NVIDIA sued for Trademark Infringement, even as it changes its product name

Virtual Compute Corporation (VCC) – a computer services company has filed a suit for trademark infringement against NVIDIA Corporation in the Southern District of Texas.

NVIDIA – a computer hardware company designs graphics processing units and has been accused of infringing VCC's vCompute trademark, its common law trademark rights for its vCompute, and Virtual Compute marks.

VCC has asserted in the complaint that it began using the vCompute trademark in 2003 in interstate commerce in connection with its computer services and also claimed that its use of the vCompute Mark predates the date of NVIDIA's first use of the said trademark.

According to VCC, the vCompute mark was registered in September 2011 the U.S. Patent and Trademark Office in January 2011. VCC also asserted that substantial resources were invested by the company towards the protection of the vCompute mark and protecting goodwill.

VCC proffered that whenever an internet search for "vcompute" was done the first link that appeared on the page is for NVIDIA's website that read 'vCompute Server NVIDIA.' Meanwhile, the second link was for VCC's website.

VCC stated that it notified NVIDIA about its alleged infringement. Moreover, according to VCC, there was immense scope for "potential for confusion" between VCC's use and NVIDIA's use of the mark because of the following reasons -

• the mark NVIDIA used was identical in terms of appearance, sound, and commercial impression (both marks use the small "v" prefix to compute) to the true vCompute Mark;
• the services NVIDIA was advertising with the mark were the same or similar to those offered by VCC; and
• NVIDIA's services were advertised in the same channels of trade which would target customers of same interest as that of VCC's services.

The complaint alleged that although in "recognizing VCC's superior rights in the vCompute Mark, NVIDIA agreed to change the name of its product" to "Virtual Compute Server (vCS) NVIDIA" still the new name was confusingly similar to VCC's company name. VCC said it has common-law trademark rights to its name.

VCC alleged that its revenue has decreased sharply as a result of this infringement and stated that both the companies advertised their services through the internet. However, owing to the fact that NVIDIA is larger and has entered the same market for providing the same service using VCC's trademarks, demand for VCC products have sharply plunged. VCC also claimed that the defendant is now its competitor.

VCC claimed that NVIDIA's infringement will cause confusion, reverse confusion, and/or mistake among purchasers, as well as cause injury to the plaintiff.  The counts against NVIDIA are federal trademark infringement, common law trademark infringement, federal unfair competition, false representation, and false designation of origin, for the aforementioned conduct.

The plaintiffs (VCC) have sought for the defendants (NVIDIA) to be permanently restrained from using the marks or any other marks that are likely to cause confusion; for the destruction of all goods, advertising, literature, and other promotional materials with the marks; an award for damages; for the defendant to change its trade name to one that does not incorporate the "vCompute," "Virtual Compute" or another confusingly similar name; to account for all gains and profits from the infringement; and an award for costs and fees.