Cataldo
Ritchie
Lynch*
This Opinion is Not a
Precedent of the TTAB
Mailed: May 9, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
BoxFox Group Inc.
v.
Boxfox Inc.
_____
Opposition Nos. 91235427 & 912355131
_____
Kenan L. Farrell of KLF Legal for
BoxFox Group Inc.
Deidra D. Ritcherson and Andrew T. Oliver of Amin, Turocy & Watson, LLP for
Boxfox Inc.
_____
Before Cataldo, Ritchie and Lynch,
Administrative Trademark Judges.
Opinion by Lynch, Administrative Trademark Judge:
1 Because the cases have common questions of fact and law, the oppositions are hereby
consolidated. See, e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (The Board sua
sponte consolidated two cases). Citations to the TTABVUE record, the Boards online
docketing system, are the same in each case.
Opposition Nos. 91235427 & 91235513
Boxfox Inc. (Applicant) seeks registration on the Principal Register of the
following two marks:2
BOXFOX in standard characters3 for
Computerized interactive on-line gift ordering service
which matches the gift givers requirements with the gift
recipients wants and needs; computerized interactive on-
line customized and pre-packaged gift box set ordering
service which matches the gift givers requirements with
the gift recipients wants and needs; computerized
interactive on-line customized and pre-packaged gift set
ordering service which matches the gift givers
requirements with the gift recipients wants and needs;
computerized interactive on-line customized and pre-
packaged gift basket ordering service which matches the
gift givers requirements with the gift recipients wants and
needs; on-line retail store services selling featuring
customized and pre-packaged gift box sets, gift sets, gift
baskets and gifts; charitable services in the nature of
matching philanthropists with nonprofit organizations and
causes in the field of education; charitable services,
namely, organizing and developing projects that aim to
improve the educational attainment of women; charitable
services, namely, organizing and developing womens
education development projects in Int. Class 35
Providing a custom gift box building web hosted platform
that allowing [sic] web site users to electronically order,
specify and design customized gift box sets, gift sets, care
packages and gift baskets, and allowing web site users to
order and select pre-packaged gift box sets, gift sets, gift
baskets, care packages and gifts for delivery; providing a
web site featuring temporary use of non-downloadable
software allowing web site users to order and design
2Both applications recite essentially the same services. We set them out separately because
although the standard-character mark application is entirely use-based, the stylized mark
application is based in part on use and in part on intent to use, with the services separately
designated as such.
3 Application Serial No. 87249460 was filed on November 28, 2016 based on use of the mark
in commerce as of November 7, 2014 under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a).
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Opposition Nos. 91235427 & 91235513
customized gift box sets, gift sets, care packages and gift
baskets; providing a web set site featuring temporary use
of non-downloadable software allowing web site users to
order and select pre-packaged gift box sets, gift sets, gift
baskets, care packages and gifts for delivery to others in
Int. Class 42
Preparation of customized and pre-packaged gift box and
care package sets; preparation of customized and pre-
packaged gift sets; preparation of customized and pre-
packaged care packages; preparation of customized and
pre-packaged gift baskets; personal gift selection for
others; personal concierge services for others comprising
preparing requested customized gift box sets, gift sets, gift
baskets, care packages and gifts; personal concierge
services for others comprising selecting requested pre-
packaged gift box sets, gift sets, gift baskets, care packages
and gifts; personal concierge services for others comprising
selecting personal gifts for others and care packages for
others based on customer requests in Int. Class 45
and ,4 with BOX disclaimed, for:
(Based on Use in Commerce) Computerized interactive on-
line gift ordering service which matches the gift givers
requirements with the gift recipients wants and needs;
computerized interactive on-line customized and pre-
packaged gift box set ordering service which matches the
gift givers requirements with the gift recipients wants and
needs; computerized interactive on-line customized and
pre-packaged gift set ordering service which matches the
gift givers requirements with the gift recipients wants and
needs; computerized interactive on-line customized and
pre-packaged gift basket ordering service which matches
4 Application Serial No. 86933125 was filed on March 8, 2016, based on Applicants allegation
of a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), as to certain services, and based on use of the mark in commerce as of
November 7, 2014 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The
application includes a description of the mark stating that [t]he mark consists of the word
BOX in all capital letters and the word fox in script below the word BOX. Color is not
claimed as a feature of the mark.
-3-
Opposition Nos. 91235427 & 91235513
the gift givers requirements with the gift recipients wants
and needs; on-line retail store services featuring
customized and pre-packaged gift box sets, gift sets, gift
baskets and gifts; (Based on Intent to Use) Charitable
services in the nature of matching philanthropists with
nonprofit organizations and causes in the field of
education; charitable services, namely, organizing and
developing projects that aim to improve the educational
attainment of women; charitable services, namely,
organizing and developing womens education development
projects in Int. Class 35
(Based on Use in Commerce) Providing a web hosted
platform for custom box building and allowing web site
users to electronically order, specify and design customized
gift box sets, gift sets, and gift baskets, and allowing web
site users to order and select pre-packaged gift box sets, gift
sets, gift baskets and gifts for delivery; providing a web site
featuring temporary use of non-downloadable software
allowing web site users to order and design customized gift
box sets, gift sets, and gift baskets; providing a web site
featuring temporary use of non-downloadable software
allowing web site users to order and select pre-packaged
gift box sets, gift sets, gift baskets and gifts for delivery to
others in Int. Class 42
(Based on Use in Commerce) Preparation of customized
and pre-packaged gift box sets; preparation of customized
and pre-packaged gift sets; preparation of customized and
pre-packaged gift baskets; personal gift selection for
others; (Based on Intent to Use) Personal concierge
services for others comprising preparing requested
customized gift box sets, gift sets, gift baskets and gifts;
personal concierge services for others comprising selecting
requested pre-packaged gift box sets, gift sets, gift baskets
and gifts; personal concierge services for others comprising
selecting personal gifts for others based on customer
requests in Int. Class 45
BoxFox Group Inc. (Opposer) opposes registration of the marks based on alleged
likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
with its registered mark BOXFOX in standard characters for:
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Opposition Nos. 91235427 & 91235513
Inventory management; Operating on-line marketplaces
featuring buyers and sellers of excess inventory; Operating
on-line marketplaces for sellers and buyers of goods and/or
services; Providing a website featuring an online
marketplace for exchanging goods and services with other
users in International Class 35.5
In its answer, Applicant denies the salient allegations in the notice of opposition
and lists numerous putative affirmative defenses.6 Most of these are merely
amplifications of Applicants denials and the remaining true affirmative defenses of
laches, acquiescence and estoppel have been waived because Applicant failed to
pursue them at trial. See Krause v. Krause Publications, Inc., 76 USPQ2d 1904, 1906
n.2 (TTAB 2005); see also Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba
Watermark Cruises, 107 USPQ2d 1750, 1753 n.6 (TTAB 2013).
The opposition is fully briefed.
I. Evidentiary Record and Objections
The parties did not cite to the record by reference to TTABVUE, the Boards online
docketing system, and we therefore direct their attention to Turdin v. Trilobite, Ltd.,
109 USPQ2d 1473, 1476 n.6 (TTAB 2014):
Because the Board primarily uses TTABVUE in reviewing
evidence, the Board prefers that citations to material or
testimony in the record that has not been designated
confidential include the TTABVUE docket entry number
and the TTABVUE page number. For material or
testimony that has been designated confidential and which
does not appear on TTABVUE, the TTABVUE docket entry
5Registration Number 4785714 issued August 4, 2015, based on use of the mark in commerce
at least as early as October 1, 2013, under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a).
