Creative Staffing, Inc.v.Creative Financial Staffing, LLC

Trademark Trial and Appeal Board

Apr 12, 2005

No. 91124801 (T.T.A.B. Apr. 12, 2005)

Hearing: Mailed:
November 23, 2004 April 12, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Creative Staffing, Inc.
v.
Creative Financial Staffing, LLC
_____

Opposition No. 91124801
to application Serial No. 74502128
filed on March 18, 1994
_____

Deborah T. Berkowitz and Matthew S. Nelles of Ruden,
McClosky, Smith, Schuster & Russell, P.A. for Creative
Staffing, Inc.

Jonathan P. Froemel of Barnes & Thornburg LLP for Creative
Financial Staffing, LLC
______

Before Seeherman, Grendel and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Creative Financial Staffing, LLC [applicant] seeks a
Principal Register registration for CREATIVE FINANCIAL
STAFFING, with a disclaimer of FINANCIAL STAFFING, for
services identified as "Providing temporary accounting,
bookkeeping and other financial services personnel," in
Class 35. The application claims first use of the mark, and
This Opinion is Not
Citable as Precedent
of the TTAB
Opposition No. 91124801
2
first use of the mark in commerce, as of April 4, 1994.1
However, for the purpose of any necessary determination of
priority, applicant may rely on its filing date of March 18,
1994.
Creative Staffing, Inc. [opposer] has opposed issuance
of a registration to applicant, asserting in its notice of
opposition: opposer is the owner of the mark CREATIVE
STAFFING; opposer commenced use of that mark "at least as
early as 1985 and has used the mark continuously since that
date for employment and staffing services, namely employment
recruiting and temporary and full-time employment and
staffing services"; the consuming public and trade have come
to associate CREATIVE STAFFING with opposer and opposer has
thereby acquired substantial goodwill in the mark; the
services of opposer and applicant, offered under their
respective marks, are highly related or similar; the marks
are so similar as to create a likelihood of confusion,
mistake or deception among consumers when the marks are used
for the parties' respective services; and opposer will be
damaged if applicant's mark is registered.

1 The application was filed March 18, 1994 based on applicant's
statement of its intent to use the mark in commerce. Within a
year of filing the application, applicant filed an amendment
alleging use of the mark. After subsequent processing and
examination, the application was suspended beginning December 13,
1995, until the mark was approved for publication on July 18,
2001.
Opposition No. 91124801
3
Applicant admitted allegations relative to the filing
of the parties' respective applications. Otherwise,
applicant denied the allegations in the notice of
opposition, either expressly or by stating that it does not
have sufficient information to enable it to admit or deny.
Opposer has introduced into the record the testimony
deposition of Ann Machado, opposer's founder and owner, the
testimony deposition of Sheri Cholodofsky, opposer's
controller, and the testimony deposition of Sandra
d'Hemecourt, a senior account manager for opposer. Various
exhibits were introduced during the Machado and Cholodofsky
depositions. In addition, opposer filed a notice of
reliance on, among other things, applicant's responses to
opposer's interrogatories and requests for admissions, and
various printed publications.
Applicant has introduced the testimony deposition and
exhibits of Daniel J. Casey, its managing member. Applicant
has also filed a notice of reliance on opposer's responses
to applicant's interrogatories and requests for admissions,
on reprints from the USPTO Trademark Electronic Search
System (TESS) regarding four non-party registrations, and on
various printed publications.
Applicant attached certain materials to its appeal
brief, but opposer, in its reply brief, objected to
consideration of such materials and we sustain the
Opposition No. 91124801
4
objection. See Plus Products v. Physicians Formula
Cosmetics, Inc., 198 USPQ 111, 112 n.3 (TTAB 1978). Any
other objections by the parties that require discussion are
considered infra, in conjunction with our discussion of what
the record establishes.
Opposer has filed an application to register its
CREATIVE STAFFING mark,2 but it does not rely in this case
on a registration of its mark and, therefore, the extent of
its rights in its mark is a matter for proof. When an
opposer is not relying on a registration and the
presumptions attendant to ownership of a registration, it
bears the burden of pleading and proving its priority. See
Hydro-Dynamics Inc. v. George Putnam & Company Inc., 811
F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987). In
addition, such an opposer must establish that its mark is
distinctive of its goods or services either inherently or
through the acquisition of secondary meaning. See Towers v.
Advent Software, Inc., 913 F.2d 942, 945, 16 USPQ2d 1039,
1041 (Fed. Cir. 1990).
Applicant did not assert in its answer that it believed
opposer's pleaded mark to be descriptive and non-

2 Serial No. 75908628 seeks registration of CREATIVE STAFFING for
"employment and staffing services, namely, employment agencies,
employment recruiting and temporary employment services," in
Class 35. The application includes a disclaimer of "staffing"
and includes, in the alternative, a claim of acquired
distinctiveness under Section 2(f), 15 U.S.C. § 1052(f).

