Systemax Corp.v.Systemax, Inc.

Trademark Trial and Appeal Board

Sep 30, 2003

No. 91117529 (T.T.A.B. Sep. 30, 2003)

Mailed: September 30, 2003
Paper No. 30
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Systemax Corporation
v.
Systemax, Inc.
_____
Opposition No. 91117529
to application Serial No. 75451483
filed on March 17, 1998
_____
William F. Moran III of Stratton, Giganti, Stone & Kopec
for Systemax Corporation.
Laura E. Goldbard of Stroock & Stroock & Lavan LLP for
Systemax, Inc.
Before Simms, Seeherman and Bucher, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:
Systemax Corporation (opposer), an Illinois
corporation, has opposed the application of Systemax, Inc.
(applicant), a New York corporation, to register the mark
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
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SYSTEMAX PRO (“PRO” disclaimed) for computer hardware.1 As
grounds for opposition, opposer asserts that since at least
May 27, 1988, opposer and its predecessor have used the
mark SYSTEMAX for supplies for computerized automatic
teller machines (ATMs); that opposer owns registrations of
the mark SYSTEMAX and the mark SYSTEMAX in stylized format
for distributorship services in the field of ATM supplies
(Registration No. 1,532,436, issued March 28, 1989,
Sections 8 and 15 affidavit accepted and acknowledged,
respectively; Registration No. 1,537,792, issued May 2,
1989, Sections 8 and 15 affidavit accepted and
acknowledged, respectively); and that applicant’s mark so
resembles opposer’s mark as to be likely to cause
confusion, to cause mistake or to deceive. Applicant has
denied the essential allegations of the opposition.
Both parties have taken testimony and submitted
notices of reliance.2 Also of record is an affidavit and
related materials submitted with applicant’s unopposed

1 Application Serial No. 75451,483, filed March 17, 1998, based upon use
in commerce since October 27, 1997.
2 It was not necessary for opposer to file notices of reliance on the
testimony depositions of its witnesses or on the exhibits introduced
during these depositions. See, generally, Trademark Rule 2.123(h) and
TBMP §704.02 (2nd ed. June 2003). The testimony is of record without
the need for notices of reliance thereon, and the exhibits are of
record through the testimony of the witnesses without the need for
further action.
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motion to reopen, which the Board granted on July 16, 2002.3
Both parties filed briefs, but no oral hearing was
requested.
Opposer’s Record
Opposer began business as Jackson Data Systems in
1982, selling business forms and office supplies under the
mark SYSTEMAX. In 1984 or 1985, Mr. H. Steven Jackson,
opposer’s owner and president, began working with a
financial institution that owned a network of ATMs. That
institution was having problems with its supplier of paper
products. Later, and building upon this experience, Mr.
Jackson expanded this ATM supply business. During this
period of time, Mr. Jackson’s company merged with a
commercial printer. In 1989, Mr. Jackson incorporated the
opposer, and the marks and registrations owned by the
predecessor company were assigned to opposer. Opposer
currently advertises and distributes ATM and point-of-sale
machine4 supplies to financial institutions and other owners
of ATMs in all 50 states. Opposer’s ATM supplies include
receipts, audit rolls and other rolls of paper such as

3 While Trademark Rule 2.123(b) provides that an affidavit may be
considered by written agreement of the parties, in view of the fact
that applicant’s motion was unopposed and the fact that the Board,
through an interlocutory attorney, granted the motion to permit this
affidavit and related evidence into the record, we shall consider this
affidavit even though there was no written agreement in this case.
4 These machines are used by customers with debit cards at retail
locations.
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journal tape (similar to adding machine rolls), ribbons,
deposit envelopes, card protectors, signage, decals,
brochures, posters and tent cards.
Between January and June 1999, opposer began receiving
telephone calls and e-mails from people who apparently
intended to reach applicant. As a result of these
misdirected communications, opposer initiated a protocol
whereby its employees were directed to record these calls
by entry into a computerized database. Employees were
directed to enter the name of the individual calling, his
or her phone number, a description of the problem and
information concerning how that person obtained opposer’s
phone number. E-mails from a link on opposer’s Web site
also yielded instances of alleged confusion. The log of
misdirected phone calls contained 76 entries between June
1999 and the end of 2000. At the time of opposer’s
testimony, an additional 24 entries had been made.
