Mixnet Corporationv.Tomeka Harris and Chan'Drieka MorrisonDownload PDFTrademark Trial and Appeal BoardFeb 19, 202092067984 (T.T.A.B. Feb. 19, 2020) Copy Citation 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 Cancellation No. 92067984 - 2 - 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. Cancellation No. 92067984 - 3 - 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). Cancellation No. 92067984 - 4 - 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. Cancellation No. 92067984 - 5 - • 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. Cancellation No. 92067984 - 6 - 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 Cancellation No. 92067984 - 7 - 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). Cancellation No. 92067984 - 8 - 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.” Cancellation No. 92067984 - 9 - 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. Cancellation No. 92067984 - 10 - 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). Cancellation No. 92067984 - 11 - 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). Cancellation No. 92067984 - 12 - 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. Cancellation No. 92067984 - 13 - 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). Cancellation No. 92067984 - 14 - 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). Cancellation No. 92067984 - 15 - 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 Cancellation No. 92067984 - 16 - 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). Cancellation No. 92067984 - 17 - 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. Copy with citationCopy as parenthetical citation