Opposition No. 91124801
5
distinctive. In a case such as this, where the marks are
identical but for applicant's addition of a descriptive
term, and applicant seeks registration on the Principal
Register without a claim of acquired distinctiveness under
Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), it
was incumbent on applicant to put opposer on notice that it
would expect opposer to prove distinctiveness. In view of
the position adopted by applicant, which is largely
demonstrated by its own application, that the involved marks
are inherently distinctive, it was entirely reasonable for
opposer to conclude that it did not have to pursue the issue
of distinctiveness. In fact, opposer contended in its brief
(p. 10) that likelihood of confusion was the only issue to
be determined. Applicant essentially acquiesced in the
contention, when it noted in its brief (p. 8) that the "sole
issue for consideration by the Board is whether there is a
likelihood of confusion." Accordingly, we consider there to
be no issue as to the inherent distinctiveness of opposer's
mark.
Notwithstanding our discussion above, we recognize that
applicant made certain statements in its brief asserting,
variously, that the terms "Creative" and "Staffing," i.e.,
"the common elements of the two marks," are "descriptive, or
at best highly suggestive" and that opposer's pleaded mark
"is descriptive or highly suggestive at best, and therefore
Opposition No. 91124801
6
is not inherently distinctive." We do not view applicant's
arguments as signaling a retreat from its statement that the
only issue to be considered is likelihood of confusion,
which statement implies that at least for purposes of this
case both parties should be presumed to have marks. Rather,
we view applicant's arguments as indicative of applicant's
position that the respective marks are weak and entitled to
a narrow scope of protection. While we note that opposer's
application seeks registration of its mark under Section
2(f) of the Trademark Act, that claim has been made in the
alternative and opposer cannot, therefore, be viewed as
having conceded that its pleaded mark is not inherently
distinctive.3 In any event, on this record, i.e., based on
the nature of opposer's use of its mark and the services for
which it has used its mark, we do not hesitate to conclude
that opposer's mark is suggestive and therefore inherently
distinctive.4
As to priority, we again note applicant's contention
that the only issue to be decided is likelihood of
confusion, which certainly implies that applicant does not
contest opposer's priority. On the other hand, applicant

3 See discussion in Section 1212.02(b) of the Trademark Manual of
Examining Procedure (TMEP) (3rd ed., revision 2).

4 Applicant is legally incorrect insofar as it asserts that if
opposer's mark were found to be highly suggestive, it would not
be inherently distinctive. While suggestive marks may not be as
strong as arbitrary or coined marks, they are considered
inherently distinctive.
Opposition No. 91124801
7
contends that opposer, for many years, limited its services
to providing employees for "clerical, light industrial,
telemarketing, technical, contract and hospitality
staffing." Brief, p. 13, relying on a year 2000 industry
directory listing for opposer made of record by applicant's
notice of reliance. In addition, applicant contends that
opposer did not begin providing services in "the niche of
finance and accounting" until at least three years after
applicant. Brief, p. 13, relying on certain pages from the
Machado deposition. Finally, applicant argues that even
after opposer expanded into this niche, it placed permanent
employees, not temporary employees, in accounting,
bookkeeping and financial services jobs with clients.
Brief, p. 14, relying on certain pages from the Machado
deposition.
Applicant overreaches in attempting to limit opposer's
activities to certain industries or fields by reference to
the directory listing. That listing recites that opposer
"specializes in" these fields. It does not affirmatively
state that opposer offers its services only in these fields.
In contrast, the Machado testimony is clear and unequivocal
that opposer provides clients with temporary employees in
not only the fields listed in the directory but in others as
well:
Q. Let's talk about the placements that Creative
Staffing makes. What types of positions does
Opposition No. 91124801
8
Creative Staffing provide temporary employees to
fill?