6 4 TTABVUE.
-5-
Opposition Nos. 91235427 & 91235513
number where such material or testimony is located should
be included in any citation.
See also TBMP §§ 106.03, 801.01, 803.03 (June 2018).
The record includes the pleadings and pursuant to Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the files of the opposed applications. Opposer introduced the
testimony declaration of Chris Palmer, its Chief Executive Officer, with
accompanying exhibits.7 Applicant submitted testimony declarations of Sabena Suri,
Applicants co-founder and Chief Strategy Officer, with accompanying exhibits,8 and
Chelsea Moore, Applicants co-founder and Chief Executive Officer, with
accompanying exhibits.9 Applicant also submitted a Notice of Reliance on the files of
the opposed applications, which as noted above, already were in the record, and on
Opposers Responses to Interrogatories.10
Applicant has lodged various objections to exhibits attached to Opposers Palmer
Declaration on grounds of alleged lack of proper authentication, hearsay, irrelevance,
and incompleteness. Opposer filed no reply brief and did not address the objections.
We deem each of the exhibits admissible. As to the authentication objections, we
find that the exhibits in question were properly authenticated as records kept in the
course of a regularly conducted business activity, and therefore are admissible.
Regarding hearsay, [a]s a general matter, we do not treat testimony as to third-party
7 5 TTABVUE.
8 6 TTABVUE.
9 7 TTABVUE.
10 8 TTABVUE.
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Opposition Nos. 91235427 & 91235513
out-of-court statements as proof of the truth of the matter asserted. The same is true
for published articles [and internet website printouts]. However, such materials are
frequently competent to show, on their face, matters relevant to trademark claims
(such as public perception), regardless of whether the statements are true or false.
Accordingly, they will not be excluded outright, but considered for what they show on
their face. Harry Winston, 111 USPQ2d at 1427-28. Regarding the relevance
objections, we of course can assess whether and to what extent evidence actually
proves the factual matters which it is introduced to prove, and do not find the
challenged exhibits so irrelevant that they should be excluded. Finally, we overrule
the incompleteness objection to particular pages of Exhibit 9, as we do not agree that
these exhibits constitute partial writings, and we note that Applicant had the
opportunity to cross-examine the declarant to seek any additional context for the
purported actual confusion evidence. [T]he Board is capable of assessing the proper
evidentiary weight to be accorded the testimony and evidence, taking into account
the imperfections surrounding the admissibility of such testimony and evidence.
Thus, we have considered the evidence, keeping in mind the objections, and have
accorded whatever probative value the testimony and evidence merits. United States
Playing Card Co. v. Harbro, LLC, 81 USPQ2d 1537, 1540 (TTAB 2006).
II. Standing
Applicant has neither contested nor admitted Opposers standing. Opposer must
prove standing by showing a real interest in the outcome of the proceeding and a
reasonable basis for believing that it would suffer damage if the mark is registered.
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Opposition Nos. 91235427 & 91235513
See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Opposers pleaded registration, for which
Opposer has proven status and title, establishes its standing. See Coach Servs. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000).
III. Priority
Applicant challenges Opposers priority, but the challenge rests on a faulty
premise. Contrary to Applicants arguments, prior use need not be shown by a
plaintiff relying on a registered mark unless the defendant counterclaims for
cancellation. Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d
1399, 181 USPQ 272, 275 n.6 (CCPA 1974); see also Itel Corp. v. Ainslie, 8 USPQ2d
1168, 1169 (TTAB 1988) (because of the existence of opposers valid and subsisting
registration, it need not prove prior use as to the services recited therein). Applicant
has not counterclaimed to cancel Opposers pleaded registration, and therefore
Section 2(d) priority is not in issue as to the mark and services covered by Opposers
registration. See Top Tobacco LP v. North Atlantic Op. Co., 101 USPQ2d 1163, 1169
(TTAB 2011) (citing King Candy, Co. v. Eunice Kings Kitchen, Inc., 496 F.2d 1400,
82 USPQ 108 (CCPA 1974)).
IV. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours
-8-
Opposition Nos. 91235427 & 91235513
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as DuPont factors); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A likelihood of
confusion analysis often focuses on the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.). Opposer bears the burden
of proving its claim of likelihood of confusion by a preponderance of the evidence.
Cunningham, 55 USPQ2d at 1848.
A. Similarity of the Marks
With respect to the marks, we must compare them in their entireties as to
appearance, sound, connotation and commercial impression. Palm Bay Imps., 73
USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). The applied-for standard-
character mark and Opposers registered mark are identical BOXFOX in standard
characters. The applied-for stylized mark consists of wording identical to the wording
in the registered mark presented in relatively unremarkable stylized fonts, and
although appears as two words rather than one, we find that this has no
source-identifying significance. See Seaguard Corp. v. Seaward Intl, Inc., 223 USPQ
48, 51 (TTAB 1984) ([T]he marks SEAGUARD and SEA GUARD are, in
contemplation of law, identical); Stock Pot, Inc. v. Stockpot Rest., Inc., 220 USPQ 52,
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Opposition Nos. 91235427 & 91235513
52 (TTAB 1983), affd 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (There is no
question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly
similar. The word marks are phonetically identical and visually almost identical.).
Opposers and Applicants marks are phonetically identical, and consumers would use
this identical wording in calling for the goods. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1911 (Fed. Cir. 2012). Applicant argues that the connotations and
commercial impressions differ because its marks refer to Applicants co-founders as
foxes as well as its gift box-related services, while Opposers mark refers to fox
and box in the context of clever management of excess inventory. Regardless of the
differences in services, we still find the connotations and impressions similar in that
consumers would likely perceive them as referring to the same fun play of rhyming
words, and with both services involving boxes for goods. In neither the applications
nor the registration does the nature of the recited services point more to one
particular meaning or nuance of fox than another. Further, there is no evidentiary
basis for us to conclude that Opposers mark would be perceived as connoting clever
inventory management. Thus, we find that consumers would attach the same
meaning and commercial impression to BOXFOX in all the marks. Overall, the marks
are identical or nearly identical in appearance, and identical in meaning, commercial
impression, and sound, weighing in favor of likely confusion.
B. The Services
[L]ikelihood of confusion can be found if the respective [services] are related in
some manner and/or if the circumstances surrounding their marketing are such that
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Opposition Nos. 91235427 & 91235513
they could give rise to the mistaken belief that they emanate from the same source.
Coach Servs. 101 USPQ2d at 1722 (internal citations omitted). Our comparison of the
services must be based on the identifications in the applications and Opposers
registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput.
Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). A finding of likely
confusion must be made with respect to at least one service in each class to establish
likely confusion as to that class. Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). This is so because a multiple class
application is considered the equivalent of multiple separate applications. See Lincoln
Natl Corp. v. Anderson, 110 USPQ2d 1271, 1278 (TTAB 2014) (quoting G & W Labs.
Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1573-74 (TTAB 2009)).
Opposers and Applicants services are not identical and do not overlap. Opposer
did not introduce evidence regarding the relatedness of specific services. Instead,
Opposer relies on the identifications themselves as showing sufficient relatedness on
their faces. However, in its Brief, Opposer misstates Applicants recited services as
including online marketplaces and incorrectly argues that they are legally equivalent
to and overlap with Opposers:
First, Applicants provision of an online marketplace for
sellers and buyers of goods and/or services and operating
online marketplace featuring a wide variety of consumer
goods of others are legally equivalent to the operating on-
line marketplaces for sellers and buyers of goods and/or
services and providing a website featuring an online
marketplace for exchanging goods and services with other
users services claimed in Opposers registration.
