Human Rights Campaign Foundation

Trademark Trial and Appeal Board

Nov 6, 2002

No. 76114506 (T.T.A.B. Nov. 6, 2002)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
_____________
In re Human Rights Campaign Foundation
_____________
Serial No. 76/114,506
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Geri L. Haight for Human Rights Campaign Foundation.
Kevin M. Dinallo, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_____________
Before Seeherman, Hanak and Hohein, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Human Rights Campaign Foundation (applicant) seeks to
register in typed drawing form HRC WORKNET for “providing
employment information regarding policies and practices
concerning issues specific to gay, lesbian, bisexual, and
transgendered employees via an on-line global computer
network.” The application was filed on August 22, 2000
with a claimed first use date of September 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 service, is
likely to cause confusion with the mark HRC previously
Ser. No. 76/114,506
2
registered in typed drawing form for “human resources
consulting services, namely, assisting businesses in
assessment and planning in the fields of personnel and
human resource management.” Registration No. 1,425,066.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the goods or services and the similarities of the marks.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.”).
Considering first the marks, one point should be
clarified at the outset. In the first Office Action, the
Examining Attorney stated that “the applicant must insert a
disclaimer of WORKNET in the application because it is
descriptive of the services the applicant is offering.” In
response, applicant submitted the disclaimer in the form
suggested by the Examining Attorney.
Ser. No. 76/114,506
3
However, at no time has the Examining Attorney
submitted any evidence whatsoever demonstrating that the
term WORKNET is descriptive of applicant’s services. In
the first Office Action, the Examining Attorney merely
asserted that “WORKNET is a commonly used term in the area
of the applicant’s services, specifically, information
regarding work or employment related issues offered over
the global computer network.”
We have serious doubts as to whether WORKNET is indeed
merely descriptive of applicant’s services. In this
regard, this Board has consulted over fifteen specialized
computer reference works, and not one of the fifteen list
“worknet” or “work net.” Some of the more comprehensive
reference works consulted by this Board include Microsoft
Computer Dictionary (5th ed. 2002), McGraw-Hill Computer
Desktop Encyclopedia (9th ed. 2001), Dictionary of
Networking (3rd ed. 1999) and The Computer Glossary (8th ed.
1998). Moreover, we note that initially the Examining
Attorney cited a second registration as a bar to the
application. This registration is for the mark WORKNETT
for “reviewing standard and practices to assure compliance
with employment laws and regulations, namely, providing
employee training on sexual harassment issues via a global
computer network.” (emphasis added). Registration No.
Ser. No. 76/114,506
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2,374,399. This registration issued without resort to a
claim of acquired distinctiveness pursuant to Section 2(f)
of the Trademark Act. If WORKNET were truly merely
descriptive of providing employment information over a
global computer network, then it is hard to explain how the
registration for WORKNETT issued. It is fundamental that a
slight misspelling of a merely descriptive word would not
turn that word into a trademark. 1 J. McCarthy, McCarthy
on Trademarks and Unfair Competition Section 11:31 at page
11-52 (4th ed. 2001). Obviously, the registered mark
WORKNETT represents an extremely slight misspelling of the
word “worknet,” which the Examining Attorney contends is
merely descriptive of providing employment information via
a global computer network.
Nevertheless, having said the foregoing, we are
constrained in our likelihood of confusion analysis to
consider the WORKNET portion of applicant’s mark to be
merely descriptive because applicant agreed to the
disclaimer required by the Examining Attorney without
arguing in the alternative that the WORKNET portion of its
mark was not merely descriptive of its services. However,
even if the WORKNET portion of applicant’s mark is merely
descriptive of its services, it cannot be ignored in our
likelihood of confusion analysis. This is because “the
Ser. No. 76/114,506
5
basic principle in determining confusion between marks is
that marks must be compared in their entireties and must be
considered in connection with the particular goods or
services for which they are used.” In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 750 (Fed. Cir.
1985)(emphasis added). Indeed, the Court in National Data
went so far as to state that “the technicality of a
disclaimer in [applicant’s] application to register its
mark has no legal effect on the issue of likelihood of
confusion. The public is unaware of what words have been
disclaimed during prosecution of the trademark application
at the PTO.” National Data, 224 USPQ at 751.
