Kenneth Joekel

Trademark Trial and Appeal Board

Apr 26, 2013

No. 85977047 (T.T.A.B. Apr. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Kenneth Joekel
_____

Serial No. 85977047
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Melissa M. Martinez of Keeling Patents & Trademarks, LLC for Kenneth Joekel.

Doritt Carroll, Trademark Examining Attorney, Law Office 116 (Michael W. Baird,
Managing Attorney).
_____

Before Grendel, Holtzman and Bergsman, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Kenneth Joekel, (“applicant”) filed a use-based application to register the
mark PPS PACSETTER PERSONNEL SERVICES and design, shown below, for the
following services, as amended:
Temporary help services, namely, furnishing of employees
on a contract basis to persons or places of business
requiring part-time or temporary help, namely, skilled
and unskilled industrial and construction workers, office
and factory workers, skilled technical personnel, general
laborers and others; Consultancy of personnel
recruitment; Human resources services, namely,
personnel selection for others; Job and personnel
placement; Personnel consultancy; Personnel placement
and recruitment; Employment hiring, recruiting,
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placement, staffing and career networking services, in
Class 35.

Applicant disclaimed the exclusive right to use “Personnel Services.”
The Trademark Examining Attorney refused to register applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the mark PPS, in typed drawing form, for “pre-
employment background screening services,” in Class 35, as to be likely to cause
confusion.1
Preliminary Issues
A. Consolidation.
The description of services in the application as originally filed included
payroll related services, as well as employment placement related services. The
Trademark Examining Attorney cited two registrations, owned by different entities
for different one for payroll related services and one for employment screening
services as Section 2(d) bars to registration. When the refusal was made final,
applicant filed a notice of appeal along with a request that his application be
divided thereby segregating the refusals to the appropriate parent and child

1 Registration No. 1774392, issued June 1, 1993; second renewal.
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applications. Although the request to divide was approved and completed,
applicant filed a single appeal brief requesting that the appeals be consolidated.
Because the cited registrations are for different marks and different services and
the application has been divided to segregate the refusals to the appropriate
applications, there are no common questions of fact and law and, therefore, there is
no benefit to consolidating the appeals. In this case, consolidation makes the review
of the evidence and writing of a decision more difficult. The request to consolidate
the appeals is denied.
B. Evidence attached to appeal brief.
Applicant attached to his brief copies of the evidence he submitted during the
prosecution of his application. Applicants in ex parte appeals and parties in inter
partes proceedings are sometimes under the impression that attaching previously-
filed evidence to a brief (and citing to the attachments, rather than to the original
testimony or notices of reliance) is a courtesy or a convenience to the Board. It is
neither. When considering a case for final disposition, the entire record is readily
available to the panel. Because we must determine whether such attachments are
properly of record, citation to the attachment requires examination of the
attachment and then an attempt to locate the same evidence in the record
developed during prosecution, requiring more time and effort than would have been
necessary if citations were directly to the file history.

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Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. 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 Company, Inc., 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
similarities between the services. See 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 and differences in the marks”). These factors, and any
other relevant du Pont factors in the proceeding now before us, will be considered in
this decision.
A. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, meaning and commercial impression.
We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, any one of these means of comparison may be
critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In
comparing the marks, we are mindful that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but rather whether the
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marks are sufficiently similar in terms of their overall commercial impression so
that confusion as to the source of the goods offered under the respective marks is
likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086
(Fed. Cir. June 5, 1992).
The marks are similar to the extent that they both contain the letters PPS.
Since registrant’s mark is in typed drawing format, the mark is not limited to any
particular depiction. The rights associated with a mark in typed characters reside
in the wording and not in any particular display. Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d
1445, 1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015
(TTAB 1988). Thus, registrant’s letters PPS could be displayed in a format or font
similar to applicant’s mark.
Because the similarity or dissimilarity of the marks is determined based on
the marks in their entireties, the analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the
entire marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. V. Master Mfg.
Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic that a mark
should not be dissected and considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion”). On the other hand, different
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features may be analyzed to determine whether the marks are similar. Price Candy
Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268
(CCPA 1955). In fact, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 224 USPQ at 751.
In this case, we find that the letters PPS are the most prominent feature of
applicant’s mark. First, in the case of marks consisting of words and a design, the
words are normally given greater weight because they would be used by consumers
to request the products. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596
(TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See
also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793,
1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565,
218 USPQ 390 (Fed. Cir. 1983).
Applicant argues that the design portion of its mark “adds significantly to the
strong source indicating value as a whole of Applicant’s mark” and is “arguably the
most significant visual impression” of applicant’s mark.2 While the design element
may be aesthetically pleasing, it is not so distinctive as to leave a lingering
impression, nor will consumers refer to the design element in lieu of the literal
elements of the mark when calling for or referring to applicant’s services.

