Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE COMPUTER SYSTEMS CENTER, INC.
Serial No. 494,296
June 23, 1987
Christel, Bean & Linihan for applicant
Trademark Examining Attorney
Law Office 6
(Ronald E. Wolfington, Managing Attorney)
Before Sams, Krugman and Cissel
Opinion by Sams
Computer Systems Center, Inc. has appealed from the Trademark Examining Attorney's final refusal to register its mark "CSC ADVANCED BUSINESS SYSTEMS" for services described as "retail computer store services and computer maintenance and repair services in connection therewith." [FN1] The Examining Attorney refused registration on the grounds that: (i) applicant failed to comply with the Examining Attorney's requirement that it amend its recitation and classification of services to comply with Patent and Trademark Office classification requirements--in particular, that it identify its retail computer store services as services classified in International Class 42 and its computer maintenance and repair services as services classified in International Class 37--and file the appropriate additional fee, (ii) applicant refused to comply with the Examining Attorney's requirement that, under Section 6 of the Trademark Act, it disclaim the words "ADVANCED BUSINESS SYSTEMS" apart from its mark as a whole, and (iii) applicant's mark "CSC ADVANCED BUSINESS SYSTEMS," as applied to its services, so resembles the previously registered mark "CSC" for "computer time sharing services; computer programming services; management of computer operations for others; data processing by means of a computer; design of computer software; and market research analysis" [FN2] as to be likely to cause confusion or mistake or to deceive [Section 2(d) of the Trademark Act].
The Classification of Services Requirement
For applications filed after September 1, 1973, the Patent and Trademark Office specifies that the system of classification for goods and services, for all statutory purposes relating to trademark applications, is the international classification of goods and services, established by the World Intellectual Property Organization (WIPO) and promulgated in the volume entitled "International Classification of Goods and Services for the Purposes of Registration of Marks" (4th ed. 1983). Trademark Rule 2.85; Trademark Manual of Examining Procedure Section 1401.02. The Examining Attorney has made of record an excerpt from the above-mentioned International Classification volume. That excerpt shows that "machinery installation, maintenance and repair" is properly classified in International Class 37. There is no dispute that applicant's retail computer store services are properly classified in International Class 42. That applicant's computer maintenance and repair services are related to the retail computer store services is not challenged by the Examining Attorney, but that the services offered by applicant are related to each other does not relieve applicant of the burden of complying with the Patent and Trademark Office's classification system. Retail computer store services are services separate from computer maintenance and repair services, and the Examining Attorney was correct in requiring that applicant file an amendment to its application to set forth these disparate services in separate international classes and pay the appropriate fee for the additional class.
The Disclaimer Requirement
*2 The Examining Attorney required a disclaimer, under Section 6 of the Trademark Act, of the words "ADVANCED BUSINESS SYSTEMS" on the grounds that those words are merely descriptive of the services recited in the application. In support of the requirement for disclaimer, the Examining Attorney made of record dictionary definitions of the words "advanced", "business," and "systems", in order to show that these words are used in their ordinary dictionary sense when they are applied to the services recited in the application. The Examining Attorney also made of record printed excerpts from the NEXIS Library of Mead Data's LEXIS data base. The Examining Attorney made two search requests of the LEXIS/NEXIS System. The first was for all stories in the data base containing the words "advanced business systems"; the second was for all stories in the data base containing the words "business systems." With the searches so framed, the system located 25 stories in which the words "advanced business systems" appeared and 5,716 stories in which "business systems" appeared. The Examining Attorney made of record four of the excerpts from stories in which the words "advanced business systems" appeared and six excerpts from stories in which the words "business systems" appeared. While the dictionary definitions of the words "advanced", "business", and "systems", appear to us sufficient to establish that the phrase "advanced business systems" is, in its entirety, merely descriptive as applied to applicant's services, the LEXIS/NEXIS excerpts reinforce that conclusion. For example, included among the excerpts made of record are the following:
Rand is an Alameda-based computer software company specializing in software conversions and in the development of advanced business systems for clients worldwide. (Business Wire, July 18, 1985)
Additionally, we have made investments in material management software and advanced business systems for both our customers and our own internal productivity.... (PR Newswire)
The software features package reportedly combines the features of Northern Telecom's hotel/motel system with those of its advanced business system. (Computerworld, June 13, 1983)
We are determined to let business systems buyers know that these computers are the 'smart, user-useful' alternative to UNIX. (PR Newswire, September 4, 1985)
... Inc. is a leading supplier of video display terminals and supplies a complete line of multi-user, PC-compatible business systems and printers designed for office automation and data processing applications.
