Xerox has filed an opposition with the U.S. Patent and Trademark Office”™s Trademark Trial and Appeal Board to deny Twisted X Inc.”™s application to register a “Zerox” mark on a footwear and apparel line.
In its opposition, the Norwalk company noted the trademark and service mark for Xerox dates back to 1948, with the name tied to a 1942 patent obtained by Chester Carlson for Electrophotography, which later became known as xerography.
Carlson”™s patent was licensed to the Haloid Co. in 1947, which registered a trademark for Xerox-branded copiers in 1948; Haloid became Haloid Xerox in 1958 and renamed itself Xerox in 1961.
Twisted X filed a trademark application for Zerox in June. While the two companies are not in the same industry, Xerox insisted having another trademarked brand with a phonetically identical name would impact its longstanding identity.
“The adoption and unauthorized use of a deceptively similar mark would undoubtedly result in the reduced ability of the public to identify the Opponent”™s trademark ‘Xerox’ with its goods and services,” Xerox said in its filing. “Any use of the mark ‘Zerox’ violates the Opponent”™s statutory and common law rights in the Opponent”™s mark ‘Xerox’ and will result in dilution of the Opponent”™s well-known stature.”
Twisted X did not publicly comment on Xerox”™s filing.
Xerox has about 20k employees and is a 4.5 billion dollar company. Xerox lawyers think it’s 2015.