91235427 (T.T.A.B. May. 9, 2019)

BoxFox Group Inc.v.BoxFox Inc.

Trademark Trial and Appeal BoardMay 9, 2019

91235427 (T.T.A.B. May. 9, 2019)

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 Board’s online docketing system, are the same in each case. Opposition Nos. 91235427 & 91235513 - 2 - 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 giver’s requirements with the gift recipient’s wants and needs; computerized interactive on- line customized and pre-packaged gift box set ordering service which matches the gift giver’s requirements with the gift recipient’s wants and needs; computerized interactive on-line customized and pre-packaged gift set ordering service which matches the gift giver’s requirements with the gift recipient’s wants and needs; computerized interactive on-line customized and pre- packaged gift basket ordering service which matches the gift giver’s requirements with the gift recipient’s 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 women’s 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 2 Both 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). Opposition Nos. 91235427 & 91235513 - 3 - 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 giver’s requirements with the gift recipient’s wants and needs; computerized interactive on-line customized and pre- packaged gift box set ordering service which matches the gift giver’s requirements with the gift recipient’s wants and needs; computerized interactive on-line customized and pre-packaged gift set ordering service which matches the gift giver’s requirements with the gift recipient’s 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 Applicant’s 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.” Opposition Nos. 91235427 & 91235513 - 4 - the gift giver’s requirements with the gift recipient’s 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 women’s 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: Opposition Nos. 91235427 & 91235513 - 5 - 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 Applicant’s 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 Board’s 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 5 Registration 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. Opposition Nos. 91235427 & 91235513 - 6 - 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, Applicant’s co-founder and Chief Strategy Officer, with accompanying exhibits,8 and Chelsea Moore, Applicant’s 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 Opposer’s Responses to Interrogatories.10 Applicant has lodged various objections to exhibits attached to Opposer’s 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. Opposition Nos. 91235427 & 91235513 - 7 - 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 Opposer’s 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. Opposition Nos. 91235427 & 91235513 - 8 - 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). Opposer’s 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 Opposer’s priority, but the challenge rests on a faulty premise. Contrary to Applicant’s 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 opposer’s valid and subsisting registration, it need not prove prior use as to the services recited therein”). Applicant has not counterclaimed to cancel Opposer’s pleaded registration, and therefore Section 2(d) priority is not in issue as to the mark and services covered by Opposer’s registration. See Top Tobacco LP v. North Atlantic Op. Co., 101 USPQ2d 1163, 1169 (TTAB 2011) (citing King Candy, Co. v. Eunice King’s 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 Opposition Nos. 91235427 & 91235513 - 9 - & 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 Opposer’s 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 Int’l, 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, Opposition Nos. 91235427 & 91235513 - 10 - 52 (TTAB 1983), aff’d 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.”). Opposer’s and Applicant’s 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 Applicant’s co-founders as “foxes” as well as its gift box-related services, while Opposer’s 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 Opposer’s 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 Opposition Nos. 91235427 & 91235513 - 11 - 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 Opposer’s 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 Nat’l 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)). Opposer’s and Applicant’s 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 Applicant’s recited services as including online marketplaces and incorrectly argues that they are legally equivalent to and overlap with Opposer’s: First, Applicant’s “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 Opposer’s registration. Opposition Nos. 91235427 & 91235513 - 12 - In addition, Applicant’s 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 Opposer’s more narrow “operating on-line marketplaces featuring buyers and sellers of excess inventory.” [citations omitted].11 In fact, Applicant’s 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 Applicant’s services as actually identified in the applications with Opposer’s 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 Opposer’s and Applicant’s 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’”). Applicant’s and Opposer’s services are not in the same industry, and differ in their nature. Opposer’s online marketplace services connect third parties to transact 11 9 TTABVUE 24-25 (Opposer’s Brief). Opposition Nos. 91235427 & 91235513 - 13 - 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 Opposer’s 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, Applicant’s online services allow customers to design and order gift sets from Applicant. Applicant’s 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 (Opposer’s Answer to Applicant’s Interrogatory No. 6). 