Global Tax Management, Inc.

Trademark Trial and Appeal Board

Nov 30, 2015

No. 86308034 (T.T.A.B. Nov. 30, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: November 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Global Tax Management, Inc.
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Serial No. 86308034
_____

Patricia Smink Rogowski and Bridget H. Labutta of Panitch Schwarze Belisario &
Nadel LLP for Global Tax Management, Inc.

Leslee A. Friedman, Trademark Examining Attorney, Law Office 120,
Michael W. Baird, Managing Attorney.1
_____

Before Seeherman, Heasley and Lynch,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Global Tax Management, Inc. (“Applicant”) has appealed from the final refusal
of the Trademark Examining Attorney to register GTM GLOBAL TAX
MANAGEMENT and design, as shown below, for “tax compliance services, namely,
providing business and accounting advice in the field of tax compliance to multi-
national businesses, tax accounting for multi-national businesses; tax management

1 The application was assigned to this Examining Attorney at the time of briefing.
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consulting for multi-national businesses” in Class 35.2 Applicant has disclaimed
exclusive rights to “GLOBAL” and “TAX MANAGEMENT.”

Applicant has described the mark as follows: The mark consists of the letters ‘GTM’
adjacent to two half moon arcs each facing one another, and the words “GLOBAL
TAX MANAGEMENT.” Color is not claimed as a feature of the mark.
Registration was refused pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the marks in
the following two registrations, both owned by the same entity, that as used in
connection with Applicant’s services it is likely to cause confusion or mistake or to
deceive:
Registration No. 2917131 for GTM in standard characters for “payroll
preparation services for businesses and household employers; payroll
and tax filing and payment services; human resource system reporting
and employee benefit reporting; household employee employment
placement services; human resources management services for
household employers” in Class 353; and

Registration No. 2991223 for GTM HOUSEHOLD EMPLOYMENT
EXPERTS in standard characters, with HOUSEHOLD
EMPLOYMENT EXPERTS disclaimed, for “payroll preparation
services for businesses and household employers; payroll and tax filing
services; human resource system reporting and employee benefit

2 Application Serial No. 86308034, filed June 12, 2014, and asserting first use and first use
in commerce as early as July 2012.
3 Issued January 11, 2005; Section 8 affidavit accepted, Section 15 affidavit received.
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reporting; household employee employment placement services; human
resources management services for household employers” in Class 35.4

Applicant and the Examining Attorney have filed appeal briefs.5 We affirm the
refusal to register.

4 Issued September 6, 2005; Section 8 affidavit accepted; Section 15 affidavit received.
5 On August 25, 2015, the Examining Attorney submitted her brief, along with a request
that the Board accept it despite its being filed one day late. She explained that the
application file had been reassigned to her at the time of briefing, and because of a
docketing error by the Managing Attorney of her law office, the due date for the brief was
not accurately conveyed to her when the file was reassigned. In view of this explanation,
and because the brief was only one day late, the Board accepted the brief in an order dated
August 28, 2015. Because the brief was submitted with both the request and in a separate
filing, the brief appears in the Board’s TTABVUE database under both Index number 10
and 13. Although the formats of the brief differ (the format of the brief in Index number 10
is that used with Office actions, while the format in Index number 13 is the “normal” typed
version), the content of both formats of the brief is the same. Any citations in this opinion to
the Examining Attorney’s brief refer to the brief found at Index number 13.
In footnote 1 of its brief, Applicant points out that, with its request for reconsideration
(which was filed at the same time as its notice of appeal), it submitted for the first time
evidence regarding third-party registrations and use of marks that include the element
“GTM,” and Applicant raises the question whether the inclusion of such evidence should
have caused the Examining Attorney to issue a “subsequent final refusal.” Applicant cites
TMEP § 715.03(b), which states, “If the request for request for reconsideration does not
raise a new issue, but presents new evidence that is significantly different from evidence
previously submitted, the examining attorney must issue an ‘Examiner’s Subsequent Final
Refusal,’ with a six-month response clause. This provides applicant with the opportunity to
respond before filing an appeal.” Brief, 8 TTABVUE 9. Applicant is advised that, because
an appeal had been filed at the time the Examining Attorney denied the request for
reconsideration, the provision set out in the TMEP is not applicable to this situation. The
heading for that section of the TMEP indicates that it applies only when “No Notice of
Appeal Has Been Filed.” TMEP § 715.03(b). We also point out that, even if the Examining
Attorney had styled the action as a “subsequent final refusal,” that would not have given
Applicant the right to file a response. See TMEP § 715.04(b), which addresses “Examining
Attorney’s Action When New Issue or New Evidence is Presented and Notice of Appeal Has
Been Filed” (“…a subsequent final action issued after the filing of an appeal does not give
the applicant an automatic six-month response period… the Board will be notified to
resume the appeal. When proceedings with respect to the appeal are resumed, any further
request for reconsideration of the application must be made via a request for remand, for
which good cause must be shown.”). Accord: TBMP § 1204: “[I]f the examining attorney
denies a request for reconsideration filed with a notice of appeal, a second request for
reconsideration will be treated as a request for remand….”

