Career Matrix, Inc.

Trademark Trial and Appeal Board

Sep 22, 2003

No. 75487869 (T.T.A.B. Sep. 22, 2003)

Mailed:
September 22, 2003
Paper No. 19
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Career Matrix, Inc.
________
Serial No. 75/487,869
_______
Timothy E. Eagle of Varnum Riddering Schmidt & Howlett LLP for
Career Matrix, Inc.
Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______
Before Hairston, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Career Matrix, Inc. seeks registration on the Principal
Register for the mark CAREER MATRIX for services recited as
“employment agency, employment counseling and recruiting
employment outplacement services, employee relocation and
information regarding employees, employees and employment
opportunities all of which may be accessed through a global
computer network,” in International Class 35.1
1 Application Serial No. 75/487,869 was filed on May 19, 1998,
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/487,869
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This case is now before the Board on appeal from final
refusals to register based upon Sections 6 and 2(d) of the
Trademark Act, 15 U.S.C. §1056 and §1052(d). The Trademark
Examining Attorney has held that the word “Career” must be
disclaimed apart from the mark as shown inasmuch as it is
merely descriptive of the recited employment services. The
Trademark Examining Attorney has also held that applicant’s
mark, if it is used in connection with the recited services,
so resembles the mark MATRIX registered for “placement of data
processing professionals on both a permanent and contract
basis,” also in International Class 35,2 that it would be
likely to cause confusion, to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney have fully
briefed this appeal, but applicant did not request an oral
hearing.
We affirm the refusals to register.
DISCLAIMER
In support of his position that the word “Career” is
merely descriptive of applicant’s services, the Trademark
Examining Attorney has placed into the record dictionary
definitions of the term as well as LEXIS/NEXIS stories where
2 Registration No. 1,677,832, issued on the Principal
Register on March 3, 1992; Section 8 affidavit accepted and
Section 15 affidavit acknowledged; renewed.
Serial No. 75/487,869
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the term is used in conjunction with employment services.3
This combination of sources certainly demonstrates a
connection between the term “career” and employment services
of various types, including those of applicant.
While applicant refers (in the context of its likelihood
of confusion discussion, appeal brief, p. 3) to “Career” as
the “ … arguably strongest portion of its mark,” applicant
fails to explain why the word “Career” is not descriptive or
why it refuses to disclaim this term.4
3 The Trademark Examining Attorney searched the NEXIS news
database using the query “CAREER W/5 EMPLOYMENT AGENC!” This
search retrieved 517 results of which 23 of the first 49 hits
were printed using the “kwic” format. While not reprinted
herein, they do show that terms like “career,” “careers,”
“career center,” “career fairs,” “career professionals,”
“career advisor,” “career placement,” “career help” and “career
issues” occur in the same sentence with a term like “employment
agency” (or “employment agencies”). It is also clear from
these excerpts that the word “Career” is sometimes used within
trade names for employment agencies, and that the terms “career
sites” and “career portals” are general ways of describing
online points for access to employment agency services of the
type applicant is offering.
4 In the final substantive paragraph of its appeal brief,
applicant quotes to language from the Trademark Manual of
Examining Procedure (e.g., TMEP §1213.05 “Unitary Marks,” 3rd
Ed. 2003) about the inappropriateness of a disclaimer
requirement in composite marks involving unitary terms.
However, there is no explanation as to why applicant concludes
that the combination CAREER MATRIX is unitary.
Nor has applicant countered the Trademark Examining
Attorney’s showing that the word “Career” is descriptive. See
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)
[When the Trademark Examining Attorney sets forth a prima facie
case, the applicant cannot simply criticize the absence of
additional evidence supporting the refusal, but must come
forward with evidence supporting its argument for
registration.].
Serial No. 75/487,869
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In light of the uncontroverted showing made by the
Trademark Examining Attorney that the term “Career” is merely
descriptive of a feature, purpose or function of applicant’s
services (i.e., use of applicant’s services may help one begin
or further a career), we affirm the refusal to register in
light of applicant’s failure to comply with the Office’s
requirement to disclaim this term.
LIKELIHOOD OF CONFUSION
Applicant also argues that the Trademark Examining
Attorney has erroneously refused its application as being
likely to cause confusion with the cited registration. Much
of this discussion, however, is tied to the Trademark
Examining Attorney’s earlier (and erroneous) characterization
of the word “CAREER” as having been disclaimed by applicant.5
Nonetheless, applicant has largely failed to develop its
5 Applicant’s response of August 2, 1999, began as follows:
The Examining Attorney has requested that
Applicant insert the following disclaimer into
the record:
“No claim is made to the exclusive right to
use CAREER apart from the mark as shown.”
The requirement is respectfully traversed.
…
Evidently, the Trademark Examining Attorney and the paralegal
support staff within the Office erroneously processed this as if
applicant has agreed to the disclaimer. When the Trademark
Examining Attorney was alerted to this miscommunication by the
applicant, he reinstated the requirement for a disclaimer on
December 7, 2000 and went Final as to this refusal to register.
Serial No. 75/487,869
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position in the context of the du Pont factors6 under which we
must decide this ground of refusal. Rather, in a most
conclusory fashion, applicant contends that applicant’s
services are easily differentiated from registrant’s services
and that the two marks create different commercial
impressions.
By contrast, the Trademark Examining Attorney takes the
position that applicant’s services are closely related to
registrant’s services and that the respective marks create
substantially similar overall commercial impressions.
Turning first to a consideration of the respective
services, it is well settled that services need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the services are related in some manner and/or that the
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed
in connection therewith, to the mistaken belief that they
originate from or are in some way associated with the same
entity or provider. See Monsanto Co. v. Enviro-Chem Corp., 199
