Oath Inc., a subsidiary of Verizon and owner of the YAHOO! trademark has filed an opposition before the Trademark Trial and Appeal Board on Wednesday the application for YAHOOSHI, a mark sought by Shenzhen Tianzhuo Yaomei Technology Co., Ltd. Oath Inc. claims that it is and will be damaged by the registration of the applicant’s mark.
Oath Inc. owns the Yahoo business, including its messaging and communication software and its websites and the YAHOO! trademark associated with said business. Furthermore, the opposer asserted that it “has enjoyed substantial commercial success during its 20+ years using the YAHOO! mark” and it has promoted and advertised itself using the YAHOO! mark. As a result, Oath Inc. claimed that 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.
The applicant filed its application for the YAHOOSHI mark in International Class 21, which covers “Dental flossers; Electric face cleaning brushes; Electric tooth brushes; Electric toothbrush replacement heads…” The opposer asserted that it opposed in a timely manner.
Oath Inc. asserted that its YAHOO! mark has priority based on its registration and prior use of the mark and trade name in commercial use. Furthermore, Oath Inc. proffered that 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.” Additionally, Oath Inc. claimed that the applicant’s goods and services are related because they both offer and sell household items. Consequently, the opposer averred that because 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.
Oath Inc. also claimed that the YAHOO! mark will be diluted if the applicant’s mark is registered. In particular, the opposer noted that Yahoo advertises and promotes using its mark and its “has had substantial sales of goods and services and substantial traffic to Yahoo’s websites and prominent use of the YAHOO! Mark in connection with offering search, email and messaging products and services,” thus it argues that this mark is distinctive. However, Oath Inc. asserted that its famous mark would lose its distinctive quality from the registration of that YAHOOSHI mark. Consequently, Oath Inc. alleged that because the applicant’s mark and its own mark “closely resemble” each other, the YAHOO! mark is likely to be diluted of its distinctive quality.
As a result, Oath Inc. claimed that it will be damaged by the registration of the applicant’ YAHOOSHI mark. The opposer requests that the opposition is sustained and that the registration of the YAHOOSHI mark is refused. Oath is represented by Kelly IP.
