Ryan, L.L.C.

This Opinion is Not a
Precedent of the TTAB
Mailed: February 26, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Ryan, L.L.C.
_____
Serial No. 98041889
_____
Rachel Blue of McAfee & Taft,
for Ryan, L.L.C.
Caroline Smith, Trademark Examining Attorney, Law Office 110,
Loksye Lee Riso, Managing Attorney.
_____
Before Goodman, Stanley, and Bradley,
Administrative Trademark Judges.
Opinion by Stanley, Administrative Trademark Judge:
Ryan, L.L.C. (“Applicant”) seeks registration on the Supplemental Register of the
standard-character mark TAX.COM for the followings services in International Class
42:
Software as a service (SAAS) services featuring software
for use in real and personal property tax compliance and
appeals management, sales and use tax calculation and
compliance management, unclaimed property compliance
management, transfer pricing documentation and

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reporting, and identification of public and private funding
sources for tax calculation and compliance management.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified services, so resembles
the standard-character mark ETAX.COM (the “Cited Mark”), registered on the
Supplemental Register, for the services listed below, that it is likely to cause
confusion, to cause mistake, or to deceive:
Providing a website featuring on-line non-downloadable
software that enables users to prepare and file tax forms,
in International Class 42.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. The case is fully briefed and ready for
decision. We affirm the refusal to register Applicant’s mark.3
1 Application Serial No. 98041889 was filed on June 14, 2023 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging December 15, 2022 as the date of first use
anywhere and date of first use in commerce.
2 Registration No. 6366427 issued on May 25, 2021. The cited registration is owned by E Tax
LLC (“Registrant”).
3 Citations to the prosecution file are to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system in .pdf format. Citations to the appeal record are to TTABVUE,
the Board’s online docketing system.

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I. Evidentiary Issue
With its appeal brief, Applicant submitted for the first time screenshots from the
website G2.com, including customer reviews of Applicant’s services.4 The Examining
Attorney objects to consideration of this new evidence as untimely submitted.5
The record in an application should be complete prior to the filing of an appeal.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). Insofar as the Examining Attorney
timely objected to Applicant’s late-filed evidence, the objection is sustained, and this
evidence has been given no consideration. See In re Inn at St. John’s, LLC, No.
87075988, 2018 TTAB LEXIS 170, at *3-4, aff’d per curiam, 777 F. App’x 516 (Fed.
Cir. 2019).
II. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). See also In re Charger Ventures LLC, 64 F.4th 1375, 1379 (Fed. Cir. 2023).
Our determination under Section 2(d) is based on an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E. I. DuPont de Nemours
& Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”); see also In re Majestic Distilling
Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003). When analyzing the likelihood of confusion
factors, the overriding concerns are not only to prevent buyer confusion as to the
4 Applicant’s Br., 6 TTABVUE 22-31.
5 Examining Attorney’s Br., 8 TTABVUE 2-3.

Serial No. 98041889
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source of the goods and services, but also to protect registrants from adverse
commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil
Co., 992 F.2d 1204, 1207-08 (Fed. Cir. 1993).
In any likelihood of confusion analysis, different DuPont factors may play a
dominant role and some factors may not be relevant. Naterra Int’l, Inc. v. Bensalem,
92 F.4th 1113, 1116 (Fed. Cir. 2024) (citing Tiger Lily Ventures Ltd. v. Barclays Cap.
Inc., 35 F.4th 1352, 1362 (Fed. Cir. 2022)). In addition, varying weight may be
assigned to each factor depending on the evidence presented, and “any one of the
factors may control a particular case.” Id.; see also Charger Ventures, 64 F.4th at 1381.
Although we consider each DuPont factor for which there is evidence and argument,
In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019), two key considerations
are the similarities between the marks and the similarities between the goods and
services. In re i.am.symbolic, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017) (quoting Herbko
Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65 (Fed. Cir. 2002)). These
factors, and others, are discussed below.
A. Weakness of the Cited Mark
Because it may affect the scope of protection to which the Cited Mark is entitled,
we turn first to the sixth DuPont factor, “[t]he number and nature of similar marks
in use on similar goods [or services].” DuPont, 476 F.2d at 1361. This factor allows an
applicant in an ex parte appeal to contract the scope of protection of a cited mark by
adducing evidence of conceptual and commercial weakness. Cf. Heil Co. v. Tripleye
GmbH, No. 91277359, 2024 TTAB LEXIS 494, at *48 (“[The sixth] DuPont factor

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allows a defendant to contract the scope of protection of a plaintiff’s mark by adducing
evidence of conceptual and commercial weakness.”).6
“[T]he strength of a mark is not a binary factor” and instead “varies along a
spectrum from very strong to very weak.” Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 1340 (Fed. Cir. 2015) (internal citations omitted). “The weaker [the
cited] mark, the closer an applicant’s mark can come without causing a likelihood of
confusion and thereby invading what amounts to its comparatively narrower range
of protection.” Id. at 1338.
Conceptual or inherent strength is a measure of a mark’s distinctiveness. In re
Chippendales USA, Inc., 622 F.3d 1346, 1353-54 (Fed. Cir. 2010). Distinctiveness is
“often classified in categories of generally increasing distinctiveness[:] … (1) generic;
(2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. 763, 768 (1992). “Marks that are descriptive or highly
suggestive are entitled to a narrower scope of protection, i.e., are less likely to
generate confusion over source identification, than their more fanciful counterparts.”
Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1362 (Fed. Cir. 2023) (quoting Juice
Generation, 794 F.3d at 1339); see also Jack Wolfskin Ausrustung Fur Draussen
6 The fifth DuPont factor examines the extent to which the public perceives the mark as
indicating a single source of origin, i.e., its fame or commercial strength. DuPont, 476 F.2d at
1361. There is no evidence of record relating to commercial strength under the fifth DuPont
factor, but in an ex parte appeal, the owner of the cited registration is not a party, and the
Examining Attorney is under no obligation to demonstrate exposure to or recognition of the
cited mark in the marketplace. In re Integrated Embedded, No. 86140341, 2016 TTAB LEXIS
470, at *26. See also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 1207.01(d)(ix) (Nov. 2025). The fifth DuPont factor, as is normally the case in ex parte
proceedings, is treated as neutral. See In re Thomas, No. 78334625, 2006 TTAB LEXIS 135,
at *18 n.11.

