Mixnet Corporationv.Tomeka Harris and Chan'Drieka Morrison

Trademark Trial and Appeal Board

Feb 19, 2020

92067984 (T.T.A.B. Feb. 19, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: February 19, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Mixnet Corporation
v.
Tomeka Harris and Chan’Drieka Morrison
_____

Cancellation No. 92067984
_____

Eric J. Menhart of Lexero Law Firm,
for Mixnet Corporation.
James T. Hollin, Jr. of J.T. Hollin, Attorney at Law, P.C.,
for Tomeka Harris and Chan’Drieka Morrison.
_____

Before Cataldo, Ritchie, and Coggins,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:

Tomeka Harris and Chan’Drieka Morrison (collectively “Respondents”) own a
Principal Register registration for the mark (with SOLUTIONS
disclaimed) for “income tax consultation; income tax preparation; tax advisory
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services; tax and taxation planning, advice, information and consultancy services; tax
filing services,” in International Class 35.1
In its petition for cancellation, Mixnet Corporation (“Petitioner”) seeks
cancellation of Respondents’ registration under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), on the basis of likelihood of confusion with its prior common law use
of the mark TAXPERT since December 2014 with “the provision and advertising of
tax preparation services.”2 Petitioner also alleges that Respondents’ registration was
cited as a bar to registration of Petitioner’s pending application Serial No. 87190128
for the mark TAXPERT.3
In their answer, Respondents admit that Petitioner’s pleaded application was
refused registration under Section 2(d) based on Respondents’ registration,4 and deny
the remaining salient allegations in the petition for cancellation.5 As noted below,
only Petitioner filed a brief. For the reasons discussed herein, we grant the petition.

1 Registration No. 5120567, issued January 10, 2017, from an application (serial no.
86764042) filed September 22, 2015, and claiming September 1, 2016 as the date of first use
anywhere and the date of first use in commerce. The registration contains the following
statement: “The mark consists of the capital letters ‘T’ and ‘P’ joined by an upper horizontal
bar, with the word ‘TaxPert’ written directly below on a second line of print and the word
‘Solutions’ written horizontally on a third line of print.” Color is not claimed as a feature of
the mark.
2 Petition, ¶ 21 (1 TTABVUE 5).
3 Id., ¶¶ 8 and 12 (1 TTABVUE 4).
4 Answer, ¶¶ 8 and 12 (5 TTABVUE 3).
5 The only valid affirmative defense in Respondents’ answer is “failure to state a claim,” which
was not pursued at trial and has been waived. See Harry Winston, Inc. v. Bruce Winston Gem
Corp., 111 USPQ2d 1419, 1422 (TTAB 2014). Similarly, as the Board explained shortly after
the answer was filed, see 6 TTABVUE, Respondents’ purported “counterclaim” has been given
no consideration.
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I. Procedural Issues
Before proceeding to the merits of the petition, we address procedural and
evidentiary matters.
Petitioner timely filed a brief. Respondents’ brief on the case was due Saturday,
August 17, 2019.6 Trademark Rule 2.128(a), 37 C.F.R. § 2.128(a). On Sunday, August
18, 2019, Respondents submitted a motion for a one-day extension of time to file their
brief, accompanied by the declaration of their counsel and what appears to be a copy
of the specimen from Petitioner’s pleaded application. Although the certificate of
service for the motion to extend indicates that a final brief on the case accompanied
the motion, no brief accompanied that motion. In fact, no brief was ever filed.
Pursuant to Trademark Rule 2.196, 37 C.F.R. § 2.196, when the last day for taking
an action falls on a Saturday, Sunday, or federal holiday, the action may be taken on
the next succeeding day that is not a Saturday, Sunday, or holiday. See also 35 U.S.C.
§21(b). Therefore, Respondents could have filed their brief until Monday, August 19,
2019, without the need to file a motion.
To the extent Respondents sought a one-day extension until Monday, August 19,
2019, (or perhaps even mistakenly thought they needed to reopen the time by one
day, until Sunday, August 18, 2019, in view of the technical deadline of Saturday,
August 18th) in which to file their main brief on the case, the motion was unnecessary
and is moot in view of Trademark Rule 2.196. To the extent Respondents attached to
their motion what appears to be a copy of the specimen from Petitioner’s pleaded

