On Tuesday, Waymo filed an opposition before the Trademark Trial and Appeal Board against applicant Viracle Co.’s WAYPRO mark alleging that registration of the mark would cause a likelihood of confusion and damage Waymo.
Waymo claimed that since 2016 it has used the WAYMO mark “in connection with autonomous vehicles and related offerings.” Furthermore, Waymo asserted that it “owns trademark filings for a family of marks consisting of or incorporating WAYMO on the Principal Register of the United States Patent and Trademark Office.” The collective WAYMO mark covers a variety of goods and services.
Additionally, Waymo asserted that the WAYMO mark has a high level of consumer recognition in connection with its goods and services because Waymo has continued to use this mark which has been marketed and publicized. Consequently, Waymo argued that this mark is distinctive and it has created goodwill.
The applicant stated that it first used the mark in December 2019. However, Waymo alleged that “at no time has Waymo granted permission, written or otherwise, to Applicant to use or register any form of Applicant’s Mark.” Subsequently, Waymo averred that it has prior rights because it began using the WAYMO mark before the applicant began using the WAYPRO mark.
The applicant’s WAYPRO mark is in Class 9, which covers: “Car video recorders,” “Dashboard cameras,” “LCD monitors for security purposes,” “Rearview cameras for vehicles,” “Vehicle locator and recovery device programmed to use global positioning systems (GPS) and cellular telecommunications,” “Vehicle safety equipment,” and other items. This is similar to Waymo’s autonomous vehicle and related product offerings, which is one of the reasons the opposer said the registration could cause consumer confusion.
Because the “Applicant’s Mark shares the identical prefix ‘WAY’ with the WAYMO Mark and ends with the same letter – ‘O,’” Waymo said the marks had enough similarity to cause confusion. Additionally, Waymo claimed that Viracle’s mark “is phonetically similar to the WAYMO Mark.” Consequently, Waymo proffered that the applicant’s mark when used in connection with car-related goods is “likely to cause confusion, mistake, or deception that Applicant’s Goods are those of Waymo or are otherwise endorsed, sponsored, or approved by Waymo, or cause confusion, mistake, or deception as to the affiliation, connection, or association between Applicant and Waymo.” Therefore, Waymo averred that if Viracle’s WAYPRO mark is registered, Waymo will be damaged by said registration in violation of its exclusive rights, prior and superior rights, and the purported likelihood of confusion.
Waymo, represented by Perkins Coie LLP, has sought for the opposition to be sustained and for the applicant’s registration to be refused.
