AmeriCareers LLCv.Internet Employment Linkage, Inc. Internet Employment Linkage, Inc. v. AmeriCareers LLC

Trademark Trial and Appeal Board

Oct 5, 2011

No. 91198027 (T.T.A.B. Oct. 5, 2011)

jk Mailed: October 5, 2011

Opposition No. 91198027
(parent case)

AmeriCareers LLC

v.

Internet Employment Linkage,
Inc.

Cancellation No. 92052698

Internet Employment Linkage,
Inc.

v.

AmeriCareers LLC

Before Bergsman, Ritchie and Shaw,
Administrative Trademark Judges.

By the Board:
Opposition No. 91198027
Americareers, LLC (“Americareers”) opposes registration
of the following two applications filed by Internet
Employment Linkage, Inc. d/b/a HigherEdJobs (“IEL”):
Application Serial No. 779508431 for the mark HigherEdJobs
(standard characters; acquired distinctiveness under Section

1 Application filed March 4, 2010, asserting use of the mark in
commerce, and asserting for International Classes 35 and 42 a
date of first use and date of first use in commerce of December
10, 1996, and for International Class 41 a date of first use and
date of first use in commerce of January 29, 2010.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91198027; Cancellation No. 92052698
2

2(f) claimed), and Application Serial No. 779508712 for the
mark

(acquired distinctiveness under Section 2(f) claimed as to
“HIGHEREDJOBS”), both for
personnel placement and recruitment services for
academic professionals and faculty; providing an on-
line searchable database featuring data related to
personnel placement and recruiting services, namely,
employment candidate information, institutional
profiles and job posting data for academic
professionals and faculty; providing a website
featuring information and weblinks in the field of
employment for academic professionals and faculty, in
International Class 35;

on-line journals, namely, blogs featuring employment
news and discussion, in International Class 41; and

providing temporary use of on-line nondownloadable
software and applications for finding jobs for academic
professionals and faculty, in International Class 42

asserting that the marks are 1) merely descriptive, and 2)
generic.
Cancellation No. 92052698
IEL seeks to cancel Registration No. 3666461,3 owned by
Americareers for the mark HIGHER ED SPACE (standard
characters) for

2 Application filed March 4, 2010, asserting use of the mark in
commerce, and asserting for all classes a date of first use and
date of first use in commerce of February 28, 2010.
3 Registration issued August 11, 2009.
Opposition No. 91198027; Cancellation No. 92052698
3

on-line computer services, namely, providing a web-
based system and online portal for higher education
communities with online directories featuring colleges,
graduate schools, courses, scholarships, jobs, news,
events, classified ads, virtual community and social
networking, in International Class 41

on the grounds of fraud on the USPTO, and priority and
likelihood of confusion. IEL asserts ownership of:
Registration No. 26880034 for the mark HIGHEREDJOBS.COM
(standard characters; acquired distinctiveness under Section
2(f) claimed), and Registration No. 27811275 for the mark

(acquired distinctiveness under Section 2(f) claimed), both
for
personnel placement and recruitment services for
academic professionals and faculty; providing access to
data and the ability to manipulate data related to
personnel placement and recruiting services, namely,
employment candidate information, job finding tools,
institutional profiles and job posting data for
academic professionals and faculty; providing a website
featuring information and weblinks in the field of
employment for academic professionals and faculty, in
International Class 35;

as well as Application Serial No. 77950843 and Application
Serial No. 77950871, the two applications opposed in
Opposition No. 91198027 (see above).

4 Registered February 18, 2003; Section 8 declaration accepted
and Section 15 declaration acknowledged on June 13, 2008.
5 Registered November 11, 2003; Section 8 declaration accepted
and Section 15 declaration acknowledged on December 29, 2008.
Opposition No. 91198027; Cancellation No. 92052698
4

