The opinion of the court was delivered by: DITTER, JR.
DITTER, JR., UNITED STATES DISTRICT JUDGE.
This case comes before the court on a motion for a preliminary injunction. The ultimate question is whether plaintiff's business forms trademark enables it to preclude defendant from using a similar mark on its computer software. After hearing, I make the following:
1. Plaintiff, Safeguard Business Systems, Inc., (SAFEGUARD), is a corporation organized and existing under the laws of the State of Delaware, having a principal place of business at 455 Maryland Drive, Fort Washington, Pennsylvania 19034.
2. Defendant, New England Business Service, Inc., doing business as Nebs Computer Forms (NEBS), is a corporation organized and existing under the laws of the State of Massachusetts, having a principal place of business at 500 Main Street, Groton, Massachusetts 01470.
4. The amount in controversy exceeds the sum of $ 10,000.00 exclusive of interest and costs and is between citizens of different states.
5. This court has jurisdiction over the defendant under 28 U.S.C. § 1332 and the Trademark Laws of the United States, Title 15, United States Code, § 1051 et seq. and jurisdiction is confirmed by 15 U.S.C. § 1121 and § 1125(a), at 28 U.S.C. § 1338(a).
6. During the year 1981, Eric Hayman, SAFEGUARD's group director of marketing, created the mark FAST FORM which is covered by United States Trademark Registration No. 1,301,545 issued October 23, 1984.
7. Before issuance, SAFEGUARD's trademark was published for opposition by the U.S. Patent and Trademark Office ("PTO"), on October 5, 1982. At the time of publication, the description of goods read "data processing business forms."
8. This description of the goods was narrowed as part of a settlement of an opposition proceeding within the PTO filed by a third party, Avery International Corporation ("AVERY"). AVERY alleged that SAFEGUARD's use of FAST FORM was confusingly similar to AVERY's trademark FASFORM. AVERY used FASFORM for self-adhesive sheet and roll materials used to make labels, badges, signs, and the like, primarily with computers. SAFEGUARD and AVERY entered into a settlement agreement which required SAFEGUARD to amend its description of goods to distinguish them from AVERY's FASFORM product.
9. As a result of the settlement of the opposition proceeding, SAFEGUARD's FAST FORM Trademark Registration No. 1,301,545 was issued by the PTO. The narrowed description of the goods reads: "non-self adhesive-type multisheet business forms for use in recording and simultaneously transferring data for specialized market applications and specifically intended to be used as a component in one-write pegboard accounting systems."
10. A one-write accounting system uses a peg board and business forms that have holes along the left margin and a strip of carbon paper. The form is intended to be positioned on the peg board and held in place with relation to another form. Information entered on the top form is reproduced on the second form at a desired place through the carbon paper strip. The one-write system can be used in a variety of applications where the end-result is intended to be the immediate transfer of information from one form to a specific place on another form.
11. NEBS has several distinct divisions, one of which is the computer forms division. The company sells a variety of business supplies and products through separate catalogues put out by each of its divisions.
12. NEBS sales are made exclusively through catalogues and advertising. NEBS does not employ a sales force to visit customers and solicit orders and NEBS customers place orders directly to NEBS.
13. NEBS computer forms division sells computer software programs under the trademark FASTFORM. This software is a type of word processing package which allows a computer user to enter data at specified locations on specific forms shown on the computer screen. Continuous business forms are then printed from information stored on the computer. The software also has a variety of storage and summary capabilities. Approximately twenty different software titles are sold by NEBS, each being applicable to a specified business form. The forms which can be filled from the FASTFORM software can also be filled in manually or through the use of other brands of software.
15. NEBS uses its FASTFORM trademark only in conjunction with its typing software. The mark is not used on any NEBS forms filled out by the FASTFORM software, nor any other NEBS forms.
16. NEBS sells a variety of business forms which can be filled in by the NEBS FASTFORM software or by the software of others. Many other suppliers also sell forms which could be filled in by NEBS FASTFORM software. SAFEGUARD does not sell any forms bearing the FAST FORM designation which can be filled in by NEBS FASTFORM software.
17. NEBS business forms division sells a variety of business forms, including forms and supplies used with one-write systems. The business forms division and the computer forms division of NEBS are distinct. Each maintains a separate office, publishes a separate catalogue, and has a separate telephone number.
18. The catalogue published by NEBS business forms division contains no advertisements for NEBS FASTFORM software nor does it contain any reference to the FASTFORM mark.
19. The majority of NEBS customers who receive the computer forms and supplies catalogue do not receive the business forms catalogue. NEBS strives to send its computer forms and supplies catalogues only to those consumers who are, or are likely to be, computer users. As a result, there are only a small percentage of NEBS customers who receive the catalogues of both divisions.
20. The notation on pages 53 of a NEBS computer forms and supplies catalogue which states "more FASTFORMS on the next pages" refers to the FASTFORM typing software which appears on pages 54 and 55 of the same catalogue.
21. NEBS does not sell any computer software under the FASTFORM trademark which fills out one-write business accounting forms.
22. SAFEGUARD utilizes commissioned sales agents throughout the United States to sell FAST FORM business forms. These agents show samples of FAST FORM business forms to potential customers and demonstrate how they are used.
23. SAFEGUARD's promotional activities of the FAST FORM business forms have primarily been through its sales representatives. It does not ...