Ms. Nancy K. Jackson, opposer’s vice president and
chief operating officer, testified that opposer first used
the mark SYSTEMAX in connection with ATM supplies in May
1988, although, as noted above, this mark was used for
other goods before that date. N. Jackson dep., 56-57.
Opposer sells and attempts to sell its goods to purchasing
departments and ATM departments of banks and other
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financial institutions that are responsible for ordering
and managing ATM supplies, as well as to non-financial
institutions such as independent ATM owners; retail stores;
large gas stations and convenience stores that have ATMs;
general business customers; credit card companies and forms
clients (customized computer business forms). Opposer
promotes and sells its goods by means of direct mail,
advertisements in trade publications and at trade shows.
Opposer sells from 75 to 100 million ATM receipts each
year (there are about 2,500 receipts on a roll). Opposer
also sells 500,000 to 600,000 card protectors, which are
designed to protect ATM cards. Opposer sells between four
and five million deposit envelopes per year. About 10
percent of opposer’s clients are forms clients (dep., 54).
Ms. Jackson testified (13) about purchasers and users
of applicant’s computers who had contacted opposer with
questions and/or complaints when they apparently intended
to reach applicant:
A I don’t remember the exact first time.
The very first time that I remember was our
accountant sent me a catalog that had—-that
had a Systemax mark on it and we did some
checking into it at that point in time, but
then it’s probably been about—-probably
about two or two and a half years ago when
we really started noticing a big influx of
contact from people who thought that we were
another Systemax and were looking for or
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thought that we were supplying them with
supplies that we weren’t.
… We were receiving phone calls and e-mail
from people asking about or largely
complaints on things that were wrong with
things-—with products that they had
purchased from what we finally found out was
Systemax, Inc. and we’re Systemax
Corporation.
Ms. Jackson testified that as a result of these misdirected
communications, as noted above, employees were directed to
keep track of any instances of confusion. One way of doing
so was to make an entry in opposer’s computer system under
“Wrong Systemax.” Alleged instances of actual confusion
have been recorded since mid or late 1999.
When asked whether any of these people had actually
been clients of opposer, Ms. Jackson testified, 18-19:
A I don’t think that it’s ever turned out
that one of the incoming phone calls that
are complaining about the other Systemax
products have actually been a common
customer, but we do have cases where our
customers think and say to us that they
think we’re part of the other Systemax that
sells the computers…
…They--well, we have like--like, if our
salespeople are making calls and we have
our--our ATM supply catalog is a big portion
of our business and we mark it with and our
salesman use that as a tool and when they
are talking to their people or their clients
or their prospects, they usually have them
get their catalog out and get their catalog
in front of them.
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And I know of at least two times--and I
don’t know how many more. I don’t know that
they’ve always recorded this, but that they
would be talking to a client or prospect and
they would say do you have your catalog.
And they would say yes. And then there was
an obvious discrepancy. And they would say
go to Page 5. And they are like I’m on Page
5. It’s not here. I don’t know what you
are talking about.
And then come to find out, it was the other
Systemax catalog that they had out on their
desk and/or maybe they would be calling in
to our salesman and say I can’t find this in
your catalog, do you still have this and
then come to find out, they had the wrong
Systemax catalog is why they can’t find the
product.
Ms. Jackson further testified that the contacts
have often communicated with opposer as a result of a
phone number given to them by Directory Assistance or
obtained from the Internet. Examples from the
computer entries under “Wrong Systemax Notes” (exhibit
numbers 23 and 24) are set forth below:5
I flunked on this one-I failed to get the
name & phone # of caller. He was calling as
to where his $400 rebate check was. He had
ordered his computer thru the Home Shopping
network. He got our # off of the internet.
I told him he had the wrong Systemax and he
did ask if we were in Bear Lake, MN.
* * *
Kahah N. from San Jose State University
[phone number]. They received our phone

5 We have deleted last names and other personal identifying information
for reasons of privacy.
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number from the internet under Systemax.
His assistant loaded windows 2000, he wanted
windows 1998, can we switch it for him?
* * *
Hugh G. located in Louisiana [phone number]
has a Systemax computer that keeps locking
up on him. Got our # from the Internet.
* * *
Johnny M. [phone number]-Got our # from the
Internet. Systemax computer keeps crashing
and he’s only had it a few months. Tries to
call computer support #s he has, but no one
answers. Gave him the above #s.
* * *
Chris B. @ [phone number]. He is having
trouble starting his computer. He received
our # on line by typing in “Systemax
Customer Service”.
Other examples, where callers got opposer’s number
from other sources, or where it is unclear how they
obtained opposer’s number, are set forth below:
Herron R. from Texas [phone number], having
trouble getting on the Internet because his
mouse won’t work. Got our # from the
company he bought the computer from. It’s
Systemax computer.
* * *
Holly H., from Georgia [phone number]. Has
a Systemax computer that she’s had nothing
but troubles with over the last year. She
has technical support numbers but is now
caught in a loop where it transfers her and
then says, “Goodbye.” Feel free to contact
her [regarding] our problems with sharing
our name with this company.
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* * *
Diane H. received our phone number throught
[sic] the phone book. She is having
problems with her computer screen. [Phone
number].
* * *
On 7/01 at 8:43 a.m., Mary P. in Minneapolis
at [phone number] left message in the voice
mail because she has a 6-month-old Systemax
computer that has frozen up several times.
She got our # from MSN. She was very
frustrated and suggested the company stay
open on weekends for all those people who
use their computers on weekends. I called
her and gave her the two numbers above.
* * *
Janette S. in Aspers, PA [phone number]-
having problems with modem on her Systemax
computer. Got our # from Cyber Acoustics.
She’s been given 4 different numbers to try
to get help! I gave her the two above
numbers.
* * *
HSJ visited Tyndall FCU [Don Summer] and he
told Steve he thought we were the Systemax
who sold the computers and wondered why our
President [of such a large corporation]
would be coming to see them.
One e-mail, entitled “sorry company,” states:
If you build and market the same type
of equipment for ATM’s as you do computers,
and support them with the same people I have
dealt with in your computers, please call me
and tell me which banks you sell them to, so
I won’t go there, cash now is becoming more
valuable because the way you people do
business, and I don’t want to deal with you,
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your staff or your equipment EVER!!! [from
exhibit number 25]
Other e-mails of record include the following:
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I just purchased a Systemax 233 notebook,
and I can’t seem to get out of the BIOS
setup page, it keeps taking me around and
around to the same page after I have put my
pass word in, and it takes me back to the
first page again, how do I get passed [sic]
the configuration page and get into the
Windows 98, according to the users manual,
the configuration is already done in the
unit itself, and then will move on, mine it
just stays on the setup page over and over
again, how do I rectify this problem?
Thank-you.
* * *
hello,
my name is nelson. i recently purchased a
systemax pc. I am considering another
computer/electronic device and need to know
the following: does this pc have a USB port?
Although i’ve work with computers in the
past, i wish to be precise prior to
purchasing. the system i have is an 550
MHz, AMD ATHLON processor. can’t you
respond before monday…?
* * *
I have recently purchased a Systemax
keyboard and monitor through the Home
Shopping network. It came with no specs or
instructions. I know my way around a
keyboard pretty well. My problem is: when I
hit the half moon (sleep I assume) my
monitor will turn off, as I expect. When I
try to wake it up by using the sun it will
not come back up. I also tried the power on
(circle with the half slash at the top of
the arc) Still nothing. Can anyone please
help?
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Finally, when asked why opposer brought this
opposition proceeding, Ms. Jackson testified, at 91-92:
A The only reason we took this action is
because it’s impacting or affecting our day-
to-day business lives and because we’re
concerned about the--not only the time and
money that goes into this, but the--our
reputation.
And one thing that we’re doing out there is
marketing ourselves as we specialize in ATM
supplies and do only ATM supplies and then
you’ll have somebody say Oh, yeah, except
for your computers and so it’s--
And then with all of the angry--most of what
we get, the correspondence we get or the
phone calls we get are angry people. We’re
not--we’re not accustomed to that. We’re
not used to dealing with angry customers and
we really don’t like having to deal with it
for another company.
Opposer also took the testimony of H. Steven Jackson,
the owner and president of opposer. Concerning opposer’s
class of purchasers, he testified, at 14:
The typical purchasing agent in a financial
institution buys everything from--if they--
if the financial institution owns automatic
teller machines, they would buy the
automatic teller machine supplies. They
would buy paper clips, pencils, note pads.