Americareers denied the salient allegations in the
petition to cancel, and counterclaimed for cancellation of
IEL’s pleaded Registration Nos. 2688003 and 2781127 on the
ground that the marks are generic.
Cross-motions for Summary Judgment
Americareers moved for summary judgment on its claim of
genericness against IEL’s two opposed applications, and on
its counterclaim of genericness against IEL’s two pleaded
registrations. In the alternative, it seeks entry of a
disclaimer of “HigherEdJobs.com” in application Serial No.
77950871 and Registration No. 2781127.
IEL responded, and filed a cross-motion seeking summary
judgment that the design marks (application Serial No.
77950871 and Registration No. 2781127) are not generic as a
whole, and that the alternative relief in the form of a
disclaimer is unavailable for Registration No. 2781127
inasmuch as it is incontestable.
AMERICAREERS’ MOTION TO STRIKE

Americareers moved to strike matters submitted by IEL
with its response and cross-motion. It seeks to strike: 1)
Exhibit 6 (IEL customer testimonials from its website) to
the declaration of Andrew Hibel, alleging that IEL
intentionally changed the wording “HigherEdJobs.com” in said
testimonials to “HigherEdJobs;” and 2) the declaration of
Opposition No. 91198027; Cancellation No. 92052698
5

Eric Zack on the basis that IEL did not disclose him in its
initial disclosures for either proceeding.
The motion to strike is denied. Regarding IEL’s
customer testimonials, IEL responds that between 2009 and
2010 it updated its marketing and website materials from
“HigherEdJobs.com” to “HigherEdJobs,” and that it has begun
to return the testimonials to their original form. In any
event, IEL offered the testimonials to support its assertion
that customers in academia know IEL as a trusted source for
employment-related services in higher education; such
assertion is unaffected or negligibly affected by a minimal
change in the wording by which customers know IEL from
“HigherEdJobs.com” to “HigherEdJobs.”
Regarding the Zack declaration, Americareers moved for
summary judgment only one week after the parties exchanged
initial disclosures, IEL did not unequivocally refuse to
disclose Zack or refuse to supplement its initial
disclosures, and Americareers has delineated no specific
substantive basis on which the Board should discredit the
declaration.6 Fed. R. Civ. P. 26(a)(1) does not obligate a
party to disclose the name of every witness that may have
discoverable information about its claim or defense, but

6 To the extent that IEL believes that Mr. Zack has discoverable
information that it may use to support its claims or defenses at
trial, it must serve a supplemental initial disclosure. See Fed.
R. Civ. P. 26(a)(1); TBMP § 401.02 (3d ed. 2011),
Opposition No. 91198027; Cancellation No. 92052698
6

merely witnesses having discoverable information that it may
use to support its claims or defenses. See Jules
Jurgensen/Rhapsody Inc. v. Baumberger, 91 USPQ2d 1443, 1444
n.1 (TTAB 2009). Moreover, exclusion of the declaration
would not alter our conclusion regarding the merits of the
cross-motions for summary judgment.
Finally, Americareers requests the Board’s review of
the matter that IEL redacted in its cross-motion, namely, a
portion of Paragraph 26 to the Hibel declaration.
Americareers acknowledges that, as a pro se party,
provisions of the Board’s standard protective order preclude
it from viewing matter designated as commercially sensitive.
The redacted matter is objectively commercially
sensitive information, and IEL’s redaction was not improper
or unreasonable, undertaken to shield Americareers from
merely confidential information, or undertaken to circumvent
Trademark Rules 2.27(d) and (e). Moreover, the two
sentences at issue are the only matter that IEL filed under
seal; thus, the redaction is minimal and judicious. See
Blackhorse v. Pro Football Inc., 98 USPQ2d 1633, 1635 (TTAB
2011). Finally, the Board’s consideration or exclusion
thereof does not alter its ruling herein.
CROSS-MOTIONS FOR SUMMARY JUDGMENT
Summary judgment is appropriate where the movant shows
that there is no genuine dispute as to any material fact and
Opposition No. 91198027; Cancellation No. 92052698
7

