Michael Rowan

Trademark Trial and Appeal Board

Aug 16, 2012

No. 85019662 (T.T.A.B. Aug. 16, 2012)

Mailed:
August 16, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Michael Rowan
________

Serial No. 85019662
_______

Kyle T. Peterson of Patterson Thuente Christensen Pedersen,
P.A. for Michael Rowan.

Esther Borsuk, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Zervas, Bergsman and Lykos,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Michael Rowan (applicant) filed a use-based
application for the mark ADVANCED TAX SERVICES, in standard
character form, for “accounting services; tax preparation,”
in Class 35. Applicant disclaimed the exclusive right to
use the term “Tax Services.” During the prosecution of the
application, applicant amended the recitation of services
to “accounting services for individuals and small
businesses.” This is the operative recitation of services.
The examining attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 85019662
2
§ 1052(d), on the ground that applicant’s mark, when used
in connection with accounting services for individuals and
small businesses, so resembles the registered mark ADVANCE
TAX, in standard character form, for “income tax
preparation, not including loans or lending,” in Class 35,
as to be likely to cause confusion.1
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion. 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
Company, 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. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression and the strength of the
registered mark.

1 Registration No. 3756546, issued March 9, 2010. Registrant
disclaimed the exclusive right to use the word “tax.”

Serial No. 85019662
3
We turn first to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Co., 177 USPQ at 567. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1987). In analyzing the similarity or dissimilarity
of the marks, we are mindful that the test is not whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar in terms of overall commercial
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result.
San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1835,
1841 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992). The proper focus is on the recollection of
the average customer, who retains a general rather than
specific impression of the marks. Winnebago Industries,
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
Serial No. 85019662
4
108 (TTAB 1975). Since the services at issue are
accounting services for individuals and small businesses
and income tax preparation, prospective purchasers of
applicant’s services are individuals and small businesses
requiring accounting services and tax preparation services.
See the discussion below.
While marks must be compared in their entireties, it
is not improper to accord more or less weight to a
particular feature of a mark. In re National Data Corp.,
753 F.2d 1056, 24 USPQ2d 749, 751 (Fed. Cir. 1983).
Descriptive terms such as “Tax Services” in applicant’s
mark and “Tax” in the registrant’s mark are typically less
significant or less dominant when comparing marks. See In
re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-
34 (Fed. Cir. 1997); In re Nat’l Data Corp., 224 USPQ at
752. Applicant concedes that he disclaimed “Tax Services”
because “it may be considered descriptive in nature.”2
Likewise, the word “tax” in the registered mark is
descriptive for income tax preparation.
Accordingly, it is appropriate that we should give
greater weight to the leading, dominant words ADVANCED
and ADVANCE in determining whether the marks are similar.

2 Applicant’s Brief, p. 6.

Serial No. 85019662
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Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189
USPQ 693, 695 (CCPA 1976) (“The issue of whether a portion
of a mark is dominant turns on the facts of each case”);
and In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB
1987) (“applicant conceded the common, descriptive nature
of the word ‘originals’ as applied to apparel by
disclaiming it”).
Thus, we find that the marks ADVANCED TAX SERVICES and
ADVANCE TAX are very similar. Applicant argues that “the
addition of the unique letter ‘D’ in the first word
‘ADVANCED’ of Appellant’s mark, presents a different sound
quality, an alliteration, that is missing in the ADVANCE
TAX mark.”3 We disagree. We find that the addition of the
letter “D” in the word “Advanced” in the mark ADVANCED TAX
SERVICES is barely perceptible. In this regard, slight
differences in marks do not normally create dissimilar
marks. In re Great Lakes Canning, Inc., 227 USPQ 483, 485
(TTAB 1985) (“Moreover, although there are certain
differences between the [marks’ CAYNA and CANA] appearance,
namely, the inclusion of the letter ‘Y’ and the design
feature in applicant’s mark, there are also obvious
similarities between them. Considering the similarities

3 Applicant’s Brief, p. 6.

Serial No. 85019662
6
between the marks in sound and appearance, and taking into
account the normal fallibility of human memory over a
period of time (a factor that becomes important if a
purchaser encounters one of these products and some weeks,
months, or even years later comes across the other), we
believe that the marks create substantially similar
commercial impressions”). See also United States Mineral
Products Co. v. GAF Corp., 197 USPQ 301, 306 (TTAB 1977)
(“‘AFCO’ and ‘CAFCO,’ which differ only as to the letter
‘C’ in USM’s mark, are substantially similar in appearance
and sound”); In re Bear Brand Hosiery Co., 194 USPQ 444,
445 (TTAB 1977) (“The mark of the applicant, ‘KIKS’ and the
cited mark ‘KIKI’ differ only in the terminal letter of
each mark. While differing in sound, the marks are similar
in appearance and have a somewhat similar connotation”).
Applicant references two registrations incorporating
the word “Advance” and two registrations incorporating the
word “Advanced” for tax related services and argues that
“Advance” is a weak term that is entitled to a narrow scope
of protection.4 Applicant references the following use
based registrations:

4 Applicant’s Brief, pp. 8-10.

Serial No. 85019662
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1. Registration No. 3888627 for the mark A ADVANCED
DATA and design, on the Principal Register, for “tax
consulting services.” Registrant disclaimed the exclusive
right to use “Advanced Data”;
2. Registration No. 3045902 for the mark ADVANCE and
design, on the Principal Register, for “payroll tax debiting
services.” Registrant disclaimed the exclusive right to use
the word “Advance”;
3. Registration No. 3523700 for the mark ADVANCE WITH
CONFIDENCE, on the Principal Register, for “income tax
preparation”; and
4. Registration No. 3361208 for the mark ADVANCED
FINANCIAL STRATEGIES, on the Principal Register under
Section 2(f), for “tax planning services.” Registrant
disclaimed the exclusive right to use the word “Financial.”5
Third-party registrations do not prove that ADVANCE
TAX is a weak term. Absent evidence of actual use, third-
party registrations have little probative value because
they are not evidence that the marks are in use on a
commercial scale or that the public has become familiar
with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing

5 Applicant’s February 4, 2011 Office action.

Serial No. 85019662
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public is not aware of registrations reposing in the U.S.
Patent and Trademark Office). See also In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
[I]t would be sheer speculation to draw
any inferences about which, if any of
the marks subject of the third party
[sic] registrations are still in use.
Because of this doubt, third party
[sic] registration evidence proves
nothing about the impact of the third-
party marks on purchasers in terms of
dilution of the mark in question or
conditioning of the purchasers as to
their weakness in distinguishing
source.

In re Hub Distributing, Inc., 218 USPQ at 286. See also
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to strength of a
mark, however, registration evidence may not be given any
weight”).
Nevertheless, third-party registrations may be used in
the manner of a dictionary to show that a mark or a portion
of a mark is descriptive or suggestive of services because a
term has a recognized meaning. In this regard, the word
“Advance” is the root word of “Advanced.”6 “Advance” is
defined, inter alia, as “to move or bring forward,” “to

6 The Random House Dictionary of the English Language
(Unabridged), p. 28 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 85019662
9
improve; further.”7 “Advanced” is defined, inter alia,
“ahead or far or further along in progress, complexity,
knowledge, skill, etc.: an advanced class in Spanish; to
take a course in advanced mathematics.”8 In this case, the
registrations demonstrate that the word “Advance” suggests
knowledge or skill in the field (e.g., an advanced knowledge
in financial matters).
However, none of the above-noted third-party
registrations are as close to the registered mark ADVANCE
TAX as is applicant’s mark ADVANCED TAX SERVICES. The mark
ADVANCE is for different services (i.e., payroll tax
debiting services). Moreover, as the Federal Circuit
stated, “[e]ven if some prior registrations had some
characteristics similar to [registrant’s mark], the PTO’s
allowance of such prior registrations does not bind the
Board or this court.” In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Because the cited mark ADVANCE TAX has been registered,
it is entitled to a presumption of validity by Section 7(b)
of the Trademark Act of 1946, 15 U.S.C. § 1057(b) (i.e., a
certificate of registration is prima facie evidence of the
validity of the registered mark and of the registration of

7 Id.
8 Id.
Serial No. 85019662
10
the mark, of the ownership of the mark, and of the owner's
exclusive right to use the registered mark in commerce on or
in connection with the goods or services specified in the
registration). Thus, the cited registration cannot be
treated as merely descriptive; we must consider the mark to
be at worst suggestive. Further, even if we agreed that
registrant’s mark was inherently weak, that would not be
fatal to finding that the marks are similar because even
weak marks are entitled to protection against confusion.
King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 109 (CCPA 1974). In this regard, even
if registrant’s mark ADVANCE TAX is inherently weak, it is
not so weak as to allow the registration of applicant’s mark
ADVANCED TAX SERVICES for closely related services. See the
discussion below regarding the similarity of the services.
In view of the foregoing, we find that applicant’s
mark ADVANCED TAX SERVICES is similar to the mark ADVANCE
TAX in the cited registration in terms of appearance,
sound, meaning and commercial impression.
B. The similarity or dissimilarity and nature of the
services, channels of trade and classes of consumers.

The scope of the registration applicant seeks is
defined by the recitation of services in the application
(and not by its actual or intended use). It is this
Serial No. 85019662
11
description that we must look to in determining applicant’s
right to register:
The authority is legion that the
question of registrability of an
applicant's mark must be decided on the
basis of the identification of goods
set forth in the application regardless
of what the record may reveal as to the
particular nature of an applicant's
goods, the particular channels of trade
or the class of purchasers to which
sales of the goods are directed.

Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
By the same token, in considering the scope of the
cited registration, we look to the recitation of services
in the registration itself, and not to extrinsic evidence
about the registrant’s actual services, customers, or
channels of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB
1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119
USPQ 139 (CCPA 1958).
Applicant is seeking to register his mark for
accounting services for individuals and small businesses
while the recitation of services in the cited registration
is income tax preparation, not including loans or lending.
“Accounting” is defined as “the act or a system of
establishing or settling financial accounts; esp., the
process of recording transactions in the financial records
Serial No. 85019662
12
of a business and periodically extracting, sorting, and
summarizing the recorded transactions to produce a set of
financial records.”9 This information may be used to
determine, inter alia, what taxes a business must pay.10
“Tax accounting,” a type of accounting, is defined as “the
accounting rules and methods used in determining a
taxpayer’s liability.”11 An “accountant” is defined as “a
person authorized under applicable law to practice public
accounting; a person whose business is to keep books or
accounts, to perform financial audits and control
accounting systems, and to give tax advice.”12 Accordingly,
accounting services include income tax preparation services
and, therefore, the services are closely related.
The examining attorney submitted numerous use-based,
third-party registrations for accounting services and

9 Black’s Law Dictionary (9th ed. 2009).
10 “Accounting,” Encyclopedia Britannica (2012). The Board may
take judicial notice of information from encyclopedias.
Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana
Inc., 98 USPQ2d 1921, 1934 n.6 (TTAB 2011).
11 Black’s Law Dictionary (9th ed. 2009). See also “Accounting,”
Encyclopedia Britannica (2012); AccountingCoach.com (“Other
sectors of the accounting field include cost accounting, tax
accounting and auditing) (attached to applicant’s September 5,
2011 response).
12 Black’s Law Dictionary (9th ed. 2009). See also
YourDictionary.com defining an accountant as “one that keeps,
[sic] audits, and inspects the financial records of individuals
or business concerns and prepares financial and tax reports.”
The definition was derived from The American Heritage Dictionary
of the English Language (4th ed. 2010) and attached to the March
4, 2011 Office action.

Serial No. 85019662
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income tax preparation to show that these services are
related (e.g., Registration No. 3668004 for the mark THE
REFUND PLACE, Registration No. 3862243 for the mark WYLIE
GROUP and Registration No. 3827725 for the mark ALPHA TAX).
Third-party registrations which individually cover a number
of different services that are based on use in commerce may
have some probative value to the extent that they serve to
suggest that the listed services are of a type which may
emanate from the same source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
In addition, the examining attorney submitted the
evidence listed below:
1. Charles McCabe, “Choosing The Right Tax Preparer
For You,” an article posted on the unclefed.com website
which analyzes the advantages and disadvantages of various
income tax preparers including independent income tax
preparers, small accounting firms, and large accounting
firms;13 and
2. “Alexandria Accounting and Tax Services” listings
in Yellowpages.com providing listings of companies offering
accounting and tax services (e.g., Universal Accounting and

13 Applicant’s September 5, 2001 Office action.

Serial No. 85019662
14
Tax Svc., Wisdom Tax & Accounting Svc., Salem Tax &
Accounting Svc., etc.).14
In view of the foregoing, we find that applicant’s
“accounting services for individuals and small businesses”
are closely related to registrant’s “income tax
preparation” services.
With respect to the channels and trade and classes of
consumers, the above-noted article by Charles McCabe,
“Choosing The Right Tax Preparer For You,” presented
criteria to use to select either an independent tax
preparer or a large or small accounting firm. Thus,
according to this author, when selecting accounting
services or income tax preparation services, individuals
and small businesses will encounter professionals offering
both services. Likewise, the “Alexandria Accounting and
Tax Services” listings in Yellowpages.com show that
accounting and tax services are presented to the same
consumers in the same marketing directory.
Applicant’s attempt to restrict the classes of
consumers to whom it renders its accounting services to
individuals and small businesses is ineffective because
registrant’s income tax preparation services are not
restricted and, therefore, may be rendered to individuals

14 September 23, 2011 Office action.
Serial No. 85019662
15
and small businesses.15 Accordingly, we cannot give any
weight to applicant’s argument that the services move in
different channels of trade and are sold to different
classes of consumers.
In view of the foregoing, we find that the services are
closely related that the services move in the same channels
of trade and are sold to the same classes of consumers.
C. The degree of consumer care.
Applicant argues, without any supporting evidence,
that individuals and businesses seeking accounting or tax
services will exercise high degree of consumer care. In
this case, the services of both applicant and registrant
are rendered to individuals. Without a better record, we
do not consider the customer selection of accounting
services or income tax preparers as requiring any more than
ordinary care and, therefore, we find that this factor is
neutral. See Amalgamated Bank of New York v. Amalgamated
Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1308
(Fed. Cir. 1988) (while some consumers choose their banks
with care, others do not). See also Crocker National Bank
v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690

15 Applicant’s Brief, pp. 7-8.

Serial No. 85019662
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(TTAB 1986), aff’d 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987).
D. Balancing the factors.
Because the marks are similar, applicant’s accounting
services encompass registrant’s tax preparation services,
and we must presume that the services move in the same
channels of trade and are sold to the same classes of
consumers, we find that applicant’s mark ADVANCED TAX
SERVICES for “accounting services for individuals and small
businesses” so resembles the mark ADVANCE TAX for
income tax preparation, not including loans or lending” as
be likely to cause confusion.
Decision: The refusal to register is affirmed.