Global Tax Management, Inc.

Trademark Trial and Appeal BoardNov 30, 2015

No. 86308034 (T.T.A.B. Nov. 30, 2015)

This Opinion is not a Precedent of the TTAB Mailed: November 30, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Global Tax Management, Inc. _____ Serial No. 86308034 _____ Patricia Smink Rogowski and Bridget H. Labutta of Panitch Schwarze Belisario & Nadel LLP for Global Tax Management, Inc. Leslee A. Friedman, Trademark Examining Attorney, Law Office 120, Michael W. Baird, Managing Attorney.1 _____ Before Seeherman, Heasley and Lynch, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Global Tax Management, Inc. (“Applicant”) has appealed from the final refusal of the Trademark Examining Attorney to register GTM GLOBAL TAX MANAGEMENT and design, as shown below, for “tax compliance services, namely, providing business and accounting advice in the field of tax compliance to multi- national businesses, tax accounting for multi-national businesses; tax management 1 The application was assigned to this Examining Attorney at the time of briefing. Serial No. 86308034 - 2 - consulting for multi-national businesses” in Class 35.2 Applicant has disclaimed exclusive rights to “GLOBAL” and “TAX MANAGEMENT.” Applicant has described the mark as follows: The mark consists of the letters ‘GTM’ adjacent to two half moon arcs each facing one another, and the words “GLOBAL TAX MANAGEMENT.” Color is not claimed as a feature of the mark. Registration was refused pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the marks in the following two registrations, both owned by the same entity, that as used in connection with Applicant’s services it is likely to cause confusion or mistake or to deceive: Registration No. 2917131 for GTM in standard characters for “payroll preparation services for businesses and household employers; payroll and tax filing and payment services; human resource system reporting and employee benefit reporting; household employee employment placement services; human resources management services for household employers” in Class 353; and Registration No. 2991223 for GTM HOUSEHOLD EMPLOYMENT EXPERTS in standard characters, with HOUSEHOLD EMPLOYMENT EXPERTS disclaimed, for “payroll preparation services for businesses and household employers; payroll and tax filing services; human resource system reporting and employee benefit 2 Application Serial No. 86308034, filed June 12, 2014, and asserting first use and first use in commerce as early as July 2012. 3 Issued January 11, 2005; Section 8 affidavit accepted, Section 15 affidavit received. Serial No. 86308034 - 3 - reporting; household employee employment placement services; human resources management services for household employers” in Class 35.4 Applicant and the Examining Attorney have filed appeal briefs.5 We affirm the refusal to register. 4 Issued September 6, 2005; Section 8 affidavit accepted; Section 15 affidavit received. 5 On August 25, 2015, the Examining Attorney submitted her brief, along with a request that the Board accept it despite its being filed one day late. She explained that the application file had been reassigned to her at the time of briefing, and because of a docketing error by the Managing Attorney of her law office, the due date for the brief was not accurately conveyed to her when the file was reassigned. In view of this explanation, and because the brief was only one day late, the Board accepted the brief in an order dated August 28, 2015. Because the brief was submitted with both the request and in a separate filing, the brief appears in the Board’s TTABVUE database under both Index number 10 and 13. Although the formats of the brief differ (the format of the brief in Index number 10 is that used with Office actions, while the format in Index number 13 is the “normal” typed version), the content of both formats of the brief is the same. Any citations in this opinion to the Examining Attorney’s brief refer to the brief found at Index number 13. In footnote 1 of its brief, Applicant points out that, with its request for reconsideration (which was filed at the same time as its notice of appeal), it submitted for the first time evidence regarding third-party registrations and use of marks that include the element “GTM,” and Applicant raises the question whether the inclusion of such evidence should have caused the Examining Attorney to issue a “subsequent final refusal.” Applicant cites TMEP § 715.03(b), which states, “If the request for request for reconsideration does not raise a new issue, but presents new evidence that is significantly different from evidence previously submitted, the examining attorney must issue an ‘Examiner’s Subsequent Final Refusal,’ with a six-month response clause. This provides applicant with the opportunity to respond before filing an appeal.” Brief, 8 TTABVUE 9. Applicant is advised that, because an appeal had been filed at the time the Examining Attorney denied the request for reconsideration, the provision set out in the TMEP is not applicable to this situation. The heading for that section of the TMEP indicates that it applies only when “No Notice of Appeal Has Been Filed.” TMEP § 715.03(b). We also point out that, even if the Examining Attorney had styled the action as a “subsequent final refusal,” that would not have given Applicant the right to file a response. See TMEP § 715.04(b), which addresses “Examining Attorney’s Action When New Issue or New Evidence is Presented and Notice of Appeal Has Been Filed” (“…a subsequent final action issued after the filing of an appeal does not give the applicant an automatic six-month response period… the Board will be notified to resume the appeal. When proceedings with respect to the appeal are resumed, any further request for reconsideration of the application must be made via a request for remand, for which good cause must be shown.”). Accord: TBMP § 1204: “[I]f the examining attorney denies a request for reconsideration filed with a notice of appeal, a second request for reconsideration will be treated as a request for remand….” Serial No. 86308034 - 4 - Analysis Our determination of the issue of likelihood of confusion under Section 2(d) of the Trademark Act is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in 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 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 goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). Because the cited registrations are for essentially identical services, and because the mark GTM in Registration No. 2917131 is more similar to Applicant’s mark than the mark GTM HOUSEHOLD EMPLOYMENT EXPERTS in Registration No. 2991223, we limit our analysis of the issue of likelihood of confusion to Registration No. 2917131 for GTM. If likelihood of confusion is found with respect to this registration, the refusal of registration of Applicant’s mark must be affirmed. And if no likelihood of confusion is found with respect to this registration, then there can be no likelihood of confusion with Registration No. 2991223. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). With respect to the du Pont factor of the similarity or dissimilarity of the goods and services, the Examining Attorney bases her contention that Applicant’s mark is likely to cause confusion with Registration No. 2917131 for GTM on particular Serial No. 86308034 - 5 - services listed in the identification of that registration, namely, “payroll preparation services for businesses and household employers; payroll and tax filing and payment services.” In support of the position that these services and those of Applicant are related, the Examining Attorney has submitted evidence from third- party websites showing that entities provide both payroll and tax compliance services, including the following: McFarren, Magnifico & Swart CPAs, PA6 …As tax and accounting consultants, we provide income tax compliance and consultation for individuals, partnerships, and corporations. … Our accounting services include financial compilation and review, bookkeeping, payroll preparation, and fixed asset management. Keith Devers CPA PC7 Our Services Tax Preparation and Planning We provide tax preparation and planning for individuals, corporations, partnerships, trusts and estates. --- Payroll Preparation We provide payroll preparation services, check writing, recordkeeping and tax compliance reporting. Stiefel and Lyles, P.C.8 We offer various services including … computerized payroll preparation, tax returns for individuals, corporations, estates and trusts, tax compliance and planning … PASAN Accounting Taxes Consulting9 Tax Services Our firm offers a full range of tax planning and compliance services. Payroll Services 6 April 3, 2015 Office action, p. 6. 7 April 3, 2015 Office action, p. 9. 8 April 3, 2015 Office action, pp. 10-11. 9 April 3, 2015 Office action, pp. 12-14. Serial No. 86308034 - 6 - Our firm offers complete payroll preparation and payroll tax reporting services. We prepare all federal and state returns and offer full magnetic media and electronic filing capabilities. Mason CPA Tax & Accounting10 Tax—We can help with a variety of tax compliance and planning for both businesses of varying legal formats and individuals, including payroll, income, and sales taxes. Payroll Management—We can manage your payroll from top to bottom, from payroll preparation to tax filings at all levels. This evidence amply demonstrates the relatedness of tax compliance and payroll preparation services. Moreover, tax compliance services may encompass tax filing services and, in any event, are intrinsically related to them. Applicant, on the other hand, argues that Applicant’s services “are directed to solving complex tax concerns for publicly held, multi-national businesses” while the registrant’s services “focus on household employment, and the human resources and payroll services needed by persons who employ others to do work in their households.” Brief, 8 TTABVUE 17. The problem with Applicant’s argument is that it seeks to narrow the scope of the registration by extrinsic evidence, namely the specimen in the registration file. However, it is well-established that the question of likelihood of confusion must be determined on the basis of an analysis of the mark as applied to the goods and/or services recited in an applicant’s application vis-à-vis the goods and/or services recited in the cited registration, rather than what the evidence shows the goods and/or services to be. In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). Accord, Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). As the 10 April 3, 2015 Office action, p. 15. Serial No. 86308034 - 7 - Examining Attorney has pointed out, the services as identified in the cited registration are not limited to household employers, but also include “payroll preparation services for businesses” (emphasis added). The businesses that use such services must be deemed to include the multi-national businesses that use Applicant’s services. Moreover, there is no restriction as to the consumers of the registrant’s “payroll