Dunhill Staffing Systems of Long Island, Inc.

Trademark Trial and Appeal Board

Mar 22, 2001

No. 75630117 (T.T.A.B. Mar. 22, 2001)

03/22/01 THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE T.T.A.B.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
Trademark Trial and Appeal Board
__________
In re Dunhill Staffing Systems of Long Island, Inc.
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Serial No. 75/630,177
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Myron Amer for Dunhill Staffing Systems of Long
Island, Inc.
Giancarlo Castro, Trademark Examining Attorney, Law
Office 109 (Ron Sussman, Managing Attorney).
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Before Hanak, Quinn and Bottorff, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Dunhill Staffing Systems of Long Island, Inc.
(applicant) seeks to register in typed drawing form
WE DO I.T. BETTER for “permanent and temporary
employment agencies in the information technology
field.” The application was filed on January 29,
1999 with a claimed first use date of
Ser. No. 75/630,177
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January 14, 1999.
Citing Section 2(d) of the Trademark Act, the
examining attorney refused registration on the
basis that applicant’s mark, as applied to
applicant’s services, is likely to cause confusion
with the mark NOBODY DOES IT BETTER, previously
registered in typed drawing form for “personnel
recruitment and placement services in the field of
information technology; and project management in
the field of information technology.” Registration
No. 2,237,811.
When the refusal to register was made final,
applicant appealed to this Board. Applicant and
examining attorney filed briefs. Applicant did not
request a hearing.
In any likelihood of confusion analysis, two
key considerations are the similarities of the
marks and the similarities of the goods and/or
services. Federated Foods, Inc. v. Fort Howard
Paper, Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
Ser. No. 75/630,177
3
1976).
Considering first the cited mark, we note that
it consists of a common, highly laudatory
expression. Accordingly, the cited mark NOBODY
DOES IT BETTER is entitled to a very narrow range
of protection. 1 J. McCarthy, McCarthy on
Trademarks and Unfair Competition Sections 7:23 and
11:17 (4th ed. 2000).
Because the cited mark is entitled to a very
narrow range of protection, we find that
applicant’s mark WE DO I.T. BETTER is dissimilar
enough such that the use of the two marks on
extremely closely related services, or even
identical services, is not likely to result in
confusion.
While both marks consist of four “words,” the
only word common to both marks is the final word,
namely, BETTER. Thus, in terms of visual
appearance and pronunciation, the two marks are
essentially dissimilar. Applicant’s use of the two
Ser. No. 75/630,177
4
periods in the third “word” of its mark not only
causes this third “word” to be visually dissimilar
from the third word in the registered mark, but in
addition, the presence of the periods causes the
third “word” in applicant’s mark to be pronounced,
in many cases, as “eye tea.” Of course, this
manner of pronunciation is an initialism for
“information technology,” a term which indicates
the particular type of employment agency services
offered by applicant.
Finally, in terms of meaning or connotation,
the two marks are similar only if purchasers ignore
the periods in applicant’s mark and perceive
applicant’s mark as WE DO IT BETTER. As previously
noted, we believe that many purchasers would
understand applicant’s mark as meaning WE DO
INFORMATION TECHNOLOGY BETTER. At a minimum, we
believe that most purchasers who view applicant’s
mark as WE DO IT BETTER will, given the nature of
the services with which the mark is used,
understand that applicant’s mark also means WE DO
Ser. No. 75/630,177
5
INFORMATION TECHNOLOGY BETTER.
In short, as previously noted, given the fact
that the cited mark consists of a common, highly
laudatory expression which is entitled to a very
narrow scope of protection, we find that the
differences in the two marks are great enough such
that their use on extremely similar, and indeed
identical services, would not result in a
likelihood of confusion.
Our finding of no likelihood of confusion is
only further supported when one considers the
nature of applicant’s and registrant’s services.
There is no question that employment agency
services (applicant’s services) are very closely
related to personnel recruitment and placement
services (registrant’s services). However, both
types of services are not directed to ordinary
consumers, but instead are directed to a rather
sophisticated group of purchasers, namely, business
owners and personnel managers. Our primary
reviewing Court has made it clear that with regard
Ser. No. 75/630,177
6
to the issue of likelihood of confusion, purchaser
“sophistication is important and often dispositive
because sophisticated consumers may be expected to
exercise greater care.” Electronic Design & Sales
v. Electronic Data Systems, 954 F.2d 713, 21 USPQ2d
1388, 1392 (Fed. Cir. 1992).
Finally, it should be noted that both
applicant’s employment agency services and
registrant’s personnel recruitment and placement
services are limited to the field of information
technology. In other words, applicant’s employment
agency services and registrant’s personnel
recruitment and placement services do not involve
unskilled workers. Hence, in contracting for
applicant’s employment agency services or
registrant’s personnel recruitment and placement
services, the business owners and personnel
managers would have to engage in reasonably
significant discussions with applicant and
registrant to make certain that the individuals
provided by applicant and registrant are qualified
Ser. No. 75/630,177
7
to operate the particular information systems which
the customer has in place. Such significant
discussion is yet another factor in reducing the
likelihood of confusion. Electronic Design &
Sales, 21 USPQ2d at 1392.
Decision: The refusal to register is reversed.