression by sharing the first letter “H” and the four letter “RMES” in the latter half of respective word, which catches the attention of consumers. If so, the Board has a reason to believe there is a certain degree of similarity between the marks.

The Board paid attention to a fact that the owner promotes pet beds and pet toys bearing similar color and decoration to the iconic Hermes packaging. Based on the circumstances, the Board had a view that presumably the owner, knowing that the HERMES mark has been widely recognized among consumers in Japan, must have had an intention to free-ride or dilute reputation on HERMES.

Based on the foregoing, the Board found relevant consumers are likely to confuse the source of pet beds and toys bearing the disputed mark with Hermes International in view of close association with fashion items as well, and decided to invalidate the disputed mark entirely.

VOLVO Fails Trademark Opposition against VOLVOX

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The Japan Patent Office (JPO) dismissed a trademark opposition filed by Volvo Trademark Holding AB against TM Reg no. 6602236 for the mark “VOLVOX” due to the dissimilarity of the mark and unlikelihood of confusion with “VOLVO”.

[Opposition case no. 2022-900449, Gazette issued date: June 30, 2023]

Opposed mark

The opposed mark (see below) was filed in the name of VOLVOX Co., Ltd. for use on advertising and publicity services in class 35 with JPO on March 4, 2022.

The JPO granted protection of the opposed mark on August 8, 2022, and published it for post-grant opposition on August 25, 2022.

Opposition by VOLVO

Volvo Trademark Holding AB filed an opposition against the opposed mark on October 25, 2022, before the lapse of a two-month statutory period counting from the publication date and claimed the opposed mark shall be canceled in contravention of Article 4(1)(x), (xi) and (xv) of the Japan Trademark Law by citing earlier TM Reg no. 4729933 for wordmark “VOLVO” in standard character covering advertising and publicity services in class 35 and others.

VOLVO argued the literal element of the opposed mark “VOLVOX” is confusingly similar to “VOLVO” from visual, aural, and conceptual points of view by taking account of the remarkable reputation of “VOLVO” as a source indicator of VOLVO cars. If so, it is likely that relevant consumers confuse a source of the service in question bearing the opposed mark with the opponent.

JPO decision

The Board admitted that the “VOLVO” mark has acquired a substantial degree of reputation and popularity as a source indicator of VOLVO cars among relevant consumers.

However, the Board negated the similarity between “VOLVO” and “VOLVOX” by stating:

“The opposed mark gives rise to a sound of ‘vol-voks’ and a meaning of ‘freshwater green algae of the genus’. In the meantime, the cited mark has the sound of ‘Volvo’ and the meaning of ‘brand name of automobiles manufactured and sold by VOLVO’. The difference arising from the presence of the letter “X” and figurative elements would be anything but visually negligible. Likewise, both marks are aurally distinguishable due to the difference in the number of sounds and sound structure. Conceptually, there is no doubt to cause confusion because of clear distinction in respective meaning.”

By taking into consideration a lower degree of similarity between the marks, the Board found that relevant consumers are unlikely to associate and confuse the opposed mark with VOLVO even when used on services in question.

Based on the foregoing, the Board dismissed the opposition entirely and decided that the opposed mark “VOLVOX” shall remain valid as the status quo.

Champion loses trademark opposition over “C” logo

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The Japan Patent Office (JPO) dismissed an opposition filed by HBI Branded Apparel Enterprises, LLC against TM Reg no. 6560200 for the C device mark due to dissimilarity to and the unlikelihood of confusion with the iconic “C” emblem of Champion.

[Opposition case no. 2022-900315, decided on May 22, 2023]

Opposed mark

DAIEI TRADING CO., LTD. a Japanese company, applied a device mark consisting of the “C” curved line and a heart & circle placed vertically inside of the line (see below) for use on apparel, footwear, sports shoes, and sportswear in class 25 with the JPO on December 8, 2021.

The JPO examiner did not raise any objection to the mark at all in the course of the substantive examination.

Accordingly, the mark was registered on May 23, 2022, and published for post-grant opposition on May 31, 2022.

Opposition by Champion

HBI Branded Apparel Enterprises, LLC filed an opposition against the opposed mark on August 2, 2022.

HBI argued the opposed mark shall be canceled in contravention of Article 4(1)(vii), (x), (xi), (xv), and (xix) of the Japan Trademark Law on the grounds that a high degree of similarity between the opposed mark and the iconic “C” emblem (see below) becoming famous as a source indicator of the Champion brand in connection with casual wear, sportswear, and other related goods would inevitably cause confusion among relevant consumers when the opposed mark is used on goods in question.

JPO decision

The JPO Opposition Board admitted that the “C” emblem has acquired a high degree of reputation as a result of substantial use in Japan for more than four decades and become famous as a source indicator of the opponent.

In the meantime, the Board negated the similarity between the marks by stating that:

From the appearance, both marks contain a curved line that looks like a “C” letter; however, the respective line looks totally different by means of a wide difference in line thickness. Besides, there is a clear difference between figurative elements depicted inside of the line (a heart & circle device placed vertically in the opposed mark, a thick vertical line in the cited mark). Therefore, the two marks are visually distinguishable.

Conceptually, the opposed mark does not give rise to any specific meaning. Meanwhile, the cited mark has the meaning of ‘famous brand of the opponent.’ If so, both marks are dissimilar in concept.

