Paycom Payroll, L.L.C.

Trademark Trial and Appeal Board

Sep 28, 2012

No. 77915392 (T.T.A.B. Sep. 28, 2012)

Mailed: September 28, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Paycom Payroll, L.L.C.
___________

Serial No. 77915392
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Jerry J. Dunlap II for applicant.

Shaila E. Lewis, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
____________

Before Holtzman, Kuhlke, and Shaw, Administrative Trademark
Judges.

Opinion by Shaw, Administrative Trademark Judge:

Paycom Payroll, L.L.C. has filed an application to
register the mark PAYCOM, in standard characters, on the
Principal Register for services identified as:
performing employee benefits administration,
namely, calculating, collecting and depositing
payroll taxes for federal, state and local
jurisdictions, preparation and submission of
payroll tax returns and compliance reports,
employee pension and retirement funds
administration, employee health insurance
administration, namely preparing and transmission
of initial notices and election notices to
applicable employees and respond to employee
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77915392

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questions regarding health insurance
administration and employee flexible spending
accounts administration for others, in
International Class 35.1

Applicant claims ownership of Registration No.
2318824 for the mark PAYCOM for “payroll services,
namely, payroll preparation,” in International Class
35 and “payroll services, namely, payroll tax debting
[sic] services,” in International Class 36.2
Registration has been finally refused pursuant to
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the
ground that applicant’s mark so resembles the mark PAYCOMP,
in standard characters, for “workers compensation insurance
administration,” in International Class 36, as to be likely
to cause confusion.3 The case is fully briefed.
Preliminary Issue
When the refusal to register was made final, applicant
appealed and, in due course, filed its appeal brief. The
examining attorney then requested that the Board remand the
case to allow her to issue a supplemental Office action to
attach evidence that she states was inadvertently omitted

1 Application Serial No. 77915392, filed January 19, 2010,
pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. §
1051(a), alleging a date of first use of the mark anywhere and in
commerce of December 31, 2007.
2 Issued on February 15, 2000 and alleging a date of first use in
commerce as early as November 1, 1998; Section 8 and 15
affidavits accepted; renewed.
3 Registration No. 3651893, issued on July 7, 2009 and alleging a
date of first use in commerce as early as November 13, 2007.
Serial No. 77915392

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from the final Office action. The request for a remand was
granted, a supplemental Office action with the omitted
evidence was issued, and the case was returned to the Board
for further action. Applicant then filed a supplemental
brief, the examining attorney filed her brief, and the
applicant filed a reply brief.
Applicant objects to the introduction of the omitted
evidence on the grounds that applicant was denied “the
opportunity . . . to respond to the new evidence submitted
by the examiner.” Applicant’s Supplemental Br. at 3. We
disagree. “In general, the only proper response to a final
action is a notice of appeal to the Board, a petition to
the Director if permitted under 37 CFR § 2.63(b)(2), or
compliance with an outstanding requirement. Trademark
Manual of Examining Procedure section 715.01 (8th ed. 2011).
After the supplemental Office action issued and the case
was returned to the Board, applicant was invited to file a
supplemental brief to address the omitted evidence. Thus,
applicant was in the same position after proceedings
resumed as it was after the final action originally issued.
Moreover, if the applicant wished to respond to the omitted
evidence by submitting evidence of its own, it too could
have filed a request to remand. See Trademark Trial and
Appeal Board Manual of Procedure section 1207.02 (3d ed.
Serial No. 77915392

4
2012). The request to exclude the evidence submitted with
the supplemental Office action is denied and the evidence
has been considered for whatever probative value it may
have.
Likelihood of Confusion
Our determination under Section 2(d) 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 E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See
also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005); In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); and
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997). In considering the evidence
of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods [and services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209, 1210
(TTAB 1999) and the cases cited therein.
Serial No. 77915392

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A. The Similarity or Dissimilarity and Nature of the
Services

