Employ-Ability, Inc.

Trademark Trial and Appeal Board

Apr 28, 2004

No. 76311058 (T.T.A.B. Apr. 28, 2004)

Oral Hearing:
February 12, 2004
Mailed: April 28, 2004
Paper No. 21
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re EmployAbility, Inc.
___________
Serial No. 76311058
___________
James F. Kamp, Mary Margaret L. O’Donnell and Michelle L.
Visser of Rader, Fishman & Grauer for EmployAbility, Inc.
Michael Keating, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
____________
Before Walters and Bottorff, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
EmployAbility, Inc. has filed an application to
register on the Principal Register the mark EMPLOYABILITY
for “employment services, namely, employment hiring,
recruiting, placement, staffing and career networking
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76311058
2
services, employment counseling, all for the disabled
population,”1 in International Class 35.
The Trademark Examining Attorney has issued a final
refusal to register, under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. 1052(e)(1), on the ground that applicant’s
mark is merely descriptive in connection with its services.2
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs and an oral hearing was
held. We affirm the refusal to register.
Applicant contends that the mark is a double entendre,
which “hinges on the specific nature of applicant’s services
as applied to disabled individuals” (Brief, p. 7); that its
mark is a combination of the terms “employ” and “ability”;
that the merger in the mark of the two separate words into a
single word does not detract from the significance of the
individual words; that the mark “removes the negative ‘dis’
prefix from ‘disabled,’ focusing on the positive portion of
‘abled,’ ‘able’ or ‘ability’" (id.); and “thus, the mark
suggests how the disabled may use their abilities to

