Empower Software Solutions, Inc.

Trademark Trial and Appeal Board

Apr 19, 2013

No. 77717331 (T.T.A.B. Apr. 19, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Empower Software Solutions, Inc.
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Serial Nos. 77717283
77717320
777173311
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John C. Linderman of McCormick Paulding & Huber LLP for Empower Software
Solutions, Inc.

Julie Watson, Trademark Examining Attorney, Law Office 109 (Dan Vavonese,
Managing Attorney).
_____

Before Bucher, Kuhlke and Adlin, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
On April 20, 2009, applicant, Empower Software Solutions, Inc., filed intent-
to-use applications under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), to
register on the Principal Register the following marks (emphasis added):
Application Serial No. 77717283 for the mark EMPOWER
SOFTWARE SOLUTIONS in standard characters with SOFTWARE
SOLUTIONS disclaimed for “software for scheduling tasks among
personnel, forecasting personnel needs for anticipated tasks,
delegating tasks among personnel, tracking performance of

1 Because these proceedings involve the same applicant and present similar issues we are
issuing our determination as to each application in a single decision.
Serial Nos. 77717283; 77717320; 77717331

2

assigned tasks, establishing collaboration and coordination among
personnel in the performance of tasks, employee time and attendance
management, and tax compliance” in International Class 9; “business
management services provided via the internet, namely, scheduling
tasks among personnel, forecasting personnel needs for anticipated
tasks, delegating tasks among personnel, tracking performance
of assigned tasks, establishing collaboration and coordination
among personnel in the performance of tasks, employee time
and attendance management, and tax compliance” in International
Class 35;

Application Serial No. 77717320 for the mark EMPOWERWFM in
standard characters for “employee administration services via the
internet, namely, forecasting, budgeting, scheduling, and reporting
the completion and the duration of employee work
transactions” in International Class 35; and

Application Serial No. 77717331 for the mark EMPOWERTIME in
standard characters for “employee administration services via the
internet, namely, setting the duration of tasks for the interaction and
collaboration of employees in work transactions, and collecting,
calculating, and reporting the duration of employee work
transactions with measured benefits” in International Class 35.

Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s marks, when used with its
identified goods and services, so resembles the registered mark EMPOWER in
standard characters for “computer software, namely, workforce performance
evaluation software which tracks individual employees’ progress against a
specified set of metrics and measurements, provides for corrective action based
upon those measurements, generates statistics as to how the personnel base
or segment is performing as a unit, and provides real-time supervisor and
Serial Nos. 77717283; 77717320; 77717331

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management views of an employee’s performance” (emphasis added) in
International Class 92 as to be likely to cause confusion, mistake or deception.
When the refusals were made final, applicant appealed and requested
reconsideration in each application. After the examining attorney denied the
requests for reconsideration, the appeals were resumed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in In re E. I. Du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (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 or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Similarity of the Marks
We begin with the du Pont factor of the similarities and dissimilarities
between applicant’s marks EMPOWER SOFTWARE SOLUTIONS,
EMPOWERWFM and EMPOWERTIME and registrant’s mark EMPOWER. We
analyze “the marks in their entireties as to appearance, sound, connotation and
commercial impression.” 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. We analyze the marks in their entireties;
however, it is well settled that one feature of a mark may be more significant than

2 Registration No. 3394945, issued on March 11, 2008.
Serial Nos. 77717283; 77717320; 77717331

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another, and it is not improper to give more weight to this dominant feature when
evaluating the similarities of the marks. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
The word EMPOWER is the most prominent portion of applicant’s marks. It
is the first portion of the marks and the most distinctive. The added wording
“SOFTWARE SOLUTIONS” is merely descriptive and appropriately disclaimed in
application Serial No. 77717283. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997). The lettering WFM in application Serial No.
77717320, stands for “workforce management”3 and such meaning would certainly
be perceived when the mark is used in connection with the recited services.
Finally, the word TIME in application Serial No. 77717331, is, at minimum, highly
suggestive of the employee time management services encompassed in the
recitation of services.4 Thus, all of the additional wording and letters simply
provide “information about [applicant’s goods and] services or are terms used
generally for such [goods and] services” and the dominant portion of applicant’s
marks, EMPOWER, comprises the entirety of registrant’s mark. Further, in
applicant’s and registrant’s marks, the common element, EMPOWER, has the same
connotation; the added meanings to applicant’s marks merely indicate the manner

3 Abbreviation WFM means Workforce Management. www.acronymfinder.com (Final
Office Action (January 18, 2012).

4 “The term ‘TIME’ is, at best, suggestive of the fact that, for example, Applicant’s services
are geared toward helping a corporation’s decision makers collect information regarding the
duration of employee tasks.” App. Br. p. 8 (App. Serial No. 77717331).
Serial Nos. 77717283; 77717320; 77717331

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in which the customer will be empowered (i.e., through a software solution) or what
a customer will be empowered to measure or control (i.e., workforce management or
time management). Moreover, the added meanings from WFM and TIME are also
relevant to registrant’s goods and, as such, do not serve to distinguish these
EMPOWER marks from registrant’s EMPOWER mark.
While the added wording does present some differences in appearance and
sound, the overall commercial impression remains the same in view of the
dominance of the word EMPOWER in the marks in each application and the
relevance in meaning of WFM and TIME in Application Serial Nos. 77717320 and
77717331 to registrant’s software. Thus, we find that the similarities outweigh the
dissimilarities.
Number and Nature of Similar Marks in Use
Applicant argues that the term EMPOWER is weak and entitled to a limited
scope of protection. However, applicant only submitted third-party registrations
which are of no probative value for the du Pont factor showing a crowded field and
relative weakness. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,
1259 (Fed. Cir. 2010). Moreover, as noted by the examining attorney, only two of
the registrations for goods/services in the same general field include the word
EMPOWER in the marks; the marks in the remaining registrations contain another
form of the root word such as EMPOWERED, EMPOWERING and
EMPOWERMENT. Further, the two marks that include the word EMPOWER are
slogan marks, EMPOWER YOUR PROJECT WORKFORCE and EQUIP,
Serial Nos. 77717283; 77717320; 77717331

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EMPOWER, ELEVATE, that have different commercial impressions. Finally,
applicant’s software and services are more distinct from the services or computer
software in these third-party registrations than they are from those in the cited
registration. Only third-party Reg. No. 3286317 includes arguably similar
computer software for workforce management but, as noted above, the mark in this
third-party registration, EMPOWER YOUR PROJECT WORKFORCE, has a much
different commercial impression as it is perceived as a slogan rather than the word
EMPOWER combined with the name of the goods (SOFTWARE SOLUTIONS) or
services (WFM) or feature of the services (TIME).
Finally, even if we considered the term EMPOWER to be weak in the context
of these goods and services, in view of the closely related goods and services, and
highly similar marks, the mark in the cited registration is not so weak that it is not
entitled to protection against applicant’s marks. King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974).
Relatedness of the Goods and Services/Channels of Trade/Purchasers
We turn to the factors of the relatedness of the goods and services, channels
of trade and classes of customers. We base our evaluation on the goods and services
as they are identified in the registrations and application. In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
and Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). It is settled that it is not necessary that the
Serial Nos. 77717283; 77717320; 77717331

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respective goods and services be identical or even competitive in order to find that
they are related for purposes of our likelihood of confusion analysis. That is, the
issue is not whether consumers would confuse the goods and services themselves,
but rather whether they would be confused as to the source of the goods and
services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods and services
need only be sufficiently related that consumers would be likely to assume, upon
encountering the goods and services under similar marks, that the goods and
services originate from, are sponsored or authorized by, or are otherwise connected
to the same source. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991). Finally, it is well established that goods and services may be related. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGGS
for retail grocery and general merchandise store services likely to be confused with
BIGGS for furniture); In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (“It is clear that
consumers would be likely to believe that jewelry on the one hand and retail stores
selling jewelry on the other emanate from or are sponsored by the same source if
such goods and services are sold under the same or similar marks.”).
Applicant’s computer software “tracking performance of assigned tasks”;
and services “delegating tasks among personnel, tracking performance of
assigned tasks, establishing collaboration and coordination among
personnel in the performance of tasks, employee time and attendance
management” (application Serial No. 77717283); “reporting the completion
Serial Nos. 77717283; 77717320; 77717331

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and the duration of employee work transactions” (application Serial No.
77717320); and collecting, calculating, and reporting the duration of
employee work transactions with measured benefits” (application Serial No.
77717331) and registrant’s “workforce performance evaluation software
which tracks individual employees’ progress against a specified set of
metrics and measurements, [and] generates statistics as to how the
personnel base or segment is performing as a unit” are very similar in that
they all monitor and measure employee work productivity. Registrant’s software is
directed to both individual performance and group performance. As written,
applicant’s identification for its software and services encompasses monitoring
individual and group performance. Thus, on the face of the identifications, what
these products and services provide is very similar; they all track employee
performance of tasks. It is sufficient for a finding of likelihood of confusion if the
relatedness is established for any item encompassed by the identification of goods or
services within a particular class in the application. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981).
Applicant argues that:
Applicant’s software and business management services for large-scale
workforce management versus Registrant’s software for measuring
individual employee performance. Applicant’s and Registrant’s
products perform entirely distinct functions. Applicant’s software and
business management services are used for forecasting personnel
needs, delegating tasks among personnel, tracking performance of
assigned tasks, establishing collaboration and coordination among
personnel, and employee time and attendance management. Thus, it
is clear from Applicant’s identification of goods and services that
Applicant’s offerings are used to oversee and manage workforce
Serial Nos. 77717283; 77717320; 77717331

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functions of collective groups of employees. Registrant’s software
provides an entirely distinct function. Registrant’s identification of
goods reveals that Registrant’s software is used for tracking individual
employees’ progress against a specific set of metrics and provides
feedback on those metrics. Thus, as listed in the present application
and in the ‘945 Registration, the parties goods perform distinct
functions within the broad workforce management industry. ...
Rather, Applicant asserts that there is no per se rule that its goods are
related to Registrant’s merely because both fall under the broad
umbrella of workforce management.5

However, applicant’s identification does not exclude assessing individual
employee task completion as part of assessing a unit’s task completion and
registrant’s software includes assessing a unit’s performance. It is not simply that,
as identified, the goods and services “fall under the broad umbrella of workforce
management.” Rather, the identified goods and services are the same subset of the
field of workforce management. Applicant does not contest the definition of
“workforce management” retrieved from the Wikipedia website that includes the
following subsets (emphasis added): “payroll and benefits, HR administration,
employee self-service, time and attendance, career and succession planning,
talent management and/or application tracking, learning management and/or
training management, performance management, forecasting and
scheduling, workforce tracking and emergency assist.”6 As can be seen from
the identifications, applicant’s and registrant’s goods and services are not merely
part of the same general field of “workforce management” but rather are directed to

5 App. Reply Br. pp. 7-8 (App. Ser. No. 77717283).

6 www.wikipedia.org (Final Office action January 18, 2012).
Serial Nos. 77717283; 77717320; 77717331

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the same specific functions and both measure individual as well as group
performance.
In view of the above, we find applicant’s identified goods and services to be
closely related registrant’s identified goods.
With regard to the channels of trade, because there are no limitations in the
identifications in the applications and cited registration, we must presume that
they are offered in all ordinary channels of trade and to all ordinary classes of
customers for those goods and services. In re Viterra, Inc., 101 USPQ2d at 1908,
quoting Hewlett-Packard Co., 62 USPQ2d 1001. Such channels would include
“business executives and officers seeking to reduce costs and improve a company’s
overall performance” and “human resources departments.” Based on the
identifications, applicant’s and registrant’s goods and services could be directed to
the same market. As noted by the examining attorney, “[r]elying on registrant’s
identification of goods, it is clear that its software is meant for use by managers and
not just individual employees. The identification states in part that the software
‘generates statistics as to how the personnel base or segment is performing as a unit
and real-time supervisor and management views of an employee’s performance.’” 7
Conditions of Sale
Applicant argues that its consumers are sophisticated and the goods and
services are not purchased on impulse. Specifically applicant argues:
Purchase of the software offered by Applicant is a complex transaction
requiring a company wide rollout and compliance check. The
consumer would likely sample or test the product prior to purchase

7 E. A. Br. p. 10 (App. Ser. No. 77717283).
Serial Nos. 77717283; 77717320; 77717331

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since the software impacts many of the business’ systems such as
human resources, workforce management and/or tax compliance.
Similarly, Applicant’s business management and operations services
impact crucial internal tasks such as workforce management,
employee time and attendance management, and tax compliance.8

The only evidence of record to support a finding that applicant’s goods are
“expensive, highly technical and not purchased on impulse” consists of an article
from a third-party publication. Such evidence is not particularly probative as to the
conditions of sale of applicant’s goods and services.9 Moreover, applicant states that
the products in the applications are different from the product referenced in the
article. While the goods and services as identified are clearly not inexpensive
impulse items and would be purchased by consumers with a higher level of
knowledge and care, there is nothing in the record to support a finding that the
conditions of sale are of such a nature to outweigh the other factors let alone be a
dispositive factor. Electronic Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d
1460, 1465 (TTAB 1992). As is well established, the fact that purchasers may be
sophisticated or knowledgeable in a particular field does not necessarily mean that
they are sophisticated or knowledgeable in the field of trademarks or immune from
source confusion. Imagineering Inc. v. Van Klassens Inc., 53 F.3d 1260, 34 USPQ2d
1526, 1530 (Fed. Cir. 1995).
Applicant relies on the Board’s decision in Calypso Technology v. Calypso
Capital Management LP, 100 USPQ2d 1213 (TTAB 2011). In that case, there was

8 App. Br. pp. 12-13.

9 A declaration from applicant explaining the nature of these types of goods and services
and the manner in which such goods and services are purchased might have shed light on
the relevant conditions of sale.
Serial Nos. 77717283; 77717320; 77717331

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ample evidence of the type of customer (financial institutions with investment
assets of $25 million) and the cost of the software ($1 million dollars). Id. at 1222.
Moreover, the goods and service in that case did not have the same purpose
(computer software/services for core processing and control v. equity investment
management and fund services) and were found to be not related. Id.
Absence of Actual Confusion
Finally, applicant argues that its prior Registration No. 3886885, issued in
2010, for the mark EMPOWER SOFTWARE SOLUTIONS for “employee payroll
software for payroll administration and payroll tax calculation” and “payroll and
human resource services, namely, administration of payroll for others, payroll
preparation, and payroll processing services; human resource services, namely,
human resources management,” and the cited registration “have coexisted without
any instances of consumer confusion for nearly two years.” First, the inquiry here is
likelihood of confusion, not actual confusion. HRL Associates Inc. v. Weiss
Associates Inc., 12 USPQ2d 1819, 1824 (TTAB 1989) aff’d, 14 USPQ2d 1840 (Fed.
Cir. 1990). The Court of Appeals for the Federal Circuit has observed, “A showing
of actual confusion would of course be highly probative, if not conclusive, of a high
likelihood of confusion. The opposite is not true, however. The lack of evidence of
actual confusion carries little weight, especially in an ex parte context.” In re
Majestic Distilling Co., Inc., 65 USPQ2d at 1205, internal citation omitted. Second,
two years is not a long time and there is no evidence as to the amount of use and
whether there has been any meaningful opportunity for confusion to occur.
Serial Nos. 77717283; 77717320; 77717331

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Applicant also points to its other applications that have received approval
from the examining attorney for the following marks and services:
“EMPOWERTAX for wage payroll preparation services provided via the internet,
namely, payroll tax determination and compliance for others” (App. Ser. No.
77717339); EMPOWERPAY for “employee payroll software for payroll
administration and payroll tax calculation” (App. Ser. No. 77717300); and
EMPOWERHR for “human resource services, namely, human resources
consultation, and employee allocation and assignment” (App. Ser. No. 77717293).
Applicant comments that it “has difficulty reconciling the differences between the
Examining Attorney’s decisions in the present Application versus the decisions in
the approved applications listed above.” App. Br. p. 15 (App. Ser. No. 77717283).
As noted by the Examining Attorney, with regard to the prior registration, we
are not bound by prior decisions of examining attorneys. In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); and In re Sunmarks Inc., 32
USPQ2d 1470 (TTAB 1994). In addition, while the goods and services in applicant’s
prior registration and other applications fall within the field of “workforce
management” they are not the same subset, e.g., performance management and
workforce tracking, as registrant’s software and the goods and services in the
subject applications. Thus, the difference here is that the relatedness of the goods
and services is closer than in applicant’s other registration and applications.

Serial Nos. 77717283; 77717320; 77717331

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Conclusion
In conclusion, we find that because the goods and services are closely related
and the marks are highly similar, confusion is likely between applicant’s marks
EMPOWER SOFTWARE SOLUTIONS, EMPOWERWFM and EMPOWERTIME on
the one hand and the mark EMPOWER in the cited registration on the other.
Decision: The refusals to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act are affirmed in each application.