Nuvio announced a trademark infringement lawsuit against Garmin today. The dispute is against Garmin's uber cool GPS mobile phone called the Nuvifone just recently announced and due out later this year. Nuvi claims they filed this lawsuit January 31st of 2008. Ok, I'll grant Nuvio that Nuvi is "close" in spelling. Ok GPS fans, what's wrong with this picture? Could it be that Garmin has been selling GPS units with the name "nuvi" for years! You may have seen the nuvi spelled with the funky two dots about the letter 'u', i.e. nüvi 350. If you Google "nuvi" you'll see Garmin owns this term. If you look at Google Images for "nuvi", once again, all Garmin products. So if Garmin has been using this trademark for years, why all of a sudden is Nuvio suing them?The Answer?
Drum roll please...
Because the Garmin Nuvifone has generated a lot of media buzz (myself included) that while it isn't as rabid as the iPhone, it's still a pretty hotly anticipated product. Need I also remind you of the Cisco/Linksys lawsuit over Apple's use of the term "iPhone" which I covered here, here, here, and here. Cisco/Linksys already had a trademark on that exact same name. Unlike Nuvio which has a different spelling, the term "nuvi" is not exactly the same.
Now you could compare this with Apple's iProductName, where they pretty much own the letter "i" in front of computer-related technology (iMac, iPhone, iPod). Same goes for McDonald's. I can't launch a frozen pizza called the McPizza without being sued. But certainly Nuvio doesn't have industry-wide acceptance as the owner of the phrase "Nuvio" or "Nuvi". So I don't see how they can win. Seems to be patent extortion to me, but maybe my analysis is off. If so, tell me. But I'll include the news release below so you can judge for yourself.
OVERLAND PARK, Kan.--(BUSINESS WIRE)--Nuvio Corporation, a leading provider of on-demand business phone service, today announced that it has filed a trademark infringement lawsuit against Garmin International, Inc. (NASDAQ: GRMN) in the U.S. District Court of Kansas. Garmin’s recently announced Nuvifone infringes on the prior Nuvio trademark which Nuvio uses on Nuvio phones and its telephony services.
Prior to filing the lawsuit, Nuvio attempted to reach a mutually satisfactory resolution with Garmin. No resolution was reached and Nuvio filed legal action to protect its rights.
“While we would have preferred to settle this without resorting to a lawsuit, we felt it was important to ensure that our customers and potential customers are not confused by someone abusing our legally protected trademark,” stated Jason P. Talley, Nuvio’s CEO. “Our customers commonly refer to our service as the Nuvio phone.”
Nuvio’s lawsuit alleges that Garmin knowingly and willfully appropriated Nuvio’s trademark. In addition to a determination that Garmin has infringed on the Nuvio trademark, Nuvio is seeking a permanent injunction that prohibits Garmin from using the Nuvi name.
Nuvio issued a cease and desist letter to Garmin on January 31, 2008.
As well as seeking a permanent injunction barring Garmin from using the Nuvio trademark, Nuvio has requested damages for past infringement.
About Nuvio
Nuvio Corporation, a provider of on-demand business communication solutions, distributes its products through direct, indirect and wholesale channels. Nuvio offers a reliable, stable communications platform providing unparalleled uptime for customers. Since 2003, Nuvio has provided PBX services for small to medium-sized businesses in a cost-effective manner. For more information, visit www.nuvio.com.
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>>Jason P. Talley, Nuvio's CEO. "Our customers commonly refer to our service as the Nuvio phone."
How does 'Nuvio phone' sound or even look like the word 'nuvifone'?
Say it with me.
newvee oh fone
vs
newvee fone
It doesn't sound like it and it has an extra syllable.
If they start issuing blanket patents or trademarks for things that are even closely spelled, ah heck - you think the patent lawsuits are crazy now?
Stupid lawsuit if you ask me.
It sounds like NUVIO is so irrelevant that they need this lawsuit to either get some cash or get their name out there. But do you really want your name to synonymous with "Patent Troll"?
Sorry Charlie... You're wrong... So is Garmin. Nuvio is right... This is a slam dunk... Open and shut.
Garmin has NOT been using the Nuvi name for phones... They use it for GPS devices...
Nuvio has a solid registration for Nuvio for phones. It's not only registered, but they can clearly prove first in time usage, and potential for confusion...
The acid test for trademark infringement is simple.
First, they must be operating in the same trade class... which they would be...
Second, there has to be a "reasonable chance" of confusion... Which there is...
Third... it's first in time, first in right... Nuvio is clearly first, not only with the phone, but with the approved federal trademark registration... Nuvio is clearly in the right, and in a very solid legal position.
A federal trademark registration makes their case almost water tight... It really would be very strong anyway, as long as they could prove first use, which they can... Even non-registered trademark usage provides the first user "common law" rights within their tradeclass.... The federal registration allows them also not only a solid open and shut case, but also the ability to collect treble damages and their legal fees from the defendant upon a judgment in favor of the plaintiff...
How's that for legalese from a farm kid... Sorry your agreements in your article are all wet!
Buy Nuvio... sell Garmin on this one.
Of course, Garmin can clearly afford a huge settlement which they will have to provide, and it likely will both not be disclosed and never come to trial.
Garmin has been using the "Nuvi" term long before the other company existed. If anything, Garmin has a case against the other company for infringing on "Nuvi".