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Analysis
Our determination of the issue of likelihood of confusion under Section 2(d) of
the Trademark Act is based on an analysis of all of the probative facts in evidence
that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood
of confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
Because the cited registrations are for essentially identical services, and because
the mark GTM in Registration No. 2917131 is more similar to Applicant’s mark
than the mark GTM HOUSEHOLD EMPLOYMENT EXPERTS in Registration No.
2991223, we limit our analysis of the issue of likelihood of confusion to Registration
No. 2917131 for GTM. If likelihood of confusion is found with respect to this
registration, the refusal of registration of Applicant’s mark must be affirmed. And if
no likelihood of confusion is found with respect to this registration, then there can
be no likelihood of confusion with Registration No. 2991223. See In re Max Capital
Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
With respect to the du Pont factor of the similarity or dissimilarity of the goods
and services, the Examining Attorney bases her contention that Applicant’s mark is
likely to cause confusion with Registration No. 2917131 for GTM on particular
Serial No. 86308034
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services listed in the identification of that registration, namely, “payroll preparation
services for businesses and household employers; payroll and tax filing and
payment services.” In support of the position that these services and those of
Applicant are related, the Examining Attorney has submitted evidence from third-
party websites showing that entities provide both payroll and tax compliance
services, including the following:
McFarren, Magnifico & Swart CPAs, PA6
…As tax and accounting consultants, we provide income tax
compliance and consultation for individuals, partnerships, and
corporations. … Our accounting services include financial compilation
and review, bookkeeping, payroll preparation, and fixed asset
management.

Keith Devers CPA PC7
Our Services
Tax Preparation and Planning
We provide tax preparation and planning for individuals, corporations,
partnerships, trusts and estates.
---
Payroll Preparation
We provide payroll preparation services, check writing, recordkeeping
and tax compliance reporting.

Stiefel and Lyles, P.C.8
We offer various services including … computerized payroll
preparation, tax returns for individuals, corporations, estates and
trusts, tax compliance and planning …

PASAN Accounting Taxes Consulting9
Tax Services
Our firm offers a full range of tax planning and compliance services.
Payroll Services

6 April 3, 2015 Office action, p. 6.
7 April 3, 2015 Office action, p. 9.
8 April 3, 2015 Office action, pp. 10-11.
9 April 3, 2015 Office action, pp. 12-14.
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Our firm offers complete payroll preparation and payroll tax reporting
services. We prepare all federal and state returns and offer full
magnetic media and electronic filing capabilities.

Mason CPA Tax & Accounting10
Tax—We can help with a variety of tax compliance and planning for
both businesses of varying legal formats and individuals, including
payroll, income, and sales taxes.
Payroll Management—We can manage your payroll from top to
bottom, from payroll preparation to tax filings at all levels.

This evidence amply demonstrates the relatedness of tax compliance and payroll
preparation services. Moreover, tax compliance services may encompass tax filing
services and, in any event, are intrinsically related to them.
Applicant, on the other hand, argues that Applicant’s services “are directed to
solving complex tax concerns for publicly held, multi-national businesses” while the
registrant’s services “focus on household employment, and the human resources and
payroll services needed by persons who employ others to do work in their
households.” Brief, 8 TTABVUE 17. The problem with Applicant’s argument is that
it seeks to narrow the scope of the registration by extrinsic evidence, namely the
specimen in the registration file. However, it is well-established that the question of
likelihood of confusion must be determined on the basis of an analysis of the mark
as applied to the goods and/or services recited in an applicant’s application vis-à-vis
the goods and/or services recited in the cited registration, rather than what the
evidence shows the goods and/or services to be. In re Total Quality Group Inc., 51
USPQ2d 1474, 1476 (TTAB 1999). Accord, Canadian Imperial Bank of Commerce,
N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). As the