6 2 TTABVUE 3 (trial schedule).
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application, that document is already in evidence as part of Exhibit 6 to Petitioner’s
testimonial declaration, see 8 TTABVUE 32, and was unnecessary. See Corporacion
Habanos SA v. Guantanamera Cigars Co., 102 USPQ2d 1085, 1092 (TTAB 2012) (not
necessary to submit duplicates of material that is already in record). Similarly,
inasmuch as the attachment appears to be a duplicate of evidence Petitioner itself
entered into the record, Petitioner’s September 3, 2019 motion to strike the document
was unnecessary and is hereby denied.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file for the challenged registration. In
addition, Petitioner submitted the following:
• Testimony declaration of Arnold Thielen, general manager of Petitioner; and
exhibits thereto, consisting of:

o Archived screenshots of the taxpert.com website
o Current screenshot of the taxpert.com website
o Invoice from Acquisio
o Summary from Google Ads
o Invoices from Croma Technolabs
o File of pleaded application Serial No. 87190128
o File of application underlying Registration No. 5120567
o Screenshot of Respondents’ Facebook page
o Screenshot from Morrison Accounting website
o Google search hit list
o Screenshot from IRS website
o Screenshot from Clayton County, Georgia court case inquiry.7

• Notice of Reliance on Respondent Tomeka Harris’ responses to Petitioner’s
first set of interrogatories.8

7 8 TTABVUE.
8 7 TTABVUE 164-172.
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• Notice of Reliance on Respondents’ Answer and duplicates of several of the
same documents submitted with Mr. Thielen’s declaration.9

Respondents did not submit any testimony or evidence.10
III. Standing
Standing is a threshold issue that must be proven in every inter partes case. See
Empresa Cubana del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058,
1062 (Fed. Cir. 2014). To establish standing in an inter partes proceeding, Petitioner
must show both “a real interest in the proceedings as well as a ‘reasonable’ basis for
[its] belief of damage.” See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999). A “real interest” is a “direct and personal stake” in the outcome of
the proceeding. Id. at 1026.
Petitioner introduced evidence that its pleaded application Serial No. 87190128
has been refused registration based on an asserted likelihood of confusion with the
mark in Respondents’ Registration No. 5120567, see 7 TTABVUE 34-39, and
Respondents admitted this circumstance in their answer to the petition, see 5

9 7 TTABVUE 6-163.
10 Although Respondents filed a notice of reliance purporting to introduce various documents,
discovery responses, and the declaration of Arnold Thielen, see 10 TTABVUE 2-3, no such
discovery, documents, or declaration was submitted with the notice of reliance. However, as
to Respondents’ reference to the application underlying the challenged registration, as noted
above, the file for the challenged registration is automatically of record; and as to
Respondents’ reference to Petitioner’s pleaded application, and the declaration of Mr.
Thielen, “[w]hen evidence has been made of record by one party in accordance with [the
Trademark Rules] it may be referred to by any party for any purpose permitted by the Federal
Rules of Evidence.” Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a). We consider all of the
evidence of record for such probative value as it may have. Even if Respondents had made
additional material of record, it is difficult to see how the outcome of this proceeding would
have changed.
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TTABVUE 3. This suffices to show that Petitioner has a real interest in this
proceeding and a reasonable basis for its belief of damage, and, therefore, has
standing. See Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (CCPA 1982) (“[T]o have standing in this case, it would be sufficient that
[plaintiff] prove that it filed an application and that a rejection was made because of
[defendant’s] registration”); see also ShutEmDown Sports Inc. v. Lacy, 102 USPQ2d
1036, 1041 (TTAB 2012) (evidence of petitioner’s pending application refused
registration based on respondent’s registration sufficient to establish standing).
IV. Priority
“A party claiming prior use of a registered mark may petition to cancel the
registration on the basis of such prior use pursuant to section 14 of the Lanham Act.
15 U.S.C. Section 1064.” W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1662 (Fed. Cir. 1994). However, “a presumption of validity attaches
to” Respondents’ involved registration, and Petitioner, the alleged prior user, bears
the burden of proving its claim of priority by a preponderance of the evidence. Id.;
Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d
1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100,
1105-06 (TTAB 2007).
“To establish priority, the petitioner must show proprietary rights in the mark
that produce a likelihood of confusion. These proprietary rights may arise from a prior
registration, prior trademark or service mark use, prior use as a trade name, prior
use analogous to trademark or service mark use, or any other use sufficient to
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establish proprietary rights.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
64 USPQ2d 1375, 1378 (Fed. Cir. 2002) (internal citations omitted).
In the absence of evidence establishing earlier use of its mark, a party may rely
for priority purposes on the filing date of the application that matured into its
registration. Section 7(c) of the Trademark Act, 15 U.S.C. § 1057(c); see also Brewski
Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1283-84 (TTAB 1998); Am. Standard
Inc. v. AQM Corp., 208 USPQ 840, 842 (TTAB 1980). Because Respondents did not
introduce any testimony or other evidence, the earliest date on which they may rely
for priority is September 22, 2015, the filing date for the application underlying their
registration.
Petitioner’s general manager Arnold Thielen testified that Petitioner has owned,
operated, and continually maintained the website taxpert.com offering tax
preparation software and services since December 15, 2014;11 and “has expended
substantial time, money, and resources developing, marketing, advertising, and
promoting tax preparation services under the TAXPERT Mark.”12 To corroborate his
testimony regarding priority, Mr. Thielen authenticated several archival webpages
from taxpert.com which Petitioner introduced through notice of reliance and also
attached as Exhibit 1 to the declaration.13 Two of the webpages (dated January 1 and
March 11, 2015) were archived earlier than Respondents’ September 22, 2015 filing

