Borders Properties, Inc.v.Books Beyond Borders, Inc.

Trademark Trial and Appeal Board

Jul 28, 1999

No. 91098666 (T.T.A.B. Jul. 28, 1999)

Paper No. 24
HRW
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB JULY 28, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Borders Properties, Inc.
v.
Books Beyond Borders, Inc.
_____
Opposition No. 98,666
to application Serial No. 74/578,500
filed on Sept. 26, 1994
_____
Samiel D. Littlepage of Dickinson Wright PLLC for Borders
Properties, Inc.
Donald W. Margolis of Margolis & Associates for Books Beyond
Borders, Inc.
______
Before Simms, Seeherman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Books Beyond Borders, Inc. filed an application to
register the mark BOOKS BEYOND BORDERS (stylized) for
“printed matter, namely, non-fiction books on a variety of
subject matters, including educational books; unmounted
photographs; printed instructional, educational and teaching
materials in the areas of relationships, psychology,
Opposition No. 98,666
2
metaphysics, parenting, multi-cultural studies, women’s
studies, education, and science; and playing cards.”1
Borders Properties, Inc. filed an opposition to
registration of the mark under Section 2(d) of the Trademark
Act. Opposer alleges use since 1971 of the service mark and
trademark BORDERS, in several formats, in connection with
its retail “superstore” services, featuring the sale of
books, and on various products, such as tote bags, coffee
mugs, sweatshirts, hats and news bulletins; ownership of
several registrations for these service marks and
trademarks;2 the acquisition of fame by its BORDERS mark in
the field of book-related products and services; and the
likelihood of confusion of applicant’s mark BOOKS BEYOND
BORDERS with opposer’s mark or of an erroneous conclusion

1 Serial No. 74/578,500, filed Sept. 26, 1994, claiming a date of
first use of Jan. 1993 and a date of first use in commerce of
Feb. 1993.
2Reg. No. 1,187,210 for BORDERS BOOK SHOP for retail book store
services, issued Jan. 19, 1982, Section 8 and 15;
Reg. No. 1,827,878 for BORDERS BOOKS & MUSIC for retail store
services relating to books and music in various forms, issued
Mar. 22, 1994;
Reg. No. 1,822,844 for BORDERS BOOK SHOP for apparel to be sold
only through applicant’s book and music retail stores and
catalogs; namely, shirts, sweatshirts and hats, issued Feb. 22,
1994;
Reg. No. 1,788,121 for BORDERS BOOK SHOP for paper products,
namely, shopping bags and news bulletins, issued Aug. 17, 1993;
Reg. No. 1,795,043 for BORDERS BOOK SHOP for coffee mugs, issued
Sept. 28, 1993;
Reg. No. 1,790,407 for BORDERS BOOK SHOP for canvas tote bags,
issued Aug. 31, 1993; and
Reg. No. 1,792,079 for BORDERS for retail store services
relating to books and music in various forms, issued Sept. 7,
1993.
Opposition No. 98,666
3
being made on the part of the public of sponsorship by
opposer.
Applicant, in its answer, denied the salient
allegations of the notice of opposition. As “affirmative
defenses,” applicant set forth various arguments with
respect to the likelihood of confusion, including the
difference between applicant’s printed matter and opposer’s
book store services, the fact that opposer does not use the
mark BOOKS BEYOND BORDERS, and opposer’s failure to allege
that its services are advertised in the same media as
applicant’s goods.3
The Record
The record consists of the file of the involved
application; the trial testimony of opposer in the
stipulated form of the affidavit of Marilyn Slankard; and
opposer’s three notices of reliance introducing status and
title copies of its registrations,4 copies of sixty-eight

3 Although labeled as “affirmative defenses”, these allegations
relate only to opposer’s claim of likelihood of confusion.
Although applicant did set forth the true affirmative defense of
laches, this claim was stricken from the answer as a result of
the Board’s decision of April 25, 1997 on opposer’s motion for
summary judgment.
4 In its notice of reliance, opposer has included copies of four
additional registrations that issued since the filing of the
notice of opposition, namely:
Reg. No. 1,939,505 for BORDERS BOOKS AND MUSIC for
retail store services relating to books and music in
various forms, issued Dec. 5, 1995;
Reg. No. 1,996,540 for BORDERS CAFÉ ESPRESSO for
restaurant services in retail book and music stores, issued
Aug. 27, 1996;
Opposition No. 98,666
4
third-party registrations, and applicant’s answers to
opposer’s Interrogatory Nos. 1, 3, 10, 16, 22 and 23.5
Applicant took no testimony and has no evidence of record.
Only opposer filed a brief and an oral hearing was not
requested.
Marilyn Slankard, the Vice-President of Marketing for
Borders, Inc., states in her affidavit that Borders, Inc.6
is the premier operator of book “superstores” in the United

