On Friday, NetScout Systems, Inc., an application and network performance management company, filed an opposition before the Trademark Trial and Appeal Board for applicant Xiong Bin’s trademark application claiming it would be damaged by the registration, citing likelihood of confusion and dilution by blurring and tarnishment.
The applicant has sought to register the GNEINESS mark. NetScout “is the current owner of the registered marks NGENIUS and NGENIUSONE use on or in connection with computer hardware and software for managing computer networks.” Furthermore, NetScout claimed that it or its predecessors have used and continue to use the NGENIUS mark since at least 2000 “in interstate commerce in the United States and has established common law rights.” The opposer has had the NGENIUS registered trademark since 2002 and the NGENIUSONE since 2014. NetScout asserted that both of its marks share the phrase “GENIUS,” which “mak[es] that term an indicator of source for Opposer.” Moreover, NetScout proffered that consumers recognize its goods and services “under ‘GENIUS’ formative marks.” Furthermore, NetScout stated that its marks “have become valuable assets” to identify its products and that they have become famous. Additionally, NetScout claimed that it has used these marks in its advertising, marketing, product packaging and other materials.
The applicant has sought to register its mark to cover “computer hardware’ computer memory devices; computer peripheral apparatus; digital signage; earphones; eyeglasses; headphones; instruments for measuring length; motion picture cameras; protective covers for smartphones…” The application was filed in July 2019; the applicant claimed that the mark should be registered based on its use in interstate commerce. Applicant Xiong Bin alleged that the first use of the mark was in July 2018 and in commerce was September 2018. However, NetScout claimed that it has been using its respective marks in commerce in connection with “computer hardware; computer memory devices; computer peripheral apparatus; [and] digital signage” before July 2019 when the applicant filed the application for the GNEINESS Mark. Consequently, the opposer claimed it has senior common law rights in comparison to the applicant.
NetScout has asserted that the applicant’s mark “is a close approximation of” and “substantially similar in appearance,” “sound,” and “commercial impression” to NetScout’s marks. Furthermore, the marks cover similar goods for both the applicant and the opposer, and these goods “are or will be advertised and promoted to and directed at the same trade channels, the same purchasers, and are or will be used in the same environment.” Consequently, NetScout asserted that there is a likelihood of confusion between the marks, goods and services, and could potentially create the false impression that there is a connection between the products or that consumers could potentially be deceived in relation to the source of the goods. As a result, NetScout claimed it will be damaged by the likelihood of confusion between its marks and the applicant’s mark.
NetScout also averred that its marks, which have been heavily marketed and are famous and likely to lose their distinctive quality. The opposer has claimed that the applicant’s GNEINESS mark is likely to cause “dilution by blurring as consumers, upon seeing Applicant’s use of its GNEINESS Mark on the goods…would be immediately reminded of Opposer’s Registered Marks, and associate Applicant’s use with Opposer.” The opposer asserted that the applicant’s mark is likely to cause dilution by tarnishment because of “the association arising from the substantially similar nature” of the applicant’s mark and the opposer’s mark. Therefore, NetScout has proffered that the applicant’s GNEINESS mark is likely to cause dilution by blurring and dilution by tarnishment. The opposer alleged that this is in violation of the Lanham Act.
NetScout has sought for the Trademark Trial and Appeal Board to deny the applicant’s registration and sustain this opposition.
NetScout is represented by Munck Wilson Mandala, LLP.