Taxo Valoracion, S.L.

Trademark Trial and Appeal Board

Feb 24, 2016

No. 86175057 (T.T.A.B. Feb. 24, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 24, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Taxo Valoracion, S.L.
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Serial No. 86175057
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Arturo Perez-Guerrero of the Law Offices of Arturo Perez-Guerrero,
for Taxo Valoracion, S.L.
Caitlin Watts-FitzGerald, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Bergsman, Shaw and Greenbaum,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Taxo Valoracion, S.L. (“Applicant”) seeks registration on the Principal Register
of the mark for
Valuations of real estate, businesses, partnerships,
intellectual property, personal property; valuation of real
estate, in particular commercial property offices,
industrial, retail shopping centers and malls, and
apartment properties; financial appraisal, valuation and
evaluation of property for mortgage, loan insurance and
estate planning purposes; business and partnership
Serial No. 86175057
valuation services; financial appraisal services of movable
properties, namely, coins, stamps, art, antiques and
jewelry, in International Class 36.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark TAXO and design, shown below,
for “Income tax preparation; tax filing services; tax preparation,” in Class 36, as to
be likely to cause confusion.2

When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d
1 Application Serial No. 86175057 was filed on January 24, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), and Section 44(d) of the Trademark Act, 15 U.S.C. §
11126(d), based on Registration No. 12500823 registered in the European Office for
Harmonization in the Internal Market.
2 Registration 4231258, issued October 23, 2012. As part of the registration, Registrant
describes its marks as follows:
The mark consists of the word "TAXO" in grey, with a green
circle to the left, in which is a white circle, and a curved white
line below the white circle. Under the "O" in "Taxo", is a green
curved line.
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Serial No. 86175057
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See 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 and differences in the marks.”).
A. The similarity or dissimilarity of the marks.
We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, “two marks may be found to be confusingly
similar if there are sufficient similarities in terms of sound or visual appearance or
connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d
1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (citation
omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519
(TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola 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.”)).
In comparing the marks, we are mindful that “[t]he proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter
the marks would be likely to assume a connection between the parties.” Coach
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Serial No. 86175057
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012). See also San Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed.
Cir. 1992). The proper focus is on the recollection of the average customer, who
retains a general rather than specific impression of the marks. L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver
& Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975). Because the services are, inter alia, “financial
appraisal, valuation and evaluation of property for mortgage, loan insurance and
estate planning purposes” and “income tax preparation, tax filing services, and tax
preparation,” the average customer is an ordinary consumer who may need
valuation and/or tax services.
The marks are similar because the only word in either mark is “Taxo.” With
respect to the mark in the cited registration, the word “Taxo” is the dominant
portion of the registered mark because consumers will use the word “Taxo” to
identify the services. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905,
1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218
USPQ 198, 200 (Fed. Cir 1983)) (“the literal component of brand names likely will
appear alone when used in text and will be spoken when requested by consumers.”);
Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB
2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)).
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Serial No. 86175057
Further, the design element in the registered mark is of minimal importance
because it far overshadowed by the word “Taxo.” Likewise, in Applicant’s mark, the
design element merely serves as the stylized letter “X” in the word “Taxo” leaving
the word “Taxo” as the dominant element of Applicant’s mark.
We are aware that the similarity or dissimilarity of the marks is determined
based on the marks in their entireties and that the analysis cannot be predicated on
dissecting the marks into their various components; that is, the decision must be
based on the entire marks, not just part of the marks. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). See also Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d 1005, 212 USPQ
233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and
considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). On the other hand, there is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. In re National Data Corp., 224 USPQ at 751.
Applicant argues that, on the one hand, Registrant’s TAXO and design mark is a
weak mark entitled to only a narrow scope of protection or exclusivity of use
because when used in connection with tax related services, the word TAXO “evokes
and brings to mind the concept of TAX or TAXES,” while on the other hand, when
TAXO is applied to Applicant’s valuation services, TAXO is inherently distinctive
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Serial No. 86175057
and is a strong mark.3 We agree that the word TAXO used in connection with tax
related services appears to be a play on the word “Tax” designed to evoke a
connection with taxes. However, TAXO when used in connection with valuation
services also serves to evoke a connection with taxes because assessing the value of
businesses, assets, real property, estates, etc. has tax implications. Accordingly, we
find that the two marks have similar connotations and engender similar commercial
impressions.
In view of the foregoing, the marks are similar in their entireties in terms of
appearance, sound, connotation and commercial impression.
B. The similarity or dissimilarity and nature of the services.
In determining whether the services are related, it is not necessary that the
services of Applicant and Registrant be similar or competitive in character to
support a holding of likelihood of confusion; it is sufficient for such purposes that
the Examining Attorney establish that the services are related in some manner
and/or that conditions and activities surrounding marketing of these services are
such that they would or could be encountered by same persons under circumstances
that could, because of similarities of marks used with them, give rise to the
mistaken belief that they originate from or are in some way associated with the
same producer. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722;
Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010);
3 11 TTABVUE 6-7.
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Serial No. 86175057
Schering Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB 1980); Oxford
Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978).
In her October 17, 2014 and April 17, 2015 Office Actions, the Trademark
Examining Attorney submitted 15 excerpts from third-party websites from entities
that render both tax preparation services and valuation services. The excerpts
listed below are representative and show that the same entities render tax services
and valuation services under the same mark:
1. Badgerland Financial (badgerlandfinancial.com)

