In In re Stanley Black and Decker, Inc., the Trademark Trial and Appeal Board found that department store services are related to computer store services. The applicant identified its services as “retail department store services and online retail department store services” and the registrant identified its services as “retail store services featuring computer hardware, software, network and networking components, telecommunications products and services, cabling and wiring.” The Board relied on The Merriam-Webster Dictionary definition of “department store,” which is defined as “a store having separate sections for a wide variety of goods” and Web pages from department stores for Walmart, Sears, Target, Frys, Overstock and Kohls. Based on this evidence, the Board concluded that department stores could sell computer hardware, software, network and networking components, and telecommunications products and services.
Black and Decker argued that it would focus on selling tools and lawn and garden equipment, and not computer or telecommunications goods. Unfortunately, this argument failed because the Board is required to evaluate the goods and services at issue based on how they are described in the application and registration.
If Black and Decker used BOB, it most likely would have received a red light based on this prior registration because at the search stage you want to use as broad a description as possible to capture anything that could be a potential issue. But a red light does not necessarily mean that the searched mark is unavailable to you. It is simply a signal that you should look deeper at the marks identified in the report.
In this case, Black and Decker should have specified that it would sell tools, and lawn and garden equipment in its department store services (if in fact it was going to offer a department store service, which is probably was not). If it had done this despite receiving a red light from BOB, it may have been able to avoid the refusal from the Trademark Office.