On Wednesday, opposer Cisco Technology, Inc. filed a notice of opposition before the Trademark Trial and Appeal Board against applicant Omcisco Technology INC.’s application for the OMCISCO mark, citing likelihood of consumer confusion and dilution of its famous mark.
According to the opposition, the OMCISCO mark is filed in International Class 9, covering “Control valves regulating the flow of gases and liquids…Electrical transducers; Pressure indicators…Semi-conductors…” Cisco noted that it is in the business of “computer networking, telecommunications, hardware and software (as well as) related goods and services.” The opposer proffered that its marks are used in connection with “semiconductors, chips and chipsets for use in wireless communication applications and computer hardware” and “collecting and analyzing energy supply and data demand,” in addition to other goods and services.
The opposer is the owner of the CISCO mark, the CISCO stylized mark, and numerous CISCO-based marks. Cisco contended that its rights predate the filing date for the applicant’s application for the OMCISCO mark because Cisco has used these names and marks in connection with its goods and services continuously since at least 1984, and 2006 for the stylized CISCO marks. Therefore, as a result of Cisco’s continued use of these names and marks, Cisco asserted that it has established common law rights to them. Cisco added that its marks are valuable assets and a symbol of its goodwill.
Cisco averred that consumers “are likely to be confused as to source by Applicant’s registration and use of such a similar mark for related goods.” Cisco alleged that consumers are likely to create a false connection or association between Cisco’s mark, entity, goods and services and those of the applicant. Cisco proffered that the similarity of the OMCISCO mark “uniquely and unmistakably points to Cisco’s famous name and identity.” Furthermore, Cisco stated that “OMCISCO fully incorporates Cisco’s CISCO name and mark. Further, the difference of only two letters between CISCO and OMCISCO does not sufficiently distinguish the mark.” Therefore, Cisco contended there is a likelihood of consumer confusion, mistake or deception as to the source and origin of the mark, goods and services. Additionally, Cisco claimed that its rights in its famous CISCO mark will be diluted of its distinctive quality. Consequently, Cisco argue that it will be harmed by the registration of the applicant’s application for the OMCISCO mark.
Cisco has sought for the opposition to be sustained and for the applicant’s application to be rejected.
Cisco is represented by Fenwick & West LLP.
