Allegiance Staffing

Trademark Trial and Appeal Board

Jul 9, 2015

No. 85663950 (T.T.A.B. Jul. 9, 2015)

This Opinion is a
Precedent of the TTAB

Mailed: July 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Allegiance Staffing
_____

Serial No. 85663950
_____

Nicholas A. Dupre of Knighton & Stone, PLLC, for Allegiance Staffing.

Cory Boone, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
_____

Before Seeherman, Ritchie and Gorowitz,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Allegiance Staffing has appealed from the final refusal of the Trademark
Examining Attorney to register ALLEGIANCE STAFFING in standard characters,
with STAFFING disclaimed, as a trademark for “temporary employment agency
services provided to others, not including hospitals and healthcare providers” in
Class 35. The application was filed on June 28, 2012, is based on use in commerce
(Section 1(a) of the Trademark Act), and asserts first use and first use in commerce
at least as early as February 1, 1999.
Serial No. 85663950
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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 mark so resembles the following
eight marks, registered by the same entity for the indicated services, all in Class 35,
that as used by Applicant in connection with its identified services, it is likely to
cause confusion or mistake or to deceive.
Registration
No. and Issue
Date
Mark Services
2516311
December 11,
2001
ALLEGIS GROUP

(standard characters, with GROUP
disclaimed)
Personnel placement and
recruitment for
temporary and
permanent positions

2888615
September 28,
2004

(GROUP disclaimed)
Personnel placement and
recruitment for
temporary and
permanent positions
3411335
April 15, 2008

ALLEGIS SERVICES INDIA

(standard characters, with SERVICES
INDIA disclaimed)
Employment hiring,
recruiting, placement,
staffing and career
networking services;
Operation of telephone
call centers for others;
Personnel placement and
recruitment; Temporary
employment agencies1

3350905
December 11,
2007
ALLEGIS GROUP SERVICES

(standard characters, with GROUP
SERVICES disclaimed)
Business management
and consultation;
Employment hiring,
recruiting, placement,

1 This registration also includes services in Class 42.
Serial No. 85663950
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Registration
No. and Issue
Date
Mark Services
staffing and career
networking services;
Human capital
management outsourcing
services; Temporary
employment agencies.
3760311
March 16,
2010
(RECRUITMENT PROCESS
OUTSOURCING disclaimed)
Employment agency
services, namely, filling
the temporary and
permanent staffing needs
of businesses;
Employment hiring,
recruiting, placement,
staffing and career
networking services;
Outsourcing in the field
of temporary and
permanent employment
services: Outsourcing
services.
3760312
March 16,
2010
ALLEGIS RPO

(Standard characters, with RPO
disclaimed)
Employment agency
services, namely, filling
the temporary and
permanent staffing needs
of businesses;
Employment hiring,
recruiting, placement,
staffing and career
networking services;
Human capital
management outsourcing
services; Outsourcing in
the field of temporary
and permanent
employment services;
Outsourcing services
4207811
September 11,
2012
ALLEGIS PARTNERS

(Standard characters, with
PARTNERS disclaimed)
Employment hiring,
recruiting, placement,
staffing and career
networking services;
Serial No. 85663950
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Registration
No. and Issue
Date
Mark Services
Employment recruiting
consultation; Personnel
placement and
recruitment; Professional
staffing and recruiting
services; Providing on-
line interactive
employment counseling
and recruitment services

4179460
July 24, 2012
ALLEGIS
(Standard characters)
Employment agency
services, namely, filling
the temporary and
permanent staffing needs
of businesses;
Employment hiring,
recruiting, placement,
staffing and career
networking services;
Executive recruiting
services; Human capital
management outsourcing
services; Personnel
management; Providing
on-line employment
information in the field of
recruitment, placement,
temporary staffing,
permanent staffing,
professional staffing,
human capital out-
sourcing, and managed
services2

2 This registration also includes services in Class 42.
Serial No. 85663950
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Before we address the substantive issue in this appeal, we must comment on
the application’s prosecution. Applicant submitted duplicate copies of its response to
the first Office Action, filing one through the Office’s TEAS3 system, and one using
the Federal Express mailing service. This practice of duplicate filings is strongly
discouraged as it merely adds to the bulk of the file and makes it more difficult to
review the submissions. In fact, the duplicate filings of Applicant’s response to the
first Office Action resulted in the submission delivered by Federal Express being
included as part of the electronically filed submission. Therefore, the response filed
on April 15, 2013 is shown as having 105 pages, although pages 54 through 104
duplicate the material filed through TEAS; there is also a separate entry, dated
April 16, 2013, of 51 pages, for the submission that was filed through Federal
Express.4 The first page of Applicant’s response shows that the duplicate filing was
deliberate; it states “Via FedEx” and “Via Online TEAS Submission.” It is not clear
whether Applicant was concerned about its submission reaching the Office in a
timely manner, or whether it believed that the duplicate filing was helpful. We have
already explained that it is not helpful. As for any concern about the efficacy of
electronic filing, the better practice for an applicant that has such a concern is to
simply check, at the conclusion of the electronic filing process, that there has been
an acknowledgment of receipt. Then, if the applicant’s subsequent review of the

