Empirical Financial Services LLC aka Empirical Wealth Managementv.Empirical Concepts, Inc. Empirical Concepts, Inc. v. Empirical Financial Services LLC aka Empirical Wealth Management

Trademark Trial and Appeal Board

Nov 12, 2019

91205142 (T.T.A.B. Nov. 12, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 12, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Empirical Financial Services LLC

v.

Empirical Concepts, Inc.
_____

Opposition No. 91203384 (parent)
Cancellation No. 92055549
_____

Empirical Concepts, Inc.

v.

Empirical Financial Services LLC
_____

Opposition No. 91204762
Opposition No. 91205142
Opposition No. 91205144
Opposition No. 91212993

(All Cases Consolidated)

Wendy Peterson of Not Just Patents LLC,
for Empirical Financial Services LLC.
Clifton E. McCann and Carrie E. Shufflebarger of Thompson Hine LLP,
for Empirical Concepts, Inc.
_____

Before Shaw, Heasley, and Larkin, Administrative Trademark Judges.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 2 -

Opinion by Larkin, Administrative Trademark Judge:
On August 26, 2019, the Board issued an opinion in these six consolidated cases
between Empirical Financial Services LLC aka Empirical Wealth Management
(“Wealth”), and Empirical Concepts, Inc. (“Concepts”) in which it granted Concepts’
counterclaim in Opposition No. 91203384 to cancel Wealth’s Registration No.
3352355, and sustained Concepts’ Opposition Nos. 91204762, 91205142, and
91205144. 66 TTABVUE. In that opinion, the Board also discussed the common trial
record in the six cases and certain evidentiary matters, provided some background
regarding the parties and their disputes, found that both parties had standing to
assert all claims and counterclaims involved in the six cases, and stated that it would
decide the remaining claims and counterclaim in one or more subsequent opinions.1
In this opinion, we decide those remaining claims and counterclaim.2 We sustain
Concept’s Opposition No. 91212993, deny Wealth’s Petition to Cancel in Cancellation
No. 92055549 and Wealth’s Counterclaim for Cancellation in Opposition No.
91205142, and dismiss Wealth’s Opposition No. 91203384.
I. Summary of Claims and Counterclaim Remaining for Decision
We summarize below the claims and counterclaim decided in this opinion, in the
order in which we decide them. We first discuss Wealth’s claim and counterclaim to

1 In the interest of judicial economy, we refer the reader to these portions of our August 26,
2019 opinion and will not repeat them in this opinion. In this opinion, we will use all defined
terms and citation forms that we used in our previous opinion.
2 As discussed below, the remaining claims and counterclaim involve multiple sections of the
Trademark Act (the “Act”). We discuss our factual findings and the applicable law on each
claim and counterclaim in the pertinent portions of this opinion.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
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cancel Concepts’ registrations of EMPIRICAL CONCEPTS and EMPIRICAL; those
registrations are asserted by Concepts in its likelihood of confusion claim in
Opposition No. 91212993, so our resolution of Wealth’s challenges to those
registrations bears on our resolution of Concepts’ likelihood of confusion claim. Cf.
Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089, *5 (TTAB 2019) (electing
to consider counterclaim to cancel pleaded registrations first because cancellation of
those registrations was potentially dispositive of the petitioner’s likelihood of
confusion claim).
A. Wealth’s Cancellation No. 92055549 Against Concepts’
Registration of EMPIRICAL CONCEPTS
Wealth petitions to cancel Concepts’ Registration No. 3235573 (the “’573
Registration”) of EMPIRICAL CONCEPTS for “accounting services, namely,
financial statement preparation, data analysis, reconciliation of financial records,
business process and internal control reviews for accounting and information
systems, and book-keeping,” in International Class 35, and “financial software
consulting; customized database development,” in International Class 42. Concepts
originally pleaded two claims in its Petition to Cancel: (1) EMPIRICAL CONCEPTS
is a generic term for the services identified in the registration, 1 TTABVUE 5-8 (Canc.
No. 92055549) (Pet. ¶¶ 3-14); and (2) EMPIRICAL CONCEPTS has been abandoned.
Id. at 8-9 (Pet. ¶¶ 15-18). The Board dismissed the genericness claim with prejudice.
7 TTABVUE 6 (Canc. No. 92055549).
Wealth moved to amend its Petition to Cancel to assert claims that EMPIRICAL
CONCEPTS is merely descriptive and that Concepts uses EMPIRICAL CONCEPTS
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
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solely as a trade name and not as a service mark, 8 TTABVUE (Canc. No. 92055549),
and the Board granted the motion. 12 TTABVUE (Canc. No. 92055549). Wealth’s
Amended Petition to Cancel thus asserts claims of abandonment, mere
descriptiveness, and the failure of EMPIRICAL CONCEPTS to function as a service
mark because of its use solely as a trade name. 8 TTABVUE 4-7 (Amended Pet. to
Cancel. ¶¶ 2-15).3 Wealth pursued all three claims in Wealth’s First Brief. 61
TTABVUE 34-37. Concepts’ Answer to the Amended Petition to Cancel denied the
salient allegations of the Amended Petition, but did not assert any cognizable
affirmative defenses.4
Wealth also argued in Wealth’s First Brief that the EMPIRICAL CONCEPTS
registration should be cancelled because Concepts was not using the mark when the
application that matured into the involved registration was filed, and because
Concepts committed fraud on the USPTO in procuring the registration. 61 TTABVUE
31-34. Concepts objected to these claims in Concepts’ First Brief, arguing that they
“were not pled at all, let alone pled sufficiently, and should not be tried by consent,
particularly in view of the dearth of evidentiary support that Wealth propounds in

3 Wealth’s Amended Petition to Cancel attached information from the USPTO’s TSDR
database regarding two pending applications to register EMPIRICAL TAX SOLUTIONS and
EMPIRICAL FINANCIAL SERVICES. 8 TTABVUE 9-13 (Canc. No. 92055549). Wealth
asserted these applications as the basis for its standing, but not as grounds for cancellation.
Id. at 4 (Amended Pet. ¶ 1).
4 Concepts’ Answer asserts that Wealth failed to state a claim upon which relief can be
granted, 15 TTABVUE 4 (Canc. No. 92055549), but this is not an affirmative defense. TiVo
Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1101 n.6 (TTAB 2018). Concepts’ purported
reservation of the right to assert affirmative defenses is a nullity under the Federal Rules of
Civil Procedure. See, e.g., FDIC v. Mahajan, 923 F. Supp. 2d 1133, 1141 (N.D. Ill. 2013).
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
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support of these theories.” 62 TTABVUE 40. Wealth’s Second Brief does not respond
to these objections. 63 TTABVUE 33. We sustain Concepts’ objections and have given
Wealth’s nonuse and fraud arguments no consideration because they were neither
pleaded nor tried by consent. See, e.g., Productos Lacteos Tocumbo S.A. de C.V. v.
Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927-28 (TTAB 2011) (refusing to
consider family of marks argument asserted by cancellation petitioner for the first
time in its brief because “this claim was neither pleaded nor tried by the parties”).
Accordingly, in Cancellation No. 92055549 the claims remaining for decision are
Wealth’s claims of mere descriptiveness, abandonment, and the failure of
EMPIRICAL CONCEPTS to function as a service mark because it is used by Concepts
only as a trade name.
B. Wealth’s Counterclaim to Cancel Concepts’ Registration No.
3702022 of EMPIRICAL in Opposition No. 91205142
In Opposition No. 91205142, Wealth counterclaimed to cancel Concepts’
Registration No. 3702022 (the “’022 Registration”) of the mark EMPIRICAL in
standard characters for “accounting services, namely, financial statement
preparation, data analysis, reconciliation of financial records, business process and
internal control reviews for accounting and information systems, and bookkeeping,”
in International Class 35, and “financial software consulting; customized database
development as it relates to accounting,” in International Class 42. Wealth asserted
the following grounds: (1) EMPIRICAL is generic for, or “highly descriptive” of, the
services identified in the ’022 Registration, 6 TTABVUE 6 (Opp. No. 91205142)
(Counterclaim ¶¶ 42, 45, 50-57); (2) Wealth argues that confusion is not likely
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
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between its EMPIRICAL WEALTH MANAGEMENT mark and Concepts’
EMPIRICAL mark asserted in Opposition No. 91205142, but claims in the alternative
that if confusion is likely, Wealth has priority of use, id. at 7 (Counterclaim ¶¶ 43-
44); and (3) EMPIRICAL has been used by Concepts only as a trade name and not as
a service mark. Id. at 7-8 (Counterclaim ¶¶ 46-49). In its Answer, Concepts denied
the salient allegations of Wealth’s counterclaims. 8 TTABVUE (Opp. No. 91205142)
(Ans. to Counterclaim ¶¶ 40-57).
Wealth stated early in Wealth’s First Brief that it “will be arguing mere
descriptiveness and lack of acquired distinctiveness rather than genericness” on its
counterclaims, 61 TTABVUE 9, but Wealth only argued its priority and trade name
claims in the portion of Wealth’s First Brief directed to its counterclaim to cancel the
’022 Registration. Id. at 26-31.5 Concepts accordingly only discussed Wealth’s priority
and trade name claims in Concepts’ First Brief, 62 TTABVUE 47-50, which was
Concepts’ only brief in opposition to Wealth’s counterclaims. Wealth first mentioned
descriptiveness in a few sentences in Wealth’s Second Brief, 63 TTABVUE 33-34,
which was Wealth’s reply brief on its counterclaims.
Under the circumstances, we deem Wealth to have waived the descriptiveness
counterclaim because it was not asserted in Wealth’s First Brief and was discussed
for the first time on reply. See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc.,

5 In Wealth’s First Brief, Wealth also asserted a claim that Concepts did not make lawful use
of the EMPIRICAL mark in commerce, 61 TTABVUE 29-31, and Wealth further discussed
this claim in Wealth’s Second Brief. 63 TTABVUE 34-35. This claim was not pleaded in
Wealth’s counterclaim and Concepts objected to it on that ground in Concepts’ First Brief. 62
TTABVUE 50 n.7. We have given it no consideration.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
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107 USPQ2d 1750, 1753 (TTAB 2013) (petitioner’s pleaded descriptiveness and
geographical descriptiveness claims deemed waived because they were not argued in
main brief), aff’d, 565 F.3d App’x 900 (Fed. Cir. 2014) (mem.); cf. Rocket Trademarks
Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1077 (TTAB 2011) (opposer’s claim that
its mark was famous, which was not discussed by applicant in its brief and which was
raised for the first time in opposer’s reply brief, was improper rebuttal argument);
TBMP § 801.03 (a reply brief “must be confined to rebutting the defendant’s main
brief” and “shall be limited to the key points in defendant’s brief which plaintiff
believes require clarification or response.”).
In addition, Wealth argued that the registration of EMPIRICAL should be
cancelled on the basis of its claimed priority only “[i]f there is a likelihood of confusion
between Concepts’ EMPIRICAL [mark] and Wealth’s registration for EMPIRICAL
WEALTH MANAGEMENT. . . .” 61 TTABVUE 27. We did not reach Concepts’ Section
2(d) claim in Opposition No. 91205142 in our previous opinion because we sustained
the opposition based on Concepts’ claim under Section 2(e)(1), and we did not find a
likelihood of confusion between the EMPIRICAL and EMPIRICAL WEALTH
MANAGEMENT marks. Wealth’s priority claim is thus moot.
Accordingly, on the counterclaim in Opposition No. 91205142, the only claim
remaining for decision is Wealth’s claim that Concepts has used the EMPIRICAL
mark solely as a trade name.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
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C. Concepts’ Opposition No. 91212993 to Wealth’s Application to
Register EMPIRICAL
Concepts opposes Wealth’s Application Serial No. 85478892 to register
EMPIRICAL in standard characters for “capital investment consulting; capital
investment services; financial and investment services, namely, management and
brokerage in the fields of stocks, bonds, options, commodities, futures and other
securities, and the investment of funds of others; financial services, namely,
investment advice, investment management, investment consultation and
investment of funds for others, including private and public equity and debt
investment services,” in International Class 36. Concepts pleaded two claims in its
Notice of Opposition: (1) EMPIRICAL so resembles the registered marks
EMPIRICAL CONCEPTS, EMPIRICAL, and EMPIRICAL SYSTEMS, and the
applied-for marks EMPIRICAL FINANCIALS, EMPIRICAL SYSTEMS, and
EMPIRICAL CERTIFIED PUBLIC ACCOUNTANTS and design, as to be likely,
when used in connection with the services identified in the opposed application, to
cause confusion, to cause mistake, or to deceive, under Section 2(d) of the Act, 1
TTABVUE 5-8 (Opp. No. 91212993 (Not. of Opp. ¶¶ 2-8); and (2) EMPIRICAL is
merely descriptive of the services identified in the opposed application under Section
2(e)(1) of the Act. Id. at 8-9 (Not. of Opp. ¶¶ 9-18). In Concepts’ First Brief, Concepts
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
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pursued only the likelihood of confusion claim, 62 TTABVUE 52-53, thus waiving its
mere descriptiveness claim.6 TiVo Brands, 129 USPQ2d at 1100-01.
In its Answer, 4 TTABVUE (Opp. No. 91212993), Wealth denied the salient
allegations of the Notice of Opposition, and interposed nine purported affirmative
defenses. Id. at 3-7 (Ans. Aff. Defs. ¶¶ 1-9).7 The sole affirmative defense pursued in
Wealth’s Second Brief was the defense that Wealth “is at least entitled to registration
with a distinctiveness limitation statement as to the word EMPIRICAL,” id. at 7
(Ans. Aff. Def. ¶ 9), which we interpret as a claim that the mark as has acquired
distinctiveness. 63 TTABVUE 24, 30-31.8 That defense has been mooted because
Concepts waived its mere descriptiveness claim by not pursuing it in Concepts’ First
Brief.
Accordingly, in Opposition No. 91212993 the sole claim remaining for decision is
Concepts’ likelihood of confusion claim.