11 Thielen Dec., ¶¶ 7, 10-12, 16 (8 TTABVUE 3-4).
12 Id., ¶ 17 (8 TTABVUE 4).
13 8 TTABVUE 4 (declaration ¶¶ 12-16); 7 TTABVUE 6-14 and 8 TTABVUE 10-18 (screen
shots).
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date.14 In view thereof, Petitioner has proven through uncontroverted testimony and
evidence, when taken as a whole, that it has priority for the mark TAXPERT for
income tax preparation services.
V. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135
S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont
factor that is relevant or for which there is argument or evidence of record.15 See In
re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006).
“[E]ach case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973) (internal citations removed). Varying weights may be assigned to each DuPont
factor depending on the evidence presented. See Citigroup Inc. v. Capital City Bank
Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co.,

14 8 TTABVUE 10 and 11.
15 We address the factors for which there is evidence and substantive argument; but, we need
not address those factors Petitioner threw in its brief to merely announce they are
“irrelevant.”
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992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary
factors may play more or less weighty roles in any particular determination”). Two
key considerations in most cases are the similarities between the marks and the
similarities between the goods or services, the first two DuPont factors. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods [or services] and
differences in the marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers
all DuPont factors for which there is record evidence but ‘may focus . . . on dispositive
factors, such as similarity of the marks and relatedness of the goods”’) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 64 USPQ2d at 1380)).
A. Second DuPont factor
We begin by considering the second DuPont factor which pertains to the similarity
or dissimilarity of the services. DuPont, 177 USPQ at 567. Where, as here, Petitioner
is relying upon common law use of its mark, consideration of the question of likelihood
of confusion must be confined to the specific services on which the mark has been
used. Petitioner has shown use of its pleaded mark for income tax preparation
services.
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Respondents’ services identified in the involved registration are “income tax
consultation; income tax preparation; tax advisory services; tax and taxation
planning, advice, information and consultancy services; tax filing services.”
The parties’ services are identical in part. The fact that one of the services listed
in the involved registration (i.e., “income tax preparation”) is identical to Petitioner’s
service is sufficient to support a finding that there is a likelihood of confusion. Tuxedo
Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981) (likelihood of confusion must be found if there is likely to be confusion with
respect to any items that come within the identification of goods in the application).
Because Respondent’s services are identical in part to Petitioner’s service, the second
DuPont factor favors a finding of a likelihood of confusion.
B. Third and Fourth DuPont factors
We next consider the third DuPont factor involving the established and likely-to-
continue channels of trade. DuPont, 177 USPQ at 567. Because Petitioner relies on
its common-law rights, for the purposes of this analysis Petitioner can claim only
those channels of trade and classes of consumers which it has established on the
record. We cannot rely on a presumption that because the services are identical in
part they move in the same channels of trade. Bell’s Brewery, Inc. v. Innovation
Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017) (no presumptions attach to
unregistered common law mark).
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Mr. Thielen testified that Petitioner uses digital marketing online and offers its
services at taxpert.com.16 Because the identification in the involved registration has
no restrictions on channels of trade, or classes of consumers, we must presume that
Respondents’ services travel in all channels of trade appropriate for such services,
and to all usual purchasers of them, which necessarily includes Petitioner’s actual
channels of trade and classes of consumers for the identical in part services. Bell’s
Brewery, 125 USPQ2d at 1345; Cf. In re Viterra Inc., 671 F.3d 1358, 1362, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Accordingly, the
third DuPont factor favors a finding of likelihood of confusion.
The fourth DuPont factor considers conditions under which and buyers to whom
sales are made, e.g., whether the services are purchased on impulse or after careful
consideration, as well as the degree, if any, of sophistication of the potential
purchasers. DuPont, 177 USPQ at 567. There is no evidence of record on the
purchasing process for tax preparation services or any evidence of purchaser
sophistication. Petitioner’s website indicates that consumers may be able to use
Petitioner’s “basic” tax preparation service for free.17 When considering that relevant
customers would include ordinary consumers using an ordinary degree of care we find
the fourth DuPont factor is neutral.