that it is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56(a). A party asserting that a fact cannot be or
is genuinely disputed must support its assertion by either
1) citing to particular parts of materials in the record, or
2) showing that the materials cited do not establish the
absence or presence of a genuine dispute, or that an adverse
party cannot produce admissible evidence to support the
fact. Fed. R. Civ. P. 56(c).
Each party carries the burden of proof on its
respective motion. See Celotex Corp. v. Catrett, 477 U.S.
317, 323-24 (1986). In deciding the cross-motions, the
function of the Board is not to try issues of fact, but to
determine if there are any genuine disputes of material fact
to be tried. See TBMP § 528.01 (3d ed. 2011), and cases
cited therein.
Americareers’ motion
To prevail on its motion with respect to each of IEL’s
challenged marks, Americareers must demonstrate that it has
standing, and that there is no genuine dispute that the mark
refers to the class, genus or category of services in
connection with which it is used.7 See In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.
2001); H. Marvin Ginn Corp. v. Int’l Ass’n. of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). The test
Opposition No. 91198027; Cancellation No. 92052698
8

for determining whether a mark is generic is its primary
significance to the relevant public. See Trademark Act §14(3);
In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832
(Fed. Cir. 1999). The primary significance of the mark to the
relevant public is analyzed by determining
[f]irst, what is the category or class of the goods or
services at issue? Second, is the term sought to be
registered or retained on the register understood by the
relevant public primarily to refer to that genus of goods
or services?

H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,
228 USPQ at 530.
A determination of the public’s understanding of a mark is
based on consideration of the mark as a whole. See In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed.
Cir. 2005); In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832, 1836-37 (Fed. Cir. 1999). If each constituent
word is generic, the combination is generic if the entire
formulation does not add any meaning to the otherwise generic
mark. See In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 92
USPQ2d 1682, 1684 (Fed. Cir. 2009). Evidence of the relevant
public’s understanding of the mark can be obtained from any
competent source, including dictionaries, newspapers,
magazines, trade journals and other publications. See In re

7 The parties’ standing to assert their respective claims and
counterclaims is not disputed.
Opposition No. 91198027; Cancellation No. 92052698
9

Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961,
963 (Fed. Cir. 1985).
Americareers argues that “higher ed jobs” is a category of
jobs in higher education and that IEL’s services are rendered
in the field of higher education. It submitted the declaration
of its President, Dan Ouyang, which introduces the dictionary
definitions of “ed” (n. Informal Education; driver’s ed; adult
ed.), “higher education” (n. Education beyond the secondary
level, especially education at the college or university
level), and “job” (noun 1. Activity pursued as a livelihood,
career, employment, occupation. See business). The declaration
also introduces, inter alia, current as well as several
previous pages from IEL’s website showing uses of “higher ed
jobs” and “Higher Education Jobs, Jobs in Higher Education –
HigherEdJobs.com” for providing job information; third-party
websites that use “higher ed jobs” or “higher education jobs”
as a category of jobs in higher education; third party websites
that use “HigherEdJobs.com,” “HigherEdJobs” and similar wording
in their URL web addresses; third party websites that use
“higher ed jobs” and “higher ed job” to refer to employment or
related information or service providers.
IEL argues that the design elements of its marks in
Registration No. 2781127 and application Serial No. 77950871
are distinctive. It further argues that Americareers failed to
identify either the genus of services, or the relevant public,
Opposition No. 91198027; Cancellation No. 92052698
10

at issue with respect to any of IEL’s marks, and that these are
material issues for trial.8 With respect to the third-party
uses submitted by Americareers, IEL asserts that many, such as
uses of “higheredjobs.com” as domain names or otherwise, are
potentially infringing uses against which IEL has taken or is
taking corrective policing action; that many third parties
mistakenly use “Higher Ed Jobs” (with spacing) to identify IEL;
and that uses of “higher ed jobs” in a non-trademark sense to
describe employment in higher education are permissible uses
and do not indicate genericness of IEL’s marks when used in
connection with IEL’s services. It further asserts that many
third-party uses are by non-competitors and are for services

8 IEL offers that the genus of services is:
providing online services in the nature of personnel placement
and recruitment services, job search services and related
software for posting employment opportunities, reviewing
candidate information and searching for employment
opportunities, as well as employment-related information and
blogs for academic professionals and faculty in the field of
post-secondary education,

and that the relevant public is:
employers in the field of post-secondary education and academic
professionals and faculty seeking jobs in post-secondary
education. (brief, p. 5)

