Temps &Co., Inc.

Trademark Trial and Appeal Board

Sep 26, 2000

No. 75321951 (T.T.A.B. Sep. 26, 2000)

Paper No.
12
GDH/gdh
9/26/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Temps & Co., Inc.
________
Serial No. 75/321,951
_______
Adam D. Resnick and Nora E. Garrote of Piper Marbury Rudnick &
Wolfe LLP for Temps & Co., Inc.
Matthew J. Pappas, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Seeherman, Hohein and Hairston, Administrative
Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Temps & Co., Inc. has filed an application to
register the mark "THE CAREER SHOP" for "personnel placement"
services.1

1 Ser. No. 75/321,951, filed on July 10, 1997, which alleges a bona
fide intention to use the mark in commerce. The word "CAREER" is
disclaimed.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/321,951
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when applied to its services, so
resembles the mark "CAREER SHOP," which is registered, in the
stylized form reproduced below,
for "providing placement and recruitment information via a
computer database, and consulting services therewith,"2 as to
be likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
Turning first to consideration of the respective
marks, applicant asserts that its "THE CAREER SHOP" mark, when
viewed "as a whole, projects a substantially different
commercial impression as applied to Applicant's personnel
services" (underlining in original) from that engendered by
registrant's "CAREER SHOP" mark for its personnel services.
We agree with the Examining Attorney, however, that when
considered in their entireties, the marks at issue are
"virtually identical in appearance, sound, connotation and

