Social Work P.R.N.

Trademark Trial and Appeal Board

Oct 10, 2002

No. 76264699 (T.T.A.B. Oct. 10, 2002)

Mailed: October 10, 2002
Paper No. 10
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Social Work P.R.N.
___________
Serial No. 76/264,699
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Wm. Bruce Day of Swanson Midgley for Social Work P.R.N.
Doritt Carroll, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
____________
Before Quinn, Hohein, and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Social Work P.R.N., a corporation of Kansas, has filed
an application to register the mark SOCIAL WORK P.R.N. on
the Principal Register for “temporary employment agency in
the field of social work.”1 The application includes a
disclaimer of “social work” apart from the mark as a whole.

1 Serial No. 76/264,699, in International Class 35, filed May 31, 2001,
based on use in commerce, alleging first use and use in commerce as of
August 24, 1992.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76/264,699
2
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the marks NURSES PRN2 and PRN,3 previously
registered for “temporary nursing services,” in
International Class 42, that, if used on or in connection
with applicant’s goods, it would be likely to cause
confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
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 likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the

2 Registration No. 1,591,419 issued April 10, 1990, to PRN Health
Services, Inc. The registration includes a disclaimer of “nurses” apart
from the mark as a whole. The registration states that the registrant
is also the owner of Registration No. 1,242,392, although the owner’s
name on the cited registration is only slightly different from this
owner’s name. It is likely that the same party owns both registrations.
[Sections 8 and 15 declarations accepted and acknowledged, respectively,
and renewed for a ten-year period from April 10, 2000.]
3 Registration No. 1,242,392 issued June 14, 1983, to PRN, Inc.
[Sections 8 and 15 declarations accepted and acknowledged,
respectively.]
Serial No. 76/264,699
3
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and
the cases cited therein.
The Examining Attorney contends that the dominant
portion of applicant’s mark is PRN, which is one of the
registered marks in its entirety, and, she contends, the
dominant portion of the other registered mark. The
Examining Attorney argues that PRN has the same connotation
in applicant’s mark and the registered marks, noting that
applicant stated that PRN means “as needed”4; and that PRN
is a strong mark in the field of employment referral
services. Finally, the Examining Attorney contends that the
services are related because both applicant and
registrant(s) “provide temporary placement of health
professionals.”
Applicant contends that each of these marks is weak and
entitled to only a narrow scope of protection; that
applicant’s mark was registered until applicant failed to
file a Section 8 affidavit and these registrations

4 We take judicial notice of the following definitions of the term
“prn”: “abbr. Latin. pro re nata (as the situation demands; as needed)”
[The American Heritage Dictionary of the English Language, 4th ed.
2000]; and “abbreviation meaning ‘when necessary’ (from the Latin ‘pro
re nata,’ for an occasion that has arisen, as circumstances require, as
needed). One of a number of hallowed abbreviations of Latin terms that
have traditionally been used in prescriptions” [MedicineNet.com,
www.medterms.com, October 3, 2002].
Serial No. 76/264,699
4
coexisted; that applicant’s services are not in the “medical
field”; that nursing and social work are entirely different
professions; and that the marks create different commercial
impressions.
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. 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
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Serial No. 76/264,699
5
In the first instance, applicant incorporates into its
mark the registered mark, “PRN,” in its entirety. In the
second instance, applicant uses the same format as the
registered mark, “NURSES PRN,” by placing a noun indicating
a profession before the term “PRN.” The marks differ to the
extent that the cited registration refers to the actual
professionals, i.e., “nurses,” whereas applicant’s mark
refers to the field, i.e., “social work.” Despite this
slight difference, we agree with the Examining Attorney that
applicant’s mark is significantly similar to both of the
cited marks.
As applicant states, and as the judicially noted
references indicate, “p.r.n.” is an acronym meaning “as
needed.” Clearly, this term is highly suggestive of
temporary employment services, i.e., personnel are provided
on an “as needed” basis. Each of the marks involved herein
is extremely weak because it involves the term “PRN” alone
or in combination with a merely descriptive term, i.e.,
“NURSES PRN,” and “SOCIAL WORK P.R.N.” While it is clear
that even suggestive and weak marks are entitled to
protection, the scope of protection is limited.
Thus, we consider the services involved in this case,
and we note that the question of likelihood of confusion
must be determined based on an analysis of the goods or
services recited in applicant’s application vis-à-vis the
Serial No. 76/264,699
6
goods or services recited in the registrations. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). The
Examining Attorney has submitted no evidence regarding the
respective services involved herein. She merely concludes
that both nurses and social workers are health
professionals. Not only is this allegation not supported by
any evidence in the record, but also there is no evidence
that it is common for the same temporary employment agencies
to furnish both social workers and nurses to hospitals,
nursing homes, individuals needing in-home services, or
other facilities needing these temporary personnel.
Therefore, we cannot conclude that the recited services are
sufficiently related or similar such that, if identified by
substantially similar marks, the relevant purchasers would
mistakenly belief that they emanate from the same or related
source.
Therefore, we conclude that in view of the weak and
highly suggestive nature of applicant’s mark, “SOCIAL WORK
P.R.N.,” and the cited marks, “PRN” and NURSES PRN,” and the
differences in the respective services in this case,
Serial No. 76/264,699
7
confusion as to the source or sponsorship of such services
has not been established.
Decision: The refusal under Section 2(d) of the Act is
reversed.