In its reply, Americareers states that the genus of services is
“jobs and career information and services in higher education”
(reply brief, p. 2), and that the relevant public “includes
employers in higher education institutions (i.e. colleges and
universities), job seekers interested in working in colleges and
universities, and others who may be interested in higher
education jobs and career information in general” (reply brief,
p. 3).
Thus, it appears that the parties dispute considerations
directly relevant to the test to be applied, as well as (as
discussed further below) the reliability of and value of the
evidence submitted on summary judgment and the factual
conclusions that can be drawn therefrom.
Opposition No. 91198027; Cancellation No. 92052698
11

unrelated to those offered by IEL, and that many are outside
the United States. IEL argues that it has used its marks since
1996, that it has claimed acquired distinctiveness (the
sufficiency of which Americareers does not dispute), and that
the marks are recognized by the relevant public, which includes
its own competitors, “as a trusted source for employment-
related services in the field of higher education” (brief, p.
14).
IEL submitted the declaration of COO and Co-Founder Andrew
Hibel, stating, inter alia, that IEL offers a variety of
services, that those in academia recognize IEL as a trusted
source for employment-related services in the field of higher
education, and that many of the third-party uses of “higher ed”
and “higher education” offered by Americareers are not use by
competitors and offer services different from those provided by
IEL. The Hibel declaration also introduces excerpts from 75
customer testimonials (Hibel Decl, Exh. 6). IEL also submitted
the declaration of Eric Zack, former Director of a competitor
of IEL, stating, inter alia, that IEL and its competitors do
not provide “higher ed jobs,” that they do not identify
themselves as a “higheredjobs.com” or a “higher ed jobs dot-
com,” and that the wording does not name a specific type of job
or job services in the higher education field.
After reviewing the parties’ arguments and submissions,
and viewing the evidence in the light most favorable to IEL
Opposition No. 91198027; Cancellation No. 92052698
12

as the nonmoving party, with respect to the word marks in
Registration No. 2688003 (HIGHEREDJOBS.COM) and application
Serial No. 77950843 (HigherEdJobs), the Board finds that
genuine disputes of material fact exist as to the genus of
the services, the relevant public for those services and
whether the relevant public perceives HigherEdJobs and/or
HigherEdJobs.com as a generic term.
Inasmuch as Americareers has not met its burden of
establishing that there is no genuine dispute of material
fact that the challenged marks are generic, its motion for
summary judgment is denied.
IEL’s cross-motion
With respect to the marks in IEL’s application Serial
No. 77950871 (HIGHEREDJOBS and design) and Registration No.
2781127 (HIGHEREDJOBS.COM and design), to prevail on its
cross-motion, IEL must demonstrate that there is no genuine
dispute that the marks are not generic.
Trademark Act Section 14(3) only provides for a claim
of genericness where the mark as a whole is generic. See
Finanz St. Honore, B.V. v. Johnson & Johnson, 85 USPQ2d
1478, 1480 (TTAB 2007). A mark that includes a design
element cannot be generic as a whole if the design element
is not generic. Thus, the claim that a mark is generic for
the goods or services, or a portion thereof, is unavailable
where it is clear that the mark is composed of a design
Opposition No. 91198027; Cancellation No. 92052698
13

element and is not generic as a whole. See Montecash LLC v.
Anzar Enterprises Inc., 95 USPQ2d 1060, 1062-63 (TTAB 2010).
The marks in both of IEL’s design marks include the
same design, which IEL identifies in application Serial No.
77950871 as “a downwardly curved arrow pointing from above
the ‘I’ in ‘Higher’ to above the ‘J’ in ‘Jobs.’”
Americareers does not challenge the design element of
these marks as being generic; it simply does not address the
design element in its motion.
The Board finds that the design element in each of the
two marks is distinctive. Accordingly, neither of IEL’s
design marks is generic as a whole.
With respect to the alternative relief of entry of a
disclaimer of HIGHEREDJOBS in IEL’s design mark in
application Serial No. 77950871, as noted above, whether the
wording is generic remains an issue for trial. Accordingly,
the alternative relief is denied.
With respect to the alternative relief of entry of a
disclaimer of HIGHEREDJOBS.COM in IEL’s design mark in
Registration No. 2781127, said registration is
incontestable, and as noted, the mark is not generic as a
whole. Thus, Americareers cannot cancel this mark on the
alternative ground that a portion of it is generic and the
purportedly generic wording has not been disclaimed. See
Trademark Act Section 14(3); Finanz St. Honore, B.V. v.
Opposition No. 91198027; Cancellation No. 92052698
14

