Voltaix Targets NanoVoltaix in Trademark Infringement Suit

February 11th, 2009 by Eric Lane Leave a reply »

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Voltaix, LLC (Voltaix) is a New Jersey company that manufactures chemicals for the semiconductor and solar energy industries. 

Voltaix owns two U.S. Trademark Registrations, Nos. 2,954,404 (voltaixinc_reg.pdf) (‘404 registration) for the word mark VOLTAIX, INC., and 2,992,964 (voltaix_reg.pdf) (‘964 registration), for the word mark VOLTAIX.  Both registrations are for “chemicals used in the manufacture of semiconductors and photovoltaic devices” in Class 1.

Last month Voltaix sued NanoVoltaix, Inc. (NanoVoltaix) in federal court in New Jersey, accusing the Tempe, Arizona photovoltaics (PV) equipment and technology company of willfully infringing its registered marks. 

The complaint (voltaix_complaint.pdf) includes claims for federal trademark infringement, false designation of origin under the Lanham Act, unfair competition, state trademark infringement, misappropriation and dilution and a count for cancellation of NanoVoltaix’s U.S. Service Mark Registration No. 3,208,703 (nanovoltaix_reg.pdf) (‘703 registration).

The ‘703 registration is for the word mark NANOVOLTAIX for “management and business consulting services in the field of nanotechnology” in Class 35. 

NanoVoltaix also owns U.S. Trademark Application No. 77/542,413 (nanovoltaix_app.pdf) (‘413 application), filed in August 2008 for the word mark NANOVOLTAIX for PV solar cells and PV and silicon manufacturing equipment in Class 9, installation, repair and maintenance of PV and silicon manufacturing equipment in Class 37, and solar cell and PV system design in Class 42.

Voltaix has asked the court to enjoin the defendant from using the NANOVOLTAIX mark and from further prosecuting the ‘413 application.  The complaint also requests payment of NanoVoltaix’s profits through use of the allegedly infringing mark along with treble damages, punitive damages and attorneys’ fees.

On willful infringement, the complaint alleges that NanoVoltaix ignored plaintiff’s cease and desist demand.  The complaint further alleges that one of the principals of NanoVoltaix became aware of plaintiff’s VOLTAIX mark through doing business with Voltaix while working for a previous employer.  According to the complaint, this principal was involved in selecting the name and mark NANOVOLTAIX.

It seems to me the U.S. Patent & Trademark Office (PTO) didn’t get it quite right with respect to the marks at issue in this case.  For one thing, the mark VOLTAIX as used by Voltaix is arguably merely descriptive of the goods sold under the mark. 

Consider that the definition of “voltaic” (per dictionary.com) is “noting or pertaining to electricity or electric currents, esp. when produced by chemical action…” and the goods listing for Voltaix’s registered marks is “chemicals used in the manufacture of semiconductors and photovoltaic devices”.  But the PTO never raised descriptiveness in the prosecution of the marks.

In the prosecution of NanoVoltaix’s ‘413 application the PTO has issued an office action but failed to raise the objection that there is a likelihood of confusion with the prior VOLTAIX registrations.  This may be because the NANOVOLTAIX application is in different classes than the VOLTAIX registrations.

However, it still seems compelling that the prior VOLTAIX registrations relate to chemicals used in the manufacture of PV devices, and the ‘413 application relates to PV cells, manufacturing equipment for the production of PV, and installation and servicing of such equipment. 

In the complaint, Voltaix makes the point (valid I think), that the term “nano” is generic and can’t serve to distinguish the NANOVOLTAIX mark from the VOLTAIX marks, rendering the marks identical for likelihood of confusion purposes.

In any event, this is a true eco-mark era green branding dispute and will be a very interesting case to watch.

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