Reg. No. 2,011,801 for FIND OUT/BORDERS for retail
store services featuring books, magazines, CD-ROMs,
and music in various forms, issued Oct. 29, 1996;
and
Reg. No. 2,044,230 for BORDERS for computerized
on-line retail services in the field of books,
magazines, music, pre-recorded video cassettes,
and CD-ROMs, issued Mar. 11, 1997.
While the notice of opposition was not amended to plead these
additional registrations, since applicant has raised no
objections thereto, the pleadings are deemed so amended pursuant
to FRCP 15(b).
5 In response to opposer’s third notice of reliance, applicant
filed a notice of reliance upon a complete set of applicant’s
responses to opposer’s interrogatories, stating that the complete
answers should be considered “so as to make not misleading the
partial answers which were offered by Opposer.”
Opposer then filed, on December 23, 1997, a motion to strike
this notice of reliance, arguing that applicant had not complied
with the requirements of Rule 2.120(j)(5), in that applicant had
merely submitted all of its answers and had not explained why
they should be considered, which answers being relied upon by
opposer needed to be clarified or which other specific answers
would serve this purpose.
The Board, in its action of January 21, 1998, deferred decision
on the motion until filing hearing.
No response was ever filed by applicant to the motion.
Accordingly, and since the motion appears to be well-taken, the
motion is granted. Applicant’s notice of reliance is stricken
from the record. Moreover, even if this evidence had been
considered on applicant’s behalf, it would not have changed the
result.
6 Borders, Inc. is the parent company and the licensee of the
marks in the registrations owned by opposer.
Opposition No. 98,666
5
States and operates 184 superstores in 36 states and the
District of Columbia;7 that each superstore offers a wide
assortment of books, carrying an average of 128,000
different book titles; that each superstore offers special
order service for customers to obtain books not in stock or
not in the inventory of any BORDERS store; that, besides
fiction books, BORDERS stores sell non-fiction books,
educational books and materials, unmounted photographs and
cards; that total sales for BORDERS stores since 1993 have
been in excess of $3 billion and have involved the sale of
at least 180 million books; that advertising expenditures
over the last five years have been over $47 million; and
that Borders, Inc., in promoting its name and services,
relies upon a diverse marketing strategy, including print
advertising, radio and television advertising, catalogs,
newsletters, store events, such as author signings,
children’s storytelling, and events tailored to the
interests of a specific community, and a web site on the
Internet. Numerous samples of these promotional activities
and materials have been submitted as exhibits to the
affidavit.
The Opposition