Johnson & Johnson, 85 USPQ2d at 1480; Montecash LLC v. Anzar
Ent. Inc., 95 USPQ2d at 1063.
In view thereof, IEL has demonstrated that it is
entitled to judgment as a matter of law with respect to
Americareers’ 1) claim of genericness against application
Serial No. 77950871 in Opposition No. 91198027, and 2)
counterclaim of genericness against Registration No. 2781127
in Cancellation No. 92052698. Accordingly, IEL’s cross-
motion for summary judgment is granted, the counterclaim and
request for entry of a disclaimer against Registration No.
2781127 on the ground of genericness are dismissed, and the
opposition against application Serial No. 77950871 on the
ground of genericness is dismissed.9 With respect to
application Serial No. 77950871, Americareers may pursue the
alternative relief it seeks, in Opposition No. 91198027, in
the form of entry of a disclaimer.
SCHEDULE

9 To the extent that the Board has denied summary judgment, the
evidence submitted in connection with the cross-motions is of
record only for consideration of those motions. To be considered
at final hearing, any such evidence must be properly introduced
in evidence during the appropriate trial period. See, e.g.,
Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1438 n.14
(TTAB 2007); Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28
USPQ2d 1464 (TTAB 1993). Also, the fact that we have identified
certain issues in dispute should not be construed as a finding
that these are necessarily the only issues which remain for
trial.
Opposition No. 91198027; Cancellation No. 92052698
15

Proceedings are hereby resumed. Initial disclosure,
discovery, and trial dates are reset as follows:10
Initial Disclosures Due November 10, 2011
Expert Disclosures Due April 30, 2012
Discovery Closes May 30, 2012
Americareers/91198027 and IEL/92052698
(Plaintiff's) Pretrial Disclosures July 14, 2012

30-day testimony period for
Americareers/91198027 and IEL/92052698
(plaintiff's) testimony to close August 28, 2012

IEL/91198027 and Americareers/92052698
and Americareers/92052698 counterclaim
(Defendant/Counterclaim Plaintiff's)
Pretrial Disclosures September 12, 2012

30-day testimony period for
IEL/91198027 and Americareers/92052698
and Americareers/92052698 counterclaim
(defendant and plaintiff in the
counterclaim) to close October 27, 2012

IEL/92052698 counterclaim and
Americareers/91198027 and IEL/92052698
(Counterclaim Defendant's and
Plaintiff's) Rebuttal Disclosures Due November 11, 2012

30-day testimony period for
IEL/92052698 counterclaim (defendant in
the counterclaim), and 15-day rebuttal
testimony for Americareers/91198027 and
IEL/92052698 (plaintiff) to close December 26, 2012

Americareers/92052698 counterclaim
(Counterclaim Plaintiff's) Rebuttal
Disclosures Due January 10, 2013

15-day rebuttal period for
Americareers/92052698 counterclaim
(plaintiff in the counterclaim) to
close February 9, 2013

10 From this point forward, any motion or stipulation filed in
these consolidated proceedings to extend or suspend must include
a proposed schedule, as appropriate, in the manner as set forth
above.
Opposition No. 91198027; Cancellation No. 92052698
16

BRIEFS SHALL BE FILED AS FOLLOWS (See
Trademark Rule 2.128):

Brief for Americareers/91198027 and
IEL/92052698 (plaintiff) due April 10, 2013

Brief for IEL/91198027,
Americareers/92052698,
Americareers/92052698 counterclaim
(defendant and plaintiff in the
counterclaim) due May 10, 2013

Brief for IEL/92052698 counterclaim
(defendant in the counterclaim), and
reply brief, if any, for
Americareers/91198027 and IEL/92052698
(plaintiff) due June 9, 2013

Reply brief, if any, for
Americareers/92052698 counterclaim
(plaintiff in the counterclaim) due June 24, 2013

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after
completion of the taking of testimony. Trademark Rule
2.l25.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.