6 Concepts states that it “asserts claims under Sections 2(d) and Section [2](e)(1) of the
Trademark Act,” 62 TTABVUE 52, but its argument discusses only the Section 2(d) claim.
Id. at 52-53.
7 The Board reviewed these defenses sua sponte and found that certain of them were
impermissible collateral attacks on Concepts’ pleaded registrations. The Board struck those
defenses. 10 TTABVUE 6-7 (Opp. No. 91212993).
8 Wealth also originally counterclaimed to cancel Concepts’ registration of EMPIRICAL
SYSTEMS on a variety of grounds including fraud, non-use, and unclean hands. 4 TTABVUE
8-9 (Opp. No. 91212993) (Counterclaims ¶¶ 1-10). Concepts moved to dismiss the
counterclaims. 6 TTABVUE (Opp. No. 91212993). In response to the motion, the Board noted
that unclean hands is an affirmative defense, not a ground for cancellation, 10 TTABVUE 3
(Opp. No. 91212993), and dismissed the fraud and non-use claims. Id. at 6. The Board
subsequently denied without prejudice Wealth’s motion to amend its counterclaims. 11
TTABVUE 7-9 (Opp. No. 91212993). Wealth did not subsequently move to replead them.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
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D. Wealth’s Opposition No. 91203384 to Concepts’ Application to
Register EMPIRICAL FINANCIALS
Wealth opposes Concept’s Application Serial No. 85268585 to register
EMPIRICAL FINANCIALS in standard characters (FINANCIALS disclaimed) for
“computer software for use in accounting and auditing functions and activities;
computer software for use in project management of accounting and auditing
operations, and of computer projects; computer software for use in managing human
resources; computer software for use in timekeeping,” in International Class 9.
Wealth pleaded three claims in its Notice of Opposition:9 (1) EMPIRICAL
FINANCIALS is deceptive under Section 2(a) of the Act, 1 TTABVUE 4 (Not. of Opp.
¶¶ 3-4); (2) EMPIRICAL FINANCIALS is deceptively misdescriptive under Section
2(e)(1) of the Act, id. (Not. of Opp. ¶ 5); and (3) EMPIRICAL FINANCIALS so
resembles the trade name “Empirical Financial Services” that Wealth alleges was
previously used in the United States and not abandoned as to be likely, when used in
connection with the services identified in the opposed application, to cause confusion,
to cause mistake, or to deceive, under Section 2(d) of the Act. Id. at 5-6 (Not. of Opp.
¶¶ 6-17).10

9 Wealth’s motion for leave to file an Amended Notice of Opposition was denied, 21 TTABVUE
7-9, and the original Notice of Opposition remains operative.
10 Wealth’s Notice of Opposition also referred to, and attached USPTO database records for,
its Registration No. 3352355 (the “’355 Registration”) of the mark EMPIRICAL WEALTH
MANAGEMENT. 1 TTABVUE 4, 9-11 (Not. of Opp. ¶ 4; Ex. A). Wealth did not assert the
’355 Registration in its Section 2(d) claim, and in our previous opinion, we granted Concepts’
counterclaim in Opposition No. 91203384 to cancel the ’355 Registration.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 11 -

In its Amended Answer and Counterclaim, 10 TTABVUE 7-16, Concepts denied
the salient allegations of the Notice of Opposition and interposed affirmative defenses
that the trade name was merely descriptive, that Concepts has priority by virtue of
“tacking” prior use of other EMPIRICAL-formative marks onto its use of the applied-
for mark, and that Concepts owns a prior registration of EMPIRICAL.
In Wealth’s First Brief, Wealth pursued its deceptive misdescriptiveness and
likelihood of confusion claims. 61 TTABVUE 23-26. Wealth mentioned the Section
2(a) deceptiveness claim in passing, id. at 23, but did not present arguments or
evidence in support of it, arguing instead that “[r]egistration of EMPIRICAL
FINANCIALS should be denied because it is both merely descriptive and
misdescriptive of the goods using their plain meanings.” Id. at 25. In Concepts’ First
Brief, Concepts nevertheless addressed the deceptiveness claim, which includes in its
elements a showing that the subject mark is deceptively misdescriptive. 62
TTABVUE 24-25 (citing In re Budge, 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1998)).
We need to address the deceptiveness claim only if Wealth establishes deceptive
misdescriptiveness; if Wealth cannot establish deceptive misdescriptiveness, it
cannot establish deceptiveness; conversely, if it can establish deceptive
misdescriptiveness, we have the discretion not to consider the deceptiveness claim.
See Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013)
(holding that the Board has “discretion to decide only those claims necessary to enter
judgment and dispose of the case” because our “determination of registrability does
not require, in every instance, decision on every pleaded claim.”).
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
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As noted above, Wealth stated in Wealth’s First Brief that registration should be
refused because EMPIRICAL FINANCIALS is merely descriptive as to one of the
forms of software identified in the opposed application. 61 TTABVUE 25. Concepts
responds in Concepts’ First Brief that “Wealth did not raise a claim that [Concepts’]
EMPIRICAL FINANCIALS mark is merely descriptive,” and that “Wealth did not
assert a claim of merely descriptiveness in its Notice of Opposition, and thus Concepts
respectfully requests that the Board strike any such attempt to argue that claim at
trial in this matter.” 62 TTABVUE 26 n.4. In Wealth’s First Brief, Wealth
acknowledges that the “pleaded grounds are misdescriptiveness and deceptiveness
and likelihood of confusion with Wealth’s prior use of the trade name Empirical
Financial Services.” 61 TTABVUE 8. Because Wealth did not plead a mere
descriptiveness claim in its Notice of Opposition, 1 TTABVUE 4 (Not. of Opp. ¶¶ 3-
5), and Concepts objected to Wealth’s assertion of the claim in Wealth’s First Brief,
we have given it no consideration.11
In Concepts’ First Brief, Concepts pursued its affirmative defense of tacking, 10
TTABVUE 13 (Amended Ans. and Counterclaim ¶¶ 33-36), 62 TTABVUE 27, but
waived its other pleaded affirmative defenses by not discussing them. TiVo Brands,
129 USPQ2d at 1100-01.

11 In Wealth’s Second Brief, Wealth argued that “Concepts admitted in its answer in the
opposition that it admits that Wealth pleaded alternatively under Section 2(a) or 2(e)(1)
which includes being merely descriptive as well as being misdescriptive,” 63 TTABVUE 32,
and proceeded to argue mere descriptiveness. Id. We ignore these arguments because Wealth
admits that it pleaded a claim of deceptive misdescriptiveness, not mere descriptiveness, in
its Notice of Opposition. 61 TTABVUE 8.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 13 -

Accordingly, in Opposition No. 91203384 the remaining issues are Wealth’s
likelihood of confusion and deceptive misdescriptiveness claims under Sections 2(d)
and 2(e)(1) of the Act, and Concepts’ tacking defense.
II. Wealth’s Cancellation No. 92055549 Against Concepts’ ’573
Registration of EMPIRICAL CONCEPTS
Wealth asserts three grounds for cancellation of Concepts’ ’573 Registration of
EMPIRICAL CONCEPTS for “accounting services, namely, financial statement
preparation, data analysis, reconciliation of financial records, business process and
internal control reviews for accounting and information systems, and book-keeping,”
in International Class 35, and “financial software consulting; customized database
development,” in International Class 42.12
A. Mere Descriptiveness13
Concepts’ ’573 Registration is prima facie evidence of the validity of the mark, 15
U.S.C. § 1057(b), and “that includes the presumption that the mark subject thereof is
not merely descriptive of or generic for in relation to the [services].” Editorial Am.,
S.A. v. Gruner + AG & Co., 213 USPQ 498, 504 (TTAB 1982). Wealth “bears the
burden of proving that the mark is merely descriptive by a preponderance of the

12 The ’573 Registration issued on May 1, 2007 and has been renewed.
13 All four of the cases decided in our previous opinion were decided on the basis of claims of
mere descriptiveness. We refer the reader to our previous opinion for a detailed summary of
the applicable law, and we will discuss the applicable law in this opinion only to the extent
necessary to resolve Wealth’s claim. As noted above, Concepts did not defend that claim on
the alternative ground that Concepts is entitled to maintain its registration because the mark
has acquired distinctiveness under Section 2(f) of the Act. We thus do not discuss Wealth’s
arguments regarding acquired distinctiveness.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 14 -

evidence.” Hot Grabba Leaf, 2019 USPQ2d 149089, *5 (citing DuoProSS Meditech
Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1756 (Fed. Cir.
2012)); Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370,
1374 (Fed. Cir. 2018).
1. The Parties’ Arguments
a. Wealth
Wealth argues that “Concepts gives the definition for EMPIRICAL on their
website (originating in or based on observation and experience) and says that they
are true to their name, meaning that the terms describes [sic] their business.” 61
TTABVUE 36. Wealth claims that “[t]his is an admission against interest in the term
as being merely descriptive,” id., and that Concepts’ witness Gary Jones “has testified
that EMPIRICAL is descriptive of the philosophy of his business, that’s why he picked
it.” Id. Wealth further argues that the word CONCEPTS is descriptive based on Mr.
Jones’ testimony and a “standard practice for the USPTO trademark examiners to
require disclaimers of CONCEPT(S) in similar uses as being descriptive.” Id. at 35-
36.
Wealth concludes that “[b]oth EMPIRICAL and CONCEPTS are descriptive
terms and they are terms that do not change their meaning when combined as a
whole,” id. at 37, because “[a]dding CONCEPTS doesn’t change the meaning of
EMPIRICAL CONCEPTS.” Wealth contends that the ’573 Registration “should be
revoked for containing terms that are not disclaimed that are unregistrable.” Id.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 15 -

b. Concepts
Concepts argues that a “mere descriptive connotation shall not preclude
registration where the mark requires a consumer to exercise imagination in order to
determine the nature of the services that are offered under the mark,” and that
“suggestive marks differ insofar as they require imagination, thought, or perception
to reach a conclusion as to the nature of the services.” 62 TTABVUE 43. Concepts
attacks Wealth’s citation of third-party registrations on the ground that they are not
properly of record and should not be considered, id. at 44, but that even if they were
considered, they pertain to goods and services different from those at issue here. Id.
With respect to Mr. Jones’ testimony about the word CONCEPTS, Concepts claims
that it “in no way suggests the term is descriptive in any way of the services offered
under the EMPIRICAL CONCEPTS mark.” Id.
As to the word EMPIRICAL, Concepts claims that the inclusion of a definition of
“empirical” on its website and a reference to being “true to its name” is at best
evidence of suggestiveness. Id. at 44-45. Concepts disputes Wealth’s characterization
of Mr. Jones’ testimony, arguing that he “did not testify that either of these terms
were descriptive of Concepts’ services,” but rather “testified expressly that neither
term is descriptive.” Id. at 45. Concepts claims that his discussion of descriptiveness
on cross-examination was clarified on redirect examination. Id. Finally, Concepts
points to Mr. Smith’s testimony, discussed in our previous opinion in connection with
the degree of descriptiveness of Wealth’s EMPIRICAL WEALTH MANAGEMENT
mark, regarding “the descriptive nature of EMPIRICAL vis-à-vis Wealth’s services,
contrasting that with the lack of descriptiveness as it relates to Concepts’ services.”
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 16 -

Id. Concepts claims that “Wealth’s own witness acknowledges the lack of
descriptiveness of the EMPIRICAL-formative marks vis-à-vis Concepts’ services,”
and that this “admission is fatal to its claim.” Id.
2. Analysis of Mere Descriptiveness
Because the EMPIRICAL CONCEPTS mark contains two elements, we are
“required to examine the meaning of each component individually, and then
determine whether the mark as is whole is merely descriptive.” DuoProSS, 103
USPQ2d at 1758. We begin with Mr. Jones’ testimony regarding the significance of
the elements of the EMPIRICAL CONCEPTS mark, and the evidence of the
significance of the word EMPIRICAL in Concepts’ business. Concepts has used a
website accessible through the domain names empiricalcpa.com and
empiricalconcepts.com. Jones Tr. 11:10-20; Ex. 3. Mr. Jones testified that his
company did not have a website for part of its existence as Concepts, Jones Tr. 15:4-
16:3, and he did not specify when the website first became operational, although he
thought that it was probably 2007. Jones Tr. 11:21-12:1; 85:17-86:4. A page from the
website bearing a 2007 copyright notice is reproduced below:
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 17 -

Jones Tr. 10:5-12:1; Ex. 3. This webpage touts Concepts’ proficiency and describes its
team and the services that it provides, but does not explain the origin of its
EMPIRICAL CONCEPTS mark, or how the mark describes Concepts’ services.
Mr. Jones also testified about subsequent webpages from 2015. Jones Tr. 25:5-20;
Ex. 5. They use the word “Empirical” alone in various places, and contain a definition
of that word and a description of the company. Jones Tr. 26:9-12; Ex. 5. We reproduce
the pertinent portion below:
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 18 -

