Wang

Trademark Trial and Appeal Board

Sep 10, 2008

No. 78706610 (T.T.A.B. Sep. 10, 2008)

Mailed: September 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Wang
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Serial No. 78706610
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Rebecca A. Wang, pro se.

Linda M. Estrada, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Zervas, Walsh and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Rebecca A. Wang, a Massachusetts sole proprietorship
composed of Rebecca A. Wang, sole proprietor, has filed an
application to register on the Principal Register the mark
HORIZON CAREER and design,

for services ultimately identified as “recruiting,
placement, staffing and career networking services; [and]
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Ser No. 78706610
2
providing career information via [the] world wide web
internet global computer network.”1 The term “CAREER” is
disclaimed.
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark is confusingly similar to
the mark in Registration No. 2413209, HORIZON STAFFING (in
typed form), for “temporary and permanent personnel
placement and recruitment services in the light industrial
sector.”2 The term “STAFFING” is disclaimed.
When the refusal was made final, applicant appealed
and requested reconsideration of the final refusal. On
January 18, 2008, the examining attorney denied the request
for reconsideration and, on January 29, 2008, this appeal
was resumed. Briefs were filed by both applicant and the

1 Serial No. 78706610, filed September 9, 2003, and alleging
July 4, 2004 as the date of first use of the mark anywhere and in
commerce. The application also contains the following color
statements: The color(s) orange, red, yellow, blue, green, white
and black is/are claimed as a feature of the mark. The mark
consists of a yellow sun with black shading on the rays and an
orange and red background. Above the sunshine design is the
wording HORIZON in red and orange above a black curved line.
Below the curved line is the wording CAREER in blue. There is a
black horizontal line below the sun design and above the ocean
design which feature the color blue accompanied by white water
rings spreading to the yellow and green road.

