                                                                                                                           Opinions of the United
1999 Decisions                                                                                                             States Court of Appeals
                                                                                                                              for the Third Circuit


5-10-1999

Express Ser Inc v. Careers Express
Precedential or Non-Precedential:

Docket 98-1013




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Recommended Citation
"Express Ser Inc v. Careers Express" (1999). 1999 Decisions. Paper 117.
http://digitalcommons.law.villanova.edu/thirdcircuit_1999/117


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Filed May 10, 1999

UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT

No. 98-1013

EXPRESS SERVICES, INC.,
       Appellant

v.

CAREERS EXPRESS STAFFING SERVICES;
TAMMY M. FORD
d/b/a CAREERS EXPRESS STAFFING SERVICES

On Appeal from the United States District Court
for the Eastern District of Pennsylvania
(D.C. Civil No. 96-cv-07291)
District Judge: Honorable Charles R. Weiner

Submitted Pursuant to Third Circuit LAR 34.1(a)
Originally Submitted September 18, 1998
Held c.a.v.
Resubmitted April 23, 1999

Before: SLOVITER, SCIRICA and ALITO, Circuit Judges

(Filed May 10, 1999)

       Donald J. Fitzpatrick
       Michael A. Clithero
       Richard H. Kuhlman
       Peper, Martin, Jensen, Maichel &
        Hetlage
       720 Olive Street, 24th Floor
       St. Louis, MO 63101
       M. Kelly Tillery
       Leonard, Tillery & Sciolla
       1515 Market Street
       18th Floor
       Philadelphia, PA 19102

        Attorneys for Appellant

       Steven H. Rubin
       900 East 8th Avenue
       King of Prussia, PA 19406

        Attorney for Appellees

OPINION OF THE COURT

SLOVITER, Circuit Judge.

Express Services, Inc. ("Express") appeals from the order
of the District Court granting judgment following a bench
trial to Careers Express Staffing Services and Tammy M.
Ford d/b/a Careers Express (collectively, "Careers
Express").

I.

Both Express and Careers Express provide temporary
and permanent employment agency services to secretaries
and clerical workers in Chester, Montgomery, Delaware,
Bucks, and Philadelphia counties.

Express, which operates in Pennsylvania primarily under
the name EXPRESS PERSONNEL SERVICE, owns a series
of trademarks and service marks, including inter alia
EXPRESS, EXPRESS and Design, EXPRESS PERSONNEL
SERVICE and Design, EXPRESS TEMPORARY SERVICE
and Design, and EXPRESS STAFFING SERVICES and
Design. (The denomination "and Design" signifies that the
preceding words are accompanied by a figure that depicts
a person walking.) The Express marks have all been
registered federally, and the mark EXPRESS PERSONNEL
SERVICE and Design was registered with the state of
Pennsylvania on or about June 15, 1990.

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Careers Express operates in Pennsylvania under the
mark CAREERS EXPRESS. It owns neither a federal
registration nor a Pennsylvania state registration for that
mark, which it first used in commerce on April 4, 1994,
although it registered the fictitious name CAREERS
EXPRESS in Pennsylvania in April 1994. The parties have
stipulated that they "use their respective marks in the same
or similar channels of trade" and provide services to "the
same classes of customers."

Careers Express first learned of the existence of Express's
marks in or around 1994, when it commissioned a
trademark availability study. Based on the results of this
study, Careers Express's counsel advised it that use of the
CAREERS EXPRESS mark probably would be permissible,
the marks of Express notwithstanding.

Express first became aware of Careers Express's
operations in 1996. It objected to the CAREERS EXPRESS
mark on February 12, 1996. On March 10, 1997, it brought
suit in federal court. Express claims that use of the name
CAREERS EXPRESS infringes its trademarks and service
marks.

Careers Express responded by moving for summary
judgment on March 19, 1997. The next day, Express moved
for summary judgment, based in part on a series of
affidavits. The District Court denied both motions by Order
dated July 1, 1997 and scheduled the case for trial on
September 17, 1997. At trial, Express did not call any
witnesses, electing instead to rely on its affidavits. Careers
Express elicited the testimony of its own witnesses, as well
as that of several of the individuals whose affidavits
Express had submitted.

The District Court entered judgment for Careers Express
on October 22, 1997. The same day, Express moved for
reconsideration, or in the alternative for a new trial.
Express also sought to supplement the record with several
new affidavits, which addressed the advertising practices of
its franchisees. The District Court denied these motions on
December 17, 1997, and Express filed a timely appeal.

We have jurisdiction under 28 U.S.C. S 1291. Our review
of the District Court's conclusions of law is plenary. See

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Duraco Prods., Inc. v. Joy Plastic Enters., 40 F.3d 1431,
1438 (3d Cir. 1994). We review the factual determination
whether there is a likelihood of confusion for clear error.
See Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 200 (3d Cir.
1995). "Clear error exists when, giving all deference to the
opportunity of the trial judge to evaluate the credibility of
witnesses and to weigh the evidence, we are `left with a
definite and firm conviction that a mistake has been
committed.' " A&H Sportswear, Inc. v. Victoria's Secret
Stores, Inc., 166 F.3d 191, 194 (3d Cir. 1999) (quoting
Anderson v. Bessemer City, 470 U.S. 564, 573 (1985)).

II.

Section 32(1) of the Lanham Act states:

       Any person who shall, without the consent of the
       registrant --

       (a) use in commerce any reproduction, counterfeit,
       copy, or colorable imitation of a registered mark in
       connection with the sale, offering for sale, distribution,
       or advertising of any goods or services on or in
       connection with which such use is likely to cause
       confusion, or to cause mistake, or to deceive; . . . shall
       be liable in a civil action by the registrant. . . .