Marks are compared in terms of visual appearance,
pronunciation and connotation. Obviously, WORKNET is the
largest portion of applicant’s mark. Its presence in
applicant’s mark causes the mark in its entirety (HRC
WORKNET) to be dissimilar from the registered mark HRC in
terms of visual appearance and pronunciation. Moreover, to
the extent that WORKNET has a meaning, as contended by the
Examining Attorney, then the presence of this word in
applicant’s mark causes the two marks to be at least
somewhat dissimilar in terms of meaning. Finally, there is
no dispute that the initialism HR stands for “human
resources.” Acronyms, Initialisms & Abbreviations
Ser. No. 76/114,506
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Dictionary (29th ed 2001). Registrant’s services are a
particular form of human resources consulting services, and
applicant’s services of providing employment information
are at least tangentially related to human resources.
Thus, two of the three letters which are common to both
registrant’s mark and applicant’s mark are highly
descriptive (if not generic) for registrant’s services, and
are at least highly suggestive of applicant’s services. In
making this determination with regard to registrant’s mark
HRC, it should be made clear that we are not impermissively
attacking the registration. As our primary reviewing Court
has made clear, “a showing of descriptiveness or
genericness of a part of a mark does not constitute an
attack on the registration.” National Data, 224 USPQ at
752.
In sum, we find that the marks are different in terms
of visual appearance and pronunciation. In terms of
connotation, the presence of the word WORKNET in
applicant’s mark causes it to be dissimilar from the
registered mark. Moreover, the component common to both
marks (HRC) begins with the initialism HR which is highly
descriptive if not generic for registrant’s services, and
is at least highly suggestive of applicant’s services.
Ser. No. 76/114,506
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Turning to a consideration of the respective services
of applicant and registrant, we note at the outset that
registrant’s identification of services contains the
limitation “assisting businesses.” Thus, registrant’s
services are not directed to individuals. The only common
purchasers or users of both registrant’s human resources
consulting services and applicant’s employment information
services relating to issues specific to a certain class of
individuals are businesses, and not individuals. At page
11 of his brief, the Examining Attorney acknowledges that
individuals within businesses who are responsible for
purchasing human resources consulting services are
sophisticated. Our primary reviewing Court has made it
clear that 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). Moreover, these sophisticated
individuals when selecting human resources consulting
services would obviously engage in significant discussions
with registrant and would exercise a fair degree of care
prior to signing a contract for providing human resources
consulting services. Thus, not only are the common
purchasers of both registrant’s and applicant’s services
Ser. No. 76/114,506
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sophisticated, but in addition, before purchasing
registrant’s services, the common purchasers would exercise
considerable degree of care. As has been noted, there is
always less likelihood of confusion when the goods or
services “are purchased after careful consideration.”
Electronic Design & Sales, 21 USPQ2d at 1392.
In summary, given the dissimilarities in the marks in
terms of visual appearance, pronunciation and connotation
and the additional fact that the common purchasers of
applicant’s and registrant’s services are sophisticated, we
find that there exists no likelihood of confusion.
Decision: The refusal to register is reversed.
Ser. No. 76/114,506
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Hohein, Administrative Trademark Judge, concurring:
I concur with the conclusion that contemporaneous use
of the mark HRC WORKNET for “providing employment
information regarding policies and practices concerning
issues specific to gay, lesbian, bisexual, and
transgendered employees via an on-line global computer
network” is not likely to cause confusion with the mark HRC
for “human resources consulting services, namely, assisting
businesses in assessment and planning in the fields of
personnel and human resource management.” However, whether
applicant's disclaimer of the term WORKNET constitutes an
admission of the mere descriptiveness thereof when used in
connection with applicant's services would seem to be
problematic. While, at one time, it was well settled that
a disclaimer of a term in an application constituted both
an admission of the merely descriptive nature thereof with
respect to the goods or services for which registration is
sought and an acknowledgment of the lack of an exclusive
right therein at the time of the disclaimer, see, e.g.,
Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453
F.2d 1296, 172 USPQ 361, 363 (CCPA 1972) and Kellogg Co. v.
Pack'Em Enterprises Inc., 14 USPQ2d 1545, 1549 n. 10 (TTAB
1990), aff'd, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
Ser. No. 76/114,506
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1991), whether such treatment of a disclaimer is reflective
of the current practice of the United States Patent and
Trademark Office ("Office") seems questionable.
Specifically, in light of the decision in In re MCI
Communications Corp., 21 USPQ2d 1534, 1538-39 (Comm'r Pats.
