Tuesday, July 14, 2015

Precedential No. 20: 13th du Pont Factor Yields TTAB 2(d) Reversal

The Board reversed a Section 2(d) refusal to register the mark ALLEGIANCE STAFFING for "temporary employment agency services provided to others, not including hospitals and healthcare providers" [STAFFING disclaimed]. The USPTO had deemed the mark confusingly similar to eight registered marks consisting of or including the term ALLEGIS, for personnel recruitment and placement services for temporary and permanent positions. The catch-all 13th du Pont factor made a rare and critical appearance in Applicant's favor: the USPTO had permitted the eight cited registrations to issue over Applicant's now extinct registration for the identical mark and services at issue here. In re Allegiance Staffing, 115 USPQ2d 1319 (TTAB 2015) [precedential].

The applicant got off on the wrong foot, irritating the Board by filing duplicate copies of its response to the first PTO office action, and compounding the crime by attaching to its appeal brief the same exhibits that it attached to its response.

Nonetheless, the Board reversed the refusal in view of the differences in meaning and commercial impression between the marks, the degree of customer care, and the 13th du Pont factor.

This is one of the rare cases in which the thirteenth du Pont factor, “any other established fact probative of the effect of use,” plays a role. du Pont, 177 USPQ at 567. This factor "accommodates the need for flexibility in assessing each unique set of facts." In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012).

The facts in this case were unusual. Applicant owned a registration for the same mark ALLEGIANCE STAFFING for the same services covered by the subject application. That registration issued in 2001 and expired in 2012 when Applicant inadvertently failed to renew it. Applicant applied for a new registration within two weeks of the expiration of that registration.

During the life of the prior registration, six of the here-cited registrations issued and two underlying applications were approved for publication. Over that period, five different examining attorneys considered the marks in the eight cited registrations and (presumably) determined that those marks were not likely to cause confusion vis-a-vis Applicant's then-registered mark.

The Board agreed with the Examining Attorney's assertion that prior decisions by Examining Attorneys in other cases are not binding on the USPTO or the Board. Nonetheless, the Board took these facts into consideration in its du Pont analysis.

[W]e conclude that under the particular circumstances here, where: (i) the same Applicant owned a prior registration for the identical mark covering the same services; (ii) none of the five different examining attorneys who examined the cited registrations refused registration based on a likelihood of confusion with the same mark for which registration is sought in the current application; and (iii) Applicant inadvertently allowed the prior registration to lapse, and attempted to correct that lapse by filing its new application within two weeks of its prior registration expiring, we give the fact that no likelihood of confusion was found in eight separate situations due weight in our analysis.

Turning to the other du Pont factors, the Board found that the involved services overlap. It then focused on the cited registration for the mark ALLEGIS in standard character form, observing that if confusion is not likely as to that mark, then there would be no likelihood of confusion with the remaining seven ALLEGIS-containing marks.

The Board noted that there are similarities between ALLEGIANCE, the dominant portion of Applicant's mark, and ALLEGIS. However the differences in the endings are "likely to be noticed because Applicant's mark results in a recognizable word." Any similarity in pronunciation is not so significant here because of the nature of the services: employment agency services are purchased by businesses, not general consumers.

The differences in meaning are even more significant. ALLEGIANCE has a clear meaning, whereas ALLEGIS is a coined term. As the CAFC has observed, "the familiar is readily distinguishable from the unfamiliar." Accordingly, the Board found that the differences in meaning between the involved marks outweighed any similarities in appearance and pronunciation.

In addition, the Board found that the conditions of purchase (du Pont factor No. 4) were significant, "since the care exercised by customers would result in their noting the differences in the marks at issue." The involved services "do not fall into the category of impulse purchasing." Businesses seeking temporary help or permanent employees will exercise a heightened level of care in their purchasing decisions, and will therefore perceive the differences between ALLEGIANCE STAFFING (composed of recognizable words) and the coined term ALLEGIS, which  "does not have any recognizable derivation."

Applicant pointed to the 15-year period of contemporaneous use of the involved marks without the occurrence of actual confusion, but the Board pointed out that there has been no meaningful opportunity for confusion to occur, since the parties provide their services in different geographical areas.

The Board therefore concluded that confusion is not likely between the involved marks, and it reversed the refusal to register.

Read comments and post your comment here:

TTABlog comment: How much leeway does an Examining Attorney have in invoking the 13th du Pont factor? Is it merely an equitable escape hatch that the TTAB can open when it feels that an Applicant got the short end of the lick log?

I've been working on a new ditty for the TTABlog songbook, entitled "13th du Pont Factor," sung to the tune of the Rolling Stones' "19th Nervous Breakdown," but it hasn't quite Come Together. [Sorry - had to give the Beatles equal time].

Text Copyright John L. Welch 2015.


At 12:20 PM, Anonymous Alex (former examiner) said...

"How much leeway does an Examining Attorney have in invoking the 13th du Pont factor?" An examiner has as much discretion as they want provided that their decision is not considered "clear error." So if an examiner wants to claim that they decided to allow the application after a 2(d) refusal because of the 13th du Pont factor, and the facts make that decision reasonable, then that justification could probably avoid a "clear error" determination by USPTO officials.

This seems like a pretty common fact pattern with a dramatically different viewpoint and outcome from the TTAB.

At 9:26 PM, Anonymous Bill Finkelstein said...

John, isn't this really in essence a use of your favorite "Morehouse" doctrine in slightly different clothing?

At 6:19 AM, Blogger John L. Welch said...

Yes, Bill. I think it is.


Post a Comment

<< Home