Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE BURROUGHS CORPORATION
Serial No. 494,094
December 5, 1985
Thomas W. Baumgarten, Jr., Kevin R. Peterson and Edmund M. Chung for applicant
Sally Beth Berger
Trademark Examining Attorney
Law Office 4
(Thomas Lamone, Managing Attorney)
Before Allen, Rooney and Cissel
Opinion by Allen
This is an appeal from the Trademark Examining Attorney's refusal of registration of the word BOSS for 'distributorship services in the field of furniture, equipment, parts and supplies for use with business machines such as computers, word processors, typewriters, adding machines and calculators' [FN1] under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d) (1976). In particular, the refusal of registration is based on the Examining Attorney's conclusion that appellant's services are so related to 'writing-drawing-and painting implements, in particular applicators for a marking fluid,' subject of a registration of the identical mark, [FN2] and to 'writing, drawing, and painting implements-namely, applicators for marking fluid, pencils and mechanical pencils, pencil leads and refills, ballpoint, felt and fibertip pens and refills, artists' chalks and chalk holders; correction fluids and pastes, erasers for writing, drawing, painting, and marking; transparent, multilayer and self-adhesive foils and films used in the preparation of transparencies for overhead projection, transfer letters, pointers, and drawing compasses, all being for use with overhead projection,' subject of a registration of STABILO BOSS, [FN3] as to be likely to cause confusion as to the source of applicant's goods.
In its brief, 2, appellant concedes that 'the respective marks [are] identical.' [FN4] Therefore, the only question we have to decide is whether appellant's services and registrant's goods are so related that confusion is likely to result from the marks' contemporaneous use. As evidence bearing on the relatedness issue, Examining Attorney Berger has introduced excerpts from current Maryland Suburban and Northern Virginia C & P Telephone 'Yellow Pages' directories and a 'Springfield Office Supply' brochure demonstrating that a substantial number of office supplies retailers in the Washington D.C. metropolitan area advertise and sell together products of the same kind as those subject of the marks before us; excerpts from the 1985 catalog of 'Springfield Office Supply' in which are listed and depicted products of this nature manufactured by Burroughs (i.e., NU-KOTE information systems ribbons and BURROUGHS typewriter machine ribbons) and by registrant (i.e. STABILO BOSS office highlighters and BOSS 2 refillable highlighters). Also in evidence is Burroughs' Spring, 1983 'Burroughs On-line Supplies Service' catalog which was appellant's specimen in its application. [FN5]
There is, of course, on question that the use of identical marks for goods on the one hand and related services involving those goods on the other is likely to result in confusion in trade. See, e.g., Steelcase Inc. v. Steelcare Inc., 219 USPQ 438, 435 (TTAB 1983). [STEELCARE for refinishing of furniture and office equipment held likely to be confused with STEELCASE for office furniture and accessories.] Appellant does not contest this statement of the law; however, it argues that the Examining Attorney's application of that law to the instant facts is erroneous.
*2 Appellant's amendment probably has avoided--albeit, just barely--, the possible inference that appellant's mark is sought to be registered for distributorship services involving transparencies for use with overhead projectors. [FN6] Consequently, we agree that Steelcase is distinguishable on its facts. On the other hand, appellant's amendment does not erase from the record the fact that overhead projector transparencies are advertised in applicant's specimen catalog, page 29, nor the inference drawn from their appearance in the catalog that overhead projector transparencies are related in the minds of appellant's purchasers to other office supplies in respect of which its BOSS distributorship service mark is sought to be registered. Accordingly, in the perception of appellant's customers to which its BOSS services are rendered, transparencies would be expected to be sold by a distributor which also distributes supplies for business machines, and other related articles (e.g., anti-static floor coverings, various cleaning materials, etc.). This inference is corroborated by the evidence introduced by the Examining Attorney demonstrating that office supplies of the kind distributed by appellant and encompassed by the identification of its BOSS distributorship services and supplies of the kind encompassed by the identification of goods in registrant's registrations are regularly advertised and sold by the same dealers.
