Labor Ready, Inc.v.Randstad General Partner (US) LLC

Trademark Trial and Appeal Board

Jan 23, 2008

No. 91155885 (T.T.A.B. Jan. 23, 2008)

Mailed: 1/23/08

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Labor Ready, Inc.
v.
Randstad General Partner (US) LLC
_____

Opposition No. 91155885
to application Serial No. 76399152
filed on April 23, 2002
_____

James L. Vana and Matthew Schneller of Perkins Coie for
Labor Ready, Inc.

John M. Bowler and Auma N. Reggy of Troutman Sanders for
Randstad General Partner (US) LLC.
______

Before Seeherman, Quinn and Drost, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Randstad General Partner (US) LLC filed an application
to register the phrase WE PUT PEOPLE TO WORK for “temporary
and permanent employment agency and staffing services.”1
Labor Ready, Inc. opposed registration of applicant’s
mark on the ground of mere descriptiveness under Section

1 Application Serial No. 76399152, filed April 23, 2002, based on
a bona fide intention to use the mark in commerce. Applicant
subsequently filed an amendment to allege use setting forth a
date of first use anywhere of June 2001, and a date of first use
in commerce of October 2001.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91155885
2
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).
Applicant, in its answer, denied the salient
allegations of the notice of opposition. A few allegations
in the pleadings merit specific mention. Opposer alleged
that applicant “has not established distinctiveness in the
phrase.” Applicant responded by denying “that it is
required to establish distinctiveness of its mark,” and
further stated that “Applicant specifically shows that if
the establishment of distinctiveness is required to obtain
protection of the mark, that such distinctiveness has been
established.” (Paragraph 7 in the notice of opposition and
answer). Opposer also alleged that it, “as a provider of
temporary manual labor services, is entitled to use the
descriptive phrase ‘We Put People to Work.’” In response,
applicant admitted, “Opposer is entitled to make ‘fair use’
of the mark as such term has been defined under U.S.
Trademark law.” (Paragraph 9 in the notice of opposition
and answer).
The record consists of the pleadings; the file of the
involved application; trial testimony, with related
exhibits, taken by each party;2 excerpts of articles

2 The depositions are replete with objections. Not a single
objection was maintained in the briefs and, accordingly, we deem
any objection to be waived. Hard Rock Café International (USA)
Inc. v. Elsea, 56 USPQ2d 1504, 1507 n.5 (TTAB 2000); and Reflange
Inc. v. R-Con International, 17 USPQ2d 1125, 1126 n.4 (TTAB
1990). See TBMP §707.03(c) (2d ed. rev. 2004).
Opposition No. 91155885
3
appearing in printed publications, applicant’s responses to
certain discovery requests, and official record file
histories, all made of record in opposer’s notices of
reliance; and advertisements in printed publications
introduced in applicant’s notice of reliance. The record is
accurately set forth in greater detail by the parties in
their respective briefs. (Opposer’s Brief, pp. v-vii;
Applicant’s Brief, p. 1-2).3 The record also includes other
documents submitted by way of the parties' stipulations,
including excerpts of Internet websites and transcripts of
radio advertisements. The parties filed briefs, and the
record includes dictionary definitions that accompany
opposer’s brief.4
Opposer is one of the nation’s leading providers of
temporary manual labor for the light industrial and small
business markets. Opposer first used “We Put People to
Work” as part of its mission statement, and the phrase began
to appear in a prominent manner in opposer’s marketing
materials in late 2001. According to Jim Young, opposer’s
director of marketing and advertising, the chief executive

