Risesmart, Inc.

Trademark Trial and Appeal Board

Jul 23, 2010

No. 77335677 (T.T.A.B. Jul. 23, 2010)

Mailed:
July 23, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Risesmart, Inc.
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Serial No. 77335677
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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
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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
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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
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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
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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
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(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
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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
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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.
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Decision: The refusal to register the mark under
Section 2(d) of the Trademark Act is affirmed.