Automakers Make Eco-mark Progress

Two major automakers have made progress recently in protecting their present and future brands.

In previous posts (here and here), I reported on GM’s U.S. Trademark Application Nos. 86357513 and 86357523 for BOLT and CHEVROLET BOLT, respectively, for “motor land vehicles, namely, automobiles” (BOLT Applications).

The applications ran into some hitches when the U.S. Patent and Trademark Office (USPTO) initially refused registration based on U.S. Trademark Registration No. 4,429,759, owned by Yamaha, for the mark BOLT for “Motorcycles and structural parts therefor, excluding wheels.”  According to the trademark examining attorney, there was a likelihood of consumer confusion because the marks are the same and goods are similar.

GM overcame this rejection by arguing differences between the goods and channels of trade (e.g., motorcycles and automobiles are typically sold in different dealerships).  GM also entered into and submitted to the USPTO a Consent Agreement whereby both parties consented to registration by the other of the BOLT mark for their respective goods.

However, the trademark examining attorney also suspended GM’s BOLT Applications based on provisional refusals to register the marks based on prior filed U.S. Trademark Application Serial Nos. 86108379 and 86108374 for the BOLT CUSTOM TRUCKS AND MANUFACTURING word and design marks for “truck parts, namely, a premium-outfitted truck cab.

GM was able to overcome these provisional rejections by agreeing to amend the identification of goods in their BOLT Applications to motor land vehicles, namely, automobiles in the nature of cars.”

Now both applications are moving forward toward publication and registration, assuming no third parties oppose registration.

 

Toyota recently prevailed in an opposition proceeding against HongKong WillRaise Integrated Circuit Company (HWICC), which had filed U.S. Application No. 86/357,165 for PRIUS for chemical flavorings for tobacco and various smoking paraphernalia (‘165 Application).

Toyota filed a Notice of Opposition in December of 2014 before the USPTO Trademark Trial and Appeal Board (Board) opposing registration of the ‘165 Application.  Recently, HWICC withdrew the ‘165 Application (HWICC Withdrawal), and because the withdrawal did not include the consent of all the parties, the Board subsequently entered judgment against HWICC.

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Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.