TLC Services Group, Inc.

Trademark Trial and Appeal Board

Mar 9, 2006

No. 78361704 (T.T.A.B. Mar. 9, 2006)

Mailed:
9 March 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re TLC Services Group, Inc.
________

Serial No. 78361704
_______

Marvin Gelfand of Gelfand, Rappaport & Glaser LLP for TLC
Services Group, Inc.

Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Hohein, Drost, and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On February 3, 2004, applicant TLC Services Group,
Inc. applied to register the mark TLC LOGISTICS MANAGEMENT
(in standard character form) on the Principal Register for
services in Class 35 identified as:
Business consulting services relating to product
distribution, operations management services,
logistics, reverse logistics, supply chain, production
systems and distribution solutions; and employment
counseling and recruiting services, including
providing temporary and permanent staff.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 78361704
2
The application (Serial No. 78361704) is based on
applicant’s allegation of a bona fide intention to use the
mark in commerce.
The examining attorney has refused to register
applicant’s mark on two grounds. First, the examining
attorney held that applicant’s mark is not registrable
under the provisions of Section 2(d) of the Trademark Act
because it is likely to cause confusion, to cause mistake,
or to deceive with respect to the mark TLC STAFFING (in
standard character form), which is registered for
“employment agency, namely, providing temporary personnel
for others in the professional, administrative and
technical fields” in Class 35.1 15 U.S.C. § 1052(d). The
registration contains a disclaimer of the term “Staffing.”
Second, the examining attorney also refused to
register applicant’s mark under the provisions of Section
2(e)(1) of the Trademark Act because the examining attorney
found that the term TLC LOGISTICS MANAGEMENT was merely
descriptive of applicant’s services. 15 U.S.C.
§ 1052(e)(1).
After the examining attorney made the refusals to
register final, this appeal followed.

1 Registration No. 2,049,095 issued April 1, 1997, and affidavits
under Sections 8 and 15 were accepted and acknowledged.
Ser. No. 78361704
3
Preliminary Matters
Before we address the refusals on the merits, we need
to first resolve some preliminary disputes. With its
appeal brief, applicant submitted “copies of several U.S.
Trademark Registrations and Applications from the TARR
database”2 (Brief at 7) and a definition from the Merriam-
Webster Online Dictionary (Brief at 13). The examining
attorney objects “to the applicant’s inclusion of any
additional evidence with the brief… Furthermore, to make
registrations and other similar matter proper evidence of
record, soft copies of the registrations or the complete
electronic equivalent must be submitted before the
applicant files an appeal.” Brief a 2-3. In response to
the examining attorney’s objections, applicant asks that
the board take judicial notice of this evidence or “to
remand the application for further examination.” Reply
Brief at 1.
By rule, the “record in the application should be
complete prior to the filing of an appeal,” (37 CFR
§ 2.142(d)) and the board does “not take judicial notice of
registrations that reside in the Patent Office.” In re

2 TARR is the USPTO’s Trademark Application and Registration
Retrieval system, available at http://tarr.uspto.gov and may be
used to obtain information about, and the status of, particular
registrations or applications.
Ser. No. 78361704
4
Doufold Inc., 184 USPQ 638, 640 (TTAB 1974). See also In re
First Draft Inc., 76 USPQ2d 1183, 1192 (TTAB 2005)
(“Submission of the TARR printout with its appeal brief,
however, is an untimely submission of this evidence”).
Therefore, we will not consider applicant’s printouts
submitted on appeal.3 Furthermore, we do not normally take
judicial notice of online dictionaries that are submitted
for the first time on appeal. In re Total Quality Group,
Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). Therefore, we
sustain the examining attorney’s objection to this
evidence. However, we do take judicial notice of the
following dictionary definition of “logistics” that is very
similar to applicant’s online dictionary definition.
1. The branch of military science and operations
dealing with procurement, supply, and maintenance
of equipment with the movement, evacuation, and
hospitalization of personnel, with the provision of
facilities and services, and with related matters.

2. The planning, implementation, and coordination of
the details of a business or other operation.

3 While we have sustained the examining attorney’s objection to
this evidence, we add that, if the complete printouts from the
Office’s TARR database had been properly submitted, they would
have constituted “copies of the actual registrations or the
electronic equivalents therefore, i.e., printouts of the
registrations which have been taken from the USPTO's own
computerized database.” In re JT Tobacconists, 59 USPQ2d 1080,
1081 n.2 (TTAB 2001).
Ser. No. 78361704
5
The Random House Dictionary of the English Language
(unabridged) (2d ed. 1987).4
Applicant’s request, in the alternative, for a remand
to consider this additional evidence is also denied. An
applicant seeking a remand must support such a request for
remand with a showing of good cause. TBMP § 1209.04 (2d.
ed. rev. 2004). Applicant has not explained why such a
showing could not have been submitted earlier. “Moreover,
creation of the record to be considered in an ex parte
appeal must, at some point, be concluded. Accordingly, we
have not considered the evidence submitted with the reply
brief and deny the alternative request for remand so that
the Examining Attorney can consider this evidence.” In re
Zanova Inc., 59 USPQ2d 1300, 1302-03 (TTAB 2001).
Descriptiveness
We now consider the issue of whether the mark TLC
LOGISTICS MANAGEMENT is merely descriptive. Applicant has
disclaimed the term “Logistics Management” in response to
the examining attorney’s descriptiveness refusal. That
disclaimer is consistent with the disclaimers in other
registrations. See No. 1,617,849 (LOGICORP LOGISTICS