We turn first to the relationship between the
services, keeping in mind that the services must be
considered as they are described in the application and
cited registrations, rather than in light of what the
services may actually be. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1987).
We find that the respective services are similar and
closely related. Applicant is seeking to register its mark
for services comprising, inter alia, “employee health
insurance administration.” Registrant’s services are
“workers compensation insurance administration.” Both
parties are offering administration services in the field
of health insurance for employees. The three web pages
submitted by the examining attorney show that workers’
compensation insurance is a type of insurance that is
closely related to, if not subsumed within, applicant’s
field of “health insurance.” For example, the anthem.com
web site shows that Anthem/Blue Cross provides “Small Group
health and workers’ compensation insurance in one
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convenient affordable program.” Examining Attorney’s
Office Action of April 26, 2010. Applicant does not
seriously argue that the fields are not closely related and
stated that “it entered the field of workers compensation
admnistration [sic] at least as early as 2007 as a natural
expansion of its market.” Applicant’s Response of October
15, 2010.
This du Pont factor weighs in favor of finding a
likelihood of confusion.
B. The Similarity or Dissimilarity of the Marks in
Their Entireties

We turn then to a comparison of the marks. We must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression to determine
the similarity or dissimilarity between them. Palm Bay
Imports, 73 USPQ2d at 1691. The test, under the first du
Pont factor, is not whether the marks can be distinguished
when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to
the source of the services offered under the respective
marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
Serial No. 77915392

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See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Applicant’s mark consists of the term PAYCOM in
standard characters. Registrant’s mark consists of the
term PAYCOMP, also in standard characters. There is no
question that both marks sound similar when spoken. The
only difference between the marks is that applicant’s mark
ends with the term COM while the registrant’s mark ends
with the term COMP.
The examining attorney argues that both marks “have
the same connotation because they each combine the word
‘PAY’ with a shortened version of the word ‘COMPENSTATION,’
[sic] which conveys to consumers that the services involve
the payment of compensation.” Examining Attorney’s Br. at
5 (emphasis in original). For its part, the applicant
argues that the examining attorney has not shown that
“consumers encountering the marks are likely to be
confused.” Reply Br. at 1.
We find no evidentiary support for the examining
attorney’s argument that the marks have the same
connotation because COM in applicant’s mark is a shortened
version of “compensation.” Neither party introduced any
evidence regarding the meaning of the marks or their
Serial No. 77915392

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similarity or dissimilarity; however, we take judicial
notice of the following relevant dictionary definitions.4
COM 3 : commercial organization5
COMP (abbreviation) 2 a (2) : payment to unemployed or
injured workers or their dependents6

Based on these definitions, we find it more likely that
consumers would view PAYCOM as a combination of PAY and a
reference to a “commercial organization.” Conversely, we
find it likely that consumers would view PAYCOMP as a
combination of PAY and “compensation,” especially in light
of registrant’s services relating to workers compensation
insurance. Thus, we find that while the marks may sound
similar, their connotations and commercial impressions
convey different meanings to prospective consumers.
This du Pont factor slightly favors applicant.
C. Purchaser Sophistication
We turn next to the du Pont factor considering the
conditions of sale and the sophistication of the
purchasers. Applicant argues that both its consumers and
registrant’s consumers are sophisticated, thus obviating

4 The Board may take judicial notice of dictionary evidence.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
5 http://www.merriam-webster.com/dictionary/com (online ed.
2012).
6 http://www.merriam-webster.com/dictionary/compensation (online
ed. 2012).
Serial No. 77915392

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any likelihood of confusion. Applicant’s Supplemental Br.
at 6. Applicant’s specimen of use states that it offers
its services to businesses seeking “a more efficient and
less expensive way to manage key payroll and HR
responsibilities.” Applicant’s Specimen of Use, January
19, 2010. While we have no evidence regarding the cost of
applicant’s services, or the way in which they are
marketed, it is clear that applicant’s services cannot be
considered an impulse purchase inasmuch as applicant’s
services are marketed to businesses large enough to have
burdensome payroll issues. We find that it is more likely
that applicant’s services would only be purchased after
careful consideration. This more careful consideration by
prospective consumers tends to minimize any likelihood of
confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996,
224 USPQ 969 (Fed. Cir. 1985) (concluding that, because
only sophisticated purchasers exercising great care would
purchase the relevant goods, there would be no likelihood
of confusion merely because of the similarity between the
marks NARCO and NARKOMED).
This du Pont factor favors applicant.
Given the particular balance of du Pont factors in
this case, we find that the Office has not proved that
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applicant’s PAYCOM mark for the identified services is
likely to cause confusion with registrant’s PAYCOMP mark.
Decision: The refusal under Section 2(d) of the
Trademark Act is reversed.