7 The affidavit was executed in October 1997.
Opposition No. 98,666
6
Priority is not an issue here, in view of opposer’s
submission of status and title copies of its registrations
proving ownership of valid and subsisting registrations for
its BORDERS mark in a variety of forms. King Candy Co.,
Inc., v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
Thus, we turn to the issue of likelihood of confusion
and to the du Pont factors which are most relevant to the
circumstances at hand. See In re du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
We look first to the similarity or dissimilarity of the
books and other printed materials of applicant and the book
store services of opposer. Opposer points to the statement
in the Slankard affidavit that goods identical to those
named in applicant’s application are sold in opposer’s book
stores. Opposer also relies upon the third-party
registrations which it has made of record showing that books
and other printed materials and the retail store services
connected with the sale of these goods are often offered to
the public by one particular entity under a single mark. On
the basis of this evidence, opposer argues that there is a
close relationship between applicant’s goods and opposer’s
book store services.
We agree. The third-party registrations are adequate
to establish that goods and services similar to those
Opposition No. 98,666
7
involved here are frequently marketed under the same mark by
a single source, and thus purchasers are likely to assume a
common source for the two. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck
Mustard Co., Inc., 6 USPQ3d 1467 (TTAB 1988). We also have
evidence that opposer itself sells products identical to
each and every of applicant’s goods, albeit under marks
different from opposer’s BORDERS marks. Furthermore,
opposer has made of record applicant’s responses to
opposer’s Interrogatory Nos. 16, 22 and 23, indicating that
applicant has in fact sold its books in certain of opposer’s
stores. Thus, we find that there is a close relationship
between the goods of applicant and the book store services
of opposer.
As a corollary, there is necessarily a high degree of
similarity of the channels of trade for applicant’s books
and opposer’s retail store services. As pointed out by
opposer, applicant has placed no restrictions on the
channels of trade for its goods in its application and thus
they must be presumed to travel in all the normal channels
of trade for goods of this nature. See Kangol Ltd. v.
KangaROOS U.S.A., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir.
1992) and the cases cited therein. Moreover, in its
response to Interrogatory No. 10, applicant states that it
sells its products to “book distributors, book wholesalers
Opposition No. 98,666
8
and book retailers,” as well as to non-profit groups,
special interest groups, educational institutions and the
like. Thus, it is highly likely that applicant’s books and
other printed materials would be sold in book stores such as
opposer’s. Not only are the channels of trade similar, but
there also are no distinctions which can be drawn with
respect to the type of purchasers for applicant’s goods.
Of great significance in this case is the fame of
opposer’s BORDERS mark. In view of the sales and
advertising figures and the extensive promotional materials
made of record by opposer, as well as the failure of
applicant to contest the matter, we find the fame and renown
of opposer’s BORDERS mark, in its various formats, to be
without question. Thus, we must be guided by the principle
set forth by our chief reviewing court in Kenner Parker Toys
Inc. v. Rose Art Industries Inc., 963 F.2d. 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992) that the “Lanham Act’s tolerance
for similarity between competing marks varies inversely with
the fame of the prior mark.” See also Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
And so it is on this basis that we consider the
similarity or dissimilarity of the marks. Opposer argues
that the dominant portion of both opposer’s BORDERS marks
and applicant’s mark BOOKS BEYOND BORDERS is the word
Opposition No. 98,666
9
“Borders” and that applicant has simply incorporated the
dominant portion of opposer’s marks into its mark and added
the descriptive modifying words “Books Beyond.” By this
addition, opposer argues, the public will be led to believe
that BOOKS BEYOND BORDERS is being used as a new variation
of opposer’s marks, to indicate books that may be obtained
outside of or “beyond” opposer’s normal channels of
distribution. Opposer contends that applicant’s mark sends
out a false message of association or sponsorship of
applicant’s products by opposer. Opposer likens the
situation to that in Blue Cross and Blue Shield Association
v. Harvard Community Health Plan Inc., 17 USPQ2d 1075 (TTAB
1990), wherein the applicant’s mark THE CURE FOR THE BLUES
was found to be likely to cause consumers to believe that
the applicant’s health care services were sponsored by, or
somehow associated with, the opposer and its BLUE CROSS,
BLUE SHIELD and other BLUE marks.
Applicant, on the other hand, has neither taken any
testimony nor properly presented any other evidence in
rebuttal to opposer’s case. We are without any evidence as
to any meaning which applicant may attribute to its mark or
as to the commercial impression intended to be projected by
the mark when used with applicant’s publications.8

8 Applicant presented arguments with respect to the connotation
of its mark in response to opposer’s motion for summary judgment,
and as a result, genuine issues as to commercial impressions of
Opposition No. 98,666
10
Accordingly, given the fame of opposer’s BORDERS mark
and the close relationship between applicant’s books and the
book store services of opposer, we are led to the conclusion
that potential purchasers of applicant’s books published
under the BOOKS BEYOND BORDERS mark would be likely to
assume that the books are sponsored by, or in some way
associated with, opposer. Even though applicant’s mark is
arguably a unitary phrase, we believe the presence of the
word BORDERS, as it is used in the mark, would be viewed by
purchasers as a reference to opposer and its well-known
bookstores. As in the Blue Cross/Blue Shield case, we have
both the presence of a word highly likely to be viewed as a
reference to opposer in applicant’s mark and a close
relationship between the goods and/or services of the
parties. Faced with this combination, we find confusion on
the part of the purchasing public likely.
There is the additional du Pont factor of lack of
actual confusion which is relevant here. Opposer concedes
that it is unaware of any instances of actual confusion,
even with the sale of applicant’s books in opposer’s stores.
We must agree with opposer, however, that although this

the marks were found to exist. These arguments, however, and
more particularly, any evidence relied upon by applicant in
response to the motion for summary judgment are not part of the
evidentiary record before us at final hearing, not having been
introduced into evidence during applicant’s testimony period.
See TBMP § 528.05(a).
Opposition No. 98,666
11
factor may appear to favor applicant, this does not preclude
a finding of likelihood of confusion. Furthermore, there is
the possibility that purchasers might simply assume there is
a connection between applicant’s books and opposer and make
no inquiries as to the source of the books. See Tiffany &
Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835 (TTAB
1989).
Decision: The opposition is sustained and registration
is refused to applicant.
R. L. Simms
E. J. Seehermann
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board