4 We can take judicial notice of dictionary definitions in
printed dictionaries. University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 78361704
6
MANAGEMENT, “Logistics Management” disclaimed) and No.
2,095,962 (FIRST ALLIANCE LOGISTICS MANAGEMENT, “Logistics
Management” disclaimed). Our case law recognizes that
registrations can be used as a form of a dictionary
definition to illustrate how a term is perceived in the
trade or industry. In re J.M. Originals Inc., 6 USPQ2d
1393, 1394 (TTAB 1987).
The examining attorney also included an entry from
www.acronymfinder.com that listed among several meanings of
the acronym TLC, the following: “total logistics control.”
The examining attorney also submitted a registration (No.
1,398,883) for the mark TLC TOTAL LOGISTIC CONTROL and
design for “commercial warehousing services and the
transportation of goods of commercial concerns” in Class
39. The registration is on the Principal Register with the
words “Total Logistic Control” disclaimed.
Based on this evidence, the examining attorney argues
(Brief at 9-10) that:
[T]he acronym, “TLC” means “total logistic control”
and “total logistic control” has been previously
disclaimed in U.S. Registration No. 1,398,883. In
addition, as provided by the dictionary definitions
and prior registrations attached with the Examining
Attorney’s initial refusal, “LOGISTICS MANAGEMENT” is
also merely descriptive… As each component in the
applicant’s mark retains its descriptive significance
in relation to the recited services, the combination
results in a composite that is itself descriptive.

Ser. No. 78361704
7
Applicant, on the other hand, argues that “‘TLC’ in
Applicant’s mark is not an acronym for ‘total logistic
control’ but for its name ‘TLC Services Group, Inc.’ and
its subsidiary, Translabor Leasing Corp.” Reply Brief at
8-9.5 Applicant also argues that the “first compound term
thought of with ‘TLC’ is ‘tender loving care.’” Brief at
11.
A “mark is merely descriptive if the ultimate
consumers immediately associate it with a quality or
characteristic of the product or service.” In re MBNA
America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003); In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217 (CCPA 1978).
In this case, we are struck by the fact that the only
evidence that supports the examining attorney’s argument
that the abbreviation TLC is merely descriptive is an entry
in an acronym finder and a single registration on the
Principal Register in which the wording “Total Logistic
Control” is disclaimed, but the abbreviation TLC is not

5 Inasmuch as it is untimely, we have not considered applicant’s
and registrant’s literature that was submitted for the first time
with applicant’s Reply Brief. 37 CFR § 2.142(d); Zanova, 59
USPQ2d at 1302-03.
Ser. No. 78361704
8
disclaimed.6 We take judicial notice that the term TLC is
defined in the dictionary as an abbreviation of the term
“Tender Loving Care.” Webster’s Third New International
Dictionary (1993). While there is some evidence that the
term “Total Logistic Control” may be descriptive of the
identified services, there is little evidence that the
letters TLC are descriptive. The Court of Customs and
Patent Appeals, one of the predecessors of our principal
reviewing court, has discussed the question of whether
letters that correspond to the initial letters of a
descriptive combination of words are similarly descriptive.
Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110
USPQ 293, 295 (CCPA 1956) (citations omitted):
The letters “CV” are, of course, the initial letters
of the words “continuous vision,” and it is possible
for initial letters to become so associated with
descriptive words as to become descriptive themselves.
It does not follow, however, that all initials or
combinations of descriptive words are ipso facto
unregistrable. While each case must be determined on
the basis of the particular facts involved, it would
seem that, as a general rule, initials cannot be
considered descriptive unless they have become so
generally understood as representing descriptive words
as to be accepted as substantially synonymous
therewith.

