BoxSolutions Corp.

Trademark Trial and Appeal Board

May 23, 2006

No. 76267086 (T.T.A.B. May. 23, 2006)

Mailed: May 23, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Box Solutions Corp.
________

Serial No. 76267086
_______

Morton J. Rosenberg of Rosenberg, Klein & Lee for Box
Solutions Corp.

Nicholas K.D. Altree, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Hohein, Walters and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Box Solutions Corp., applicant, has filed an
application to register the mark BOX SOLUTIONS in stylized
form as shown below,

for “computer hardware, namely, communications servers” in
International Class 9.1

1 Application Serial No. 76267086, filed June 5, 2001, alleging a
bona fide intention to use the mark in commerce under Section
1(b) of the Trademark Act. The application includes the
THIS DISPOSITION IS
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76267086
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used on its identified
goods, so resembles the registered mark BOX and design, as
shown below,

for “computers and computer peripherals” in International
Class 9,2 as to be likely to cause confusion, mistake or to
deceive. The examining attorney also made final his
requirement that applicant disclaim the word SOLUTIONS, on
the ground that it is merely descriptive of applicant’s
goods within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1). Consequently,
pursuant to Section 6(a) of the Trademark Act, the
Trademark Examining Attorney has issued a final refusal of
registration. 15 U.S.C. §1056(a).
Applicant has appealed the refusals and briefs have
been filed. No oral hearing was requested. We reverse the
Section 2(d) refusal and affirm the refusal to register
based on the disclaimer requirement.

following lining statement: “The lining is a feature of the mark
and does not indicate color.”

Ser No. 76267086
3
In view of its bearing on the likelihood of confusion
issue, we first consider the disclaimer requirement. An
examining attorney may require an applicant to disclaim an
unregistrable component of a mark otherwise registrable.
Trademark Act Section 6(a). Merely descriptive terms are
unregistrable, under Trademark Act Section 2(e)(1), and,
therefore, are subject to disclaimer if the mark is
otherwise registrable. Failure to comply with a disclaimer
requirement is grounds for refusal of registration. See In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185
USPQ 46 (CCPA 1975); In re National Presto Industries,
Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton Tool
Industries, Inc., 157 USPQ 114 (TTAB 1968).
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the applicant’s goods or services

2 Registration No. 2559490, issued April 9, 2002.
Ser No. 76267086
4
in order to be considered merely descriptive; it is enough
that the term describes one significant attribute, function
or property of the goods or services. See In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates,
180 USPQ 338 (TTAB 1973). On the other hand, if
imagination, thought or perception is required to reach a
conclusion on the nature of the goods or services, the mark
is suggestive and registrable. See In re Nett Designs, 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001); and In re
Gyulay, supra. It has long been acknowledged that there is
a thin line between terms that are merely descriptive and
those that are suggestive. See In re Atavio Inc., 25
USPQ2d 1361 (TTAB 1992).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The burden is initially on the United States Patent
and Trademark Office to make a prima facie showing that the
Ser No. 76267086
5
mark or word in question is descriptive from the vantage
point of purchasers of applicant’s goods and, where doubt
exists as to whether a term is descriptive, such doubt
should be resolved in favor of the applicant. In re
Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987).
In support of the refusal, the examining attorney has
made of record “a sampling of 106 third-party registrations
in which the term SOLUTIONS is disclaimed when used in
connection with computer goods in International Class 9.”3
Br. unnumbered p. 2. The examining attorney argues that
this evidence shows that it is “the prevailing PTO practice
to disclaim the word SOLUTIONS when used in connection with
computer hardware of the sort listed in the applicant’s
identification” and that “the word SOLUTIONS has become
commonly used and widely recognized in the information
technology sector as a descriptor of computers and
computer-related goods.” Br. unnumbered p. 3.
Applicant argues that the word SOLUTIONS “is not
directly indicative of the particular qualifying properties
of the product.” Br. p. 15.

3 The examining attorney submitted the results of his search for
active registrations for computer goods that include a disclaimer
for the word SOLUTIONS in the mark. The search retrieved 106
registrations and the examining attorney submitted the printouts
of approximately twenty of those registrations.
Ser No. 76267086
6
Third-party registrations can be used in the manner of
a dictionary definition to illustrate how a term is
perceived in the trade or industry. In re J.M. Originals
Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“Said third party
registrations are of use only if they tend to demonstrate
that a mark or a portion thereof is suggestive or
descriptive of certain goods and hence is entitled to a
narrow scope of protection. Used in this limited manner,
‘third party registrations are similar to dictionaries
showing how language is generally used.’”) (Internal
citation omitted.) “Such third party registrations show
the sense in which the word is used in ordinary parlance
and may show that a particular term has descriptive
significance as applied to certain goods or services.”
Institut National Des Appellations D’Origine v. Vintners
International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196
(Fed. Cir. 1992) (third-party registrations found to be
“persuasive evidence”).
As shown by the examining attorney’s evidence, the
term “SOLUTIONS” has been regarded as merely descriptive in
a number of third-party marks, the registrations of which
include disclaimers of the term “SOLUTIONS.” See General
Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1277
(TTAB 1972) (“Although the registrations are not evidence
Ser No. 76267086
7
of use, the registrations show the sense in which the term
‘fiber’ is employed in the marketplace, similar to a
dictionary definition.”). The three third-party
registrations submitted by applicant for marks that include
the word SOLUTIONS, without a disclaimer thereof, for
computer-related goods, do not rebut the twenty third-party
registrations made of record by the examining attorney.4
Reg. No. 2886241 for the mark REAL TIME SOLUTIONS is
registered under Section 2(f) of the Trademark Act based on
acquired distinctiveness of such otherwise merely
descriptive words and Reg. No. 2881792 for the mark
ENERGYSOLUTIONS is a compound word where a disclaimer would
not be required. TMEP 1213.05(a) (4th ed. April 2005).
Reg. No. 2885045 for the mark KLIKLOK-WOODMAN PACKAGING
SOLUTIONS is for, inter alia, electronic and pneumatic
control systems and computer software for controlling
automated product packaging machines. The computer
software in this registration appears to be ancillary to
the packaging machines, however, to the extent it may
support applicant’s position, it is only one registration,