3 TEAS is the Trademark Electronic Application System through which applications and
responses to Office actions may be filed.
4 The slight discrepancy in the number of pages is due to the fact that one page of the
electronic filing consists of an electronically generated table of the data, and contains links
to each page of the response and exhibits, as well as the filer’s signature and transmission
information; the additional pages in the April 15, 2013 entry are copies of the Federal
Express envelope.
Serial No. 85663950
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electronic record reveals an incomplete or missing file entry, the applicant can
contact the examining attorney for instructions about remedying the problem.
Applicant also attached to its appeal brief the same exhibits it had submitted
with its responses, totaling 55 pages; again, the Board discourages this practice. In
re Lorillard Licensing Co., 99 USPQ2d 1312, 1315 (TTAB 2011); In re SL&E
Training Stable Inc., 88 USPQ2d 1216, 1220 n.9 (TTAB 2008) (attaching as exhibits
to brief material already of record requires Board to determine whether
attachments had been properly made of record and adds to the bulk of the file); In re
Thor Tech Inc., 85 USPQ2d 1474, 1475 n.3 (TTAB 2007) (attaching evidence from
record to briefs is duplicative and is unnecessary).
Turning to the refusal, 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). Each factor may, from case to case,
play a dominant role. du Pont, 177 USPQ at 567.
We reverse the refusal of registration because of the differences in the
meaning and commercial impression of the marks, the degree of care exercised by
consumers of Applicant’s and the Registrant’s services, and the fact that the
USPTO permitted the eight cited registrations to issue over Applicant’s prior
registration for the identical mark and services at issue here.
Serial No. 85663950
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This is one of the rare cases in which the thirteenth du Pont factor, “any
other established fact probative of the effect of use,” plays a role. du Pont, 177
USPQ at 567. This factor “accommodates the need for flexibility in assessing each
unique set of facts.” In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB
2012). And the fact situation in this case is unusual. Applicant owned a prior
registration for the same mark and services for which it currently seeks
registration. Registration No. 2507546 for ALLEGIANCE STAFFING in typed
form,5 with STAFFING disclaimed, issued on November 13, 2001. The registration
expired on June 15, 2012, due to Applicant’s inadvertent failure to renew it. As soon
as this came to Applicant’s attention, “Applicant immediately reapplied for
registration of the Mark on June 28, 2012.” Response filed April 15, 2013, p. 3.
During the time that Applicant’s prior registration was in effect, six of the
cited registrations issued, and two more applications were approved for publication.
That is, over a period of eleven years, five different examining attorneys, as shown
on the faces of the cited registrations, considered the marks in the eight cited
registrations when they were still applications, and determined that such marks
were not likely to cause confusion with the mark in Applicant’s prior registration.6

5 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to
replace the term “typed” drawing with “standard character” drawing. See TMEP § 807.03
(January 2015).
6 The files of the cited registrations are not of record, so we cannot ascertain whether the
examining attorneys cited Applicant’s prior registration and then were persuaded that the
Registrant’s marks were not likely to cause confusion with Applicant’s prior registration, or
whether they did not cite Applicant’s prior registration at all. However, we presume, based
on established norms for searching existing registrations for potential likelihood of
confusion issues, that the examining attorneys reviewing these applications became aware
of Applicant’s prior registration when examining the applications.
Serial No. 85663950
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These determinations by several different examining attorneys over an
extended period of time, and as recently as 2012,7 that the marks in the now-cited
registrations were not likely to cause confusion with the mark in Applicant’s prior
registration, which was for the identical mark and services that are at issue in this
appeal, have been taken into consideration in our likelihood of confusion analysis.
We have considered the Examining Attorney’s argument that “prior decisions
and actions of other trademark examining attorneys in registering other marks
have little evidentiary value and are not binding upon the USPTO or the
Trademark Trial and Appeal Board.” Brief, 10 TTABVUE 16. We agree with that
legal principle. See In re Davey Products Pty. Ltd., 92 USPQ2d 1198, 1206 (TTAB
2009). By considering as part of our analysis the USPTO’s allowance of the eight
cited registrations over Applicant’s prior registration, we do not hold that this
Board is bound by the decisions of the examining attorneys that there was no
likelihood of confusion between the cited ALLEGIS marks and Applicant’s prior
ALLEGIANCE STAFFING mark. However, we conclude that under the particular
circumstances here, where: (i) the same Applicant owned a prior registration for the
identical mark covering the same services; (ii) none of the five different examining
attorneys who examined the cited registrations refused registration based on a
likelihood of confusion with the same mark for which registration is sought in the
current application; and (iii) Applicant inadvertently allowed the prior registration