– 11 –
Opposition Nos. 91235427 & 91235513
In addition, Applicants application uses broad wording
claiming provision of an online marketplace for sellers and
buyers of goods and/or services and operating online
marketplace featuring a wide variety of consumer goods of
others which presumably encompasses all services of the
type described, including Opposers more narrow
operating on-line marketplaces featuring buyers and
sellers of excess inventory. [citations omitted].11
In fact, Applicants services do not include providing or operating an online
marketplace for the goods and services of others. Applicant recites services in three
classes that, with the exception of charitable services, generally involve Opposer
providing or preparing gift sets, and facilitating these activities online.
Thus, we must compare Applicants services as actually identified in the
applications with Opposers recited services to determine whether they are inherently
similar or related, solely on the face of those identifications. See Stone Lion, 110
USPQ2d at 1159-63. While Opposers and Applicants services both include providing
a website, this is not enough of a similarity to show relatedness. Cf. Cooper Indus.,
Inc. v. Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983) (the mere fact that the
products involved in this case (or any products with significant differences in
character) are sold in the same industry does not of itself provide an adequate basis
to find the required relatedness).
Applicants and Opposers services are not in the same industry, and differ in their
nature. Opposers online marketplace services connect third parties to transact
11 9 TTABVUE 24-25 (Opposers Brief).
– 12 –
Opposition Nos. 91235427 & 91235513
services and goods, including specifically excess inventory. In response to an
Interrogatory, Opposer further explained its recited services as follows:
Opposer provides the services of a marketplace platform
and merchandise valuation algorithm that provides Buyers
and Sellers of excess inventory with more accurate
estimated values of the inventory that is being sold or
bought. On Opposers platform, Buyers and Sellers engage
in the full transaction process of purchasing and selling the
excess inventory. Opposer also provides a knowledge
engine for buyers and sellers to discover fair market value
and pricing analytics to complete informed transactions
.
For each transaction completed on the marketplace,
Opposer receives a 5% commission from the buying party
and a 5% commission from the selling party.12
By contrast, Applicants online services allow customers to design and order gift sets
from Applicant. Applicants services include selecting and preparing gift sets for its
customers. Testimony from Applicant further explained its recited services as follows:
a computerized interactive online, retail gift ordering
service, featuring pre-packaged gift boxes that range in
price from $35.00 plus shipping to $175.00 plus shipping.
[Applicant] also provides a custom gift box building service
on an internet web hosted platform that allows customers
to electronically design, specify, and order customized gift
box sets that range in price from $25.00 plus shipping to
$400.00 plus shipping. [Applicant] provides personal
concierge services to assist customers with designing and
selecting gift boxes within the indicated price ranges.13
We simply have no evidence that consumers would expect that the providers of
marketplaces for third-party transactions also provide gift box design, ordering, and
creation services.
12 8 TTABVUE 516-17 (Opposers Answer to Applicants Interrogatory No. 6).
13 7 TTABVUE 4 (Moore Declaration).
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Opposition Nos. 91235427 & 91235513
Without the benefit of relatedness evidence from Opposer to meet its burden of
proof, having carefully considered the recited services to assess whether at least one
item in each of Applicants three classes may be deemed sufficiently related on its
face to Opposers services as set forth in the pleaded registration, we cannot make
such a finding. See e.g., Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1456 (TTAB
1998) (opposer failed to prove relationship between applicants goods and opposers
pleaded goods); Itel Corp., 8 USPQ2d at 1170-1171 (in case where opposer submitted
no evidence other than pleaded registration, Board found opposers registration was
insufficient to prove relatedness of the goods.)
This factor weighs strongly against likely confusion.
C. Trade Channels and Classes of Consumers
As to trade channels and classes of consumers, Opposer argues that the trade
channels are the same because both Applicants and Opposers services are sold
through internet websites.14 Opposers witness testified that Opposers services are:
targeted to small and medium sized retail stores,
ecommerce websites, distributors, manufacturers, and
wholesalers residing primarily in the United States whose
representatives are middle to high income males and
females, aged approximately 25 to 55 years old, residing in
medium and large cities.15
14 9 TTABVUE 27 (Opposers Brief).
15 5 TTABVUE 6 (Palmer Declaration).
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Opposition Nos. 91235427 & 91235513
Opposer promotes its services through trade shows, advertising in Running Insight
Magazine (excerpted in part below) and on Google, Opposers own website, and
through its Facebook and LinkedIn pages.16
16 Id. at 7; see also 8 TTABVUE 518 (Opposers Answer to Applicants Interrogatory No. 9).
– 15 –
Opposition Nos. 91235427 & 91235513
– 16 –
Opposition Nos. 91235427 & 91235513
Applicant describes its target market as customers that are high income females,
aged approximately 25 to 40 years old, residing in medium to large cities.17 However,
Applicants evidence also reflects that it pursues clients interested in corporate
gifting.18 Applicant does not promote its services at trade shows,19 and primarily
advertises its services on social media such as Facebook, Instagram, and Pinterest,
along with some radio advertising in the Los Angeles market.20 Applicants Facebook
page was among the specimens submitted with its applications:
17 7 TTABVUE 9 (Moore Declaration).
18Id. at 15 (Applicants webpage on CORPORATE GIFTING), 18 (Corporate Corner: The
Perfect Conference Gift).
19 Id. at 10.
20 Id. at 9.
– 17 –
Opposition Nos. 91235427 & 91235513
Applicants Pinterest page also was submitted as a specimen, as shown in the partial
excerpt below:
While both parties may use social media and the Internet to advertise or provide
their services, this alone is not sufficient to find that the trade channels overlap in a
manner that creates a likelihood of confusion. See In re St. Helena Hosp., 774 F.3d
– 18 –
Opposition Nos. 91235427 & 91235513
747, 754 (Fed. Cir. 2014) (Advertising on the Internet is ubiquitous and proves little,
if anything, about the likelihood that consumers will confuse similar marks used on
such goods or services.). As to the classes of consumers, there may be some degree
of overlap to the extent Applicants business consumers for corporate gifting might
also be consumers of Opposers online marketplace for excess inventory or inventory
management. Overall, given, on the one hand the lack of similar trade channels, and
on the other hand, some potential overlap in customers, we find this factor neutral.
D. Actual Confusion
The seventh DuPont factor requires us to consider evidence regarding the nature
and extent of any actual consumer confusion. Opposers actual confusion evidence, as
stated in the Palmer Declaration is:
Over the previous few years, Opposer has encountered
numerous actual instances of consumer confusion where
consumers became confused between Opposers website,
boxfox.co, and Applicants website, shopboxfox.com.
Opposer has received phone calls from customers with
questions about the status of their order placed with
Applicant. Users have mistakenly created a user account
on Applicants website and then become confused upon
discovering Applicants service offering is different from
what they expected from Opposer. Opposer has received
phone calls and emails from job applicants and third-party
service providers that mistook Opposer for Applicant.
These instances of consumer confusion have occurred over
customer support chats, support phone calls, job
interviews, emails, and social media. Attached as Exhibit
9 are true and correct copies of instances of consumer
confusion encountered by Opposer.21
21 5 TTABVUE 19 (Palmer Declaration).