4 The examining attorney’s objection to these exhibits, attached
to applicant’s brief, as untimely is overruled. They were
properly made of record during examination on October 14, 2004 in
response to the May 20, 2004 office action.

Ser No. 76267086
8
in contrast to the twenty registrations submitted by the
examining attorney.
Further, we take judicial notice of the following
definition for the word SOLUTION:5
An application of computers and software to a
particular problem. The New Penguin Dictionary
of Computing (Penguin Books 2001).

This definition simply confirms that the term
SOLUTIONS when used in association with computer hardware
has a descriptive meaning. In the context of computer
goods, SOLUTIONS is a term that is used to describe the
purpose of the computer to resolve a problem. In view
thereof, we find that SOLUTIONS is descriptive of
applicant’s goods and that the required disclaimer is
appropriate.
We now turn to the refusal under Section 2(d). Our
determination of the issue of likelihood of confusion is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, however, two key

5 University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
Ser No. 76267086
9
considerations are the similarities or differences between
the marks and the similarities or differences between the
goods and/or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We turn first to a consideration of the goods
identified in the application and the cited registration.
It is well settled that goods need not be similar or
competitive in nature to support a finding of likelihood of
confusion. The question is not whether purchasers can
differentiate the goods themselves, but rather whether
purchasers are likely to confuse the source of the goods.
See Helene Curtis Industries Inc. v. Suave Shoe Corp., 13
USPQ2d 1618 (TTAB 1989). Further, we must consider the
cited registrant’s goods as they are described in the
registration and we cannot read limitations into those
goods. See Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the cited
registration describes goods or services broadly, and there

USPQ 505 (Fed. Cir. 1983) (Board may take judicial notice of
dictionary definitions).
Ser No. 76267086
10
is no limitation as to the nature, type, channels of trade
or class of purchasers, it is presumed that the
registration encompasses all goods or services of the type
described, that they move in all channels of trade normal
for these goods, and that they are available to all classes
of purchasers for the described goods. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).
The examining attorney submitted the following
definition of “computer server”:
A computer or program that controls a central
repository of data that can be downloaded and
manipulated in some manner by a client. The
American Heritage Dictionary of the English
Language (3d ed. 1992).

We also take judicial notice of the following definition of
“server”:
5. Computer Science. A. A file server. B. A
computer that processes requests for HTML and
other documents that are components of webpages.
The American Heritage Dictionary of the English
Language (4th ed. 2000).

