Sasha Corp, Inc.

Trademark Trial and Appeal Board

Feb 5, 2007

No. 78608576 (T.T.A.B. Feb. 5, 2007)

Mailed: February 5, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sasha Corp., Inc.
________

Serial No. 78608576
_______

David M. Lafkas of Lafkas Patent LLC for Sasha Corp., Inc.

Jennifer M. Martin, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
_______

Before Holtzman, Zervas and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Sasha Corp., Inc. to
register the mark SHERPA COACHING in standard character
form on the Principal Register for the following services:
“personal coaching in the field of professional self-
improvement” in International Class 41.1

1 Application Serial No. 78608576 was filed on April 14, 2005,
based upon applicant’s assertion of February 12, 2002 as the date
of first use of the mark anywhere and in commerce. In response
to a requirement by the trademark examining attorney, applicant
disclaimed the exclusive right to use “COACHING” apart from the
mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78608576
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as intended to be used in connection with
its services, so resembles the mark SHERPA, previously
registered on the Principal Register in standard character
form for “employment counseling services; personnel
searching, recruiting, hiring and placement services” in
International Class 35,2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
Applicant asserts that its mark does not create the
same commercial impression as the mark in the cited
registration. Specifically, applicant argues that SHERPA
COACHING is dissimilar from SHERPA in appearance and sound;
and that the inclusion of “COACHING” in applicant’s mark
creates a distinct meaning and connotation from that of
SHERPA. Applicant further argues that it “provides
‘process-driven executive coaching’ to upper-level staff in
a variety of industries” (brief, p. 10); that according to
its Internet website, registrant “specializes in
‘recruiting, staffing and consulting services for
Accounting/Finance and Information Technology’” (brief, p.

2 Registration No. 2825730 issued on March 23, 2004.
Ser No. 78608576
3
9); that registrant’s services are marketed to “job seekers
and human resources executives” (Id.); that executive
coaching is a rapidly growing field, provided by sources
that are distinct from those providing counseling services;
and that applicant’s services thus are not related to those
of registrant. Applicant also argues that the consumers of
registrant’s services as well as its own are highly
sophisticated professionals; and that, as a result, the
purchasers of the services provided under both marks are
careful and exercise great care in their selection thereof.
The examining attorney maintains that applicant’s mark
merely adds the disclaimed, generic term “COACHING” to
registrant’s SHERPA mark; that the dominant wording
“SHERPA” in applicant’s mark is more significant in
creating a commercial impression than the disclaimed
wording; and that, when viewed as a whole, applicant’s mark
is highly similar to the mark in the cited registration.
The examining attorney further maintains that the same
marks are used to indicate the source of both applicant’s
services as well as those of registrant; that registrant’s
services are broadly described and contain no restrictions
as to their channels of trade; and that, as a result,
registrant’s services are presumed move in all normal
channels of trade for such services. The examining
Ser No. 78608576
4
attorney asserts in addition that the same consumers will
be exposed to the services identified under both
applicant’s mark and that of registrant; and that even
sophisticated purchasers may experience confusion as to the
source of those services.
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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
We first consider the similarity of the marks. In
this case, applicant’s mark, SHERPA COACHING, incorporates
in its entirety the cited mark, SHERPA, as its most
distinctive element. As for the presence of COACHING in
applicant’s mark, this term, which has been disclaimed, is
at best descriptive of the recited services. It is a well-
Ser No. 78608576
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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. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). In view of the
descriptive nature of the word COACHING, it has little, if
any, source-indicating significance, and is entitled to
less weight in the likelihood of confusion analysis. We
further note that under actual marketing conditions,
consumers do not necessarily have the luxury of making
side-by-side comparisons between marks, and must rely upon
their imperfect recollections. See Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). In this
case, consumers who are familiar with the mark, SHERPA,
used in connection with registrant’s employment counseling,
personnel searching, recruiting, hiring and placement
services, who then see the mark SHERPA COACHING used in
connection with personal coaching in the field of
professional self-improvement, are likely to assume that
the owner of the SHERPA mark has simply added COACHING when
using the mark in connection with services related to
Ser No. 78608576
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personal coaching. In other words, consumers are likely to
view both marks as variations of each other, but both as
indicating a single source. Thus, despite the fact that
applicant’s mark includes the word COACHING, the marks
SHERPA and SHERPA COACHING are highly similar in
appearance, pronunciation, connotation and commercial
impression. Accordingly, this du Pont factor favors a
finding of likelihood of confusion.
Turning now to our consideration of the recited
services, it is clear that applicant’s personal coaching
services are not the same as registrant’s employment and
personnel services. However, it is not necessary that the
services at issue be the same as, or even 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, because of the
similarity of the marks, give rise to the mistaken belief
that they originate from the same producer. See In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
Ser No. 78608576
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In this case, the examining attorney has made of
record a number of use-based, third-party registrations
which show that various entities have adopted a single mark
for services that are identified in both applicant’s
application and the cited registration. See, for example:
Registration No. 2578802 for individual and group
counseling, coaching, interviewing, assessment
and information provision services regarding
one's career, transition and life skills;

Registration No. 2756389 for education, training,
counseling and personal coaching to individuals
and businesses in one-on-one, group and seminar
settings in the field of business and personal
growth and development;

Registration No. 2927709 for career counseling
services, career coaching services and
standardized aptitude testing for career coaching
services;

Registration No. 2897234 for, inter alia,
employment recruiting, placement and career
networking; employment counseling; business
consultation services, namely, advising
businesses in the field of employee coaching; and
executive coaching;

Registration No. 2860235 for, inter alia,
employment recruiting, placement and career
networking; employment counseling; and executive
coaching;

Registration No. 2658938 for, inter alia, human
resources for others, namely consulting on
employee recruiting, employee relations, and
employee compensation; career counseling, namely,
career development advice and counsel; and
personal coaching services in the field of
business management; and

Ser No. 78608576
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Registration No. 2943165 for, inter alia,
personnel placement, recruitment and retention;
personal coaching services in the field of the
hospital/medical industry; and training services
in the field of coaching for the hospital/medical
industry.