USPQ 590, 595-96 (TTAB 1978) and In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
6 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). This case sets forth the factors that
must be considered in determining likelihood of confusion if
relevant evidence is of record.
Serial No. 75/487,869
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We concur with the Trademark Examining Attorney that
applicant’s “employment agency, employment counseling and
recruiting employment outplacement services, employee
relocation and information” services and registrant’s services
recited as the “placement of data processing professionals,”
are so closely related in a commercial sense that, if rendered
under similar marks, confusion as to their origin or
affiliation would be likely.
In defining registrant’s and applicant’s respective
customers, we note that both applicant and registrant provide
personnel placement services. It appears that registrant
offers its services to “data processing” (now more commonly
referred to as “information technology” or “IT”)
professionals. Ostensibly, applicant’s services will be
available to a broader range of personnel, but clearly
applicant’s population of job seekers would have to include IT
or “data processing” professionals.
As to the way in which these services are, or will be,
offered, it is explicit in applicant’s recital that its
services are to be provided online. While presumably
registrant’s services were offered from a brick-and-mortar
location when first used in 1983, there is no restriction in
registrant’s recital that precludes its offering its services
online. In short, we must consider applicant’s services and
Serial No. 75/487,869
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registrant’s services as both being offered online. In any
case, even if registrant’s services were limited to a bricks-
and-mortar operation, this distinction is without any
meaningful significance because IT or “data processing”
professionals in search of career placement could still obtain
essentially the same assistance through either applicant’s
services or those of registrant. Thus, a consumer may not
only utilize the registrant’s professional placement services,
but that same consumer, when selecting alternatives for
additional employment assistance, may choose the applicant’s
other employment services under the mistaken belief that it is
the same company that provided his/her initial placement
services.
Furthermore, the Internet evidence made of record by
applicant serves to confirm the closely related and
overlapping nature of applicant’s and registrant’s services.
Not surprisingly, “computers” is among the “career channels”
touted on applicant’s webpages. Such evidence reveals that
personnel placement services of the type registrant offers are
identical to the services that applicant intends to offer
online to candidates seeking assistance with career or
employment opportunities in the data processing/information
technology/computer fields.
Serial No. 75/487,869
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We turn then to the respective marks. Applicant stresses
that the first word in its mark is “Career” – a word not found
in the cited mark. This addition creates dissimilarities in
the sound and appearance of the marks. However, we find that
in this case, this difference cannot serve to distinguish the
marks.
While we compare the marks in their entireties, our
primary reviewing court has held that in articulating reasons
for reaching a conclusion on the question 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 or portion of a mark. That is, one feature
of a mark may have more significance than another. See Sweats
Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d
1793, 1798 (Fed. Cir. 1987), and In re National Data
Corporation, 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir.
1985).
Moreover, under actual market conditions, consumers
generally do not have the luxury of making side-by-side
comparisons. The proper test in determining likelihood of
confusion is not a side-by-side comparison of the marks, but
rather, the decision must be based on the similarity of the
general overall commercial impressions engendered by the
involved marks. See Puma-Sportschuhfabriken Rudolf Dassler KG
Serial No. 75/487,869
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v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
Hence, while we find some dissimilarities in sound and
appearance between the two marks, we conclude these difference
are legally insignificant.
By contrast, we find much more important the significant
similarities in the connotations of MATRIX and CAREER MATRIX
as applied to the recited services. According to all the
evidence of record, MATRIX is a seemingly arbitrary mark for
registrant’s placement services. The term MATRIX is an
English-language word having a number of different meanings,
but a prevalent one evokes mathematical arrays.7 If indeed
this term is arbitrary as applied to registrant’s services, it
must be presumed to be an inherently strong mark. Then,
applicant’s mark (CAREER MATRIX) simply adds the “Career”
designation to the front of registrant’s mark. The added word
(“Career”) is merely descriptive for applicant’s services and,
as discussed above, should have been disclaimed.
Hence, we conclude that the term, “Matrix,” plays a major
role in forming the overall commercial impression of both
7 Matrix: a set of numbers arranged in rows and columns so
as to form a rectangular array. The numbers are called the
elements, or entries, of the matrix. Matrices have wide
applications in engineering, physics, economics, and statistics
as well as in various branches of mathematics.
http://www.britannica.com/eb/article?eu=52683&tocid=0&query=mat
rix&ct= This online encyclopedia entry contains a link to a
series of popular science fiction / action movies of recent
years entitled “Matrix” starring Keanu Reeves.
Serial No. 75/487,869
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marks, and that the commercial impressions created by the
marks involved herein are substantially the same. See The
Wella Corporation v. California Concept Corporation, 558 F.2d
1019, 194 USPQ 419 (CCPA 1977); and Gruen Industries, Inc. v.
Ray Curran & Co., 152 USPQ 778 (TTAB 1967).
Accordingly, we find that consumers and prospective
customers, familiar with registrant’s mark MATRIX for
“placement of data processing professionals” would be likely
to believe, upon encountering applicant’s confusingly similar
mark CAREER MATRIX for “employment agency, employment
counseling and recruiting employment outplacement services,
employee relocation and information regarding employees,
employees and employment opportunities all of which may be
accessed through a global computer network,” that such closely
related and overlapping services emanate from, or are
otherwise sponsored by or affiliated with, the same source.
Therefore, the refusal under Section 2(d) of the Act is also
affirmed.
Decision: Both refusals to register are hereby affirmed.