IP Law Daily, TRADEMARK—TTAB: No likelihood of confusion between ASUS and ASOS marks, (May 16, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

Opposition to the applicant’s ASOS mark based on likelihood of confusion was dismissed because of lack of evidence of actual confusion despite 20 years of concurrent use.

In a nonprecedential decision, the Trademark Trial and Appeal Board (TTAB) found no likelihood of confusion and dismissed ASUSTeK Computer’s opposition to registration of the applicant’s mark ASOS in standard characters. The TTAB concluded that confusion is not likely when the applicant’s ASOS mark and the ASUSTeK’s ASUS mark are used with their respective identified goods, The Board also held that ASUSTeK failed to prove the fame of its ASUS mark within the meaning of the dilution statute (ASUSTeK Computer Inc. v. ASOS plc, No. 91264402 (T.T.A.B. May 8, 2025)).

Background. ASOS plc (applicant) sought registration on the Principal Register of the mark ASOS in standard characters for downloadable application software and downloadable publications for mobile devices for the purpose of the retail of goods in relation to fashion, clothing, footwear, activewear, headwear, cosmetics, toiletries, grooming, homeware and gifts, in view of the registered ASUS for a variety of products, including gaming hardware, desktop computers, laptop computers, monitors, graphics cards, keyboards, mice, headsets and microphones, mobile phones, other computer and communication devices in International Class 9.

ASUSTeK Computer Incorporation (opposer) opposed registration of the applicant’s mark under Sections 2(d) and 43(c) of the Trademark Act, 15 U.S.C. §§ 1052(d) and 1125(c), asserting priority, likelihood of confusion, and likelihood of dilution by blurring based on the opposer’s previously used and registered ASUS mark which is the subject of three U.S. trademark registrations for personal computers, tablet computer, computer hardware, servers, and for a variety of parts for computers in International Class 9.

Likelihood of confusion claim. The TTAB, upon considering the DuPont factors for evaluating a likelihood of confusion, found that no confusion was likely. The TTAB noted that the test, under the first DuPont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result.

According to the applicant, its ASOS mark is an acronym for the words “As Seen On Screen,” as reflected in a screenshot from its website from 2001 and articles from a few U.S. publications between 2016 and 2023 discussing the origin of the name ASOS. The opposer’s mark is ASUS, and its website states that ASUS is derived from the word “Pegasus,” but the opposer contended that it does not actively use the word “Pegasus” in its advertising and there is no evidence apart from a 2009 Mental Floss article that consumers are aware of this derivation. The applicant argued that the marks are nearly identical in appearance, sound and meaning. Visually, the marks share three of four letters, differing in a U and O that the opposer contended are close in appearance, with the opening at the top being only a minor difference. As for sound, the opposer argued that the U and O, particularly when followed by an S, can be pronounced the same. The TTAB noted that the applicant’s ASOS mark and the opposer’s ASUS mark are similar, but not identical, in appearance, sound, connotation, and commercial impression, with the first DuPont factor weighing in favor of finding a likelihood of confusion.

The TTAB found that the goods are neither identical nor complementary, and the opposer has not met its burden to show that they are related, with the second DuPont factor weighing heavily against finding a likelihood of confusion. Further, the trade channels and classes of consumers are not identical, but when considered broadly do have some overlap, with these DuPont factors weighing slightly in favor of finding a likelihood of confusion.

The TTAB noted that the opposer has not shown that its ASUS mark is commercially strong for the goods alleged to be similar to those of the applicant, and the mark therefore does not receive an enhanced scope of protection under the fifth DuPont factor. Additionally, there is no evidence of third-party uses of similar marks on similar goods that would show the commercial weakness of the opposer’s ASUS mark under the sixth DuPont factor. Therefore, the fifth and sixth DuPont factors are neutral. The TTAB also noted that there is no evidence of actual confusion among consumers of the parties’ goods offered under their respective marks as to source, despite extensive commercial use of the marks nationwide for a number of years, with the seventh DuPont factor neutral and the eighth DuPont factor weighing against a finding of likelihood of confusion. Further, the parties’ goods are not in-part identical or related. Thus, the ninth DuPont factor is neutral. The twelfth DuPont factor discusses the extent of potential confusion, i.e., whether de minimis or substantial. The TTAB noted that as the opposer’s arguments essentially repeat arguments under the other DuPont factors, and have been duly considered, this DuPont factor is neutral.

Therefore, the TTAB concluded that confusion is not likely when the applicant’s and the opposer’s marks are used with their respective identified goods.

Dilution. The opposer asserted a claim of dilution by blurring and argued that ASUS was famous before the applicant launched its mobile application in 2011. The applicant argued that fame should be measured as of 2005 when it began using its mark in the U.S. through its website. The TTAB found that the opposer’s evidence shows, at most, that as of November 16, 2016, the ASUS mark was recognized for computers and similar products. This is not sufficient for a dilution claim. Thus, the TTAB determined that as the opposer failed to prove the fame of its ASUS mark within the meaning of the dilution statute, the dilution claim failed.

Accordingly, the TTAB dismissed the opposition under Trademark Act Sections 2(d) and 43(c), 15 U.S.C. §§ 1052(d) and 1125(c).

The Case is Opposition No. 91264402.

Judge: O’Connor, C.

Attorneys: Laura J. Winston (Offit Kurman, P.A.) for Asustek Computer Incorporation. William C. Wright (Epstein Drangel, LLP) for ASOS plc.

Companies: Asustek Computer Incorporation; ASOS plc

Cases: Trademark USPTO