Appellant's argument that its services are rendered directly to end users and, hence, move in distinctly different channels of trade than the trade channels for registrant's goods is disingenuous. Having prevailed in its argument to us that the issue must be determined not according to the services demonstrated by the specimens but according to their description in the amended identification (i.e., subject to the 'business machines' limitation discussed above), appellant now urges us to look to the specimens evidencing use rather than the identification to evaluate the channels of trade question. Thus, appellant argues that 'page three of the specimens . . . comprises the distribution of goods directly to end users.' Brief, 4. Obviously, appellant cannot have it both ways. Moreover, as has been repeatedly held, where an applicant and registrant have employed identifications of goods or services without specific limitations as to channels of trade or users, the question of likelihood of confusion must be resolved on the basis of the goods or services named, including all trade channels and potential users. E.g., CBS v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). In the case before us, registrant's identifications contain no channels of trade or user limitations, and the term 'distributorship services' in appellant's application does not exclude the rendering of such services to dealers. As the Examining Attorney's evidence shows, these are normal channels of trade both for the goods covered by the cited registrations and the goods involved in applicant's distributorship services.
*3 In view of the above findings, the only arguable distinction between the marks is that appellant seeks registration of its mark for services whereas the registered marks are for goods. In our view, this is not a sufficient difference to avoid confusion. The most serious problem in this regard is reverse confusion. Thus, it is a quite normal perception of prospective purchasers to presume that a mark used to identify distributorship services is also used as a trademark for some or all of the products sold by the distributor. This is demonstrated by appellant's own house mark BURROUGHS which is used on the specimen brochures to identify distributorship services and also as a trademark for many, if not most, of the products advertised therein. Certainly, were a prospective purchaser to encounter the trademark BURROUGHS on office supplies of the kind subject of the BOSS registrations cited herein, they would be apt to believe they were products distributed by Burroughs under its service mark BURROUGHS. The case can be no different for BOSS, presuming, as we must, that it may be used as presented in the drawing, i.e., as the only mark identifying appellant's distributorship services. Therein lies the basis for confusion of purchasers encountering the BOSS mark on registrant's goods.
D. B. Allen
L. E. Rooney
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Serial No. 494,094, filed December 14, 1984. The original identification, 'selling and delivering office supplies, parts, furniture and equipment used with office machines, typewriters, word processors, computers, etc.,' was considered indefinite and it was amended in response to the Examining Attorney's request and also in order to limit the services relating to office supplies to 'supplies for use with business machines . . . .' See, applicant's response filed June 17, 1985, page 2. The drawing depicts the word sought to be registered without any special form of lettering or associated design features.
FN2. Reg. No. 1,127,491, issued Dec. 11, 1979 to Schwan-Stabilo Schwanhausser GmbH & Co., Nuremberg (FRG); affidavit § 8 accepted, § 15 received.
FN3. Reg. No. 1,256,074, issued November 1, 1983 to Schwan-Stabilo Schwanhausser GmbH & Co., Nuremberg (FRG).
FN4. STABILO BOSS is not, in fact, identical. Therefore, we interpret appellant's concession to incorporate an admission that the presence of registrant's house mark 'STABILO' is insufficient to obviate confusion between its mark and the mark subject of the STABILO BOSS registration. We agree, and also agree with Examining Attorney Berger that the fact that appellant's mark is an acronym, derived from 'Burroughs On-line Supplies Services' is irrelevant as the specimens show the term BOSS is clearly used as a word in the context of its ordinary meaning ('This BOSS takes orders.'), and it is so presented (i.e., BOSS rather than B.O.S.S.) in the drawing of the application for registration. In this context, derivation is irrelevant. See, e.g., Varian Associates v. Leybold-Hereues Gesellshaft, 219 USPQ 829, 833 (TTAB 1983).
FN5. The use of BOSS in the specimen catalog is insignificant, consisting, merely, of three references to the term in the copy on page 3. ('This BOSSSM takes orders. Hi I'm BOSS! BOSS is short for Burroughs On-line Supplies Service. I work to expedite your order quickly and efficiently. You will be seeing more of me. Watch and See!') However, we must presume that BOSS may eventually be used independently of the other marks BURROUGHS and BURROUGHS ON-LINE SUPPLIES SERVICE which are more prominently used to identify the services on the cover and pages of the specimen catalog.
FN6. The use of supplies for use with 'business machines such as,' followed by five examples of business machines (not including overhead projectors) rules out supplies for overhead projectors only if the latter are not 'business machines,' since the listing is exemplary rather than all-inclusive. Overhead projectors generally have cooling fans which are operated by motors having moving parts. On the other hand, in normal usage, albeit these items are business equipment, they are probably not business machines. While we are in doubt, and since the Examining Attorney has provided no evidence on the question and does not argue the contrary position in her brief, we are obliged, giving appellant the benefit of the doubt, to infer that its distributorship services, as identified in its application, do not involve overhead projector transparencies.