3 The Board, in an order dated January 16, 2007 (p. 3), struck
certain documents that applicant sought to introduce. The
parties acknowledged that these documents do not form part of the
record in their respective summaries of the record, and we have
not considered this evidence in reaching our decision.
4 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Opposition No. 91155885
4
officer liked the phrase because it “was a simple
explanation of what we do.” (Young dep., p. 33).
Applicant, in its mission statement, indicates that it
seeks to be the third largest employment services company in
the world. Rebecca Johnson, applicant’s vice president and
director of marketing, testified that applicant’s services
feature matching the supply and demand of the workforce
needs. Ms. Johnson testified that applicant adopted the
phrase WE PUT PEOPLE TO WORK in the summer of 2000
“[b]ecause it reflected our--our goals, our aspirations,
our--who we are to our audiences. Who we are is what we
aspire to be, what we in our culture want our people to
aspire to and be.” (Johnson dep., p. 22). Ms. Johnson
stated, when asked about various third-party uses of WE PUT
PEOPLE TO WORK or variations thereof, that she had no
knowledge of any contacts between applicant and the third
parties making such uses.
Opposer has standing to object to the registration of
applicant’s mark on the ground that it is merely
descriptive. Not only did applicant admit opposer’s
standing (Brief, p. 3), but also the evidence establishes
that the parties are engaged in providing essentially the
same services.
We thus turn to the substantive merits of the
opposition, namely whether the proposed phrase WE PUT PEOPLE
Opposition No. 91155885
5
TO WORK is merely descriptive of “temporary and permanent
employment agency and staffing services.”5
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Abcor Development, 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered merely descriptive; rather, it is sufficient that
the term describes one significant attribute, function or
property of the goods or services. In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ 338
(TTAB 1973). Whether a term is merely descriptive is

5 So as to be clear, despite the statement made by applicant in
its answer, applicant subsequently did not claim that its mark
has acquired distinctiveness under Section 2(f). Applicant has
taken the position that because, in its view, opposer has failed
to show by a preponderance of the evidence that applicant’s mark
is merely descriptive, “[t]here is no need for [applicant] to
prove acquired distinctiveness or secondary meaning in the first
instance...Where, as here, [opposer’s] claim of mere
descriptiveness is inadequately supported, the burden does not
rest on [applicant] to prove acquired distinctiveness.” (Brief,
p. 29). In any event, even if applicant had claimed acquired
distinctiveness, it would have had the burden of proof relating
thereto, but the record falls short of establishing acquired
distinctiveness. See In re Andes Candies, Inc., 478 F.2d 1264,
178 USPQ 156 (CCPA 1973); and In re Packaging Specialists, Inc.,
221 USPQ 917, 920 (TTAB 1984). The evidence of significant
third-party uses of the phrase “we put people to work” seriously
undermines any contention by applicant that it has made
substantially exclusive use of the phrase with the result that it
has become distinctive of its services. See Quaker State Oil
Opposition No. 91155885
6
determined not in the abstract, but in relation to the goods
or services for which registration is sought, the context in
which it is being used on or in connection with the goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use; that a term may have other
meanings in different contexts is not controlling. In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is
settled that “[t]he question is not whether someone
presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who
knows what the goods or services are will understand the
mark to convey information about them. In re Tower Tech
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). The “average” or
“ordinary” consumer is the class or classes of actual or
prospective customers of applicant’s goods or services. In
re Omaha National Corporation, 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987).
A slogan, phrase or any other combination of words may
act as a trademark so long as the slogan or combination is
used in a way to identify and distinguish the user’s goods
or services from those of others. A slogan or phrase may be
merely descriptive and, thus, unregistrable on the Principal
Register in the absence of acquired distinctiveness, if it

Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361,
Opposition No. 91155885
7
directly refers to a characteristic of the goods or services
with which it is used. The mere descriptiveness analysis is
the same for a slogan as it is with any other proposed mark.
See In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (CCPA
1960). See generally J.T. McCarthy, McCarthy on Trademarks
and Unfair Competition, (4th ed. 2007).
The terms comprising applicant’s mark are commonly used
and readily understood terms; nevertheless, we will set
forth the relevant dictionary definitions of these terms:
we: I and the rest of a group that
includes me.

put: to place in a specified position
or relationship; to move in a specified
direction.

people: human beings making up a group
or assembly or linked by a common
interest.

to: used as a function word to indicate
movement or an action or condition
suggestive of movement toward a place,
person, or thing reached.

work: the labor, task, or duty that is
one’s accustomed means of livelihood.
Syn. Employment.

