Oxford Global Resources, Inc.

Trademark Trial and Appeal Board

Sep 11, 2006

No. 76589185 (T.T.A.B. Sep. 11, 2006)

Mailed:
September 11, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Oxford Global Resources, Inc.
________

Serial Nos. 76589185 and 76589186
_______

Kevin M. Hayes of Klarquist Sparkman, LLP for Oxford Global
Resources, Inc.

Curtis W. French, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Zervas and Walsh, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Oxford Global Resources, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register OXFORD INTERNATIONAL, with INTERNATIONAL
disclaimed,1 and OXFORD & ASSOCIATES,2 with ASSOCIATES

1 Application Serial No. 76589186, filed May 23, 2005, and
asserting first use and first use in commerce as of December 31,
1988.
2 Application Serial No. 76589185, filed May 23, 2005, and
asserting first use and first use in commerce as of November 30,
1983.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser Nos. 76589185 and 76589186
2
disclaimed, both depicted in standard character form, and
both for the following services:3
Recruiting and placement services for
temporary employees, permanent
employees and consultants on a domestic
and international scale (Class 35).

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s marks, when used in connection with the
identified services, so resembles the previously registered
mark OXFORD LEGAL ASSOCIATES and design, shown below, with
the words LEGAL ASSOCIATES disclaimed, for “temporary
employment and job placement services,”4 that it is likely
to cause confusion or mistake or to deceive.

3 The applications also include “consulting services in the
field of information technology, computer hardware and software,
and mechanical, electrical and telecommunications engineering,
namely consulting services provided directly through consultants
and through strategic outsourcing” in Class 42. The Examining
Attorney specifically stated that the refusal of registration did
not apply to the applications in this class.
Ser Nos. 76589185 and 76589186
3
The appeals have been fully briefed. Applicant had
requested oral hearings but then withdrew the requests.
Because the appeals present common issues and
evidence, we have decided both in this single opinion.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We first consider the services. Applicant has
identified the services in both its applications as
“recruiting and placement services for temporary employees,
permanent employees and consultants on a domestic and
international scale.” The registrant’s services are

4 Registration No. 2151799, issued April 21, 1998; Section 8 &
15 affidavits accepted and acknowledged.
Ser Nos. 76589185 and 76589186
4
identified as “temporary employment and job placement
services.” Applicant’s identified services are in part
identical to the registrant’s identified services:
registrant’s temporary employment and job placement
services would encompass placement services for temporary
employees and permanent employees and consultants.
Further, because there are no limitations in the cited
registration, the identification would include placement
services on a domestic and international scale. Moreover,
applicant’s recruiting services for permanent and temporary
employees are closely related to employment and job
placement services. Thus, the factor of the similarity of
the services favors a finding of likelihood of confusion.
Because the services are legally identical, they must
be deemed to be offered in the same channels of trade, to
the same classes of consumers. This factor, too, favors a
finding of likelihood of confusion.
This brings us to a consideration of applicant’s marks
vis-à-vis the mark in the cited registration. When marks
would appear on virtually identical goods or services, as
they do here, the degree of similarity necessary to support
a conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). Applicant’s marks are
Ser Nos. 76589185 and 76589186
5
OXFORD & ASSOCIATES and OXFORD INTERNATIONAL; the cited
registration is for OXFORD LEGAL ASSOCIATES and design. It
is a well-established principle that, in articulating
reasons for reaching a conclusion on the issue of
likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The elements “&
ASSOCIATES” and “INTERNATIONAL” in applicant’s mark, which
applicant has disclaimed, are descriptive of applicant’s
services. Thus, consumers will look to the word OXFORD as
the source-indicating portion of these marks. As for the
registered mark, the words LEGAL ASSOCIATES are also
descriptive and have been disclaimed. They are also
depicted in much smaller letters, and therefore have a
minimal visual presence. Although the registered mark has
a noticeable design element, when a mark comprises both a
word and a design the word is normally accorded greater
weight because it would be used by purchasers to request
the goods or services. In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987). That is the case here, since
consumers may well discuss or recommend a provider of
Ser Nos. 76589185 and 76589186
6
employment services orally. Accordingly, while we have
compared the marks in their entireties, for the reasons
given above we have accorded greater weight to the word
OXFORD in each.
Although there are specific differences between
applicant’s marks and the registered mark, the differences
are not sufficient to distinguish the marks. Rather,
consumers are likely to regard these various OXFORD marks
for identical and closely related services as mere
variations of each other, with all of them indicating
services emanating from a single source. Thus, consumers
may view OXFORD LEGAL ASSOCIATES and design as designating
employment services for the legal profession and regard
OXFORD INTERNATIONAL as a division that deals with
international placements and/or employment in companies
that concentrate on international work. Moreover, because
OXFORD & ASSOCIATES includes the same word, ASSOCIATES,
used in much the same way as ASSOCIATES is used in OXFORD
LEGAL ASSOCIATES, consumers are likely to view OXFORD &
ASSOCIATES as the division that handles non-legal
placements, while OXFORD LEGAL ASSOCIATES and design deals
with legal placements. Thus, although a direct comparison
between applicant’s marks and the registered mark shows
specific differences, which we have taken into account,
Ser Nos. 76589185 and 76589186
7
when the marks are compared in their entireties, overall
they are similar in appearance, pronunciation, connotation
and commercial impression.5 We also point out that, under
actual marketing conditions, consumers do not necessarily
have the luxury of making side-by-side comparisons between
marks, and must rely upon their imperfect recollections.
Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255
(TTAB 1980).
In its appeal brief applicant has made the argument
that the term OXFORD is weak, and that the commonality of
this term in its marks and the registered mark is not
likely to cause confusion. In support of this argument,
applicant pointed to a listing of third-party registrations
(consisting of the mark, registration number, and
indication that the registration is “live”) for marks
comprising or containing the word OXFORD which was taken
from the USPTO TESS database. Applicant had submitted this
list in its response to the first Office action in each
application, and the Examining Attorney advised applicant
that such a listing was insufficient to make the

