HRB Royalty, Inc.v.Blockbuster Tax Services, Inc.

Trademark Trial and Appeal Board

May 7, 1999

No. 91103446 (T.T.A.B. May. 7, 1999)

Paper No. 11
RFC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
HRB Royalty, Inc.
v.
Blockbuster Tax Services, Inc.
_____
Opposition No. 103,446
to application Serial No. 74/610,537
filed on December 13, 1994
_____
Robert E. Mulloy, Jr. for HRB Royalty, Inc.
Thomas W. Roberts for Blockbuster Tax Service, Inc.
______
Before Cissel, Seeherman and Quinn, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
The above-referenced application, as amended, seeks
registration of the mark shown below
on the Principal Register for “preparation of federal and
state income taxes,” in Class 35. The words “BOOKKEEPING &
Opposition No. 103446
2
TAX SERVICE INCORPORATED” are disclaimed apart from the mark
as shown. The application is based on applicant’s claim of
use of the mark in interstate commerce since November 25,
1994.
Following publication of the mark in the Official
Gazette on July 2, 1996, a timely Notice of Opposition was
filed on August 30, 1996 by HRB Royalty, Inc. As grounds
for opposition, opposer asserted ownership of “service mark
registration nos. 773,839, H & R BLOCK and design, for
preparation of income tax returns for others, 1,085,665, H &
R BLOCK INCOME TAX and design, for preparation of income tax
returns for others; 1,270,198, H & R BLOCK and design, for
preparation of tax returns for others and for conducting
classes and courses in preparation of tax returns; and
1,502,530, RAPID REFUND H & R BLOCK and design, for
electronic transmission of income tax return information."
Opposer pleaded that its marks are famous, that it uses “H &
R BLOCK” as its trade name, and that applicant’s mark so
resembles opposer’s previously used name and previously used
and registered marks that the use of applicant’s mark in
connection with the services specified in the application is
likely to cause confusion. The Notice of Opposition further
claimed that opposer is entitled to relief under Section
43(a) of the Lanham Act because the term “BLOCK BUSTER”
constitutes a false statement under that section of the Act
Opposition No. 103446
3
and because applicant’s mark “would dilute the distinctive
quality” of opposer’s marks.
Applicant’s answer denied the essential allegations set
forth in the Notice of Opposition.
In its brief, opposer contends that this case presents
three issues: whether confusion is likely, whether
applicant’s mark is deceptive, and whether applicant has
filed a fraudulent application. In fact, only the first
issue is before the Board. Whether the mark is deceptive
and whether the application was fraudulent were not pleaded
by opposer as grounds for opposition, so these issues are
not before us. See Stephanus Freiherr Von Schorlemer v.
Baron Herm. Schorlemer Weinkellerei GmbH, 5 USPQ2d 1376
(TTAB 1986).
Opposer did not attempt to amend its pleadings to
include these grounds, and the record does not support a
claim that we should deem the pleading to have been amended
with the consent of the parties to conform to the evidence,
in accordance with Rule 15(b) of the Federal Rules of Civil
Procedure.
Opposer’s claims under Section 43(a) are not within the
jurisdiction of this Board. Electronic Water Conditioners,
Inc. v. Turbomag Corp., 221 USPQ 162 (TTAB 1984). The only
issue properly before the Board, therefore, is whether
confusion is likely.
Opposition No. 103446
4
Only opposer took testimony and introduced evidence.
Only opposer filed a brief. No oral hearing was requested,
so we have resolved this matter based on the written record
and arguments of opposer.
Opposer took the testimony (including exhibits) of
Christopher Robin Meck, a vice president of opposer, and of
George Eric Steinhouse, senior vice president of H&R Block
Tax Services, Inc., which owns opposer, HRB Royalty, Inc.
Also of record in this proceeding are the file of the
opposed application, two of the registrations pleaded by
opposer, and copies from articles published in the New York
Times and The Kansas City Star which show the name “BLOCK”
used in reference to opposer.
The two registrations made of record are for the marks
shown below.
is registered1 for “preparation of tax returns for others,”
and for “conducting classes and courses in preparation of

1Reg. No. 1,270,198, issued to H & R Block, Inc, on March 13,
1984; combined affidavit under Sections 8 and 15 filed and
accepted.
Opposition No. 103446
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tax returns.”
is registered2 for “electronic transmission of income tax
return information.” The other two registrations pleaded by
opposer in the Notice of Opposition have not been considered
because they were not made of record.
Based on careful consideration of opposer’s
record and arguments, we hold that confusion is likely.
Although this record does not support finding confusion
likely between applicant’s mark and opposer’s “Rapid Refund”
and design mark because of the relative obscurity of the “H
& R BLOCK” portion thereof, opposer has established that its
“H & R BLOCK” service mark and trade name are famous, that
applicant’s mark is similar to opposer’s “H & R BLOCK” trade
name and mark, and that the services with which the parties
use their respective marks and opposer uses its trade name
are identical. Under these circumstances, confusion is
likely.