10 April 3, 2015 Office action, p. 15.
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Examining Attorney has pointed out, the services as identified in the cited
registration are not limited to household employers, but also include “payroll
preparation services for businesses” (emphasis added). The businesses that use such
services must be deemed to include the multi-national businesses that use
Applicant’s services. Moreover, there is no restriction as to the consumers of the
registrant’s “payroll and tax filing and payment services,” and therefore these
services must be deemed to be rendered to multi-national businesses.
Thus, based on the identifications themselves and the evidence of record, we find
that Applicant’s and the registrant’s services, as identified in the respective
application and registration, can emanate from the same source and be offered
through the same channels of trade to the same class of customers. The services are
therefore related for purposes of finding that the du Pont factors of the similarity of
the services and the channels of trade favor a finding of likelihood of confusion.
The next du Pont factor we consider is the similarity of the marks. The cited
mark is GTM in standard characters; Applicant’s mark depicts the letters GTM
very prominently, along with a swirl design, and with the words GLOBAL TAX
MANAGEMENT in a smaller size below. Because of the prominence of the letters
GTM, we find that this is the dominant part of the mark. Further, the fact that
GTM in Applicant’s mark is depicted in lower case does not distinguish it from the
cited mark; because the cited mark is registered in standard form, it is not limited
to any particular font, and therefore it can be depicted in the same lower case type
as that shown in Applicant’s mark. See In re Viterra Inc., 671 F.3d 1358, 101
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USPQ2d 1905, 1909 (Fed. Cir. 2012). The swirl or, as Applicant describes it, half
moon arcs, while also visually prominent, is not as likely to be regarded or
remembered by consumers as the letters GTM because it is an abstract design that
is not likely to be articulated. See In re Appetito Provisions Co., 3 USPQ2d 1553,
1554 (TTAB 1987).
Applicant’s mark does, of course, also contain the phrase “Global Tax
Management,” and Applicant argues that it is the inclusion of this phrase that
avoids confusion. We agree that the phrase provides a particular connotation for the
letters in Applicant’s mark, i.e., consumers are likely to understand that GTM in its
mark stands for Global Tax Management, and that GTM in the cited mark does not
necessarily have this connotation. However, we disagree that this additional
element is sufficient to distinguish the marks. As we have noted, because of the way
in which GTM and GLOBAL TAX MANAGEMENT are depicted in the mark, GTM
has the stronger source-indicating significance, with GLOBAL TAX
MANAGEMENT giving the impression of a subsidiary, descriptive phrase. Because
of this (and the propensity of consumers to shorten marks, see In re SL&E Training
Stable Inc., 88 USPQ2d 1216, 1219 (TTAB 2008) and cases cited therein),
consumers are more likely to refer to the source of Applicant’s services as GTM than
GTM GLOBAL TAX MANAGEMENT, or as GLOBAL TAX MANAGEMENT per se.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000) quoting In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752
(Fed. Cir. 1985) (“Regarding descriptive terms, this court has noted that the
Serial No. 86308034
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‘descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion.’”). Thus, we treat GTM as the dominant element in
Applicant’s mark. See In re National Data Corp., 224 USPQ at 750-51 (Fed. Cir.
1985) (there is nothing improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their entireties).
We further disagree with Applicant that the particular connotation of GTM in its
mark avoids a likelihood of confusion between Applicant’s mark and the cited
registration. Although the cited mark does not, standing alone, convey the meaning
of “Global Tax Management,” consumers who are familiar with the registrant’s
mark for payroll and tax filing services are likely, upon encountering Applicant’s
mark for its tax compliance services, to assume that this mark is a variation of the
registrant’s mark, perhaps identifying services specifically dedicated to tax
management.
Thus, considering the marks in their entireties, we find that they are similar,
and that this du Pont factor favors a finding of likelihood of confusion.
Applicant has also argued that the element common to both marks, GTM, is
“diluted by myriad third party use,” and therefore “entitled to a narrow scope of
protection.” Brief, 8 TTABVUE 14. Applicant bases this argument on four third-
party registrations.11 Applicant has also submitted evidence of use of these four

11 In addition, Applicant points to two applications and a cancelled registration. However,
applications have no probative value except to show that they were filed, and a cancelled
registration has no probative value.
Serial No. 86308034
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marks. However, a review of this evidence shows that three are for very different
services than those at issue herein. Two of these three, owned by the same
registrant,12 are for “retail store services featuring a wide variety of consumer goods
for others” (with the photograph showing use of the mark as being for articles of
clothing, and the third is for “providing an online website for creating and hosting
micro websites for businesses, sports teams, schools, and organizations to facilitate
online purchasing of products and paraphernalia relating thereto,” with the
evidence of use a webpage offering to create a “TeamStore Shop” for a “school, team,
club, or business” to “sell a variety of customized products with zero upfront costs
and zero inventory investment.”13 The webpage includes a photograph showing
items of apparel bearing various logos, presumably as examples of the products that
can be sold through the website provided by the registrant.
The only registration that is even arguably close to Applicant’s and the
registrant’s services, in that the services are in the same general field of tax, is No.
3880222 for GTM TECHNOLOGY SERVICES for “business and tax consulting
relating to technology for accounting, data collection, and compliance.” Applicant
has stated that this registration is actually owned by “a related entity to Applicant,”
brief, 8 TTABVUE 20. Even if we treat this registration as a typical third-party
registration, it is clear that the mark is used for technology services,14 not for the

