On Monday, Oracle International Corporation (Oracle) filed an opposition before the Trademark Trial and Appeal Board against Mercantilo LLC’s application for the ORGABLE mark claiming that it will be damaged if the mark is registered because of the likelihood of consumer confusion and the dilution of its famous marks, specifically the ORACLE mark.
Mercantilo applied to register ORGABLE in International Class 42, for “(p)roviding on-line non-downloadable business management software.” Opposer Oracle states that it “is one of the world’s foremost providers of network computing hardware, computing systems, computer software, services, and solutions.” Oracle claimed that it has used the ORACLE mark in connection with its goods and services since at least 1979, which includes “goods and services related to computer software.” Moreover, Oracle states that it owns the common law rights to its other marks, including ORACLE STORE, ORACLE EXADATA, ORACLE DOCUMAKER, ORACLE OPENWORLD, ORACLE EXALYTICS, ORACLE FUSION, among many other that use the ORACLE trademark itself or variations of it.
Oracle asserted that the ORACLE mark is a distinctive mark “that has achieved an extraordinary level of fame and customer recognition.” Because of Oracle’s use of the ORACLE mark it “has acquired enormous goodwill, and has come to be identified immediately with Oracle as the source of its goods and services.” Furthermore, Oracle claimed that the ORACLE mark is considered famous under the Lanham Act.
Oracle argued that it has priority over the applicant because it began using its marks in connection with its goods and services since 1979 and the applicant claimed its first use of the mark in commerce was in 2018. Additionally, Oracle proffered that the ORACLE mark has become famous before Mercantilo applied for or started using its mark. Oracle alleged that the “(a)pplicant’s ORGABLE Mark is nearly identical to Oracle’s ORACLE Marks and thus highly similar in appearance, sound, and commercial impression to Oracle’s ORACLE Marks. As a result, Applicant’s ORGABLE Mark readily calls to mind Oracle’s famous ORACLE Mark.” Moreover, Oracle claimed that the parties’ services are identical or related to each other and are likely to compete with each other.
Consequently, Oracle averred that the “high degree of similarity,” especially with similar goods and services is likely to cause consumer confusion, mistake, or deception or for consumers to create a false association between the marks and companies and the “origin or sponsorship of the parties’ respective goods and services.” As a result, Oracle alleged that if the applicant’s mark would dilute the distinctiveness of the ORACLE marks because it would “erod(e) consumers’ exclusive identification of the ORACLE Mark with Oracle, and by otherwise lessening the capacity of Oracle’s ORACLE Mark to identify and distinguish the goods and services of Oracle.” Therefore, according to Oracle, the ORGABLE mark is likely to dilute the ORACLE mark via blurring the ORACLE mark.
Oracle has sought for this opposition to be sustained and for the applicant’s registration to be denied. Oracle is represented by Kilpatrick Townsend & Stockton LLP.
