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Bottom line: The Board dismissed the opposition finding that the marks at issue are not confusingly similar nor likely to cause confusion.

TUS JAPAN INC. filed a trademark application for RUBICONIC designating automobiles and their parts and fittings in Class 12, which was registered without office action.  FCA US LLC (Fiat Chrysler Automobiles US LLC) filed an opposition against the registration.  The opposition was grounded on relative grounds, confusing similarity to earlier registered mark RUBICON (Section 4-1-11), likelihood of confusion with well-known mark (Section 4-1-15) and similarity to well-known mark and unfair purposes (Section 4-1-19).

The Board observed the marks and found as follows:

1. As to Section 4-1-11:

The Board first compared the marks in their appearance and sound, and found as follows:

- Despite the common beginning RUBICON-, the marks are visually distinguishable with the suffix -IC.
- The opposed mark is pronounced [ru-bi-ko-ni-kku], whereas the cited mark is pronounced [ru-bi-ko-n].  The marks have relatively small numbers of sounds (i.e. 6 and 4 sounds) and the overall tone of the words are significantly different.  So, the marks are distinguishable phonetically.
- Accordingly, the opposed mark is not similar to the cited mark in terms of appearance and sound.

The Board noted that neither the opposed mark RUBICONIC nor the cited mark RUBICON has any particular meaning, and thus the marks are not comparable semantically.

2. As to Section 4-1-15:

The Board went through all the evidences submitted by FCA US LLC and noted that the opponent has used the cited mark for four-wheel-drive cars since around 2007 in Japan.  The Board, however, noted that the evidences did not prove the actual sales such as sales volume and market share in Japan, nor in the United States and other countries.

The evidences submitted by the opponent are not sufficient for the Board to recognize that the cited mark was well-known for automobiles and their parts and fittings among consumers and traders in Japan and other countries at the time of filing and registration of the opposed mark.

Further, as found above, the opposed mark is not similar to the cited mark.

Accordingly, the Board found that there is no likelihood of confusion between the opposed mark and the cited mark.

3. As to Section 4-1-19:

As mentioned above, the cited mark is not well-known in Japan and other countries for automobiles and their parts and fittings, and the marks at issue are not similar.  So, the Board did not find that the opposed mark was filed to free ride on the cited mark’s fame with unfair purposes.

And so the Board dismissed the opposition.