Snelling and Snelling, Inc.

Trademark Trial and Appeal Board

Jan 3, 2005

No. 76431612 (T.T.A.B. Jan. 3, 2005)

Mailed: January 3, 2005
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Snelling and Snelling, Inc.
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Serial No. 76431612
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Stanley B. Kita of Howson and Howson for applicant.
Verna Beth Ririe, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Hairston, Chapman, and Bucher, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Snelling and Snelling, Inc. filed on July 17, 2002, an
application to register on the Principal Register the mark
shown below
for services which were ultimately identified as “payroll
preparation and preparing payroll related business reports
for others.” The application was originally based on
applicant’s assertion of a bona fide intention to use the
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76431612
2
mark in commerce. Applicant filed an amendment to allege
use, which was accepted by the USPTO, with claimed dates of
first use and first use in commerce of May 10, 2002 and
September 30, 2002, respectively.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), in view of the
previously registered mark shown below
(“paychecks” disclaimed) for “payroll services, namely,
providing clients with payroll returns such as Form 941 and
940, Form W-2 and other state forms.”1
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
1 Registration No. 2289797, issued November 2, 1999.
Ser. No. 76431612
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(Fed. Cir. 2003). In any likelihood of confusion analysis,
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 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We turn first to a consideration of applicant’s
services and the cited registrant’s services. It is well
settled that goods and/or services need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
goods and/or services are related in some manner or that
the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer or
that there is an association between the producers of the
goods and/or services. See In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Of course, it has been repeatedly held that in
determining the registrability of a mark, this Board is
Ser. No. 76431612
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constrained to compare the goods and/or services as
identified in the application with the goods and/or
services as identified in the registration(s). See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987).
In this case, applicant identified its services as
“payroll preparation and preparing payroll related business
reports for others.” The cited registrant’s services are
identified as “payroll services, namely, providing clients
with payroll returns such as Form 941 and 940, Form W-2 and
other state forms.”
It is clear that, as identified, applicant’s service
of preparing payroll related business reports for others is
included within the scope of registrant’s services of
providing payroll returns (such as Form 940 and 941) and
other state forms. These are closely related, if not
legally identical, services. Indeed, applicant does not
argue that the services differ, or that they are unrelated
within the meaning of the Trademark Act.
Likewise, we do not find any differences in the
channels of trade or purchasers for these services. We
must presume, given the identifications (neither of which
Ser. No. 76431612
5
is limited), that the services are offered through the same
channels of trade, and are purchased by the same classes of
purchasers. See Canadian Imperial Bank v. Wells Fargo
Bank, supra.
Turning to the marks, our primary reviewing Court has
stated the following: “[w]hen marks would appear on
virtually identical goods or services, the degree of
similarity 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).
Applicant argues that in view of registrant’s
disclaimer of the word “paychecks,” the Examining Attorney
ascribes too much weight to the suggestive word “plus” as
determined by the TTAB in the case of Plus Products v.
Medical Modalities Associates, Inc., 211 USPQ 1199 (TTAB
1981), and she ascribes too little weight to the
differences in the designs in each mark when properly
considered as set forth by the Court in the case of In re
Electrolyte Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239
(Fed. Cir. 1990); and that the cited registration issued
over a previous registration (No. 1922387 for the mark
CHECK$ and design for “payroll preparation,” cancelled
under Section 8 of the Trademark Act in 2002), and if those
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registrations could co-exist, then applicant’s and the
cited registrant’s marks should be able to co-exist without
a likelihood of confusion.
It is well settled that marks must be considered in
their entireties because the commercial impression of a
mark on an ordinary consumer is created by the mark as a
whole, not by its component parts. This principle is based
on the common sense observation that the overall impression
is created by the purchaser’s cursory reaction to a mark in
the marketplace, not from a meticulous comparison of it to
others to assess possible legal differences or
similarities. See 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §23:41 (4th ed. 2001).
See also, Dassler KG v. Roller Derby Skate Corp., 206 USPQ
255 (TTAB 1980). The proper test in determining likelihood
of confusion does not involve a side-by-side comparison of
the marks, but rather must be based on the similarity of
the general overall commercial impressions engendered by
the involved marks.
In this case, applicant’s mark is CHECKSPLUS and
design and registrant’s mark is PAYCHECK$ PLUS and design.
The design feature in applicant’s mark is simply a check
mark starting inside a square and continuing until its ends
outside of the square, while registrant’s mark includes a
Ser. No. 76431612
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dollar sign as the first letter “S,” and the words
“PAYCHECKS PLUS” are on two separate lines and they appear
within a simple rectangular outline. The marks are highly
similar in sound, and it is the words or literal portions
of the marks (CHECKSPLUS and PAYCHECKS PLUS) that would be
utilized in calling for the respective services.
In connotation, both marks suggest that there is
something better or additional in their respective services
relating to payroll preparation. Also, the Examining
Attorney made of record an on-line dictionary definition of
the word “paycheck” as “1. A check issued to an employee in
payment of salary or wages. ….” Clearly, the term
“paycheck” is a particular type of “check.”
The marks are similar in appearance, particularly
keeping in mind, as stated previously, that the proper test
in determining likelihood of confusion is not on a side-by-
side comparison of the marks. Rather, the determination
must be based on the recollection of the purchasers, who
normally retain a general rather than specific impression
of the many trademarks encountered; that is, a purchaser’s
fallibility of memory over a period of time must also be
kept in mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Spoons Restaurants Inc. v. Morrison, Inc., 23 USPQ2d 1735
Ser. No. 76431612
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(TTAB 1991), aff’d unpub’d (Fed. Cir., June 5, 1992). The
minor differences identified above are not sufficient to
obviate a likelihood of confusion between these marks. See
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Cir. 1993).
When considered in their entireties, we find that
applicant’s mark and registrant’s mark are similar in
overall commercial impression such that, when used on the
closely related, if not legally identical, services
involved herein, confusion as to source is likely. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); and In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
Applicant’s reliance on the cases of Plus Products v.
Medical Modalities, supra, and In re Electrolyte
Industries, supra, is not persuasive of a different result
herein, as those case are readily distinguished from the
facts before us in this case.
Applicant’s argument about the previous co-existence
(for a short time) of one third-party registration with the
cited registration is unpersuasive. While the USPTO
strives for consistency of examination, as often noted by
the Court and the Board, each case must decided on its own
merits. We are not privy to the records of the third-party
Ser. No. 76431612
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registration file, and moreover, the determination of
registrability of that particular mark by a Trademark
Examining Attorney cannot control the merits in the case
now before us. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001). See also, In re
Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); and In re
Wilson, 57 USPQ2d 1863 (TTAB 2001).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.