On Monday before the Trademark Trial and Appeal Board, Xerox Corporation filed an opposition against applicant Twisted X, Inc’s application for the ZEROX mark in Class 025 claiming that the registration of the applicant’s mark will cause consumer confusion and dilute the XEROX mark.
Xerox Corporation stated, as grounds for the opposition, that it is an $11 billion technology and services corporation with an array of “widely established, accepted and trusted” goods and services, such as printers, publishing systems, copiers, facsimile machines, software and related supplies. Xerox Corporation also noted that it is a Fortune 500 Company with operations in at least 160 countries and more than 35,000 employees worldwide. Xerox Corporation asserted that its business “is carried out under its extremely well-known and iconic trade and service mark ‘XEROX.’”
According to Xerox Corporation, the XEROX mark has been associated with the company since at least 1948, and the mark has been “extensively and continuously” used since then. Additionally, the opposer claimed that the mark “is also an integral and conspicuous part of its trading style,” notably Xerox Corporation’s goods and services are “readily recognized by mere reference made to them as ‘XEROX.’” Moreover, Xerox Corporation contended that the XEROX mark is highly distinctive because it joins two Greek words to create this term and because of its reputation and association with Xerox Corporation. As a result, Xerox Corporation stated that it is “the legitimate proprietor of the trademark and tradename ‘XEROX.’” Furthermore, Xerox Corporation claimed that this mark, as a result of its widescale use and marketing, has established goodwill and is well-known.
Consequently, Xerox Corporation asserted that “being the legitimate proprietor and long-standing user of the trademark and tradename ‘XEROX,’ has acquired statutory and common law rights in the said market across the world…It is thus entitled to the exclusive and proprietary use thereof.” Additionally, Xerox Corporation stated that it is the “registered proprietor” of the XEROX trademark in various classes.
However, Xerox Corporation claimed that the applicant filed the “impugned mark ‘ZEROX’” on June 9, 2020, in class 025: footwear. Xerox Corporation averred that the “‘ZEROX’ mark is phonetically and conceptually similar to the Opponent’s prior registered and well-known mark ‘XEROX’ in connection with International Class 25: clothing.” Moreover, Xerox Corporation argued that the “adoption and unauthorized use of a deceptively similar mark would undoubtedly result in the reduced ability of the public to identify the Opponent’s trademark ‘XEROX’ with its goods and services.” Thus, Xerox Corporation claimed that the applicant’s mark is likely to cause consumer confusion. Furthermore, according to Xerox Corporation, the use of the ZEROX mark would violate its statutory and common law rights and dilute the XEROX mark. Additionally, Xerox Corporation proffered that the ZEROX mark would harm the reputation and goodwill, and harm the distinctive quality of the XEROX mark. Furthermore, Xerox Corporation alleged that this registration of the applicant’s mark would harm the exclusivity of the XEROX mark.
As a result, Xerox corporation has requested for the opposition to be sustained and for the applicant’s registration to be refused. Xerox Corporation is represented by its own counsel.
