Wednesday, February 27, 2008

Nuvio file trademark infringement lawsuit against Garmin over NÜVIFONE

Various news stories reported on the press release issued today by Nuvio Corp. (“Nuvio”), an internet telephone company based in Overland Park, Kansas, announcing that it had filed a trademark infringement lawsuit against GPS maker Garmin Ltd. (“Garmin”).

Nuvio holds a federal registration for the word mark NUVIO for internet telephony services (filed as a Section 1(b) intent-to-use application on January 14, 2004 and registered March 28, 2006). Garmin has its own federal registration on the word mark NÜVI for personal navigation devices (filed as a Section 1(b) intent-to-use application on July 11, 2005 and registered October 10, 2006).

Nuvio’s real issue, however, likely has more to do with Garmin’s recently announced product, the NÜVIFONE (pictured below).

On January 30, 2008, Garmin filed a Section 1(b) intent-to-use trademark application for the mark NÜVIFONE (for various goods and services across four different classes, including GPS navigation devices, wireless telephones, telecommunications and information technology services, and providing mapping and weather information via telecommunication networks, cellular telephones and wireless navigation devices).

According to Nuvio CEO Jason P. Talley, the lawsuit comes after attempts to reach a settlement were unsuccessful and was necessary to ensure that our customers and potential customers are not confused by any telephone related products created by Garmin since Nuvio’s customers “commonly refer to [Nuvio’s] service as the Nuvio phone.” Nuvio sent a cease and desist letter to Garmin on January 31, 2008, with which Garmin apparently did not comply. The lawsuit apparently seeks a permanent injunction as well as damages for past infringement.

Vegas™Esq. Comments
Past infringement? The Nüvifone isn’t even on sale yet. Is Nuvio trying to claim infringement by Garmin based on NÜVI on its GPSs? Not likely. I seem to recall reading at least one report where Nuvio even acknowledged that it had no issue with Garmin’s use of NÜVI on its GPS devices

As for likelihood of confusion between NUVIO and NÜVIFONE, based simply on the appearances of the marks and the goods involved, I give the advantage to Garmin, although it’s by no means a clear cut case. There are good arguments on both sides with respect to appearance of the marks (how much weight should be given to the umlat ü) and the similarity of the goods (telephone related on the one hand, but internet telephone versus actual hand-held cell phone).

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