Friday, July 15, 2016

BOXME Not Confusable With BOX for Data Storage Services, Says TTAB

The Board dismissed an opposition to registration of the mark BOXME for "storage services for archiving data bases, images, and other electronic data," finding the mark not likely to cause confusion with the registered mark BOX, and variations thereof, for "on-line content storage, archival, management and collaboration services" offered "in the cloud." Third-party registration and usage evidence of BOX-containing marks convinced the Board that BOX is conceptually weak, and the Board found the marks sufficiently different to avoid confusion. Box, Inc. v. Hakem Ikbariyeh, Opposition No. 91202576 (July 7, 2016) [not precedential].

Counterclaims: The Board dismissed pro se applicant Hakem Ikbariyeh's genericness and mere descriptiveness counterclaims. The evidence did not establish that relevant consumers understand BOX to refer to cloud-based storage services. The overwhelming majority of uses include BOX with one or more terms rather than by itself.

As to mere descriptiveness, the evidence came closer but still fell short. The third-party evidence showed that "BOX is not arbitrary, or particularly distinctive, but instead reveals something about cloud-based storage, sharing and synching solutions, at least metaphorically, in that these types of cloud-based solutions serves as a figurative 'box' in which content is stored and from which it is accessed." However, the evidence did not show that BOX immediately conveys knowledge about the services at issue. In fact, in most of the third-party registrations containing the discrete word "box," the word is not disclaimed.

Likelihood of Confusion: The Board found the services to be identical, and it therefore presumed that they travel through the same trade channels to the same class of consumers.

As to the marks, Applicant Ikbariyeh introduced 16 third-party registrations for marks containing the word BOX for products or services identical, similar, or closely related to those at issue, including the marks DROPBOX, BLUE BOX, DATABOX, RECEIPT BOX, POSTBOX, TREASURE BOX, and MY MAILBOX. Third-party uses included 24 Hour Box, DROPBOX, Digital Evidence Box,  inbox storage, and OneTimeBox.

The Board found that opposer's mark consists of a commonly used word with a well understood meaning, whereas applicant's mark is not a word and thus has no meaning. To the extent consumers view applicant's mark as two words, "box" and "me," applicant's mark creates a different commercial impression from opposer's mark. The Board found it "more likely that consumers could perceive Applicant's services as one more offering by another distinct source under a mark which contains the word 'box.'"

The Board found the voluminous evidence in the record to be "powerful on its face," citing Juice Generation.  Although opposer has been successful, any consumer recognition of opposer "is offset by the widespread use of the term 'box' and the box metaphor in the parties' industry."

In short, we agree with Applicant that Opposer’s BOX mark is conceptually weak, and that the evidence of commercial weakness is stronger than the limited evidence Opposer has offered to show consumer recognition or marketplace strength. Accordingly, while the parties’ marks are in some ways similar, we find that they are different enough, given the weakness of Opposer’s mark, that consumers will be able to distinguish between them.

And so the Board dismissed the opposition.

Read comments and post your comment here.

TTABlog comment: Thinking outside the box?

Text Copyright John L. Welch 2016.


At 12:19 PM, Anonymous Erik Pelton said...

Some interesting notes on this one : the TTAB case took 4.5 years, which is long but not uncommon these days. The decision is a rather rare victory for a pro se Applicant against experienced counsel. Will Opposer appeal? Appeal to CAFC or District Court?

Applicant's brief was quite short and began with the following:
May it please the Board that Applicant first address the elephant in the room: the fact that he is acting pro se, a feat he would not otherwise have taken on if the proceedings were not so frivolous, anti-competitive, and personal to him and all engineers that have co-developed the cloud computing landscape as we know it today. When faced with the Opposition, Applicant had to decide on how to use his resources allotted to his start-up and decided that through hard-work, diligence, and research he would be best served reserving funds for other aspects of his business at this point in time and attempting to lay out a simple but clear case describing the history and important of the term BOX to all computer engineers and users. At issue here is the fact that Opposer is attempting to Bogart the use of the term BOX within the computer industry for the broad genus of “Computer services, namely, acting as an application service provider in the field of knowledge management to host computer application software for the collection, editing, organizing, modifying, book marking, transmission, storage and sharing of data and information,” the very definition of cloud computing. Applicant, like many before him and subsequent to him, has developed a unique brand identifier that appropriately incorporates the term BOX and has attempted to build a brand around his mark.

At 1:56 PM, Anonymous Alex B said...

I agree that is interesting. Having read only this summary, I was wondering if this case might have been decided by ACR because I am surprised that the large company opposer with its large firm representative did not put forth more evidence about its use and consumer recognition of BOX to offset the applicant's evidence of widespread use of BOX in marks (assuming it was possible to do so).


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