This Tuesday, the Virtual Computer Corporation (VCC) sued the computer hardware goliath, NVIDIA Corporation (NVIDIA) for trademark infringement. VCC is an international company that provides cloud computing, data center design, and IT managed services to its clients. VCC first began using its VCOMPUTE trademark back in 2003 and received a federal trademark registration on VCOMPUTE in 2011. VCOMPUTE has since become an incontestable trademark. When a trademark becomes incontestable, the mark receives several benefits, such as acquiring secondary meaning. In addition, an incontestable mark can not be canceled for being descriptive. On-the-other-hand, NVIDIA recently began marketing and providing its virtual computing products under its VCOMPUTE SERVER NVIDIA brand. This is where the conflict lies. A quick comparison of the marks reveals that NVIDIA’s mark shares the same dominant VCOMPUTE portion as VCC’s registered trademark.

Prior to Filing the Complaint

Before VCC filed the complaint, VCC reached out to NVIDIA to informed them of their potential infringement of the trademark. Sending a letter is a common practice between trademark attorneys to quickly and efficiently resolve any potential conflicts. Upon receiving the letter from VCC, the complaint states that NVIDIA recognized VCC’s superior rights in the name and agreed to change its product name. A smart move on the part of NVIDIA, as the two names likely, are confusingly similar to one another.

However, instead of pivoting to a completely new name, NVIDIA decided to change its product to VIRTUAL COMPUTE SERVER. A mark that VCC alleges is still confusingly similar and is at the heart of VCC’s complaint. In particular, VCC alleges that it has built-up common law trademark rights in its VIRTUAL COMPUTE name. What is even more surprising is that NVIDIA chose a name that closely resembles VCC’s own corporate name. While there are arguments that VCC’s common law mark for VIRTUAL COMPUTE is generic for its virtual computing services and product, it would have been far easier on the part of NVIDIA to simply pivot to something completely unrelated to VCC.

Takeaway

Conducting a brief knock-out search at the onset of NVIDIA naming its product saves the company substantial time and money. Upon running the quick search, an experienced trademark attorney would have instantly recognized the potential for consumer confusion. As a result, the attorney likely should have recommended that NVIDIA change the name of its product.

A brief knock-out search before launching a product helps to uncover potentially problematic marks, regardless if you are planning on trademarking the product or service. If NVIDIA or its counsel had run this routine search, this situation would have likely been avoided. Saving NVIDIA thousands, if not tens of thousands of dollars in attorney fees and the headache of rebranding again.

Next time you or your company is thinking about launching a new product or service, ensure that you contact an experienced trademark attorney.

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