2 Registration No. 1896609, issued December 12, 2000, Section 8
Affidavit accepted, Section 15 Affidavit acknowledged.
Ser No. 78706610
3
examining attorney. For the reasons discussed below, we
affirm the refusal to register.
As a preliminary matter, we note that the examining
attorney originally cited the marks in Registration Nos.
2758850, 2877966 and 2788800 as additional bars to
registration of applicant’s mark. Contrary to applicant’s
apparent belief, the refusals were withdrawn as to those
marks; the final refusal is limited to the HORIZON STAFFING
mark cited above. We also note that applicant refers to a
previous recitation of services in its brief. We have,
however, based this decision on applicant’s services as
ultimately identified.
Turning now to the merits of this appeal, 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
(CCPA 1973). See also, In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (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
Ser No. 78706610
4
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
“recruiting, placement, staffing and career networking
services; [and] providing career information via [the]
world wide web internet global computer network” and
registrant’s “temporary and permanent personnel placement
and recruitment services in the light industrial sector.”
In determining likelihood of confusion, we must compare
applicant’s services as set forth in her application with
the services set forth in the cited registration. In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4
(Fed. Cir. 1993); and Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Where
the services in the application and/or cited registration
are broadly identified as to their nature and type (as is
the case herein with applicant’s identification), such that
there is an absence of any restrictions as to the channels
of trade and no limitation as to the classes of purchasers,
it is presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefor, and that they would be purchased by all potential
Ser No. 78706610
5
buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
The examining attorney argues that the parties’
services are “similar, related and travel in similar
channels of trade since they are recruiting and staffing
services.” (Br., p. 6). Applicant, despite contending
that that there is no likelihood of confusion as to the
source of the parties’ respective services, does not
dispute that the services are related or that they travel
in the same trade channels. Although the registrant’s
placement and recruitment services are restricted to the
light industrial sector, applicant’s recitation contains no
such restriction. As such, we must assume that applicant’s
broadly worded recruiting, staffing and placement services
encompasses all types of these services including
registrant’s temporary and permanent placement and
recruitment services in the industrial sector. We further
find applicant’s career networking services and provision
of career information via the Internet related to
registrant’s services because they are offered to the same
individuals and one is a necessary element of the other.
The du Pont factor of relatedness of the services thus
favors a finding of likelihood of confusion.
Ser No. 78706610
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Further, as noted above, in the absence of any
limitations to the services recited in applicant’s
application, we must presume that they will be offered in
all the normal channels of trade and will be offered to and
purchased by all the normal classes of purchasers,
including those seeking employees and/or employment in the
industrial sector. See In re Elbaum, supra. That is, we
find, at a minimum, that the channels of trade and classes
of purchasers overlap. In view thereof, the du Pont
factors of the similarity of the channels of trade and
purchasers strongly favor a finding of likelihood of
confusion as to the cited registration.
We now consider applicant's mark HORIZON CAREER and
design and registrant's mark HORIZON STAFFING. In
determining the similarity or dissimilarity of the marks,
we must consider the marks in their entireties in terms of
sound, appearance, meaning and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in their entireties that confusion
as to the source of the services offered under the
respective marks is likely to result. The focus is on the
Ser No. 78706610
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recollection of the average purchaser, who normally retains
a general, rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Applicant argues that her mark is not similar in
appearance, sound and commercial impression with the
registered mark because the literal portions of the marks
differ and her mark features a design element. The
examining attorney, by comparison, maintains that the marks
are confusingly similar. She particularly argues that the
literal portions of the marks are nearly identical in
appearance, sound and meaning as they feature the wording
HORIZON as the dominant literal component, and that the
design element present in applicant’s mark does not obviate
the similarity of the marks.
We agree that applicant’s HORIZON CAREER and design
mark is similar to the cited HORIZON STAFFING mark.
Although we must compare the marks in their entireties, one
feature of a mark may be more significant than another and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985) [“There is nothing improper
in stating that, for rational reasons, more or less weight
Ser No. 78706610
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has been given to a particular feature of a mark, provided
the ultimate conclusion rests on consideration of the marks
in their entireties. Indeed, this type of analysis appears
to be unavoidable.”] For instance, as our principle
reviewing court has observed, “[t]hat a particular feature
is descriptive or generic with respect to the involved
goods or services is one commonly accepted rationale for
giving less weight to a portion of the mark.” See In re
National Data Corp., 224 USPQ at 751.
In this case, the cited mark consists of two words,
the first being the word HORIZON, which appears to be
arbitrary in connection with the recited services. The
second word, STAFFING, is merely descriptive as evidenced
by the disclaimer. As such, the term STAFFING would not be
looked to by consumers as source identifying. Accordingly,
the dominant and distinguishing portion of the cited mark
is the term HORIZON.
Applicant’s mark consists of the term HORIZON CAREER
superimposed on a design of a rising or setting sun
separated from an ocean and road by a black horizontal
line. The word CAREER in applicant’s mark also has been
disclaimed, as it merely describes the category of services
applicant provides, and likewise would not be looked upon
as a source-identifying element. Nor do we find the design
Ser No. 78706610
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sufficient to distinguish applicant’s mark from the cited
mark. Although the design element is clearly noticeable,
it does not serve to distinguish these marks in sound or
appearance. The design simply reinforces the HORIZON
CAREER portion of the mark. Further, with a composite mark
comprising a design and words, it is the wording that would
make a greater impression on purchasers and is the portion
that is more likely to be remembered as the source-
signifying portion of the applicant’s mark. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001) (“words are
normally accorded greater weight because they would be used
by purchasers to request the goods”). See also, e.g., In
re Appetito Provisions Co., 3 USPQ2d 1553 (1987).
For these reasons, even though applicant’s and
registrant’s marks contain different wording, because of
the descriptive nature of the term CAREER in applicant’s
mark and the word STAFFING in the registered mark, and the
lesser weight to which these terms are entitled as we
compare the marks in their entireties, applicant’s mark and
the registered mark are similar in sound, appearance,
connotation and commercial impression.
Thus, the factor of the similarity of the marks favors
a finding of likelihood of confusion.
Ser No. 78706610
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In view of the foregoing, we conclude that prospective
purchasers familiar with registrant’s HORIZON STAFFING mark
for temporary and permanent personnel placement and
recruitment services in the light industrial sector would
be likely to believe, upon encountering applicant’s mark
HORIZON CAREER and design for recruiting, placement,
staffing and career networking services; [and] providing
career information via [the] world wide web internet global
computer network., that applicant’s and registrant’s
services originate with or are somehow associated with or
sponsored by the same entity.

Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.