Merriam-Webster’s Collegiate Dictionary (10th ed. 1993).
The record includes numerous examples of applicant’s
use of the proposed mark WE PUT PEOPLE TO WORK in a
prominent fashion in the manner of a service mark. The
phrase is conspicuously displayed in various promotional

363 (CCPA 1972).
Opposition No. 91155885
8
materials. The record also is replete with applicant’s
descriptive uses of “put people to work” and slight
variations thereof within text and with no capitalization,
oftentimes within the same document that also shows use in a
prominent fashion. These uses are particularly probative.
See In re European-American Bank & Trust Company, 201 USPQ
788, 790 (TTAB 1979) [“We particularly note...applicant’s
use of the phrase ‘THINK ABOUT THIS:’ at the top of the ad
and the phrase ‘THINK ABOUT IT’ as part of the regular text
of applicant’s ad. These usages simply serve to reinforce
the ordinary meaning of the phrase ‘THINK ABOUT IT.’”].
Examples of applicant’s descriptive uses include the
following:
We put people to work--now you can
too...At Randstad, our job is simple--we
put people to work...We guarantee you
won’t find a better place to work--or a
better way to put people to work.
(Washington Post advertisement, July 23,
2000).

Let us put you to work today.
(Chicago suburban newspapers
advertisement, May 28, 2004)

The people we put to work as Production
Laborers are Talent that makes companies
work.
(www.randstad.com (applicant’s website))

Our passion is putting people to work,
and every day we find jobs for over
200,000 members of our worldwide talent
pool...We’re here to put people to work.
(applicant’s brochure)

Opposition No. 91155885
9
Meeting a company’s workforce needs and
putting people to work. It’s what we do
217,000 times everyday throughout the
world.
(Jacksonville, FL newspaper, October 24,
2002)

The people we put to work as Biochemists
are Talent with a vast, educated
knowledge and understanding of the
chemistry of living things.
(applicant’s website)

The Randstad Group operates in Europe,
North America, and Asia, putting an
average of 250,000 people to work
everyday. The very nature of our core
business--putting people to work--means
Randstad plays an important role in
society.
(applicant’s website)

Simply put, we put people to work...In
2002, Randstad North America put 219,749
people to work and provided employment
services, outsourcing and counsel to
more than 100,000 American and Canadian
businesses.
(applicant’s 2000 “Employee Review”)

As shown above, applicant itself states on its website,
“[t]he very nature of our core business [is] putting people
to work.” Applicant’s repeated uses of “we put people to
work” or slight variations thereof in a narrative and
descriptive fashion throughout its promotional materials
corroborate the descriptive nature of the phrase. See
Hartford Fire Insurance Company v. The Structured
Settlements Company, 215 USPQ 1145, 1149 (TTAB 1982).
The record also includes uses of WE PUT PEOPLE TO WORK
by competitors in the employment agency field. Opposer’s
Opposition No. 91155885
10
evidence shows that competitors’ providing employment agency
and staffing services throughout the United States use the
phrase “WE PUT PEOPLE TO WORK” or slight variations thereof
in a prominent manner.
Opposer took the testimony of four of these third-party
users. These third-party uses were prior to the first use
alleged by applicant, and the uses have been continuous to
the date of the testimony. In each instance, the testimony
is of a person knowledgeable about the adoption and use by
his/her company.
Goodwill Industries of the Southern Piedmont
(“Goodwill”) serves seven counties in North Carolina and
South Carolina, including the Charlotte area. Among its
services are job search and employment placement. Since
1998, Goodwill has used the phrase “We put people to work”
as “our primary tag line” in connection with its services;
the phrase has appeared on signage, and in brochures,
newsletters and annual reports. This phrase has been
adopted by other Goodwill organizations in additional
states. According to Michael Elder, Goodwill’s president
and chief executive officer, the phrase means “placing
people with an employer directly in a position.” (Elder
dep., p. 55).
Senior Recruiters and Total Healthcare Services
(“Senior Recruiters”) is an employment agency based in
Opposition No. 91155885
11
Springfield, Missouri. According to Eric Naegler, president
and owner, his firm has used, since April 2000, “We’re
putting people to work” or “We’re putting people to work
everyday from the ages of Eighteen to Eighty-Two.” The
phrases have appeared on Senior Recruiter’s website, and in
handouts and brochures. Mr. Elder testified that the
phrases mean, “we’re effective at what we do. I mean that
we put people to work. I mean that’s--in generic terms,
that’s what an employment agency does is it puts people to
work.” (Naegler dep., p. 25).
Riojas Enterprises (“Riojas”) is an employment agency
that has rendered services in at least nine states. Carlos
Riojas, its president, testified that his firm offers
temporary and full-time employment services, and that since
1988, his firm has continuously used “Putting People to
Work” in connection with the services. The phrase has
appeared in advertisements, newsletters and brochures, and
has been displayed at trade shows and job fairs. According
to Mr. Riojas, “we’re here to help people find a job.”
(Riojas dep., p. 60).
Careers USA, Inc. (“Careers USA”) offers staffing and
employment agency services, and since at least as early as
1983 it has used the phrase “Putting People to Work.”
Marilyn Ounjian, owner, testified that the services have
been rendered nationwide on a continuous basis.
Opposition No. 91155885
12
Opposer also introduced several examples of descriptive
uses by others in connection with employment services:
Adecco’s role is putting people to work.
(Newsday, April 9, 2000)

