IN RE F.B.P. INS. SERVS., INC., 77724431 (TTAB 9-6-2011)
Serial No. 77724431United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: September 6, 2011Page 1
Sheila M. Riley of Casas Riley Simonian LLP for F.B.P. Insurance Services, Inc.
William T. Verhosek, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney).
Before Bucher, Cataldo and Shaw, Administrative Trademark Judges.
Opinion by Cataldo, Administrative Trademark Judge:
F.B.P. Insurance Services, Inc. has filed an application on the Principal Register to register in standard characters the mark PEOPLELINK for “custom design, implementation and administration of employee benefits and compensation plans for others; consultation services in thePage 2
field of employee benefits and compensation plans” in International Class 36.[fn1]
Registration has been finally refused pursuant to Trademark Act ? 2(d), 15 U.S.C. ? 1052(d), on the ground that applicant’s mark so resembles the following marks, both owned by the same entity: PEOPLELINK in typed or standard characters for “consultation (business and personnel management)” in International Class 35[fn2]; and the mark displayed below
for “employee staffing and placement services” in International Class 35[fn3], as to be likely, if used on or in connection with the identified services, to cause confusion, to cause mistake, or to deceive. Applicant and the examining attorney have filed main briefs on the issue under appeal. In addition, applicant filed a reply brief.
Likelihood of Confusion
Our determination under Trademark Act ? 2(d) is based upon an analysis of all of the probative facts in evidencePage 3
that are relevant to the factors bearing on the likelihood of confusion issue. See In re E.I. du Pont de Nemours andCo., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See alsoPalm Bay Imports, Inc. v. Veuve Clicquot Ponsardin MaisonFondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc.,315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re DixieRestaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (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 [or services] and differences in the marks.” Federated Foods, Inc. v. FortHoward Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999), and cases cited therein.
We review the relevant du Pont factors as they apply to this case.
The Marks
We turn to the similarities or dissimilarities between applicant’s mark and those in the cited registrations. In coming to our determination, we must compare the marks inPage 4
their entireties as to appearance, sound, connotation and commercial impression. See Palm Bay Imports, 73 USPQ2d at 1691-2.
Registration No. 2008114
Turning first to Registration No. 2008114, we note that the marks in this registration and the involved application are identical in every respect. The fact that the marks are identical results in this factor strongly supporting the examining attorney’s position. In re Shell Oil Co.,992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“Without a doubt the word portion of the two marks are identical, have the same connotation, and give the same commercial impression. The identity of the words, connotation, and commercial impression weighs heavily against the applicant”).
Furthermore, “even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to an assumption that there is a common source.” Id.
at 1689. See also Amcor, Inc. v. Amcor Industries,Inc., 210 USPQ 70, 78 (TTAB 1981) (When both parties are using or intend to use the identical designation, “the relationship between the goods on which the parties use their marks need not be as great or as close as in the situation where the marks are not identicalPage 5
or strikingly similar”); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).
Registration No. 2711721
Next we turn to the mark
in Registration No. 2711721. To state the obvious, the literal portion of this mark is nearly identical to applicant’s PEOPLELINK mark in appearance and identical in sound and connotation. The marks differ only in the addition of the design of a puzzle piece between the words PEOPLE and LINK in registrant’s mark. As for the 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 DataCorp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In registrant’s mark in Registration No. 2711721, the design fills the space between the terms PEOPLE and LINK. As a result, it contributes less to the overall impression of the mark than the wording. This further is the case inasmuch as when aPage 6
mark comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. In re AppetitoProvisions Co., 3 USPQ2d 1553 (TTAB 1987). For these reasons, we consider the wording to be the dominant feature of the registered mark in Registration No. 2711721. As discussed above, this wording is nearly identical to that in applicant’s mark.