They are typically responsible for the
supply rooms which feed the whole bank.
Supplies of a wide variety, you know, are
typically purchased by these purchasing
agents.
Q Would they--would they ever buy any
hardware?
…
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THE DEPONENT: Okay. Hardware. They would
not typically buy ATMs, but they would
typically buy hardware items such as
calculators, computers, things of that type.
Typically, they don’t buy ATM hardware.
Concerning one instance of alleged actual confusion,
Mr. Jackson testified, at 45-46:
…I was at--our sales manager had scheduled
an appointment with me with a client of ours
in Panama City, Florida and he commented to
me before I left that he thought that the
client was somewhat apprehensive and--and I
asked him why he thought that and he--he
said well, it was his hesitation and tone of
his voice. He didn’t understand why the
president of Systemax was coming to see him…
When I got to the client’s site, I was met
by the purchasing agent for the credit
union. As he was taking me back to his
office, he stopped me in the hallway and he
said I have to tell ya we really--we really
don’t know why the president of a billion
dollar corporation would be coming to visit
us.
And I said well, thank you very much. I
wish we had a billion in sales, but that’s
not us and he said, but you’re Systemax?
And I said yes, but we’re the Systemax that
sells automatic teller machine supplies only
and he said oh. He said we thought you were
the president of the Systemax Corporation
that, you know, that sells the computers.
And we had a conversation about it and he
still--he--even though these people had been
buying products from us for ATM products,
they still thought that we were one in [sic,
should be “and”] the same company.
Opposer’s exhibits include status and title copies of
its two pleaded registrations.
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Applicant’s Record
The record shows that, in 1985, a subsidiary of Global
DirectMail Corporation called Global Computer Supplies
International Ltd. changed its name to Systemax
Incorporated. This company remained a corporate division
of applicant until May 1999 when the parent corporation
assumed the name of the subsidiary.
Applicant began using the mark SYSTEMAX on personal
computers in November 1997. The mark is now used on such
goods as computers, monitors, keyboards, mouse and mouse
pads and other computer peripherals and accessories.
Applicant took the testimony of Steven Goldschein, its
senior vice president and chief financial officer. He
testified that applicant is a direct marketer of industrial
and computer products sold mainly in the business-to-
business arena to small and medium-size businesses
including banks and other financial institutions, as well
as home office businesses. The specific target of
applicant’s sales efforts are information systems directors
and purchasing departments of these businesses. Applicant
sells hundreds of thousands of personal computers each year
and has from 500,000 to 1 million customers. The average
price of applicant’s computers is $1,100. Applicant’s
sales total about $300 million each year. Goldschein dep.,
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43. Applicant spends tens of millions of dollars on
advertising and promotional expenses, distributing about
100 million catalogs per year (over 150 million catalogs in
2000), and has advertised its computers in print
advertisements such as computer magazines, on radio, on the
Home Shopping Network and at trade shows. Most of
applicant’s sales result from the distribution of its
catalogs and direct marketing phone calls, and also come
from its Web site, through retail stores and its own
outlets. Applicant does not sell ATM supplies or paper
products. Mr. Goldschein testified that he was aware of no
instances of actual confusion and stated that purchasers of
supply items are different from those purchasing “capital
requisition” items like computers. Goldschein dep., 58.
Applicant sells its SYSTEMAX computers through companies
with such names as Global Computer Supplies, Infotel,
Dartek and Tiger Direct.
With respect to the specific mark here sought to be
registered--SYSTEMAX PRO--Mr. Goldschein testified, at 59-
60, that the only use of this mark was in the November 1997
catalog and that applicant does not use the mark SYSTEMAX
PRO any longer. It was used for a short period of time at
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the end of 1997 and the early part of 1998. Applicant no
longer has any labels with the mark SYSTEMAX PRO.6
Mr. Frank Kelly, the president of an intellectual
property research and acquisitions firm, was called by
applicant to testify concerning the uses of the mark
SYSTEMAX by third parties. Mr. Kelly conducted what he
called an “in-use-only investigation” with respect to the
mark or name used by others. He obtained Dun & Bradstreet
reports on various companies, checked the Internet for
information about these companies, and called the companies
to inquire concerning the nature of their usage. According
to Mr. Kelly, the mark SYSTEMAX or its phonetic equivalent
is being used for such diverse goods and services as intake
cams for engines, providing administrative services to
packaging and shipping companies, fiber optic and copper
connections or systems, carbon decolorization systems for
corn sweeteners, steel mining equipment, industrial
automation controls, retailing of television and radio
electronic equipment and computer software development.
