Temps & Co., Inc.

Trademark Trial and Appeal Board

Nov 29, 2000

No. 75321952 (T.T.A.B. Nov. 29, 2000)

Paper No. 15
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE 11/29/00
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Trademark Trial and Appeal Board
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In re Temps & Co., Inc.
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Serial No. 75/321,952
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Janice W. Housey and Adam D. Resnick of Piper Marbury Rudnick &
Wolfe LLP., for Temps & Co., Inc.
Matthew J. Pappas, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
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Before Cissel, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
On July 10, 1997, applicant applied to register the mark
“FUTURES: THE 21ST CENTURY JOB STORE” (with the word “JOB”
disclaimed) on the Principal Register for “personnel placement
services” in International Class 35. The basis for filing the
application was applicant's assertion that it possessed a bona
fide intention to use the mark in commerce in connection with
these services.
Registration was refused under Section 2(d) of the Lanham
Act because the Trademark Examining Attorney determined that
applicant's mark, if it were used in connection with the
services recited in the application, would so resemble the mark
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/321,952
2
“JOB STORE” (with the word “JOB” disclaimed) which is registered1
for “employment and job placement services,” that confusion
would be likely.
Applicant presented arguments in support of its contention
that confusion with the mark in the cited registration is not
likely. In support of its arguments, applicant argued from
Internet excerpts that the term “JOB STORE” is diluted and hence
relatively weak as applied to job-related services. Applicant
also argues that it is committed to the temporary job market,
while registrant’s services are directed toward storing online
employee resumes of Coloradans looking for permanent jobs.
Finally, applicant points out the dissimilarity of the marks as
to appearance, sound and overall commercial impression.
The Examining Attorney was not persuaded by applicant's
argument or evidence, and made final the refusal to register
under Section 2(d) of the Act.
The Trademark Examining Attorney denied applicant’s request
for reconsideration, and applicant timely filed a notice of
appeal, which was timely followed with an appeal brief. The
Examining Attorney then filed his brief on appeal, and applicant

1 Registration No. 1,213,413, was issued on the Principal Register on
October 19, 1982 to Alan Grandbois, d.b.a. The Job Store; combined
affidavit under Sections 8 and 15 of the Act filed and accepted.
Serial No. 75/321,952
3
requested an oral hearing before the Board, which was held on
May 24, 2000.
We turn then to the issue of whether confusion is likely in
view of the cited registered mark. In the course of rendering
this decision, we have followed the guidance of In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563,
567-68 (CCPA 1973), which sets forth the factors that should be
considered, if relevant, in determining likelihood of confusion.
In the case at hand, the factors about which we have evidence
are the similarity of the trademarks and the relationship
between the services of the applicant and the registrant.
We first turn to consider the services. Applicant argues
in its brief as follows:
… Applicant submits that the respective services are
not so similar such that there would be confusion
between the prior registered mark and its mark.
Specifically, Registrant’s services focus on finding
jobs in Colorado. Applicant’s services are of a
different nature. Specifically, Applicant’s services
focus on regular job placement services -- resume
writing assistance, and sending applicants to
interviews with prospective employers, particularly as
these services apply to the temporary employment
market, so-called “temp jobs.” Hence, Applicant’s
name is “Temps & Co.” which reflects this commitment
to the temporary help job market.
Registrant’s services appear to be focused on the
“storing” of job information online for potential
employees in Colorado. These potential employees can
apply for jobs in the bank of jobs “stored” online.
Meanwhile, Applicant’s services revolve around the
more traditional placement of employees through a
“store” of potential employees who can “shop” around
for their dream job. In other words, Applicant’s
“store” is specifically designed for consumers to shop
Serial No. 75/321,952
4
around until they are comfortable with a job and its
working environment. [Applicant’s brief on appeal,
pp. 10–11].
However, it is well settled that the issue of likelihood of
confusion between applied-for and registered marks must be
determined on the basis of the services as they are identified
in the involved application and cited registration, rather than
on what any evidence may show as to the actual nature of the
services, their channels of trade and/or classes of purchasers.
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re Elbaum, 211 USPQ
639 (TTAB 1981). Thus, we agree with the Trademark Examining
Attorney that applicant’s “personnel placement services” would
be encompassed within registrant’s recitation of “employment and
job placement services,” and hence are deemed to be identical.
We now turn to a consideration of the parties’ respective
marks, keeping in mind as well that “when marks would appear on
virtually identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Registrant has a registration on the Principal Register for
the mark “JOB STORE” for “employment and job placement
services.” In adopting its mark for substantially identical
services (“personnel placement services”), applicant has taken
Serial No. 75/321,952
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registrant’s mark in its entirety, and added “FUTURES: THE 21ST
CENTURY …” in front of the words “… JOB STORE.”
While there are obvious differences between applicant’s
mark and registrant’s mark as to sound and appearance, we
conclude that the marks are similar in overall commercial
impression. Registrant’s entire mark is the designation “JOB
STORE.” Applicant's mark contains registrant’s mark in its
entirety. Reasonable people may differ as to what the dominant
portion of applicant’s mark is, or indeed, whether this six-word
phrase even has a dominant element. However, although applicant
argues that “FUTURES: THE 21ST CENTURY …” is the dominant
portion of this composite service mark, we agree with the
Trademark Examining Attorney that this dependent portion of the
mark cannot stand by itself. At oral hearing, applicant argued
that consumers may well shorten this phrase to simply “FUTURES”
while the Trademark Examining Attorney argued that they would
likely shorten it to “JOB STORE.” As a registered trademark,
the designation, “JOB STORE,” stands conceptually as the
dominant part of applicant’s title. The term “JOB STORE” is at
least as dominant as the word “FUTURES” inasmuch as the words
“THE 21ST CENTURY” follow the colon and serve as a modifier of
“JOB STORE.” We think it particularly significant, in this
case, that someone acquainted with registrant’s services and
mark may well view applicant’s mark as a modernization or timely
Serial No. 75/321,952
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updating of registrant’s mark. Applicant, as the latecomer to
job-related services, had the duty to select a mark far enough
removed from registrant’s previously used mark to avoid any
confusion. See e.g., Miles Laboratories, Inc. v. Naturally
Supplements, Inc., 1 USPQ 2d 1445, 1455 (TTAB 1986).
Moreover, as to applicant’s claim that this term “JOB
STORE” is diluted and weak in this field, we note that the
evidence of record does not support the conclusion that third
parties have adopted, used or registered this two-word
designation apart from other potentially distinguishing matter.
Again, we see no reason not to accord the cited, incontestable
registration the weight such a mark deserves under the statute.
Decision: The refusal to register under Section 2(d) of
the Act is affirmed.
R. F. Cissel
D. E. Bucher
G. F. Rogers
Administrative Trademark Judges,
Trademark Trial and Appeal Board