1991), it was held that Section 6(a) of the Trademark Act,
15 U.S.C. §1056(a), permits an applicant to disclaim matter
voluntarily, irrespective of whether the matter disclaimed
is registrable or unregistrable. All previous Patent and
Trademark Office authority holding otherwise was expressly
overruled. Thus, while previous practice had prohibited
the entry of disclaimers of registrable components of
marks, if an applicant presently offers a disclaimer of any
matter in a mark, the Office will accept the disclaimer,
provided that the entire mark is not disclaimed. The MCI
decision nevertheless states emphatically that the entry of
such a disclaimer does not render registrable a mark that
is otherwise unregistrable under relevant sections of the
Trademark Act, such as Section 2(d), and that the entire
mark, including any disclaimed matter, must be evaluated to
determine registrability. See TMEP §1213.01(c).
Nonetheless, even if applicant's disclaimer of the
term WORKNET is properly regarded as an admission of mere
descriptiveness and/or at least an acknowledgement that it
Ser. No. 76/114,506
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lacks exclusive rights therein, the problem in this case
remains the question of precisely what aspect of
applicant's services such term merely describes. Here, the
Examining Attorney required that “the applicant ... insert
a disclaimer of WORKNET ... because it is descriptive of
the services the applicant is offering.” Applicant, in
response, submitted a disclaimer of WORKNET, although it
appears to have mischaracterized the requirement, stating
that: “The Examining Attorney has requested that the
Applicant disclaim the generic wording ‘WORKNET’ apart from
the mark as shown” (emphasis added). Accordingly, while
both the Examining Attorney and applicant seem to be in
agreement that such term has a descriptive significance of
some sort, neither has provided any indication as to what
that significance is and it is simply not clear from the
record herein what attributes of applicant's services the
term WORKNET merely describes.
Moreover, as to taking judicial notice of “over
fifteen specialized computer reference works” concerning
the terms “worknet” and “work net,” it is of course well
established that the fact that a term is not found in a
dictionary (or other standard reference works) is not
controlling on the question of its registrability,
including the issue of mere descriptiveness. See, e.g., In
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re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112
(Fed. Cir. 1987) and In re Orleans Wines, Ltd., 196 USPQ
516, 517 (TTAB 1977). Consequently, while it is the case
that even if applicant is the first and/or only user of the
term WORKNET, that fact does not mean that such term cannot
be merely descriptive of its services, see, e.g., In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018,
1020 (TTAB 1983) and In re Mark A. Gould, M.D., 173 USPQ
243, 245 (TTAB 1972), the absence thereof from specialized
computer reference works would seem to me to indicate that
such term is of relatively recent derivation and is
confined to applicant's limited field.
Therefore, even assuming that the term WORKNET is
merely descriptive of applicant's services, when the
respective marks are considered in their entireties, the
presence thereof in applicant's HRC WORKNET mark creates
enough differences in appearance, pronunciation and
connotation from registrant's HRC mark that, in light of
the fact that the services at issue are specifically
different and are purchased by sophisticated business
consumers, a likelihood of confusion does not exist. Cf.
In re Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238, 1239
(Fed. Cir. 1992).
Ser. No. 76/114,506
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Seeherman, Administrative Trademark Judge, dissenting:
I respectfully dissent from the conclusion that there
is no likelihood of confusion between HRC WORKNET for
“providing employment information regarding policies and
practices concerning issues specific to gay, lesbian,
bisexual, and transgendered employees via an on-line global
computer network” and HRC for “human resources consulting
services, namely, assisting businesses in assessment and
planning in the fields of personnel and human resource
management.”
First, because the majority has gone to some effort to
address this point, I think it important to reiterate that
the term WORKNET in applicant’s mark is merely descriptive.
The Examining Attorney required a disclaimer of the term
“because it is descriptive of the services the applicant is
offering” and applicant complied without any discussion,
thus clearly conceding the descriptive nature of the term.
In fact, although the Examining Attorney stated that
WORKNET was descriptive, in its response applicant
characterized the term as generic (“The Examining Attorney
has requested that the Applicant disclaim the generic
wording ‘WORKNET’ apart from the mark as shown”). The
majority points out that the Examining Attorney did not
submit any evidence as to the descriptiveness of WORKNET,
Ser. No. 76/114,506
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but such evidence was clearly not required in view of
applicant’s acknowledgment of descriptiveness by its
immediate offering of the disclaimer. For the Examining
Attorney to submit evidence of descriptiveness after the
submission of the disclaimer would have been a waste of the
Office’s resources, and would have burdened the file with
unnecessary material. Indeed, in other circumstances we
might well have criticized an Examining Attorney for
submitting evidence which was so patently unnecessary.