We are not persuaded by applicant’s conclusory statement that the connotation of applicant’s mark “is somewhat vague, but suggests one will get a superior level of comprehensive administration and care for employee benefits”[fn4] whereas the connotation of registrant’s marks “is that one is offering a single component of personnel assistance for staffing needs ? a ‘piece of the puzzle.'”[fn5] First, the mark in Registration No. 2008114 is identical to applicant’s PEOPLELINK mark, and applicant does not explain how identical marks will have different connotations as applied to their respective services. Rather, both marks appear to suggest that the services identified thereby will link people with their needs or will link a user with the people he or she seeks.Page 7
The addition of the puzzle piece design in Registration No. 2711721 does not appear to significantly change the connotation. To the contrary, the design unites the component terms in the mark in the nature of a hyphen, thereby uniting them and reinforcing their meaning.
In light of the foregoing, we find that applicant’s mark is identical to the mark in cited Registration No. 2008114 and highly similar to the mark in cited Registration No. 2711721 in appearance, sound, connotation, and overall commercial impression.
The Services
Turning to our consideration of the recited services, we must determine whether consumers are likely to mistakenly believe that they emanate from a common source. It is not necessary that the services at issue be similar or competitive, or even that they move in the same channels of trade, to support a holding of likelihood of confusion. It is sufficient instead that the respective services are related in some manner, and/or that the conditions and activities surrounding the marketing of the services are such that they would or could be encountered by the same persons under circumstances that could, as a result of similarity of the marks, give rise to the mistaken belief that they originate from the same producer. See In rePage 8International Telephone Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Registration No. 2008114
Registrant’s services in this cited registration are “consultation (business and personnel management).” As recited, these services are related to applicant’s “custom design, implementation and administration of employee benefits and compensation plans for others; consultation services in the field of employee benefits and compensation plans” inasmuch as both provide consultation directed toward personnel/employees. Further, and as discussed above, because applicant uses a mark that is identical to the PEOPLELINK mark in this cited registration, the relationship between the services need not be as close to support a likelihood of confusion. See Amcor,Inc. v. Amcor Industries, Inc., 210 USPQ at 78; and Inre Opus One Inc., 60 USPQ2d 1814-15.
Nonetheless, the examining attorney has made of record use-based, third-party registrations which show that various entities have adopted a single mark for services of the sort that are identified in both applicant’s application and cited Registration No. 2008114. The following examples are illustrative:Page 9
Registration No. 2632886 for, inter alia, “implementation and administration of employee benefit and workers compensation plans, . . . personnel management and consultation services in the fields of employee benefits . . .”;
Registration No. 2639082 for, inter alia, “business management and business consulting services in the fields of . . . staffing services, employee compensation, business management in the fields of employee benefits, . . . consultation services in the field of employee benefits”; and
Registration No. 3349594 for, inter alia”, . . . personnel management consultation, . . . administration of employee benefit, compensation, healthcare and welfare benefit plans and workers compensation plans. . . .”
Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re AlbertTrostel Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). In this case, the evidence of record supports a finding that the same marks are used to identify services of a kind recited in the involved application and in Registration No. 2008114.
Registration No. 2711721
Registrant’s recited services in its cited Registration No. 2711721 are “employment staffing and placement services.” Again, these services appear to be related on their face to applicant’s “custom design,Page 10
implementation and administration of employee benefits and compensation plans for others; consultation services in the field of employee benefits and compensation plans” inasmuch as they provide, respectively, the staffing and placement of employees and the provision of compensation and benefits therefor.
In addition, the examining attorney has made of record use-based, third-party registrations which show that various entities have adopted a single mark for services of the sort that are identified in both applicant’s application and cited Registration No. 2711721. The following examples are illustrative:
Registration No. 2639082 for, inter alia”, . . . staffing services, . . . consulting services in the field of employee benefits . . .”;
Registration No. 3245843 for, inter alia,” . . . transitional work programs, namely, employee placement services, . . . administration of employee benefit plans, namely, management of medical leave of absence and risk management services”;
Registration No. 2939311 for, inter alia, “temporary staffing and permanent placement services for others, administration of workers compensation programs”; and
Registration No. 3039318 for, inter alia,” . . . employee staffing services, . . . employee recruiting, placement, references, hiring, orientation and termination services, . . . administration of employee benefit plans.”Page 11
As discussed above, third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel Sons Co., 29 USPQ2d at 1786. In this case, the evidence of record supports a finding that the same marks are used to identify services of a kind recited in the involved application and cited Registration No. 2711721.
