Evonik Degussa GmbH Win In Trademark Case

Elizabeth Borland and Scott Woldow successfully represented Evonik Degussa GmbH in a trademark opposition against Basic & Co. SRL before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. 

The Trademark Trial and Appeal Board focused its analysis on Evonik's AEROSIL mark for agricultural, insulation and building products and found confusion between that mark and Basic's AEROSILEX mark that was approved for publication in association with similar chemicals and building products. 

The marks were found to be quite similar in appearance, sound, connotation and commercial impression.  Moreover, the Board ruled that consumers are likely to focus on the first part of Basic's mark, which is identical to Evonik's AEROSIL mark.  The Board suggested that consumers may even perceive the AEROSILEX mark as a modified version of Evonik's AEROSIL mark. These factors weighed strongly in favor of a finding of likelihood of confusion.