Monday, December 10, 2012

Precedential No. 37: WYHA? TTAB Finds TALENT ASSURANCE and JOB ASSURANCE Confusable with ASSURANCE for Employment Placement Services

In a less than scintillating decision, the Board affirmed Section 2(d) refusals of the marks TALENT ASSURANCE for "personnel placement and recruitment services" and JOB ASSURANCE for "employment counseling and recruiting services; employment outplacement services," finding the marks likely to cause confusion with the registered mark ASSURANCE for "temporary personnel services." The Board also affirmed the PTO's requirement under Section 6(a) that the applicant disclaim the words TALENT and JOB in its respective marks. Would you have appealed? In re RiseSmart, Inc., 104 USPQ2d 1931 (TTAB 2012) [precedential].

Disclaimer Requirement: Applicant disclaimed TALENT and JOB, but did so in the alternative, maintaining at the same time that these words are not descriptive of its services. Consequently, the mere descriptiveness of these two words was at issue in this appeal.

As to the word TALENT, Examining Attorney Florentina Blandu relied on third-party registrations for placement services, that included a disclaimer of TALENT. She also pointed to the applicant's own website, where TALENT is used in a descriptive manner ("RiseSmart provides talent management solutions"). Similarly as to JOB, she submitted third-party registrations and website pages using the word JOB in connection with placement services (including one referring to RiseSmart as a company that "offers online job services").

Applicant RiseSmart feebly argued that TALENT has various defined meanings, but the Board observed that each definition, when applied to the applicant's services, describes the same characteristic: "that applicant's services provide to employers personnel with whatever skill set is required." Not surprisingly, the Board also found JOB to be merely descriptive of RiseSmart's services.

Likelihood of Confusion: RiseSmart did not dispute that its services and those of the cited registration are not only closely related but, since Applicant's recited services encompass "temporary personnel services, legally identical. Because there are no limitations in the involved applications or registration, the Board must presume that the service are offered in the same channels of trade to the same classes of customers.

Because the services are legally identical, a lesser degree of similarity between the marks is necessary to support a likelihood of confusion finding. RiseSmart's marks incorporate the cited mark in its entirety. Furthermore, ASSURANCE is the dominant element in RiseSmart's marks, since TALENT and JOB are merely descriptive of its services. 

RiseSmart contended that its marks engender different commercial impressions from the mark ASSURANCE, but the Board disagreed: "We find that the marks would convey the same connotation with regard to the word ASSURANCE and the additional words in applicant's mark simply provide more information as to the nature of the services." Applicant's marks are likely to be seen as variations of the registered mark. In short, the similarities outweigh the differences in the marks.

TTABlog comment: FWIW, I fail to see why this decision is precedential. The discussion regarding Applicant preserving its right to argue the disclaimer issue doesn't seem that important. If Applicant had not entered the disclaimers, went ahead with an appeal on the issue of the descriptiveness of TALENT and JOB, and lost on that issue, the Board would have allowed it to enter the disclaimers anyway. See, e.g., In re Ginc UK Limited, 90 USPQ2d 1472 (TTAB 2007) [precedential], where the Board affirmed a disclaimer requirement of the word TOGGS in the mark ZOGGS TOGGS for clothing, but allowed that applicant thirty days to enter the required disclaimer.

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Text Copyright John L. Welch 2012.


At 9:10 AM, Anonymous Anonymous said...

No, IWNHA and no, IDSWDP

Thanks for adding the 'post your comment here' link -- much easier!

At 1:30 PM, Anonymous Anonymous said...

John, thanks for the direct link... I would have discouraged appeal...of course, it is the client's decision and some, well you know.... Carole


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