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 1783, 1786 (TTAB
1993).
In addition, the examining attorney submitted evidence
from Internet web sites suggesting that the same entities
provide both applicant’s and registrant’s types of
services. Excerpts from these articles and web pages
follow:

Our personal coaching and counseling packages are
designed to help you do these things and
accomplish your goals…

Counseling Services a la Carte (individual career
counseling sessions):
• Separation counseling
• An assessment: What do you really like to do
and what are you really good at?
• Evaluation of strengths and weaknesses
• Behavioral profiling of strengths and
weaknesses
• Resume and cover letter preparation
• Creating a foolproof strategy that ensures
employment interviews
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• Training in skilled interviewing including how
to get an offer and how to negotiate salary
• Individual coaching in how to market yourself
including where to post your resume on the
Internet, networking techniques and development
of a personalized job search strategy
• Phone follow-up support and guidance
• Image counseling
• Values profile and coaching
• Other customized options upon request…

Temporary placement or contract work.
(www.hrstore.com/careercounseling.html);

Bridgeway Career Development
Career Counseling, Executive and Personal
Coaching, Consulting

Janet Scarborough, Ph.D. is the founder of
Bridgeway Career Development. For over a decade,
Dr. Scarborough has successfully assisted
individual and organizational clients seeking
career development, executive or personal
coaching, and consulting….

Eric Jacobsen, Ph.D. has provided career
counseling, job search consulting, and executive
coaching to over 350 executives; managers and
professionals….
(www.bridgewaycareer.com);

Career Counseling and Executive Career Coaching
for Professionals, Attorneys and Entrepreneurs

Let D & B Consulting help you reinvent a career
and life you can enjoy through a proven process
of career testing and assessment, career
counseling and career coaching, executive
coaching, strategic career planning, goal setting
and job search, as well as performance
improvement and achieving work/life balance. My
approach helps you with immediate career and life
choices as well as long-term career, business and
life planning….
Ser No. 78608576
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(www.dandbconsulting.com);

Drs. Timothy Butler and James Waldroop have been
career advisors to a wide range of clients for a
collective 30+ years. Our expertise is in career
counseling and coaching, specifically for work in
the business world – an arena which we define
broadly. Our clients are people at all levels,
at all stages of their careers, at all ages, and
in a very wide variety of industries and
functions.
(www.careerdiscovery.com/services_ind.html); and

the following screen shot from www.baskincareer.com;

Ser No. 78608576
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The foregoing evidence demonstrates the related nature of
the services at issue, and this du Pont factor also favors
a finding of likelihood of confusion.
Furthermore, we are not persuaded by applicant’s
arguments that registrant’s services are more restricted as
to type or trade channel than indicated in the recitation
of services in the cited registration. It is settled that
in making our determination regarding the relatedness of
the parties’ services, we must look to the services as
identified in the involved application and cited
registration. See 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.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”) Thus,
while applicant may assert that registrant’s services are
Ser No. 78608576
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directed toward job seekers and human resource executives
in the accounting, finance, and information technology
fields, registrant’s recitation of services contains no
such limitations. Accordingly, registrant’s services are
presumed to move in all normal channels of trade and be
available to all classes of potential consumers, including
consumers of applicant’s services. See In re Elbaum, 211
USPQ 639, 640 (TTAB 1981).
The final du Pont factor discussed by applicant and
the examining attorney is that of the conditions of sale.
Applicant asserts that both its services and those of
registrant would be purchased by careful, well-educated and
sophisticated users. We disagree. First, there is no
basis to assume that applicant's and registrant’s services
are limited to well-educated persons. The identification
of services does not limit the services to particular
professions of occupations. Second, applicant has not
explained why the typical purchaser of applicant's coaching
services, who would likely be a member of the general
public, and those individuals who are not employees of
personnel offices or human resource professionals who would
use registrant’s services, would be sophisticated
consumers, and we know of no reason why they would be
sophisticated purchasers. Even if an individual is careful
Ser No. 78608576
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about a purchase, that does not necessarily make him a
sophisticated purchaser, since sophistication involves
knowledge of the service or industry. Third, the record in
this case does not support a finding that people looking
for employment will necessarily take care in making their
decisions regarding whose services to retain, or that
employment services and coaches could not be casually, even
verbally, recommended.3 Moreover, in view of the third-
party registrations which are evidence that both
applicant’s and registrant’s services are of a type which
may emanate from a single entity, prospective purchasers
may mistakenly believe that these services could emanate
from a common source. In addition, even if some degree of
care were exhibited in making the purchasing decision, the
marks SHERPA and SHERPA COACHING are so similar that even
careful purchasers are likely to assume that the marks
identify services emanating from a single source.
Decision: The refusal of registration is affirmed.

3 Furthermore, even sophisticated purchasers are not necessarily
knowledgeable in the field of trademarks or immune from source
confusion. See In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB
1988).