Are Identical Marks in the Same Field of Services Likely to Be Confused - Omicron Capital, LLC v. Omicron Capital, LLC 97 The Trademark Reporter 2007

97 Trademark Rep. 1366 (2007)
Are Identical Marks in the Same Field of Services Likely to Be Confused - Omicron Capital, LLC v. Omicron Capital, LLC

handle is hein.journals/thetmr97 and id is 1400 raw text is: Vol. 97 TMR

ARE IDENTICAL MARKS IN THE SAME FIELD OF
SERVICES LIKELY TO BE CONFUSED?
OMICRON CAPITAL, LLC v.
OMICRON CAPITAL, LLC
By Heather L. Jensen*
I. INTRODUCTION
In Omicron Capital, LLC v. Omicron Capital, LLC,1 the New
York district court found that two identical service marks, used in
the financial services industry, were not likely to be confused due
to, among other facts, the lack of acquired distinctiveness and
strength of the plaintiffs mark as well as differences between the
financial services being offered by each party. In its narrow
application of the factors used to determine whether a likelihood of
confusion exists, the court gave little weight to the fact that the
marks were identical and to the broader relationship between the
services within the field. The court also placed too much weight on
the fact that the plaintiff did not demonstrate evidence of acquired
distinctiveness of its mark. These factors led the court to reach a
decision that stands in stark contrast to a previous case in the
same judicial district that evaluated identical service marks in the
financial services industry and found a likelihood of confusion.2
II. THE FACTS OF THE CASE
Plaintiff Omicron Capital, LLC was founded in 1997 in New
York City as a hedge fund entity and has continuously used the
trade name since then. Founder Oliver Morali selected the name
OMICRON CAPITAL because the Greek letter Omicron is used to
designate the credit risk in a derivative position and evoked a
background of the derivatives market, and because it reflected his
initials, O.M. The plaintiffs principal business consisted of raising
money from sophisticated investors to participate in the plaintiffs
hedge fund. The investors mostly consisted of other funds along
* Associate at Donovan & Yee, LLP, Associate Member of the International
Trademark Association. She advises clients on the maintenance and enforcement of their
domestic and international trademark portfolios as well as various other trademark and
copyright issues.
1. 433 F. Supp. 2d 382 (S.D.N.Y. 2006).
2. Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 15 F. Supp. 2d 389 (S.D.N.Y.
1998), affd, 192 F.3d 337 (2d Cir. 1999).

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