Applicant also filed a notice of reliance on six third-
party registrations of this mark covering such services as
accounting, secretarial and postal services, business

6 Opposer did not plead or argue that we should also sustain this
opposition because applicant has abandoned the specific mark sought to
be registered. Therefore, we have not considered the issue of
abandonment.
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conference planning, dry cleaning and shoe repair services,
and facsimile transmission services.
Finally, of record is the affidavit and other material
attached to applicant’s motion to reopen. This evidence
includes an affidavit of Mr. Goldschein with supporting
documents. According to this evidence, prior to January
14, 2002, if one conducted a search for “ATM Supplies” on
the Yahoo! search engine, the listing for “Systemax”
included two links, one to opposer and one to applicant.
Also, prior to January 14, 2002, if one searched
“Systemax,” two headings appeared with three links. The
first heading referenced “Automatic Teller Machines” and
contained two links, one of which was to the applicant. As
result of action requested by applicant, on January 14,
2002, Yahoo! updated its search engine to reflect the
existence of two distinct entities. The search engine
removed all links to applicant’s Web site from those search
results intended to link to opposer. Therefore, one does
not get a link to applicant when searching for “ATM
Supplies,” and when one searches “Systemax,” the results
include two different headings that differentiate between
links for opposer and applicant.
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Arguments of the Parties
Opposer points to the similarities in the usages of
the respective trademarks (the letters “M-A-X” being
depicted with horizontal lines).

Opposer also argues that the same class of consumers
(purchasing agents for banks and other financial
institutions) could be exposed to the goods and/or services
of the parties under their very similar marks. Because
both parties sell to small and medium-sized business,
opposer argues that the Board can assume that the
purchasing agents in the smaller banks and financial
institutions may also be purchasing the products of both
parties. In this regard, opposer points to the fact that
on two occasions the purchasing agents of opposer’s
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customers mistakenly referred to applicant’s catalogs when
asked by opposer’s employees or agents to look at opposer’s
catalog.
Opposer maintains that the best evidence of likelihood
of confusion is actual confusion, and that in this case the
numerous instances of actual confusion are a persuasive and
controlling factor on the issue of likelihood of confusion.
Opposer asks us to resolve doubt in its favor as the prior
registrant in this case.
Applicant, on the other hand, maintains that the
differences in the respective goods and services are so
vast as to weigh heavily against a finding of likelihood of
confusion. Applicant also points to differences in the
channels of trade and the specialization of corporate
purchasing departments. Relying upon Electronic Design &
Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713,
21 USPQ2d 1388 (Fed. Cir. 1992), applicant argues that the
fact that different goods and services may be purchased by
the same institution does not by itself establish the
similarity of trade channels or the overlap of customers.
In this regard, applicant argues that opposer had the
burden to prove that the same individuals inside a
corporation have the responsibility to make the purchasing
decision for both ATM supplies and computers. Applicant
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calls the evidence of two individuals who had catalogs of
both parties de minimis and insufficient proof that the
respective customers are identical.
Applicant also points to the conditions of sale,
including the care taken in the purchasing of specialized
ATM supplies and computers. Applicant notes that
purchasers must make direct contact with opposer in order
to purchase highly specialized ATM supplies, and that these
goods are purchased only after considerable thought and
evaluation. Applicant’s goods are expensive and would also
be purchased, according to applicant, with a higher degree
of care. The parties also advertise in different media and
attend different trade shows.
Another factor which applicant argues is in its favor
is the number and nature of similar marks in use on a wide
range of goods and services, allegedly weakening the
strength of opposer’s mark.
With respect to the evidence of actual confusion, it
is applicant’s contention that the misdirected
communications do not show actual confusion. First,
applicant characterizes the evidence of record as
unreliable hearsay concerning statements of individuals
whom opposer did not depose. Also, opposer did not prove
the reasons for these misdirected communications.
