Expired trademark? No problem

Occidental Chemical Corporation (“Opposer”) is a manufacturer of chemical products necessary for various products, such as plastics, pharmaceuticals, and water treatment chemicals. It is the owner of the OXYCHEM trademark for goods under Classes 1, 17 and 19.

In Occidental Chemical Corporation v. Oxychem Corporation, Opposer filed an opposition to the registration of Oxychem Corporation’s (“Respondent-Applicant) OXYCHEM CORPORATION AND LOGO mark in Class 3 for the following goods:

Disinfectant concentrate, sanitizer, oven cleaner, carpet shampoo, fuel, gel, chaufing dish, wax stripper, all purpose detergents, windshield cleaner, tire black degreaser, dashboard polish, water marks remover, radiator coolant, radiator cleaner, smokehouse cleaner, table top sanitizer, stainless cleaner, liquid hand soap, chlorinated alkaline cleaner, rust and scale cleaner, liquid detergent for food industry, powder bleach, oxygen bleach, anti-yellowish agent, alkali, laundry starch, softener paint and oil greaser remover, rust stain cleaner, fabric freshner, fabric cologne, dry cleaning solution, buffable emulsion wax, stone polish, automatic dishwashing machine cleaner, drying agent for automated dishwashing machine, tub and tile cleaner, insecticide-food grade, juice dispenser cleaner, special dishwashing solution, flame wax solution, and other products for industrial and institutional industry products related to preventive maintenance chemicals.

The competing marks are provided below:

Screen Shot 2017-05-15 at 4.46.41 PM

The Adjudication Officer ruled in favor of the Opposer despite the fact the Opposer’s trademark has already expired. The Adjudication Officer noted that in a prior Inter Partes case involving the same parties, the Bureau of Legal Affairs held that Opposer is the prior adopter, registrant, and owner of the OXYCHEM mark

The Adjudication Officer ruled that the competing marks are identical, as the OXYCHEM word component of both marks are identical. Moreover, the goods covered by Opposer’s trademark are related to the “other products for industrial and institutional industry products related to preventive maintenance chemicals” covered by Respondent-Applicant’s trademark application. Therefore, there is a likelihood that consumers will be mistaken, confused or deceived as to the origin or affiliation of the Respondent- Applicant’s goods if the subject application is allowed to proceed to registration.

Questions:

Are the marks really identical?

Respondent-Applicant sells eco-friendly cleaning chemicals, commercial grade cleaning supplies and cleaning and sanitation equipment, while Opposer manufactures chemical products necessary for a variety of products such as plastics, pharmaceuticals, and water treatment chemicals. Are the abovementioned goods competing or closely related?

Would Respondent-Applicant’s trademark application be allowed to proceed to registration if Respondent-Applicant removed “other products for industrial and institutional industry products related to preventive maintenance chemicals” from the list of goods covered by the mark?

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