ROLE OF INTENT IN USING MARK
in Selecting and Using a Mark:
Big says: As full discovery has not yet occurred, Big cannot categorically state that Small and Cpaatty were aware of Big's prior use of the "TaxHQ®" mark when Small and Cpaatty allegedly started using their infringing mark in March 2003. It is clear, however, that given Cpaatty's contact with Big in fall 2004, they were aware of Big's use of that mark in newsletters and on the Internet well before they registered the virtually identical domain name "TaxHQ.NET" in March 2007 and set up a competitive website using that name. The only inference that can be drawn from those facts is that they intended their website to be confused with Big's. See Brookfield, 174 F.3d at 1059 ("[I]ntentional registration of a domain name knowing that the second-level domain is another company's valuable trademark weighs in favor of likelihood of confusion.").
Small says: When Small started using TaxHQ (in 1999), the only thing on the scene was a newsletter, since abandoned. Even before abandonment, Big was well aware that Small was using Small's mark for its services, and said nothing about it. Rather, Big was (if either of the parties in fact encroached on the other) the encroacher upon Small's service mark. Big became aware (at least as early as November 1, 2004, prior to the filing of either of the defendants' applications with the USPTO) of the fact that Small and Cpaatty were using the senior service mark, when John Cpaatty advised Mr. Big Official of that fact in the course of the conversation referred to by Mr. Official in his Declaration filed in this matter. John Cpaatty was not aware of Big's newsletter (TaxHQ) (or, for that matter, of the existence of Big) prior to filing the application for the senior service mark (all avowed to the court by John Cpaatty). Big ignores the fact that Small's primary website (abouttax.com) was operative well before March 2007, obscuring the fact that Small was the senior service mark registrant and user with respect to non-newsletter use.
As to Big's intent, Big and NewBiz conspired to obtain the domain name abouttax.net and put the entire Big web site (which made heavy use of the infringing "Big TaxHq" mark) on that domain name. This conduct, which occurred concurrrently or after the cease and desist letter and at about the time this lawsuit commenced, could not be anything but intentional.
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