Thus, based upon the recitations thereof and the evidence of record, we find that applicant’s services are related to the services in both of the cited registrations and, in addition, may be encountered under the same mark.
Channels of Trade
Neither applicant’s services nor those of registrant recites any restrictions as to the channels of trade in which they are distributed or the class of purchasers to whom they are marketed. It is settled that in making our determination regarding the channels of trade, we must look to the services as identified in the involved application and cited registrations. See Octocom Systems, Inc. v. HoustonComputers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); and Paula Payne Products v. JohnsonPublishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPAPage 12
1973). Because there are no restrictions recited either in the involved application or cited registrations as to channels of trade, both applicant’s and registrant’s services are presumed to move in all normal channels of trade therefor and be available to all normal classes of potential consumers.See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Because applicant’s services have been found to be related to the services in both cited registrations, the services are presumed to move in the same channels of trade and encountered by the same classes of purchasers.
Conditions of Sale
Applicant contends that purchasers of the services recited its application and the cited registrations are sophisticated. Even assuming arguendo that purchases of such services would involve a deliberate decision, this does not mean that the purchasers are immune from confusion as to the origin of the respective services, especially when, as we view the present case, the identical and highly similar nature of the marks and the relatedness of the services outweigh any sophisticated purchasing decision. See HRL Associates, Inc.v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),aff’d, Weiss Associates, Inc. v. HRL Associates, Inc.,902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweighPage 13
sophisticated purchasers, careful purchasing decision, and expensive goods). See also In re Research TradingCorp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers . . . are not infallible.”).
Number of Similar Marks
Applicant contends that
according to a search of the U.S. Patent and Trademark Office’s TESS database for the marks containing both “PEOPLE” and “LINK”, Applicant’s mark and the Registrant [sic] Mark share the term with at least 26 other active marks, of which 7 are active and 4 are registered.[fn6]
In support of this contention, applicant made of record with its January 22, 2010 response to the examining attorney’s first Office action a printed summary of its search of the Trademark Electronic Search System (TESS) for marks containing the terms PEOPLE and LINK. Because the examining attorney did not advise applicant that such listing is insufficient to make the registrations of record at a point when the applicant could have corrected the error, the examining attorney is deemed to have stipulated the registrations into the record. See
TBMP ? 1208.02 (3d ed. 2011) and authorities cited therein. Nonetheless, wePage 14
will only consider the information submitted by applicant with the TESS summary. See Id. Inasmuch as the summary submitted by applicant in this case only lists (1) the marks; (2) whether at the time of the search such marks were the subject of applications or registrations and (3) their status as live or dead, this evidence possesses no probative value regarding the strength of the marks in the cited registrations.Id. Simply put, without any information regarding the goods or services identified by the marks in question, we cannot evaluate the relative strength of the cited marks based upon the provided TESS summary.
Furthermore, and as discussed by applicant, only seven of the twenty-six marks are live. Expired registrations and pending and abandoned applications are of no value. SeeAction Temporary Services Inc. v. Labor Force Inc.,870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled registration does not provide constructive notice of anything”), and the applications show only that they have been filed. See Interpayment Services Ltd. v. Docters Thiede, 66 USPQ2d 1463 (TTAB 2003).
Applicant also made of record TESS copies of these seven live marks with its January 22, 2010 communication. They include the two registrations cited herein,Page 15
applicant’s involved application, two pending applications filed by the same third party, and the following third-party registrations:
Registration No. 1560646 for the mark HUMANWARE . . . THE LINK BETWEEN TECHNOLOGY AND PEOPLE for “equipment for use by blind and visually impaired people namely, word and information processors”; and
Registration No. 2499467 for the mark PEOPLE LINK for “educational services, namely, providing seminars, leadership classes and conferences in the fields of missionary services and English language instruction; recreational camps and retreats; Christian evangelistic, missionary, and ministerial services.”
