AmediStaff, LLC

Trademark Trial and Appeal Board

Feb 14, 2018

No. 87002315 (T.T.A.B. Feb. 14, 2018)

This Opinion is Not a
Precedent of the TTAB
Mailed: February 14, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re AmediStaff, LLC
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Serial No. 87002315
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Phillip Thomas Horton for AmediStaff, LLC.

Valerie Kaplan, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
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Before Mermelstein, Adlin and Coggins,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
AmediStaff, LLC (“Applicant”) seeks registration of the mark shown below

(with HEALTHCARE disclaimed) for “employment staffing in the field of temporary
staffing of healthcare personnel to hospitals.”1 The Examining Attorney refused

1 Application Serial No. 87002315, filed April 15, 2016 based on an alleged bona fide intent
to use the mark in commerce under Section 1(b) of the Trademark Act. The application
Serial No. 87002315
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registration under Section 2(d) of the Act on the ground that Applicant’s mark so
resembles the registered mark TRS, in typed form, for “personnel recruiting
services”2 that use of Applicant’s mark in connection with Applicant’s services is
likely to cause confusion or mistake or to deceive prospective purchasers. After the
refusal became final, Applicant appealed and Applicant and the Examining Attorney
filed briefs.
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
Turning first to the services – “employment staffing in the field of temporary
staffing of healthcare personnel to hospitals” vs. “personnel recruiting services” –

includes this description of the mark: “The mark consists of an orange triangle with a blue
line going through the triangle and to the right of the orange triangle the words TRS
HEALTHCARE in a blue stylized font.”
2 Registration No. 1466548, issued November 24, 1987; renewed.
Serial No. 87002315
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they are very closely related, if not identical, on their face. Indeed, the Examining
Attorney introduced the following definitions from a business dictionary:
RECRUITMENT—“The process of finding and hiring the
best-qualified candidate (from within or outside of an
organization) for a job opening … The recruitment process
includes analyzing the requirements of a job, attracting
employees to that job, screening and selecting applicants,
hiring, and integrating the new employee to the
organization.”3

STAFFING—“The selection and training of individuals for
specific job functions, and charging them with the
associated responsibilities.”4

Office Action of August 10, 2016. In other words, Registrant’s services essentially
encompass Applicant’s, because Registrant finds candidates for job openings, while
Applicant intends to use its mark for selecting temporary health care workers for job
openings in hospitals.
Applicant argues that the services are distinct, because it is focused on healthcare
staffing specifically whereas Registrant is focused on personnel recruitment
generally, and because Applicant staffs healthcare employees temporarily and pays
them itself, while Registrant’s “clients become the employee of the respective
company that hires them.” 4 TTABVUE 12, 15. This argument is unsupported by any
evidence of record, but more importantly is irrelevant. As Applicant acknowledges in
its Appeal Brief, “[t]he nature and scope [sic] the goods or services offered in
connection with the Applicant’s and the registrant’s trademarks must be determined

3 http://www.businessdictionary.com/definition/recruitment.html.
4 http://www.businessdictionary.com/definition/staffing.html.
Serial No. 87002315
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on the basis of the goods or services identified in the application or registration.” Id.
at 13; see also id. at 8. In this case, Registrant’s services as identified in the cited
registration are not limited to any particular field of employment, or to employment
for any particular duration. In other words, Registrant’s identified services include
recruiting (or staffing) of personnel, which includes healthcare personnel.
Registrant’s identified services also include recruiting personnel, which includes
permanent and temporary personnel.
The Examining Attorney introduced additional evidence which establishes the
close relationship, if not identity, of Applicant’s and Registrant’s services.
Specifically, some third parties provide “HR Staffing” and “HR Recruiting” under the
same mark:

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Office Action of January 9, 2017 (printouts from “hrpersonnelservices.com” and
“amhealthcare.com”). One provides both permanent and temporary “medical staffing
and recruiting services” under the same mark:
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Id. (printout from “medsearchcorp.com”). Others provide recruiting, like Registrant,
and temporary staffing, like Applicant, under the same mark:

Id. (printout from “murrayresources.com”); see also id. (printout from
“americanmed.com”). And one indicates that “healthcare recruiters” provide
healthcare “staffing solutions”:
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Id. (printout from “maximstaffing.com”). This factor weighs heavily in support of
finding a likelihood of confusion.
To the extent Applicant’s and Registrant’s services are legally identical, we must
presume that the channels of trade and classes of purchasers for these legally
identical services are also the same. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel
Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical
goods, the channels of trade and classes of purchasers are considered to be the same);
Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101
USPQ2d 1022, 1028 (TTAB 2011). Even if the services are not legally identical, the
channels of trade nevertheless overlap, because while Applicant’s services are limited
to “temporary” staffing of “healthcare personnel” for “hospitals,” Registrant’s
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identification of services is unlimited in any way. That is, Registrant’s identified
services include recruiting of both temporary and permanent personnel, including
personnel who work in healthcare (or in other fields), and including personnel
recruited for hospital (or other types) of jobs. See Stone Lion Capital Partners, L.P. v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“An
application with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony
that the applicant’s use is, in fact, restricted to a particular class of purchasers.’”);
Citigroup Inc. v. Capital City Banking Group Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006);
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In any event, the Examining
Attorney’s evidence from third-party websites, set forth above, establishes that the
channels of trade and classes of purchasers for Applicant’s and Registrant’s services
overlap. This factor also weighs heavily in favor of finding a likelihood of confusion.
Turning to the marks, they are more similar than dissimilar “in their entireties
as to appearance, sound, connotation and commercial impression,” because they both
contain the identical acronym TRS. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). Indeed, the first term in a mark is often
its dominant portion. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”). See also, Palm Bay Imps., Inc., 73
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USPQ2d at 1692; Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
In addition to being first, TRS is the dominant portion of Applicant’s mark because
the term that follows it, HEALTHCARE, is merely descriptive of Applicant’s clients
and the healthcare personnel Applicant intends to staff in hospitals. It is settled that
descriptive and disclaimed terms are entitled to less weight in our analysis.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive
component of a mark may be given little weight in reaching a conclusion on the
likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752); In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion,
93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word ROADHOUSE,
is dominant element of BINION’S ROADHOUSE); In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”).
We have not ignored the design component of Applicant’s mark, which according
to Applicant features an “EKG pattern.” 4 TTABVUE 10. However, here, as in many
cases, the shared acronym TRS is more important than the design, because it will be
used to call for the services and more clearly and readily identifies the source of
Applicant’s services than the design. See e.g. In re Viterra Inc., 101 USPQ2d at 1911
(“the verbal portion of a word and design mark likely will be the dominant portion”);
In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that
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“if one of the marks comprises both a word and a design, then the word is normally
accorded greater weight because it would be used by purchasers to request the goods
or services” and “because applicant’s mark shares with registrant’s mark that
element responsible for creating its overall commercial impression, the marks are
confusingly similar”). This is especially so here because the EKG pattern in
Applicant’s mark is suggestive of healthcare-related staffing services, and thus less
distinctive than a more arbitrary design. Furthermore, because Registrant’s mark is
in typed format, it could be displayed in any lettering style, color or font, and
Registrant would be free to display its mark much as Applicant displays the acronym
TRS in its mark, heightening the likelihood of confusion. In re Viterra Inc., 101
USPQ2d at 1909; Citigroup Inc., 98 USPQ2d at 1258-59; In re Strategic Partners Inc.,
102 USPQ2d 1397, 1399 (TTAB 2012).
While Applicant’s and Registrant’s marks are distinguishable when considered
side-by-side, that is not the test. Rather, the test is whether the marks are sufficiently
similar in terms of their overall commercial impression that confusion as to the source
of the services offered under the marks is likely to result. San Fernando Elec. Mfg.
Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991). Here, they
are sufficiently similar given that they share the identical, apparently arbitrary
acronym, which is the first term in Applicant’s mark and dominant feature of both
marks and will be used to call for Applicant’s and Registrant’s services. Indeed, those
familiar with Registrant’s personnel recruiting services may, upon encountering
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Applicant’s mark, believe that Registrant has adopted a variation of its TRS mark for
use in connection with temporary staffing/recruiting of healthcare personnel. This
factor also weighs in favor of finding a likelihood of confusion.
Applicant’s mere argument about the lack of actual confusion is not only
unsupported by any evidence, it is also irrelevant. Applicant filed the involved
application based on an alleged intent to use the mark in commerce, and we have no
evidence of whether or how Applicant has actually used its mark. Therefore, we
cannot gauge whether or the extent to which there has been an opportunity for
confusion to occur if it were likely to occur. See Nina Ricci S.A.R.L. v. E.T.F. Enters.
Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of any
showing of actual confusion is of very little, if any, probative value here because (1)
no evidence was presented as to the extent of ETF’s use of the VITTORIO RICCI
mark on the merchandise in question in prior years ….”); In re Kangaroos U.S.A., 223
USPQ 1025, 1026-27 (TTAB 1984). Moreover, a lack of evidence of actual confusion
carries little weight in an ex parte case such as this. Majestic Distilling, 65 USPQ2d
at 1205. “[I]t is unnecessary to show actual confusion in establishing likelihood of
confusion.” Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 396 (Fed. Cir. 1983). This factor is neutral.
Finally, Applicant’s argument that consumers of Applicant’s and Registrant’s
services are sophisticated and careful is unsupported by any evidence of record.
Nonetheless, we assume that those seeking to hire employees or contractors,
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especially for specialized fields such as healthcare, will exercise heightened care. This
factor therefore weighs against finding a likelihood of confusion.
In sum, even though we assume that the relevant consumers are careful, this
factor is easily outweighed by the at least closely related services, overlapping
channels of trade and similar marks, which make confusion likely even among careful
purchasers.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.