“We put 2 million people to work every
year. That is absolutely core. That’s
the foundation from which we can build.”
(Milwaukee Journal Sentinel, May 2,
1999)

We are literally changing lives and the
unemployment rate in Memphis by putting
people to work.
(Commercial Appeal, August 16, 2004)

“Staffing firms such as mine put tens of
thousands of people to work in Florida
each year.”
(Palm Beach Post, October 28, 2004)

“My job is putting people to work...If
they have any kind of skills, or if they
are unskilled, they should be working.”
(The Cincinnati Enquirer, December 25,
2001)

“The last half of last year was dynamite
for us. The fourth quarter was our best
quarter ever in terms of putting people
to work.”
(Journal-Gazette, February 15, 2004)

“Our philosophy is to help our customer
get their work done and get their
product out. Our job is putting people
to work.”
(Business People Magazine, January 1995)

“I’m in business to put people to work.”
(The Providence Journal, December 1,
2004)

Who is CDI? We put people to work.
We’re a leading innovative provider of
outsourcing solutions. We are the
nation’s largest provider of technical
staffing services. We are the world’s
Opposition No. 91155885
13
largest professional search and
recruitment organization.
(Johnson dep., ex. no. 34)

“We put people to work”
(www.power-plant-jobs.com)

Outcomes – We Put People to Work
(www.dors.state.md.us)

Thus, the record shows employee staffing entities routinely
using or are reported as using the phrases “we put people to
work,” “we are putting people to work,” and other variations
thereof in a descriptive manner.
Opposer further took the testimony of Frederick
Newmeyer, Ph.D. in liguistics. Dr. Newmeyer has been a
professor in the linguistics department of the University of
Washington since 1967. Opposer offered Dr. Newmeyer as a
linguistics expert. According to Dr. Newmeyer, linguistics
is the study of human language, and Dr. Newmeyer’s
particular focus has been on syntax, “that is how words are
put together to form sentences.” (Newmeyer dep., p. 10).
Dr. Newmeyer also has focused more recently on “pragmatics,”
“but it’s usually or often called discourse analysis or
functional linguistics, the study of how sentences are
situated in a discourse context or in a social context.”
(Newmeyer dep., pp. 10-11).
Dr. Newmeyer testified about the meaning conveyed by
applicant’s proposed mark WE PUT PEOPLE TO WORK. According
to Dr. Newmeyer, “we” can “only refer to [applicant]; an
Opposition No. 91155885
14
advertisement would make no sense if the ‘we’ in the
advertisement didn’t refer to the advertiser.” “People,
given the nature of the company, can only be referring to
people who have some interest in the services provided by
the company. In other words, those people who are looking
for work and would come to [applicant] for help.” And the
term “work,” according to Dr. Newmeyer, has no other
possible interpretation other than “gainful employment.”
(Newmeyer dep., pp. 13-14). The phrase, in its entirety,
means, “we are successful in helping people to find
employment.” (Newmeyer dep., p. 15). Dr. Newmeyer further
testified: “[T]he expression ‘put people to work,’ ‘putting
people to work’ is understood as part of, I don’t want to be
too technical, everyday English conversation, that it
doesn’t have some kind of special sense that could only be
understood in a very specific context. In other words, it
shows...that ‘put people to work,’ ‘putting people to work’
is just ordinary English.” (Newmeyer dep., p. 37). During
the course of his testimony, Dr. Newmeyer was asked to
review and offer comments on not only applicant’s use of “we
put people to work,” but also on various third-party uses
made of record. In each instance, Dr. Newmeyer interpreted
the phrase in the same fashion as set forth above. Dr.
Newmeyer offered these additional views:
My opinion is that the expressions,
well, two things: ‘We put people to
Opposition No. 91155885
15
work,’ ‘putting people to work’...have
the same meaning. They are just
variations of the phrase that have the
same meaning. And secondly, that it’s
an ordinary English expression that’s
descriptive of what an employment agency
does that would be understood by anybody
in the particular discourse context.
*****
Again, words are interpreted in context.
Sentences are interpreted in context.
In the context of an advertisement, I
would say the conclusion is overwhelming
that it’s an employment agency that
provides it. In ordinary English, it
can be used in all kinds of ways because
specifically, as I’ve said, it’s an
ordinary expression of English that can
be used whenever it might be
appropriate...“We put people to work” is
ordinary English.

