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:
`
`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
`
`knowledge of the existence of Opposer, and its use in commerce of the name and
`
`mark TAXBENCH.
`
`Opposer has policed its mark and enforced its rights to its TAXBENCH mark.
`
`. Both parties market their services under their respective marks to the same classes
`
`of customers.
`
`On information and belief, the methods of advertising and promotion used by the
`
`parties are identical, as are the channels of trade.
`
`. 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
`
`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,
`
`the charmels of trade and the class of customers,
`
`registration of Applicant's Mark for Applicant's goods in Classes 35 and 42 will
`
`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,
`
`to Opposer's damage, and in violation of the provisions of the
`
`Trademark Act Section 2(d) of the Trademark Act of 1946, 15 U.S.C. Section
`
`1052(d).
`
`#46835509_v1
`
`

`
`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
`
`‘M L
`
`ll 3 Z’ 'Q
`
`Date:
`
`#46835509_vl
`
`

`
`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

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.

We are unable to display this document.

PTO Denying Access

Refresh this Document
Go to the Docket