and tax filing and payment services,” and therefore these services must be deemed to be rendered to multi-national businesses. Thus, based on the identifications themselves and the evidence of record, we find that Applicant’s and the registrant’s services, as identified in the respective application and registration, can emanate from the same source and be offered through the same channels of trade to the same class of customers. The services are therefore related for purposes of finding that the du Pont factors of the similarity of the services and the channels of trade favor a finding of likelihood of confusion. The next du Pont factor we consider is the similarity of the marks. The cited mark is GTM in standard characters; Applicant’s mark depicts the letters GTM very prominently, along with a swirl design, and with the words GLOBAL TAX MANAGEMENT in a smaller size below. Because of the prominence of the letters GTM, we find that this is the dominant part of the mark. Further, the fact that GTM in Applicant’s mark is depicted in lower case does not distinguish it from the cited mark; because the cited mark is registered in standard form, it is not limited to any particular font, and therefore it can be depicted in the same lower case type as that shown in Applicant’s mark. See In re Viterra Inc., 671 F.3d 1358, 101 Serial No. 86308034 - 8 - USPQ2d 1905, 1909 (Fed. Cir. 2012). The swirl or, as Applicant describes it, half moon arcs, while also visually prominent, is not as likely to be regarded or remembered by consumers as the letters GTM because it is an abstract design that is not likely to be articulated. See In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). Applicant’s mark does, of course, also contain the phrase “Global Tax Management,” and Applicant argues that it is the inclusion of this phrase that avoids confusion. We agree that the phrase provides a particular connotation for the letters in Applicant’s mark, i.e., consumers are likely to understand that GTM in its mark stands for Global Tax Management, and that GTM in the cited mark does not necessarily have this connotation. However, we disagree that this additional element is sufficient to distinguish the marks. As we have noted, because of the way in which GTM and GLOBAL TAX MANAGEMENT are depicted in the mark, GTM has the stronger source-indicating significance, with GLOBAL TAX MANAGEMENT giving the impression of a subsidiary, descriptive phrase. Because of this (and the propensity of consumers to shorten marks, see In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1219 (TTAB 2008) and cases cited therein), consumers are more likely to refer to the source of Applicant’s services as GTM than GTM GLOBAL TAX MANAGEMENT, or as GLOBAL TAX MANAGEMENT per se. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) quoting In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (“Regarding descriptive terms, this court has noted that the Serial No. 86308034 - 9 - ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”). Thus, we treat GTM as the dominant element in Applicant’s mark. See In re National Data Corp., 224 USPQ at 750-51 (Fed. Cir. 1985) (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). We further disagree with Applicant that the particular connotation of GTM in its mark avoids a likelihood of confusion between Applicant’s mark and the cited registration. Although the cited mark does not, standing alone, convey the meaning of “Global Tax Management,” consumers who are familiar with the registrant’s mark for payroll and tax filing services are likely, upon encountering Applicant’s mark for its tax compliance services, to assume that this mark is a variation of the registrant’s mark, perhaps identifying services specifically dedicated to tax management. Thus, considering the marks in their entireties, we find that they are similar, and that this du Pont factor favors a finding of likelihood of confusion. Applicant has also argued that the element common to both marks, GTM, is “diluted by myriad third party use,” and therefore “entitled to a narrow scope of protection.” Brief, 8 TTABVUE 14. Applicant bases this argument on four third- party registrations.11 Applicant has also submitted evidence of use of these four 11 In addition, Applicant points to two applications and a cancelled registration. However, applications have no probative value except to show that they were filed, and a cancelled registration has no probative value. Serial No. 86308034 - 10 - marks. However, a review of this evidence shows that three are for very different services than those at issue herein. Two of these three, owned by the same registrant,12 are for “retail store services featuring a wide variety of consumer goods for others” (with the photograph showing use of the mark as being for articles of clothing, and the third is for “providing an online website for creating and hosting micro websites for businesses, sports teams, schools, and organizations to facilitate online purchasing of products and paraphernalia relating thereto,” with the evidence of use a webpage offering to create a “TeamStore Shop” for a “school, team, club, or business” to “sell a variety of customized products with zero upfront costs and zero inventory investment.”13 The webpage includes a photograph showing items of apparel bearing various logos, presumably as examples of the products that can be sold through the website provided by the registrant. The only registration that is even arguably close to Applicant’s and the registrant’s services, in that the services are in the same general field of tax, is No. 3880222 for GTM TECHNOLOGY SERVICES for “business and tax consulting relating to technology for accounting, data collection, and compliance.” Applicant has stated that this registration is actually owned by “a related entity to Applicant,” brief, 8 TTABVUE 20. Even if we treat this registration as a typical third-party registration, it is clear that the mark is used for technology services,14 not for the 12 Registration Nos. 3582457 and 3501482. 