1 Serial No. 76311058, filed September 6, 2001, based on an allegation
of a bona fide intention to use the mark in commerce.
2 In his brief, the Examining Attorney correctly states that applicant’s
alternative request for registration on the Supplemental Register is
improper because the application is based upon an allegation of a bona
fide intention to use the mark in commerce and no amendment to allege
use has been filed. This issue has been given no consideration by the
Board.
Serial No. 76311058
3
participate in a working environment.” (Id.) Applicant
also argues the following (id, p. 8):
[The mark] also plays on the term “employ,” which
generally means “hire” or engage,” but also can
mean “use” or “take advantage of.” With this in
mind, the term EMPLOYABILITY as applied to the
disabled population has both the double entendre
of the term “ability” as opposed to “disability”
and the double entendre of the term “employ” in
the sense of “use” or “take advantage of” as
opposed to “hire” or “engage.” Put together, and
viewed in relation to the identified services, the
mark both highlights the positive aspect of
ability in general as applied to the disabled
population and also the broader goal of
encouraging the disabled to use or take advantage
of their abilities for a work-related purpose.
(Emphasis in original.)
Regarding the Lexis/Nexis evidence and Internet research
submitted by the Examining Attorney and discussed below,
applicant states the following (id., p. 11):
Thus, at best, the Examining Attorney’s evidence
shows that “employability” may have some
descriptive qualities with respect to employment
counseling or counseling in general. Although
such evidence may be competent to show that the
term “employability” exists in the English
language and that it may even be descriptive of
employment counseling in general, the Examining
Attorney must still perform the mere
descriptiveness evaluation in light of the
specific goods or services recited in the
application ….
Applicant asks the Board to resolve any doubt in its favor.
The Examining Attorney contends that the “plain
meaning” of the mark is merely descriptive in connection
with applicant’s identified services, even as restricted to
the disabled population, because its services “involve
Serial No. 76311058
4
determining the employability of individuals using its
employment services [and that] applicant will recruit and
evaluate individuals with an eye toward placing them in
appropriate positions, consulting with them in the course of
placement, and working with them to find them jobs.”
(Brief, unnumbered pp. 4-5.) The Examining Attorney argues
that applicant’s double entendre argument may reflect
applicant’s reason for choosing its mark, but that it is the
plain meaning, i.e., the dictionary definition, of
EMPLOYABILITY that is likely to be perceived by purchasers;
that the mark is not likely to be perceived as two words,
“employ” and “ability” because of the fact that the merged
term, “employability,” is a separate word; and that the mark
is merely descriptive regardless of whether the mark is
viewed at two merged words or one word.
The Examining Attorney submitted a definition from
Webster’s Third New International Dictionary of the English
Language, 1993, of "employability" as "n. the quality or
state of being employable." We also note the entry
following “employability” in the same dictionary -
“employable,” which is defined as “adj. capable of being
employed; specif. physically and mentally capable of earning
a wage at a regular job and available for hiring.”
Serial No. 76311058
5
The Examining Attorney submitted excerpts of articles
retrieved from the Lexis/Nexis database, of which several
examples follow:
“Through a contract with Job Training Centers of
Fort Pierce, the agency provides services under
the Job Training Partnership Act. Those services
include assessment, career counseling and
planning, occupational skills training,
employability skills training, job placement, on-
the-job training, internships and re-employment
assistance for displaced workers.” [The Stuart
News/Port St. Lucie News, November 8, 1999.]
“Friendship’s Apprenticeship and Job Resources
Center offers vocational counseling, employability
skills training, job placement and post-placement
assistance to adult D.C. residents.” [Roll Call,
November 19, 1998.]
“Free GED and high school diploma classes are
being offered by the West Area Adult and Community
School and local extension sites. Supplemental
career counseling and employability skills will be
provided at the school.” [The Ledger, August 4,
1997.]
“Caseloads have decreased significantly since the
statewide expansion and the federal government’s
approval of Utah’s reform plan. In July 1996,
there were 14,335 participants, most working on
employment plans defined broadly enough to include
education and/or counseling to increase a client’s
stability and employability, Bishop said.” [The
Salt Lake Tribune, July 1, 1997.]
The programs provide services to aid dislocated
workers, the economically disadvantaged and
welfare recipients. Cattanach said several of
them offer the same type of services. For
example, services such as career counseling,
employability assessment and post-placement
follow-up are offered by at least one-third of the
programs, Cattanach said.” [Capital Times,
November 15, 1994.]
“The program, based in high schools, seeks out
students who have no plans beyond graduation and
Serial No. 76311058
6
enrolls them in a counseling program. Helping
assess their own employability, the course also
urges the importance of such basics as good
grooming, self-confidence, speaking well, and
being on time.” [The Christian Science Monitor,
June 25, 1981.]
The Examining Attorney also conducted a search for the
phrase “employability counseling” using the Google search
engine (www.googl.com). The partial results, submitted
herein, show uses of the term “employability” consistent
with the excerpts shown above.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
Serial No. 76311058
7
average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
We agree with the Examining Attorney that EMPLOYABILITY
is merely descriptive in connection with applicant’s
“employment services, namely, employment hiring, recruiting,
placement, staffing and career networking services,