– 19 –
Opposition Nos. 91235427 & 91235513
We find that none of the documents attached as Exhibit 9 to the Palmer
Declaration amount to actual consumer confusion evidence. Rather, they tend to show
that Applicant and Opposer have similar URLs, Twitter handles, and as we have
found above, identical or similar marks, but not that consumers mistakenly believe
the services of Applicant and Opposer come from the same source. We address each
document in turn:
The email from a commercial real estate broker, bears the subject heading
Trying to reach Chelsea Moore, [Applicants CEO] and is attempting to make
contact with retailer Brandy Melville about a potential real estate deal.22 The
broker is not a customer of Opposer or Applicant, so his misdirected email
inquiry is not relevant.
The next five pages consist of four Tweets (two pages contain the same Tweet
from a user) that use @boxfox, presumably Opposers Twitter handle, but
Opposer contends that the Tweets refer to Applicant. One of the four Tweets
merely compliments customer service, and we find it unclear that it does not
refer to Opposer. Another Tweet only indicates that the sender is happy to be
friends with Applicants principal, and does not indicate that she is a
consumer. Similarly, the Tweet from Fashion Mamas indicates that [i]t was
a treat collaborating with @boxfox, but there is no indication that this is from
a consumer. Ultimately, the Tweets appear to be mere errors in the use of a
Twitter handle (perhaps due to inattention), and not instances where the
22 5 TTABVUE 47.
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Opposition Nos. 91235427 & 91235513
individuals mistakenly assumed that Applicants and Opposers services come
from the same source. Thus, we do not find them probative to show actual
consumer confusion.
A LinkedIn message from a user indicates that she is looking for a full time
position with an online retailer, is really intrigued about boxfox, and [is]
personally addicted to subscription boxes. Because neither Opposer nor
Applicant is a subscription box service, it is not clear for whom the message is
meant. Regardless, again she is not a customer of either party. We do not
consider this message evidence of actual consumer confusion.
An email message from someone at Premier Closeouts who states that she had
heard of Opposers website and wanted to check it out, but her Google search
resulted in her using shopboxfox. She had a co-workers log in info and
unsuccessfully tried to log on multiple times before finding out that she was
using the wrong site. [S]he needed to be on boxfox.co! It was very frustrating
and confusing.23 This message does not reflect consumer confusion that
Applicants and Opposers services come from the same source. Rather, it
appears to reflect confusion from use of an incorrect URL, and indicates that
the user was aware that she was on the wrong site. We do not consider this
message evidence of actual consumer confusion.
An email message from an individual to Opposers CEO Mr. Palmer regarding
a tour of coworking space indicates anticipation of hearing more about [his]
23 5 TTABUVE 54.
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Opposition Nos. 91235427 & 91235513
gift box company, with a further statement that [w]e utilize BoxFox in some
of our surprise and delights across the country for our members.24 This
individual apparently was not a customer or prospective customer of Opposer,
and this message presents a case of mistaken identity i.e. his erroneous belief
that he would be conducting a tour of coworking space for someone affiliated
with Applicant. This does not reflect a mistaken belief that Applicants and
Opposers services come from the same source.
The last example, an email message from a representative of etailz, asks, Are
you guys separate from this: http://shopboxfox.com/pages/faqs-1.25 This type
of inquiry about possible affiliation does not constitute actual consumer
confusion. See Coach/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
USPQ2d 1458, 1479 (TTAB 2014) (inquiries to company whether other
company that issued coupons was the same company is not actual confusion
evidence); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1334
(TTAB 1992) (inquiries of affiliation not actual confusion); Electronic Water
Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162, 164 (TTAB 1984) (That
questions have been raised as to the relationship between firms is not evidence
of actual confusion of their trademarks.) (citations omitted); Toys R Us, Inc.
v. Lamps R Us, 219 USPQ 340, 345-46 (TTAB 1983) (of such inquiries, the
24 Id. at 55.
25 Id. at 56.
– 22 –
Opposition Nos. 91235427 & 91235513
Board said we do not find that the evidence has much probative value on the
issue of likelihood of confusion).
We find that Mr. Palmers testimony about other undocumented instances of
alleged actual confusion arising from customer support chats, support phone calls,
and job interviews runs in the same vein as the documentary evidence discussed
above. He does not describe relevant instances of true consumer confusion wherein a
customer mistakenly believed that Opposers and Applicants services emanate from
the same source.
We find this DuPont factor neutral.
E. Degree of Care in Purchasing
Opposer argues that the relevant services are inexpensive and subject to impulse
purchasing, so that the degree of care in purchasing is lessened. Applicants CEO
testified that its services range in price from $25 to $400 plus shipping.26 Opposers
price is a 5% commission from the third-party buyer and a 5% commission from the
third-party seller, and no more specific price information is provided in the testimony,
but some exhibits reflect sample transactions in the higher dollar range.27 Opposers
CEO states that its low commission rate results in consumers purchasing the
services without particular deliberation or care.28
26 7 TTABVUE 4 (Moore Declaration).
27 5 TTABVUE 6 (Palmer Declaration); see also 5 TTABVUE 14-16, 24 (transaction
information).
28 Id. at 6 (Palmer Declaration).
– 23 –
Opposition Nos. 91235427 & 91235513
Applicant concedes that its consumers may purchase more impulsively.29
However, Applicant points to evidence that Opposers customers are business people
engaging in commercial transactions relating to their excess inventory to argue that
they are sophisticated and therefore would exercise care in purchasing.30
Considering the relevant evidence, we find that at least some of the consumers
purchasing Applicants services would exercise relatively less care in purchasing,
while the business consumers of Opposers services would exercise relatively more
care in purchasing. On balance, we find this factor neutral.
V. Conclusion
Despite the similarity between Opposers mark and Applicants marks, the record
lacks evidence to show that their respective services are sufficiently related to
support a likelihood of confusion. The failure to prove the relatedness of the services
outweighs the similarity of the marks, negating the likelihood of confusion. See e.g.
Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1560 (Fed.
Cir. 2001) (While it must consider each [DuPont] factor for which it has evidence,
the Board may focus its analysis on dispositive factors, such as similarity of the marks
and relatedness of the goods.); N. Face Apparel Corp. v. Sanyang Indus. Co., 116
USPQ2d 1217, 1233 (TTAB 2017) (The difference in the goods and services is
dispositive on the issue of likelihood of confusion.); Calypso Tech. Inc. v. Calypso
Capital Mgmt. LP, 100 USPQ2d 1213, 1223 (TTAB 2011) ([T]he factors of the
29 10 TTABVUE 41 (Applicants Brief).
30See, e.g., 5 TTABVUE 6 (Palmer Declaration) (services targeted to small and medium sized
retail stores, ecommerce websites, distributors, manufacturers, and wholesalers).
– 24 –
Opposition Nos. 91235427 & 91235513
dissimilarity of the goods and services and the sophistication of the customers
strongly outweigh the factors, such as similarity of the marks and the strength of
plaintiff’s mark, that would favor a finding of likelihood of confusion.); Morgan Creek
Prods. Inc. v. Foria Intl Inc., 91 USPQ2d 1134, 1143 (TTAB 2009) (dissimilarity of
clothing items versus motion picture DVDs and CDs dispositive factor).
Decision: The oppositions are dismissed.
– 25 –
This Opinion is Not a
Precedent of the TTAB
Mailed: May 9, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
BoxFox Group Inc.
v.
Boxfox Inc.
