Risesmart, Inc.Download PDFTrademark Trial and Appeal BoardJul 23, 2010No. 77335677 (T.T.A.B. Jul. 23, 2010) Copy Citation Mailed: July 23, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Risesmart, Inc. ________ Serial No. 77335677 _______ Dyan House of Munck Carter, LLP for Risesmart, Inc. Dannean J. Hetzel, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney). _______ Before Zervas, Taylor and Wellington, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Risesmart, Inc. (applicant) seeks registration on the Principal Register of the mark RECRUITER CONCIERGE in standard characters for services recited as “Collection of employment information, including job descriptions, client information, and employee information, used to match potential employees with employers and jobs; job placement services; employment search and placement services for THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77335677 2 potential job candidates for corporate and executive recruiters; employment verification” in International Class 35.1 The term RECRUITER is disclaimed. The Trademark Examining Attorney has issued a final refusal to register applicant’s mark on the ground that the mark, as applied to the services recited in the application, so resembles the mark CAREER CONCIERGE, previously registered on the Principal Register for services recited in the registration as “Career placement; Executive search and placement services” in International Class 352 as to be likely to cause confusion, to cause mistake, or to deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d). The term CAREER is disclaimed. Applicant has appealed the final refusal. The appeal is fully briefed. After careful consideration of the evidence of record and the arguments of counsel, we affirm the refusal to register. Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue (the du Pont factors). See 1 Serial No. 77335677, filed on November 21, 2007. The application is based upon an allegation of a bona fide intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b). 2 Registration No. 3421768, issued on May 6, 2008. Serial No. 77335677 3 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We begin our likelihood of confusion analysis with the du Pont factor regarding the similarity or dissimilarity of the services.3 We initially note that the services are, in part, legally identical inasmuch as the application’s recitation of services reads, in part, “employment search and placement services for potential job candidates for corporate and executive recruiters” and the cited registration identifies “career placement...and executive search and placement services.” While there is a slight 3 The examining attorney correctly points out in her brief that applicant, in its appeal brief, did not accurately identify the services as those recited in the application. The examining attorney further notes that applicant has not moved to amend the recitation of services in the application and objects to the improper recitation of the relevant services. The objection is sustained to the extent that the relevant recitation of services for purposes of our analysis is that contained in the application, namely, the services recited in the first paragraph of this decision. Serial No. 77335677 4 difference in the wording, these services are essentially the same. Both applicant’s and registrant’s respective services encompass providing employers with the service of finding employees as well as assisting individuals in search of employment opportunities. The examining attorney also correctly asserts that applicant’s “collection of employment information” services are closely related to registrant’s services because they are “utilized in the career placement industry.” Brief, (unnumbered) p. 7. As explained, “consumers are likely to use applicant’s employment verification services and information services to verify potential candidates and then engage registrant’s placement services.” Id. While registrant’s services are identified as “career” and “executive” oriented services and, should this be construed as limited to white-collar employment opportunities, we further note that applicant’s “employment search and placement” services are also geared to positions “for corporate and executive recruiters.” Applicant’s other employment and job placement services are not so limited so we must consider these services broadly without reading any limitations into the types of employment or jobs. Serial No. 77335677 5 In view of the above, we conclude that applicant’s and registrant’s services are overlapping and closely related services. Furthermore, because the respective services, as identified in the application and in the cited registration, are legally identical in part, we must assume that the purchasers and channels of trade for such services would also be the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). In this case, “job placement” and “career placement services” would obviously be encountered by the same consumers. Additionally, employers who engage registrant for its “executive search” services may also seek to seek out applicant’s “employment verification” services. We acknowledge applicant’s position that the respective services are, in reality, very Serial No. 77335677 6 different and applicant has submitted evidence to try to prove this point. However, it is well settled that the question of likelihood of confusion must be determined based on an analysis of the services recited in applicant’s application vis-à-vis the services recited in the cited registration, rather than what the evidence shows the goods or services actually are. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). In view of the above, the du Pont factors involving the similarity of services, trade channels and classes of purchasers all weigh in favor of finding a likelihood of confusion. We turn now to the du Pont factor which requires us to determine the similarity or dissimilarity of the marks when viewed in their entireties in terms of appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc., supra. And, in view of our discussion of the services, we initially note that “[w]hen marks would appear on virtually identical goods or services, 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, 1701 Serial No. 77335677 7 (Fed. Cir. 1992). In addition, the test under this 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 goods offered under the respective marks is likely to result. The marks at issue must be considered in their entireties, but it is well-settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Applying these principles in the present case, we find the marks are overall very similar. First, the dominant feature in the commercial impressions of both applicant’s mark and the cited, registered mark is the term CONCIERGE. Both applicant’s and registrant’s marks are simply comprised of this term preceded by a generic or highly descriptive term, i.e., RECRUITER and CAREER. Although these terms appear first in each mark, they have been disclaimed because of the highly descriptive, if not generic, nature of the terms. As the examining attorney Serial No. 77335677 8 pointed out in her brief, disclaimed matter is often “less significant in creating the mark’s commercial impression.” In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). Particularly so here, where the terms “career” and “recruiter” are so highly descriptive; to wit, these very terms are used in the respective recitations to describe the services. See In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“With respect to ALE, the Board noted that the term is generic and that the registrant disclaimed it in its registration. Because ALE has nominal commercial significance, the Board properly accorded the term less weight in assessing the similarity of the marks under DuPont. As a generic term, ALE simply delineates a class of goods”). Ultimately, it is the term CONCIERGE that takes each mark out of the descriptive realm and assists consumers in referring to and recalling the marks without resorting only to generic or highly descriptive terms. Comparing the marks in their entireties, we find that they are much more similar than not. Even allowing for differences based on the initial descriptive or generic terms in the marks, we find that the term CONCIERGE dominates both marks in connotation and commercial Serial No. 77335677 9 impression. Accordingly, this du Pont factor also weighs in favor of a finding of likelihood of confusion. Applicant argues that “both marks have been used concurrently for the past couple of years without any confusion [and this factor] weighs in favor of applicant.” Brief, p. 9. However, we note this is a relatively short time and there are few, if any, facts upon which to conclude that there has been a significant opportunity for actual confusion to occur. In any event, the fact there is no evidence of actual confusion is not uncommon and is entitled to little weight, especially in ex parte cases where the registrant has not had an opportunity to present evidence of confusion (should it exist). Considering all of the evidence of record as it pertains to the du Pont factors, we conclude that when persons familiar with the registered mark CAREER CONCIERGE for “career placement; executive search and placement services, encounter the substantially similar RECRUITER CONCIERGE for legally identical services as well as other closely related services, that they are likely to believe that the sources of said services are in some way related or associated. As a result, there is likelihood of confusion. Serial No. 77335677 10 Decision: The refusal to register the mark under Section 2(d) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation