GuidePoint Payroll Solutions, L.L.C.

Trademark Trial and Appeal Board

Sep 6, 2017

No. 86645755 (T.T.A.B. Sep. 6, 2017)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing: July 19, 2017 Mailed: September 6, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re GuidePoint Payroll Solutions, L.L.C.
_____
Serial No. 86645755
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Brandt F. Erwin of Madigan, Dahl & Harlan, P.A.
for GuidePoint Payroll Solutions, L.L.C.

Danythe Johnson, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____
Before Wellington, Heasley and Larkin,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

GuidePoint Payroll Solutions, L.L.C. (“Applicant”) seeks registration on the
Principal Register of the mark shown below for “Administration of business payroll
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for others; Payroll administration and management services; Payroll preparation;
Payroll processing services; Wage payroll preparation” in International Class 35:1

Applicant has disclaimed PAYROLL SOLUTIONS.
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
GUIDEPOINT GLOBAL in standard characters for “Information in business matters
and business consulting and information services” in International Class 35.2 The
cited registration includes a disclaimer of GLOBAL.
After the Examining Attorney made the refusal final, Applicant appealed and filed
a request for reconsideration. The Examining Attorney denied the request for
reconsideration and the parties have briefed the appeal. On July 19, 2017, an oral
hearing was held. For the following reasons, we affirm the refusal to register.
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a 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, hereinafter referred to as “du Pont factors”); see also In re Majestic

1 Application Serial No. 86645755 was filed May 29, 2015 based on an allegation of first use
anywhere and in commerce on July 2, 2014, under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a).
2 Registration No. 3400157 issued March 18, 2008; Section 8 affidavit accepted; Section 15
affidavit acknowledged.
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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 relatedness of the goods or services. See In re Chatam Int’l Inc.,
380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); 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 [or services] and differences in the marks.”).
A. Similarity of the Marks
With respect to the marks, we must compare them “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). The test assesses
not whether the marks can be distinguished in a side-by-side comparison, but rather
whether their overall commercial impressions are so similar that confusion as to the
source of the goods or services offered under the respective marks is likely to result.
Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721
(Fed. Cir. 2012); see also Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1551
(TTAB 2012).
Applicant’s proposed mark, shown above, contains the wording GPS
GUIDEPOINT PAYROLL SYSTEMS G, and the mark in the cited registration is
GUIDEPOINT GLOBAL in standard characters. Both marks contain the identical
dominant term GUIDEPOINT, and therefore share a significant visual and phonetic
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similarity. See, e.g., Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (affirming Board’s finding that
COMMCASH and COMMUNICASH are “strikingly similar in appearance, sound and
in the commercial impression engendered”).
We further find that the shared term GUIDEPOINT, which has no demonstrated
weakness in connection with the involved services, dominates both marks because
the other wording has been disclaimed as merely descriptive of or generic for the
respective services, such that consumers would not rely on the additional wording as
source indicating. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-
34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed.
Cir. 1985). The term GUIDEPOINT is highlighted in Applicant’s mark as the only
word that appears in the darker shade of blue. The design at the right of Applicant’s
mark may be viewed as the letter G accented by a curved arrow pointing upward; this
design, indicating a direction, will also likely be understood as a reference to
GUIDEPOINT, and thus reinforces the significance of this term. The GPS element is
larger and appears above, but will also likely be understood as an abbreviation for
GUIDEPOINT PAYROLL SYSTEMS.
With respect to the registered mark, GUIDEPOINT is clearly the most dominant
portion of the mark and, as it appears first, it is “most likely to be impressed upon
the mind of a purchaser and remembered.” Presto Prods. Inc. v. Nice-Pak Prods., Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988). The addition of the term GLOBAL does little to
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distinguish the marks as it is a ubiquitous term describing the geographic breadth or
range of registrant’s services.
In terms of the marks’ meaning and connotation, Applicant asserts:
The additional incorporation of the acronym “GPS,” which
is an acronym also commonly used for a Global Positioning
Satellite, which assists travelers with pinpoint directions,
guidance, and locations, helps to convey this message—
that Applicant will be a consumer’s guide in providing pin
point and precise payroll assistance and solutions. This
suggests small, locally-based precision, not global or
worldwide services.3
While it is possible that consumers may understand the GPS element in
Applicant’s mark as an abbreviation for “global positioning system”4 and not
“Guidepoint Payroll Solutions,” this does not sufficiently distinguish the marks. As
the Examining Attorney points out in her brief, the registered mark includes the term
GLOBAL and thus has a similar connotation, in that the services of both Applicant
and the registrant are offered “globally.” In any event, because we find that the term
GUIDEPOINT dominates both marks, this term lends a similar meaning or
connotation to both marks when they are viewed in their entireties. That is, the term
GUIDEPOINT in each mark and in connection with the involved services, is