_____
Opposition Nos. 91235427 & 912355131
_____
Kenan L. Farrell of KLF Legal for
BoxFox Group Inc.
Deidra D. Ritcherson and Andrew T. Oliver of Amin, Turocy & Watson, LLP for
Boxfox Inc.
_____
Before Cataldo, Ritchie and Lynch,
Administrative Trademark Judges.
Opinion by Lynch, Administrative Trademark Judge:
1 Because the cases have common questions of fact and law, the oppositions are hereby
consolidated. See, e.g., In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012) (The Board sua
sponte consolidated two cases). Citations to the TTABVUE record, the Boards online
docketing system, are the same in each case.
Opposition Nos. 91235427 & 91235513
Boxfox Inc. (Applicant) seeks registration on the Principal Register of the
following two marks:2
BOXFOX in standard characters3 for
Computerized interactive on-line gift ordering service
which matches the gift givers requirements with the gift
recipients wants and needs; computerized interactive on-
line customized and pre-packaged gift box set ordering
service which matches the gift givers requirements with
the gift recipients wants and needs; computerized
interactive on-line customized and pre-packaged gift set
ordering service which matches the gift givers
requirements with the gift recipients wants and needs;
computerized interactive on-line customized and pre-
packaged gift basket ordering service which matches the
gift givers requirements with the gift recipients wants and
needs; on-line retail store services selling featuring
customized and pre-packaged gift box sets, gift sets, gift
baskets and gifts; charitable services in the nature of
matching philanthropists with nonprofit organizations and
causes in the field of education; charitable services,
namely, organizing and developing projects that aim to
improve the educational attainment of women; charitable
services, namely, organizing and developing womens
education development projects in Int. Class 35
Providing a custom gift box building web hosted platform
that allowing [sic] web site users to electronically order,
specify and design customized gift box sets, gift sets, care
packages and gift baskets, and allowing web site users to
order and select pre-packaged gift box sets, gift sets, gift
baskets, care packages and gifts for delivery; providing a
web site featuring temporary use of non-downloadable
software allowing web site users to order and design
2Both applications recite essentially the same services. We set them out separately because
although the standard-character mark application is entirely use-based, the stylized mark
application is based in part on use and in part on intent to use, with the services separately
designated as such.
3 Application Serial No. 87249460 was filed on November 28, 2016 based on use of the mark
in commerce as of November 7, 2014 under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a).
-2-
Opposition Nos. 91235427 & 91235513
customized gift box sets, gift sets, care packages and gift
baskets; providing a web set site featuring temporary use
of non-downloadable software allowing web site users to
order and select pre-packaged gift box sets, gift sets, gift
baskets, care packages and gifts for delivery to others in
Int. Class 42
Preparation of customized and pre-packaged gift box and
care package sets; preparation of customized and pre-
packaged gift sets; preparation of customized and pre-
packaged care packages; preparation of customized and
pre-packaged gift baskets; personal gift selection for
others; personal concierge services for others comprising
preparing requested customized gift box sets, gift sets, gift
baskets, care packages and gifts; personal concierge
services for others comprising selecting requested pre-
packaged gift box sets, gift sets, gift baskets, care packages
and gifts; personal concierge services for others comprising
selecting personal gifts for others and care packages for
others based on customer requests in Int. Class 45
and ,4 with BOX disclaimed, for:
(Based on Use in Commerce) Computerized interactive on-
line gift ordering service which matches the gift givers
requirements with the gift recipients wants and needs;
computerized interactive on-line customized and pre-
packaged gift box set ordering service which matches the
gift givers requirements with the gift recipients wants and
needs; computerized interactive on-line customized and
pre-packaged gift set ordering service which matches the
gift givers requirements with the gift recipients wants and
needs; computerized interactive on-line customized and
pre-packaged gift basket ordering service which matches
4 Application Serial No. 86933125 was filed on March 8, 2016, based on Applicants allegation
of a bona fide intent to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), as to certain services, and based on use of the mark in commerce as of
November 7, 2014 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The
application includes a description of the mark stating that [t]he mark consists of the word
BOX in all capital letters and the word fox in script below the word BOX. Color is not
claimed as a feature of the mark.
-3-
Opposition Nos. 91235427 & 91235513
the gift givers requirements with the gift recipients wants
and needs; on-line retail store services featuring
customized and pre-packaged gift box sets, gift sets, gift
baskets and gifts; (Based on Intent to Use) Charitable
services in the nature of matching philanthropists with
nonprofit organizations and causes in the field of
education; charitable services, namely, organizing and
developing projects that aim to improve the educational
attainment of women; charitable services, namely,
organizing and developing womens education development
projects in Int. Class 35
(Based on Use in Commerce) Providing a web hosted
platform for custom box building and allowing web site
users to electronically order, specify and design customized
gift box sets, gift sets, and gift baskets, and allowing web
site users to order and select pre-packaged gift box sets, gift
sets, gift baskets and gifts for delivery; providing a web site
featuring temporary use of non-downloadable software
allowing web site users to order and design customized gift
box sets, gift sets, and gift baskets; providing a web site
featuring temporary use of non-downloadable software
allowing web site users to order and select pre-packaged
gift box sets, gift sets, gift baskets and gifts for delivery to
others in Int. Class 42
(Based on Use in Commerce) Preparation of customized
and pre-packaged gift box sets; preparation of customized
and pre-packaged gift sets; preparation of customized and
pre-packaged gift baskets; personal gift selection for
others; (Based on Intent to Use) Personal concierge
services for others comprising preparing requested
customized gift box sets, gift sets, gift baskets and gifts;
personal concierge services for others comprising selecting
requested pre-packaged gift box sets, gift sets, gift baskets
and gifts; personal concierge services for others comprising
selecting personal gifts for others based on customer
requests in Int. Class 45
BoxFox Group Inc. (Opposer) opposes registration of the marks based on alleged
likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
with its registered mark BOXFOX in standard characters for:
-4-
Opposition Nos. 91235427 & 91235513
Inventory management; Operating on-line marketplaces
featuring buyers and sellers of excess inventory; Operating
on-line marketplaces for sellers and buyers of goods and/or
services; Providing a website featuring an online
marketplace for exchanging goods and services with other
users in International Class 35.5
In its answer, Applicant denies the salient allegations in the notice of opposition
and lists numerous putative affirmative defenses.6 Most of these are merely
amplifications of Applicants denials and the remaining true affirmative defenses of
laches, acquiescence and estoppel have been waived because Applicant failed to
pursue them at trial. See Krause v. Krause Publications, Inc., 76 USPQ2d 1904, 1906
n.2 (TTAB 2005); see also Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba
Watermark Cruises, 107 USPQ2d 1750, 1753 n.6 (TTAB 2013).
The opposition is fully briefed.
I. Evidentiary Record and Objections
The parties did not cite to the record by reference to TTABVUE, the Boards online
docketing system, and we therefore direct their attention to Turdin v. Trilobite, Ltd.,
109 USPQ2d 1473, 1476 n.6 (TTAB 2014):
Because the Board primarily uses TTABVUE in reviewing
evidence, the Board prefers that citations to material or
testimony in the record that has not been designated
confidential include the TTABVUE docket entry number
and the TTABVUE page number. For material or
testimony that has been designated confidential and which
does not appear on TTABVUE, the TTABVUE docket entry
5Registration Number 4785714 issued August 4, 2015, based on use of the mark in commerce
at least as early as October 1, 2013, under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a).