Based on the foregoing, the Board has a reason to believe that the opposed mark is dissimilar to the cited mark, even if they cannot be compared in terms of pronunciation.

In a global assessment of the likelihood of confusion, the Board found:

Even if the cited mark is widely recognized among consumers in Japan as a source indicator of the Champion’s business, given the low degree of similarity to the opposed mark, it would be unlikely that relevant traders and consumers at the sight of the opposed mark used on goods in question immediately associate or recall the cited mark or the opponent business.

If so, it is reasonable to consider that relevant consumers are unlikely to confuse the source of the goods bearing the opposed mark with Champion or another entity systematically or economically connected with the opponent.

Based on the foregoing, the JPO dismissed the entire allegations and decided the opposed mark shall remain valid as the status quo.

Trademark Dispute over Side Stripe on Footwear

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In a trademark dispute along the side of shoes between Vans Incorporated and Revenge X Storm Limited, the Japan Patent Office (JPO) did not side with Vans Incorporated.

[Invalidation case no. 2021-890049, Decision date: September 29, 2022]

REVENGE shoes

Revenge X Stream Limited filed a device mark representing a shoe for the right leg with a thunder-shaped line along the side of the shoe for use on ‘sports shoes’ in class 25 with the JPO on June 5, 2018.

The mark was successfully registered on October 2, 2020 (TM Reg no. 6299288).

Invalidation action by VANS

VANS INC. filed an invalidation action on September 16, 2021, and argued the mark shall be invalidated in contravention of Article 4(1)(x), (xi), and (xv) of the Japan Trademark Law by citing earlier trademark registrations for the iconic Vans Side stripe used on OLD SKOOL (see below) since 1977.

VANS alleged the appearance of Vans OLD SKOOL perse has become famous to indicate VANS’ shoes among relevant consumers of sports shoes in Japan.

JPO Decision

To my surprise, the JPO Invalidation Board denied a certain degree of reputation and popularity of the Vans Side stripe as a source indicator of VANS’ shoes from the totality of the produced evidence.

Besides, the Board negated the similarity of both marks by stating:

“The mark in question represents a thunder-shaped sideline along the side of sports shoes. On the other hand, the Vans Side stripe consists of a gently wavy curved sideline along the side of the shoes.

Therefore, the appearance of the two marks clearly differs in the shape of the sideline on the side of the shoe and is clearly distinguishable.

In this way, even if both marks cannot be compared in terms of concept, they are dissimilar and unlikely to be confused in terms of appearance and pronunciation, and therefore, the degree of similarity shall be quite low.”

Given a low degree of similarity between the two marks, the Board has a reason to believe that relevant consumers are unlikely to confuse a source of sports shoes bearing the mark in question with VANS.

Based on the foregoing, the Board found the entire allegations of VANS groundless and decided to dismiss invalidation action accordingly.

APPLE Unsuccessful in Trademark Opposition to “MACLOGIC”

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The Japan Patent Office (JPO) dismissed an opposition filed by the U.S. tech giant, Apple Inc. against trademark registration no. 6370191 for a word mark “MACLOGIC” due to dissimilarity to and less popularity of the “Mac” mark among general consumers as a source indicator of Apple’s personal computers.

[Opposition case no. 2021-900239, Gazette issued date: June 24, 2022]

MACLOGIC

The opposed mark, consisting of the word “Maclogic” in standard character, was filed in the name of MACLOGIC Co., Ltd., a Japanese company providing EC consulting services and SNS marketing.

The mark was filed with the JPO on December 24, 2020, and admitted registration on March 9, 2021, over computer programs in class 9 and computer software design, computer programming, or maintenance of computer software, providing computer programs on data networks in class 42.

Opposition by Apple Inc.

On June 21, 2021, Apple Inc. filed an opposition to “Maclogic” and contended that the opposed mark shall be canceled in contravention of Article 4(1)(x) and (xv) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to refrain from registering a junior mark that is identical with, or similar to, any senior mark that has acquired a certain degree of recognition among relevant consumers.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services, to the benefit of brand owners and users.

Apple Inc. argued that the mark “Mac” has been famous as a source indicator of the opponent in relation to personal computers and their operating system. Being that relevant consumers consider the opposed mark as a composite mark composed of “Mac” and logic”, the term “Mac” per se shall be a prominent portion of the opposed mark.

If so, it is likely that relevant consumers confuse or misconceive the source of the opposed goods with Apple or any business entity systematically or economically connected with the opponent due to the high popularity of Apple’s “Mac” computers and the close resemblance between “Maclogic” and “Mac”.

Board decision

The Opposition Board found the “Mac” mark has acquired a certain degree of recognition among relevant consumers and trades in relation to personal computers and its operating system. However, to my surprise, the Board questioned if the mark has acquired a similar degree of popularity among general consumers.

Given the opponent mark has not been famous among general consumers, the Board found the opposed mark “Maclogic” in its entirety is dissimilar to the opponent mark “Mac” from visual, phonetical, and conceptual points of view.

Taking into consideration a low degree of similarity between the marks and popularity of Apple’s “Mac” mark, the Board had no reason to believe that consumers would mistakenly assume the opposed goods originate from the same source as or are associated with, the opponent when used on goods in question.

Based on the foregoing, the Board decided Apple’s opposition was groundless and dismissed the entire allegations.