A. We have different sort [sic] of divisions or
subcategories. So we have officers and clerical,
light industrial, hospitality, finance, legal,
medical.

Machado dep., p. 14.
In addition, there is uncontradicted, specific
testimony about the types of positions filled in the finance
field:
Q. What type of positions does Creative Staffing
fill in the financial industry?

A. We do just about everything. Accountants,
controllers, accounts receivable, accounts
payable, collectors. We have a subcategory in
there is escrow, mortgage and titles. We're doing
a lot of mortgage professionals, bookkeepers, data
entry operators. Gosh, just about everything that
you could imagine.

Machado dep., pp. 14-15.

Finally, there is uncontradicted testimony that opposer
has made placements in the financial field since it
commenced operations:
Q. Has Creative Staffing been placing employees in
the financial industry since its inception in
1985?

A. Yes. Our first order was for a 100 [sic] data
entry operators and staff accountants to do an
inventory for Sear's department store. That was
my very first order. And my second order was from
Ryder Trucking Company, Ryder Systems now, and
they wanted someone in accounting, accounts
payable or receivable.

Machado dep., pp. 16-17.

Opposition No. 91124801
9
Applicant mischaracterizes the Machado testimony when
it argues in its brief that opposer "did not expand into the
niche of finance and accounting until 1998" (emphasis
added). The thrust of the testimony and supporting exhibits
is that opposer was at that time growing or expanding its
operations in existing niches. Machado dep. 34-35 and exh.
3. Moreover, applicant mischaracterizes the Machado
testimony when it argues that opposer's placements of
financial services personnel have been permanent employees,
rather than temporary employees. The testimony is clear
that opposer has placed both types of employees. Machado
dep. pp. 19-20.
Opposer's exhibit 8 to the Machado deposition requires
some discussion. This exhibit displays pages full of
newspaper advertisements placed in 1994, prior to
applicant's filing date, by opposer. These ads seek
employees for various types of positions, including
financial services personnel. Applicant did not object to
its introduction when it was offered during direct
examination, except on the ground that it was not produced
during discovery. This objection was not, however,
maintained in applicant's brief and has, therefore, been
waived. See authorities collected in TBMP Section 707.03(c)
n. 300 (2d ed. rev. 2004). Applicant did, in its brief,
assert that this exhibit "constitutes inadmissible hearsay
Opposition No. 91124801
10
and lacks foundation," but this objection was not raised
during the direct examination. Instead, applicant
apparently relies on its cross-examination of the witness to
establish that it first raised during the testimony
deposition that the witness had no "personal knowledge of
the ads themselves, and no business records foundation
exists." Brief, p. 13, n. 1. At most, then, applicant's
cross-examination, and its reference thereto in the brief,
may be sufficient to maintain an objection that the witness
did not establish a proper foundation for the exhibit.5 We
disagree with the contention and find the exhibit
admissible.
Machado testified that ads would be on the desks of
opposer's employees after they were published, so that
opposer's employees would be able to refer those responding
to ads to the appropriate counselor; and she testified that
the ads were representative of what opposer would have ran
(Machado dep. p. 75) and that she would see the ads at the
end of the month (p. 146). We find this a sufficient

