STRENGTH OF THE MARK
Strength of the Mark:
Big says: To the extent that Big's marks are characterized as suggestive rather than arbitrary, the marks are presumed to be weak. However, a weak mark can be strengthened through long use of the mark, advertising expenditures and actual marketplace recognition.See Brookfield, 174 F.3d at 1058. All those factors favor the strength of Big's marks: (a) Big has spent hundreds of thousands of dollars since 1997 promoting its services in its TaxHQ newsletter; (b) Big has invested millions of dollars in developing and advertising its website under the "TaxHQ®" mark; and (c) Big's TaxHQ website has received national recognition from the corporate, accounting and legal communities.
But even if this were not the case, any perceived weakness in the mark or marks would not outweigh the other factors, which clearly demonstrate a high likelihood of confusion. See Brookfield, 174 F.3d at 1058-59 (where the products involved are closely related and the parties' Internet domain names are nearly identical, "the strength of the mark is of diminished importance in the likelihood of confusion analysis."); New West Corp. v. NYM Co., 595 F.2d 1194, 1202 (9th Cir. 1979)(similar).
Small says: Big admits that its marks are not strong, but for its claimed investment in the marks. That claimed investment must be ignored, at least as to the newsletter mark (which is the foundation of all Big's claims), not only because it is factually unsubstantiated, but also because it has abandoned that mark. Its claimed investment of "millions" in developing and advertising its website are presented as a conclusion (no evidence cited to support the claim) and are of no value with respect to a junior use, as is clearly the case comparing its website mark with Small's senior TaxHQ mark.
Big's claim of national recognition for the site from the "corporate" "accounting " and "legal" communities is likewise unsupported: saying its target market uses its site is far from the type of recognition which transforms a suggestive mark into a strong mark. Big acknowledges, in closing, that its claim here is weak by noting that this factor is of "diminished importance" where (as it assumes) other factors buttress the likelihood of confusion argument.
As to Small's mark, Small acknowledges that this factor is of "diminished importance" where other factors buttress the likelihood of confusion argument.
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