The involved application and cited registrations are discussedinfra. As noted above, the third-party applications show only that they have been filed, and otherwise possess no probative value. See Interpayment Services Ltd. v. Docters Thiede, 66 USPQ2d 1467. In addition, applicant’s evidence of third-party registrations is entitled to limited probative value. The registrations are not evidence of use of the marks shown therein. Thus, they are not proof that consumers are familiar with such marks so as to be accustomed to the existence of the same or similar marks in the marketplace. See Smith Bros. Mfg. Co. v. Stone Mfg.Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973); andRichardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). Moreover, the probative value ofPage 16
these third-party registrations is diminished by virtue of the fact that the marks cover goods and services which are not as closely related to the services identified in the cited registrations as applicant’s services. See SpoonsRestaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1740 (TTAB 1991), aff’d unpub., (Appeal No. 92-1086, Fed. Cir., June 5, 1992). In any event, even if we were to find, based on applicant’s evidence, that registrant’s marks are weak and entitled to a narrow scope of protection, the scope is still broad enough to prevent the registration of an identical or highly similar mark for related services. See In reFarah Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277, 278 (CCPA 1971).
Actual Confusion
The last du Pont factor discussed by applicant and the examining attorney is that of the lack of instances of actual confusion. Applicant notes in that regard that the mark and services in its involved application are identical to those in its prior Registration No. 2533576, which “was cancelled following Applicant’s inadvertent failure to file a Combined Declaration of Use and Incontestability underPage 17
Section 8 15.”[fn7] Applicant asserts that its prior registration coexisted with both of the registrations cited herein for over five years, and that “the substance of [its instant application] withstood P.T.O. and public scrutiny previously, and Examining Attorney cites no changed circumstances since registration of the ‘285 Mark in 2002.”[fn8]
We do not accord significant weight to applicant’s contention, unsupported by any evidence, that there have been no instances of actual confusion despite previous use of the respective marks for five years. The Federal Circuit has addressed the question of the weight to be given to an assertion of no actual confusion by an applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we agree with the Board that Majestic’s uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of appellant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carriesPage 18
little weight, [citation omitted], especially in an ex parte context.
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
Accordingly, while examples of actual confusion may point toward a finding of a likelihood of confusion, an absence of such evidence is not as compelling in support of a finding of no likelihood of confusion. Thus, we cannot conclude from the lack of instances of actual confusion that confusion is not likely to occur.
Moreover, the test under Section 2(d) is not actual confusion but likelihood of confusion. See In re Majestic DistillingCo. 65 USPQ2d 1205. See also In re KangaroosU.S.A., 223 USPQ 1025 (TTAB 1984); and In re GeneralMotors Corp., 23 USPQ2d 1465 (TTAB 1992).
We also point out that we must decide each case on its own merits. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). See also In reKent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); andIn re Wilson, 57 USPQ2d 1863 (TTAB 2001). Herein, the applicant’s mark is identical to the mark in one of the cited registrations and highly similar to the other, and the record clearly supports our finding that the services are related. Thus, while we are not unsympathetic toPage 19
applicant’s position, the facts of this case support the examining attorney’s present refusal to register.
Finally, to the extent that any of the points raised by applicant raise a doubt about likelihood of confusion, that doubt is required to be resolved in favor of the prior registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In reMartin’s Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: Based upon the foregoing, and in particular, considering the identity and similarity between applicant’s mark and the marks in the cited registrations, as well as the relationship between the services recited therein, the refusal to register under Trademark Act ? 2(d) is affirmed both as to the mark in Registration No. 2008114 and as to the mark in Registration No. 2711721.
[fn1] Application Serial No. 77724431 was filed on April 28, 2009, based upon applicant’s assertion of March 1, 1998 as a date of first use of the mark in commerce. [fn2] Registration No. 2008114 issued on October 15, 1996. Section 8 affidavit accepted. Renewed. [fn3] Registration No. 2711721 issued on April 29, 2003. Section 8 affidavit accepted; Section 15 affidavit acknowledged. [fn4] Applicant’s brief, p. 5. [fn5] Id. [fn6] Id. at 9. [fn7] Applicant’s brief, p. 2. Applicant’s prior registration issued on January 29, 2002 and was cancelled under Section 8 of the Trademark Act on October 31, 2008. [fn8] Id. at 10.