5 In one reported decision, the Board found vague questioning by
applicant's counsel, during cross-examination of a witness for
opposer, insufficient to preserve an objection. See Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB 2002). In
this case, we accept, for the sake of argument, that applicant's
cross-examination of opposer's witness (Machado), on her personal
knowledge of exhibit 8, may have been sufficient to put opposer
on notice that it needed to utilize redirect to answer any
questions raised about whether a proper foundation had been
provided for introduction of the exhibit. Nonetheless, as
explained above, we do not find the objection well-taken and find
the exhibit admissible.
Opposition No. 91124801
11
foundation for introduction of the ads. Moreover, we note
that the ads only serve to corroborate the uncontradicted
testimony of the witness that opposer had been placing
financial services personnel before applicant began doing
so. Even if we were to exclude the ads, we would find the
Machado testimony sufficient to establish opposer's
placement of financial services personnel since opposer
commenced operations and well prior to the filing date of
applicant's application. Cf. Powermatics, Inc. v. Globe
Roofing Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA
1965) (“oral testimony, if sufficiently probative, is
normally satisfactory to establish priority of use in a
trademark proceeding”). See also, B.R. Baker C. v. Lebow
Bros., 150 F.2d 580, 66 USPQ 232, 236 (CCPA 1945) (Oral
testimony should “not be characterized by contradictions,
inconsistencies and indefiniteness but should carry with it
conviction of its accuracy and applicability.”).
In sum, we find that the record bears out opposer's
prior use of its mark for placement of temporary and
permanent financial services personnel since prior to the
filing date of applicant's application. The foregoing
discussion not only demonstrates opposer's priority but also
addresses the overlap in the parties' services, and so we
now turn to the issue of likelihood of confusion, which
includes consideration of the involved services.
Opposition No. 91124801
12
The question of likelihood of confusion in an
opposition requires analysis of the facts as they relate to
the relevant DuPont factors. See Recot, Inc. v. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000) and In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973). In considering the evidence of record on
these factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
First, we consider the respective services, as we have
broached that subject above in discussing opposer's
priority. In regard to opposer's services, we have already
found that these have included the placement of temporary
and permanent financial services personnel. In regard to
applicant's services, we are constrained by the
identification set forth in applicant's application.
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
Opposition No. 91124801
13
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”). Applicant places "…temporary
accounting, bookkeeping and other financial services
personnel." The identification does not limit the types of
businesses (i.e., fields) in which such personnel are
placed, nor does it limit applicant's placements to
businesses of a particular size. In addition, there is no
limit as to channels of trade through which applicant's
services are offered. As a result, we must assume that
applicant places "…temporary accounting, bookkeeping and
other financial services personnel" in all sorts of
businesses and offers its services in all customary channels
of trade for a business such as applicant's. We cannot
acquiesce in applicant's argument that it "specifically
markets its services to companies that have accounting
departments of five or more people" (brief, p. 14), because
this restriction is not in the identification.
Opposer pleaded that it has used its mark since 1985
for "employment and staffing services, namely employment
recruiting and temporary and full-time employment and
staffing services." The record clearly establishes that
opposer, in fact, has used its mark in conjunction with such
a wide range of services. As noted above, however, the
evidence of use for specific services that overlap with
Opposition No. 91124801
14
those of applicant is most significant. We note, however,
that the record also shows that firms that place temporary
and permanent employees may do so in a wide range of fields.
See Machado exh. 11. Accordingly, even without the direct
overlap in services that is evidenced by the record, we
would find the services related.
We consider next the marks. In doing so, we note that
when marks will be used in connection with the same
services, the marks do not have to be as similar for a
likelihood of confusion to exist, as they would have to be
if the services were not identical. Century 21 Real Estate
Corp. v. Century Life of America, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992) (“When marks would appear on virtually identical
goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines.”). We
also recognize the well-established principle that, while
the marks are compared in their entireties, including
descriptive or disclaimed portions thereof, “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
consideration of the marks in their entireties.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Opposition No. 91124801
15
Applicant has disclaimed exclusive rights in the words
FINANCIAL STAFFING, and there can be no doubt, based on the
record, that both terms are descriptive when used in
connection with applicant's services. Applicant's
identification indicates that it focuses on "financial
services personnel," and numerous exhibits reveal that
"staffing" is a descriptive term for employment, personnel
placement, and temporary labor companies. See, for example,
Machado exhibit 11, which are yellow page listings that show
various companies using the term "staffing" in a descriptive
manner. Accordingly, the dominant portion of applicant's
mark, and the portion on which prospective customers would
rely to distinguish applicant from other "staffing"
agencies, is the term CREATIVE.
Much the same analysis applies to opposer's mark, for
"staffing" is no less descriptive for opposer's services
than it is for applicant's services. Accordingly, CREATIVE
is also the dominant term in opposer's mark.
The marks do not merely share a common dominant
element, they also both have that dominant term placed
first, and it has been held that the first parts of marks
are often those most likely to be impressed on the minds of
prospective purchasers and remembered. Presto Products,
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895 (TTAB 1988).
Opposition No. 91124801
16
Applicant has argued (brief, p. 10) that opposer always
displays its pleaded CREATIVE STAFFING mark in conjunction
with a design element and that this helps avoid possible
confusion. The record does not support this conclusion.
Various exhibits to the Machado deposition show use of
CREATIVE STAFFING without a design element. See, for
example, exhibits 3A, 5 and 6, which show mixed uses both
with and without the design. In addition, the testimony of
opposer's witnesses establishes that opposer does a good
deal of client solicitation over the phone, so that the mark
would be spoken and not seen. Even if we found that the
record established that each visual display of opposer's
mark did incorporate the design element, we still would
consider the word CREATIVE to be the dominant element, as
words generally are more dominant than designs. See Giant
Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565,
218 USPQ 390 (Fed. Cir. 1983); In re Appetito Provisions
Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and Kabushiki Kaisha
Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985).
This is particularly true in this case, where the design is
more ornamental than recognizable as anything in particular.
In terms of connotation, insofar as applicant's mark
includes the term FINANCIAL, it has a more specific
connotation than does opposer's mark. Nonetheless, the
overall commercial impression of the two marks is very
Opposition No. 91124801
17
similar. Clairol Incorporated v. Roux Laboratories, 442
F.2d 980, 169 USPQ 589, 590 (CCPA 1971) (Even though the
words “Plus” and “Puff” “may have different meanings by
themselves, this difference alone does not overcome the
conclusion that when the marks are viewed in their
entireties a likelihood of confusion exists”).
Based on our finding that the parties' services
overlap, and on the absence of any restrictions as to
channels of trade or classes of consumers in applicant's
identification (so that we must presume applicant to utilize
the same channels of trade as opposer and market to the same
consumers as opposer),6 and on the very similar overall
commercial impressions created by the respective marks, we
have no doubt that there exists a likelihood of confusion of
consumers. Applicant's mark and services would likely be
viewed as identifying a more specific or specialized subset
of opposer's services. See Creative Playthings, Inc. v.
Fisher-Price Toys, Inc., 169 USPQ 58 (TTAB 1971) (Board
sustained opposition against registration of CREATIVE
BLOCKS, with BLOCKS disclaimed, based on opposer's prior use
of CREATIVE PLAYTHINGS as mark and trade name, finding that
purchasers familiar with opposer's mark and goods would be