6 Because the term TLC is also part of the design, it is possible
that there was no requirement for a disclaimer of the term
because it was considered unitary. However, it is also possible
that the term was not considered to be merely descriptive.
Ser. No. 78361704
9
In this case, the evidence, consisting primarily of a
single entry in an acronym finder, falls well below the
minimum required to show that the letters TLC are generally
understood as representing the allegedly descriptive words
“Total Logistic Control.” We have little, if any, basis to
conclude that this abbreviation is recognized by any
prospective purchasers as an abbreviation of the underlying
term. Therefore, we reverse the examining attorney’s
refusal to register the mark TLC LOGISTICS MANAGEMENT on
the ground that it is merely descriptive.7
Likelihood of Confusion
We do, however, affirm the examining attorney’s
refusal to register on the ground that applicant’s mark is
likely to cause confusion with the cited registration. In
likelihood of confusion cases, we look to the factors set
out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003) to determine whether
there is a likelihood of confusion. See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind

7 We again note that applicant has already disclaimed the words
“Logistics Management.”
Ser. No. 78361704
10
that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
An important factor in these types of cases is a
comparison of the similarities and dissimilarities of the
respective marks. Here, the marks at issue are TLC
LOGISTICS MANAGEMENT and TLC STAFFING. Applicant has
disclaimed the words “Logistics Management” and registrant
has disclaimed the term “Staffing.” The evidence shows
that the term “Logistics Management” is descriptive and it
is less likely that this term, as well as registrant’s
disclaimed term “Staffing,” would be relied upon by
prospective purchasers to distinguish the marks.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)
(“Regarding descriptive terms, this court has noted that
the ‘descriptive component of a mark may be given little
weight in reaching a conclusion on the likelihood of
confusion’”). See also In re Code Consultants Inc., 60
USPQ2d 1699, 1702 (TTAB 2001) (Disclaimed matter is often
“less significant in creating the mark’s commercial
Ser. No. 78361704
11
impression”). While we do not disregard these terms, we
cannot conclude that prospective purchasers of these
services are likely to assume that the sources of these
services are not related simply because of the presence of
these terms in the respective marks.
While we must compare the marks in their entireties,
“there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests
on consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” National
Data, 224 USPQ at 751. Obviously, the non-disclaimed
portion of both marks is the identical term TLC. While the
examining attorney noted that this term may be an acronym
for “Total Logistic Control,” the letters are also defined
as an abbreviation for “Tender Loving Care,”8 which may
suggest some laudatory connotation when used in association
with the respective services. This term is likely to be
the dominant portion of both marks to the extent that it is
not descriptive.

8 In either case, we do not find that the letters here are
“arbitrarily arranged letters” that are “more difficult to
remember.” Examining Attorney’s Brief at 5.
Ser. No. 78361704
12
When we consider the marks, TLC LOGISTICS MANAGEMENT
and TLC STAFFING, in their entireties, we conclude that
they are similar in sound, appearance, meaning, and
commercial impression. The marks are similar to the extent
that the initial part of the mark is identical and,
therefore, they would look and sound similar and the
addition of the descriptive matter would not result in
dissimilar marks. Plantronics Inc. v. Starcom Inc., 213
USPQ 699, 702 (TTAB 1982) (“Accepting that the marks have
differences in sound and appearance, they are identical in
respect of their dominant features i.e. the prefix "STAR".
Similarity of dominant features must be accorded greatest
weight”). Furthermore, we cannot agree with applicant that
the marks would have different meanings and their
commercial impressions would be different. The descriptive
portion of applicant’s and registrant’s marks, LOGISTICS
MANAGEMENT and STAFFING, simply describes similar services
that are available from the applicant and registrant. Both
marks are likely to have similar meanings regardless of
whether the meaning of TLC is “Tender Loving Care” or
“Total Logistic Control” and the marks would have similar
commercial impressions. While customers may notice the
different descriptive wording at the end of each of the
Ser. No. 78361704
13
marks, they are not likely to assume that such wording
indicates that the sources of the services are different.
These customers are instead likely simply to assume that
registrant offers related services under a slightly
different mark.
Next, we address whether applicant’s and registrant’s
services are related. Applicant’s services are:
Business consulting services relating to product
distribution, operations management services,
logistics, reverse logistics, supply chain, production
systems and distribution solutions; and employment
counseling and recruiting services, including
providing temporary and permanent staff.

Registrant’s services are “employment agency, namely,
providing temporary personnel for others in the
professional, administrative and technical fields.” The
examining attorney argues (Brief at 7, emphasis omitted)
that:
[W]hile applicant provides “employment counseling and
recruiting services, including providing temporary and
permanent staff,” the registrant also provides
“temporary personnel for others in the professional,
administrative and technical fields.” As such, both
parties provide temporary staffing solutions. In
addition, individuals with professional,
administrative and technical backgrounds can
conceivably work, at least temporarily, in the product
distribution and logistics management industries.