2 Applicant’s Brief, p. 6.
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With respect to the literal portion of applicant’s mark, the letters PPS are the
most dominant portion because they are larger than the word PACESETTER and
they are featured above and before the word PACESETTER. See Presto Products
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the
first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”). See also Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because
“veuve” is the first word in the mark and the first word to appear on the label);
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first
notice the identical lead word).
The words “Personnel Services” have little, if any, trademark significance
because they are descriptive, if not generic. It is well-settled that disclaimed,
descriptive matter may have less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 224 USPQ at 752
(“Regarding descriptive terms, this court has noted that the descriptive component
of a mark may be given little weight in reaching a conclusion on the likelihood of
confusion”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
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(disclaimed matter is often “less significant in creating the mark’s commercial
impression”).
Further, applicant’s mark encompasses registrant’s entire mark. In
situations where the entirety of one mark is incorporated within another, the marks
have been found similar. See The Wella Corp, v. California Concept Corp., 558 F.2d
1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer
design for men’s cologne, hair spray, conditioner and shampoo is likely to cause
confusion with the mark CONCEPT for cold permanent wave lotion and
neutralizer); Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E.
Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s
mark BENGAL LANCER for club soda, quinine water and ginger ale is likely to
cause confusion with BENGAL for gin); In re West Point-Pepperell, Inc., 468 F.2d
200, 175 USPQ 558 (CCPA 1972) (WEST POINT PEPPERELL and griffin design
for fabrics is likely to cause confusion with WEST POINT for woolen piece goods).
Applicant argues that the letters PPS are an initialism for “Professional
Personnel Screening,” referencing Registration No. 1789971 for the mark
PROFESSIONAL PERSONNEL SCREENING (Supplemental Register) and copies
of registrant’s website. Accordingly, applicant concludes that the letter combination
PPS does not comprise an arbitrary mark but is a descriptive abbreviation.3
However, registrability is determined based on the registered mark or the mark
sought to be registered, not on purported restrictions on how the mark is used. In

3 Applicant’s Brief, pp. 7-8.
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re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993);
Chesebrough-Pond’s Inc. v. Soulful Days, Inc., 228 USPQ 954, 956 (TTAB 1985)
(“the fact that applicant may use another trademark along with the mark sought to
be registered herein is irrelevant in the determination of likelihood of confusion in a
proceeding such as this since applicant is seeking registration of the mark ‘AZANIA’
by itself.”); Fort Howard Paper Co. v. Marcal Paper Mills, Inc., 189 USPQ 305, 307
(TTAB 1975) (the presumptions under Section 7 of the Trademark Act apply to the
registered mark). Therefore, evidence of another registration owned by the
registrant or how registrant is using its mark is not relevant in an ex parte appeal.4
In view of the foregoing, we find that the marks are similar in terms of
appearance, sound, meaning and commercial impression.
B. The strength of the registered mark.
Applicant argues that PPS is a weak mark for employment background
screening services.5 Applicant submitted eleven examples of third parties using
PPS for employment screening services.6 The following examples are
representative:

4 In an infringement action, the court might consider trade dress in determining whether
there is a likelihood of confusion. See Henri’s Foods Prods. Co. v. Kraft, Inc., 717 F.2d 352,
220 USPQ 386, 388-389 (7th Cir. 1983) (“a comparison of labels rather than simply
trademarks is appropriate . . . When a prospective purchaser goes to the supermarket to
buy salad dressing, it is the label that the purchaser sees”).
5 Applicant’s Brief, p. 18.
6 Applicant’s April 17, 2012 response, Exhibits DD-NN.
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1. Exhibit DD is a brochure entitled PPS Access Screening from a
company called Private Professional Services, Inc. The brochure advertises the
company’s employment screening expertise.
2. Exhibit EE is an excerpt from a website for Personal Profile Services, a
company that renders tenant and employment screening services. That company
uses the abbreviation PPS to identify itself.
3. Exhibit FF is an excerpt from a website for Allied Assessments, Inc.
that renders a service called Professional Pre-Employment Screen (PPS) for
screening and selecting managerial, professional and supervisory candidates.
Also, applicant submitted an article, “Creating A Unique Brand Name,” by
Martin Jelsema, “CEO of a company that helps small businesses profit from the
power of branding,” posted on sideroad.com.7 Mr. Jelsema made the following
observation about initials and acronyms:
When initials – usually three – are combined and used as
a name, they may or may not make a viable name. If they
are intended to be spoken as a string of letters (AMC,
RCA, TRW), they do not convey any attributable or
characteristic of the company. They convey no
personality or humanity in and of themselves unless they
have become know [sic] as a shortcut for existing terms
(MVP, SAP, QED) [sic]
Thus, Mr. Jelsema has identified letter strings as generally forming inherently
strong marks because they are arbitrary when used in connection with a particular
product or service.

7 Applicant’s September 23, 2011 response, Exhibit E.
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With the advent of the Internet, third-party websites, like third-party
registrations, are often introduced into the record to prove that third parties are
using marks that are similar to the registrant’s mark and that the public has
learned to distinguish among them and would not be confused by the addition of
applicant’s mark. However, “[w]hether the public has been so conditioned turns on
whether it has been actually exposed to the similar third party [sic] marks in the
marketplace, and on the extent and intensity of that exposure.” In re Clorox Co.,
578 F.2d 305, 198 USPQ 337, 343 (CCPA 1978). See also Tiffany & Co. v. Classic
Motor Carriages, Inc., 10 USPQ2d 1835, 1840-41 (TTAB 1989) (the probative value
of third-party evidence depends on the extent to which the various names have been
used and the degree to which the public is aware of such use). What we can
conclude from applicant’s evidence is that PPS is not a unique term in the field of
employment screening. Nevertheless, registrant’s mark PPS is registered and it is
entitled to the presumptions of Section 7(b) of the Trademark Act, 15 U.S.C. §
1057(b) (prima facie evidence of registrant’s exclusive right to use the mark in
commerce).
C. The similarity or dissimilarity or nature of the services.
Applicant is seeking to register its mark for what is essentially job placement
services. Registrant’s mark is for “pre-employment background screening services."
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To show that these services are related the Trademark Examining Attorney
submitted excerpts from several websites in her October 21, 2011 Office Action.8
1. CareerLab (careerlab.com) a recruiting and hiring company.
(Emphasis in the original).

A well-planned hiring project includes at least (4)
parts:
•Some form of PRE-EMPLOYMENT TESTING
•PROFESSIONAL INTERVIEWING, preferably by a
team of different interviewers at different times, then a
discussion as to consensus
•Thorough REFERENCE CHECKING of previous
employers and co-workers
•And in some cases, BACKGROUND CHECKS involving
such things as civil and criminal history, credit history,
worker’s compensation claims, and whatever else might
be pertinent to the job.
* * *
We can help you and your company in any phase of the
recruiting and hiring process and we can do all or part of
it. Companies have used us in every possible way, from
simple assistance in identifying core competencies and
writing a job description to complete sourcing of
candidates and full-blown retained executive search. Here
are few of our specialties in more detail:
•Legal Advice
•Writing Job Descriptions
•Applicant Screening
•Pre-employment Assessment & Training

