Trademark Infringement: Factor: Similarity of Goods or Services (18B)

TRADEMARK: SIMILARITY OF SERVICES OFFERED

The Relatedness and Proximity of the Two Companies' Services:

Big says: There can be no doubt that Small and Big are competitors seeking to sell similar services to the same corporate, accounting and legal consumers. Among other things, as a comparison of the two companies' websites confirms, both offer assistance to businesses in Washington and elsewhere in tax and legal services in the nature of determining choice of entity questions, including tax document preparation and the formation of corporate entities.

Small says: The most this factor can mean is that one or the other of the two marks must suffer if a likelihood of confusion is otherwise established.

Even if that were to mean that Big's mark would be the one to go, Small could not make the argument in good conscience that Big and Small had been offering services to the same market. Small provides the tax and legal services of a practicing certified public accountant and lawyer to start-up corporations and limited liability companies, virtually all of whom can be characterized as "ma and pa" entities, in contrast to Big, which does not practice law or certified public accounting and offers its services to "major corporations and accounting and law firms" (declaration, Item 2). "Ma and "pa" entities cannot even gain access to the relevant parts of Big's website.

There is not any chance whatsoever that any accounting or law firm big enough for Big will give Small any business or have any difficulty distinguishing Small's services from Big's.

The situation differs when we consider the business funneled from Big to NewBiz. If we equate Big and NewBiz, their target market overlaps Small's target market. However, NewBiz does not use the TaxHQ marks and the court should not assume the Big clientele (those who know of Big's use of the Big TaxHQ mark) will believe Big and NewBiz are related when every effort is made by Big and NewBiz to obscure any relationship between them. It is more likely that Big clients who see Small's TaxHQ and also see Big's "Big TaxHQ" will view them as completely different and even assume (as we submit is the case) that Big adopted the "Big TaxHQ" mark for the express purpose of differentiating the two.

Relevant facts:

From the previously examined declaration of an ex-employee of Big:

The company's [Big's] marketing efforts were primarily directed at accounting firms, law firms and corporations large enough to have multi-state operations... No marketing effort was directed toward securing start-up companies.

If start-up companies would come in from some other source than accounting firms, law firms or in-house counsel for large corporations, they would be transferred over to the NewBiz Corporation ("NB"), which was acquired because the company wanted to expand its business in that area and because the NewBiz Corporation had good name recognition.

Care was taken to be sure that accounting firms, law firms and large corporations did not contact NB, since the schedule of fees for accounting and law firms and larger corporations was higher than the schedule of fees for NB and the business was thus more profitable.

During the period prior to January, 2006, NB would advertise in the Wall Street Journal and I do not believe that the TaxHQ Newsletter was ever used by NB because the company did not want to mix the two. I cannot say for certain that NB did not ever give a copy of the TaxHQ Newsletter to a prospective customer or to a customer, but I do know that I never handed out the newsletter to try to get any start-up company business.

I never had an exact number with respect to the circulation of the TaxHQ Newsletter, but my impression was always that it was somewhere between 500 and 1,000 copies. I did not use the TaxHQ Newsletter, nor do I believe that anyone else did, to promote the service of dealing with start-ups (entrepreneurs)

From the parties registrations with the USPTO: (file wrapper estoppel)

Small's registration: (filed 9-09-2004, registered 10-7-2005-senior registration) tax and legal services in the nature of determining choice of entity questions, including tax document preparation and the formation of corporate entities (class 042)

Big's registration #1: (filed 11-26-2004, registered 5-19-2006 -7 months after Small's registration) (the newsletter registration) for newsletter in the field of client notices of product and service updates, calendar of events, customer surveys, new services in the field of tax information services (class 016)

Big's registration #2: (filed 3-10-2005, registered 01-12-2007 -15 months after Small's registration) computer services, namely, providing on-line database in the fields of tax information, tax documents, and related information on filing tax documents and related legal forms (class 42)

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