Office Express, Inc.v.Independent Stationers, Inc.

Trademark Trial and Appeal Board

Jan 6, 1998

No. 91096771 (T.T.A.B. Jan. 6, 1998)

Paper No.18
EWH/CCR
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 6, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Office Express, Inc.
v.
Independent Stationers, Inc.
_____
Opposition No. 96,771
to application Serial No. 74/500,826
filed on March 16, 1994
_____
Philip K. Fitzsimmons of Shlesinger, Fitzsimmons for Office
Express, Inc.
William S. Gardiner for Independent Stationers, Inc.
______
Before Seeherman, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Independent Stationers, Inc. (applicant) seeks
registration of OFFICE PLUS EXPRESS in typed capital letters
for "retail and mail order store services in the fields of
office supplies, furniture and office equipment, and
computers and computer equipment; catalog services featuring
Opposition No. 96771
2
office supplies, furniture and office equipment, and
computers and computer equipment; printing and designing
business cards, forms and rubber stamps for others." The
intent-to-use application was filed on March 16, 1994.
Applicant disclaimed the exclusive right to use OFFICE apart
from the mark in its entirety.
Office Express, Inc. (opposer) filed a notice of
opposition alleging that prior to March 16, 1994 opposer
both used and registered OFFICE EXPRESS for "retail store
services in the field of office products," and further
alleging that the contemporaneous of these two marks for
essentially the same services is likely to result in
confusion. Opposer has properly made of record a certified
status and title copy of its Registration No. 1,752,035
issued February 9, 1993. This registration is for the mark
OFFICE EXPRESS depicted in typed capital letters for "retail
store services in the field of office products." In that
registration, opposer disclaimed the exclusive right to use
OFFICE apart from the mark in its entirety.
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition.
Opposer and applicant filed briefs. In reviewing
applicant’s brief, the Board noted the following comments
made by applicant at page 3: "The opposer has chosen not to
Opposition No. 96771
3
file a brief in this action… Thus the applicant is forced to
make reasonable assumptions as to what exactly opposer is
contending." On October 20, 1997, the Board placed a
telephone call to counsel for applicant and informed him
that opposer had filed a brief with a certificate of service
attached thereto indicating that a copy of said brief had
been filed with applicant's counsel. To cut to the quick,
applicant's counsel obtained a copy of opposer's brief from
opposer's counsel and filed with the Board "Applicant's
Amended Brief" along with a request for permission to file
said brief. In the request, applicant's counsel noted that
opposer's counsel had agreed to this request. Furthermore,
applicant requested that opposer be given the opportunity to
file a reply brief to Applicant's Amended Brief. Opposer
had not elected to file a reply brief to applicant's
original brief. We are hereby granting applicant's request
(consented to by opposer's counsel) to file Applicant's
Amended Brief. On December 9, 1997 the Board telephoned
counsel for opposer and was informed that opposer had
reviewed Applicant's Amended Brief and had decided not to
file a reply brief. Neither party has requested a hearing.
The record in this case is summarized at page 1 of
opposer's brief and page 2 of Applicant's Amended Brief.
In considering opposer's section 2(d) claim (i.e.
priority and likelihood of confusion), we note at the outset
Opposition No. 96771
4
that priority rests with opposer. Not only has opposer
properly made of record its aforementioned registration of
OFFICE EXPRESS, but in addition the record shows that
opposer commenced use of OFFICE EXPRESS long before March
16, 1994, the filing date of applicant’s intent-to-use
application. Indeed, at page 2 of its Amended Brief,
applicant makes the following statements: "There is no
issue as to priority. Opposer is the prior user." Thus,
the only issue before the Board is one of likelihood of
confusion.
In any likelihood of confusion analysis, two key
considerations are the similarity of the goods and/or
services and the similarities of the marks. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) ("The fundamental inquiry mandated
by section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [and services]
and differences in the marks.")
Considering first the services, we find that the
services as set forth in opposer’s registration (retail
store services in the field of office products) are, despite
the differences in terminology, identical to some of the
services set forth in applicant’s application, namely,
"retail … store services in the fields of office supplies …
and office equipment."
Opposition No. 96771
5
Turning to a consideration of the marks, it must be
kept in mind that "when marks would appear on virtually
identical goods or services, the degree of similarity [of
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, 1700
(Fed. Cir. 1992).
In this case, applicant has adopted opposer’s mark in
its entirety and merely inserted the word PLUS. Thus, in
terms of visual appearance, pronunciation and meaning, we
find that applicant’s mark OFFICE PLUS EXPRESS is very
similar to opposer’s mark OFFICE EXPRESS. The similarities
in visual appearance and pronunciation are quite obvious and
merit no discussion. As for the similarity in meaning, we
note that the word "plus" is defined as "added to" or
"increased by." Webster’s New World Dictionary (2d ed.
1970). Indeed, it has been held that "the term PLUS is an
everyday word that indicates something added, and when
applied to goods [or services], it merely implies additional
quantity or quality." Plus Products v. Plus Discount Foods,