This page defines “empirical” as “originating in or based on observation or
experience.” Mr. Jones testified that his intention in including the definition was not
necessarily to equate the word “empirical” with its definition, but to give customers
“a sense of what [Empirical] means to us, basically, in this context as kind of our
philosophy and the way we approach our -- I guess providing our services.” Jones Tr.
26:13-20. He explained this philosophy and approach as follows:
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 19 -

So the way, you know, I personally approach it and the way
I basically led my team to approach the obstacles and
challenges and the way we’re providing services through
observation and experience, we want to leverage in order
to make and provide solutions that will help improve their
financial management environment. So that may include
development of automated tools or other things, but that
was the basically strongest position that I guess I could say
that we took to say this is your problem, we want to
understand it, we want to see how it works, see the
nuances. Then from there, we can apply that knowledge
and understanding basically through observation and
review to see how we can better improve that operation or
business process or accounting practice. So this is basically
our philosophy in approaching our solutions, providing our
solutions to our clients.
Jones Tr. 26:21-27:17.
Mr. Jones testified that the word “empirical” is “more of a scientific term that we
kind of use more frequently in basically engineering and more as a science major,”
and he opined that “I wouldn’t think that the general public would have knowledge
that Empirical means this, because it’s more of a factual test-based, experience-based
reference that people use in the scientific community.” Jones Tr. 28:3-8. He claimed
that “empirical” would have “no meaning in the financial community as to say this is
just not something that is regularly or commonly used.” Jones Tr. 28:9-11. He
acknowledged, however, that “empirical” is descriptive of a scientific method of
observation and experience, Jones Tr. 90:2-8, and he testified that it was “the
approach, a methodology that we took towards understanding and providing services
to our client,” and “the approach or philosophy that we use in approaching or
providing solutions to our client.” Jones Tr. 90:16-21; 91:3-6.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 20 -

According to Mr. Jones, the use of the words EMPIRICAL and CONCEPTS
together “was basically a way to provide additional information about - - you know,
just to give the company a name.” Jones Tr. 92:5-7. He testified that “the most
descriptive element is the ‘Empirical’ part,” Jones Tr. 92:13-14, but explained later
that what he meant by that was that “Empirical” was “the most recognizable
elements and the most distinctive element of the combination,” Jones Tr. 127:7-11,
that “Empirical” was “the main thing that sets us apart from all the other companies,”
and that “Empirical” was the most distinctive part of the mark. Jones Tr. 126:18-22.
He explained that “Empirical” was “the name that coincided with us, that that was
the name that we could use to describe our organization or basically name our
organization.” Jones Tr. 127:15-18. He acknowledged that he did not understand how
the term “descriptive” is used in trademark law. Jones Tr. 128:14-16.
Taken together, Mr. Jones’ testimony and the 2015 webpage establish that the
word EMPIRICAL in Concepts’ mark describes “the approach, a methodology that we
took towards understanding and providing services to our client,” Jones Tr. 90:16-21,
and “the approach or philosophy that we use in approaching or providing solutions to
our client.” Jones Tr. 91:3-6. Like Wealth’s website discussed in our previous opinion,
Concepts’ 2015 website defines the word “empirical” as “originating in or based on
observation or experience,” and states that “true to [its] name,” Concepts (identified
on the page simply as “Empirical”) “was founded on the premise that great solutions
are based on knowledge, experience and sound observation,” closely tracking the
definition of “empirical” as “originating in or based on observation or experience.” The
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
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page communicates what Mr. Jones described in his testimony as Concept’s empirical
philosophy and approach to its business, that is (as he put it), “a method that you
take to arrive at a particular conclusion,” Jones Tr. 29:13-21, and “that through
observation and experience, how we -- the methodology or approach that we use to,
you know, basically solve things for our clients.” Jones Tr. 92:1-4. He testified that
EMPIRICAL “is the philosophy that we approach in doing the work that we do.” Jones
Tr. 128:2-3. We find that the word EMPIRICAL in Concepts’ mark describes a feature
or attribute of the identified “accounting services, namely, financial statement
preparation, data analysis, reconciliation of financial records, business process and
internal control reviews for accounting and information systems, and book-keeping,”
and “financial software consulting; customized database development,” namely, that
they are rendered on the basis of an approach involving observation and experience.
The issue, however, is not whether EMPIRICAL alone is merely descriptive.14 We
must determine whether CONCEPTS is also descriptive and, if it is, whether the
combination of EMPIRICAL and CONCEPTS in the mark “conveys any distinctive
source-identifying impression contrary to the descriptiveness of the individual parts.”
In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1515-16 (TTAB 2016) (internal
quotation omitted).
Wealth argues that “[b]oth EMPIRICAL and CONCEPTS are descriptive terms
and they are terms that do not change their meaning when combined as a whole.” 61

14 That was the issue on Wealth’s mere descriptiveness counterclaim in Opposition No.
91205142 to cancel Concepts’ registration of EMPIRICAL, but as discussed above, Wealth
waived this claim by not pursuing it in Wealth’s First Brief.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 22 -

TTABVUE 37. To show that CONCEPTS is a descriptive term, Wealth cites Mr.
Jones’ testimony that CONCEPTS “‘was just a term that we added to the end of our
name because our business is a concept,’” id. at 36 (citing Jones Tr. 91:7-15), as well
as third-party registrations in which the word CONCEPTS has allegedly been
disclaimed. Id. at 35-36. Concepts also asks the Board to take judicial notice of the
meaning of “concepts as an ‘idea for something new’ or a similar definition.” Id. at 36.
The word CONCEPTS has no obvious descriptive meaning as part of the
EMPIRICAL CONCEPTS mark in the context of the services identified in the ’573
Registration. CONCEPTS was not disclaimed in the EMPIRICAL CONCEPTS
mark,15 unlike the generic or highly descriptive terms WEALTH MANAGEMENT,
FINANCIAL SERVICES, and INVESTING that were disclaimed in Wealth’s marks
EMPIRICAL WEALTH MANAGEMENT, EMPIRICAL FINANCIAL SERVICES,
and EMPIRICAL INVESTING discussed in our previous opinion.
Mr. Jones’ testimony does not establish such a descriptive meaning. The cited
statement that CONCEPTS “‘was just a term that we added to the end of our name
because our business is a concept,’” id. at 36, is one line out of his testimony about
the meaning of CONCEPTS on both cross-examination and redirect examination. He
testified as follows on cross-examination:
It’s really to describe – it’s basically just an addition to our
name to give it more, I guess – what’s the best way to say
it? I guess it was just a term that we added to the end of
our name because our business is a concept. Basically, it’s

15 During prosecution of the application that matured into the ’573 Registration, the
examining attorney required a disclaimer of EMPIRICAL, not CONCEPTS, but subsequently
withdrew that requirement.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 23 -

an understanding, or I guess you could say that it’s a
general approach, I guess you can say or a general thought
process. . . . “Concepts” was basically a way to provide
additional information about – you know, just to give the
company a name. . . . I’m saying that, one, I don’t remember
the actual textbook definition of “concepts”; and then, two,
I’m saying that that is not the most descriptive element of
our name. The most descriptive element is the “Empirical”
part.
Jones Tr. 91:7-17; 92:5-7, 10-14. On redirect examination, he discussed the relative
significance of the words EMPIRICAL and CONCEPTS in the EMPIRICAL
CONCEPTS mark, testifying that he “guess[ed]” that EMPIRICAL was “the most
distinguishable component of the two,” “the main thing that sets us apart from all
the other companies,” and the “[m]ost distinctive” word in the mark. Jones Tr. 126:6-
22. He claimed that this was so “because you can drop the ‘Concepts’ and still know
you’re talking about us, but if you have just ‘Concepts’, then you wouldn’t know who
we were,” Jones Tr. 127:3-6, and he acknowledged that the word CONCEPTS does
not identify the company specifically. Jones Tr. 128:11-13.
Mr. Jones’ testimony in its entirety is nebulous about what (if anything) the word
CONCEPTS means in the context of the services identified in the ’573 Registration.
While he described EMPIRICAL as “a method that you take to arrive at a particular
conclusion,” Jones Tr. 29:19-20, with respect to CONCEPTS, he stated variously that
“our methodology, or approach is a concept,” Jones Tr. 29:17-18, “our business is a
concept,” Jones Tr. 91:14-15, and that CONCEPTS is “an understanding, or I guess
you could say that it’s a general approach . . . a general thought process,” Jones Tr.
91:15-17, or “basically a way to provide additional information about – you know, just
to give the company a name.” Jones Tr. 92:5-7. His testimony regarding the meaning
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
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of the word CONCEPTS in the EMPIRICAL CONCEPTS mark does not establish
that CONCEPTS is merely descriptive.
Wealth also cites third-party registrations of marks in which CONCEPTS has
been disclaimed in support of its claim that it is “standard procedure for the USPTO
trademark examiners to require disclaimers of CONCEPT(S) in similar uses as being
descriptive,” 61 TTABVUE 35. “Third-party registrations are admissible and
competent to negate a claim of exclusive rights in [a term] and the disclaimers are
evidence, albeit not conclusive, of descriptiveness of the term,” Sweats Fashions Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797 n.1 (Fed. Cir. 1987), but
the ones cited by Wealth are not probative of the descriptiveness of CONCEPTS for
the accounting and financial software consulting services identified in the ’573
Registration. Wealth’s third-party registrations cover mental health services; martial
arts instruction services; printed materials and education services relating to
physical therapy; seminars in the field of insurance and financial planning; services
in various sciences and technologies, including engineering, materials science,
construction, physics, and chemistry; consulting services in the fields of visualization
techniques and systems engineering; providing review courses in the field of a
medical examination; electronic equipment and apparatus for water treatment and
control, and various engineering services; software design and consulting services,
and information consulting services; and contract manufacture of consumer products.
47 TTABVUE 3-39. Only registrations of THE INFINITE BANKING CONCEPT for
seminars in the field of insurance and financial planning, id. at 14-16, and MANGO
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 25 -

CONCEPT for software design and consulting services, id. at 33-35, involve services
that are arguably at all similar to those identified in the ’573 Registration, and
because the record does not contain the file histories of those registrations we cannot
determine why a disclaimer of CONCEPTS was entered in each of them. These two
registrations do not support Wealth’s claim that CONCEPTS is descriptive of the
accounting and financial software consulting services with which the EMPIRICAL
CONCEPTS mark is used.
Finally, we decline Wealth’s request that we take judicial notice of the alleged
definition of the word “concepts” as an “idea for something new,” 61 TTABVUE 36,
because Wealth did not attach the definition to its brief, or even identify its source.
With respect to the combination of EMPIRICAL and CONCEPTS, Wealth argues
that “[a]dding CONCEPTS doesn’t change the meaning of EMPIRIAL CONCEPTS”
and “[i]n fact, Concepts jeopardizes the status of EMPIRICAL by engaging in a course
of conduct which educates the public to regard the term as a descriptive or commonly
descriptive expression.” 63 TTABVUE 15. In support of this argument, Concepts cites
the following portion of Mr. Jones’ testimony:

id. (citing Jones Tr. 29:16-21), as well as In re Cooper, 196 USPQ 182 (TTAB 1977).
This snippet of Mr. Jones’ testimony does not show that the EMPIRICAL CONCEPTS
mark as a whole is merely descriptive, or that Concepts has “engage[d] in a course of
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 26 -

conduct which educates the public to regard the term as a descriptive or commonly
descriptive expression.” Id. at 187.
The EMPIRICAL CONCEPTS mark as a whole may be highly suggestive of the
accounting and financial software consulting services identified in the ’573
Registration, but we find that Wealth failed to prove by a preponderance of the
evidence that the EMPIRICAL CONCEPTS mark as a whole is merely descriptive of
those services. Wealth’s claim under Section 2(e)(1) of the Act is dismissed.
B. Use of EMPIRICAL CONCEPTS Solely as a Trade Name
Wealth claims that EMPIRICAL CONCEPTS has been used “solely as a trade
name and not a service mark.” 61 TTABVUE 34.
1. Applicable Law
A “trade name” is “any name used by a person to identify his or her business or
vocation,” while “a ‘service mark’ is any word, name, symbol, or device, or any
combination thereof, used to identify and distinguish services from those of others
and to indicate the source of those services.” Martahus v. Video Duplication Servs.,
Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993) (citing Nat’l Cable Television
Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1427-28
(Fed. Cir. 1991) and 15 U.S.C. § 1127). “‘A designation used only as a ‘trade name’
cannot be federally registered as a trademark or a service mark. Only if the
designation is also used as a trademark or a service mark can it be federally
registered.’” Stawski v. Lawson, 129 USPQ2d 1036, 1045 (TTAB 2018) (quoting 1
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 9:3 (5th ed. Sept. 2018
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 27 -

update)). See also In re Letica Corp., 226 USPQ 276, 277 (TTAB 1985) (“trade names
qua trade names do not qualify for registration.”).
“The question of whether a name used as a trade name or a part thereof also
performs the function of a trademark and/or a service mark is one of fact” and is
“determined from the manner in which the name is used and the probable impact
thereof upon purchasers and prospective customers.” In re Univar Corp., 20 USPQ2d
1865, 1866 (TTAB 1991).
2. The Parties’ Arguments
a. Wealth
Wealth argues that “Concepts admits that EMPIRICAL and EMPIRICAL
CONCEPTS are used by Concepts as a legal business name and not a trademark”
and that Mr. Jones “misunderstands the meaning and purpose of a USPTO
trademark application believing that it is a type of business name application.” 61
TTABVUE 12. On the latter point, Wealth cites the testimony set forth below:

Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 28 -

Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 29 -

Id. at 12-14 (Jones Tr. 9:17-21; 108:20-111:17). In Wealth’s Second Brief, Wealth
argues that “the Jones testimony reveals that Jones does not understand the
difference between trade names and trademarks and other concepts involved in this
proceeding,” and that this “is not an excuse for nonuse, abandonment, or failure to
function as a trademark” because “Jones, or the attorney for Jones, was obligated to
read and understand what he was signing as well as investigate the accuracy of his
statements in the application to confirm evidentiary support prior to registration and
submission to the USPTO.” 63 TTABVUE 33.
Wealth also argues that “[a]ll of Mr. Jones’ testimony alleges use of EMPIRICAL
as the shortened version of [the] company’s name,” and that “[w]ebpages support this
and Jones’ understanding supports this as well.” 61 TTABVUE 34. Wealth cites
Concepts’ 2006 specimen of use in arguing that the “statements made in this
document” under the heading “Corporate Profile,” including the sentence “Empirical
Concepts is an emerging industry leader,” clearly show “the business entity
descriptive information” because “Empirical Concepts is short for Empirical
Concepts, Inc.” Id. (citing 49 TTABVUE 49).16 Wealth also points to other “trade name
uses at empiricalcpa.com and empiricalconcepts.com where EMPIRICAL
CONCEPTS is used solely as a trade name.” Id. (citing 52 TTABVUE 28, 36-46). The
cited materials are the webpages shown and discussed below in connection with
Wealth’s abandonment claim.

