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. e du/thir dc ir c uit_1999/117Filed 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 63101M. 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 Tamm y M. Ford d/b/a Careers Express (collectively, "Careers Express").

I.

Both Express and Careers Express provide temporary and permanent employment agency services to secreta ries and clerical workers in Chester, Montgomery, Delawa re, Bucks, and Philadelphia counties.

Express, which operates in Pennsylvania primarily u nder the name EXPRESS PERSONNEL SERVICE, owns a series of trademarks and service marks, including inter al ia 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 th at the preceding words are accompanied by a figure that de picts a person walking.) The Express marks have all been registered federally, and the mark EXPRESS PERSONNE L SERVICE and Design was registered with the state of Pennsylvania on or about June 15, 1990.

2Careers 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, 1 994, 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 E xpress'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 us e 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 EXPR ESS mark on February 12, 1996. On March 10, 1997, it br ought suit in federal court. Express claims that use of t he name CAREERS EXPRESS infringes its trademarks and servic e marks.

Careers Express responded by moving for summary judgment on March 19, 1997. The next day, Express m oved 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 affidavi ts. Careers Express elicited the testimony of its own witnesses , as well
as that of several of the individuals whose affidav its Express had submitted.

The District Court entered judgment for Careers Exp ress on October 22, 1997. The same day, Express moved fo r reconsideration, or in the alternative for a new tr ial. Express also sought to supplement the record with s everal new affidavits, which addressed the advertising pra ctices of
its franchisees. The District Court denied these mo tions on December 17, 1997, and Express filed a timely appea l.

We have jurisdiction under 28 U.S.C. S 1291. Our re view of the District Court's conclusions of law is plena ry. See

3Duraco Prods., Inc. v. Joy Plastic Enters., 40 F.3d 1431,

1438 (3d Cir. 1994). We review the factual determin ation
whether there is a likelihood of confusion for clea r error. See Versa Prods. Co. v. Bifold Co., 50 F.3d 189, 20 0 (3d Cir. 1995). "Clear error exists when, giving all deferen ce to the opportunity of the trial judge to evaluate the cred ibility of witnesses and to weigh the evidence, we are `left w ith a
definite and firm conviction that a mistake has bee n committed.' " A&H Sportswear, Inc. v. Victoria's Se cret Stores, Inc., 166 F.3d 191, 194 (3d Cir. 1999) (quo ting 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, counte rfeit, 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 o r in connection with which such use is likely to cause confusion, or to cause mistake, or to deceiv e; . . . shall be liable in a civil action by the registran t. . . .

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 va lid and legally protectable; (2) the mark is owned by the p laintiff; and (3) the defendant's use of the mark to identify goods or services is likely to create confusion concerning t he 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 appropri ate standard for determining trademark infringement und er the Lanham Act is the likelihood of confusion"). If a m ark is both federally registered and "incontestible," see 15 U.S.C. SS 1058, 1065, the mark is presumed to meet the fir st two requirements.

4Express contends that the District Court erred when it

determined that there was no likelihood of confusio n between its marks and that of Careers Express. Beca use we conclude that the District Court improperly charact erized the Express marks and because this error may have
affected the District Court's likelihood-of-confusi on 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 "n o logical or suggestive relation to the actual characteri stics of the goods;" suggestive terms, which suggest rath er than describe the characteristics of the goods; d escriptive terms, which describe a characteristic or in gredient 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 `serv ices' are generic descriptive terms." As the passage quoted a bove explains, "generic" and "descriptive" are separate categories. Moreover, these categories have different implicati ons for trademark analysis. If a term is generic, it is not entitled to trademark protection, whereas a descriptive term ma y be entitled to some protection if it has acquired a se condary meaning. See id. at 292.

Thus, the District Court's characterization of EXPR ESS and SERVICES as generic descriptive was clear error . In fact, we believe it is questionable that the Expres s marks fall within either the descriptive or the generic c ategory. The record contains no evidence that consumers view exp ress employment agency services as a genus of employment agency services in the way that they might, for exa mple, distinguish temporary employment agency services fr om permanent employment agency services. Indeed, there is no

5evidence in the record to suggest that Express's se rvices

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 cont ext. For example, The American Heritage College Dictionary ( 3d ed. 1993) provides three definitions for the word "expr ess" when used as an adjective,

1. Definitely and explicitly stated. 2. Part icular; specific. 3.a. Sent out with or moving at hi gh speed. b. Direct, rapid, and usu[ally] nonstop: an exp ress bus c. Of, relating to, or appropriate for rapid tr avel: express

lanes.

None of these applies to the provision of employmen t agency services without interposing considerable imagination or modification. The term "express" cer tainly does connote speed when applied to travel or transp ort, as the third of the above definitions demonstrates. Ap plying that term outside of those contexts, however, requi res an imaginative leap that may be large enough to transf orm "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 se rvices directly compete, "the court need rarely look beyon d the
mark itself " to determine whether there is a likel ihood 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 focu s.

The District Court's erroneous classification of Ex press's mark impacted its determination of the mark's stren gth, see Banff, Ltd. v. Federated Dep't Stores, Inc., 84 1 F.2d 486, 491 (2d Cir. 1988) ("the category in which the mark qualifies -- generic, descriptive, suggestive, or a rbitrary -- is useful in determining its strength"), and theref ore affected its decision regarding likelihood of confu sion, see Express Services, Inc. v. Careers Express Staffing Servs.,

6No. 96-7291, slip op. at 7-8 (E.D. Pa. Oct. 22, 199 7) (listing

strength of mark as factor in determining likelihoo d of confusion); accord 721 F.2d at 463. Indeed, the Dis trict Court explicitly stated that it was "[t]he commonal ity of the words `express' and `service' " that led it "to con clude 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 C ourt'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 conclus ion that the plaintiff failed to demonstrate a likeliho od of
confusion between the marks could not be sustained. The parties stipulated that there was no actual confusi on, 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 bee n the
same absent the District Court's error.

III.

For the foregoing reasons, we will reverse and rema nd so that the District Court may reconsider whether ther e is a likelihood of confusion between the parties' marks. The District Court may, if it believes it necessary, ta ke 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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