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Applicant also maintains that the e-mail messages were
caused, not by confusion, but by inattentiveness or
carelessness in using a search engine. Applicant argues
that such an error does not rise to the level of actionable
confusion. It is applicant’s contention that the root
cause of much of the miscommunication can be attributed to
the error of search engines such as Yahoo!, which linked
both applicant and opposer under the heading “ATM Supplies”
and “ATM Machines.” Applicant contends that this confusion
coincided with the change of name of Global DirectMail
Corp. to Systemax, Inc. in May of 1999, and not by
applicant’s adoption of the trademark SYSTEMAX PRO for its
computers. Applicant argues that about half of the e-mail
correspondents had obtained opposer’s phone number from the
Internet. (Applicant states that it is not aware that it
received any misdirected communications intended for
opposer.) In sum, applicant states that opposer must show
that the communications were from actual customers whose
purchasing decisions were affected, and that here opposer
cannot cite any examples where purchasers expressed
unwillingness to buy opposer’s ATM products and services as
a result of applicant’s computer products, or even that
these people were potential customers of opposer. Because
these miscommunications were caused by consumer error,
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applicant argues that this evidence is not probative on the
issue of whether actual confusion has occurred. Moreover,
any miscategorization contained in Yahoo!’s Web site or any
misleading linking has now been corrected, according to
applicant.
In rebuttal, concerning the third-party “use” of
similar marks, opposer maintains that we should give little
weight to this evidence. First, there is no evidence of
the extent of use of these third-party marks. Therefore,
there is no evidence that the relevant purchasing public
has been exposed to these marks to the extent that they
have been conditioned to distinguish between them. Opposer
also contends that this record shows that opposer had no
problems with any confusion as a result of these third-
party uses for different goods or services.
Concerning applicant’s hearsay objections to the
evidence of actual confusion, opposer points to Rule 803(6)
of the Federal Rules of Evidence, which provides that
records kept in the regular course of business are
admissible through the testimony of a custodian of those
records. Finally, opposer contends that applicant’s
arguments concerning inattentive or careless purchasers are
inconsistent with its argument that the purchasers are
sophisticated and discriminating. Even after reviewing
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opposer’s Web site relating to its ATM supply business,
these allegedly discriminating purchasers nevertheless sent
e-mails to opposer concerning computer products which
opposer did not make. Dozens of discriminating purchasers
were confused about the identities of the parties or the
sources of their products or services, opposer maintains.
Analysis
First, because opposer is the owner of valid and
subsisting registrations, priority is not an issue in this
case. King Candy Company v. Eunice King's Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and Carl Karcher
Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125
(TTAB 1995). The only issue before us is whether the
marks, as used on the respective goods and services, are
likely to cause confusion.
Our determination under Section 2(d) of the Act is
based on an analysis of all of the probative facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue. See In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); and In re E.I. du Pont de Nemours and Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). Two key
considerations are the marks and the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
91117529
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1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by [Section] 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
With respect to the marks, applicant’s SYSTEMAX PRO
mark and opposer’s SYSTEMAX mark are very similar in sound,
appearance and suggestive meaning, differing only by the
word “PRO” in applicant’s mark. Moreover, the record shows
that applicant uses the mark SYSTEMAX (apparently not
SYSTEMAX PRO) in a manner that is very similar to opposer’s
mark SYSTEMAX, with the suffix “MAX” in both marks
displayed with a number of horizontal lines. If these
marks were used on or in connection with commercially
related goods and services, there would clearly be a
likelihood of confusion.
However, upon careful consideration of this record and
the arguments of the parties, we find that applicant’s
computers and computer hardware are sufficiently different
in nature from opposer’s distributorship services in the
field of ATM supplies and the ATM supplies themselves that
confusion is unlikely even when these goods and services
are offered under these similar marks.
The respective goods and services are quite disparate.
On the one hand, opposer sells ATM supplies in the nature
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of paper products and such items as card protectors,
whereas applicant sells computer hardware. These goods are
completely different in nature and are used for completely
different purposes.
With respect to the purchasers of these goods and
services, we note that applicant’s description of goods--
computer hardware-—is unrestricted as to the channels of
trade or the classes of purchasers to whom those goods are
sold. In this regard, it is well settled that the issue of
likelihood of confusion must be determined on the basis of
the goods as they are set forth in the involved
application. See, e.g., Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A.
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16
(Fed. Cir. 1987); CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 199 (Fed. Cir. 1983) and cases cited therein.