6 Moreover, the record is clear that the parties actually do have
certain common customers. See opposer's response to applicant's
interrogatory no. 14, and the Cholodofsky testimony dep. at pp.
19-20 in regard to Kelly Services.

Opposition No. 91124801
18
likely to believe that applicant's mark identified a
particular line of opposer's toys). See also, Miss
Universe, Inc. v. Drost, 189 USPQ 212 (TTAB 1975)(likelihood
of confusion between MISS U.S.A. and MISS NUDE U.S.A.).
Accord, Miss Universe, Inc. v. Flesher, 433 F.Supp. 271, 200
USPQ 330 (C.D.Cal. 1977)(any insertion by defendant of word
between MISS and U.S.A., as an adjective or other word
modifying U.S.A., likely to cause confusion with plaintiff's
MISS U.S.A. mark), injunction modified, remanded for trial,
605 F.2d 1130, 204 USPQ 354 (9th Cir. 1979).
Notwithstanding that we have already concluded that
there is a likelihood of confusion, we address briefly
opposer's proffered evidence of instances of actual
confusion. Applicant has argued that each of the specific
instances on which opposer relies occurred after opposer
produced a brochure which used the phrase "Creative
Financial Staffing" within a listing of "Creative Staffing
Divisions," and after opposer used a phone directory listing
for "Creative Financial Staffing."7 In essence, applicant
contends that opposer is responsible for the instances of