Inc., 722 F.2d 999, 222 USPQ 373, 378 (2d Cir. 1983). We
believe that consumers familiar with opposer’s mark OFFICE
EXPRESS for retail store services in the field of office
products would, upon seeing the mark OFFICE PLUS EXPRESS,
believe that the latter mark simply denotes that opposer’s
Opposition No. 96771
6
services have now been expanded somewhat to include a
greater selection of office products and/or products related
to office products. In this regard, we note that applicant
seeks to register OFFICE PLUS EXSPRESS not only for services
identical to opposer’s services, but also for additional
(expanded) services including retail store services
featuring office furniture and computers, and mail order and
catalog services featuring office supplies.
In short, we find that the contemporaneous use of
OFFICE EXPRESS for retail store services in the field of
office products and OFFICE PLUS EXPRESS for these identical
services plus some additional related services is likely to
result in confusion.
We note that applicant has made the argument that
opposer’s mark "is a weak mark and should be allowed only a
very narrow scope of protection." (Applicant’s Amended
Brief page 8). There can be no dispute that opposer’s mark
is suggestive and thus is entitled to a narrower scope of
protection than would be afforded an arbitrary mark.
However, opposer’s mark, even if deemed to be suggestive, is
entitled to some degree of protection and we find that that
degree of protection precludes the registration of a very
similar mark for identical services. We also note that
applicant has alleged that "opposer has chosen to use and
register a highly descriptive mark." (Applicant’s Amended
Opposition No. 96771
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Brief page 8). We simply do not share applicant’s view that
opposer’s mark is descriptive. Moreover, in making this
argument, applicant is seeking to collaterally attack
opposer’s registration. If applicant desired to take this
course of action, it should have filed a counterclaim to
cancel opposer’s registration on the basis that opposer’s
mark is merely descriptive. As has been stated repeatedly,
"if the opposer relies upon a prior registration as grounds
for opposition, the validity of that registration cannot be
challenged unless the applicant counterclaims by a petition
to cancel opposer’s registration." 3 J. McCarthy, McCarthy
On Trademarks and Unfair Competition, Section 20:22 at page
20-46 (4th ed. 1997) and cases cited therein.
We also note that applicant argues that confusion is
not likely because "there is no evidence in the record that
the opposer offers its services to the general public
through traditional retail store type sales. Thus, it
appears that [opposer’s] customers have a close relationship
with the opposer and a clear knowledge of its business."
(Applicant’s Amended Brief page 10). To begin with, we find
no evidentiary support for applicant’s contention that
opposer’s customers have "a close relationship with the
opposer and a clear knowledge of its business." The fact
that opposer’s customer list includes businesses does not
merit a finding that these businesses have a close
Opposition No. 96771
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relationship with and a clear understanding of opposer.
Moreover, even assuming for the sake of argument that in
practice opposer does have a close relationship with its
customers, it must be remembered that in a proceeding such
as this, "the question of likelihood of confusion must be
determined based on an analysis of the mark as applied to
the goods and/or services recited in applicant’s application
vis-a-vis the goods and/or services recited in an opposer’s
registration, rather than what the evidence shows the goods
and/or services to be. Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
As described in the registration and application, the
services of opposer and applicant are clearly broad enough
to include ordinary retail store services in the field of
office products/supplies which are provided to individuals
and small businesses having no prior knowledge of either
opposer or applicant.
Finally, we note that applicant has argued that it has
a "family of marks" which includes the words OFFICE PLUS.
(Applicant’s Amended Brief pp. 10-12). Applicant then
argues that because of the existence of this family of
marks, "the applicant believes that the buying public would
clearly identify the mark, OFFICE PLUS EXPRESS, as belonging
to the applicant and not confuse it with the opposer. The
fact that there is no evidence of any [actual] confusion
Opposition No. 96771
9
between the opposer’s mark and any of the family of OFFICE
PLUS marks currently in use clearly supports this position."
(Applicant’s Amended Brief page 11).
Two comments are in order. First, the "family of
marks" argument is simply "unavailable [as a defense] to a
defendant in a Board proceeding." Baroid Drilling Fluids
Inc. v. Sun Drilling Products, 24 USPQ2d 1048, 1049 (TTAB
1992). Moreover, even if the family of marks argument was
available as a defense (which it is not), in this proceeding
applicant has totally failed to demonstrate that it has so
extensively used and advertised its various OFFICE PLUS
marks together such that the relevant consuming public has
come to associate the common component (OFFICE PLUS) with
applicant.
Second, as for applicant’s allegation that there have
been no instances of actual confusion involving opposer’s
mark and applicant’s various OFFICE PLUS marks, suffice it
to say that based on this record, we have way of knowing
whether the marks have ever been actually used together such
that there was the chance for confusion to occur.
Opposition No. 96771
10
Decision: The opposition is sustained.
E. J. Seeherman
E. W. Hanak
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board