In this case, the Trademark Trial and Appeal Board reversed the refusal to register Applicant's ALLEGIANCE STAFFING mark (disclaiming STAFFING) for temporary employment agency service on the basis of likelihood of confusion based predominantly on the thirteenth "catch-all" du Pont factor.
Before delving into its analysis, the Board admonished the Applicant for duplicative filings. Applicant submitted the same response to an office action twice via Federal Express and electronically through the Trademark Electronic Application System. Additionally, Applicant attached exhibits to its appeal brief that were previously filed with its office action responses. The Board criticized Applicant's practice and explained that "it add[ed] to the bulk of the file and [made] it more difficult to review the submissions."
Applicant's Cancelled Registration for the Identical Mark and Services
Turning to the application at issue, the Board stated that Applicant previously owned a registration for the identical mark and services, which lapsed due to Applicant's failure to timely renew. Within two weeks of the cancellation, Applicant realized its oversight and filed another application with the PTO. The PTO refused registration, citing eight ALLEGIS formative registrations also for employment agency services as owned by the same entity. All eight ALLEGIS registrations were registered or approved for publication before Applicant's registration was cancelled, and Applicant's prior registration was not cited as a bar to any one of the eight registrations.
While recognizing that prior decisions of examining attorneys are not binding upon the PTO or Board, the Board found it compelling that Applicant owned a prior registration for the identical mark and services, Applicant's prior registration was not cited against the eight ALLEGIS registrations, and that Applicant promptly filed another application when it realized its inadvertent error.
Marks Differ in Meaning and Commercial Impression
Next, the Board considered the similarity of the marks: ALLEGIANCE STAFFING and ALLEGIS. Because Applicant disclaimed the term STAFFING, the Board primarily looked at ALLEGIANCE versus ALLEGIS. Acknowledging that both marks share the ALLEGI portion, the Board nevertheless found that the marks differed in meaning and commercial impression. Specifically, ALLEGIANCE was a word, whereas ALLEGIS was a coined term.
Sophisticated Consumers
Finally, the Board looked to the sophistication of the consumers and concluded that the sophistication of the consumers militated against confusion. The Board stated that "[b]usinesses in need of temporary help or individuals seeking a temporary employment agency for placements would exercise a heightened level of care in their decisions."
Take away: Do not mail and electronically file the same submission with the PTO or TTAB, and calendar renewal deadlines for trademark registrations.
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