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ANALYTIC RECRUITING v. ANALYTIC RESOURCES
July 23, 2001
ANALYTIC RECRUITING, INC., PLAINTIFF,
ANALYTIC RESOURCES, LLC, DEFENDANT.
The opinion of the court was delivered by: Anita B. Brody, District Judge.
Before me is plaintiff Analytic Recruiting, Inc.'s ("Analytic
Recruiting") request for injunctive relief on its claims of trade
name infringement under the Lanham Act,
15 U.S.C. § 1125(a)(1)(A), and unfair competition under the common law. On
May 9, 2001 through May 11, 2001, I held an evidentiary hearing
on plaintiff's motion for a preliminary injunction. At the close
of the hearing, the parties agreed that the record was complete
for purposes of determining what if any permanent relief is
appropriate. I will now grant a permanent injunction.
Having considered all of the testimony and exhibits offered at
trial, I make the following findings of fact:
2. Analytic Recruiting specializes in placing individuals with
sophisticated backgrounds and strong quantitative and
analytical skills in permanent employment positions across a
number of industry sectors in quantitative business positions.
The individuals recruited for the positions are referred to as
"candidates." The companies seeking individuals to fill its
employment positions are referred to as "clients."
3. Positions for which Analytic Recruiting recruits include
direct marketing analysis, credit-risk analysis, market
research and sales forecasting, investment banking, and systems
4. Over the past ten years, Analytic Recruiting has filled
between two hundred and fifty (250) and three hundred (300)
such positions per year with resulting billings of between five
(5) and eight (8) million dollars annually.
5. Analytic Recruiting's corporate client base includes
predominantly Fortune-One Thousand companies, as well as some
mid-size and some smaller companies, in the United States.
6. In 1980 Rita and Dan Raz conceived of their new business
because they thought that jobs requiring quantitative skills
and the "slicing and dicing" of data would need to be created
and filled to take advantage of the computational powers of
computers. They chose the name "Analytic Recruiting" for their
business because they thought that the word "analytic"
suggested the type of "braininess" or intelligence that was
called for by such positions.
7. The majority of Analytic Recruiting's communications with
candidates and corporate clients are oral, either by telephone
or by email. In such communications, the firm's name is likely
to be referred to in an abbreviated form as "Analytic."
8. In its twenty-one (21) year history, Analytic Recruiting has
continually advertised in print, and more recently, electronic
media. Since 1992, it has spent approximately $957,000 in such
advertising, placing ads, both directly and through an
advertising agency, in print media such as newspapers
(principally the New York Times), and in trade periodicals such
as Orms Today, Credit Card Management and Amstat News.
Advertising through electronic media now takes place through
the company's own web site and through other electronic media
such as Dice. com, Headhunter.net, and Bloomberg. Relatively
higher expenditures in advertising were made before 1992 when
electronic media advertising over the internet was not
9. In all such ads, except in the New York Times where the space
is especially expensive, prominence is given to the word
"Analytic" within the company's name. The word "Analytic" is
frequently portrayed independently of the full name of the firm
and in much larger, bolder and more stylized type face. The
company's web site gives similar prominence and separateness to
the word "Analytic" on each screen within the site.
10. The word "Analytic" is the only word on the door of the
company's offices. The word "Analytic" is displayed
separately and prominently from the company's name as a whole
on its letterhead, on its envelopes, and on its memo pads.
The word "Analytic" is superimposed on any resume which the
company receives from a candidate and then forwards to a
corporate client for consideration. The word "Analytic" is
given prominence on Analytic Recruiting's written fee
agreements with those clients. The word "Analytic," and only
that word, is on the company's holiday greeting cards and on
notes the company writes to send holiday gifts to its
11. Analytic Recruiting over the years has promoted itself with
merchandise bearing the name "Analytic", e.g., tee shirts,
pocket calenders, mouse pads and baseball caps all of which
have been distributed by the hundreds to clients or
12. To the extent that either the local yellow pages or the
National Directory for Executive Recruiters contains any
classification of types of recruiting firms, the
classification is of recruiting firms as either permanent or
temporary ("contract"). There is no classification or type of
recruiting firm known as an "analytic" recruiting firm.
13. In the ordinary course of business, Analytic Recruiting
receives job descriptions from corporate clients for
positions they wish to fill and advertises those descriptions
in print and electronic media. To the extent that the
descriptions contain the word "analyst" or some derivation of
the word analysis, the word is invariably used in a context
which provides some further description of the nature of the
analytical position involved, e.g.: Business/Sales Analyst;
Manager Risk Analysis; AVP Segmentation Analysis;
Quantitative Business Analyst; Database Marketing Analyst.
14. Other than Analytic Resources, Analytic Recruiting has been
the only recruiting firm using the word "analytic" or any
derivation of the word "analysis" in its company name since
its inception. David Carpenter ("Carpenter"), defendant's
principal, conducted a web search for companies using the
name "analytic" and found a number of other companies doing
something other than recruiting, i.e. companies involved in
graphic design, advertising, legal consulting, and market
research, using "analytic" as the dominant term in its
company name, including two other companies with the name
15. Defendant Analytic Resources, LLC ("Analytic Resources") is a
limited liability company located in Ardmore, Pennsylvania.
Carpenter is the defendant's President and Director of
Executive Recruiting. Analytic Resources began its operations
in early February 2000.
16. Analytic Resources is a nationwide recruiting firm that
specializes in placing individuals with strong statistical,
quantitative, and analytical backgrounds in contract
positions in quantitative marketing, telecommunications,
pharmaceutical and financial services (i.e. consumer credit,
banks, retail credit) industries.