13 7 TTABVUE 4 (Moore Declaration). Opposition Nos. 91235427 & 91235513 - 14 - 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 Applicant’s three classes may be deemed sufficiently related on its face to Opposer’s 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 applicant’s goods and opposer’s pleaded goods); Itel Corp., 8 USPQ2d at 1170-1171 (in case where opposer submitted no evidence other than pleaded registration, Board found opposer’s 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 Applicant’s and Opposer’s services “are sold through internet websites.”14 Opposer’s witness testified that Opposer’s 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 (Opposer’s Brief). 15 5 TTABVUE 6 (Palmer Declaration). Opposition Nos. 91235427 & 91235513 - 15 - Opposer promotes its services through trade shows, advertising in Running Insight Magazine (excerpted in part below) and on Google, Opposer’s own website, and through its Facebook and LinkedIn pages.16 16 Id. at 7; see also 8 TTABVUE 518 (Opposer’s Answer to Applicant’s Interrogatory No. 9). Opposition Nos. 91235427 & 91235513 - 16 - Opposition Nos. 91235427 & 91235513 - 17 - 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, Applicant’s 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 Applicant’s Facebook page was among the specimens submitted with its applications: 17 7 TTABVUE 9 (Moore Declaration). 18 Id. at 15 (Applicant’s webpage on “CORPORATE GIFTING”), 18 (“Corporate Corner: The Perfect Conference Gift”). 19 Id. at 10. 20 Id. at 9. Opposition Nos. 91235427 & 91235513 - 18 - Applicant’s 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 Opposition Nos. 91235427 & 91235513 - 19 - 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 Applicant’s business consumers for corporate gifting might also be consumers of Opposer’s 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. Opposer’s 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 Opposer’s website, boxfox.co, and Applicant’s 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 Applicant’s website and then become confused upon discovering Applicant’s 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). Opposition Nos. 91235427 & 91235513 - 20 - 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,” [Applicant’s 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 Opposer’s 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 Applicant’s 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. Opposition Nos. 91235427 & 91235513 - 21 - individuals mistakenly assumed that Applicant’s and Opposer’s 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 Opposer’s website and wanted to “check it out,” but her Google search resulted in her using “shopboxfox.” She “had a co-worker’s 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 Applicant’s and Opposer’s 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 Opposer’s CEO Mr. Palmer regarding a tour of coworking space indicates anticipation of “hearing more about [his] 23 5 TTABUVE 54. Opposition Nos. 91235427 & 91235513 - 22 - 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 Applicant’s and Opposer’s 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. Opposition Nos. 91235427 & 91235513 - 23 - Board said “we do not find that the evidence has much probative value on the issue of likelihood of confusion”). We find that Mr. Palmer’s 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 Opposer’s and Applicant’s 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. Applicant’s CEO testified that its services range in price from $25 to $400 plus shipping.26 Opposer’s 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 Opposer’s 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). Opposition Nos. 91235427 & 91235513 - 24 - Applicant concedes that its consumers may purchase more impulsively.29 However, Applicant points to evidence that Opposer’s 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 Applicant’s services would exercise relatively less care in purchasing, while the business consumers of Opposer’s services would exercise relatively more care in purchasing. On balance, we find this factor neutral. V. Conclusion Despite the similarity between Opposer’s mark and Applicant’s 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 (Applicant’s Brief). 30 See, e.g., 5 TTABVUE 6 (Palmer Declaration) (services “targeted to small and medium sized retail stores, ecommerce websites, distributors, manufacturers, and wholesalers”). Opposition Nos. 91235427 & 91235513 - 25 - 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 Int’l Inc., 91 USPQ2d 1134, 1143 (TTAB 2009) (dissimilarity of clothing items versus motion picture DVDs and CDs dispositive factor). Decision: The oppositions are dismissed.

BoxFox Group Inc. v. BoxFox Inc.