A Trademark Fight Over Nearly Identical Names: Is There Confusion?

Intellectual Property Blog Nov 10, 2017 Phoenix, AZ

AllState Insurance Company (“Allstate”) recently filed a lawsuit against Kia Motors (“Kia”) for trademark infringement over the use of the two words “drive” and “wise.” Both companies use the words as monikers for their products. Allstate has the “Drivewise” driver data and rewards program and Kia offers “Drive Wise” technology assistance and autonomous vehicle features.

So, one might ask the question, where is the confusion? The names are similar, but one company is an insurance carrier, the other is a car manufacturer. Allstate’s “Drivewise” product is offered through a free insurance company app and provides drivers with rewards, premium discounts, real-time alerts, and other driver performance feedback. On the other hand, Kia’s “Drive Wise” product is a safety technology built into Kia vehicles with features such as parking assistance, blind spot detection, automatic emergency brakes, and lane departure warning systems.

Nevertheless, according to Allstate, the lines are blurred because both companies provide services in the same market. Allstate claims consumers that have heard of Allstate’s insurance product and who are shopping for vehicles may be confused when they encounter Kia’s product. The insurance carrier has stated that the purpose of this case is to stop actual confusion before it starts.

Kia has acknowledged that it was aware of Allstate’s product when it was choosing a name for its safety technology, but after careful consideration, determined that the products were not similar enough to preclude it from implementing the “Drive Wise” moniker for its vehicle safety technology, ultimately filing its trademark application in a different class than Allstate’s registration. Kia also has argued that in addition to the products being functionally different, “Drive Wise” consumers spend thousands of dollars on their purchase, while Allstate insureds access “Drivewise” through a free app.

Yet, Allstate points to its considerable investment of nearly $400 million dollars developing and marketing “Drivewise” and making the name into a brand, arguing that one of the reasons Allstate has been named one of Fortune 50’s most innovative companies is largely due to “Drivewise.” Furthermore, Allstate argues that Drivewise is not an insurance product because it does not offer insurance, and the reason it continues to add to its trademark registration is to make sure the name is protected because technology continues to evolve.

A key question for the jury in this trial is whether these products are providing services in the same market, and if so, what is the market? Insurance? Automobile technology? Auto safety? While Allstate argues its “Drivewise” is not an insurance product, it is associated with its insurance products and services – at this point in time, Allstate does not sell cars with safety technology. Therefore, can Allstate argue that its free app serves the same function as Kia’s “Drive Wise” technology that is built into its cars for driver safety? Still, there is the question of whether car insurance associated products and car technology products, which both are designed to increase safety (arguably in very different ways), are part of the same market and therefore similar enough to cause consumer confusion.

What is important to take away from this case is that if you intend to establish a product and a brand, which uses a similar or nearly identical name of another trademarked product or brand, you must conduct your due diligence to determine if there is any chance of infringement. Sharon Urias can assist you with making that determination.

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A Trademark Fight Over Nearly Identical Names: Is There Confusion?

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