Thus, where an applicant's goods are broadly described as
to their nature and type, it is presumed that in scope the
application encompasses not only all goods of the nature
and type described, but also that the identified goods move
in all channels of trade which would be normal for those
goods, and that they would be purchased by all potential
buyers thereof. See, e.g., In re Elbaum, 211 USPQ 639, 640
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(TTAB 1981). We must assume, therefore, that applicant’s
computer hardware including computers can be and is sold to
such potential purchasers as banks and other financial
institutions, the primary purchasers of opposer’s goods and
services. In fact, the record reflects that this is the
case.
However, this fact does not end the inquiry. We must
also consider such other factors as the conditions of
purchase of the respective goods and services and the
sophistication of the purchasers.
The potential common purchasers of both opposer’s ATM
goods and services and applicant’s computers—-banks and
other financial institutions—-are undoubtedly relatively
sophisticated purchasers who would exercise some degree of
care in their purchasing decisions. The purchase of
capital equipment like computers would likely be done with
some degree of care, especially in view of the expense
involved. Applicant’s computers cost about $1,100 apiece.
Furthermore, as the record shows, purchases of opposer’s
ATM supplies are frequently consummated after opposer has
contacted corporate department managers and purchasing
departments responsible for ordering and managing ATM
supplies. These purchasers who need supplies for their ATM
and point-of-sale machines would be likely to exercise care
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27
in the purchasing of these supplies. Indeed, it is likely
that a consistent source of ATM supplies would be obtained
for these goods because they must be purchased on a regular
basis, and a knowledge and relationship with the supplier
of these goods would likely be developed. Therefore, and
even though the marks here are quite similar, we believe
that the circumstances surrounding the purchasing decisions
of any common customers, such as banks and other financial
institutions, would likely dispel any confusion that would
otherwise arise.
We also note that the testimony concerning whether the
same purchasing departments would buy both ATM supplies and
computer hardware is contradictory.7 Suffice it to say that
we believe that opposer has not established in this record
that there are common purchasing departments for these
goods and services. See, e.g., Electronic Design & Sales
Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21
USPQ2d 1388 (Fed. Cir. 1992).
We have also considered the other evidence of record
in this case. First, we find the evidence concerning
third-party use of similar marks to be of relatively little
probative value. The evidence of the nature and extent of

7 We are aware that on at least two occasions, the purchasers or
potential purchasers of opposer’s supplies also had a copy of
applicant’s catalog.
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28
any actual use of these marks is largely hearsay,
especially Mr. Kelly’s conversations with employees of the
third parties, and, in any event, these marks are used, for
the most part, in completely different fields of endeavor
and do not, therefore, serve to weaken the scope of
protection of opposer’s mark.
Second, as to the evidence of actual confusion, this
evidence does tend to indicate some level of confusion on
the part of some purchasers of applicant’s computers, in
the sense that they contacted opposer rather than
applicant. However, many of these computer purchasers seem
to have contacted opposer through the use of Internet
search engines, which list both parties and perhaps others
who use the same or similar marks, and Directory Assistance
operators who have, for some reason, given them opposer’s
phone number rather than applicant’s. Moreover, these
purchasers seem for the most part to be members of the
general public, and not also in the market to purchase
opposer’s ATM supplies or use opposer’s distributorship
services in the field of ATM supplies. Opposer has pointed
to no evidence in the record where any of the mistaken
calls or e-mails have been from such common purchasers as
banks and other financial institutions. The latter, as
indicated above, are discerning purchasers who are more
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likely to avoid mistakes in the selection of the entity
whom they wish to contact. The only evidence of record of
possible confusion by one of opposer’s customers comes from
the testimony of Mr. Jackson, noted above, relating to his
visit to a credit union in Panama City, Florida, whose
purchasing agent thought that opposer was connected to
applicant. However, we believe that this one incident of
apparent confusion is not sufficient, in view of the other
circumstances discussed above which militate against such a
finding, to warrant a conclusion of likelihood of
confusion.
We conclude that, while the marks SYSTEMAX and
SYSTEMAX PRO are quite similar, the respective goods and
services are sufficiently different that confusion is not
likely on the part of the relatively sophisticated and
discriminating common purchasers of both ATM supplies and
computers.
Decision: The opposition is dismissed.