5 While in its appeal brief applicant argues that the non-Oxford
elements in the marks cause the marks to have different
connotations, in its reply brief applicant also argues that the
word OXFORD has a different connotation in registrant’s mark from
the connotation it has in applicant’s marks. We address that
argument infra.

Ser Nos. 76589185 and 76589186
8
registrations of record. Nonetheless, applicant never
submitted copies of the actual registration, and merely
submitted another copy of this same listing with its brief
in each appeal. In his brief, the Examining Attorney
maintained his objection to the listing. Applicant never
addressed this objection in its reply brief, nor did it
reiterate its claim that the cited registration is weak, so
it appears that applicant has conceded that the objection
is well taken. In any event, we agree with the Examining
Attorney that submitting a mere listing of third-party
marks and registration numbers is insufficient to make such
registrations of record. See TBMP §1208.02 (2d ed. rev.
2004), and cases cited therein.6
Applicant also asserts that, as used in the cited
registration, OXFORD is a geographically suggestive term.
It bases this statement on information taken from a map of
Pennsylvania, which it asks us to judicially notice. In
his brief, the Examining Attorney has stated that he has no

6 Even if the listing of third-party marks were considered, they
would not change the result herein. The listing does not
indicate the goods or services of the various registrations, such
that we could view OXFORD as having a significance for employment
services. Applicant itself states that none of the registrations
is for services in Class 35. Moreover, the evidence submitted by
the Examining Attorney in the final Office action, of a search he
conducted of USPTO records on June 23, 2005, shows that there are
no third-party registrations for OXFORD marks for such services
or services related thereto.

Ser Nos. 76589185 and 76589186
9
objection to our consideration of this evidence, although
he has asked us to also consider evidence taken from
wikipedia.org and from the official website of the Oxford,
Pennsylvania Chamber of Commerce as rebuttal to the
evidence submitted by applicant with its brief. In view of
these circumstances, applicant’s evidence will be treated
as having been stipulated into the record, and we also
grant the Examining Attorney’s request. See TBMP 1207.03.
We also note that applicant has discussed this evidence in
its reply brief.
The map submitted by applicant indicates that there is
a town named Oxford located in southeastern Pennsylvania,
very close to the Pennsylvania/Maryland border and within
approximately 20 miles of Wilmington, Delaware. The
website evidence from the Oxford Chamber of Commerce
reports that, according to the 2000 Census, the population
of Oxford Borough (which is the town of Oxford) has 4315
residents. The website also states that “The Oxford area
is an area of rich farmland and there is a definite Amish
presence, which adds to the charm of this community.” In
applicant’s main brief, it contended that, because Oxford,
Pennsylvania is “less than 60 miles from the Fort
Washington, Pennsylvania address listed for the owner of
the cited registration ... OXFORD is a geographically
Ser Nos. 76589185 and 76589186
10
suggestive term in the cited registration.” Brief, p. 8,
Serial No. 76589185; pp. 7-8, Serial No. 76589186. In its
reply brief, applicant appears to have changed its argument
somewhat, asserting that as used in registrant’s mark,
OXFORD would have the connotation of this town, while such
a meaning would not apply to applicant’s marks.
We are not persuaded by either of these arguments.
With respect to the connotation of the term in the
registered mark, the fact that there is a small town
located 60 miles away from the registrant’s address of
record does not mean that consumers would make a geographic
association between this town and the registrant’s
services. This is not a situation where a company is
located in a suburb of a major city, such that the name of
the city would be viewed as the geographic location of the
company. There is no evidence that Fort Washington,
Pennsylvania has any relationship whatsoever with Oxford,
Pennsylvania, or that consumers would make any association
between the registrant’s address in Fort Washington and the
word OXFORD in its mark. Thus, the fact that there is a
town in Pennsylvania called Oxford does not give the
registrant’s mark a connotation different from the
applicant’s marks.
Ser Nos. 76589185 and 76589186
11
As for applicant’s argument that OXFORD is a
geographically suggestive term, and therefore weak, again
the fact that Oxford is the name of a small town in
Pennsylvania is insufficient to demonstrate that OXFORD, as
used in the registrant’s mark, has this geographic
significance. The word “oxford” has a variety of meanings,
including that of the famous university in England. In
view thereof, we do not consider OXFORD to be a
geographically suggestive term, such that the cited
registration should be entitled to a limited scope of
protection. Based on the evidence that is of record, we
must consider the cited registration to be a strong mark
for the identified services.7 The non-Oxford elements in
applicant’s marks and in the registered mark are not
sufficient to distinguish applicant’s marks from the cited
mark. The factors of the similarity of the marks, and the
strength of the registered mark, favor a finding of
likelihood of confusion.
Applicant has argued that consumer sophistication
should play a strong role in the likelihood of confusion
analysis. Even if we assume that companies that use