7 In fact, two of the cited registrations issued in July and September 2012, while the
Examining Attorney who examined the subject application issued the first Office Action on
October 18, 2012.
Serial No. 85663950
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to lapse, and attempted to correct that lapse by filing its new application within two
weeks of its prior registration expiring, we give the fact that no likelihood of
confusion was found in eight separate situations due weight in our analysis.
With that in mind, we turn to a consideration of the other relevant du Pont
factors. Applicant’s services are identified as “temporary employment agency
services provided to others, not including hospitals and healthcare providers.” The
closest services to these, as identified in the cited registrations, are “Employment
agency services, namely, filling the temporary and permanent staffing needs of
businesses” in, for example, Registration No. 4179460 for ALLEGIS in standard
characters. Applicant’s “temporary employment agency services provided to others”
and Registrant’s “filling the temporary staffing needs of businesses” are essentially
the same.8 Because of this, and because the marks in the other cited registrations
contain additional points of difference with Applicant’s mark, we confine our
analysis of the issue of likelihood of confusion to that between Applicant’s mark and
Registrant’s ALLEGIS mark in standard characters. If confusion is likely between
these marks, there is no need for us to consider the likelihood of confusion with the
other ALLEGIS marks, while if there is no likelihood of confusion between
Applicant’s mark and ALLEGIS in standard characters, then there would be no

8 Because the services are legally identical, Applicant’s arguments regarding specific
differences in the manner and channels of trade in which Applicant and Registrant render
their respective services are not persuasive. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the application regardless of what the record
may reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which the sales of goods are directed”).
Serial No. 85663950
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likelihood of confusion with the other ALLEGIS marks. See In re Max Capital
Group Ltd. 93 USPQ2d 1243, 1245 (TTAB 2010).
Turning to a consideration of Applicant’s mark ALLEGIANCE STAFFING
and the cited mark ALLEGIS, we first reiterate the well-established principle that,
in 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 word STAFFING in Applicant’s
mark is descriptive, as Applicant has acknowledged by its disclaimer of it in
response to the Examining Attorney’s requirement. Because descriptive words have
little source-indicating significance, it is appropriate that we give less weight to
STAFFING; simply put, the presence of this word in Applicant’s mark is not
sufficient to distinguish the marks. As for the dominant element ALLEGIANCE in
Applicant’s mark, clearly there are similarities between this word and ALLEGIS, in
that they are three syllables and start with the letters ALLEGI. However, the
endings of these words are different, and that difference is likely to be noted
because the ending in Applicant’s mark results in a recognizable word,
ALLEGIANCE. With respect to any phonetic similarity, we agree with the
Examining Attorney that there is no correct pronunciation of a trademark that, like
ALLEGIS, is not a word, but a coined term. Thus, the beginning letters, ALLEG,
could be pronounced the same as these letters in ALLEGIANCE. However, there is
Serial No. 85663950
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no “N” in the ending letters, “IS,” and therefore the ending of the cited mark cannot
be deemed to sound like the ending of ALLEGIANCE. Further, any similarity in
pronunciation is not as significant here because of the nature of the services.
Employment agency services are not general consumer “items,” but are services
offered to and obtained by businesses.
It is the difference in meaning of the words that is even more significant,
since ALLEGIANCE has a clear meaning, while ALLEGIS is a coined term which
has no meaning. As our primary reviewing court has said, “the familiar is readily
distinguishable from the unfamiliar.” National Distillers and Chemical Corp. v.
William Grant & Sons, Inc., 505 F.2d 719, 184 USPQ 34, 35 (CCPA 1974) (Court
found that consumers would not confuse DUVET with DUET because virtually
everyone is familiar with DUET and its meaning, while consumers would not view
DUVET as an English word, and would not know its definition.);9 In re General
Electric Co., 134 USPQ 190, 192 (CCPA 1962) (Court found consumers would easily
differentiate between VULCAN and VULKENE because they would recognize
VULCAN as something already known, while VULKENE is a coined word: “We
entirely agree with appellant that ‘the human mind has little difficulty
differentiating between the familiar and the unfamiliar.’”; no likelihood of confusion
even though marks were used on identical goods); see also Jacobs v. International