16 A page from the TSDR database appears at the cited page at 49 TTABVUE. The language
cited by Wealth is in Concepts’ specimen of use, which appears at 49 TTABVUE 18.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 30 -

b. Concepts
Concepts responds that “Wealth propounds no evidence or authority sufficient to
carry its burden on this claim.” 62 TTABVUE 40. Concepts claims that “EMPIRICAL
CONCEPTS is used as both” a trade name and a service mark, “as the evidence of
record, including the evidence cited by Wealth, clearly demonstrates.” Id.
3. Analysis of Trade Name Claim
There is no dispute that “Empirical Concepts, Inc.” and “Empirical Concepts” have
been used by Concepts as trade names, but as the Federal Circuit has explained, a
“trade name which also has significance as either a trademark or service mark may
be registered.” Martahus, 27 USPQ2d at 1850. We agree with Concepts that the
record shows such dual significance.
Wealth relies heavily on Mr. Jones’ testimony regarding his understanding of
trademark registration law. 61 TTABVUE 12-14, 34. It is hardly surprising that a
lay witness like Mr. Jones might not “understand the difference between trade names
and trademarks,” 63 TTABVUE 33, because, as the Board observed over 40 years ago,
“[t]he distinction between trade name use and either trademark or service mark use
is often a difficult one to make and is nebulous in character.” In re Unclaimed Salvage
& Freight Co., 192 USPQ 165, 167 (TTAB 1976). Mr. Jones’ possible
misunderstanding of the subtleties of trademark law is irrelevant, however, because
what matters is whether his company has used EMPIRICAL CONCEPTS as a service
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 31 -

mark as well as a trade name, not whether he could distinguish between the two
types of uses.17
Wealth cites Concepts’ original specimen of use as key evidence of trade name use
because it contains what Wealth awkwardly calls “the business entity descriptive
information.” 61 TTABVUE 34. “Empirical Concepts, Inc.” is displayed at the bottom
of the specimen together with contact information for the company:
18
and this is classic trade name use. See, e.g., In re The Ark. Rice Growers Coop. Ass’n,
185 USPQ 185 (TTAB 1975). But the entire specimen (shown below) was accepted by
the USPTO as evidence of use of EMPIRICAL CONCEPTS as a service mark for the
services identified in the ’573 Registration because it reflects dual use of EMPIRICAL
CONCEPTS as a service mark and a trade name. See TRADEMARK MANUAL OF
EXAMINING PROCEDURE Section 1202.01 (Oct. 2018) (“If subject matter presented for
registration in an application is a trade name or part of a trade name, the examining

17 Wealth’s citation of Hurley Int’l LLC v. Volta, 82 USPQ2d 1339 (TTAB 2007), 63 TTABVUE
33, is similarly misplaced. That case did not involve the distinction between trademark use
and trade name use, but rather whether the applicants had committed fraud on the USPTO
by submitting a use-based application in which they inaccurately averred use of the applied-
for mark in commerce in connection with multiple services under a claimed mistaken belief
as to what constitutes such use. As discussed above, no fraud claim is before us.
18 Id.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 32 -

attorney must determine whether it is also used as a trademark or service mark, by
examining the specimen and other evidence of record in the application file.”).
19
Wealth also claims that the webpages shown and discussed below in connection
with Wealth’s abandonment claim (52 TTABVUE 28, 36-46) embody solely trade
name use of EMPIRICAL CONCEPTS. These pages are similar in nature to the page
reproduced immediately above to the extent that they use “Empirical Concepts” in
text to identify the source of the listed services. Even assuming, however, that these
textual uses are not as a service mark, the record shows that Concepts has used

19 August 2, 2006 Response to Office Action at TSDR 11.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 33 -

EMPIRICAL CONCEPTS as a service mark in other materials. Mr. Jones testified
that the first use of the EMPIRICAL CONCEPTS mark was on a brochure in or
around June 2005, Jones Tr. 69:2-10; Ex. 7, and that Concepts renewed the
registration of EMPIRICAL CONCEPTS based on his use of the mark in the
company’s promotional materials, Jones Tr. 111:18-112:3, specifically the brochure
reproduced again below, which was accepted by the USPTO in 2013 as a specimen of
use of Concepts’ continuing use of the mark:
20

20 The April 30, 2013 Specimen of Use was accepted by the USPTO on May 10, 2013.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 34 -

Wealth has failed to prove by a preponderance of the evidence that Concept used
EMPIRICAL CONCEPTS solely as a trade name, and that claim is dismissed.
C. Abandonment by Nonuse
Wealth claims that “[i]f EMPIRICAL CONCEPTS was ever in use as a service
mark, this used has been abandoned by Concepts.” 61 TTABVUE 34.
1. Applicable Law
“Abandonment due to nonuse of a mark has been defined as use that
[H]as been discontinued with an intent not to resume such
use. Nonuse for 3 consecutive years shall be prima facie
evidence of abandonment. ‘Use’ of a mark means the bona
fide use of such mark made in the ordinary course of trade,
and not made merely to reserve a right in a mark.”
Double Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, *11 (TTAB 2019)
(citing 15 U.S.C. § 1127). Wealth must show abandonment by nonuse by a
preponderance of the evidence. Id. at *15; Exec. Coach Builders, Inc. v. SPV Coach
Co., 123 USPQ2d 1175, 1180-81 (TTAB 2017).
2. The Parties’ Arguments
a. Wealth
Wealth argues that there “is no clear link between EMPIRICAL CONCEPTS and
any of the services on any of the web pages” in the record, 61 TTABVUE 34, and that
“many of the statements regarding Empirical on the web pages were false statements
and were actually statements about Jones as an individual or about” predecessor
companies to Concepts. Id. Wealth also argues that Mr. Jones “admit[ted] that the
CONCEPTS portion of the mark was abandoned almost immediately in 2005 and [he]
intended the abandonment because it was easier” to use Empirical alone, id. at 35,
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 35 -

that “[c]hanges to the website in 2015 reflect the intent not to resume use,” id., and
that Mr. Jones “does not testify regarding any intent to resume use.” Id.
b. Concepts
Concepts responds that Wealth “apparently acknowledg[es] [that] Concepts’ web
page includes the EMPIRICAL CONCEPTS mark,” and “provides no authority . . .
that mandates a so-called ‘clear link’ between the mark and the services provided” on
the webpage. 62 TTABVUE 42. Concepts argues that Wealth fails to explain “how
alleged false statements on a website about the inception of the company . . . show
abandonment of the mark over a decade later,” id., that Wealth’s arguments are
based on “a series of unsupported claims that the EMPIRICAL CONCEPTS mark
had been abandoned at the time the petition for cancellation was filed,” id., and that
Wealth’s argument that “changes to the website in 2015 ‘reflect the intent not to
resume use’” are “specious, and are contradicted by the very ‘evidence’ that Wealth
cites in support.” Id. (citing 52 TTABVUE 36). Finally, Concepts argues that exhibits
to Mr. Jones’ deposition, and the file history of the ’573 Registration, including the
specimen filed in support of Concepts’ April 30, 2013 Section 8 declaration,
“conclusively demonstrate[ ] that the EMPIRICAL CONCEPTS mark has been used
in U.S. Commerce from a time long prior to Wealth’s claim of abandonment, and such
use continue[d]” as of June 2016. Id.
3. Analysis of Abandonment Claim
Concepts applied to register EMPIRICAL CONCEPTS on June 24, 2005 under
Section 1(a) of the Act on the basis of Concepts’ allegation of first use of the mark
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 36 -

anywhere and in commerce at least as early as May 4, 2005.21 Concepts did not
submit specimens of the claimed use when it filed its application, but it subsequently
did so under cover of Mr. Jones’ declaration, which stated that the specimen for the
services in both Class 35 and Class 42 had been in use at least as early as the filing
date of the application.22 The specimen is reproduced above in connection with our
discussion of Wealth’s trade name claim. The USPTO accepted the specimen and the
’573 Registration issued on May 1, 2007.
To prove the first element of its nonuse abandonment claim, Wealth must show
that Concepts ceased use of the EMPIRICAL CONCEPTS mark at some point. Exec.
Coach Builders, 123 USPQ2d at 1180. Wealth first claims that Mr. Jones admitted
that Concepts ceased use of the mark in 2005, shortly after its use began. Wealth
cites his testimony set forth below:

21 The file history of the ’573 Registration is automatically of record pursuant to Trademark
Rule 2.121(b).
22 August 2, 2006 Response to Office Action at TSDR 10. Mr. Jones described the specimen
as an “advertisement document brochure.” Jones Tr. 67:9-69:10; Ex. 7.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 37 -

61 TTABVUE 11-12 (Jones Tr. 7:16-8:15, 21-22; 128:11-13).23
Mr. Jones’ testimony does not show that “EMPIRICAL CONCEPTS was
abandoned as a business name and trademark right at the beginning of its use.” Id.
at 11. It shows only that Mr. Jones and customers promptly began shortening
EMPIRICAL CONCEPTS to EMPIRICAL alone in oral uses of the mark, a practice
that has been recognized as common for decades. See In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 219 (CCPA 1978) (“[T]he users of language have a universal
habit of shortening full names—from haste or laziness or just economy of words”)
(Rich, J., concurring); see also In re Bay State Brewing Co., 117 USPQ2d 1958, 1961

23 Mr. Jones also testified that Concepts’ customers often refer to the company simply as
“Empirical.” Jones Tr. 9:4-16.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 38 -

(TTAB 2016) (noting the “penchant of consumers to shorten marks”). As Mr. Jones
put it elsewhere in his testimony, “I used Empirical as part of my general discussions,
but for legal matters, I had to use Empirical Concepts,” Jones Tr. 82:18-83:2, and “it
became cumbersome to use the whole name. It’s similar to my personal name where
people call me Gary versus trying to use Antrium.” Jones Tr. 83:20-84:1.24 Mr. Jones
testified that Concepts’ specimen of use, reproduced above, was in use at least as
early as June 2005, and his testimony and the specimen show that the entire mark
was used in written materials in 2005 notwithstanding its truncation in speech, and
later in certain places on Concepts’ website.
Wealth also relies on pages from Concepts’ website that Wealth claims show “no
clear link between EMPIRICAL CONCEPTS and any of the services” for which the
mark is registered. 61 TTABVUE 34 (citing 52 TTABVUE 28, 36-46). Wealth cites
the 2015 webpage shown above in our discussion of Wealth’s mere descriptiveness
claim, and webpages from 2007, 2008, 2010, 2011, 2013, and 2014 archived on
archive.org. 52 TTABVUE 36-41, 45-46.25 The EMPIRICAL CONCEPTS mark
appears in text on each of the latter set of pages. We reproduce one example below:

24 Mr. Jones also testified about some of Concepts’ earliest webpages that similarly used
“Empirical” alone in text as an internal shorthand for “Empirical Concepts” or “Empirical
Concepts, Inc.,” Jones Tr. 10:5-11:13; 13:3-15:3; Ex. 3; 17:4-25:1; Ex. 4, and that the full
corporate name “Empirical Concepts, Inc.” has often been shortened to “Empirical” in
conversations and in written materials. Jones Tr. 7:19-8:10, 21-22; 13:20-15:3; 16:4-20; 24:4-
25:1; 83:17-84:1.
25 Mr. Jones testified on cross-examination that Concepts’ website remained largely
unchanged from 2007 until sometime around 2013. Jones Tr. 85:17-86:17; 87:11-88:13, 17-
22.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 39 -

