On Monday Oracle America, Inc. filed an opposition before the Trademark Trial and Appeal Board against applicant Jala Group Inc.’s application for the JALA mark claiming that the similarities between the goods and services covered in the marks and because the JALA mark closely resembles its JAVA mark, there is a likelihood of confusion, false designation of origin, and trademark dilution.
According to the opposition, the JALA mark will cover “office automation systems comprised of computer hardware, wireless and wired electrical controllers, downloadable software…”; “charitable services, namely, providing training in the fields of computer software and computer hardware”; and “developing customized software for others…” in Class 09, 35, and 42, respectively.
Oracle claimed that since at least January 1996 it “adopted and began using JAVA as a mark in connection with computer software and related services.” Furthermore, Oracle stated that its JAVA-based trademark registrations were filed or registered before the applicant’ applied for the JALA mark. As a result, Oracle claimed that these marks serve as prima facie evidence of its exclusive rights to these marks. Thus, Oracle argued that its JAVA marks predate the applicant’s JALA mark.
Moreover, opposer Oracle averred that it uses JAVA in connection computer hardware, software, internet-related products and services, among others. As stated in the opposition, Oracle’s JAVA products and services allow “computers with previously incompatible operating systems to communicate with each other.” The opposer proffered that this JAVA technology is very popular and widely used. Consequently, Oracle claimed that its JAVA mark has “appeared on billions of computer screens and mobile communication devices.” Oracle asserted that its “extensive use, promotion, licensing and distribution activity” in connection with the JAVA marks have subsequently caused the JAVA marks to become well known and for Oracle to be identified as the provider of these JAVA marks and technology.
Oracle proffered that there is a likelihood of confusion because the applicant’s “JALA mark so resembles Opposer’s prior used and registered JAVA Marks,” which are both used in connection with computer and computer-related products and services. Thus, Oracle argued that consumers were likely to be confused, mistaken or deceived.
Additionally, Oracle alleged that there is likely to be a false designation of origin because “of the similarity of the respective marks, the related nature of the goods and services of the respective parties.” As a result, Oracle averred that its well-known JAVA marks and the applicant’s JALA mark, which “closely resembles” its own mark “would falsely suggest a connection between Applicant and Opposer.” However, Oracle claimed there is no connection or affiliation between Oracle and Jala Group.
Furthermore, Oracle averred that its well-known and famous JAVA marks will be diluted of their distinctive quality if the applicant’s mark is registered because of the similar nature of their goods and services and the similarity of the marks.
As a result, Oracle has sought for the opposition to be sustained and for the JALA mark to be refused in Classes 09 and 42.
Oracle is represented by Holland & Hart LLP.
