M. Rose Jonas

Trademark Trial and Appeal Board

May 29, 2003

No. 76047277 (T.T.A.B. May. 29, 2003)

Hearing: Paper No.14
March 18, 2003 RFC
Mailed: 5/29/03
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re M. Rose Jonas
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Serial No. 76/047,277
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Jeffrey L. Michelman of Blumfeld, Kaplan & Sandweiss, P.C.
for M. Rose Jonas.
Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On May 12, 2000, applicant filed the above-identified
application to register the mark “JOB DOCTOR” on the
Principal Register for “educational services, namely
workshops, seminars, and lectures in the field of career
counseling and distribution of course materials in
connection therewith in International Class 41; and career
counseling services in International Class 42.” Applicant
claimed first use of the mark in connection with both
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/047277
2
services on September 17, 1991, and first use of the mark
in interstate commerce on January 20, 1992.
In the first Office Action, the Examining Attorney
refused registration under Section 2(d) of the Lanham Act,
15 U.S.C. Section 1052(d), on the ground that applicant’s
mark so resembles the mark “THE JOB DR.” which is
registered,1 (with a disclaimer of the descriptive word
“JOB”) for “personnel placement and recruitment services in
the field of computers and computer software” in
International Class 35, that confusion is likely. He
reasoned that the marks are essentially the same in
appearance, pronunciation and connotation, and that the
services identified in the cited registration are closely
related to those recited in the application.
In addition to refusing registration under Section
2(d) of the Act, the Examining Attorney required applicant
to disclaim the descriptive word “job” apart from the mark
as shown.
Applicant timely responded to the first Office Action
by amending the application to disclaim the word “job”
apart from the mark as shown and by arguing that confusion
with the cited registered mark is not likely. Applicant
1 Reg. No. 2,205,772, issued on the Principal Register on
November 24, 1998 to Roger T. Howland.
Ser No. 76/047277
3
contended that the registered mark is not a strong mark;
that no actual confusion between the marks has occurred;
that she adopted her mark in good faith; and that, although
the marks are “somewhat similar,” differences between the
services and channels of trade through which they are
marketed mandate withdrawal of the refusal to register.
The Examining Attorney accepted the proffered
disclaimer, but maintained and made final the refusal to
register based on likelihood of confusion. He responded to
each of applicant’s arguments, and included copies of five
third-party registrations which listed as the services with
which the marks are used both “personnel placement
services” and “career counseling services.” He argued that
this evidence shows that customers have reason to expect
such services to emanate from a single source.
Applicant timely filed a Notice of Appeal. Next
applicant filed a brief on appeal, attached to which were
exhibits not previously made of record. The Examining
Attorney filed his appeal brief, including an objection to
the new evidence submitted with applicant’s brief. Both
counsel for applicant and the Examining Attorney presented
their arguments at the oral hearing which applicant
requested. At that hearing, applicant withdrew the
Ser No. 76/047277
4
untimely-filed evidence to which the Examining Attorney had
objected.
The sole issue before the Board in this appeal is
whether confusion is likely between applicant’s mark, “JOB
DOCTOR,” as used in connection with, inter alia, career
counseling services and educational services in the field
of career counseling, and the registered mark “THE JOB DR.”
for, among other things, personnel placement and
recruitment services in the computer field. Based on
careful consideration of the record before us in this
appeal, the arguments presented by applicant and the
Examining Attorney and the relevant legal precedents, we
hold that confusion is likely and therefore that the
refusal to register under Section 2(d) of the Lanham Act
must be affirmed.
The test for determining whether confusion is likely
is well settled. First, we must evaluate the marks
themselves for similarities in appearance, sound,
connotation and commercial impression. In re E. I. duPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Then, we must compare the services to determine if they are
related or if the activities surrounding their marketing
are such that the use of similar marks in connection with
Ser No. 76/047277
5
them is likely to cause confusion. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Regarding the marks, the test for confusion is not
whether the marks can be distinguished when subjected to
side-by side comparison. As the Examining Attorney points
out, the issue is whether the marks create similar overall
commercial impressions. Visual Information Institute, Inc.
v. Vicon Industries, Inc., 209 USPQ 179 (TTAB 1980). The
emphasis is on the recollection of the average purchaser,
who normally retains a general, rather than specific,
impression of trademarks. Chemtron Corp. v. Morris
Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979).
We agree with the Examining Attorney that the mark
applicant seeks to register creates a commercial impression
which is almost indistinguishable from the commercial
impression created by the cited registered mark. These two
marks look alike, they sound alike when they are spoken and
their suggestive connotations are the same when they are
considered in connection with the services recited in the
application and the cited registration, respectively. The
first prong of the test for likelihood of confusion is
clearly met: in terms of commercial impression, these
marks are almost identical.
Ser No. 76/047277
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Turning to consideration of the services, then, we
note that when the marks of the respective parties are
identical or highly similar, as in this case, the
relationship between the services of the respective parties
does not need to be as close to support a finding of
likelihood of confusion as it would be if the marks were