26
Wealth’s argument—that these uses “show no clear link” to the services for which
the mark is registered—is unavailing. The issue before us is not whether the pages
would suffice as a specimen of use of the mark for purposes of securing its
registration, where a direct association of the mark and the services must be clear
from the specimen. See, e.g., In re WAY Media, Inc., 118 USPQ2d 1697, 1698 (TTAB
2016). The issue is whether the webpages show that Concepts ceased all use of the
EMPIRICAL CONCEPTS mark. The use of “Empirical Concepts” in text on these

26 Id. at 40.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 40 -

webpages from 2007, 2008, 2010, 2011, 2013, and 2014 shows the opposite. See Exec.
Coach Builders, 123 USPQ2d at 1181 (stating that in determining whether the
opposer had ceased use of the ARMBRUSTER/STAGEWAY mark for luxury vehicles,
the Board would assess “the evidence of use of the mark by Opposer on vehicles” as
well as “other uses asserted by Opposer”).
The 2015 webpage shown above does not contain the EMPIRICAL CONCEPTS
mark in text, but we cannot find from the absence of the mark on a single webpage
that Concepts ceased all use of the mark at that time, or that any “[c]hanges to the
website in 2015 reflect the intent not to resume use,” as Wealth claims. 61 TTABVUE
35. Concepts used the EMPIRICAL CONCEPTS marks not only on its website, but
also in printed advertising materials. Mr. Jones acknowledged that the mark does
not appear on the 2015 webpage, Jones Tr. 25:17-26:8; Ex. 5, but testified that
Concepts used EMPIRICAL CONCEPTS in what he described as “documents that
I’m using in the regular course of business,” Jones Tr. 108:20-109:13, and that
Concepts was “using it on our materials” when the registration was maintained in
2013 through the submission of the advertising brochure specimen, Jones Tr. 111:18-
22, which we reproduce again below:
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 41 -

27
He described the manners of use of the mark in such documents as “either in the
wording or in the text or in the footers, the headers,” Jones Tr. 112:13-15, including
in the 2013 specimen and in other materials. Jones Tr. 114:7-21.
In addition, the file history of the ’573 Registration shows that the EMPIRICAL
CONCEPTS mark was used on Concepts’ website, on the webpages it submitted in
November 2017 in support of its Section 8 declaration to renew the registration. E.g.:

27 Concepts’ April 30, 2013 Section 8 declaration supported by this specimen was accepted by
the USPTO on May 10, 2013.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 42 -

28
Wealth has failed to prove by a preponderance of the evidence that Concepts
ceased use of the EMPIRICAL CONCEPTS mark. Cf. Exec. Coach Builders, 123
USPQ2d at 1184 (finding abandonment where testimony of opposer’s witness
regarding past use and intended use of mark was “indefinite and internally
inconsistent; unsupported by documentary evidence; and contradicted by the

28 November 1, 2017 Specimen of Use. The USPTPO accepted the Section 8 declaration and
renewed the registration on December 1, 2017.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 43 -

documentary evidence that is of record, as well as by the clear and consistent
testimony of eight other trial witnesses”). Wealth’s abandonment claim is dismissed.
D. Conclusion
Wealth failed to prove any of its claims in Cancellation No. 92055549. Wealth’s
Amended Petition to Cancel is denied.
III. Wealth’s Counterclaim to Cancel Concepts’ ’022 Registration of
EMPIRICAL in Opposition No. 9120514229
Wealth’s only remaining claim on its counterclaim is that Concepts has used
EMPIRICAL solely as a trade name.
A. The Parties’ Arguments
1. Wealth
Wealth cites Mr. Jones’ testimony regarding the differences between marks and
trade names quoted and discussed above. 61 TTABVUE 12-14. Wealth also argues
that “Jones admits that EMPIRICAL is the name of the business,” and that “[b]oth
Jones testimony and the exhibits to testimony confirm that references to
EMPIRICAL by Concepts are references to the business name.” Id. at 29. Wealth
points specifically to the following two excerpts from a page on Concepts’ 2015
website:

29 The ’022 Registration issued on October 27, 2009 and has been renewed.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 44 -

Id. (citing 52 TTABVUE 43). Wealth claims that “[t]hese sentences describe a
business and not a source of goods and services,” id., and argues that a “corporate
name is technically not a mark.” Id. (citing Armstrong Cork Co. v. World Carpets,
Inc., 597 F.2d 496, 203 USPQ 19 (5th Cir. 1979)).
In Wealth’s Second Brief, Wealth argues that “Concepts showed no examples
whatsoever of the rendering of this mark in commerce to show that it was used for
more than just a trade name.” 63 TTABVUE 33.
2. Concepts
Concepts responds that EMPIRICAL is used as both a service mark and a trade
name, “as the evidence of record, including the evidence cited by Wealth, clearly
demonstrates.” 62 TTABVUE 49. Concepts cites Mr. Jones’ testimony “about his use
of EMPIRICAL in connection with Concepts’ offering of various accounting services”
and the “exhibits introduced during the Jones deposition,” which Concepts claims
“demonstrate use of the EMPIRICAL mark prominently displayed at the top of each
web site.” Id. at 49-50 (citing Jones Tr. Exs. 3-4). Concepts dismisses Wealth’s citation
of Armstrong Cork on the ground that even if a corporate name is not technically a
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 45 -

mark, the case “does not stand for the proposition that a certain designation cannot
be both a trade name and a trade mark.” Id. at 50.30
B. Analysis of Trade Name Claim
As explained above, Mr. Jones’ testimony regarding his understanding of the
differences between trade names and trademarks is irrelevant. Wealth’s claim that
“EMPIRICAL is the name of the business,” 61 TTABVUE 29, similarly misses the
mark. Although the record contains uses of “Empirical” as a trade name (more
precisely, as a shorthand for Concepts’ formal corporate name, Empirical Concepts,
Inc.), such as the footer on Concepts’ 2015 webpage reproduced below:

52 TTABVUE 44, there is ample evidence of use of EMPIRICAL as a service mark for
the goods identified in Concepts’ registration. This includes Concepts’ 2015 webpage
from which Wealth lifts the textual snippets that it cites as a description of a
“business and not a source of goods and services.” 61 TTABVUE 29. We reproduce
below the pertinent portions of that webpage:

30 We agree with Concepts that Armstrong Cork is inapposite. Wealth cites it in both this case
and in Cancellation 92055549 for the proposition that “a corporate name is technically not a
mark.” 61 TTABVUE 29, 34. The Fifth Circuit made that statement in a footnote that reads
as follows: “We recognize that a corporate name is technically not a mark, but for simplicity’s
sake, we will use the term ‘mark’ to refer to Armstrong’s proposed corporate name as well as
to World’s trademark.” Armstrong Cork, 203 USPQ at 24 n.8. The court’s explanation of its
nomenclature has nothing to do with the distinction between trademark and trade name use
for registration purposes.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 46 -

52 TTABVUE 43. Wealth argues that the textual uses of “Empirical” “describe a
business and not a source of goods and services.” 61 TTABVUE 29. Assuming once
again that these uses are not uses of EMPIRICAL as a service mark, the webpage
shows use of EMPIRICAL as a service mark on the page’s masthead. Indeed, by the
time Wealth filed its briefs in 2016, the USPTO had twice accepted similar webpages
as evidence of use of the EMPIRICAL mark for all of the services identified in the
’022 Registration, first in 2009,31 and then again in October 2015.32 Other materials
in the record show similar service mark use of EMPIRICAL. 52 TTABVUE 28, 36-46.

31 August 21, 2009 Statement of Use at TSDR 2-9; September 24, 2009 Notice of Acceptance
of Statement of Use at TSDR 1.
32 August 21, 2015 Combined Declaration of Use and Incontestability under Sections 8 & 15
at TSDR 1-3; October 20, 2015 Notice of Acceptance Under Section 8 and Notice of
Acknowledgment Under Section 15 at TSDR 1.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 47 -

Wealth has failed to prove by a preponderance of the evidence that Concepts used
EMPIRICAL solely as a trade name. Wealth’s trade name claim is dismissed, and its
Counterclaim to Cancel in Opposition No. 91205142 is denied.
IV. Concept’s Opposition No. 91212993 to Wealth’s Registration of
EMPIRICAL
Concepts opposes Wealth’s Application Serial No. 85478892 to register
EMPIRICAL in standard characters for “capital investment consulting; capital
investment services; financial and investment services, namely, management and
brokerage in the fields of stocks, bonds, options, commodities, futures and other
securities, and the investment of funds of others; financial services, namely,
investment advice, investment management, investment consultation and
investment of funds for others, including private and public equity and debt
investment services,” in International Class 36,33 under Section 2(d) of the Act based
on its registrations of EMPIRICAL and EMPIRICAL CONCEPTS, and other
registered and alleged common law EMPIRICAL-formative marks.
A. Applicable Law
Section 2(d) prohibits the registration of a mark that “[c]onsists of or comprises a
mark which so resembles a mark registered in the Patent and Trademark Office, or
a mark or trade name previously used in the United States by another and not
abandoned, as to be likely, when used on or in connection with the goods of the

33 Wealth’s application was filed on November 22, 2011 under Section 1(a) of the Act, 15
U.S.C. § 1051(a), based on Wealth’s claim of first use of the mark and first use of the mark
in commerce on June 30, 2006.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 48 -

applicant, to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1052(d).
To prevail on its Section 2(d) claim, Concepts must prove by a preponderance of the
evidence that it has priority with respect to its asserted mark(s) vis-à-vis Wealth
mark, and that Wealth’s use of its mark in connection with the services identified in
the opposed application is likely to cause confusion, mistake, or deception as to the
source or sponsorship of those services. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000); WeaponX Performance Prods. v. Weapon
X Motorsports, Inc., 126 USPQ2d 1034, 1040 (TTAB 2018).
1. Priority
Concepts “must show proprietary rights in the mark that produces a likelihood of
confusion.” Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1378 (Fed. Cir. 2002) (citing Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317,
209 USPQ 40, 43 (CCPA 1981)). “These proprietary rights may arise from a prior
registration, prior trademark or service mark use, prior use as a trade name, prior
use analogous to trademark or service mark use, or any other use sufficient to
establish proprietary rights.” Herbko, 64 USPQ2d at 1378.
Where a plaintiff has properly made a registration of record, and there is no
pending counterclaim to cancel the registration, priority is not an issue with respect
to the goods or services identified in the registration. King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); Mini Melts, Inc. v.
Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016). Concepts properly
made of record its pleaded registrations of EMPIRICAL, EMPIRICAL CONCEPTS,
and EMPIRICAL SYSTEMS by attaching pages from the TSDR database regarding
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 49 -

those registrations to its Notice of Opposition, 1 TTABVUE 12-23 (Opp. No. 91212993
(Not. of Opp. Ex. A)),34 and Wealth’s claim and counterclaim to cancel the
registrations of EMPIRICAL and EMPIRICAL CONCEPTS have been dismissed and
denied, and are no longer pending. Accordingly, Concepts has priority with respect to
the services identified in these registrations. We will focus on the ’022 Registration
of EMPIRICAL, which we find to be the most pertinent mark of the multiple
EMPIRICAL-formative marks asserted on Concepts’ Section 2(d) claim because if we
find a likelihood of confusion as to that mark, we need not find it as to the others, and
if we do not find a likelihood of confusion as to that mark, we would not find it as to
the others. See In re Max Capital Grp., 93 USPQ2d 1243, 1245 (TTAB 2010).
2. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all probative facts in evidence that are relevant to the factors set forth in In re E.I.