(Dr. Newmeyer dep., p. 58 and p. 80). Dr. Newmeyer
indicated, “because of my expertise in linguistics I have a
good understanding of what the average person would
interpret.” (Newmeyer, p. 61).
To counter Dr. Newmeyer’s testimony, applicant took the
testimony of James Nelems, founder of a marketing, survey
and opinion research firm. Applicant retained Mr. Nelems as
a marketing expert, and Mr. Nelems testified that
applicant’s mark is a “suggestive” mark because “[I]t
suggests what the category is, but it doesn’t necessarily
automatically bring to mind what the product or service is.”
(Nelems dep., p. 13). Mr. Nelems was asked about one of
applicant’s promotional brochures, and he testified that if
a person read the entire document, “I think they know that
Opposition No. 91155885
16
‘we put people to work’ applies to [applicant].” (Nelems
dep., p. 52). He went on to say that “if a person reads the
entire document, they should have a good idea of what
[applicant] does.” When asked if the phrase “we put people
to work” as used by applicant identifies what applicant
does, Mr. Nelems responded, “Well, I think, again, if you
read the entire document, the ‘we put people to work’ makes
sense, and I think maybe that is a summary way of saying in
a few words the things that [applicant] does.” (Nelems
dep., pp. 52-53).
Opposer must prove its claim of mere descriptiveness by
a preponderance of the evidence. We do not view each
deposition or each item of evidence in isolation; rather, we
have looked at the evidence as a whole, as if each piece of
the record were part of a puzzle which, when fitted
together, establishes that the involved mark is merely
descriptive. Thus, the dictionary definitions, applicant’s
own descriptive uses, competitors’ and other third-party
descriptive uses, and the views of a linguistic expert, when
considered as an evidentiary whole, demonstrate by a
preponderance of the evidence that the phrase WE PUT PEOPLE
TO WORK for “temporary and permanent employment agency and
staffing services” is merely descriptive thereof. Although
applicant vigorously defends the inherent distinctiveness of
its phrase and maintains that the words are not
Opposition No. 91155885
17
“automatically linked in the ordinary human experience” to
its services, applicant does concede that the phrase “may
provoke some intrinsic association with making work
opportunities available.” (Brief, p. 17).
Applicant places individuals seeking employment into
employment positions. Applicant simply has combined
ordinary words to create a unitary phrase that is merely
descriptive of applicant’s services. We conclude that the
phrase WE PUT PEOPLE TO WORK, as encountered by those
individuals seeking employment, directly conveys a
significant feature or purpose of applicant’s services:
applicant succeeds in finding employment for individuals,
that is, it puts people to work. No multistage reasoning or
any thought, imagination, or perception is necessary to
understand this feature of applicant’s services.
Decision: The opposition is sustained, and
registration to applicant is refused.