Therefore, with regard to the item “computers,” as
identified in Registration No. 2559490, because the
identification of goods in the cited registration is not
limited to specific types of computers or to specific
channels of trade, it must be presumed that registrant’s
computers encompass applicant’s computer hardware, namely,
communications servers, and that they are sold through the
Ser No. 76267086
11
ordinary channels of trade for such goods. Accordingly,
for purposes of the likelihood of confusion analysis,
applicant’s computer hardware, namely communications
servers, because they are encompassed within the
identification of “computers,” must be considered legally
identical to the cited registrant’s goods and must be
deemed to be sold in the same channels of trade.
In view of the above, the du Pont factor of the
similarity of the goods weighs in favor of a finding of
likelihood of confusion. In addition, because the
identification of goods in the cited registration is not
limited to any specific channels of trade, we presume an
overlap in trade channels and that the goods would be
offered to all normal classes of purchasers. Applicant’s
attempt to distinguish the goods and channels of trade
impermissibly reads a limitation into the registration.
The identification of goods in the registration does not
limit the channels of trade in any way, nor does it exclude
communication servers from its broad identification of
computers.
We agree with applicant’s argument that the goods are
“normally marketed and provided to persons with a high
degree of knowledge and familiarity concerning the goods”
and are not “purchased impulsively.” Br. pp 12-13. Thus,
Ser No. 76267086
12
we find that these items are not impulse purchases, a
factor that weighs in favor of applicant.
Applicant’s argument that there is a difference in
their respective customers in that its communication
servers “would be sold to computer science specialists,
engineers, [and] corporate buyers” in contrast to the
registrant’s computers and computer peripherals “which, in
general, would be sold to a mass buying public” (Br. p. 13)
is not persuasive in view of our determination that
registrant’s computers encompass applicant’s servers.
Thus, the customer base for applicant’s and registrant’s
goods, as determined by the identification of goods,
overlaps. However, the common purchasers for applicant’s
and registrant’s goods must be considered sophisticated,
and this factor also weighs in favor of applicant. See
Electronic Design & Sales, Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ 1388, 1392 (Fed. Cir. 1992)
(“Where the purchasers are the same, their sophistication
is important and often dispositive because ‘[s]ophisticated
consumers may be expected to exercise greater care.’”
Internal citation omitted.)
We turn now to the first du Pont factor, i.e., whether
applicant’s mark and opposer's marks are similar or
dissimilar when compared in their entireties in terms of
Ser No. 76267086
13
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under the first du Pont factor, is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of
the goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). “When marks
would appear on virtually identical goods or services, the
degree of similarity [between the marks] necessary to
support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert.
denied, 506 U.S. 1034 (1992). Furthermore, although the
marks at issue must be considered in their entireties, 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 in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
Ser No. 76267086
14
1985). Finally, the meaning or connotation of a mark must
be determined in relation to the named goods or services.
See In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB
1987); and In re British Bulldog, Ltd., 224 USPQ 854 (TTAB
1984).
Applicant relies on several third-party registrations
to show that the term “BOX” for computer-related goods is
very weak. As noted above, third-party registrations can
be used in the manner of a dictionary definition to
illustrate how a term is perceived in the trade or
industry. In re J.M. Originals Inc., supra. Here, 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. See, e.g., Reg. No. 2012277 for
BOX-PC for, inter alia, computers; Reg. No. 2362531 for BOX
and design for, inter alia, transmission and data
processing equipment; Reg. No. 1418233 for UNIBOX for,
inter alia, computers; Reg. No. 2517211 for FIXBOX for,
inter alia, computer hardware; Reg. No. 2575397 for
HERBYBOX for, inter alia, Internet communications server;
Reg. No. 2459563 for STREAMBOX for, inter alia, computer
software; and Reg. No. 2664032 for SMARTBOX for, inter
alia, microprocessors. Further, we take judicial notice of
the following definitions of “BOX”:
Ser No. 76267086
15
Slang for hardware. A box can be a PC or server
or any device, although it is typically one that
processes information. For example, a “UNIX box”
is just another way of saying “UNIX computer.”
Computer Desktop Encyclopedia (9th ed. 2001).

1. (slang) A computer, especially a small one.
For example, a Linux box is a computer that runs
Linux. Dictionary of Computer and Internet Terms
(7th ed. 2000).

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 connotation of the marks, derived from
the common word BOX, implying computer, is similar, but
applicant’s mark has a slight variation due to the
additional word SOLUTIONS which creates a difference in
sound. Overall, we find the differences outweigh the
similarities given the weakness of the common element.
King Candy Co. v. Eunice King’s Kitchen, Inc., 182 USPQ
Ser No. 76267086
16
108, 110 (CCPA 1974) (confusion unlikely when marks are of
such non-arbitrary nature that the public easily
distinguishes slight differences in the marks under
consideration). See also Colgate-Palmolive Co. v. Carter-
Wallace, Inc., 432 F.2d 1400, 167 USPQ 529 (CCPA 1970)
(because common element in marks is a common noun or
adjectival word of everyday usage in the English language
and has a laudatory or suggestive indication, PEAK PERIOD
for personal deodorants is not confusingly similar to PEAK
for dentifrice); and Sure-fit Products Co. v. Saltzson
Drapery Co., 254 F.2d 158, 117 USPQ 295 (CCPA 1958) (where
a party has a weak mark, competitors may come closer to the
mark than would be the case with a strong mark without
violating the party’s rights; marks SURE-FIT and RITE-FIT,
both for slip-covers, held not confusingly similar). This
is true, in particular, here, where the sophisticated
purchasers, who would be the common purchasers of the
goods, 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.
In conclusion, we find that, despite the legal
identity of the goods and the overlap in trade channels and
customers, the marks are sufficiently dissimilar,
Ser No. 76267086
17
particularly in view of the very weak nature of the common
element BOX and the nature of the overlapping goods, which
are not impulse-purchase items and are bought by
sophisticated purchasers, such that confusion is not likely
between applicant’s BOX SOLUTIONS in stylized form mark and
the cited registrant’s BOX and design mark.
Decision: The refusal to register under Section
2(d) is reversed, but the refusal to register based on
applicant’s failure to disclaim SOLUTIONS is affirmed.
However, if applicant submits the required disclaimer
of SOLUTIONS to the Board within thirty days, this
decision will be set aside as to the affirmance of the
disclaimer requirement, and the application then shall
proceed to publication.6 See Trademark Rule 2.142(g),
37 C.F.R. §2.142(g).

6 The standardized printing format for the required disclaimer
text is as follows: “No exclusive right to use SOLUTIONS is
claimed apart from the mark as shown.” TMEP §1213.08(a) (4th ed.
April 2005).