34 In Wealth’s Second Brief, Wealth argues that “Concepts is deemed to have waived any
claims regarding any applied-for or registered marks for failure to put into the record current
status copies of any registrations or applications” because in “2016 (current year), a 2012 or
2013 document does not comply with the requirements of Trademark Rule 2.122(d)(1).” 63
TTABVUE 18. Concepts responds in Concepts’ Second Brief that Wealth’s argument “is both
factually and legally inaccurate.” 64 TTABVUE 7. Citing TBMP Section 704.03(b)(1)(A) and
Vital Pharm. Inc. v. Kronholm, 99 USPQ2d 1708 (TTAB 2011), Concepts argues that
Trademark Rule 2.122(d)(1)’s requirement that a notice of opposition be accompanied “by a
current copy of information from the electronic database records of the Office showing the
current status and title of the registration” is “assessed at the time of pleading, not at the
time of trial.” 64 TTABVUE 7. We agree. Wealth cites Hard Rock Cafe Int’l (USA) Inc. v.
Elsea, 56 USPQ2d 1504, 1511 (TTAB 2000), for the proposition that status and title copies of
registrations that were prepared three years prior to an opposition were not reasonably
contemporaneous, 63 TTABVUE 18, but that case involved “stale” status and title copies that
were authenticated by a witness during a testimony deposition, not status and title copies
that were attached to a notice of opposition. We find that Concepts’ pleaded registrations of
EMPIRICAL CONCEPTS, EMPIRICAL, and EMPIRICAL SYSTEMS are properly of record
in Opposition No. 91212993 pursuant to Trademark Rule 2.122(d)(1).
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 50 -

DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See Cai
v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018)
(DuPont “articulated thirteen factors to consider when determining likelihood of
confusion”). “‘Not all of the DuPont factors are relevant to every case, and only factors
of significance to the particular mark need be considered,’” id. (quoting In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)), but all factors
“‘must be considered’ when [they] are of record.” In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019) (quoting In re Dixie Rests, Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) (internal quotation omitted)).
In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods [or services] and differences in the marks.”). As discussed below, the parties
focus on these DuPont factors, and Wealth also argues that Concepts’ marks are
conceptually and commercially weak under the fifth DuPont factor.
B. The Parties’ Arguments
1. Concepts
Concepts’ arguments regarding likelihood of confusion are sprinkled throughout
Concepts’ First Brief because they are made in multiple proceedings. 62 TTABVUE
52 (“[I]ncorporat[ing] by reference its above citations to evidence and argument
concerning priority and likelihood of confusion, as set forth above” in its argument in
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 51 -

Opposition No. 91212993).35 Concepts argues in Opposition Nos. 91204762,
91205142, and 91205144 that the word EMPIRICAL is the dominant portion of the
parties’ marks, id. at 35, 46, 51, that the parties’ services are “undeniably related.”
id. at 38, 51, and that the parties’ channels of trade overlap. Id. at 38-39. Concepts
argues specifically that it “is beyond dispute that the applied-for mark [EMPIRICAL]
is identical to the mark that is the subject of [the ’022 Registration]. . . .” Id. at 52-53.
With respect to the similarity of the services, Concepts argues that Mr. Smith
“acknowledged that in the past 15 years, it is common for CPAs to convert into wealth
management businesses,” and that he testified that Wealth “employs at least two
Certified Public Accountants, and already offers some tax-related services that are
highly similar to those services offered by Concepts.” 62 TTABVUE 37. Concepts
further argues that Mr. Smith “testified about Wealth’s intent to expand its service
offerings and use of the EMPIRICAL mark on services that are undeniably identical
to Concepts’ services,” and that “at approximately the same time Wealth filed a flurry
of intent-to-use applications in late-2011 that are the subject of these consolidated
proceedings, Wealth also filed applications for services that directly overlap with
Concepts’ services,” including applications to register EMPIRICAL-formative marks
for tax advisory services, tax and taxation planning, advice, information, and
consultancy services, and tax preparation.” Id. at 37-38. Concepts argues that Mr.

35 In our previous opinion, we did not reach Concepts’ Section 2(d) claims in Opposition Nos.
91204762, 91205142, and 91205144 because we disposed of those cases on the basis of
Concepts’ mere descriptiveness claims. 66 TTABVUE 3 n.4.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 52 -

Smith “expressly testified that he views tax preparation service, clearly an accounting
related service, as a ‘normal zone of expansion’” for Wealth’s services. Id. at 38.
In Concepts’ Second Brief, Concepts argues that “Wealth does not refute the
evidence or authority cited by Concepts concerning the similarity of the marks, the
relatedness of the goods [sic], or other DuPont factors that Concepts identified in its
opening brief,” 64 TTABVUE 20, that “Wealth does not establish that [Wealth’s]
services are sufficiently different from Concepts’ services” to avoid a likelihood of
confusion in Opposition No. 91212993, that Mr. Smith’s testimony “compels the
conclusion that the parties’ services are related,” id. at 23, and that it “is not possible
for Wealth to refute that the marks are confusingly similar,” id. at 23-24, given
Wealth’s acknowledgement that “‘the marks EMPIRICAL and EMPIRICAL may be
identical in appearance and sound . . . .’” Id. at 24.
2. Wealth
Wealth’s arguments under Section 2(d) are also set forth in various places in its
briefs and pertain to multiple cases. Wealth argues in Wealth’s Second Brief that
Concepts’ “arguments are few and are strictly hypothetical regarding the DuPont
factors and are all theory with no specific facts to support that the public would expect
to see [Class] 35 accounting and [Class] 36 financial services under the same mark
and expect that they came from the same source.” 63 TTABVUE 26. Wealth further
argues that the “fact that there is no overlap in the services description is evidence
that there is no likelihood of confusion and does NOT mean that the services are
assumed to travel in the same channels of trade.” Id.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 53 -

Wealth also claims that Concepts “ignores the fact that EMPIRICAL has little to
no commercial strength as used by Concepts and should be given only a narrow scope
of protection for the services that are in the record,” and that Concepts “has claimed
that EMPIRICAL is descriptive for ‘us’ and never separates itself from this
descriptiveness by claiming or proving that its trademark use is distinctive.” Id.
Wealth’s arguments regarding the claimed weakness of Concepts’ marks are based
on the theory that “Concepts has never claimed that it has been open and notorious
in the marketplace nor has it claimed that it has acquired any commercial strength
in the marketplace.” Id. at 27. Wealth acknowledges that “the marks EMPIRICAL
and EMPIRICAL may be identical in appearance and sound,” but argues that “they
do not have identical or even similar connotations.” Id. Finally, Wealth argues that
“Jones has testified for Concepts that there is no likelihood of confusion for Wealth
applications that are not about taxes or accounting,” and that the opposed application
“is not about taxes or accounting.” Id. at 31.
C. Analysis of Likelihood of Confusion Claim
1. Similarity or Dissimilarity of the Parties’ Marks
The first DuPont factor is “‘the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression.’” Palm
Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567).
“Similarity in any one of these elements may be sufficient to find the marks
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 54 -

confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)).
Wealth seeks registration of EMPIRICAL in standard characters and Concepts’
’022 Registration is for the mark EMPIRICAL in standard characters. The marks are
thus identical in appearance and sound. Wealth concedes as much, but argues that
the marks “do not have identical or even similar connotations.” 63 TTABVUE 27.
Wealth offers no evidentiary support or explanation for this claim, and we reject it.
As discussed both in our previous opinion and in this opinion, each party has argued
that the word “EMPIRICAL” in the other’s marks describes data- and observation-
driven services; as Mr. Jones put it, both parties use EMPIRICAL “in terms of a
philosophy and saying this is how we provide our services to our clients.” Jones Tr.
57:9-12. There is nothing in the record to suggest that the word would mean one thing
when used as Concepts’ EMPIRICAL mark for the accounting services identified in
the ’022 Registration and something materially (or, in Wealth’s apparent view,
entirely) different when used as Wealth’s EMPIRICAL mark for the consulting,
financial, and investment services identified in the opposed application. We find that
the marks are identical in all respects.
“‘[W]hen word marks are identical but neither suggestive nor descriptive of the
goods [or services] associated with them, the first DuPont factor weighs heavily
against the applicant.’” In re i.a.m.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1748 (Fed. Cir. 2017) (quoting In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201, 1204 (Fed. Cir. 2003)). As discussed above, Wealth failed in its attempt to cancel
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 55 -

the ’022 Registration, and a “mark that is registered on the Principal Register is
entitled to all Section 7(b) presumptions, including the presumption that the mark is
distinctive and moreover, in the absence of a Section 2(f) claim in the registration,
that the mark is inherently distinctive for the goods [or services].” Tea Bd. of India v.
The Republic of Tea, Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). The ’022 Registration
did not issue on the basis of a showing of acquired distinctiveness under Section 2(f)
of the Act, and Concepts’ EMPIRICAL mark is thus presumed to be inherently
distinctive. Id. As a result, the EMPIRICAL mark in the ’022 Registration “cannot be
treated as merely descriptive; at worst [the mark] must be viewed as highly
suggestive.” Am. Lebanese Syrian Associated Charities, Inc. v. Child Health Research
Inst., 101 USPQ2d 1022, 1029 (TTAB 2011). Accordingly, the identity of the marks
under the first DuPont factor strongly supports a finding of a likelihood of confusion
even if it does not weigh as heavily against Wealth as it would if Concepts’ mark were
arbitrary or fanciful.
2. Similarity or Dissimilarity of the Parties’ Services,
Channels of Trade, and Classes of Purchasers
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration,’” In re Detroit
Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting
DuPont, 177 USPQ at 567), while the third DuPont factor “considers ‘[t]he similarity
or dissimilarity of established, likely-to-continue trade channels.’” Id. at 1052
(quoting DuPont, 177 USPQ at 567). Our analysis under these factors is based on the
identifications of services in the opposed application and in the ’022 Registration. Id.;
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 56 -

Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161-63 (Fed. Cir. 2014).
It is generally “‘not necessary that the products [or services] be identical or even
competitive to support a finding of a likelihood of confusion.’” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
“[L]ikelihood of confusion can be found ‘if the respective products [or services] are
related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the same
source.’” Id. (quoting 7-Eleven, 83 USPQ2d at 1724). But where, as here, the marks
are identical, “[i]t is only necessary that there be a ‘viable relationship between the
goods’ [or services] to support a finding of likelihood of confusion.” Mini Melts, 118
USPQ2d at 1471 (quoting L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB
2012)); see also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
1993) (“[E]ven when goods or services are not competitive or intrinsically related, the
use of identical marks can lead to the assumption that there is a common source.”).
The services identified in the opposed application are “capital investment
consulting; capital investment services; financial and investment services, namely,
management and brokerage in the fields of stocks, bonds, options, commodities,
futures and other securities, and the investment of funds of others; financial services,
namely, investment advice, investment management, investment consultation and
investment of funds for others, including private and public equity and debt
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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investment services,” in International Class 36. The services identified in the ’022
Registration are “accounting services, namely, financial statement preparation, data
analysis, reconciliation of financial records, business process and internal control
reviews for accounting and information systems, and bookkeeping,” in International
Class 35, and “financial software consulting; customized database development as it
relates to accounting,” in International Class 42. “[L]ikelihood of confusion must be
found as to the entire class [in the opposed application] if there is likely to be
confusion with respect to any service that comes within the recitation of services in
that class.” Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122
USPQ2d 1030, 1033 (TTAB 2016) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)).
Concepts relies principally on Mr. Smith’s testimony to show that these financial
and accounting services are related, 62 TTABVUE 37-38; 64 TTABVUE 23, while
Wealth relies on Mr. Jones’ testimony to show the opposite. 63 TTABVUE 31. We
turn first to Mr. Smith’s testimony.
Mr. Smith testified that Wealth started by working with individual investors and
individuals and families on financial planning, reviewing retirement planning, estate
planning, budgeting, and charitable giving, and on the investment side, managing
portfolios and investment advice. Smith Tr. 28:7-19; 33:1-5. Both companies and
individuals use Wealth’s services, but Wealth’s clients as of the time of Mr. Smith’s
testimony in June 2013 were about 90% individuals. Smith Tr. 35:6-9.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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According to Mr. Smith, tax is a component of wealth management. Smith Tr.
55:1-9. As of June 2013, Wealth had 15 employees and two of them were Certified
Public Accountants (“CPAs”). Smith Tr. 56:9-10. Mr. Smith testified that one of his
partners at the time did “tax consulting with our clients as well,” Smith Tr. 60:19-20,
and that Wealth “offer[s] some tax services to our clients.” Smith Tr. 37:7-8. For the
last several years prior to Mr. Smith’s testimony, Wealth had been preparing
personal tax returns for its clients as a part of its overall fee, even though it did not
advertise those services or hold itself out as accountants. Smith Tr. 96:5-13. Mr.
Smith explained that “[i]t’s something that we do just like the other elements of
planning that we do as a part of the consulting work that we - - we provide them for
the wealth management services.” Smith Tr. 100:13-16. He also testified that
“various parts of the tax code, you know, as it relates to individuals planning on
certain things,” have been discussed on Wealth’s radio show.36 Smith Tr. 108:5-6, 8-
10.
Wealth filed to register “Empirical Tax Services or something in that nature,”
Smith Tr. 37:9-10, 17-19, because “we may have a separate division that does the tax
work.” Smith Tr. 105:20-106:1. Mr. Smith claimed that in the absence of a conflict
with Concepts, “I could just set up Empirical Tax Solutions and have that group do
tax preparation work,” Smith Tr. 106:8-11, and that “[w]e could set up a CPA practice
if we wanted to, that actually did go out and pursue tax clients.” Smith Tr. 106:20-
22. He testified that when Wealth first learned of Concepts, “we were looking at tax

36 We discussed the radio show in our previous opinion. 68 TTABVUE 58-63.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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-- we were looking at Tax Empirical CPA or Empirical Tax domains. Smith Tr. 22:10-
12.
Mr. Smith also testified that “[t]here are CPA firms now that offer wealth
management services,” and that one of the bigger ones “competes directly with us
that does – does wealth management.” Smith Tr. 56:12-13, 16-17.37 He explained that
it “has become very, very popular in the last 15 years for CPAs to convert into our - -
into the wealth management business because the income they can create from the
investment component is very appealing to them, and, so, you’ve got companies that
just go around and do nothing but try to convert CPA practices into wealth
management companies . . . the percentage [of such companies is] growing larger
every day.” Smith Tr. 56:21-57:8. He testified that “usually, it’s tax guys that wind
up offering investment management stuff more frequently than is prevalent than the
other way around,” Smith Tr. 165:14-17, 20-166:2, but he acknowledged that tax
preparation is within the natural zone of expansion for some of Wealth’s competitors
because “there are other wealth management firms that do tax preparation,” Smith
Tr. 170:14-18, perhaps 25% of the firms in the industry. Smith Tr. 170:19-171:1.
With respect to Mr. Jones’ testimony, it appears that Wealth’s argument that
“Jones has testified for Concepts that there is no likelihood of confusion for Wealth
applications that are not about taxes or accounting,” 63 TTABVUE 31, is based on
the following testimony:

37 Wealth designated the firm’s identity as confidential. 59 TTABVUE 259 (Smith Tr. 56:14-
15).
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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Id. at 25 (Jones Tr. 119:7-12; 120:5-121:4). This testimony does not show that the
services are not related. It shows at most that Mr. Jones believed at one time that
Wealth’s financial and investing services did not involve the type of accounting
services identified in the ’022 Registration, but that he later “changed [his]
understanding of what that market was going to provide and what [Wealth] was
going to provide.” Jones Tr. 120:9-11. As Mr. Jones explained in the cited testimony,
“[Wealth] expanded and now it seems like that seems to be the trend, that we have
to assume that any investment services now are going to include tax services.” Jones
Tr. 120:14-17. In other parts of his testimony, Mr. Jones similarly explained that his
initial willingness to coexist with Wealth changed when “we found that they were
basically advertising tax planning and . . . having CPAs and then saying that they
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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were going to be doing related tax services, and then that’s when the concern started
coming as to confusion.” Jones Tr. 122:5-11. He testified that he was familiar with
Wealth’s website and that “it seemed to expand now into tax services, which is
definitely something that is typical of an accounting firm,” Jones Tr. 57:13-58:4,
because “they made reference to the CPAs that they had on staff.” Jones Tr. 61:6-7.
According to Mr. Jones, the services on Wealth’s website were “typical accounting
services that any accounting firm . . . could easily provide any time they want to” and
were “normal and typical of an accounting firm,” Jones Tr. 58:5-11, because “[t]ax is
basically another form of accounting services.” Jones Tr. 58:21-22; 72:11-14. He
testified that “looking at some of the other larger firms out there . . . they’re also
advertising in the workspace that I’m advertising in and they also are providing
financial services or investment services,” so “now I can see there could be situations
where, you know, when you’re providing investment advice, you may provide tax
services now.” Jones Tr. 73:3-10. He testified that “it seems that wealth management
has now ventured into providing tax planning advice and tax preparation services.”
Jones Tr. 73:2-14.
Mr. Smith’s and Mr. Jones’ testimony establishes that the financial and
investment services identified in the opposed application and the accounting services
identified in the ’022 Registration are very closely related. They are inherently
complementary in nature because, as Mr. Smith explained, financial, investment,
and accounting services are all integral to the management of an individual’s or
company’s wealth. His testimony, particularly that “[t]here are CPA firms now that
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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offer wealth management services,” Smith Tr. 56:12-13, that it “has become very, very
popular in the last 15 years for CPAs to convert into our - - into the wealth
management business,” Smith Tr. 56: 21-57:1, and that “usually, it’s tax guys that
wind up offering investment management stuff,” Smith Tr. 165:14-17, establishes far
more than merely a “viable relationship” between the services. It shows both that
they have been offered by the same companies (as Wealth itself has offered and
contemplated offering them), and that it is natural, and apparently increasingly
common, for accounting firms like Concepts to expand into investment and financial
services. The second DuPont factor strongly supports a finding of a likelihood of
confusion.
With respect to channels of trade, we reject Concepts’ suggestion that we must
conclude or presume that the services travel in the same channels of trade to the
same classes of customers because “[n]either Wealth’s application nor any of
Concepts’ registrations include any restrictions as to the channels of trade used or
the classes of purchasers to whom the products are marketed.” 62 TTABVUE 38-39.
Such a presumption is warranted only where the involved goods or services are
identical, which is not the case here. See, e.g., In re Viterra, Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (Board entitled to rely on such a presumption
where goods were identical). We need not rely on any presumption, however, because
Mr. Smith’s testimony establishes that the services are marketed by the same
companies, and we may infer that they would do so through at least some overlapping
channels of trade, including through their own websites. Mr. Smith’s testimony also
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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establishes that both sets of services are marketed to at least overlapping classes of
consumers in the form of individuals who wish to manage their wealth. The third
DuPont factor thus supports a finding of a likelihood of confusion.
3. The Strength or Weakness of Concepts’ EMPIRICAL
Mark
The fifth DuPont factor concerns the “fame of the prior mark (sales, advertising,
length of use).” DuPont, 177 USPQ at 567. For likelihood of confusion purposes, “fame
‘varies along a spectrum from very strong to very weak.’” Joseph Phelps Vineyards,
LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir.
2017) (quoting In re Palm Bay Imps., 73 USPQ2d at 1375 (internal quotation
omitted)).
Wealth argues that the “level of descriptiveness of a cited mark may influence the
conclusion that confusion is likely or unlikely,” and that “Concepts has claimed that
EMPIRICAL is descriptive for ‘us’ and never separates itself from this descriptiveness
by claiming or proving that its trademark use is distinctive.” 63 TTABVUE 26.
Wealth also claims that “Concepts ignores the fact that EMPIRICAL has little to no
commercial strength as used by Concepts and should be given only a narrow scope of
protection for the services that are in the record,” id., because “Concepts has never
claimed that it has been open and notorious in the marketplace nor has it claimed
that it has acquired any commercial strength in the marketplace.” Id. at 27.
With respect to conceptual strength, as discussed above, the subsistence of
Concepts’ registration of EMPIRICAL following the denial of Wealth’s counterclaim
in Opposition No. 91205142 requires us to view the mark as inherently distinctive
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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and, at worst, highly suggestive, but “even if we agreed that [Concepts’] marks were
inherently weak marks, that would not be fatal to finding likelihood of confusion
because even weak marks are entitled to protection against confusion.” Am. Lebanese
Syrian Associated Charities, 101 USPQ2d at 1029 (citing King Candy, 182 USPQ at
109).
As to commercial strength, we agree with Wealth that there is little evidence of
the extent of use of Concepts’ EMPIRICAL mark. At the same time, however, there
is no evidence of any third-party registrations or uses of EMPIRICAL-formative
marks that might reduce the commercial strength of Concepts’ mark. See Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters.,
LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015); Tao Licensing, LLC v. Bender
Consulting Ltd., 125 USPQ2d 1043, 1058-59 (TTAB 2017); Am. Lebanese Syrian
Associated Charities, 101 USPQ2d at 1030.
“[W]e find on this record that the [EMPIRICAL mark] is highly suggestive but
that the evidence regarding the commercial strength of that term is neutral.” Id. The
fifth DuPont factor thus only slightly supports a finding that confusion is not likely.
4. Balancing the Relevant DuPont Factors
The key first and second DuPont factors strongly support a finding of a likelihood
of confusion, as the marks are identical and the identified services are closely related,
and the third DuPont factor also supports a finding of a likelihood of confusion
because the channels of trade and classes of customers overlap. Although Concepts’
EMPIRICAL mark is somewhat weak conceptually, the fifth DuPont factor is clearly
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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outweighed by the others. On the basis of the record as a whole, we find that Concepts
has priority and that an individual or company familiar with accounting services
provided under the EMPIRICAL mark who encounters financial and investment
services provided under the identical EMPIRICAL mark could easily and reasonably
assume that both sets of services were provided by one and the same company.
D. Conclusion
Concepts proved its Section 2(d) claim by a preponderance of the evidence.
Opposition No. 91212993 is sustained.
V. Opposition No. 91203384 to Concepts’ Application to Register
EMPIRICAL FINANCIALS
Wealth opposes Concept’s Application Serial No. 85268585 to register
EMPIRICAL FINANCIALS in standard characters (FINANCIALS disclaimed) for
“computer software for use in accounting and auditing functions and activities;
computer software for use in project management of accounting and auditing
operations, and of computer projects; computer software for use in managing human
resources; computer software for use in timekeeping,” in International Class 9.38 The
remaining issues are Wealth’s claims under Sections 2(d) and 2(e)(1) of the Act,39 and
Concepts’ tacking defense.

38 Concepts filed the application on March 16, 2011 under Section 1(b) of the Act, 15 U.S.C.
§ 1051(b), based on an allegation of a bona fide intention to use the mark in commerce. The
application had not been amended to allege use as of the time of trial.
39 As noted above, we need not and do not reach Wealth’s Section 2(a) deceptiveness claim
per se.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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A. Section 2(d) Claim Based on Prior Trade Name Use
We turn first to Wealth’s Section 2(d) claim, which is based on its alleged prior
use of the trade name “Empirical Financial Services,” 61 TTABVUE 23, in which
Wealth claims proprietary rights, id. at 24, and which Wealth claims is confusingly
similar to the applied-for mark EMPIRICAL FINANCIALS. Id.
1. Applicable Law
A trade name “previously used in the United States . . . and not abandoned” can
be asserted as the basis for a likelihood of confusion claim under Section 2(d) of the
Act. 15 U.S.C. § 1052(d); West Fla Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 31
USPQ2d 1660, 1665 (Fed. Cir. 1997). A “trade name lacking any independent
trademark or service mark significance may bar registration of a trademark or service
mark that is confusingly similar to that trade name.” Martahus, 27 USPQ2d at 1850.
“To establish trade name use, an ‘organization need only to have used a name . . . in
a manner that identifies the company by that name . . . to the public . . . no particular
formality of adoption or display is necessary to establish trade name identification.’”
West Fla. Seafood, 31 USPQ2d at 1665 (quoting Nat’l Cable Television, 19 USPQ2d
at 1428).
The threshold issue on Wealth’s trade name claim is whether Wealth has prior
proprietary rights in the trade name “Empirical Financial Services.” Wealth must
show that its trade name is “‘of such a nature that the use thereof by [Wealth] would
have been sufficient to create a proprietary right therein, namely, an association by
the applicable trade of the name or term exclusively with [Wealth] and its [services].’”
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
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Brooks v. Creative Arts by Calloway, LLC, 93 USPQ2d 1823, 1832 (TTAB 2009)
(quoting Fluid Energy Processing & Equip. Co. v. Fluid Energy, Inc., 212 USPQ 28,
35 (TTAB 1981)). This requires Wealth to show that its trade name is either
inherently distinctive or has acquired distinctiveness.40 Id. at 1830-32 (citing cases
discussing the requirement that an opposer must establish a “superior” right in a
trade name based on its inherent or acquired distinctiveness); see also Hoover Co. v.
Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720, 1722 (Fed. Cir. 2001)
(“‘[T]rade identity rights arise when the term is distinctive, either inherently or
through the acquisition of secondary meaning.’”) (quoting Towers v. Advent Software,
Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041 (Fed. Cir. 1990)); see also RxD Media, LLC
v. IP Application Dev. LLC, 125 USPQ2d 1801, 1808 (TTAB 2018).
2. The Parties’ Arguments Regarding Priority and Wealth’s
Proprietary Rights in Its Trade Name
a. Wealth
Wealth argues that “Empirical Financial Services is a suggestive informational
term as defined by the [SEC] and as used by Wealth to inform their [sic] clients.” 61
TTABVUE 24. Wealth claims that it has shown prior use of its trade name because
in 2011, when Concepts filed the opposed application, “Wealth had already been using
EMPIRICAL FINANCIAL SERVICES . . . as a trade name.” Id. at 26. Wealth relies
on pages from the SEC’s EDGAR database listing the filings made by Wealth as

