Lawrence G. Townsend Intellectual Property Lawyer
Schedule a consultation
415-882-3288
  • Facebook
  • Google Plus
  • Linkedin
  • Twitter

Could the mark 'Drive Wise' collide with another 'DriveWise' mark?

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

Allstate first began using its registered trademark "DriveWise" in December 2010 and has used it continuously since then. Kia Motors Corporation filed its first trademark application in 2016 for the phrase "Drive Wise" as a stylized design mark.

Allstate sued Kia for trademark infringement, but the judge refused to enjoin Kia from using its version of the phrase. Is it enough to show the two marks are virtually the same?

Here's some background. As part of its use of its "DriveWise" trademark, Allstate created the Drivewise Program in 2010. The program, which has over 1.1 million participants, has been available in all 50 states and the District of Columbia since 2016.

The Drivewise Program is a driver behavior monitoring system. The insured driver receives a small device which plugs into the vehicle's on-board diagnostics port and taps into the car's computer systems. It provides insight into car and driver performance and allows drivers to monitor and improve their driving habits. It also allows Allstate to get an accurate sense of the driver's habits.

Allstate says it has invested more than $400 million into the development and operation of the Drivewise Program in the U.S., along with an additional $47 million in advertising.

Kia uses the phrase "Drive Wise" to market a set of advanced driver-assistance systems which directly interact with and even control the operation of the vehicle. These safety tech systems include items such as blind spot detection, a lane keeping assist system, autonomous emergency braking and similar features. The inclusion of these features increase the price of a vehicle by between $1,000 and $3,000.

Allstate's lawsuit against Kia sought a permanent injunction against its use of the phrase "Drive Wise."

What did Allstate have to prove to win?

According to the federal judge, Allstate had to prove that "DriveWise" was a valid, protectable trademark which it owned. Allstate proved this. It was also required to demonstrate that Kia's version of the phrase created a likelihood of confusion among ordinary consumers. This, the judge held, Allstate did not do.

The trademark is conceptually weak, the judge said. While Allstate had made a substantial investment in the trademark, it did not show that the phrase had achieved any marketplace recognition.

Also, although the two trademarks referred to in-vehicle technology, they are not closely related and do not directly compete. Allstate failed to demonstrate that there was significant overlap in its and Kia's marketing channels. There was also no evidence that Kia had intentionally tried to confuse consumers or appropriate any goodwill Allstate had earned.

In trademark infringement cases, it's not enough to consider the similarity of two trademarks. It's typically necessary to show  that the goods and services of the two parties are the same or related and that the plaintiff's mark is sufficiently recognized by potential purchasers.

No Comments

Leave a comment
Comment Information

Contact Me to Discuss Your Specific Concerns

Bold labels are required.

Contact Information
disclaimer.

The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.

close

Privacy Policy