LIKELIHOOD OF CONFUSION
story (a work of fiction) begins
in late 1997, although little happened until 2004 (see timeline).
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Big (used as a name to describe its relative size as compared to Small, the other party in this case), is a national provider of services pertaining to various kinds of governmental regulation. For our purposes, the focus will be on tax services in the nature of determining choice of entity questions under federal and state tax law, including tax document preparation, the related formation of corporate entities and computer services, namely, providing an on-line database in the fields of tax information, tax documents, and related information on filing tax documents.
Big started a newsletter called TaxHQ on November 28, 1997 and published 2 more issues in 1998. Big later described the newsletter as a newsletter providing client notices of product and service updates, calendar of events, customer surveys and new services in the field of tax information services.
Small (a very small certified public accounting and law firm, owned and operated by John Cpaatty) (pronounced "see-patty") developed a specialty of counseling new businesses with respect to tax matters in Seattle. Beginning in 1999, Small used the service mark TaxHQ (sometimes hereinafter referred to as "Small's TaxHQ") for tax and legal services in the nature of determining choice of entity questions, including tax document preparation and the formation of corporate entities.
Cpaatty and Small became aware that Big was also using TaxHQ when Cpaatty attempted to register the domain name TaxHQ.com in October, 2004, a month after he had filed an application for the registration of the service mark TaxHQ with the USPTO. Cpaatty contacted Big concerning the possibility that the use of TaxHQ by Big and by Small entailed some possibility of conflict. Cpaatty learned from Big (on November 1, 2004) that Big was using TaxHQ as the name of a newsletter, and Cpaatty told Big that Cpaatty was using TaxHQ for tax and legal services. After this conversation, Small concluded that both Small and Big understood that the uses they were making of TaxHQ were not in conflict.
The Federal Trademark Registrations
Big filed an application for the registration of TaxHQ with the USPTO within a month thereafter (11/26/2004). Cpaatty's earlier (9/9/2004) application was processed in accordance with normal USPTO procedures, culminating in the grant of a registration to Cpaatty on October 7, 2005. In the interim, Cpaatty did not oppose Big's application, believing at the time (in accordance with the conversation the parties had on Nov. 1, 2004) that there was no conflict, and Big received a registration dated May 19, 2006.
Big filed a second application for registration (this time for Big TaxHQ) with the USPTO (on March 10, 2005) for computer services, namely, providing an on-line database in the fields of tax information, tax documents, and related information on filing tax documents and related legal forms. Big received a registration for Big TaxHQ dated January 12, 2007.
Until 2004, It appeared that Big was using the mark as the name of a publication circulated to large accounting and law firms and large corporations as a promotional tool, and that Small, on the other hand, was using the mark in providing tax and legal services for small companies. More.
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