2 Reg. No. 1,944,252, issued on December 26, 1995, which sets forth
dates of first use of December 1, 1994. The word "CAREER" is
disclaimed.
Ser. No. 75/321,951
3
commercial impression," with the presence of the article "THE"
in applicant's mark adding nothing of significance to
distinguish it from registrant's mark.
Turning, therefore, to 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, e.g., 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).
Although acknowledging in its brief that the above
legal principle "is correct," applicant maintains that there
is no likelihood of confusion in this case because "the
respective services, while arguably somewhat similar, do not
overlap." Specifically, applicant contends that (underlining
in original):
Registrant's services focus on electronic
career-related and consulting services,
Ser. No. 75/321,951
4
[while] Applicant's services are of a
different nature. Applicant's services
focus on regular employment placement
services--resume writing assistance, and
sending applicants to interviews with
prospective employers, particularly as
these services apply to the temporary
employment market, [the] so-called "temp
jobs." ....
Meanwhile, Registrant's services
appear to be focused on the "shopping
around" for jobs online with the assistance
of a Personal Job Shopper and licensed
career counselors. Potential employers are
"shopped around" on an online computer
database, while potential employees are
assisted in their employment search by
licensed career counselors who will respond
to questions from potential employers.
Applicant's services, on the other hand,
revolve around the more traditional
placement of employees whereby an applicant
can come in and "browse" or "shop" for a
career, like one would pick up something at
any shop.
In other words, Applicant's services
relate to a "physical" shop where consumers
"browse" or "shop" for a temporary job.
Meanwhile, Registrant's services focus on a
"virtual shop or database of job
information where employers are "shopped"
around to potential employees by licensed
career counselors of Registrant.
We concur with the Examining Attorney, however, that
applicant's "personnel placement" services and registrant's
"providing placement and recruitment information via a
computer database, and consulting services therewith," are so
closely related in a commercial business sense that, when
rendered under the virtually identical marks "THE CAREER SHOP"
Ser. No. 75/321,951
5
and "CAREER SHOP," confusion as to their origin or affiliation
would be likely. Both applicant and registrant provide
personnel placement and job recruitment information, along
with associated career consulting services, with the only
difference being that applicant offers its services from a
physical location while registrant's services are available
online. This distinction, however, is without any meaningful
significance since a job applicant in search of career choices
may obtain essentially the same assistance through either
applicant's services or those of registrant. Thus, as the
Examining Attorney points out as an example in his brief, a
consumer may not only utilize the applicant's personnel
placement services, but "[t]hat same consumer, when selecting
a company to provide additional employment assistance, may be
more likely to choose the registrant's personnel placement
services under the mistaken belief that it is the same company
which provided his/her initial personnel placement services."
Nevertheless, applicant insists that, in light of
the evidence of record of "the relative dilution of the term
CAREER SHOP for use in connection with employment-related
services," "consumers are accustomed to distinguishing among
such marks" and thus, given the difference in manner in which
applicant and registrant provide their respective services,
confusion as to source or sponsorship thereof is not likely.
Ser. No. 75/321,951
6
In this regard, applicant submitted with its request for
reconsideration of the final refusal excerpts from six third-
party Internet websites which utilize the term "CAREER SHOP"
in connection with what applicant characterizes as "job-
related services." The excerpts, in particular, show use of
the following designations:
(a) "CareerShop.com," which among
other things lists such topics as
"Resumes," "Jobs," "Personal Job Shopper,"
"Virtual Job Fairs," "Training" and
"Recruiting Services";
(b) "The Writer's Nook Business and
Career Shop," which advertises a link to
"Usjob.network Find The Perfect Job. Find
The Ideal Employee" at "JobWorld" and sets
forth a link to "JobHorizon - where careers
begin";
(c) "DMD Enterprises Career Shop,"
which touts "a great line of products and
services to assist you in your personal and
career development efforts," including a
"Resume Writing Service" and a "Career
Development Partnership Service";
(d) "NC-SIM Career Shop," which, while
"UNDER..CONSTRUCTION," indicates that it
will post employment opportunities under
the heading of "Job Bulletins";
(e) "DURHAM COLLEGE The Career Shop,"
which offers "all the support, resources
and educational options [required] to help
you meet your individual career needs,"
including a "Resume Service" with an option
providing for a "[o]ne-hour appointment
with a counselor to write a resume designed
to stand out from the crowd," "One Hour
Clinics" featuring "a personalized one-to-
one session with a Career Counsellor [sic]"
and a "Resource Centre [sic]" setting
Ser. No. 75/321,951
7
forth, inter alia, "occupational and career
information" and "job search resources";
and
(f) "Welcome to our Career Shop,"
which "offers advice and guidance on
careers and training to both employed and
unemployed people."
The Examining Attorney curtly dismisses the above
evidence, asserting in his brief that the fact that "other
entities use a given term with related services is completely
unfounded for purposes of determining whether a likelihood of
confusion exists when said term is not protected under federal
trademark/service mark laws." While we disagree with the
Examining Attorney that the evidence of third-party use of
designations containing the term "CAREER SHOP" is irrelevant
in the absence of federal registrations therefor, we find the
evidence is not persuasive of a different result with respect
to the question of likelihood of confusion.
Specifically, while the evidence furnished by
applicant demonstrates that the term "CAREER SHOP" is at least
highly suggestive, and therefore is entitled only to a
relatively narrow scope of protection, when used in connection
with services involving personnel placement, job recruitment
and associated career counseling, it still is the case that
even a weak mark, such as registrant's "CAREER SHOP" mark,
merits protection against a mark which is likely to cause
confusion. See, e.g., In re Clorox Co., 578 F.2d 305, 198
Ser. No. 75/321,951
8
USPQ 337, 341 (CCPA 1978). Thus, while applicant's "THE
CAREER SHOP" mark and registrant's "CAREER SHOP" mark are both
weak in the sense that they share the highly suggestive
terminology "CAREER SHOP," the fact remains, as discussed
earlier herein, that such marks are virtually identical when
considered in their entireties and in relation to the
respective services. Both marks are essentially identical,
not only in sound and appearance, but they also possess the
same highly suggestive connotation and project the same
commercial impression.
Moreover, and of even greater significance, the
evidence made of record by applicant serves to confirm the
closely related and overlapping nature of applicant's and
registrant's services. Such evidence reveals that personnel
placement services of the type applicant intends to offer,
including resume writing assistance and arranging interviews
with prospective employers, are readily available online to
customers seeking assistance with career opportunities and
employment opportunities, just as are registrant's services of
providing personnel placement, recruitment information and
associated counseling. Clearly, when rendered under the
virtually identical marks "THE CAREER SHOP" and "CAREER SHOP,"
consumers would regard registrant's services as a web-based
version of applicant's services and vice versa.
Ser. No. 75/321,951
9
Accordingly, we conclude that consumers and
prospective customers, familiar with registrant's mark "CAREER
SHOP" for "providing placement and recruitment information via
a computer database, and consulting services therewith," would
be likely to believe, upon encountering applicant's virtually
identical mark "THE CAREER SHOP" for "personnel placement"
services, that such closely related and overlapping services
emanate from, or are otherwise sponsored by or affiliated
with, the same source.
Decision: The refusal under Section 2(d) is
affirmed.
E. J. Seeherman
G. D. Hohein
P. T. Hairston
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board