Google filed an opposition against GM Photo’s BLUE PIXEL trademark in International Class 9 on Tuesday before the Trademark Trial and Appeal Board (TTAB), claiming that the TTAB should not grant the mark because of a likelihood of confusion with Google’s PIXEL mark and GM Photo’s lack of use for the goods covered in its mark.
Google stated that it offers a variety of products under the PIXEL marks, for example, it launched the Chromebook Pixel, a touch-screen laptop, in 2013. It also produces the Pixel C tablet, Pixel smartphones, laptops, such as Pixelbook, and accessories, like the Pixel Buds or Pixelbook Pen; all of which utilize the PIXEL marks. Google applied for the marks in 2013 and 2017 and one was registered in 2016. The PIXEL marks cover “wireless communication devices for voice, data and image transmission including voice, text and picture messaging, video and still image camera,” application software, computers, and mobile phones. Google added that it has other marks or trademark applications “using the PIXEL formative,” creating a family of PIXEL marks for a variety of products.
Google proffered that the applicant’s BLUE PIXEL mark is confusingly similar to its marks and products. GM Photo seeks to register the BLUE PIXEL mark in connection with camera-related items, such as camera tripods, flashes, cables, handles, lenses, filters, lens mounts, underwater cameras, dashboard cameras, wearable cameras and microphones. Google alleged that through the BLUE PIXEL mark, GM Photo “intended to trade off of Google’s well-known PIXEL Marks and reputation.” Google noted that the marks “are similar as to appearance, sound, and meaning,” specifically, because both utilize the word “PIXEL.” Additionally, the goods both relate to cameras and other wireless technology, which can be worn on the body.
Google pointed to the applicant’s “wearable cameras” which it stated “encompasses or is related to wireless technologies that can be worn on the body, which overlap with the ‘wireless communication devices for voice, data and image transmission including…video and still image camera’ goofs covered by Google’s PIXEL Application.” Google believed that the “wearable camera,” “microphone,” “connection cables,” “dashboard cameras,” are likely to be viewed as related and similar by consumers to Google’s computer, laptop, phone, and accessory products. Thus, Google alleged that consumers are likely to create a false connection or affiliation between the brands and products.
Google also claimed that GM Photo lacks use for the applied mark. For instance, Google averred that the BLUE PIXEL mark is only used in connection with one of the applied-for goods, the camera tripods, and other not applied-for goods. Thus, Google alleged that the applicant has not been using the mark in connection with the other applied-for goods.
Google cited likelihood of confusion and lack of bona fide use for its claims for relief. Google has requested for the opposition to be sustained and for the BLUE PIXEL mark registration to be refused. Google is represented by Arnold & Porter Kaye Scholer LLP.