3 Applicant’s brief pp. 15-16, 27 TTABVUE 16-17.
4 “GPS” is defined as a recognized abbreviation for “global positioning system,” not “global
positioning satellite” as suggested by Application. Dictionary.com Unabridged
(www.dictionary.com), based on the Random House Dictionary, Random House, Inc. 2017.
The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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suggestive of Applicant’s or the registrant’s ability to provide assistance in terms of
direction to a business.
Considering the marks in their entireties, we find them very similar in
appearance, pronunciation, connotation and overall commercial impressions,
particularly in the context of the related services at issue, as discussed infra. While
there are some differences in the involved marks, we find them to be overall more
similar than not and this du Pont factor weighs in favor of finding a likelihood of
confusion.
B. Relatedness of the Services
We next address the du Pont factor regarding the similarity or dissimilarity of the
services. “The authority is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods [or services] set forth
in the application regardless of what the record may reveal as to the particular nature
of an applicant’s goods [or services], the particular channels of trade or the class of
purchasers to which sales of the goods [or services] are directed.” Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990).
The services set forth in the cited registration contain the broadly described
“business consulting and information services.” These services encompass
consultation and informational services in the field of payroll administration and
management. In this regard, the Examining Attorney presented definition evidence
showing that “payroll” is considered a business function or business department and
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that the registrant’s business consultation and information services would thus cover
matters involving payroll.5 Applicant acknowledges this “broad definition” of the
registrant’s services, but suggests in its brief that “the best method for evaluating
whether Applicant’s and Registrant’s services are similar is to compare the actual
services being provided by Applicant and Registrant.”6 Such an approach, however,
would contravene the well-established principle that we must focus on the services
as identified in the application and cited registration, not on any extrinsic evidence
of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1162 (Fed. Cir. 2014).
In support of the refusal, the Examining Attorney submits evidence showing that
it is more than a theoretical possibility that the same company that provides payroll
services would also render business consultation or information services. Indeed,
there is evidence of a host of third parties provide these services under the same
service mark or trade name. For example, the Examining Attorney attached internet
printouts involving the following companies with the Office Action denying the
request for reconsideration:7
• Brandt & Associates Tax & Financial Services … provides payroll
services such as administration of business payroll for others, payroll
administration and management services, payroll preparation, payroll
processing services, and wage payroll preparation as well as business
consulting and information services by offering part-time CFO services which
provide advice to businesses, provide tax preparation and planning including
providing information regarding potential deductions, provide consulting

5 October 26, 2016 Office Action at 324-328.
6 27 TTABVUE 7.
7 4-25 TTABVUE.
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services regarding tax problems, provide information and consultations
regarding strategic business plans and new business formation, provide
litigation support which includes consultation on questions and witnesses, and
provide small business accounting consultations;8
• GTM Payroll Services provides payroll processing, consulting services, and
information in business matters such as information on employment laws,
regulations, and relationship management;9 and
• MassPay Optimizing Workforces provides payroll services including
payroll administration, management, and processing as well as providing HR
and payroll advice including providing information on hiring, policies,
termination and disciplinary actions. MassPay also provides information and
consults with businesses coming to America.10

In addition, the Examining Attorney submitted several use-based third-party
registrations which cover the same types of services, thereby reinforcing the
suggestion that the listed services may emanate from the same source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Examples of the
registrations include:
Registration
No.
Mark Services
364691311 SOULENCE “…business consulting and
information services, and
payroll preparation”
466663612 TRIMERGE CONSULTING
GROUP … (& Design)
“Business consulting services
in the field of accounting; …
Payroll administration and
management services”

8 5 TTABVUE 13-25; 6 TTABVUE and 7 TTABVUE 2-10.
9 18-19 TTABVUE.
10 21 TTABVUE 12-17, 22 TTABVUE, 23 TTABVUE 1-11.
11 October 26, 2016 Office Action at 251-252.
12 Id. at 267-269.
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420518413 EZCFO (& Design) “… Administration of business
payroll for others; … Business
consulting and information
services”
425370114 ATPAC SERVICES “… Payroll preparation;
Payroll processing … Business
consulting and information
services”

We find that the third-party website evidence and the third-party registrations
establish that Applicant’s services and the services in the cited registration are
closely related. Accordingly, this du Pont factor weighs in favor of finding a likelihood
of confusion.
C. Trade Channels and Classes of Consumers
Turning to the trade channels, we must presume that Applicant’s services and
those in the cited registration, both of which recitations are unrestricted, are
available to all potential classes of ordinary consumers and move in all normal
channels of trade. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the identification is
unrestricted, “we must deem the goods to travel in all appropriate trade channels to
all potential purchasers of such goods”); In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). The third-party internet evidence discussed in connection with the relatedness
of the services makes abundantly clear that services such as Applicant’s and the

13 Id. at 256-257.
14 Id. at 258-260.
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services identified in the cited registration may be promoted together on the same
websites to the same classes of consumers, namely, in a business-to-business manner.
Applicant’s arguments, based on extrinsic evidence of supposed marketplace
realities, that its actual services and those of the registrant do not move in the same
trade channels are not persuasive given the involved descriptions of services. We
reiterate that it is the identifications in the Application and cited registration that
control, “regardless of what the record may reveal as to the particular nature of an
applicant’s goods [or services], the particular channels of trade or the class of
purchasers to which sales of the goods are directed.” Octocom Systems, 16 USPQ2d
at 1787; see also Stone Lion Capital Partners, 110 USPQ2d at 1162.
Thus, based on the recitations of services and the evidence of record regarding
third parties who promote and offer such services, we find that the services in the
application and the cited registration move in the same channels of trade to the same
classes of purchasers. Thus, this du Pont factor also weighs in favor of finding a
likelihood of confusion.
Conclusion
Based on the similarity of the marks and the closely related services at issue,
which move in the same channels of trade to the same classes of purchasers, we find
that Applicant’s mark is likely to cause confusion with the mark in the cited
registration.
Decision: The refusal to register Applicant’s mark is affirmed.