The full case caption appears at the
end of this opinion. OPINION OF THE COURT SLOVITER, Circuit Judge. Express Services, Inc. (“Express”) appeals from the orderof the District Court granting judgment following a benchtrial to Careers Express Staffing Services and Tammy M.Ford d/b/a Careers Express (collectively, “CareersExpress”). I. Both Express and Careers Express provide temporaryand permanent employment agency services to secretariesand clerical workers in Chester, Montgomery, Delaware,Bucks, and Philadelphia counties. Express, which operates in Pennsylvania primarily underthe name EXPRESS PERSONNEL SERVICE, owns a seriesof trademarks and service marks, including inter aliaEXPRESS, EXPRESS and Design, EXPRESS PERSONNELSERVICE and Design, EXPRESS TEMPORARY SERVICEand Design, and EXPRESS STAFFING SERVICES andDesign. (The denomination “and Design” signifies that thepreceding words are accompanied by a figure that depictsa person walking.) The Express marks have all beenregistered federally, and the mark EXPRESS PERSONNELSERVICE and Design was registered with the state ofPennsylvania on or about June 15, 1990. Careers Express operates in Pennsylvania under themark CAREERS EXPRESS. It owns neither a federalregistration nor a Pennsylvania state registration for thatmark, which it first used in commerce on April 4, 1994,although it registered the fictitious name CAREERSEXPRESS in Pennsylvania in April 1994. The parties havestipulated that they “use their respective marks in the sameor similar channels of trade” and provide services to “thesame classes of customers.” Careers Express first learned of the existence of Express’smarks in or around 1994, when it commissioned atrademark availability study. Based on the results of thisstudy, Careers Express’s counsel advised it that use of theCAREERS EXPRESS mark probably would be permissible,the marks of Express notwithstanding. Express first became aware of Careers Express’soperations in 1996. It objected to the CAREERS EXPRESSmark on February 12, 1996. On March 10, 1997, it broughtsuit in federal court. Express claims that use of the nameCAREERS EXPRESS infringes its trademarks and servicemarks. Careers Express responded by moving for summaryjudgment on March 19, 1997. The next day, Express movedfor summary judgment, based in part on a series ofaffidavits. The District Court denied both motions by Orderdated July 1, 1997 and scheduled the case for trial onSeptember 17, 1997. At trial, Express did not call anywitnesses, electing instead to rely on its affidavits. CareersExpress elicited the testimony of its own witnesses, as wellas that of several of the individuals whose affidavitsExpress had submitted. The District Court entered judgment for Careers Expresson October 22, 1997. The same day, Express moved forreconsideration, or in the alternative for a new trial.Express also sought to supplement the record with severalnew affidavits, which addressed the advertising practices ofits franchisees. The District Court denied these motions onDecember 17, 1997, and Express filed a timely appeal. We have jurisdiction under 28 U.S.C. S 1291. Our reviewof the District Court’s conclusions of law is plenary. See Duraco Prods., Inc. v. Joy Plastic Enters., 40 F.3d 1431,1438 (3d Cir. 1994). We review the factual determinationwhether 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 theopportunity of the trial judge to evaluate the credibility ofwitnesses and to weigh the evidence, we are `left with adefinite and firm conviction that a mistake has beencommitted.’ ” A&H Sportswear, Inc. v. Victoria’s SecretStores, Inc., 166 F.3d 191, 194 (3d Cir. 1999) (quotingAnderson 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, thetrademark owner must prove that “(1) the mark is valid andlegally protectable; (2) the mark is owned by the plaintiff;and (3) the defendant’s use of the mark to identify goods orservices is likely to create confusion concerning the originsof the goods or services.” Fisons Horticulture, Inc. v. VigoroIndus., Inc., 30 F.3d 466, 472 (3d Cir. 1994); see also A&HSportswear, Inc. v. Victoria’s Secret Stores, Inc., 166 F.3d197, 205 (3d Cir. 1999) (holding that “the appropriatestandard for determining trademark infringement under theLanham Act is the likelihood of confusion”). If a mark isboth federally registered and “incontestible,” see 15 U.S.C.SS 1058, 1065, the mark is presumed to meet the first tworequirements. Express contends that the District Court erred when itdetermined that there was no likelihood of confusionbetween its marks and that of Careers Express. Because weconclude that the District Court improperly characterizedthe Express marks and because this error