Trademark Law

On July 23, 2008, however, Intel Corporation (?Intel?) filed a Notice of Opposition against BDP arguing that registration should be denied because the mark is likely to cause confusion with and/or dilution of Intel?s famous family of INTEL marks. See Intel Corporation v. Business Development Partners, LLC, Opposition No. 91185394 (T.T.A.B. Filed July 23, 2008).

The crux of the likelihood of confusion argument comes down to this: ?The marks INTELLEQUITY and INTEL share the first five letters such that the first two syllables of both marks are pronounced exactly the same.? So, what Intel seems to be arguing is that no one else can ever register a trademark or service mark that begins with a suggestive reference to the word ?Intellectual? (because any such mark will naturally begin with ?intel-?) even if the mark is used on services different from anything in which Intel involved ? unless Intel has branched out into the business of consulting on how to manage IP portfolios).

As for dilution, there is no doubt that the INTEL mark is famous. However, I think there is a serious question as to whether the similarity between the INTELLEQUITY mark and the INTEL mark which gives rise to an association between the marks that impairs the distinctiveness of the Intel mark. If anything, most consumers seeing the INTELLEQUITY mark would see it as suggestive of the Intellectual Property services being offered ? a unitary composite mark joining the first part of the word Intellectual with the word Equity which makes one think of monetary value of property.

It will be interesting to see if BDP opts to fight this battle. While I think the chances of success for BDP are good, it may cost a good deal of money in legal fees in order to mount a fight against a behemoth like Intel. And since the application was filed as a Section 1(b) intent-to-use application, the cheaper route may just be to switch to another name ? although I hope they don?t because I personally think it?s actually a pretty good name for the services they intend to offer.

Does Intel have any plans for filing a cybersquatting action against the owners of http://www.intellequity.com.