Kenneth Joekel

Trademark Trial and Appeal Board

Apr 26, 2013

No. 85204813 (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. 85204813
_____

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:
Administration of business payroll for others; Payroll
preparation; Payroll processing services; Wage payroll
preparation; Invoicing services; and Business
management consulting and advisory services, in Class
35.
Serial No. 85204813

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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 PREMIER PAYROLL SERVICE
and design, shown below, for “administration of business payroll for others,” in
Class 35, as to be likely to cause confusion.1

Registrant disclaimed the exclusive right to use the term “Premier Payroll Service.”
Preliminary Issues
A. Consolidation.
The description of services in the application as originally filed included
payroll related services as well as employment related services. The Trademark
Examining Attorney cited two registrations, owned by different entities for different
services as Section 2(d) bars to registration one for the payroll related services and
one of the employment related services. Applicant requested that its application be
divided thereby segregating the refusals to the appropriate parent and child

1 Registration No. 3765330, issued March 23, 2010.
Serial No. 85204813

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applications. However, instead of prosecuting the applications separately, applicant
requested 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 discrete applications, there are no common questions of
fact and law and, therefore, there is no benefit to consolidating the appeals. In fact,
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.
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
Serial No. 85204813

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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 and nature of the services, the established,
likely-to-continue trade channels and classes of consumers.
The services are in part identical because both the recitation of services in
the registration and the application include “administration of business payroll for
others.” Because the services described in the application and cited registration are
in part identical, we must presume that the channels of trade and classes of
purchasers 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
Serial No. 85204813

5

regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion).
B. Degree of consumer care.
Applicant argues that the administration of business payroll is of such nature
that prospective clients exercise a high degree of care in selecting the service
provider.2
The consumers of these types of services are typically
business owners or business managers that have a need
for a respectable and trustworthy company to handle its
payroll needs. Payroll companies are trusted with
sensitive employee information, the type of information
ripe for misappropriate for use in identity theft; … Payroll
service providers will have access to employees’ social
security numbers, financial information, bank account
information, etc. Another consideration is the complexity
of the tax laws and the need to hire a payroll company
that is reputable and able to handle all the relevant
payroll issues. For these reasons choosing a payroll
vendor takes time and effort and is not taken lightly by
the consumers of such services.3
To support his argument, applicant submitted an excerpt from the “Payroll
Buyer’s Guide,” (StartUpNation.com) entitled “How to choose a payroll vendor.”4
The article pointed out that selecting a payroll vendor is an important decision
because the business owner is “responsible for employee and government agency
payments irrespective of the actions of a third party payroll company.” In addition,
the vendor “will have access to your financial information, your employee data
bank, and employee social security numbers.” Therefore, it is essential “to get

2 Applicant’s Brief, p. 15.
3 Id. at pp. 15-16.
4 Applicant’s September 23, 2011 response, Exhibit G.
Serial No. 85204813

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references, ‘test’ the service by performing a preliminary ‘call in’ or input of payroll.”
The author of the article warns not to “assume that all companies can offer all
features. Choose a vendor with experience in your industry.”
“Another thing to keep in mind when shopping for a payroll service is: [sic]
security. No matter what payroll service is employed by you, make sure that what
encryption and other security methods are part of their service.”5
We find that the degree of consumer care is a factor that weighs against
finding that there is a likelihood of confusion.
C. Strength of the registered mark.
Applicant contends that the initials or abbreviation PPS is a weak term when
used in connection with payroll processing services.6 First, applicant points out
that the letters PPS are recognized initials for “Payroll Personnel System.”7
Second, applicant submitted ten excerpts from websites using the letters PPS
to identify payroll services.8 The websites listed below are representative.

5 “Avoid Errors By Using A Payroll Service,” (atouchofbusiness.com), Applicant’s September
23, 2011 response, Exhibit G.
6 Applicant’s Brief, pp. 18-21.
7 Applicant’s April 17, 2012 response, Exhibit R (acronymfinder.com).
8 Applicant’s April 17, 2012 response, Exhibits U – CC and KK.
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Serial No. 85204813

9

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
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 set forth below.
Applicant’s Mark Cited Registration

The marks are similar to the extent that they share the letters PPS.
However, in both marks, the letters are set above the trade names from which the
PPS initials are derived: PACESETTER PERSONNEL SERVICES and PREMIER
PAYROLL SERVICE. While generally the derivation of the letters is not
controlling, in this case, the letters are used in connection with their trade name
names and those names are different. See Electronic Realty Associates, Inc. v. Extra
Risk Associates, 217 USPQ 810, 815-816 (TTAB 1982) (ERA EXTRA RISK
Serial No. 85204813

10

ASSOCIATES not likely to cause confusion with ERA because the addition of
EXTRA RISK ASSOCIATES identifies a specific source).
Because it is the marks as displayed in the application and the registration,
and not features of the marks per se, that are controlling, we find that in terms of
appearance, the marks look different.
In terms of sound, we find that consumers are more likely to refer to
applicant as PACESETTER, rather than PPS, and to registrant as PREMIER,
rather than PPS.
In term of meaning, PPS PACESETTER PERSONNEL SERVICES is a
distinct from PPS PREMIER PAYROLL SERVICE and the marks engender
different commercial impressions.
In comparing the marks in their entireties, we find that the differences
outweigh the similarities.
E. Balancing the factors.
Despite the fact that the services are in part identical and the presumption
that the channels of trade and classes of consumers are the same, because of the
differences in the marks, the inherent weakness of the initials PPS, and the high
degree of care that prospective clients will use in making their payroll
administration decisions, we find that applicant’s mark PPS PACESETTER
PERSONNEL SERVICES and design for “administration of business payroll for
others; payroll preparation; payroll processing services; wage payroll preparation;
invoicing services; and business management consulting and advisory services” is
Serial No. 85204813

11

not likely to cause confusion with the mark PPS PREMIER PAYROLL SERVICE
and design for “administration of business payroll for others.”
Decision: The refusal to register is reversed.