12 Registration Nos. 3582457 and 3501482.
13 Response filed March 20, 2015, pp. 26-27.
14 For example, the website advertises that this company has a dedicated specialized
practice to focus on tax technology needs for corporations, such as income tax automation.
Serial No. 86308034
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same types of services identified in Applicant’s subject application and the cited
registration.
Therefore, we cannot conclude from this evidence that the cited registration for
GTM is entitled to such a limited scope of protection that it would not prevent the
registration of such a similar mark as Applicant’s for such closely related services.
With respect to the du Pont factor of the conditions of sale and sophistication of
customers, we agree that, because the customers for Applicant’s services are multi-
national businesses and therefore presumably large companies, and because of the
nature of the services, i.e., tax compliance, consumers will exercise care in selecting
the purveyor of such services. This du Pont factor favors Applicant.
The final du Pont factors mentioned by Applicant are that there is no evidence of
actual confusion and there is little, if any, likely potential confusion. Applicant’s
arguments regarding the extent of potential confusion really go to the lack of actual
confusion (“That these companies have been using the shared term GTM for their
respective services in the United States concurrently for almost 20 years indicates
that confusion in the instant case has not occurred, will not occur, and if it does,
would be de minimis,” brief, 8 TTABVUE 20). Accordingly, we will discuss this
argument as a part of the lack of actual confusion factor. Applicant claims July 2012
as the date of first use of its mark. That relatively short period of co-existence, with
no evidence as to the extent of either Applicant’s or the registrant’s use, has little
probative value in showing that there has been an opportunity for confusion to
occur if it were likely to occur. Applicant refers to an abandoned application that it
Serial No. 86308034
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had filed for GTM that claimed a date of first use of 1995. We point out that this
application was never made of record and that, even if it were, it would have no
probative value that the mark was in use as of the date claimed. Applicant also
refers to its registration for GTM TECHNOLOGY SERVICES, which registration
asserts a date of first use in 2009. That registration, as we previously discussed in
connection with the third-party registrations, is for services that are different from
those involved in Applicant’s current application (and is also for a different mark).
We can draw no conclusion from Applicant’s assertion of lack of instances of actual
confusion between that mark for those services and those in the registrant’s
registration in terms of finding that Applicant’s subject mark for its identified
services is not likely to cause confusion with the mark and services in the cited
registration. In any event, an applicant’s uncorroborated statements of no known
instances of actual confusion are of little evidentiary value. In re Majestic Distilling
Co., 65 USPQ2d at 1205. The lack of evidence of actual confusion carries little
weight. Id.
Accordingly, we treat this du Pont factor as neutral.
After considering all relevant du Pont factors, we find that the similarity of the
marks and the relatedness of the services and identity of the class of consumers and
channels of trade outweigh the care with which the services are purchased. That is,
even careful and sophisticated consumers are likely, because of the similarity of the
marks and the relatedness of the services, to believe that Applicant’s tax compliance
Serial No. 86308034
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services offered under its mark emanate from or are connected with or sponsored by
the owner of the cited registration.
As to Applicant’s final argument that “Registrant will have the opportunity to
oppose registration of Applicant’s mark if it believes it will be damaged by such
registration once Applicant’s mark is approved for publication,” brief, 8 TTABVUE
21, this flies in the face of established law:
But it is the duty of the PTO and this court to determine whether there
is a likelihood of confusion between two marks. In re Apparel, Inc., 366
F.2d 1022, 1023, 151 USPQ 353, 354 (CCPA 1966). It is also our duty
“to afford rights to registrants without constantly subjecting them to
the financial and other burdens of opposition proceedings.” Id.; see also
In re The Clorox Co., 578 F.2d 305, 308, 198 USPQ 337, 341 (CCPA
1978); McCarthy, supra, Section 23.24[1] [d] (where PTO rejects an
application under section 1052(d), “it is no answer for the applicant to
ask that the application be passed to publication to see whether the
owner of the cited mark will oppose the registration”). Otherwise
protecting their rights under the Lanham Act would be an onerous
burden for registrants.

In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1535 (Fed. Cir. 1997).
Decision: The refusal to register Applicant’s mark GTM GLOBAL TAX
MANAGEMENT and design is affirmed.