16 Thielen Dec., ¶¶ 18-20, 16 (8 TTABVUE 4).
17 Thielen Dec., Exhibit 2 (8 TTABVUE 19).
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C. Fifth DuPont Factor
Before we turn to the similarity of the marks (i.e., the first DuPont factor), we
consider the strength of Petitioner’s mark, as that will affect the scope of protection
to which it is entitled.
The fifth DuPont factor requires consideration of the fame of Petitioner’s mark.
DuPont, 177 USPQ at 567. The strength of a mark under the fifth DuPont factor rests
on the extent to which “a significant portion of the relevant consuming public . . .
recognizes the mark as a source indicator.” Joseph Phelps Vineyards, LLC v.
Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017)
(citing Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)). This factor involves assessing
the mark “along a spectrum from very strong to very weak.” Id. (internal citations
omitted). A very strong mark receives a wider latitude of legal protection in the
likelihood of confusion analysis. See Palm Bay Imps., 73 USPQ2d at 1694 (strong
marks “enjoy wide latitude of legal protection” and are “more attractive as targets for
would-be copyists”). In determining fame, or the strength of a mark, we consider both
inherent strength, based on the nature of the mark itself, and commercial strength
or recognition. Bell’s Brewery, 125 USPQ2d at 1345.
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There is no evidence in the record as to the conceptual strength of Petitioner’s
TAXPERT mark. We note, however, that the mark is a portmanteau of “tax” and
“expert” – two words which, by themselves, are descriptive of Petitioner’s services.18
The commercial strength of a mark may be measured indirectly by the volume of
sales and advertising expenditures in connection with the services sold under the
mark, and other factors such as length of time of use of the mark; widespread critical
assessments; notice by independent sources of the services identified by the marks;
and the general reputation of the services. Weider Publ’ns, LLC v. D & D Beauty Care
Co., 109 USPQ2d 1347, 1354 (TTAB 2014); see also Bose Corp. v. QSC Audio Prods.
Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing indirect
evidence as appropriate proof of strength). Mr. Thielen testified that Petitioner spent
$15,000 to optimize its digital search campaign, and spent “tens of thousands of
dollars promoting” its website taxpert.com via online marketing such as Google Ads.19
He also stated that Petitioner has “grown the traffic and profile of” its taxpert.com
website over the years of its operation20 and provided evidence of over 10,000 clicks
to taxpert.com from its overall online advertising. In addition, Petitioner argues that