17. Analytic Resources seeks to place candidates with corporate
clients having sales in excess of one billion dollars
19. Carpenter conceived of the idea for Analytic Resources in
February, 1999 while he was employed at Smith Hanley
Consulting, a division of Smith Hanley and a competitor of
Analytic Recruiting. As of 1999, Carpenter had been employed
by Smith Hanley for six (6) years. Up until sometime in 1995,
Carpenter placed candidates for permanent positions in the
pharmaceutical industry involving clinical drug trials.
Subsequently, Carpenter set up a contract staffing division
to place candidates in contract positions in the same field.
20. Carpenter's intent at the time he conceived Analytic
Resources was to create a contract staffing firm for the
pharmaceutical and marketing science or quantitative
21. Carpenter developed the name "Analytic Resources" sometime
around July 14, 1999. Beginning in late September or early
October 1999, Carpenter made repeated requests of his
attorney to complete the filing of the Certificate of
Organization for Analytic Resources. The Certificate of
Organization was filed on December 13, 1999.
22. Carpenter testified that he chose the name "Analytic
Resources" because he wanted a name that would mean something
to the candidates and clients across the distinct industries
that the company would be providing services to as a contract
staffing company, namely, the pharmaceutical and financial
23. Wherever the name Analytic Resources appears, the name is
followed by a further "signature" phrase such that the name
and signature phrase together always read: "Analytic
Resources — A Staffing Solutions Company." Mr. Carpenter
added the signature phrase "A Staffing Solutions Company"
because he wanted to fully identify the business in one burst
and make sure that the public knew what Analytic Resources
24. Carpenter developed the Analytic Resources logo with the
assistance of a graphic designer. The logo prominently
focuses on the word "Analytic" and presents that word on a
separate line in a distinct and different colored typeface
from the word "Resources," which appears in much smaller
print underneath the word "Analytic". The logo is used on
virtually all of defendant's communications, electronic and
25. Carpenter testified that he selected the logo because it is
very bold, has a "can't miss it" feel, and is a play on the
mathematical symbol of a square root. Carpenter stated that
he had experienced great success with a logo which had
utilized mathematical symbols at Smith Hanley, and that he
hoped to take advantage of a visual association between
Analytic Resources and the people with quantitative
backgrounds that it was servicing. When he selected the logo,
Carpenter intended the dominant portion of the logo to be the
26. Analytic Resources communicates with its candidates and
clients primarily by email and telephone. Analytic Resources
identifies itself by its full name in both email and
telephone communication. Defendant's email system has the
imprinted signature with its full company name, phone number,
title and email address. The phone system at Analytic
is set up so that incoming calls are received by the
receptionist. Ever since Defendant began its operations,
Carpenter has instructed the receptionist to answer the phone
saying, "Good morning [good afternoon], Analytic Resources,
how may I help you." Defendant's account managers have
received similar instructions from Carpenter, which
instructions are taped to their computers, that they should
present the company by saying, "Hello, my name is ____, I am
from Analytic Resources. We provide contract staffing and/or
executive recruitment services and I was just calling to
introduce myself and to see if you have any staffing needs."
27. Analytic Resources does not advertise in print media.
Carpenter anticipated that the company would advertise in
trade journals when he first conceived of the new business.
However, Carpenter testified that he has found print media to
be unsuccessful and too passive. He also testified that it
would be too costly for a start-up company.
28. Defendant advertises primarily through electronic media and
by attending trade shows. The company has spent approximately
$30,000 in advertising subscriptions to internet bulletin
boards such as Monster.com, Headhunter.net and Dice.com.
Since February, 2000, defendant has attended three trade
shows sponsored by the National Conference for Database
Marketing ("NCDM"), and is scheduled to attend one in the
Summer 2001 and another one later in December 2001. Jim
Sunderhauf ("Sunderhauf"), Defendant's Director of Business
Services, is advertised as a featured speaker from Analytic
Resources at the upcoming NCDM conference and is a regular
speaker at these conferences.
29. Analytic Resources has utilized direct mailing/marketing on
two occasions. In each instance, a direct mail card was sent
to between 1,500-1,800 candidates. The mailings contained the
defendant's name and logo and also identified defendant by
the full company name, phone number, title and email address.
B. Permanent vs. Contract Recruiting
30. Contract recruiting involves the temporary placement of a
candidate who is an employee of the recruiting firm and is
then contracted to the corporate client for a temporary
assignment. The recruiting firm employs the candidate for the
life of the contract and is responsible for paying and
administering the candidate's salary and any employment
31. Permanent recruiting involves the placement of a candidate at
a corporate client by which that candidate immediately
becomes an employee of the client, and the recruiting firm
has no further relationship with or responsibility for the
32. The permanent recruiting firm is compensated with one up
front lump sum payment by the corporate client of a
contingent fee which is generally a percentage of the
candidate's first year salary in his permanent position. The
contract recruiting firm is paid periodically by the
corporate client for the services of the contract employee
and makes a profit from the difference between the amount
charged to the corporate client and the relatively lower
amount paid by
the recruiting firm to the employee for wages and benefits.
33. The skills involved and required of someone working to place
a candidate in a permanent position are entirely different
from those used to fill a contract position. In the former
situation the recruiter must be more relationship oriented
with potential candidates since the candidate is actually
being recruited to make a career change. A contract recruiter
on the other hand is quickly trying to fill a temporary need
for a ...
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