7 For the brochure, see exhibit 3A to the Machado testimony
deposition and exhibit 47 to applicant's testimony deposition of
Daniel Casey. Both these exhibits have subsections entitled
"Creative Financial Staffing," "Creative Medical/Insurance
Support Staffing" and "Creative Hospitality Staffing," and appear
to be copies of the same brochure. As for the yellow pages
listing, opposer's witness testified this was not an ad, but only
a listing, and that it appeared for one year when offered to
opposer by the directory publisher at no charge. Machado dep.
pp. 39-41 and 142-43.
Opposition No. 91124801
19
actual confusion, if any of opposer's proffered examples
actually can be found to be instances of confusion
concerning the involved marks, as opposed to errors of
another type. Opposer, on the other hand, asserts that each
of the instances of asserted actual confusion, some of which
are very recent, cannot be attributable to publication of a
single brochure and/or a phone directory listing, both of
which occurred years before. Moreover, opposer contends,
applicant has not proven that any of the individuals
asserted by opposer to have been confused actually had seen
the brochure and/or phone listing. To these arguments
regarding how we should interpret this body of evidence, we
add our own observation that much of opposer's evidence of
actual confusion suffers from a degree of vagueness, for
example, the asserted instance in which an unidentified
employee of applicant came to opposer's office for a
paycheck.
While the parties have examined and debated the
particulars of each purported instance of actual confusion,
we need not do so, and need not make specific findings on
each particular instance. The law is clear that evidence of
actual confusion need not be present to conclude that there
exists a likelihood of confusion. Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396
(Fed. Cir. 1983). Thus, while we do not agree with
Opposition No. 91124801
20
applicant that every instance of purported actual confusion
is attributable to opposer's brochure or telephone directory
listing, we do not rely on this evidence to support our
conclusion that there is a likelihood of confusion.8
Another argument that applicant advances with some
degree of fervor focuses on the existence of certain third-
party registrations which utilize the term "Creative," and
asserts that these weigh against a finding of likelihood of
confusion. Brief, p. 17. One of the four registrations on
which applicant relies is for a mark (APPLIED STAFFING) that
does not employ the term "Creative"; another is for the mark
RANSTAD CREATIVE TALENT, but includes a disclaimer of
"Creative Talent";9 and a third is for MEDICAL STAFFING
SOLUTIONS and design, which includes a much smaller phrase
in parentheses, "(providers of creative professional
opportunities)." The fourth registration is for the same
mark as opposer's, i.e., CREATIVE STAFFING, but is the
subject of a petition to cancel filed by opposer. While

8 Applicant closes its brief by arguing that the unclean hands of
opposer, attributable to opposer's use of applicant's mark,
should preclude opposer from obtaining the relief it seeks, i.e.,
an order refusing registration to applicant. Applicant did not,
however, plead an unclean hands affirmative defense and we do not
find such a defense to have been tried by express or implied
consent of the parties.

9 Opposer argued that there is no use of the third-party marks in
Florida, which is inapposite. Applicant contends opposer has
actually provided evidence of the RANSTAD CREATIVE TALENT mark,
but applicant overlooks the fact that this evidence shows use of
the RANSTAD company name in a directory, not the RANSTAD CREATIVE
TALENT mark.
Opposition No. 91124801
21
applicant is correct in observing that this CREATIVE
STAFFING registration exists and cannot be discounted, its
existence goes more to the issue of whether opposer or the
registrant has the greater proprietary right in the mark,
not to the issue of whether "Creative" is so widely used for
staffing or personnel placement services that it should be
considered weak and deserving of only limited protection.
In any event, we acknowledge that "Creative" is a suggestive
term for these services, and that opposer's mark CREATIVE
STAFFING may be weak. However, “even weak marks are
entitled to protection against registration of similar
marks” for identical services. In re Colonial Stores, 216
USPQ 793, 795 (TTAB 1982). See also In re The Clorox Co.,
578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978) (ERASE for a
laundry soil and stain remover held confusingly similar to
STAIN ERASER, registered on the Supplemental Register, for a
stain remover). We reiterate that the services in this case
are identical in part, and the marks CREATING STAFFING and
CREATIVE FINANCIAL STAFFING, are extremely similar.
The final point of disagreement that we must address is
the deliberation with which purchasers of the parties'
services would make their purchasing decisions. We cannot
agree with opposer's contention that a business will take
lightly its decision to hire even a temporary employee and
we agree with applicant that there is some degree of care
Opposition No. 91124801
22
exercised in making these decisions. Nonetheless, the
record is clear that the parties offer overlapping services
under very similar marks to the same classes of consumers,
including some common customers, and that a good deal of
business is solicited by phone. Under these circumstances,
we conclude that even purchasers acting with some degree of
deliberation will be subject to confusion. Further,
businesses in which opposer and applicant may place
temporary personnel are not the only class of relevant
persons to be considered in this case. We must also
consider the individuals who may respond to advertisements
of opposer and applicant that seek individuals for placement
with client companies. This group of persons may be
somewhat less deliberate than hiring companies.
Decision: The opposition is sustained and registration
to applicant is refused.