may haveaffected the District Court’s likelihood-of-confusionanalysis, we will reverse and remand for furtherproceedings. A. This court has recognized that trademark terms may fallwithin 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’ aregeneric descriptive terms.” As the passage quoted aboveexplains, “ generic” and “descriptive” are separate categories.Moreover, these categories have different implications fortrademark analysis. If a term is generic, it is not entitled totrademark protection, whereas a descriptive term may beentitled to some protection if it has acquired a secondarymeaning. See id. at 292. Thus, the District Court’s characterization of EXPRESSand SERVICES as generic descriptive was clear error. Infact, we believe it is questionable that the Express marksfall within either the descriptive or the generic category. Therecord contains no evidence that consumers view expressemployment agency services as a genus of employmentagency services in the way that they might, for example,distinguish temporary employment agency services frompermanent employment agency services. Indeed, there is noevidence in the record to suggest that Express’s servicesdiffer from the general class of employment agency services”in a significant, functional, characteristic.” See id. at 293. For similar reasons, a reasonable factfinder might doubtthat the term “express” is descriptive in this context. Forexample, 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 employmentagency services without interposing considerableimagination or modification. The term “express” certainlydoes connote speed when applied to travel or transport, asthe third of the above definitions demonstrates. Applyingthat term outside of those contexts, however, requires animaginative leap that may be large enough to transform”express” from descriptive to merely suggestive. B. We cannot conclude that the District Court’sinappropriate characterization of the Express marks washarmless error. Where, as in this case, goods or servicesdirectly compete, “the court need rarely look beyond themark itself ” to determine whether there is a likelihood ofconfusion. Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462(3d Cir. 1983). Therefore, the nature of the marks was, orshould have been, the District Court’s primary focus. The District Court’s erroneous classification of Express’smark impacted its determination of the mark’s strength,see Banff, Ltd. v. Federated Dep’t Stores, Inc., 841 F.2d486, 491 (2d Cir. 1988) (“the category in which the markqualifies — generic, descriptive, suggestive, or arbitrary –is useful in determining its strength”), and thereforeaffected its decision regarding likelihood of confusion, seeExpress Services, Inc. v. Careers Express Staffing Servs.,No. 96-7291, slip op. at 7-8 (E.D. Pa. Oct. 22, 1997) (listingstrength of mark as factor in determining likelihood ofconfusion); accord 721 F.2d at 463. Indeed, the DistrictCourt explicitly stated that it was “[t]he commonality of thewords `express’ and `service’ ” that led it “ to conclude thatplaintiff ‘s marks are weak and entitled to limitedprotection.” Express Services, No. 96-7291, slip op. at 9.The characterization of Express’s marks as “genericdescriptive” thus may have decreased the District Court’swillingness to find that Express had met its burden ofproving a likelihood of confusion. We do not suggest that the District Court’s conclusionthat the plaintiff failed to demonstrate a likelihood ofconfusion between the marks could not be sustained. Theparties stipulated that there was no actual confusion, andthe plaintiff introduced nothing but affidavits to attempt tosustain its burden to show likelihood of confusion by apreponderance of the evidence. However, in light of theDistrict Court’s improper characterization of these marks,we cannot be certain that the result would have been thesame absent the District Court’s error. III. For the foregoing reasons, we will reverse and remand sothat the District Court may reconsider whether there is alikelihood of confusion between the parties’ marks. TheDistrict Court may, if it believes it necessary, takeadditional evidence, but we do not require it to do so if itbelieves the record is adequate. A True Copy: Teste: Clerk of the United States Court of Appeals for the Third Circuit
EXPRESS SERVICES, INC., Appellant v. CAREERS EXPRESS STAFFING SERVICES; TAMMY M. FORD d/b/a CAREERS EXPRESS STAFFING SERVICES No. 98-1013 United States Court Of Appeals For The Third Circuit 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 Filed May 10, 1999 Before: SLOVITER, SCIRICA and ALITO, Circuit Judges 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
