On Dec. 23, New Prime, Inc., which does business as Prime Inc., filed an opposition before the Trademark Trial and Appeal Board against Amazon Technologies, Inc.’s application for the BUSINESS PRIME mark, claiming that it began using Prime marks before Amazon Technologies Inc. and would be damaged by the registration of the applicant’s mark.
According to the filing, the opposer is a “leading transportation company” providing various types of transportation and shipping services since 1970. The opposer claimed that since at least as early as Jan. 30, 1980, it has continuously used the PRIME INC. marks, both in standard and stylized characters, in connection with its transportation and freight carrier services. Furthermore, the opposer noted that it prominently displays the PRIME INC. marks on its website, social media, advertisements, promotional materials, and on its trucks and trailers. Prime Inc. stated that it has heavily marketed and promoted its services using its marks.
The opposer added that the marks have been used to identify Prime Inc. in connection with its services for more than forty years, therefore, the opposer contended that the marks have become associated with the opposer and its services, are famous, and have developed consumer recognition. Moreover, the opposer claimed it has established goodwill related to the marks and has common law rights to the marks.
The opposer stated that in December 2011 it filed an application for the stylized PRIME INC. mark in Class 39, which covers “transportation services by truck.” However, Prime. Inc. alleged that the United States Patent and Trademark Office (USPTO) refused to register the stylized PRIME INC. Mark, citing Applicant Amazon Technologies, Inc.’s U.S. Registration No. 3,234,643 for the standard character mark PRIME covering an “expedited shipping service for others” in Class 39, noting that there could be a likelihood of confusion between the marks “on the presumptive overlap in services offered in connection with the marks and the ‘identical’ nature of the dominant component of the marks,” according to the opposer. This application was abandoned in 2014, and Prime Inc. also cited numerous previous oppositions and cancellations to its registration attempts, citing likelihood of confusion, false suggestion of connection among other reasons.
In Oct. 2019, according to the filing, Amazon filed an application for the BUSINESS PRIME and stylized BUSINESS PRIME marks in Class 39, covering “Transport of goods; Shipping, delivery, and storage of goods.” The opposer noted that the USPTO required Amazon to amend the application to add that “no claim is made to the exclusive right to use ‘BUSINESS’ apart from the mark as shown,” noting it could not be registered because it was not inherently distinctive and did not only describe Amazon’s services. Consequently, the opposer averred that “‘prime’ is the dominant component of both the Accused Marks and Opposer’s PRIME INC. Marks.”
Prime Inc. cited likelihood of consumer confusion, namely that the parties’ marks are used in connection with similar services and the marks are “identical and substantially similar in appearance, sound, meaning, and commercial impression” and that the word “Prime,” is the main component in both marks. Consequently, Prime Inc. proffered that this similarity is likely to cause consumer confusion. Furthermore, the opposer claimed that consumers are likely to create a false connection or affiliation between the parties, their marks and their goods and services because of the similarity. Lastly, the opposer alleged that the applicant has no bona fide intent to use the requested trademark because the use will not be separate from its “principal activities.”
Therefore, Prime Inc. has sought for its opposition to be sustained and the registration to be refused. Prime Inc. is represented by Lathrop GPM LLP.
