In a trademark opposition disputing the similarity between “ZOOM” and “ZOOM PHONE” in relation to the SaaS service of class 42, the Japan Patent Office (JPO) found both marks dissimilar and sustained registration of TM Reg no. 6527182 owned by Zoom Video Communications Inc.[Opposition case no. 2022-900213, decided on October 26, 2022]
Zoom Phone is a cloud-based phone system, which allows you to place and receive calls via laptop or smartphone through the Zoom application.
Zoom Video Communications Inc. filed a trademark application for the wordmark “ZOOM PHONE” in standard character for use on web conferencing services; the transmission of instant messages; telepresence conferencing services; network conferencing services; teleconferencing services; videoconferencing services; audio teleconferencing; web messaging services in class 38, and software as a service [SaaS] in class 42 with the JPO on December 18, 2020.
The mark was registered on March 14, 2022, and published for opposition on March 23, 2022.
Opposition by Zoom
On May 23, 2022, before the lapse of a statutory period of two months counting from the publication date, Zoom Co., Ltd., an owner of the trademark “ZOOM” in Japan, filed an opposition and argued the opposed mark shall be partially canceled in contravention of Article 4(1)(xi) of the Japan Trademark Law by citing earlier registrations for word mark “ZOOM” in class 9.
The opponent argued that the opposed mark consists of two words, “ZOOM” and “PHONE”. The term “PHONE” lacks distinctiveness in relation to SaaS service since it makes use of telecommunication devices, inter alia smartphone. Therefore, the term “ZOOM” shall be a prominent portion as a source indicator of the opposed mark. If so, the opposed mark is deemed similar to the cited mark “ZOOM”.
The Opposition Board found the opposed mark shall be visually and phonetically considered in its entirety due to alphabets of the same font and size, and overall sound easily pronounced.
Even if the respective word has a specific meaning, relevant consumers would see the opposed mark as a coined word since the term “ZOOM PHONE” is not included in any dictionaries.
If so, the Board has a reason to believe the opposed mark shall be considered as a whole, and thus it is not allowed to compare the literal portion “ZOOM” of the opposed mark with the cited marks in assessing the similarity of the mark.
Based on the above findings, the Board assessed the similarity of both marks and held that:
The opposed mark gives rise to a pronunciation of ‘zuːm-foʊn’, but no specific meaning. In the meantime, the cited marks give rise to a pronunciation of ‘zuːm’ and the meaning of ‘the effect of a camera moving toward or away from a subject by using a zoom lens. Obviously, there is a clear distinction between the marks by virtue of the presence of the term “PHONE” from visual, phonetic, and conceptual points of view.
Consequently, the JPO decided the opposed mark “ZOOM PHONE” is dissimilar to the cited mark “ZOOM” and dismissed the opposition entirely.
Masaki MIKAMI, Attorney at IP LAW – Founder of MARKS IP LAW FIRM