2Reg. No. 1,502,530, issued to H & R Block, Inc. on August 30,
1988; combined affidavit under Sections 8 and 15 filed and
accepted.
Opposition No. 103446
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Opposer’s use of the trade name “H & R BLOCK” and the
“H & R BLOCK” and design registered mark is through various
licensees. The use and promotion of the name and the “H & R
BLOCK” mark are immense by any standard. The record
establishes that for the three-year period from 1994 through
1996, opposer spent approximately $60 million advertising
its tax preparation services under its name and registered
marks, and that this generated income of $2,447,649,000.00
for opposer. Income from electronic filing fees generated
in connection with these services adds another
$521,389,000.00 to the amount of revenue generated under the
marks. Opposer has clearly established that its name and “H
& R BLOCK” mark are famous in the field of tax preparation.
As our primary reviewing court noted in Kenner Parker
Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22
USPQ2d 1453 (Fed. Cir. 1992), the fame of the prior mark
plays a dominant role in determining the issue of likelihood
of confusion in cases where the prior mark is in fact a
famous or strong mark. Further, in Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 877, 23
USPQ2d 1698, 1700, (Fed. Cir. 1992), the Court restated the
rule that there is an inverse relationship between the fame
of a mark and the Lanham Act’s tolerance for similarity in
competing marks, and the Court reiterated the principle that
“when marks would appear on virtually identical goods or
Opposition No. 103446
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services, the degree of similarity necessary to support a
conclusion of likely confusion declines.”
In the case at hand, applicant’s mark is similar to
opposer’s famous trade name and to its service mark, “H & R
BLOCK,” and the services with which applicant uses its mark
are identical to the services for which opposer’s mark is
famous.
As has been stated many times by the courts and by this
Board, there is no excuse for even getting close to the
well-known mark of a competitor. All doubt as to whether
confusion is likely must be resolved against the newcomer,
especially in cases where the prior mark is established to
be famous. Kenner Parker Toys, supra.
Applicant’s mark prominently features the name “BLOCK,”
which is the dominant portion of opposer’s famous trade name
and service mark, “H & R BLOCK” and design. “BLOCK” and
“BUSTER” are both displayed in bold typeface several times
larger than any of the other words, all of which also have
less significance because they are descriptive (and hence
disclaimed) terms as used in connection with applicant’s
bookkeeping and tax service business. Of the two largest
words, it is “BLOCK” which is first to be read, and “BUSTER”
is not only shown after “BLOCK,” it also is presented in
less legible form by having its letters slanted one
direction or the other, so that it looks like the fist which
Opposition No. 103446
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has punched through the brick wall has also knocked the
letters in “BUSTER” askew.
Not only is “BLOCK” the dominant part of opposer’s name
and mark, the newspaper articles submitted by opposer show
that opposer is referred to as “Block” by the media. The
ordinary consumers who are the prospective purchasers of tax
preparation services are likely to be confused by the
prominent display of this famous name and mark in the mark
applicant seeks to register. That is, when these similar
marks are used in connection with services which are
identical, confusion is likely.
The case now before us is similar to Blue Cross and
Blue Shield Association v. Harvard Community Health Plan,
Inc., 17 USPQ2d 1075 (TTAB 1990), wherein confusion was held
to be likely between applicant’s mark, “The Cure for the
Blues,” for health care services, and the famous marks “Blue
Cross” and “Blue Shield” for the same services. The
services were identical, and the reference to the famous
mark was clear. The subsequent case of In Anheuser-Busch
Inc. v. The Florists Association of Greater Cleveland Inc.,
29 USPQ2d 1146 (TTAB 1993), went even further. There,
registration of “THIS BUD’S FOR YOU” for fresh-cut flowers,
blooming and non-blooming live plants was refused because of
the likelihood of confusion with the famous marks “BUD” and
“THIS BUD’S FOR YOU” for beer and malt liquor. In contrast
Opposition No. 103446
9
to the Blues case and instant case as well, the goods in the
Anheuser-Busch case were not even related, much less
identical.
In the case now before us, the newcomer’s reference to
the famous name and service mark of a leader in the same
field of commerce does not distinguish the newcomer’s
services from those of its famous competitor. Indeed, as it
did in the two cases cited above, in the instant case the
reference to the famous mark suggests that applicant’s
services are connected in some way with the owner of the
famous mark extensively used and promoted by the leader in
the field. Section 2(d) of the Act precludes registration
when this is established, as opposer has done in the case
now before us.
We harbor no doubts that confusion is likely in this
case, but we note that if we did, any such doubts would
necessarily have to be resolved in favor of opposer as the
prior user and registrant, and against applicant. In re
Apparel, Inc., 578 F2d 308, 151 USPQ 353 (CCPA 1966).
In summary, confusion is likely in the instant case
because applicant’s mark is similar to opposer’s famous
trade name and service mark, and the services with which
Opposition No. 103446
10
applicant uses its mark are identical to opposer’s services.
Accordingly, the opposition is sustained.
R. F. Cissel
E. J. Seeherman
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board