employment counseling, all for the disabled population.”
The record clearly establishes that “employability” is a
word in the English language that is commonly used in the
employment field, and that employability assessments and
counseling are particular to populations that may have
difficulties, or specific issues regarding, obtaining and
maintaining employment. Further, for populations who have
employability issues, such as the disabled, employability
evaluation and counseling is likely to be encompassed within
the identified services of “employment counseling.”
We appreciate the possible double entendre meanings of
its mark that applicant posits, i.e., that “ability” is used
as and would be understood to be an empowering term as
applied to persons with disabilities, and that “employ”
means “use” or “take advantage of” as well as “hire.”
However, we find that these suggested double entendres
simply are too subtle and tenuous to be readily perceived
and understood by relevant purchasers who encounter the mark
in connection with applicant’s services. See, e.g., In re
Serial No. 76311058
8
Wells Fargo & Co., 231 USPQ 95 (TTAB 1986) (EXPRESSERVICE
merely descriptive of banking services; alleged “Pony
Express” double entendre would not be readily recognized).
Applicant’s argument to the contrary, i.e., that the
relevant purchasers (including or especially disabled
persons) would be familiar with and/or readily recognize
these double entendres, is not supported by any evidence in
the record. Given the direct relevance of the dictionary
meaning of “employability” to the recited services, the
Examining Attorney’s evidence that the word is commonly used
in precisely that dictionary sense in connection with such
services, and the absence of evidence that the relevant
purchasers are familiar with or would readily recognize the
double entendre meanings suggested by applicant, we find
that it is the dictionary meaning of the word
“employability,” and that meaning alone, that purchasers
will immediately and directly perceive when they view
applicant’s mark in connection with applicant’s services.
Moreover, it is clear from the evidence of record that
others in the employment counseling field use, and have a
competitive need to use, the term “employability”
descriptively in connection with their services.
In conclusion, when applied to applicant’s services,
the term EMPLOYABILITY immediately describes, without
conjecture or speculation, a significant feature or function
Serial No. 76311058
9
of applicant’s services, namely, that the disabled
population served by applicant’s various employment services
and counseling is employable. Nothing requires the exercise
of imagination, cogitation, mental processing or gathering
of further information in order for purchasers of and
prospective customers for applicant’s services to readily
perceive the merely descriptive significance of the term
EMPLOYABILITY as it pertains to applicant’s services.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.
Seeherman, Administrative Trademark Judge, dissenting:
I respectfully dissent.
As has been discussed by the majority, the word
EMPLOYABILITY does have a descriptive significance.
However, I believe that the mark is still registrable for
the identified services because it is not merely, in the
sense of only, descriptive. In addition to the descriptive
meaning, it has a double entendre based on the individual
words EMPLOY and ABILITY which make up the mark.
This double entendre stems from the concept of the
"ability" that those with diabilities have. There is a
great emphasis today on the abilities, rather than the
disabilities, of people with handicaps, and there is a great
sensitivity about any negative reflections on those with
disabilities. Terms like "differently abled" are used
Serial No. 76311058
10
instead of "disabled" to indicate that people with
disabilities are able to function and, in the case of
employment services, use their particular abilities to
engage in employment activities.
As the majority points out, the determination of mere
descriptiveness must be made in relation to the impact a
mark is likely to have on the average purchaser of the
particular goods or services. Applicant's services are
identified as "employment hiring, recruiting, placement,
staffing and career networking services, employment
counseling, all for the disabled population." The users or
purchasers of such services, thus, are those who are
disabled, or those who deal closely with or hire the
disabled. Such people will be particularly sensitive to the
concept of "ability" as a substitute for "disability" in
this population, and will readily perceive the double
entendre in EMPLOYABILITY that the words in applicant's mark
EMPLOYABILITY convey, i.e., that employers should hire
(employ) people because of their abilities, rather than view
their disabilities as a deterrent to hiring.3 Thus, the
mark does not convey to purchasers and users of applicant's
services only its descriptive meaning. See In re Colonial
Stores Incorporated, 394 F.2d 549, 157 USPQ 382 (CCPA 1968)

3 Applicant also suggests an additional meaning for the term,
that people should use (employ) their abilities in a working
environment.
Serial No. 76311058
11
(SUGAR & SPICE found not merely descriptive of bakery
goods); Blisscraft of Hollywood v. United Plastics Co., 294
F.2d 694, 131 USPQ 55 (2d Cir. 1961) (POLY PITCHER not
merely descriptive of polyethelene pitchers).
The case of In re Wells Fargo & Co., supra, cited by
the majority, is readily distinguishable. In that case,
there was no double entendre in the EXPRESSSERVICE mark
itself. Rather, consumers would have had to know and make a
connection between applicant's name, Wells Fargo (with its
predecessor's history involving the Pony Express), and the
word EXPRESS in the mark. In the present case, the double
entendre is created by the words EMPLOY and ABILITY which
form the mark.
It is well established that doubt on the issue of mere
descriptiveness must be resolved in favor of the applicant.
See, for example, In re Gracious Lady Service, Inc., 175
USPQ 380 (TTAB 1972). I believe that the double meaning of
EMPLOY ABILITY in the mark EMPLOYABILITY at the very least
raises doubt as to whether the mark is only descriptive, and
therefore it is my view that the application should be
published for opposition.