Express Services, Inc. v. Careers Express Staffing Services Tammy M. Ford D/B/A Careers Express Staffing Services
Docket: 98-1013
Court: Court of Appeals for the Third Circuit; May 10, 1999; Federal Appellate Court
Express Services, Inc. (Express) appeals a District Court ruling favoring Careers Express Staffing Services and Tammy M. Ford (collectively, Careers Express) after a bench trial. Both companies operate as employment agencies in Pennsylvania, targeting similar clientele and using comparable marketing channels. Express holds several federally registered trademarks, including "EXPRESS" and "EXPRESS PERSONNEL SERVICE," while Careers Express uses the unregistered mark "CAREERS EXPRESS," which it began using in 1994 after a trademark study suggested its use would likely be permissible despite Express's existing marks.
Express became aware of Careers Express in 1996 and objected to the "CAREERS EXPRESS" mark in 1996, subsequently filing a lawsuit in March 1997, claiming trademark infringement. Both parties moved for summary judgment, which the District Court denied, leading to a trial where Express relied solely on affidavits without calling witnesses. Careers Express presented its witnesses and those of Express's affidavits. The District Court ruled in favor of Careers Express on October 22, 1997, prompting Express to request reconsideration or a new trial, which the court denied. Express subsequently filed an appeal.
Jurisdiction is established under 28 U.S.C. § 1291, allowing for plenary review of the District Court's legal conclusions, while factual determinations regarding likelihood of confusion are reviewed for clear error. Clear error occurs when there is a firm conviction that a mistake has been made after considering the trial judge's assessment of witness credibility and evidence.
Section 32(1) of the Lanham Act makes it unlawful for anyone to use a reproduction or imitation of a registered mark without consent, if such use is likely to cause confusion or deception. To prove trademark infringement, the trademark owner must demonstrate that the mark is valid and protectable, owned by the plaintiff, and that the defendant's use is likely to create confusion regarding the goods’ origins. Federally registered and "incontestible" marks are presumed valid.
Express argues the District Court erred in finding no likelihood of confusion between its marks and those of Careers Express, claiming the court mischaracterized the Express marks, impacting its analysis. The court recognizes four trademark categories: arbitrary, suggestive, descriptive, and generic, with generic terms receiving no protection and descriptive terms potentially qualifying if they have secondary meaning. The District Court incorrectly categorized "express" and "services" as generic descriptive terms, which is a clear error, as there is insufficient evidence that consumers recognize express employment agency services as a specific category distinct from other employment services.
A reasonable factfinder may question whether the term "express" is descriptive in the context of employment agency services. The American Heritage College Dictionary defines "express" in three ways: as definitely stated, as particular or specific, and in relation to speed, particularly in travel contexts. None of these definitions directly apply to employment agency services without significant interpretation. The use of "express" typically implies speed, which does not easily translate to the service sector. The District Court's mischaracterization of the "Express" marks as weak due to the commonality of the terms "express" and "service" adversely affected its assessment of the mark's strength, crucial for determining the likelihood of confusion between competing services. The court's categorization of the marks as "generic descriptive" likely diminished its willingness to find that the plaintiff met its burden of proof regarding confusion. Although the District Court concluded that the plaintiff failed to demonstrate a likelihood of confusion, this determination may not have been consistent had it properly classified the marks. Consequently, the decision is reversed and remanded for the District Court to re-evaluate the likelihood of confusion, with the option to take additional evidence if deemed necessary.