15 U.S.C. S 1114(1).

In order to establish infringement of its trademark, the
trademark owner must prove that "(1) the mark is valid and
legally protectable; (2) the mark is owned by the plaintiff;
and (3) the defendant's use of the mark to identify goods or
services is likely to create confusion concerning the origins
of the goods or services." Fisons Horticulture, Inc. v. Vigoro
Indus., Inc., 30 F.3d 466, 472 (3d Cir. 1994); see also A&H
Sportswear, Inc. v. Victoria's Secret Stores, Inc., 166 F.3d
197, 205 (3d Cir. 1999) (holding that "the appropriate
standard for determining trademark infringement under the
Lanham Act is the likelihood of confusion"). If a mark is
both federally registered and "incontestible," see 15 U.S.C.
SS 1058, 1065, the mark is presumed to meet the first two
requirements.

                               4
Express contends that the District Court erred when it
determined that there was no likelihood of confusion
between its marks and that of Careers Express. Because we
conclude that the District Court improperly characterized
the Express marks and because this error may have
affected the District Court's likelihood-of-confusion
analysis, we will reverse and remand for further
proceedings.

A.

This court has recognized that trademark terms may fall
within one of four categories:

       arbitrary (or fanciful) terms, which bear "no logical or
       suggestive relation to the actual characteristics of the
       goods;" suggestive terms, which suggest rather than
       describe the characteristics of the goods; descriptive
       terms, which describe a characteristic or ingredient of
       the article to which it refers, and generic terms, which
       function as the common descriptive name of a product
       class.

A.J. Canfield Co. v. Honickman, 808 F.2d 291, 296 (3d Cir.
1986) (citation omitted).

The District Court found that " `express' and `services' are
generic descriptive terms." As the passage quoted above
explains, "generic" and "descriptive" are separate categories.
Moreover, these categories have different implications for
trademark analysis. If a term is generic, it is not entitled to
trademark protection, whereas a descriptive term may be
entitled to some protection if it has acquired a secondary
meaning. See id. at 292.

Thus, the District Court's characterization of EXPRESS
and SERVICES as generic descriptive was clear error. In
fact, we believe it is questionable that the Express marks
fall within either the descriptive or the generic category. The
record contains no evidence that consumers view express
employment agency services as a genus of employment
agency services in the way that they might, for example,
distinguish temporary employment agency services from
permanent employment agency services. Indeed, there is no

                                5
evidence in the record to suggest that Express's services
differ from the general class of employment agency services
"in a significant, functional, characteristic." See id. at 293.

For similar reasons, a reasonable factfinder might doubt
that the term "express" is descriptive in this context. For
example, The American Heritage College Dictionary (3d ed.
1993) provides three definitions for the word "express"
when used as an adjective,

       1. Definitely and explicitly stated. 2. Particular;
       specific. 3.a. Sent out with or moving at high speed. b.
       Direct, rapid, and usu[ally] nonstop: an express bus c.
       Of, relating to, or appropriate for rapid travel: express
       lanes.

None of these applies to the provision of employment
agency services without interposing considerable
imagination or modification. The term "express" certainly
does connote speed when applied to travel or transport, as
the third of the above definitions demonstrates. Applying
that term outside of those contexts, however, requires an
imaginative leap that may be large enough to transform
"express" from descriptive to merely suggestive.

B.

We cannot conclude that the District Court's
inappropriate characterization of the Express marks was
harmless error. Where, as in this case, goods or services
directly compete, "the court need rarely look beyond the
mark itself " to determine whether there is a likelihood of
confusion. Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462
(3d Cir. 1983). Therefore, the nature of the marks was, or
should have been, the District Court's primary focus.

The District Court's erroneous classification of Express's
mark impacted its determination of the mark's strength,
see Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d
486, 491 (2d Cir. 1988) ("the category in which the mark
qualifies -- generic, descriptive, suggestive, or arbitrary --
is useful in determining its strength"), and therefore
affected its decision regarding likelihood of confusion, see
Express Services, Inc. v. Careers Express Staffing Servs.,

                                6
No. 96-7291, slip op. at 7-8 (E.D. Pa. Oct. 22, 1997) (listing
strength of mark as factor in determining likelihood of
confusion); accord 721 F.2d at 463. Indeed, the District
Court explicitly stated that it was "[t]he commonality of the
words `express' and `service' " that led it "to conclude that
plaintiff 's marks are weak and entitled to limited
protection." Express Services, No. 96-7291, slip op. at 9.
The characterization of Express's marks as "generic
descriptive" thus may have decreased the District Court's
willingness to find that Express had met its burden of
proving a likelihood of confusion.

We do not suggest that the District Court's conclusion
that the plaintiff failed to demonstrate a likelihood of
confusion between the marks could not be sustained. The
parties stipulated that there was no actual confusion, and
the plaintiff introduced nothing but affidavits to attempt to
sustain its burden to show likelihood of confusion by a
preponderance of the evidence. However, in light of the
District Court's improper characterization of these marks,
we cannot be certain that the result would have been the
same absent the District Court's error.

III.

For the foregoing reasons, we will reverse and remand so
that the District Court may reconsider whether there is a
likelihood of confusion between the parties' marks. The
District Court may, if it believes it necessary, take
additional evidence, but we do not require it to do so if it
believes the record is adequate.

A True Copy:
Teste:

       Clerk of the United States Court of Appeals
       for the Third Circuit

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