I would add that I cannot remember a panel of this
Board ever going to such effort to cast doubt on whether a
term is merely descriptive when the applicant and Examining
Attorney were in agreement that it is. If the Examining
Attorney knew that the majority would consult 15 computer
reference works for a listing of “worknet” or “work net,”
and that the Examining Attorney’s conclusion of
descriptiveness would be held to such scrutiny, the
Examining Attorney might well have submitted evidence that
would have satisfied the majority on this score. But as I
noted previously, such evidence was not necessary in view
of the applicant’s clear concession that WORKNET is merely
descriptive.
Returning to the issue of likelihood of confusion, I
believe that the marks are extremely similar. I agree with
Ser. No. 76/114,506
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the majority’s point that the term WORKNET in applicant’s
mark, despite the fact that it has been disclaimed, must be
considered in the determination of likelihood of confusion.
However, it is well established that, in articulating
reasons for reaching a conclusion on the issue of
likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark. In re In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Typically disclaimed words are given less weight,
and I believe that should be the case here. Consumers will
look to the HRC portion of applicant’s mark for its source-
identifying significance, and regard the term WORKNET as a
description of the service. (Even if the term WORKNET were
to be considered suggestive, rather than merely
descriptive, I believe that HRC would still carry a
stronger source-identifying significance, being in the
nature of a house mark with WORKNET being viewed as a
“product mark” for the service of providing employment
information.)
Thus, although applicant’s mark contains the
additional term WORKNET, I do not believe that this term
distinguishes the marks. Rather, consumers who are
familiar with the registrant’s HRC human resources
Ser. No. 76/114,506
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consulting services are likely to regard HRC WORKNET, used
in connection with providing employment information via a
global computer network, as a variation of the HRC mark
which has been adopted for the services rendered via the
network.
The majority also notes that HR stands for “human
resources,” a point with which I agree. However, the
majority then goes on to say that two of the three letters
which are common to both marks are highly descriptive for
the registrant’s services and at least highly suggestive of
applicant’s services. I view this statement as an
implication that consumers will not accord this similarity
much weight in their view of the marks as a whole.
However, the letters HR in both marks are not visually
separate, but are part of HRC. Thus, I do not think that,
as used in the marks, consumers are likely to discount the
HR portion of the marks. More importantly, the similarity
between the marks is not just in the initialism HR, but it
is in the identical element HRC, which is the entirety of
the registered mark and the first “word” of applicant’s
mark.
Ser. No. 76/114,506
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As for the services, the majority does not dispute
that they are related,1 and that the classes of consumers
are identical in part. The majority points out that the
common class of purchasers are businesses, and that such
consumers are sophisticated. I do not disagree with either
of these assertions. However, I disagree with the
majority’s conclusion that the sophistication of these
consumers would avoid confusion. Because of the similarity
of the trademarks, and the fact that the additional term
WORKNET does not distinguish applicant’s mark, as
previously discussed, even sophisticated consumers are
likely to be confused.
The majority suggests that “these sophisticated
individuals when selecting human resources consulting
services would obviously engage in significant discussions
with registrant and would exercise a fair degree of care
prior to signing a contract for providing human resources
consulting services.” I have several problems with this
assertion. First, a business which first is exposed to

1 The majority characterizes the services as being “at least
tangentially related.” Based on the evidence of third-party
registrations submitted by the Examining Attorney; the fact that the
identification of services in the cited registration can encompass
policies and practices concerning issues specific to gay, lesbian,
bisexual and transgendered employees; and the fact that the identified
services can be rendered, at least in part, via an on-line global
computer network, I believe that the services are more closely related
than does the majority.
Ser. No. 76/114,506
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applicant’s on-line services and finds them unacceptable
might simply assume that there is a connection between
applicant’s services and registrant’s, and not trouble to
explore whether registrant is in fact connected to
applicant. Second, a business which knows of registrant’s
services and then encounters applicant’s on-line services
will not, because of the nature of on-line services, have
the opportunity to engage in significant discussions with
the provider of applicant’s services to determine whether
the source of the on-line employment information services
is the same as the source of the human resources consulting
services. Moreover, potential customers may initially
encounter registrant’s services on-line, as shown by the
website material for registrant which applicant has made of
record. Third, to the extent that the majority is
suggesting that consumers of the registrant’s services
would go behind registrant’s trademark and thereby avoid
confusion, our determination must be on the basis of
whether the marks as used in connection with the respective
services are likely to cause confusion.
Finally, although I have no doubt that confusion is
likely, I think that the foregoing discussion at the very
least raises doubt about this issue. In accordance with
our long-established practice, such doubt should be
Ser. No. 76/114,506
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resolved in favor of the registrant, which has owned this
registration since 1987, and claims use of the mark since
1984.
Accordingly, I would affirm the refusal of
registration.