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Serial No. 86175057

2. Dillwood Burkel & Millar, LLP (dbmcpa.com)

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Serial No. 86175057

3. Flatworld Solutions (flatworldsolutions.com)

Applicant argues that because a client may seek tax assistance and valuation
services “at the same time or from the same source does not necessarily render
those fields related.”4 According to Applicant, “[t]hese are very specific services and
4 11 TTABVUE 4.
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Serial No. 86175057
there are companies, such as applicant’s that specialize in valuation services and
nothing else. Valuation services have no relationship to services of tax filing, tax
preparation or income tax preparation.”5 However, the issue here is not whether
purchasers would confuse the Applicant’s valuation services and Registrant’s tax
preparation services, but rather whether there is a likelihood of confusion as to the
source of these services. In re Cook Medical Technologies LLC, 105 USPQ2d 1377,
1380 (TTAB 2012); Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618,
1624 (TTAB 1989); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). It is only necessary
that there be a viable relationship between the two to support a finding of likelihood
of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983). As demonstrated by the evidence noted above, the same entities
render valuation services and tax preparation services under the same marks; thus,
consumers may mistakenly believe that those services emanate from the same
source.
We find that Applicant’s valuation services are related to Registrant’s tax
preparation services.
C. The conditions under which and buyers to whom sales are made, i.e.,
“impulse” vs. careful, sophisticated purchasing.

According to Applicant, the services at issue are not impulse purchases; rather
they are “carefully sought after by the clients that seek them” because the services
have “big implications for the clients that are procured in a more careful manner.”6
5 11 TTABVUE 5.
6 11 TTABVUE 6.
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Serial No. 86175057
We agree that consumers will, for the most part, exercise a high degree of care in
selecting a tax adviser and a company to evaluate assets, property and estates.
Ordinary consumers, including lower and middle class consumers of moderate
means and sophistication, have tax issues and valuation issues (e.g., when settling
an estate or purchasing a home). They may select a company for valuation services
because they are familiar with its tax services or vice versa.
D. Balancing the factors.
Because the marks are similar and the services are related, we find that
Applicant’s mark TAXO (stylized) for “valuations of real estate, businesses,
partnerships, intellectual property, personal property; valuation of real estate, in
particular commercial property offices, industrial, retail shopping centers and
malls, and apartment properties; financial appraisal, valuation and evaluation of
property for mortgage, loan insurance and estate planning purposes; business and
partnership valuation services; financial appraisal services of movable properties,
namely, coins, stamps, art, antiques and jewelry” is likely to cause confusion with
the registered mark TAXO and design for “income tax preparation; tax filing
services; tax preparation.” Although the purchasing conditions weigh slightly
against finding a likelihood of confusion, they do not outweigh the similarity of
marks and the similarity of services.

Decision: The refusal to register Applicant’s mark TAXO is affirmed.
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