40 Because proof that the trade name is either inherently distinctive or has acquired
distinctiveness is part of Wealth’s Section 2(d) claim, we must consider that issue even
though, as noted above, Concepts did not pursue its pleaded affirmative defense of the mere
descriptiveness of the trade name in Concepts’ First Brief.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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“Empirical Financial Services, LLC,” including Form 13F filings executed on January
28, 2011 for the calendar year or quarter ending on December 31, 2010, and executed
on May 13, 2011 for the quarter ending on March 31, 2011. 51 TTABVUE 5-12.
Wealth argues that its “SEC filings and use of the trade name Empirical Financial
Services back to January 2010 . . . are intended to inform investors of pertinent
information . . . .” 61 TTABVUE 23.
In Wealth’s Second Brief, it argues that its priority is not based solely on its SEC
filings, but also on Mr. Smith’s testimony, business licenses, and other materials. 63
TTABVUE 31-32. Wealth also claims that “Jones had no testimony regarding
EMPIRICAL FINANCIALS,” and that there “are no documents in evidence by
Concepts regarding EMPIRICAL FINANCIALS.” Id. at 32.
b. Concepts
Concepts argues that the “only evidence Wealth cites to establish priority is a
printout from the [SEC] website that Wealth purports to show it has used ‘Empirical
Financial Services’ as a trade name,” and that this exhibit “lacks foundation, is
misleading, and insufficient to establish priority for purposes of opposing Concepts’
application in any event” because even though the exhibit “suggests that Wealth filed
documents with the SEC bearing its alleged trade name in 2011-2014, Wealth
disregards Concepts’ prior, extensive use of its EMPIRICAL and EMPIRICAL
CONCEPTS marks, which pre-date any priority rights that Wealth has asserted or
could have asserted in connection with its likelihood of confusion claim.” 62
TTABVUE 27.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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3. Analysis of Priority and the Existence of Proprietary
Rights in the Empirical Financial Services Trade Name
We begin with a determination of the date of Concepts’ first use because that fixes
the date by which Wealth must show priority. Concepts may rely on its March 16,
2011 filing date as its constructive date of first use, RxD Media, 125 USPQ2d at 1808,
but Concepts claims earlier use of EMPIRICAL FINANCIALS by virtue of “tacking”
claimed earlier use of EMPIRICAL and EMPIRCAL CONCEPTS onto its constructive
use of EMPIRICAL FINANCIALS. See, e.g., Hana Fin., Inc. v. Hana Bank, 574 U.S.
418, 136 S. Ct. 907, 113 USPQ2d 1365, 1366 (2015) (discussing tacking). Although
Concepts pleaded a tacking defense as to the mark EMPIRICAL, 10 TTABVUE 13
(Amended Ans. and Counterclaim ¶¶ 33-36), it did not do so as to the mark
EMPIRICAL CONCEPTS, which disables Concepts from relying on tacking onto that
mark here. See H.D. Lee Co. v. Maidenform, Inc., 87 USPQ2d 1715, 1720 (TTAB 2008)
(unpleaded affirmative defense of tacking not considered where not tried by implied
consent). But even if we considered Concepts’ tacking defense as to both marks,
tacking is an issue of fact, Hana Bank, 113 USPQ2d at 1367-68, that requires proof
that the subject marks are “essentially the same, or ‘legal equivalents’.” TiVo Brands,
129 USPQ2d at 1113. Concepts makes no showing that EMPIRICAL FINANCIALS
is essentially the same as, or the legal equivalent of, either EMPIRICAL or
EMPIRICAL CONCEPTS, and to the extent that Concepts’ tacking defense was tried
as to both marks, we reject it as unproven. In the absence of evidence of earlier actual
use of EMPIRICAL FINANCIALS, Concepts must rely on the March 16, 2011 filing
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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date of the opposed application as its constructive use priority date. RxD Media, 125
USPQ2d at 1808.
We turn now to the issue of whether Wealth proved that it had proprietary rights
in its trade name Empirical Financial Services prior to March 16, 2011. If the trade
name is inherently distinctive, Wealth must prove by a preponderance of the evidence
simply that it used the trade name prior to that date. West Fla. Seafood, 31 USPQ2d
at 1662. If Wealth’s trade name is not inherently distinctive, however, Wealth must
prove by a preponderance of the evidence not simply chronological priority of use, but
also that the trade name had acquired distinctiveness based on such use prior to
March 16, 2011. RxD Media, 126 USPQ2d at 1815.
In Wealth First’s Brief, Wealth argues that “Empirical Financial Services is a
suggestive informational term as defined by the SEC and as used by Wealth to inform
their [sic] clients.” 61 TTABVUE 24. We held in our previous decision, however, that
Wealth’s service mark EMPIRICAL FINANCIAL SERVICES was merely descriptive
of various financial and investment services identified in Wealth’s Application Serial
No. 85396701, and had not acquired distinctiveness as of the time of trial in 2015. 66
TTABVUE 55-58 (sustaining Opposition No. 91204762). In so finding, we rejected
Wealth’s claim that it “‘has also used this exact term for these legally identical
services and as a trade name and trademark since 2006, long enough to have
acquired distinctiveness if necessary.’” Id. at 57-58 (citing 63 TTABVUE 27) (second
emphasis added). The specific examples of pre-2011 uses of the trade name qua trade
name relied on by Wealth in Wealth’s Second Brief, 63 TTABVUE 31-32, do not
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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compel a different result with respect to the trade name per se because they do not
show that it had acquired distinctiveness as of 2011.
The documentary evidence of trade name use cited by Wealth consists of the
listing of “Empirical Financial Services LLC” as the applicant on the application that
matured into the ’355 Registration, id., the listing of “Empirical Financial Services,
LLC” in various documents in the EDGAR database on the SEC’s website, id. (citing
51 TTABVUE 5-12), and the appearance of the trade name in various business
licenses. 63 TTABVUE 31-32. We reproduce one such license below:
41
These uses do not show that the Empirical Financial Services trade name was
exposed to the relevant consumers in such a manner and to such a degree as to cause
the name to have become uniquely associated with Wealth by 2011 for purposes of
the acquisition of distinctiveness.
Finally, Wealth cites snippets of Mr. Smith’s testimony, which establish the pre-
2011 adoption and use of Empirical Financial Systems as a trade name, but suggest

41 47 TTABVUE 41.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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that it played a relatively minimal role as Wealth’s trade identity, and one that was
less significant than the EMPIRICAL WEALTH MANAGEMENT and EMPIRICAL
FINANCIAL SERVICES marks that we found in our previous decision to be merely
descriptive and without acquired distinctiveness. Smith Tr. 71:14-22; 102:14-20
(“Empirical Financial Services is just the name of our Washington LLC”); 104:1-9;
162:20-163:2 (suggesting that the application to register the EMPIRICAL
FINANCIAL SERVICES service mark was filed because “we created a Washington
entity” as a “second entity, [and] we had to change [Empirical Wealth Management]
and we created Financial Services” and “thought it would reasonable to trademark
the name of our company”). Like the other cited evidence, Mr. Smith’s testimony does
not establish that the trade name qua trade name was exposed to relevant consumers
in such a manner and to such a degree as to cause it to have become uniquely
associated with Wealth by 2011 for purposes of the acquisition of distinctiveness.
The record as a whole shows that in terms of acquired distinctiveness, the
Empirical Financial Services trade name is even weaker as Wealth’s trade identity
than the EMPIRICAL FINANCIAL SERVICES service mark that we found in our
previous opinion to be merely descriptive and not to have acquired distinctiveness.
For the reasons discussed above and in our previous decision in Opposition No.
91204762, we find that the Empirical Financial Services trade name is merely
descriptive of Wealth’s services, and had not acquired distinctiveness as of Concepts’
March 16, 2011 constructive use filing date. Wealth has failed to carry its burden of
showing by a preponderance of the evidence that it had a propriety right in the
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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Empirical Financial Services trade name prior to that date, and has thus failed to
show priority. RxD Media, 126 USPQ2d at 1815. Because Wealth cannot establish
this threshold element of its Section 2(d) claim, we need not reach the element of
likelihood of confusion. Wealth’s Section 2(d) claim based on its trade name is
dismissed.
B. Deceptive Misdescriptiveness Claim
We turn finally to Wealth’s claim that EMPIRICAL FINANCIALS is deceptively
misdescriptive of the various forms of software identified in the opposed application.
1. Applicable Law
Section 2(e)(1) of the Act prohibits the registration of a mark “which, (1) when
used on or in connection with the goods of the applicant is . . . deceptively
misdescriptive of them,” 15 U.S.C. § 1052(e)(1), unless the mark has acquired
distinctiveness under Section 2(f) of the Act, 15 U.S.C. § 1052(f). Concepts does not
claim that the EMPIRICAL FINANCIALS mark has acquired distinctiveness, so the
sole issue is whether it is deceptively misdescriptive of any of the four types of
software identified in the opposed application: “computer software for use in
accounting and auditing functions and activities; computer software for use in project
management of accounting and auditing operations, and of computer projects;
computer software for use in managing human resources; computer software for use
in timekeeping.”42

42 Wealth must show that the mark is misdescriptive of at least one of the goods to prevail
against the entire application. Cf. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012) (A “mark need not be merely descriptive of all recited
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
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The test for deceptive misdescriptiveness under Section
2(e)(1) has two parts. First, we must determine whether
the matter sought to be registered misdescribes the goods
or services. In order for a term to misdescribe goods or
services, the term must be merely descriptive, rather than
suggestive, of a significant aspect of the goods or services
which the goods or services plausibly possess but in fact do
not. . . . Second, if the term misdescribes the goods, we must
ask whether consumers are likely to believe the
misrepresentation. . . . The Board has applied the
reasonably prudent consumer test in assessing whether a
proposed mark determined to be misdescriptive involves a
misrepresentation consumers would be likely to believe.
In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015) (internal citations and quotations
omitted).
2. The Parties’ Arguments
a. Wealth
On the threshold issue of misdescriptiveness, Wealth discusses the meaning of
both words in the EMPIRICAL FINANCIALS mark. Wealth argues that the “term
FINANCIALS is disclaimed by Concepts and is an admission to the terms [sic]
descriptiveness as used by Concepts,” but that the word “has a specific meaning in
accounting and refers to financial statistics.” 61 TTABVUE 25. Wealth argues that
“[f]inancials as used by Concepts is misdescriptive of the plain meaning of project
management and managing human resources and timekeeping,” id., two of the fields
of use of the software identified in the opposed application.

goods or services in an application. A descriptiveness refusal is proper if the mark is
descriptive of any of the [services] for which registration is sought.”) (internal quotation
omitted).
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 75 -

Wealth argues that the word “EMPIRICAL as used by Concepts defined as
originating in or based on observation or experience (59 TTABVUE 180), when
combined with FINANCIALS, has the plain meaning of financial statistics that are
based on observation or experience.” Id. Wealth cites the “Beginners’ Guide to
Financial Statements,” an SEC brochure that Wealth made of record from the SEC’s
website, 50 TTABVUE 38, which Wealth argues “explains that financials or financial
statements are a snapshot in time that show where the money is.” 61 TTABVUE 25.43
Wealth claims that for “three of the four goods intended to be sold by Concepts,
the term EMPIRICAL FINANCIALS is misdescriptive in subject matter and time”
because “Concepts [sic] use of EMPIRICAL FINANCIALS for management of
projects, human resources, and time keeping are ongoing management concerns over
time.” Id.
In Wealth’s Second Brief, Wealth argues that “Internet documents show that
FINANCIALS have a specific meaning that is different in the investing market than
what Concepts is using. Hence the misdescriptive meaning.” 63 TTABVUE 32.
b. Concepts
Concepts argues that Wealth “neglects to even cite [the] legal standards, let alone
apply them to the evidence of record to establish its claims,” and instead “offers
incoherent, inapplicable arguments . . . .” 62 TTABVUE 25. Concepts further argues
that Wealth’s claim that “‘financials’ has a specific meaning in accounting and refers

43 The brochure states that it “is designed to help you gain a basic understanding of how to
read financial statements.” 50 TTABVUE 38.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 76 -

to financial statistics” is unsupported because “nowhere in the cited [SEC brochure]
is the term ‘financials’ used, let alone in connection with the goods cited in the
opposed application, namely, computer software.” Id. Concepts also claims that even
if Wealth showed that EMPIRICAL FINANCIALS is misdescriptive of the goods,
“Wealth neglects to show that consumers are likely to believe any alleged
misrepresentation.” Id.
3. Analysis of Deceptive Misdescriptiveness Claim
To prove the first element of its deceptive misdescriptiveness claim, Wealth must
show that EMPIRICAL FINANCIALS is merely descriptive of “a significant aspect of
the goods . . . which the goods . . . plausibly possess but in fact do not.” Hinton, 116
USPQ2d at 1052-53 (finding, on the basis of dictionary definitions of “THC” as the
chief intoxicant in marijuana, and Internet evidence of the use of THC in tea, that “it
is plausible that tea-based beverages could contain THC and that [the applicant’s
mark] THCTea, when used for tea-based beverages, is merely descriptive for tea
containing THC as a significant ingredient”). Wealth does not even acknowledge this
requirement, much less satisfy it.
Wealth’s arguments that EMPIRICAL FINANCIALS “has the plain meaning of
financial statistics that are based on observation or experience,” 61 TTABVUE 25,44
and that the mark is “misdescriptive in subject matter and time” as applied to

44 Assuming, without deciding, that EMPIRICAL has the descriptive meaning attributed to
it by Wealth for the software identified in the application, Wealth’s claim that FINANCIALS
“refers to financial statistics,” 61 TTABVUE 25, is unsupported by the record. As Concepts
points out, the sole supporting evidence cited by Wealth, the SEC brochure, never uses the
word “financials,” 50 TTABVUE 38-45, but even if it did, there is no evidence that purchasers
of the software identified in the application are familiar with materials on the SEC’s website.
Opposition Nos. 91203384, 91205142 (counterclaim only), and 91212993; Cancellation No.
92055549
- 77 -

software for use in “project management of accounting and auditing operations, and
of computer projects” fail to explain how EMPIRICAL FINANCIALS describes a
“significant aspect” of these types of software that they plausibly possess but in fact
do not.45 Wealth has thus failed to prove the first element of its deceptive
misdescriptiveness claim, and we need not reach the second element regarding
whether a reasonably prudent purchaser of the three forms of software would believe
any misrepresentation about its nature. As discussed above, because Wealth has not
shown that the EMPIRICAL FINANCIALS mark is deceptively misdescriptive, it
also cannot prove deceptiveness under Section 2(a). Budge, 8 USPQ2d at 1260.
Accordingly, Wealth’s Section 2(a) and 2(e)(1) claims are dismissed.
4. Conclusion
Because Wealth did not prevail on any of the claims pleaded in its Notice of
Opposition and maintained in its briefs in Opposition No. 91203384, the opposition
is dismissed.
Decision: Concept’s Opposition No. 91212993 is sustained. Wealth’s Petition to
Cancel in Cancellation No. 92055549 and Wealth’s Counterclaim for Cancellation in
Opposition No. 91205142 are denied. Wealth’s Opposition No. 91203384 is dismissed.

45 Wealth argues that EMPIRICAL FINANCIALS is merely descriptive of “computer software
for use in accounting and auditing functions and activities,” 61 TTABVUE 25, but as
discussed above, there is no mere descriptiveness claim before us and this argument is
unavailing on Wealth’s deceptive misdescriptiveness claim.