From: Lee, Rebecca (TM)
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`Sent: 1/10/2020 7:59:40 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. Trademark Application Serial No. 87954792 - TSSP CAPITAL SOLUTIONS - 18-1126 -
`Request for Reconsideration Denied - Return to TTAB - Message 1 of 4
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`*************************************************
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`Attachment Information:
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`Count: 17
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`Files: marcumllp.com_pg. 1.jpg, marcumllp.com_pg. 2.jpg, morgcpa.com_pg. 1.jpg, morgcpa.com_pg.
`2.jpg, morgcpa.com_pg. 3.jpg, morgcpa.com_pg. 4.jpg, allaccountingservices.com_pg. 1.jpg,
`allaccountingservices.com_pg. 2.jpg, titantaxes.com_pg. 1.jpg, titantaxes.com_pg. 2.jpg,
`titantaxes.com_pg. 3.jpg, titantaxes.com_pg. 4.jpg, goldmansachs.com_pg. 1.jpg,
`goldmansachs.com_pg. 2.jpg, suntrustrh.com_pg. 1.jpg, suntrustrh.com_pg. 2.jpg, 87954792.doc
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`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
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`U.S. Application Serial No. 87954792
`
`
`
`Mark: TSSP CAPITAL SOLUTIONS
`
`
`Correspondence Address:
` JOHN A SQUIRES
`
` DILWORTH PAXSON LLP
`
` 1500 MARKET STREET SUITE 3500E
`
` PHILADELPHIA, PA 19102
`
`
`
`Applicant: Austin IP, LLC
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`
`
`Reference/Docket No. 18-1126
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`
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`Correspondence Email Address:
`
` tmconfirm@dilworthlaw.com
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`REQUEST FOR RECONSIDERATION
`AFTER FINAL ACTION
`DENIED
`
`
`Issue date: January 10, 2020
`
`
`The Office has reassigned this application to the undersigned trademark examining attorney.
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`

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`Applicant’s request for reconsideration is denied. See 37 C.F.R. §2.63(b)(3). The trademark
`examining attorney has carefully reviewed applicant’s request and determined the request did not:
`(1) raise a new issue, (2) resolve the outstanding issue, (3) provide any new or compelling evidence
`with regard to the outstanding issue, or (4) present analysis and arguments that were persuasive or
`shed new light on the outstanding issue. TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`
`Objection to Evidence
`
`
`
`Applicant has submitted a list of registrations within their Request for Reconsideration dated November
`11, 2019 at p. 4-5. However, the mere submission of a list of registrations does not make such
`registrations part of the record. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB
`2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184
`USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.
`
`To make third party registrations part of the record, an applicant must submit copies of the
`registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to
`appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP
`§710.03. Accordingly, these registrations and any arguments based thereon will not be considered.
`
`Moreover, applicant’s arguments were carefully considered and found to be unpersuasive for the
`following reasons.
`
`
`
`Applicant primarily argues applicant’s mark is not confusingly similar to registrant’s mark in appearance,
`sound, connotation and commercial impression, because applicant’s mark when viewed in its entirety
`includes the additional words “CAPITAL SOLUTIONS”, whereas registrant’s mark just consists of the
`acronym “TSSP”. See Request for Reconsideration dated November 11, 2019 at p. 2-3. However this is
`unpersuasive, because both applicant’s mark and the registrant’s mark share the identical dominant
`distinctive acronym of TSSP. Moreover, although marks are compared in their entireties, one feature of
`a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc.,
`671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056,
`1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is
`descriptive of or generic for a party’s services is typically less significant or less dominant when
`comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir.
`2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997));
`TMEP §1207.01(b)(viii), (c)(ii). In this case, the phrase CAPITAL SOLUTIONS in applicant’s mark is
`disclaimed, because the phrase is merely descriptive of or generic for applicant’s services. See the third
`party registrations attached to the Office Action dated June 28, 2018 at p. 4-21. Thus, this phrase is less
`significant in terms of affecting the mark’s commercial impression, and renders the acronym TSSP the
`more dominant element of the mark. Additionally, although there is no mechanical test to determine
`the dominant element of a mark, consumers would be more likely to perceive a distinctive term, even if
`suggestive, rather than a generic or descriptive term as the source-identifying feature of the mark. Tao
`Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1059-60 (TTAB 2017) (citing In re Dixie Rests.,
`
`