8 In her July 12, 2012 Office Action, the Trademark Examining Attorney submitted
excerpts from three websites from companies that perform human resource and recruiting
services but the website did not expressly address background screening services.
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•Reference Checking
•Background Checking
•Interview Training for Managers
•Hiring Advice
2. Ceridian (Ceridian.com)
Recruitment, Screening Services & RPO
What are you looking for?
•A comprehensive suite of recruiting and selection
solutions designed to optimize recruiting processes with
speed, consistency and accuracy
•A more efficient way to administer employee
verifications and eliminate administrative burdens
•Thorough, state-of-the-art screening processes that
enable you to minimize hiring risks.
* * *
No matter what size your company, Ceridian provides a
comprehensive suite of recruiting and screening solutions
to meet your unique needs. These solutions significantly
streamline recruiting and hiring processes, . . .
Recruiting Automation
* * *
Employment Screening
* * *
Recruitment Process Outsourcing (RPO)
3. Jorgenson Consulting (jci-inc.net)
Jorgenson Consulting is a leading national executive
search firm …
* * *
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Our Service: … Our in-depth candidate search, screening
and background checks help insure clients have the best
choice of the most qualified candidates. Recruitment and
hiring is a sensitive process. All candidate contacts are
handled in a timely and confidential manner.
4. Murray Resources (murrayresources.com)
The website advertises the company’s ability to screen and test job
candidates, as well as conduct reference and background checks.
5. Accurate Placement (accurateplacement.com)
The website advertises the company’s ability to meet its clients’ hiring,
recruiting, screening, testing and temporary staffing needs.
The Trademark Examining Attorney submitted three more websites in her
November 19, 2012 Office Action showing that those companies render employment
placement services and employment screening services. Applicant also introduced
into the record excerpts from websites showing the same company rendering
screening services and employment placement related services.9 In fact, the
evidence submitted by the Trademark Examining Attorney and applicant shows
that employment screening services are part of employment placement services.
While not conceding that the services are related, applicant argued that the
services are different.10 As noted above, the evidence demonstrates that
background screening checks are a part of the hiring process. In view of the
foregoing, we find that the services are related.

9 Applicant’s November 12, 2012 response, Exhibits GG – NN.
10 Applicant’s Brief, p. 16.
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E. The similarity or dissimilarity of established, likely-to-continue channels of
trade and classes of consumers.
Because the evidence shows that employment screening services are part of
employment placement services, we presume that the channels of trade and classes
of consumers are the same. See American Lebanese Syrian Associated Charities Inc.
v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers.”). See also In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence
regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion). Further, since
the websites show that employment screening services may be a part of employment
placement services, the services are, in fact, sold in the same channels of trade and
to the same classes of consumers.
F. Degree of consumer care.
Applicant contends that the consumers for the services at issue exercise a
high degree of care because they are business owners or managers and they “will
put a good deal of time, effort, and money into these new hires and contractors.”11
To support its argument, applicant referenced an entry from the ENCYCLOPEDIA
OF BUSINESS (2d ed.) entitled “Temporary Employment Services”
(referenceforbusiness.com) and an article entitled “The Pros and Cons of Hiring a

11 Applicant’s Brief, p. 18.
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Temp” posted on the BusinessKnowHow.com website.12 The articles discussed the
care needed in the hiring process and the importance of having a good working
relationship with a placement company.
When choosing a temp agency for the first time, you will
need to spend some time selecting one that meets your
particular needs. Take a look in your local Yellow Pages
for the names of some agencies in your area. Check out
their websites to find out how long they’ve been in
business, their “mission statement” in the types of
workers and services they provide.
“The Pros and Cons of Hiring a Temp.”
We find that the degree of consumer care is a factor that weighs against
finding that there is a likelihood of confusion.
G. Balancing the factors.
Despite the fact that consumers exercise a high degree of care, because the
marks are similar, because applicant’s services encompass registrant’s services, and
because we must presume that the channels of trade and classes of consumers are
the same, we find that applicant’s mark PPS PACESETTER PERSONNEL
SERVICES and design for “temporary help services, namely, furnishing of
employees on a contract basis to persons or places of business requiring part-time or
temporary help, namely, skilled and unskilled industrial and construction workers,
office and factory workers, skilled technical personnel, general laborers and others;
consultancy of personnel recruitment; human resources services, namely, personnel
selection for others; job and personnel placement; Personnel consultancy; Personnel

12 Applicant’s September 23, 2011 response, Exhibits K and L.
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placement and recruitment; employment hiring, recruiting, placement, staffing and
career networking services” is likely to cause confusion with the mark PPS for “pre-
employment background screening services.”
To the extent that any of applicant's evidence or arguments raise a doubt
about likelihood of confusion, that doubt is required to be resolved in favor of the
prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988); and In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.