13 Response filed March 20, 2015, pp. 26-27. 14 For example, the website advertises that this company has a dedicated specialized practice to focus on tax technology needs for corporations, such as income tax automation. Serial No. 86308034 - 11 - same types of services identified in Applicant’s subject application and the cited registration. Therefore, we cannot conclude from this evidence that the cited registration for GTM is entitled to such a limited scope of protection that it would not prevent the registration of such a similar mark as Applicant’s for such closely related services. With respect to the du Pont factor of the conditions of sale and sophistication of customers, we agree that, because the customers for Applicant’s services are multi- national businesses and therefore presumably large companies, and because of the nature of the services, i.e., tax compliance, consumers will exercise care in selecting the purveyor of such services. This du Pont factor favors Applicant. The final du Pont factors mentioned by Applicant are that there is no evidence of actual confusion and there is little, if any, likely potential confusion. Applicant’s arguments regarding the extent of potential confusion really go to the lack of actual confusion (“That these companies have been using the shared term GTM for their respective services in the United States concurrently for almost 20 years indicates that confusion in the instant case has not occurred, will not occur, and if it does, would be de minimis,” brief, 8 TTABVUE 20). Accordingly, we will discuss this argument as a part of the lack of actual confusion factor. Applicant claims July 2012 as the date of first use of its mark. That relatively short period of co-existence, with no evidence as to the extent of either Applicant’s or the registrant’s use, has little probative value in showing that there has been an opportunity for confusion to occur if it were likely to occur. Applicant refers to an abandoned application that it Serial No. 86308034 - 12 - had filed for GTM that claimed a date of first use of 1995. We point out that this application was never made of record and that, even if it were, it would have no probative value that the mark was in use as of the date claimed. Applicant also refers to its registration for GTM TECHNOLOGY SERVICES, which registration asserts a date of first use in 2009. That registration, as we previously discussed in connection with the third-party registrations, is for services that are different from those involved in Applicant’s current application (and is also for a different mark). We can draw no conclusion from Applicant’s assertion of lack of instances of actual confusion between that mark for those services and those in the registrant’s registration in terms of finding that Applicant’s subject mark for its identified services is not likely to cause confusion with the mark and services in the cited registration. In any event, an applicant’s uncorroborated statements of no known instances of actual confusion are of little evidentiary value. In re Majestic Distilling Co., 65 USPQ2d at 1205. The lack of evidence of actual confusion carries little weight. Id. Accordingly, we treat this du Pont factor as neutral. After considering all relevant du Pont factors, we find that the similarity of the marks and the relatedness of the services and identity of the class of consumers and channels of trade outweigh the care with which the services are purchased. That is, even careful and sophisticated consumers are likely, because of the similarity of the marks and the relatedness of the services, to believe that Applicant’s tax compliance Serial No. 86308034 - 13 - services offered under its mark emanate from or are connected with or sponsored by the owner of the cited registration. As to Applicant’s final argument that “Registrant will have the opportunity to oppose registration of Applicant’s mark if it believes it will be damaged by such registration once Applicant’s mark is approved for publication,” brief, 8 TTABVUE 21, this flies in the face of established law: But it is the duty of the PTO and this court to determine whether there is a likelihood of confusion between two marks. In re Apparel, Inc., 366 F.2d 1022, 1023, 151 USPQ 353, 354 (CCPA 1966). It is also our duty “to afford rights to registrants without constantly subjecting them to the financial and other burdens of opposition proceedings.” Id.; see also In re The Clorox Co., 578 F.2d 305, 308, 198 USPQ 337, 341 (CCPA 1978); McCarthy, supra, Section 23.24[1] [d] (where PTO rejects an application under section 1052(d), “it is no answer for the applicant to ask that the application be passed to publication to see whether the owner of the cited mark will oppose the registration”). Otherwise protecting their rights under the Lanham Act would be an onerous burden for registrants. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1535 (Fed. Cir. 1997). Decision: The refusal to register Applicant’s mark GTM GLOBAL TAX MANAGEMENT and design is affirmed.