Beyond Diversity Resource Center, Inc.

Trademark Trial and Appeal Board

Aug 19, 2010

No. 77722602 (T.T.A.B. Aug. 19, 2010)

Mailed: August 19, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Beyond Diversity Resource Center, Inc.
________

Serial No. 77722602
_______

Ashok Tankha for Beyond Diversity Resource Center, Inc.

Gene V.J. Maciol, II, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Kuhlke and Taylor, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On April 27, 2009, Beyond Diversity Resource Center,
Inc. applied to register the mark shown below on the
Principal Register under Section 1(a) of the Trademark Act,
15 U.S.C. §1052(a), for services ultimately identified as
“education services, namely, providing training, by way of
classes, seminars, conferences and workshops in the field
of cultural diversity, community education and human
relations” in International Class 41.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77722602
2

Applicant claims the colors red and black as a feature
of the mark. In response to requirements from the
examining attorney, applicant disclaimed the wording
“DIVERSITY SYSTEM” and provided the following description
of the mark: “The mark consists of the stylized wording
‘RED BOX DIVERSITY SYSTEM’ and cube design separating the
wording ‘RED BOX’ and ‘DIVERSITY SYSTEM,’ all in the color
black superimposed over a red square background.”
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified services,
so resembles the registered typed mark RED BOX for “books,
pamphlets, brochures and journals relating to financial,
legal, corporate and other business related topics,” in
International Class 16, as to be likely to cause confusion,
mistake or deception.1

1 Registration No. 2673489, issued January 14, 2003, Sections 8
and 15 declarations accepted and acknowledged.

Serial No. 77722602
3
After the request for reconsideration was denied,
applicant appealed the final refusal and the appeal is
fully briefed.
When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out in In re E. I. Du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
First, in determining the similarity between the
marks, we analyze “the marks in their entireties as to
appearance, sound, connotation and commercial impression.”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) quoting du Pont, 177 USPQ at 567. In this case,
applicant’s mark RED BOX DIVERSITY SYSTEM and box design
incorporates the entirety of the registrant’s mark RED BOX.
Moreover, there is nothing in the record to indicate that
RED BOX is weak. Applicant’s third-party registrations do
not support such a finding. Three of them are for very
Serial No. 77722602
4
different marks (i-qbox, Little Red Tool Box and Red Bee)
and the fourth third-party registration for the mark Red
Box is for completely different services (rental of DVD’s
and vending machines). Thus, because applicant has
incorporated the entirety of registrant’s mark, there is a
similarity in sound, appearance, connotation and commercial
impression.
Moreover, the common element RED BOX is the dominant
feature in applicant’s mark. It is well settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature when evaluating the similarities of the marks. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). Descriptive or disclaimed portions
typically play a less significant role in a comparison of
the marks. Id.; In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). While we
recognize that applicant, although it ultimately acquiesced
to the disclaimer requirement, continues to maintain that
the additional wording DIVERSITY SYSTEM is not descriptive,
it is, at a minimum, highly suggestive of applicant’s
services. As to the design element in applicant’s mark,
the box in the color red simply serves to underscore the
literal element RED BOX.
Serial No. 77722602
5
Although the marks are similar, the likelihood of
confusion must be evaluated in connection with the goods
and services in connection with which they are used.
In considering the respective goods and services, we
find that they are not so related that the use of the
respective marks is likely to cause confusion. Of course
we must evaluate the relatedness of the goods and services
as they are identified in the registration and application.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods [or services] set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of
purchasers to which the sales of goods [or services] are
directed”). See also Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
However, this does not mean it is appropriate to consider
all imaginable interpretations.
We agree that educational services and various types
of printed matter, e.g., books, pamphlets, etc. can be
related (and the various third-party registrations and web
Serial No. 77722602
6
pages support this position). However, we do not agree
with the examining attorney’s interpretation of the scope
of the identification of goods listed in the registration,
“books, pamphlets, brochures and journals relating to
financial, legal, corporate and other business related
topics.” Specifically, the examining attorney argues that:
Applicant’s diversity, community education and
human relations subject matter is closely related
to, if not encompassed by, Registrant’s
“business-related topics.” For example, “human
relations” is defined as, “the study of group
behavior for the purpose of improving
interpersonal relationships, as among employees.”
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. Moreover,
in some instances understanding and accommodating
diversity in the workplace becomes a legal topic.
This is clearly evident when one views
Applicant’s website explaining use of its
training system in the workplace to “improve
employee diversity skills.” Applicant states,
“red box not only teaches diversity skills, but
how to develop those skills so they “fit” each
individual’s flexible unique work setting and job
function.” Employee skills and job functions are
business-related topics.

Br. pp. 12-13.
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. As such, the parameters of this
Serial No. 77722602
7
identification, including “other business related topics,”
extend only to the core aspects of a business. 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. Thus, we find that
registrant’s identification does not “encompass”
applicant’s services. Further, the wording in the
identification, by itself, does not establish that such
distinct subject matter is related to the “cultural
diversity, community education and human relations” which
are the subject matter of applicant’s educational services.
Nor is there anything in this record that would establish
the relatedness between these two fields. For example,
there is no evidence that shows diversity training services
and printed matter on financial, legal, corporate, and
other business-related topics being offered by a single
source. The most relevant example is the third-party
Registration No. 3033671 for the mark SHOP RITE UNIVERSITY,
which lists printed educational materials and training
services covering a wide range of topics, including project
Serial No. 77722602
8
management, career development, leadership, diversity,
writing and grammar, communications, computers, software,
business management, labor relations and human resources
and marketing. However, this registration, which contains
the subject matter of diversity and business management in
the same identification as writing and grammar, computers
and communications, is not sufficient to support a finding
that diversity training and printed matter on financial,
legal and corporate issues are related such that confusion
is likely.
In view thereof, we find that applicant’s services are
not related to registrant’s goods. Moreover, to the extent
there is any overlap in the channels of trade and classes
of customers, the applicant’s services are sufficiently
distinct from registrant’s goods and would be purchased
with sufficient care to preclude likely confusion. The
nature of applicant’s services is such that any potential
consumer would be knowledgeable or discriminating and the
purchasing decision would not be based on impulse but
rather would be subject to a more deliberative process.2

2 In making this determination, we have not considered the
material attached to applicant’s brief. That material is
untimely, and the examining attorney’s objection is sustained.
Trademark Rule 2.142(d).

Serial No. 77722602
9
In conclusion, we find that because the goods and
services are not related, confusion is not likely between
applicant’s mark for its identified services and the mark
in the cited registration.
Decision: The refusal to register under Section
2(d) of the Trademark Act is reversed.