Trademark Caselaw | Colombia | AMAZON ALEXA Overcomes Refusal

SIC, Colombia’s patent and trademark office, recently admitted an appeal and revoked its own refusal of Amazon Technologies Inc’s trademark application for AMAZON ALEXA, in class 45, initially based on a pre-existing trademark registration for ALEXA, in class 9.

Trademark AMAZON ALEXA, now registered under No.

641613, shown here with its iconic blue logo..

In pleading its case, Amazon Technologies LLC focused mostly in trying to establish a differentiation between both marks and argued that contrary to what SIC found, the term AMAZON, a registered mark itself, would be the first, and most dominant, element and the one creating most recall in the consumer’s, leading to an automatic association with the company; while ALEXA would be a secondary component of the trademark. Yet, it was also quoted stating that the “when activated through integrated microphones, the Alexa voice service is always ready to help members of a household”.

ALEXA (Logo), registered under No. 515913 for “scientific apparatus and intruments, computers, tablets, software”, in class 9.

SIC, however, chose a different route towards its decision in this case and found that since the services identified with AMAZON ALEXA, which it summarized as “a channel for meeting people and receiving the services they can provide” had no competitive connection with the goods identified with pre-existing registered trademark ALEXA, which it also summarized as being directed at “computer programs (software) and the devices capable of executing them”; thus there was no need to compare the corresponding marks, because there is nothing preventing two similar, or even identical, marks from coexisting provided that the goods and services they identify are not prone to creating risks of confusion or association.

Click here to request a copy of SIC’s decision or in case you wish any additional information.