Friday, June 02, 2006

Citable No. 29: TTAB Reverses "BOX SOLUTIONS" 2(d) Refusal, but Affirms Disclaimer Requirement of "SOLUTIONS"

Applicant Box Solutions Corp. won a split decision in its appeal from the PTO's refusal to register the mark BOX SOLUTIONS & Design (below left) for "computer hardware, namely, communication servers." The Board reversed the 2(d) refusal, finding Applicant's mark not likely to cause confusion with the registered mark BOX & Design (below right) for "computers and computer peripherals;" but the Board affirmed the PTO's requirement of a disclaimer of the word SOLUTIONS. In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006).

The Board first considered the disclaimer issue. Examining Attorney Nicholas K.D. Altree relied on "a sampling" of 106 third-party registrations in which SOLUTIONS is disclaimed when used for computer goods. Applicant argued that SOLUTIONS "is not directly indicative of the particular qualifying properties of the product." The Board took judicial notice of a dictionary definition of SOLUTIONS -- "An application of computers and software to a particular problem" -- which confirmed its conclusion that SOLUTIONS is descriptive of Applicant's goods and must be disclaimed.

Turning to the 2(d) issue, the Board noted that the identification of goods in the cited registration is not limited, and therefore its "computers" must be considered to encompass Applicant's communications servers. Likewise, the Board presumed an overlap in trade channels and normal classes of purchasers.

However, the Board also found that applicant's communications servers are normally marketed to "persons with a high degree of knowledge and familiarity concerning the goods," and thus the "common purchasers for applicant's and registrant's goods must be considered sophisticated."

As to the marks, Applicant relied on "several" third-party registrations in asserting that the term BOX for computer goods is "very weak." The Board went along: "we find the evidence persuasive to show that BOX is a weak term in the computer industry in that it signifies a computer or computer related device." The Board also took judicial notice of two computer dictionary entries defining "box" as slang for a computer or for hardware.

"These definitions confirm that the term BOX is, at a minimum, highly suggestive of computers and we accord this term a very narrow scope of protection. Therefore, we cannot say, due to its highly suggestive nature, that BOX dominates over the prominent design in registrant's mark. Registrant's stylistic design of what appears to be a monitor with an antenna-like check mark, stands in stark contrast to applicant's highly stylized mark which consists of the phrase BOX SOLUTIONS with the word BOX depicted with white slash marks cutting through it. Thus the marks have substantially different appearances and commercial impressions."

The Board found the differences in the marks to outweigh the similarities: "[s]ophisticated purchasers ... would readily understand the meaning of BOX for computers and would not assume that the goods came from a common source simply on the basis of the word BOX appearing in both marks."

The Board therefore reversed the 2(d) refusal, but allowed applicant thirty days to submit the required disclaimer.

TTABlog comment: Sorry, but I don't buy the Board's 2(d) reasoning. The case was a much closer call than the Board made it out to be. The evidence that BOX is a weak mark was pretty feeble, and given that the word "BOX" is the part of the registered mark that would be spoken, it seems to me that BOX is the dominant portion of that mark. As to Applicant's mark, with SOLUTIONS (which appears in much smaller letters) disclaimed, BOX is surely the dominant portion. Since, as the Board recognizes, marks are not to be compared in a side-by-side fashion, are the design elements really that important here? Moreover, assuming arguendo that the word BOX is a weak formative, the Board has often said the even weak marks are entitled to protection. And the Board also has often said that even sophisticated purchasers are not necessarily sophisticated vis-a-vis trademarks. In my book, BOX and BOX SOLUTIONS are confusingly similar, the differing designs notwithstanding.

Text Copyright John L. Welch 2006.


Post a Comment

<< Home