different. Amcor, Inc. v. Amcor Industries Inc., 210 USPQ
70 (TTAB 1981). It is significant that our determination
of whether the services of applicant and the owner of the
cited registration are so closely related that confusion is
likely must be made based upon the specific ways that the
services are identified in the application and in the cited
registration, respectively, without limitations or
restrictions that are not reflected therein. Octocom
Systems, Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1982).
We find that the record supports the conclusion that
both classes of services set forth in the application are
closely related to those specified in the cited
registration. As the third-party registrations made of
record by the Examining Attorney demonstrate, purchasers of
career counseling services and personnel placement services
have a basis upon which to expect that the use of the same
or similar marks in connection with such services indicates
Ser No. 76/047277
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that they emanate from a single source. In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Applicant argued in its brief and at the oral hearing
that the essence of its services is education, rather than
recruitment of potential employees, but we note that
applicant’s educational services are in the nature of
workshops, seminars and lectures in the field of career
counseling and that the application also specifically
identifies applicant’s services in International Class 42
as “career counseling services.” The third-party
registrations demonstrate that other businesses and I have
registered their marks for personnel placement services and
for career counseling services. Likewise, educational
services in the field of career counseling are related to
career counseling itself, as well as to personnel placement
services. All of these services are related to finding
employment. The use of these very similar marks in
connection with these closely related services is plainly
likely to cause confusion, mistake or deception within the
meaning of Section 2(d) of the Lanham Act.
Applicant contends that confusion is not likely
because the services set forth in the cited registration
are restricted to the field of computers and computer
software, but this argument is unavailing because
Ser No. 76/047277
8
applicant’s services, identified in the application as
simply “career counseling services” and “educational
services, namely workshops, seminars, and lectures in the
field of career counseling and distribution of course
materials in connection therewith,” without restriction or
limitation as to the field of commerce, encompass career
counseling services in the field of computers and computer
software and educational services which are specifically
related to computers and computer software.
Applicant’s argument concerning differences between
career counseling services and personnel placement and
recruitment services is not persuasive of a different
conclusion on the issue of likelihood of confusion. As the
Examining Attorney points out, the fact that the services
set forth in the application may differ from the services
recited in the cited registration is not controlling. The
issue is not whether the services themselves would be
confused, but rather whether the use of similar marks in
connection with them is likely to lead to confusion as to
the source of the services. In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
Applicant argues that it is unaware of any incidents
of actual infusion, but it is unnecessary to show actual
confusion in order to establish that confusion is likely.
Ser No. 76/047277
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Weiss Associates, Inc. v. HRL Associates Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990). Without information
as to the nature and extent of the uses by applicant and
registrant of their respective marks establishing that
there has been opportunity for confusion actually to have
arisen, the fact that applicant is not aware of any
incidents of actual confusion hardly establishes that
confusion is unlikely.
Additionally, applicant argues that confusion is not
likely because purchasers of the services it renders under
its mark and purchasers of the services recited in the
cited registration are sophisticated and knowledgeable with
regard to these services. It is well settled, however,
that purchasers who are sophisticated and knowledgeable in
particular fields are not necessarily sophisticated or
knowledgeable in the field of trademarks, nor are they
immune from source confusion caused by the use of similar
marks in connection with related products or services. In
re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Moreover, because there are no limitations or
restrictions specified in the application with regard to
the services applicant renders under its mark, we must
presume that these services encompass all of the services
of the type identified; that they move in all the normal
Ser No. 76/047277
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channels of trade for such services; and that they are
available to all potential customers for them.
Accordingly, any consumer, including one of the potential
customers for registrant’s personnel placement and
recruitment services in the computer field, could be in the
market for applicant’s career counseling services rendered
under the mark sought to be registered, or, for that
matter, could also be interested in educational services
related to career counseling. Such a person, if he were
familiar with the use of the registered mark in connection
with personnel placement and recruitment services in the
computer field, would be likely, upon encountering
virtually the same mark used in connection with all of
these related services, to assume that a single entity
provides them all.
Applicant’s argument regarding her good faith adoption
of her mark is similarly unavailing. That she did not
intend to cause confusion by adopting a similar mark in
connection with closely related services does not justify
registration in spite of the likelihood of confusion. See
Hydra Mac, Inc. v. Mack Trucks, Inc., 507 F.2d 1399, 184
USPQ 351 (CCPA 1975).
DECISION: The refusal to register under Section 2(d)
of the Lanham Act is affirmed.