1999 Decisions

Opinions of the United

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Precedential or Non-Precedential: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
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 

 3 
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 

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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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