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`Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531,
`1534 (TTAB 2009)). In this case, consumers would be more likely to perceive the distinctive acronym
`TSSP as identifying the source of applicant’s services, rather than the descriptive or generic phrase of
`CAPITAL SOLUTIONS. Therefore, applicant’s mark shares the identical dominant distinctive acronym of
`TSSP with registrant’s mark TSSP.
`
`
`
`In addition, adding a term to a registered mark generally does not obviate the similarity between the
`compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section
`2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106
`(C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med.
`Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar);
`In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS
`confusingly similar); TMEP §1207.01(b)(iii). In the present case, applicant’s mark adds the phrase
`CAPITAL SOLUTIONS to the end of registrant’s mark TSSP, which does not obviate the similarity
`between the compared marks nor does it overcome a likelihood of confusion under Section 2(d).
`Further, the registrant’s mark TSSP is wholly encompassed within the applicant’s mark TSSP CAPITAL
`SOLUTIONS, thus, purchasers are likely to believe that applicant’s mark merely identifies an additional
`line of accounting, business, tax, banking and financial services. Specifically, purchasers are likely to
`believe that the mark TSSP CAPITAL SOLUTIONS identifies a new line of accounting, business, tax,
`banking and financial services offered under the TSSP line of financial services. Incorporating the
`entirety of one mark within another does not obviate the similarity between the compared marks, as in
`the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v.
`Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA
`CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram
`& Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design
`and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016)
`(finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090
`(TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP
`§1207.01(b)(iii). Thus, the marks are identical in part and confusingly similar.
`
`
`
`Additionally, the services are related, because many companies offer both applicant’s and registrant’s
`services and market these services under the same mark, as shown by the evidence attached to the
`Final Office Action dated January 14, 2019 at p. 2-27, http://www.marcumllp.com/services,
`http://www.morgcpa.com/client_services.html, http://allaccountingservices.com/business-services/,
`http://allaccountingservices.com/individual-services/, https://www.titantaxes.com/tax-services.html,
`https://www.titantaxes.com/accounting-services.html, https://www.titantaxes.com/business-
`consulting-services.html, https://www.titantaxes.com/other-services.html,
`https://www.goldmansachs.com/what-we-do/index.html, https://www.suntrustrh.com/investment-
`banking, https://www.suntrustrh.com/corporate-banking, https://dadavidson.com/WHAT-WE-
`DO/Investment-Banking/Services, https://www.investmentbank.barclays.com/banking.html#d-c-m,
`http://www.rwbaird.com/investment-banking/services-offerings, https://www.ccabalt.com/strategic-
`
`

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`advisory-services, https://www.ccabalt.com/investment-banking-services and
`https://www.ccabalt.com/valuation-financial-opinions.
`
`
`
`Furthermore, the trademark examining attorney has attached evidence from the USPTO’s X-Search
`database consisting of a number of third-party marks registered for use in connection with the same or
`similar services as those of both applicant and registrant in this case. This evidence shows that the
`services listed therein, namely, “Investment advice; Investment management; Investment consultation;
`Investment of funds for others; Accounting services; Business development services; Business consulting
`services; Business information services; Tax consultation; Tracking and monitoring insurance compliance
`for business purposes; Financial management; Financial asset management; Business brokerage services
`and related consulting; Investment banking services; Investment advisory services” are of a kind that
`may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737
`(TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel
`& Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
`n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). See the third party registrations attached herein.
`
`
`
`The overriding concern is not only to prevent buyer confusion as to the source of the services, but to
`protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See
`In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt
`regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP
`§1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001,
`1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed.
`Cir. 1988).
`
`
`
`Based on the facts of this application record and the evidence therein, the marks are confusingly similar
`and the services are related.
`
`
`Accordingly, the following refusal made final in the Office action dated January 14, 2019 is maintained
`and continued:
`
`
`
`
`
`
`
`• Section 2(d) Refusal – Likelihood of Confusion
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).
`
`
`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be
`notified to resume the appeal. See TMEP §715.04(a).
`
`

`

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`
`
`/Rebecca Lee/
`
`Examining Attorney
`
`Law Office 122
`
`(571) 272 - 7809
`
`Rebecca.Lee1@uspto.gov
`
`
`
`