18 We take judicial notice that “tax” means “a charge usually of money imposed by authority
on persons or property for public purposes,” and “expert” means “one with the special skill or
knowledge representing mastery of a particular subject.” Merriam-Webster.com at
https://www.merriam-webster.com/dictionary/tax and /expert (last visited February 12,
2020). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du
Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
regular fixed editions. In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013).
19 Thielen Dec., ¶¶ 19-20 (8 TTABVUE 4).
20 Id., ¶ 24 (8 TTABVUE 5).
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use of the mark since 2014 has contributed to “at least some degree of recognition and
strength in the market for tax preparation” services.21
Petitioner provides no context for any of its advertising, traffic, or website
maintenance numbers, and appears to conflate advertising of the services under the
mark TAXPERT with promotion, operation, and maintenance of its website in
general. Similarly, there is no evidence as to Petitioner’s sales or how many of the
advertising clicks translated into purchase of Petitioner’s services. On balance we
find that Petitioner’s mark falls in the middle of the spectrum from very strong to
very weak, and we accord Petitioner’s mark the normal scope of protection; therefore,
the fifth DuPont factor is neutral.
D. First DuPont factor
We compare the marks “in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
(quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156
USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling
or sound alone is likely to cause confusion.”) (citation omitted). The test is not whether
the marks can be distinguished when subjected to a side-by-side comparison, but

21 Brief, p. 18 (11 TTABVUE 23).
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rather whether the marks are sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods or services offered under
the respective marks is likely to result. Cai v. Diamond Hong, Inc., 901 F.3d 1367,
127 USPQ2d 1797, 1801 (Fed. Cir. 2018); Midwestern Pet Foods, Inc. v. Societe des
Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). We
also bear in mind that, given the in part identical services, “the degree of similarity
necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate
v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). The
focus is on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975). Because the services at issue are income tax
preparation services, the average purchaser is an ordinary person who must file
federal or state income tax returns.
Respondents’ mark is . Petitioner’s mark is TAXPERT. The marks are
similar in sound, appearance, meaning, and commercial impression to the extent that
each contains the identical coined term TAXPERT. Respondents’ mark fully
incorporates Petitioner’s mark TAXPERT and contains the additional letters TP and
the descriptive (and disclaimed) term “solutions.”
“[T]he presence of an additional term in the mark does not necessarily eliminate
the likelihood of confusion if some terms are identical.” In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (finding ML in standard
characters confusingly similar to ML MARK LEES in stylized form). Cf. Stone Lion
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Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014) (finding STONE LION CAPITAL confusingly similar to LION and
LION CAPITAL); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009)
(VANTAGE TITAN likely to be confused with TITAN). We recognize that the initials
TP are a large element of Respondents’ mark, which also contains the non-distinctive
term “solutions.” Nonetheless, in this case Respondents’ TP merely reinforces the
commercial impression of the mark as TAXPERT because that middle term in the
mark is presented with a capital T and P.
Based upon the foregoing, we find Respondents’ composite mark is more
similar to than dissimilar from Petitioner’s TAXPERT mark in appearance, sound,
and connotation and, overall creates a similar commercial impression. The marks
appear to be variations of each other that suggest a single source, pointing to a tax
expert. Overall, the first DuPont factor favors a finding of a likelihood of confusion.
E. Twelfth DuPont factor
Petitioner argues that the twelfth factor, the extent of potential confusion,
DuPont, 177 USPQ at 567, weighs in its favor because “the potential for confusion
between the two trademarks is substantial.”22 Petitioner’s arguments about the
similarity of the services, channels of trade, consumers, and marks are essentially a
reargument of the first, second, third, and fourth DuPont factors. Nonetheless, we
agree to the extent that because we have found that the services are in-part identical

22 Brief, p. 19 (11 TTABVUE 24).
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and are offered under similar marks containing or comprised of the same
portmanteau TAXPERT and are of the type that would be marketed to and purchased
by the same consumers, the potential for confusion cannot be deemed de minimis.
Accordingly, the twelfth DuPont factor favors Petitioner.
F. Conclusion on likelihood of confusion
We have considered all of the evidence of record and all of the arguments
presented as they pertain to the relevant DuPont likelihood of confusion factors. We
find by a preponderance of the evidence that Petitioner has established prior
trademark rights in its TAXPERT mark in the United States; and that first, second,
third, and twelfth DuPont factors weigh in favor of a finding of likelihood of confusion,
while the other DuPont factors are neutral. We therefore find that Respondents’ mark
, as used in connection with the services identified in the registration, so
resembles Petitioner’s mark TAXPERT as to be likely to cause confusion or mistake,
or to deceive under Section 2(d) of the Trademark Act.
VI. Decision
The petition to cancel is granted.