The most important factor in a trademark infringement case is first use. While there are cases where the party who first uses the mark in a given market does not prevail, this is not one of them.

The evidence shows that Big started using the mark in 1997 and continued that use, without interruption, until late 2004 or early 2005. During that time, the newsletter appears to have been Big's primary means of contact with the outside world other than direct contact through its sales representatives, although its significance pales by comparison with such direct contact through its sales representatives. It did not aggressively promote TaxHQ other than as the name of its newsletter, and it appears that Big was known as Big as first choice, and as TaxHQ as a distant second.

Small's attitude toward its TaxHQ was similar, although it appears to have used TaxHQ as an alternate name to its company name (Small) more consistently than Big did.

Each of the parties knew that the other was using TaxHQ and it appears that neither of them was sufficiently concerned to undertake the necessary measures to bring the matter to a head for an extended period of time.

When Big decided to create the web site, it decided to elevate the role of TaxHQ by using Big TaxHQ for its Internet presence. While it did make a conscious decision to cease using TaxHQ as the name of its newsletter, it still had the same (if not a greater) appreciation for that mark in 2005 as it had in 1997 and was elevating the use of TaxHQ to nearly-equal status with its corporate name (Big), resulting in the service mark and name Big TaxHQ.

Small is not using the mark or the alternate web site TaxHQ.net to capture business which might otherwise go to Big, and there is nothing to indicate that Big itself suffered a loss of clientele which would otherwise have gone to Big by reason of Small's use of TaxHQ. Accordingly, there is no real justification for granting Big monetary damages against Small or for granting Big's demand that Small pay its attorneys fees, let alone an award of treble damages.

As previously stated, the parties co-existed for an extended period of time and that coexistence might have continued longer had it not been for the establishment of the Small web site on the domain name TaxHQ.net.

Either party could have opted to change its mark from TaxHQ to some other tax-related mark without significant consequence to its business. While the parties were using the mark TaxHQ, it does not appear that either of them would unduly suffer if forced to discontinue use of the mark TaxHQ.