9 This case was decided in 1974, before “duvet” became a commonly used term for
comforters. According to the opinion, the definition of “duvet” at that time was “a downy
growth characteristic of some fungus cultures.” 184 USPQ at 35. That the National
Distillers facts might be assessed differently today does not undermine the principle stated
by the court.
Serial No. 85663950
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Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982), and cases cited
therein. Faberge, Inc. v. Dr. Babor GmbH & Co., 219 USPQ 848, 851 (TTAB 1983),
involved the marks BABOR and BABE, both for cosmetic products. In finding no
likelihood of confusion, the Board stated (citations omitted):
we note that in a number of cases, the familiar versus unfamiliar
comparison was made and while it may not have been the only factor
which influenced those decisions, it was found to be highly significant
in reaching the decision that confusion was unlikely to occur. The logic
behind the decisions is clear. One recognizes instantly that which is
familiar. Conversely, that which is unfamiliar would be given closer
scrutiny and in this way could be distinguished from the familiar.

In view thereof, we find that the differences in meaning of the involved marks, and
the consequent differences in commercial impression, outweigh any similarities in
appearance and pronunciation caused by the letters ALLEGI that the marks have
in common.
As the Board said in the passage quoted above, the fact that one mark is a
familiar word, while another is not, may not have been the only factor which
influenced the decisions in those cases. Here, too, the familiar versus unfamiliar
dichotomy is not the only factor favoring Applicant. Just as in the General Electric
and Faberge cases, the du Pont factor relating to the conditions of purchase is
significant, since the care that would be exercised by customers would result in
their noting the differences in the marks at issue. Services identified in both the
application and the cited registration include temporary employment agency
services provided to others. Such services, by their nature, do not fall in the
category of impulse purchasing. Businesses in need of temporary help or individuals
Serial No. 85663950
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seeking a temporary employment agency for placements would exercise a
heightened level of care in their decisions. As a result, they would note the
differences between the trademarks ALLEGIANCE STAFFING, which is composed
of commonly understood words, and ALLEGIS, a coined term which, as used in
connection with the identified services, does not have any recognizable derivation.
With respect to the other du Pont factors, Applicant argues that there has
been a 15-year period of contemporaneous use without any actual confusion.
However, Applicant has also acknowledged that in the states in which Applicant
renders its services Registrant does not use its ALLEGIS marks. Brief, 8 TTABVUE
16. Because Applicant and Registrant do not make contemporaneous use of their
respective marks in the same geographic areas, there has been no meaningful
opportunity for confusion to occur, if it were likely to occur, and therefore we cannot
draw any conclusion from the lack of evidence of actual confusion. Nor have we
given any probative value to the third-party registrations for ALLEGIANCE
submitted by Applicant. It is not clear what purpose Applicant believes that these
registrations would serve in terms of supporting its position, but the fact that
ALLEGIANCE has been registered by third parties for disparate goods and services
has no probative value in our likelihood of confusion analysis. With respect to the
sixth du Pont factor, the number and nature of similar marks in use in connection
with similar services, there is no evidence of any third-party use. We therefore treat
the foregoing du Pont factors as neutral. Finally, we have given no probative value
to the statement made on page 3 of Applicant’s request for reconsideration filed
Serial No. 85663950
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November 12, 2013 that “Allegis and all their affiliates have no issue with the use of
Applicant’s Mark, consent to Applicant’s use of same and agree that Applicant’s
Mark is not confusingly similar to the Cited Marks.” Applicant has merely asserted
this, and has not submitted any consent or agreement by Registrant to support this
assertion. See, e.g., In re Teledyne Indus., Inc., 696 F.2d 968, 217 USPQ 9, 11 (Fed.
Cir. 1982) (argument of counsel is not evidence); Peeler v. Miller, 535 F.2d 647, 190
USPQ 117, 121 (CCPA 1976) (same).
After considering all of the evidence and arguments, including those not
discussed specifically herein, we find that, despite the legal identity of the services
and consequent legally identical channels of trade, confusion is not likely. The
combination of the differences in the meaning and commercial impression of the
marks, the care with which the services will be chosen, and the fact that over an 11-
year period the USPTO permitted eight ALLEGIS registrations to issue over
Applicant’s prior registration for the identical mark and services at issue here, lead
us to find no likelihood of confusion between Applicant’s mark and the marks and
services in the cited registrations.
Decision: The refusal of registration is reversed.