Applicant responds by arguing (Reply Brief at 6,
emphasis omitted) that:
Ser. No. 78361704
14
The applicant does not only provide “employment
counseling and recruiting services, including
providing temporary and permanent staff,” but
“business consulting services relating to product
distribution, operating management services,
logistics, reverse logistics, supply chain, production
systems and distribution solutions; and employment
counseling and recruiting services, including
providing temporary and permanent staff.” As such,
the services are defined not only as an employment
agency, but a business consulting service relating to
product distribution, operating management services,
logistics, reverse logistics, supply chain, production
systems and distribution solutions.

We must consider the services as they are set out in
the identification of services in the application and
registration. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on
the basis of the identification of goods [or services] set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods
[or services], the particular channels of trade or the
class of purchasers to which the sales of goods [or
services] are directed”). See also Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
descriptions of goods” or services).
Ser. No. 78361704
15
Applicant’s services include employment counseling and
recruiting services, including providing temporary and
permanent staff. Registrant’s employment agency services
provide temporary personnel for others in the professional,
administrative and technical fields. Both applicant and
registrant’s services include providing temporary staffing
and, therefore, we must conclude that they are in part
identical. We add that applicant does not limit its
employment agency services to any particular field so we
must assume that applicant’s employment agency services are
provided in the professional, administrative and technical
fields. Regardless of how applicant is actually using its
mark, we do not read limitations into the application or
registration. Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983). We also add that we
compare the individual services set out in applicant’s
identification of services to determine if there is a
likelihood of confusion. Therefore, the fact that
applicant also seeks registration of its mark for “business
consulting services” does not limit its “employment
counseling and recruiting services.” Each separate service
is considered individually and a refusal is proper if any
service in the application is related to a service in the
Ser. No. 78361704
16
cited registration.9 Therefore, we must conclude that the
services overlap. The services are also closely related to
the extent that applicant is also providing permanent
staffing services and registrant is providing temporary
staffing services.
We add at this point that when services are identical,
marks do not need to be as similar to support a conclusion
that there is a likelihood of confusion. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992) (“When marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines”). Furthermore, when goods or services
are identical, we must assume that the prospective
purchasers and channels of trade are the same. Genesco
Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the
in-part identical and in-part related nature of the
parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold

9 “[L]ikelihood of confusion must be found if the public, being
familiar with appellee's use of MONOPOLY for board games and
seeing the mark on any item that comes within the description of
goods set forth by appellant in its application, is likely to
believe that appellee has expanded its use of the mark, directly
or under a license, for such item.” Tuxedo Monopoly Inc. v.
General Mills Fun, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Ser. No. 78361704
17
to the same classes of purchasers through the same channels
of trade”); 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”).
Applicant also argues that the “marks are weak and
entitled to a narrow scope of protection.” Brief at 7.
While we do not find that the marks are weak, even if the
marks were weak, the registered mark would still be
entitled to protection when very similar marks are used on
overlapping services. In re Colonial Stores, 216 USPQ 793,
795 (TTAB 1982) (“[E]ven weak marks are entitled to
protection against registration of similar marks,
especially identical ones, for related goods and
services”); In re The Clorox Co., 578 F.2d 305, 198 USPQ
337, 341 (CCPA 1978) (ERASE for a laundry soil and stain
remover held confusingly similar to STAIN ERASER,
registered on the Supplemental Register, for a stain
remover). Furthermore, third-party registrations are not
evidence that a mark is weak. Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed.
Cir. 1992) (emphasis in original) (“As to strength of a
mark, however, registration evidence may not be given any
weight.” See also AMF Inc. v. American Leisure Prods.,
Ser. No. 78361704
18
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) ("The
existence of [third party] registrations is not evidence of
what happens in the market place or that customers are
familiar with them"). Finally, even if the presence of a
few registrations was relevant, the fact that a term has
been registered for other goods and services would hardly
establish that a mark was weak. Therefore, we cannot
conclude that the registered mark is entitled to only a
narrow scope of protection.
We also add that even if the purchasers of applicant’s
and registrant’s services were considered to be
sophisticated purchasers, confusion would still be likely.
The marks are very similar and the services are in part
overlapping and closely related. Even sophisticated
purchasers are likely to be confused under these
circumstances. In re Research and Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986), quoting, Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even
of discriminating purchasers … are not infallible”). See
also In re Hester Industries, Inc., 231 USPQ 881, 883 (TTAB
1986) (“While we do not doubt that these institutional
purchasing agents are for the most part sophisticated
buyers, even sophisticated purchasers are not immune from
Ser. No. 78361704
19
confusion as to source where, as here, substantially
identical marks are applied to related products”).
Therefore, when we consider, inter alia, that the
marks are very similar and the services are in part
identical and closely related, we conclude that there is a
likelihood of confusion.
Decision: The refusal to register applicant’s mark on
the ground that its mark is merely descriptive is reversed.
The refusal to register on the ground that applicant’s
mark, when used on its identified services, is confusingly
similar to the mark in the cited registration is affirmed.