Network Resources, Inc.

Trademark Trial and Appeal Board

Dec 14, 2001

No. 75734838 (T.T.A.B. Dec. 14, 2001)

12/14/01 EWH
Paper No. 10

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

Trademark Trial and Appeal Board
____________

In re Network Resources, Inc.
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Serial No. 75/734,838
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J. Scott Evans for Network Resources, Inc.

Deirdre R. Gillis, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
____________

Before Hanak, Quinn and Hohein, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge.

Network Resources, Inc. (applicant) seeks to
register NRI NETWORK RESOURCES, INC. and design in the
form shown below for “employment placement service,
namely, placing temporary and permanent technical support
employees in government agencies and large corporations
to assist with computer hardware, computer software and
computer network projects.” The application was filed on
June 23, 1999 with a claimed first use date of June 18,
1998.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.

Ser. No. 75/734,838

The Examining Attorney has refused registration
pursuant to Section 2(d) of the Trademark Act on the
basis that applicant’s mark, as applied to applicant’s
services, is likely to cause confusion with two marks
previously registered to the same entity. The first mark
is NRI in typed drawing form for “employment agency
services.” Registration No. 1,005,926. The second mark
is NRI STAFFING RESOURCES and design in the form shown
below for “temporary employment agency services;
personnel placement and recruitment services.”
Registration No. 1,993,844.

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Ser. No. 75/734,838

When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not
request a hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the
similarities of the goods or services and the
similarities of the marks. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The 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.”).
Considering first the services, one fundamental
principle must be recognized. In Board proceedings, “the
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Ser. No. 75/734,838

question of likelihood of confusion must be determined
based
on an analysis of the mark as applied to the goods and/or
services recited in applicant’s application vis-a-vis the
goods and/or services recited in [registrant’s]
registration, rather than what the evidence shows the
goods and/or services to be.” Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815
(Fed. Cir. 1987). The services for the mark NRI are very
broadly described as simply “employment agency services.”
This broad description of services would include
employment agency services of all types. Moreover,
except for differences in terminology, employment agency
services and employment placement services (applicant’s
services) are the same, and applicant does not argue
otherwise. Likewise, the services for the mark NRI
STAFFING RESOURCES and design are very broadly described
as “temporary employment agency services; personnel
placement ... services.” This would include temporary
employment agency services and personnel placement
services of all types.
In arguing that there is no likelihood of confusion,
applicant states at page 2 of its reply brief that it
“amended its recitation of services to limit itself to a
far
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Ser. No. 75/734,838

more narrow market” than served by registrant. Applicant
notes that it provides its employment placement or agency
services “to a small, specialized market” limited as to
clientele (government agencies and large corporations)
and type of personnel (those versed in computers).
(Applicant’s reply brief page 2).
What applicant fails to appreciate is that while its
recitation of services may indeed be narrow, the
recitation of services for the two cited registrations
are broad enough to encompass applicant’s narrow
recitation of services. For example, the services of the
NRI registration (employment agency services) are broad
enough to include placing temporary and permanent
technical support employees in government agencies and
large corporations to assist with computer projects
(applicant’s services). Likewise, the services of the
NRI STAFFING RESOURCES and design registration (temporary
employment agency services and personnel placement
services) are broad enough to include placing temporary
and permanent technical support employees in government
agencies and large corporations to assist with computer
projects (again, applicant’s services). Thus, pursuant
to the teachings of Canadian Imperial Bank, we
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Ser. No. 75/734,838

must, in our likelihood of confusion analysis, find that
applicant’s services are legally identical to the
services of both of the cited registrations.
Considering next the marks, we note at the outset
that when the services are legally identical as is the
case here, “the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). Marks are compared in terms of visual appearance,
pronunciation and connotation. In terms of visual
appearance, the initials NRI are decidedly the most
prominent portion of applicant’s mark. Thus, the most
prominent portion of applicant’s mark is identical to the
cited mark NRI, and likewise is identical to the most
prominent portion of the cited mark NRI STAFFING
RESOURCES and design.
At page four of its brief, applicant argues that
because the letter “I” in the NRI portion of its mark is
in lower case, that this gives applicant’s mark “a very
different visual impression from the marks listed in the
cited registrations.” While the placement of the letter
“I” in the lower case does cause applicant’s mark to be
somewhat
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Ser. No. 75/734,838

different in terms of visual appearance from the two
cited marks, we find that it does not cause applicant’s
mark to have “a very different visual impression” as
contended by applicant. At no time has applicant ever
argued that the first and most dominant part of its mark
(NRI) would not be perceived as the initialism NRI.
Thus, in terms of visual appearance, we find that
applicant’s mark is quite similar to the cited mark NRI
per se, and is extremely similar to the cited mark NRI
STAFFING RESOURCES and design in that both applicant’s
mark and the second cited mark depict the initials NRI in
a very prominent fashion on one line, and then depict on
a second line the words NETWORK RESOURCES (applicant’s
mark) or STAFFING RESOURCES (the second cited mark).
In terms of pronunciation, applicant’s mark is quite
similar to the two cited marks in that in pronouncing all
three marks, one would first have to pronounce the
initials NRI. Moreover, given the extreme prominence of
the initials NRI in applicant’s mark, we find that a
significant number of consumers would shorten applicant’s
mark and pronounce it as simply NRI. Of course, such a
pronunciation would make applicant’s mark identical to
the cited mark NRI per se.
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Ser. No. 75/734,838

Likewise, with regard to the cited mark NRI STAFFING
RESOURCES and design, we find that a significant number
of consumers would likewise pronounce this mark as simply
NRI. When so pronounced, the second cited mark would be
identical in terms of pronunciation to applicant’s mark
when applicant’s mark is likewise pronounced simply as
NRI.
Finally, in terms of connotation, we find that the
most prominent portion of applicant’s mark (NRI) is
identical to the cited mark NRI per se in that considered
simply by themselves, these initials lack any
connotation. As for a comparison of applicant’s mark
with the cited mark NRI STAFFING RESOURCES and design,
applicant argues at page five of its brief that “it is
clear that the presence of the additional wording NETWORK
RESOURCES, INC. [in applicant’s mark] eliminates any
possible likelihood of confusion between applicant’s mark
and the cited NRI STAFFING RESOURCES mark.” We
respectfully disagree. To begin with, the connotation of
applicant’s mark NRI NETWORK RESOURCES, INC. and the
second cited mark NRI STAFFING RESOURCES are quite
similar in that the dominant portion of both marks is the
same (NRI), and moreover, the third portion of both marks
is the same, namely, the word RESOURCES. When both
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Ser. No. 75/734,838

marks are used in connection with employment
agency/placement services, we find that consumers, even
sophisticated consumers, would often not make
distinctions between the connotations of NRI NETWORK
RESOURCES, INC. and NRI STAFFING RESOURCES.
In sum, given the fact that applicant’s services are
legally identical to the services of the two cited
registrations, we find that applicant’s mark is similar
enough to both of the cited marks in terms of visual
appearance, pronunciation and connotation such that there
is a likelihood of confusion.
Decision: The refusal to register is affirmed.

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