Friday, August 27, 2010

Rejecting Broad Interpretation of Cited Registration, TTAB Reverses 2(d) Refusal of "RED BOX DIVERSITY SYSTEM"

The Board reversed a refusal to register the mark RED BOX DIVERSITY SYSTEM in the design form shown below [DIVERSITY SYSTEM disclaimed], for "education services, namely, providing training, by way of classes, seminars, conferences and workshops in the field of cultural diversity, community education and human relations." The Examining Attorney had deemed the mark confusingly similar to the registered mark RED BOX for "books, pamphlets, brochures and journals relating to financial, legal, corporate and other business related topics," but the Board found the involved goods and services not to be related. In re Beyond Diversity Resource Center, Inc., Serial No. 77722602 (August 19, 2010) [not precedential].

Not surprisingly, the Board promptly found the marks to be similar, since the words RED BOX constitute the dominant portion of Applicant's mark. Moreover, the color red and the design portion of the mark simply reinforce the meaning of RED BOX.

As to the goods and services, however, the Board did some thinking outside the box. It agreed that educational service and printed materials may be related, but it refused to accept the Examining Attorney's interpretation of the scope of the cited registration.

According to the Examining Attorney, "How one interacts with fellow employees is a quintessential business topic. ... It is integral to understand, accommodate and maximize the potential benefits employee diversity entails in order to have a successful business."

The Board, however, concluded that, taken as a whole, "registrant’s identification is not so open-ended to include any possible service any business or organization may need. The wording, 'financial, legal, corporate' provides the framework for the general scope of the identification."

Applicant’s training in diversity, community education and human relations is not a business-related topic except in an extremely broad sense of the term. The examining attorney’s interpretation would include anything, for example, cafeteria services, where businesses provide access to meals onsite, or child care services, where businesses provide onsite daycare.

Furthermore, there was no evidence of record that shows "diversity training services and printed matter on financial, legal, corporate, and other business-related topics being offered by a single source."

And so the Board found that Registrant's goods are not related to Applicant's services. Furthermore, Applicant's services would be purchased with "sufficient care to preclude confusion.

The Board therefore reversed the refusal.

TTABlog comment: Seems like the overly-broad identification of goods in the registration is a candidate for a Section 18 partial cancellation.

Text Copyright John L. Welch 2010.


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