Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA752058
`06/13/2016
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer Information
`
`Name
`
`Entity
`
`Address
`
`TaxBench, Inc.
`
`Corporation
`
`P.O. Box 307
`Mount Jackson, VA 22842
`UNITED STATES
`
`Citizenship
`
`Virginia
`
`Attorney informa-
`tion
`
`Thomas W. Brooke
`Holland & Knight
`800 17th Street, NW Suite 1100
`Washington, DC 20006
`UNITED STATES
`thomas.brooke@hklaw.com, ptdocketing@hklaw.com Phone:2026637271
`
`Applicant Information
`
`Application No
`
`86862155
`
`Publication date
`
`05/31/2016
`
`Opposition Filing
`Date
`
`Applicant
`
`06/13/2016
`
`Opposition Peri-
`od Ends
`
`06/30/2016
`
`TaxBench, Inc.
`1340 Massachusetts Ave SE
`Washington, DC 20003
`UNITED STATES
`
`Goods/Services Affected by Opposition
`
`Class 035. First Use: 2015/12/30 First Use In Commerce: 2015/12/30
`All goods and services in the class are opposed, namely: Appointment scheduling services
`
`Class 042. First Use: 2015/12/30 First Use In Commerce: 2015/12/30
`All goods and services in the class are opposed, namely: Providing a website featuring on-line non-
`downloadable software that enables users to access informational and educational content in the
`field of tax by way of connecting with a panel of Certified Public Accountants available to provide tax
`help through questions and answers and phone consultations
`
`Grounds for Opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`Mark Cited by Opposer as Basis for Opposition
`
`U.S. Application/ Registra-
`tion No.
`
`Registration Date
`
`Word Mark
`
`Goods/Services
`
`Application Date
`
`NONE
`
`NONE
`
`NONE
`
`TAXBENCH
`
`Tax preparation services, accounting services
`
`
`
`Attachments
`
`taxbench_Opposition.pdf(89102 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`
`/Thomas W. Brooke/
`
`Name
`
`Date
`
`Thomas W. Brooke
`
`06/13/2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`TAXBENCH & DESIGN .
`
`. :
`
`: :
`
`: Application Serial No. 86/862,155
`
`TaxBench, Inc.
`P.O. Box 307
`
`Mount Jackson, VA 22842
`
`V.
`
`Tax Bench, Inc.
`1340 Massachusetts Avenue
`
`Washington, DC 20003
`
`Opposer,
`
`Applicant.
`
`Attorney Docket No. 149640.00001
`
`NOTICE OF OPPOSITION
`
`In the matter of application Serial No. 86/862,155, for the mark TAX BENCH &
`
`DESIGN (hereinafter "App1icant's Mark"), covering "Providing a website featuring on-line non-
`
`downloadable software that enables users to access informational and educational content in the
`
`field of tax by way of connecting with a panel of Certified Public Accountants available to
`
`provide tax help through questions and answers and phone consultation, with an effective filing
`
`date of November 30, 2015, filed by Tax Bench Inc., Washington, DC hereinafter "Applicant"),
`
`and published for Opposition on May 31, 2016; TaxBench, Inc., a corporation organized under
`
`the laws of Virginia, having its principal place of business at Mount Jackson, Virginia
`
`(hereinafter "Opposer"), believes it will be damaged by the registration of Applicant's Mark and
`
`hereby opposes the registration of same.
`
`
`
`As grounds for the opposition Opposer declares as follows:
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`Opposer was incorporated on December 19, 2012 and has been using the TAX
`
`BENCH name mark in commerce since that time.
`
`On information and belief, Applicant had or should have had constructive
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`knowledge of the existence of Opposer, and its use in commerce of the name and
`
`mark TAXBENCH.
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`Opposer has policed its mark and enforced its rights to its TAXBENCH mark.
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`. Both parties market their services under their respective marks to the same classes
`
`of customers.
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`On information and belief, the methods of advertising and promotion used by the
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`parties are identical, as are the channels of trade.
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`. Any use by Applicant of the mark TAXBENCH in any form for tax preparation
`
`services or any other financial accounting service and or registration of the mark
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`TAX BENCH in Classes 35 and 42 by Applicant is likely to cause confusion
`
`amongst consumers.
`
`.
`
`In view of Opposer's prior use of the mark TAXBENCH, the resemblance of
`
`Applicant's Mark and Opposer's Mark, and the identical nature of the services
`
`offered by each party,
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`the charmels of trade and the class of customers,
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`registration of Applicant's Mark for Applicant's goods in Classes 35 and 42 will
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`injure Opposer by causing a likelihood of customer confusion, mistake or
`
`deception as to the source or sponsorship of the respective services of Applicant
`
`and Opposer,
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`to Opposer's damage, and in violation of the provisions of the
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`Trademark Act Section 2(d) of the Trademark Act of 1946, 15 U.S.C. Section
`
`1052(d).
`
`#46835509_v1
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`
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`WHEREOF, Opposer prays that this Notice of Opposition be sustained and registration
`
`of application Serial No. 86/862,155 be refused.
`
`_
`
`Respectfully sub
`
`
`Al 3?
`
`Thomas WIllCOX Brooke
`
`HOLLAND & KNIGHT LLP
`
`800 17th Street, NW Suite 1100
`
`Washington, DC 20006
`Tel:
`(202) 663-7271
`Fax:
`(202) 955-5564
`Email: thomas.brooke@hklaw.com
`
`Counsel for Opposer
`
`/1
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`‘M L
`
`ll 3 Z’ 'Q
`
`Date:
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`#46835509_vl
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`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing was furnished by U.S. Mail
`I 4
`', 2016: to on June
`2
`
`TaxBench, Inc.
`
`1346 Massachusetts Avenue, SE
`
`Washington, DC 20003
`
`
`
`//I
`
`Thomas W. Brooke
`
`#46835509_vl