These excerpts made of record by the Examining Attorney, while only a few taken from the large number of stories located by the LEXIS/NEXIS system, are sufficient to establish that the term "advanced business systems", as applied to retail store services in the computer field, is more than merely suggestive as applied to the retail sales of computers. The term describes high technology computer systems for business applications. Applicant has offered no evidence to rebut the showing made by the Examining Attorney on this point, and its arguments to the effect that the Examining Attorney has failed to make out a proper case of descriptiveness to support the disclaimer requirement are unpersuasive.
The Section 2(d) Refusal
*3 Applicant has argued that the services recited in its application are wholly different in nature from the services recited in the registration cited by the Examining Attorney under Section 2(d). In support of its argument that the services are different and would be offered to different purchasers, in different channels of trade, applicant made of record a copy of the 1984 Annual Report of Computer Sciences Corporation (the owner of the registration cited by the Examining Attorney) and a copy of report from "Moodys Industrial Manual", which report refers to registrant Computer Sciences Corporation. On the basis of these documents, applicant argues that the owner of the cited registration does not provide retail computer store services and, in fact, provides its services on a contractual basis to its clients.
A principle so fundamental to proceedings before this Board that it hardly needs citation of authority is that, in proceedings before this Board, the issue of likelihood of confusion must be determined on the basis of the goods and services as set forth in the applications and registrations that are before the Board. Evidence concerning the actual channels of trade for the goods or actual limitations in the current methods of distribution or provision of services are irrelevant, unless those channels of trade or limitations are included in the recitations of goods in the application or registration certificate. Of course, there may exist in a recitation of goods inherent limitations in channels of trade or customers even where the channels of trade and customers are not specifically delineated in the recitation.
In this case, the services recited in the registration cited by the Examining Attorney under Section 2(d) are "computer time sharing services, computer programming services, management of computer operations for others, data processing by means of a computer, design of computer software, and market research analysis." There are no limitations as to the channels of trade in which these services are marketed. Nor do we find the recited services by nature so dissimilar to retail computer store services and computer maintenance and repair services that confusion must be determined unlikely. To the contrary, the specimens submitted by applicant in support of its application to register its mark for retail computer store services are advertisements for its stores in which, among other things, applicant offers to "design software just for you." "Design of computer software" is one of the items specifically included in the recitation of services in the cited registration. We believe, therefore, that the goods recited in the application are highly related to those services recited in the cited registration.
Applicant's mark "CSC ADVANCED BUSINESS SYSTEMS" is substantially similar to the cited mark "CSC". As we have held already, "ADVANCED BUSINESS SYSTEMS", as applied to computer products and services is, at the least, a descriptive term. The term would seem to be as descriptive of the services included in the cited certificate of registration as it is for the services recited in applicant's application. Thus, the inclusion of "ADVANCED BUSINESS SYSTEMS" as a feature of applicant's mark is not likely to help customers and potential customers distinguish the source of each party's service. Moreover, applicant is seeking to register "CSC ADVANCED BUSINESS SYSTEMS" in typewritten form and thus has not tied itself to any particular graphic representation, in terms of size or prominence of display, of the "CSC" and "ADVANCED BUSINESS SYSTEMS" components of its mark. Indeed, the specimens of use submitted with the application show the "CSC" portion as the dominant feature of applicant's composite mark. That display, as shown in applicant's advertising, is reproduced below:
*4 Thus, we find the parties' marks substantially similar and their services highly related. Confusion as to source under these circumstances is, we think, not only likely but inevitable.
Decision: The refusal to register, on each of the grounds asserted by the Trademark Examining Attorney, is affirmed.
J. D. Sams
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Serial No. 494,296, filed August 10, 1984.
FN2. Registration No. 914,451, issued June 8, 1971 (combined affidavit under Sections 8 & 15 filed).