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`httpsjhimmtitamaxescmwtaxesenriceshtrnl
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`8: ACCOUNTING SERVICES
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`At Titan Tax & Accounting Services LLC, we offer a
`broad spectrum of comprehensive and thorough year-
`round tax assistance for individuals and businesses,
`from managing sales tax compliance to business and
`estate tax planning to the preparation of personal and
`corporate returns to effective representation before
`taxation authorities. We take an active approach to all
`aspects of taxation —our seasoned stafi monitors
`compliance to avoid surprises at tax time, and stays
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`Titan Tax &Accounting Services ( Detroit )
`Titan Tax & Accounting Services ( Dearborn )
`7607 WVemor Hwy
`5466 Schaefer Road
`Detroit, MI 48209
`Dearbom, Ml 48126
`Toll Free: (855) 720-2600
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`himsjivmwtitantaxescornlacccunlirqsewiceshlrm
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`'TAITANTAX
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`At Trtan Tax 8. Accounting Sen/ices LLC, we recognize that accurate, well-organized financial information is critical
`to yourcorporate or personal financial health. Our detail-oriented and insightful staff is committed to providing the
`comprehensive reports, analysis, and services you need to manage yourfinances and assess your financial
`position. We offer a broad spectrum of meaningful and cost-effective accounting and auditing services, from
`bookkeeping services to financial statement preparation to finandal analysis to help you to manage your finances
`efficiently and accurately.
`
`At Trtan Tax 8. Accounting Sen/ices LLC, we leverage the power of the cloud to offer an accounting system that
`allows us to work collaboratively with you, our clients, minimizing costly and time-consuming errors and maximizing
`efficiency. This highly-arstomizable system gives you as much or as little direct involvement in your accounting and
`bookkeeping processes as you like 7 anything from simply entering checks and deposits to handling advanced
`bookkeeping transactions. Because you use the same system we use to analyze your trial balance and prepare
`your financials, this cloud-based system is safe, secure, and eliminates the time-consuming procea of transferring
`data back and forth, for maximum efficiency and flexibility.
`
`To succeed in business, you need to know where you are, financially. Well-organized, accurate financial records
`help your business run more efficiently, and are fundamental to the business decisions you are called upon to make
`every day. Trtan Tax &Accounting Senrtces LLC has the expertise to provide thorough full-charge bookkeeping
`sen/ices, including general journal and subsidiary ledger maintenance, bank statement reconciliation, and tracking
`and analysis of receivables and payables to help you keep your financial information accurate and up-to—date.
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`Understanding your financial health, including the movement of money into and out of your business, can make a
`critical difference to your short-term financial planning, and to your overall business success. At Titan Tax 8.
`Accounting Services LLC, our financial experts have the knowledge and insight to provide expert cash flow and
`budgeting analyses that can help you gain a clear picture of your company‘s financial position, minimize cost
`overruns, lost purchase discounts, and unccllectable receivables, and recognize potential strengths and
`weaknesses in your overall business plan. This value-added service is an indispensible tool for businesses, allowing
`you to plan intelligently for variations in your cash flow, and identify the best possible short-term financial strategy for
`your company.
`
`Whether as the basis for important corporate decisions by a business owner or the foundation of a prospective
`investor’s interest, an accurate and up-tc—date financial statement is critical to the success of any business. With
`deep experience in financial and management accounting, Trtan Tax & Accounting Services LLC brings integrity,
`insight, and experience to the preparation of professional, GAAP-compliant financial statements as well as tailor-
`made financial analyses. As your trusted business advisor, Trtan Tax 8: Accounting Services LLC can help you
`accurately evaluate your company’s assets, liabilities, equity, income, and expenses to assess and report on its
`financial health, and can assist management to identify and eliminate inefficiencies to realize an organization's full
`profit potential.
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`Trtan Tax & Accounting Services LLC provides professional compilation, review, and audit services to businesses of
`all sizes. We bring a passion for detail and accuracy and a wealth of accounting and auditing experience to the
`examination of your financial statements. Whether you need a detailed audit for your bank, a review for potential
`investors, or a compilation for your annual report, or your company has a reporting or compliance need outside the
`standard scope of any of these, Trtan Tax & Accounting Services LLC can quickly and accurately compile your
`financial records into meaningful GAAP—compliant financial statements that adhere to the highest standards, offer
`limited-scope review testing, and can deliver complete audit attestation.
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`ht‘tp5:,l,’www.titantaxes.(ornfhomehtml
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`5:20.03 PM 11102020
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`mtp3:lhvww.titardax%.cunlbiisinascorisuiiingsewiceshlrril
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`8i ACCOUNTING SERVICES
`nun SERVICES v
`ABOUT
`EWSLETTER
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`F
`
`(ROLL LE rEn
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`0%
`'TITANTAX“
` At Titan Tax KAccounfing Services LLC, our experienced stafiof business consultants is committed in assisting you through every phase of the business life cycle, applying our
`
`experience and insight to proVide you with meaningful and practical strategies and solutions to address the issues facing your business. From incorporation through business
`succession planning, we provide the comprehensive advice, Insight, and technical expertise you need to help your business achieve success at any stage
`
`Starting a business is challenging on many levels. from the hard work of establishing yourself in the marketplace to the complexities ofmanaging the paperwork and it’s easy to
`become overwhelmed without expert advice. With years of reaewoitd, handson business experience behind us, the team of detail-oriented professionals at ‘fitan Tax &Accounting
`Services LLC will not only help you to evaluate the advantages and disadvantages of corporations, partnerships, and LLCs, ensuring that you select the right entity for your new
`business, but can also guide you through formulating a bu5iness plan, dealing Wltl’l any necessary registration, permitting, or Iicensrng processes, managing compliance with total,
`state, and federal laws, and (an even provide a mantel evaluation to allow you to position your new business as advantageously as possible in the marketplace, or a business
`valuation, if you are considering the purchase of an existing business.
`
`The employee benefit plan landscape has changed dramatically over the last few years, and our staff of specialists is committed to helping you navigate these changes. We can review
`your existing plans for ERISA and tax compliance, and we can help you to understand your workforce, your ooyectives, and the advantages and deficiencies of your current employee
`benefit plan, analyze the marketplace with your specific requirements in mind, and uncover the bestfit for your obiedives and employees. AtTrtan Tax aAccounting Services LLC, we
`strive to provide creative, comprehensive employee benefit plans and can help you weigh the complex benefits and costs posed by today's qualified and nonqualified pension and profit
`s