6 4 TTABVUE.
-5-
Opposition Nos. 91235427 & 91235513
number where such material or testimony is located should
be included in any citation.
See also TBMP §§ 106.03, 801.01, 803.03 (June 2018).
The record includes the pleadings and pursuant to Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the files of the opposed applications. Opposer introduced the
testimony declaration of Chris Palmer, its Chief Executive Officer, with
accompanying exhibits.7 Applicant submitted testimony declarations of Sabena Suri,
Applicants co-founder and Chief Strategy Officer, with accompanying exhibits,8 and
Chelsea Moore, Applicants co-founder and Chief Executive Officer, with
accompanying exhibits.9 Applicant also submitted a Notice of Reliance on the files of
the opposed applications, which as noted above, already were in the record, and on
Opposers Responses to Interrogatories.10
Applicant has lodged various objections to exhibits attached to Opposers Palmer
Declaration on grounds of alleged lack of proper authentication, hearsay, irrelevance,
and incompleteness. Opposer filed no reply brief and did not address the objections.
We deem each of the exhibits admissible. As to the authentication objections, we
find that the exhibits in question were properly authenticated as records kept in the
course of a regularly conducted business activity, and therefore are admissible.
Regarding hearsay, [a]s a general matter, we do not treat testimony as to third-party
7 5 TTABVUE.
8 6 TTABVUE.
9 7 TTABVUE.
10 8 TTABVUE.
-6-
Opposition Nos. 91235427 & 91235513
out-of-court statements as proof of the truth of the matter asserted. The same is true
for published articles [and internet website printouts]. However, such materials are
frequently competent to show, on their face, matters relevant to trademark claims
(such as public perception), regardless of whether the statements are true or false.
Accordingly, they will not be excluded outright, but considered for what they show on
their face. Harry Winston, 111 USPQ2d at 1427-28. Regarding the relevance
objections, we of course can assess whether and to what extent evidence actually
proves the factual matters which it is introduced to prove, and do not find the
challenged exhibits so irrelevant that they should be excluded. Finally, we overrule
the incompleteness objection to particular pages of Exhibit 9, as we do not agree that
these exhibits constitute partial writings, and we note that Applicant had the
opportunity to cross-examine the declarant to seek any additional context for the
purported actual confusion evidence. [T]he Board is capable of assessing the proper
evidentiary weight to be accorded the testimony and evidence, taking into account
the imperfections surrounding the admissibility of such testimony and evidence.
Thus, we have considered the evidence, keeping in mind the objections, and have
accorded whatever probative value the testimony and evidence merits. United States
Playing Card Co. v. Harbro, LLC, 81 USPQ2d 1537, 1540 (TTAB 2006).
II. Standing
Applicant has neither contested nor admitted Opposers standing. Opposer must
prove standing by showing a real interest in the outcome of the proceeding and a
reasonable basis for believing that it would suffer damage if the mark is registered.
-7-
Opposition Nos. 91235427 & 91235513
See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014). Opposers pleaded registration, for which
Opposer has proven status and title, establishes its standing. See Coach Servs. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28 (Fed. Cir. 2012);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000).
III. Priority
Applicant challenges Opposers priority, but the challenge rests on a faulty
premise. Contrary to Applicants arguments, prior use need not be shown by a
plaintiff relying on a registered mark unless the defendant counterclaims for
cancellation. Massey Junior College, Inc. v. Fashion Institute of Technology, 492 F.2d
1399, 181 USPQ 272, 275 n.6 (CCPA 1974); see also Itel Corp. v. Ainslie, 8 USPQ2d
1168, 1169 (TTAB 1988) (because of the existence of opposers valid and subsisting
registration, it need not prove prior use as to the services recited therein). Applicant
has not counterclaimed to cancel Opposers pleaded registration, and therefore
Section 2(d) priority is not in issue as to the mark and services covered by Opposers
registration. See Top Tobacco LP v. North Atlantic Op. Co., 101 USPQ2d 1163, 1169
(TTAB 2011) (citing King Candy, Co. v. Eunice Kings Kitchen, Inc., 496 F.2d 1400,
82 USPQ 108 (CCPA 1974)).
IV. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours
-8-
Opposition Nos. 91235427 & 91235513
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as DuPont factors); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). A likelihood of
confusion analysis often focuses on the similarities between the marks and the
similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.). Opposer bears the burden
of proving its claim of likelihood of confusion by a preponderance of the evidence.
Cunningham, 55 USPQ2d at 1848.
A. Similarity of the Marks
With respect to the marks, we must compare them in their entireties as to
appearance, sound, connotation and commercial impression. Palm Bay Imps., 73
USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). The applied-for standard-
character mark and Opposers registered mark are identical BOXFOX in standard
characters. The applied-for stylized mark consists of wording identical to the wording
in the registered mark presented in relatively unremarkable stylized fonts, and
although appears as two words rather than one, we find that this has no
source-identifying significance. See Seaguard Corp. v. Seaward Intl, Inc., 223 USPQ
48, 51 (TTAB 1984) ([T]he marks SEAGUARD and SEA GUARD are, in
contemplation of law, identical); Stock Pot, Inc. v. Stockpot Rest., Inc., 220 USPQ 52,
-9-
Opposition Nos. 91235427 & 91235513
52 (TTAB 1983), affd 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (There is no
question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly
similar. The word marks are phonetically identical and visually almost identical.).
Opposers and Applicants marks are phonetically identical, and consumers would use
this identical wording in calling for the goods. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1911 (Fed. Cir. 2012). Applicant argues that the connotations and
commercial impressions differ because its marks refer to Applicants co-founders as
foxes as well as its gift box-related services, while Opposers mark refers to fox
and box in the context of clever management of excess inventory. Regardless of the
differences in services, we still find the connotations and impressions similar in that
consumers would likely perceive them as referring to the same fun play of rhyming
words, and with both services involving boxes for goods. In neither the applications
nor the registration does the nature of the recited services point more to one
particular meaning or nuance of fox than another. Further, there is no evidentiary
basis for us to conclude that Opposers mark would be perceived as connoting clever
inventory management. Thus, we find that consumers would attach the same
meaning and commercial impression to BOXFOX in all the marks. Overall, the marks
are identical or nearly identical in appearance, and identical in meaning, commercial
impression, and sound, weighing in favor of likely confusion.
B. The Services
[L]ikelihood of confusion can be found if the respective [services] are related in
some manner and/or if the circumstances surrounding their marketing are such that
– 10 –
Opposition Nos. 91235427 & 91235513
they could give rise to the mistaken belief that they emanate from the same source.
Coach Servs. 101 USPQ2d at 1722 (internal citations omitted). Our comparison of the
services must be based on the identifications in the applications and Opposers
registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput.
Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). A finding of likely
confusion must be made with respect to at least one service in each class to establish
likely confusion as to that class. Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). This is so because a multiple class
application is considered the equivalent of multiple separate applications. See Lincoln
Natl Corp. v. Anderson, 110 USPQ2d 1271, 1278 (TTAB 2014) (quoting G & W Labs.
Inc. v. GW Pharma Ltd., 89 USPQ2d 1571, 1573-74 (TTAB 2009)).