7 In view thereof, the case cited by applicant, In re Texas
Trading & Milling Corp., 178 USPQ 319 (TTAB 1978) is
distinguishable. In that case, the marks TEXAS BEST and TEXAS
PRIDE were both found to be highly suggestive, and therefore the
registered mark was accorded only a narrow scope of protection.
Ser Nos. 76589185 and 76589186
12
employment agencies make their choices with care,
applicant’s marks are so similar to the registrant’s mark
that this would not avoid the likelihood of confusion.
Instead, as discussed above, even careful consumers are
likely to believe that applicant’s marks and the registered
mark are variations of each other, with all three
indicating a single source for the services. Moreover, we
do not see how the asserted sophistication of these
consumers would avoid confusion. Applicant’s services and
those of the registrant are for the most part identical and
otherwise closely related. The registrant’s mark, as far
as this record is concerned, is a strong mark. In these
circumstances, even sophisticated consumers are likely to
believe that when applicant’s marks, which are so similar
to the registrant’s, are used in connection with such
services, the services come from a single source.
Moreover, although applicant presumably views its customers
as employees of personnel offices or human relations
specialists when it asserts that they are sophisticated,
applicant’s services and those of the registrant would also
be rendered to the employees that applicant and registrant
recruit and place. Such consumers would not have a
particular sophistication in the employment agency field.
Rather, someone looking for a job might hear from a friend
Ser Nos. 76589185 and 76589186
13
of a good experience with OXFORD LEGAL ASSOCIATES. Upon
being contacted by or seeing an advertisement from OXFORD &
ASSOCIATES or OXFORD INTERNATIONAL, that person might,
because of the fallibility of memory, think that this was
the same name that had been mentioned by the friend, or
think that these marks are variations of OXFORD LEGAL
SERVICES. Accordingly, we cannot find that this factor of
the conditions under which and buyers to whom sales are
made favors applicant’s position.
Finally, applicant asserts that there have been no
incidents of actual confusion. In support of this
argument, applicant relies on the declaration of its
president, Michael J. McGowan. Mr. McGowan states that his
company has used the trademarks in issue since prior to
August 15, 1995, the claimed date of first use in the cited
registration, and that he is not aware of any instances of
actual confusion. However, although applicant has stated
the length of time it has used its marks, it has not
provided any information about the extent of such use,
including whether the mark has been used or advertised in
the same market area as the registrant’s mark. For that
matter, we have no information whatsoever about the
registrant’s activities, such as the area in which the
registrant renders its services, or the extent of its
Ser Nos. 76589185 and 76589186
14
business activity or its advertising. Nor do we have any
information from the registrant as to its experience with
actual confusion. As the Court stated in In re Kangaroos
U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984), quoted by the
Examining Attorney in his brief (citations omitted):
[A]pplicant's assertion that it is
unaware of any actual confusion
occurring as a result of the
contemporaneous use of the marks of
applicant and registrant is of little
probative value in an ex parte
proceeding such as this where we have
no evidence pertaining to the nature
and extent of the use by applicant and
registrant (and thus cannot ascertain
whether there has been ample
opportunity for confusion to arise, if
it were going to); and the registrant
has no chance to be heard from (at
least in the absence of a consent
agreement, which applicant has not
submitted in this case). Moreover, the
test under Section 2(d) of the Statute
is not actual confusion but likelihood
of confusion.

Thus, the fact that applicant has not experienced any
actual confusion is entitled to little weight in our
analysis of the issue of likelihood of confusion.8
Having considered the du Pont factors on which there
is evidence, we find that applicant’s use of the marks
OXFORD & ASSOCIATES and OXFORD INTERNATIONAL for its

8 Cases in which lack of evidence of actual confusion have been
found persuasive generally involve inter partes proceedings, in
which the experience of both parties is of record.
Ser Nos. 76589185 and 76589186
15
identified services in Class 35 is likely to cause
confusion with the registration for OXFORD LEGAL ASSOCIATES
and design.
Decision: The refusals of registration of OXFORD &
ASSOCIATES and OXFORD INTERNATIONAL with respect to the
services in Class 35 are affirmed. However, because the
Examining Attorney did not refuse registration with respect
to the services in Class 42, after this appeal is
terminated the applications will go forward to publication
for the services in Class 42.