SW Legal Educational Publishing

"Express" in Trademark Is Descriptive Term Due Little Protection
Description Trial court held that there was no likelihood of confusion between the trademarks "Express Services" and "Careers Express" since no confusion among consumers had been shown. Since "express" is a descriptive term, it is due less protection than stronger marks.
Topic Intellectual Property
Key Words Trademark; Lanham Act; Infringement; Confusion
C A S E   S U M M A R Y
Facts Express Services (Express) sued Careers Express Staffing Services (Careers) for trademark infringement in violation of common law and the Lanham Act. The trial court dismissed the suit. The appeals court remanded the case for reconsideration of whether there was a likelihood of confusion between the two marks.
Decision Case dismissed. For Express to prevail, it must establish that the consuming public associates the term "express" with its business. Both parties' marks use "express." Plaintiff uses it with the word "services" and a design. Defendant precedes "express" with the term "careers." The plaintiff's mark is limited to the category of descriptive marks; no secondary meaning has been established. "The term communicates the idea that the plaintiff provides its personnel services and career services in an expeditious manner." This is due less protection than an arbitrary term or even a suggestive term. Descriptive terms in trademarks are due less protection.
Citation Express Services, Inc. v. Careers Express Staffing Services, 1999 WL 1073614 (Slip Copy, E.D. Pa.)

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