Opposers and Applicants services are not identical and do not overlap. Opposer
did not introduce evidence regarding the relatedness of specific services. Instead,
Opposer relies on the identifications themselves as showing sufficient relatedness on
their faces. However, in its Brief, Opposer misstates Applicants recited services as
including online marketplaces and incorrectly argues that they are legally equivalent
to and overlap with Opposers:
First, Applicants provision of an online marketplace for
sellers and buyers of goods and/or services and operating
online marketplace featuring a wide variety of consumer
goods of others are legally equivalent to the operating on-
line marketplaces for sellers and buyers of goods and/or
services and providing a website featuring an online
marketplace for exchanging goods and services with other
users services claimed in Opposers registration.
– 11 –
Opposition Nos. 91235427 & 91235513
In addition, Applicants application uses broad wording
claiming provision of an online marketplace for sellers and
buyers of goods and/or services and operating online
marketplace featuring a wide variety of consumer goods of
others which presumably encompasses all services of the
type described, including Opposers more narrow
operating on-line marketplaces featuring buyers and
sellers of excess inventory. [citations omitted].11
In fact, Applicants services do not include providing or operating an online
marketplace for the goods and services of others. Applicant recites services in three
classes that, with the exception of charitable services, generally involve Opposer
providing or preparing gift sets, and facilitating these activities online.
Thus, we must compare Applicants services as actually identified in the
applications with Opposers recited services to determine whether they are inherently
similar or related, solely on the face of those identifications. See Stone Lion, 110
USPQ2d at 1159-63. While Opposers and Applicants services both include providing
a website, this is not enough of a similarity to show relatedness. Cf. Cooper Indus.,
Inc. v. Repcoparts USA, Inc., 218 USPQ 81, 84 (TTAB 1983) (the mere fact that the
products involved in this case (or any products with significant differences in
character) are sold in the same industry does not of itself provide an adequate basis
to find the required relatedness).
Applicants and Opposers services are not in the same industry, and differ in their
nature. Opposers online marketplace services connect third parties to transact
11 9 TTABVUE 24-25 (Opposers Brief).
– 12 –
Opposition Nos. 91235427 & 91235513
services and goods, including specifically excess inventory. In response to an
Interrogatory, Opposer further explained its recited services as follows:
Opposer provides the services of a marketplace platform
and merchandise valuation algorithm that provides Buyers
and Sellers of excess inventory with more accurate
estimated values of the inventory that is being sold or
bought. On Opposers platform, Buyers and Sellers engage
in the full transaction process of purchasing and selling the
excess inventory. Opposer also provides a knowledge
engine for buyers and sellers to discover fair market value
and pricing analytics to complete informed transactions
.
For each transaction completed on the marketplace,
Opposer receives a 5% commission from the buying party
and a 5% commission from the selling party.12
By contrast, Applicants online services allow customers to design and order gift sets
from Applicant. Applicants services include selecting and preparing gift sets for its
customers. Testimony from Applicant further explained its recited services as follows:
a computerized interactive online, retail gift ordering
service, featuring pre-packaged gift boxes that range in
price from $35.00 plus shipping to $175.00 plus shipping.
[Applicant] also provides a custom gift box building service
on an internet web hosted platform that allows customers
to electronically design, specify, and order customized gift
box sets that range in price from $25.00 plus shipping to
$400.00 plus shipping. [Applicant] provides personal
concierge services to assist customers with designing and
selecting gift boxes within the indicated price ranges.13
We simply have no evidence that consumers would expect that the providers of
marketplaces for third-party transactions also provide gift box design, ordering, and
creation services.
12 8 TTABVUE 516-17 (Opposers Answer to Applicants Interrogatory No. 6).
13 7 TTABVUE 4 (Moore Declaration).
– 13 –
Opposition Nos. 91235427 & 91235513
Without the benefit of relatedness evidence from Opposer to meet its burden of
proof, having carefully considered the recited services to assess whether at least one
item in each of Applicants three classes may be deemed sufficiently related on its
face to Opposers services as set forth in the pleaded registration, we cannot make
such a finding. See e.g., Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1456 (TTAB
1998) (opposer failed to prove relationship between applicants goods and opposers
pleaded goods); Itel Corp., 8 USPQ2d at 1170-1171 (in case where opposer submitted
no evidence other than pleaded registration, Board found opposers registration was
insufficient to prove relatedness of the goods.)
This factor weighs strongly against likely confusion.
C. Trade Channels and Classes of Consumers
As to trade channels and classes of consumers, Opposer argues that the trade
channels are the same because both Applicants and Opposers services are sold
through internet websites.14 Opposers witness testified that Opposers services are:
targeted to small and medium sized retail stores,
ecommerce websites, distributors, manufacturers, and
wholesalers residing primarily in the United States whose
representatives are middle to high income males and
females, aged approximately 25 to 55 years old, residing in
medium and large cities.15
14 9 TTABVUE 27 (Opposers Brief).
15 5 TTABVUE 6 (Palmer Declaration).
– 14 –
Opposition Nos. 91235427 & 91235513
Opposer promotes its services through trade shows, advertising in Running Insight
Magazine (excerpted in part below) and on Google, Opposers own website, and
through its Facebook and LinkedIn pages.16
16 Id. at 7; see also 8 TTABVUE 518 (Opposers Answer to Applicants Interrogatory No. 9).
– 15 –
Opposition Nos. 91235427 & 91235513
– 16 –
Opposition Nos. 91235427 & 91235513
Applicant describes its target market as customers that are high income females,
aged approximately 25 to 40 years old, residing in medium to large cities.17 However,
Applicants evidence also reflects that it pursues clients interested in corporate
gifting.18 Applicant does not promote its services at trade shows,19 and primarily
advertises its services on social media such as Facebook, Instagram, and Pinterest,
along with some radio advertising in the Los Angeles market.20 Applicants Facebook
page was among the specimens submitted with its applications:
17 7 TTABVUE 9 (Moore Declaration).
18Id. at 15 (Applicants webpage on CORPORATE GIFTING), 18 (Corporate Corner: The
Perfect Conference Gift).
19 Id. at 10.
20 Id. at 9.
– 17 –
Opposition Nos. 91235427 & 91235513
Applicants Pinterest page also was submitted as a specimen, as shown in the partial
excerpt below:
While both parties may use social media and the Internet to advertise or provide
their services, this alone is not sufficient to find that the trade channels overlap in a
manner that creates a likelihood of confusion. See In re St. Helena Hosp., 774 F.3d
– 18 –
Opposition Nos. 91235427 & 91235513
747, 754 (Fed. Cir. 2014) (Advertising on the Internet is ubiquitous and proves little,
if anything, about the likelihood that consumers will confuse similar marks used on
such goods or services.). As to the classes of consumers, there may be some degree
of overlap to the extent Applicants business consumers for corporate gifting might
also be consumers of Opposers online marketplace for excess inventory or inventory
management. Overall, given, on the one hand the lack of similar trade channels, and
on the other hand, some potential overlap in customers, we find this factor neutral.
D. Actual Confusion
The seventh DuPont factor requires us to consider evidence regarding the nature
and extent of any actual consumer confusion. Opposers actual confusion evidence, as
stated in the Palmer Declaration is:
Over the previous few years, Opposer has encountered
numerous actual instances of consumer confusion where
consumers became confused between Opposers website,
boxfox.co, and Applicants website, shopboxfox.com.
Opposer has received phone calls from customers with
questions about the status of their order placed with
Applicant. Users have mistakenly created a user account
on Applicants website and then become confused upon
discovering Applicants service offering is different from
what they expected from Opposer. Opposer has received
phone calls and emails from job applicants and third-party
service providers that mistook Opposer for Applicant.
These instances of consumer confusion have occurred over
customer support chats, support phone calls, job
interviews, emails, and social media. Attached as Exhibit
9 are true and correct copies of instances of consumer
confusion encountered by Opposer.21
21 5 TTABVUE 19 (Palmer Declaration).
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Opposition Nos. 91235427 & 91235513
We find that none of the documents attached as Exhibit 9 to the Palmer
Declaration amount to actual consumer confusion evidence. Rather, they tend to show
that Applicant and Opposer have similar URLs, Twitter handles, and as we have
found above, identical or similar marks, but not that consumers mistakenly believe
the services of Applicant and Opposer come from the same source. We address each
document in turn:
The email from a commercial real estate broker, bears the subject heading
Trying to reach Chelsea Moore, [Applicants CEO] and is attempting to make
contact with retailer Brandy Melville about a potential real estate deal.22 The
broker is not a customer of Opposer or Applicant, so his misdirected email
inquiry is not relevant.
The next five pages consist of four Tweets (two pages contain the same Tweet
from a user) that use @boxfox, presumably Opposers Twitter handle, but
Opposer contends that the Tweets refer to Applicant. One of the four Tweets
merely compliments customer service, and we find it unclear that it does not
refer to Opposer. Another Tweet only indicates that the sender is happy to be
friends with Applicants principal, and does not indicate that she is a
consumer. Similarly, the Tweet from Fashion Mamas indicates that [i]t was
a treat collaborating with @boxfox, but there is no indication that this is from
a consumer. Ultimately, the Tweets appear to be mere errors in the use of a
Twitter handle (perhaps due to inattention), and not instances where the
22 5 TTABVUE 47.
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Opposition Nos. 91235427 & 91235513
individuals mistakenly assumed that Applicants and Opposers services come
from the same source. Thus, we do not find them probative to show actual
consumer confusion.
A LinkedIn message from a user indicates that she is looking for a full time
position with an online retailer, is really intrigued about boxfox, and [is]
personally addicted to subscription boxes. Because neither Opposer nor
Applicant is a subscription box service, it is not clear for whom the message is
meant. Regardless, again she is not a customer of either party. We do not
consider this message evidence of actual consumer confusion.
An email message from someone at Premier Closeouts who states that she had
heard of Opposers website and wanted to check it out, but her Google search
resulted in her using shopboxfox. She had a co-workers log in info and
unsuccessfully tried to log on multiple times before finding out that she was
using the wrong site. [S]he needed to be on boxfox.co! It was very frustrating
and confusing.23 This message does not reflect consumer confusion that
Applicants and Opposers services come from the same source. Rather, it
appears to reflect confusion from use of an incorrect URL, and indicates that
the user was aware that she was on the wrong site. We do not consider this
message evidence of actual consumer confusion.
An email message from an individual to Opposers CEO Mr. Palmer regarding
a tour of coworking space indicates anticipation of hearing more about [his]
23 5 TTABUVE 54.
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Opposition Nos. 91235427 & 91235513
gift box company, with a further statement that [w]e utilize BoxFox in some
of our surprise and delights across the country for our members.24 This
individual apparently was not a customer or prospective customer of Opposer,
and this message presents a case of mistaken identity i.e. his erroneous belief
that he would be conducting a tour of coworking space for someone affiliated
with Applicant. This does not reflect a mistaken belief that Applicants and
Opposers services come from the same source.
The last example, an email message from a representative of etailz, asks, Are
you guys separate from this: http://shopboxfox.com/pages/faqs-1.25 This type
of inquiry about possible affiliation does not constitute actual consumer
confusion. See Coach/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
USPQ2d 1458, 1479 (TTAB 2014) (inquiries to company whether other
company that issued coupons was the same company is not actual confusion
evidence); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1334
(TTAB 1992) (inquiries of affiliation not actual confusion); Electronic Water
Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162, 164 (TTAB 1984) (That
questions have been raised as to the relationship between firms is not evidence
of actual confusion of their trademarks.) (citations omitted); Toys R Us, Inc.
v. Lamps R Us, 219 USPQ 340, 345-46 (TTAB 1983) (of such inquiries, the
24 Id. at 55.
25 Id. at 56.
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Opposition Nos. 91235427 & 91235513
Board said we do not find that the evidence has much probative value on the
issue of likelihood of confusion).
We find that Mr. Palmers testimony about other undocumented instances of
alleged actual confusion arising from customer support chats, support phone calls,
and job interviews runs in the same vein as the documentary evidence discussed
above. He does not describe relevant instances of true consumer confusion wherein a
customer mistakenly believed that Opposers and Applicants services emanate from
the same source.
We find this DuPont factor neutral.
E. Degree of Care in Purchasing
Opposer argues that the relevant services are inexpensive and subject to impulse
purchasing, so that the degree of care in purchasing is lessened. Applicants CEO
testified that its services range in price from $25 to $400 plus shipping.26 Opposers
price is a 5% commission from the third-party buyer and a 5% commission from the
third-party seller, and no more specific price information is provided in the testimony,
but some exhibits reflect sample transactions in the higher dollar range.27 Opposers
CEO states that its low commission rate results in consumers purchasing the
services without particular deliberation or care.28
26 7 TTABVUE 4 (Moore Declaration).
27 5 TTABVUE 6 (Palmer Declaration); see also 5 TTABVUE 14-16, 24 (transaction
information).
28 Id. at 6 (Palmer Declaration).
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Opposition Nos. 91235427 & 91235513
Applicant concedes that its consumers may purchase more impulsively.29
However, Applicant points to evidence that Opposers customers are business people
engaging in commercial transactions relating to their excess inventory to argue that
they are sophisticated and therefore would exercise care in purchasing.30
Considering the relevant evidence, we find that at least some of the consumers
purchasing Applicants services would exercise relatively less care in purchasing,
while the business consumers of Opposers services would exercise relatively more
care in purchasing. On balance, we find this factor neutral.
V. Conclusion
Despite the similarity between Opposers mark and Applicants marks, the record
lacks evidence to show that their respective services are sufficiently related to
support a likelihood of confusion. The failure to prove the relatedness of the services
outweighs the similarity of the marks, negating the likelihood of confusion. See e.g.
Han Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1560 (Fed.
Cir. 2001) (While it must consider each [DuPont] factor for which it has evidence,
the Board may focus its analysis on dispositive factors, such as similarity of the marks
and relatedness of the goods.); N. Face Apparel Corp. v. Sanyang Indus. Co., 116
USPQ2d 1217, 1233 (TTAB 2017) (The difference in the goods and services is
dispositive on the issue of likelihood of confusion.); Calypso Tech. Inc. v. Calypso
Capital Mgmt. LP, 100 USPQ2d 1213, 1223 (TTAB 2011) ([T]he factors of the
29 10 TTABVUE 41 (Applicants Brief).
30See, e.g., 5 TTABVUE 6 (Palmer Declaration) (services targeted to small and medium sized
retail stores, ecommerce websites, distributors, manufacturers, and wholesalers).
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Opposition Nos. 91235427 & 91235513
dissimilarity of the goods and services and the sophistication of the customers
strongly outweigh the factors, such as similarity of the marks and the strength of
plaintiff’s mark, that would favor a finding of likelihood of confusion.); Morgan Creek
Prods. Inc. v. Foria Intl Inc., 91 USPQ2d 1134, 1143 (TTAB 2009) (dissimilarity of
clothing items versus motion picture DVDs and CDs dispositive factor).
Decision: The oppositions are dismissed.
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