Serial No. 98041889
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GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1373 (Fed. Cir.
2015).
Because the Cited Mark is registered on the Supplemental Register, that status
operates as an admission that the mark was merely descriptive at least at the time
of registration. See In re The Clorox Co., 578 F.2d 305, 308 (CCPA 1978) (application
for Supplemental Registration is an admission of descriptiveness); In re Future Ads
LLC, No. 85134539, 2012 TTAB LEXIS 283, at *12 (“Registration on the
Supplemental Register is prima facie evidence that, at least at the time of
registration, the registered mark was merely descriptive.”). Accordingly, the Cited
Mark is not inherently distinctive, and as such is conceptually weak. The record does
not contain evidence demonstrating commercial weakness of the Cited Mark.7
The Cited Mark’s conceptual weakness weighs against a finding of likelihood of
confusion.
B. The Marks
We turn now to the first DuPont factor, which involves an analysis of the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
7 Applicant points to third-party websites − ultimatetax.com, loctax.com, accuratetax.com,
pro.bloombergtax.com, industrysalestax.com, fastsalestax.com, and advantax.com − to show
that the “TAX.COM” element in the Cited Mark is weak and entitled to a narrow scope of
protection. Applicant’s Br., 6 TTABVUE 15. We agree that these third-party uses
demonstrate weakness of “TAX.COM” for tax-related services. But the Cited Mark is
ETAX.COM, and Applicant’s mark and the Cited Mark are far more similar to each other
than to any of these third‑party uses such that this evidence does not demonstrate conceptual
or commercial weakness of the Cited Mark. See, e.g., Sabhnani v. Mirage Brands, LLC, No.
92068086, 2021 TTAB LEXIS 464, at *32 (third-party registration evidence discounted where
they contained “additional elements that cause many of them to be less similar to Petitioner’s
mark than Respondent’s marks are”). The Cited Mark, however, is conceptually weak
irrespective of the third-party use evidence.

Serial No. 98041889
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connotation, and commercial impression. Palm Bay Imps. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005); see also
Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1319 (Fed. Cir. 2014).
“Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” Inn at St. John’s, 2018 TTAB LEXIS 170, at *13 (quoting In re
Davia, No. 85497617, 2014 TTAB LEXIS 214, at *4); accord Krim-Ko Corp. v. Coca-
Cola Bottling Co., 390 F.2d 728, 732 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
“‘[S]imilarity is not a binary factor but is a matter of degree.’” In re St. Helena
Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014) (quoting In re Coors Brewing Co., 343 F.3d
1340, 1344 (Fed. Cir. 2003)). The proper test regarding similarity “‘is not a side-by-
side comparison of the marks, but instead whether the marks are sufficiently similar
in terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.’” Cai v. Diamond Hong,
Inc., 901 F.3d 1367, 1373 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012)). “The focus is on the recollection
of the average purchaser, who normally retains a general rather than a specific
impression of trademarks.” In re St. Julian Wine Co., No. 87834973, 2020 TTAB
LEXIS 196, at *13.
Our analysis cannot be predicated on dissecting the marks into their various
components; that is, our finding must be based on the entire marks, not just part of
the marks. See, e.g., In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985); see

Serial No. 98041889
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also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007 (CCPA 1981) (“It is
axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion.”). “No element
of a mark is ignored simply because it is less dominant, or would not have trademark
significance if used alone.” In re Electrolyte Labs. Inc., 929 F.2d 645, 647 (Fed. Cir.
1990) (citing Spice Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293 (CCPA
1974)). Nonetheless, “in articulating reasons for reaching a conclusion on the issue of
confusion, 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 consideration of the marks in their entireties.” In re Detroit
Athletic Co., 903 F.3d 1297, 1306, 1305 (Fed. Cir. 2018) (quoting Nat’l Data Corp.,
753 F.2d at 1058).
Citing the Board’s decision in In re Hunke & Jochheim, Applicant argues that the
scope of protection for a mark registered on the Supplemental Register is “limited to
the substantially identical notation and/or to the subsequent use and registration
thereof for substantially similar goods.”8 This is not the standard. The Board has
clarified that “there is no categorical rule that citation of registrations on the
Supplemental Register is limited to registrations of ‘substantially identical’ marks
for ‘substantially similar goods,’ or that a different test for likelihood of confusion
should be applied in such cases.” In re Morinaga Nyugyo Kabushiki Kaisha, No.
86338392, 2016 TTAB LEXIS 448, at *18; see also Clorox, 578 F.2d at 308 (there is
8 Applicant’s Br., 6 TTABVUE 9 (quoting In re Hunke & Jochheim, 1975 TTAB LEXIS 13, at
*4 (proceeding number not available)).

Serial No. 98041889
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no basis for applying a different standard for determining likelihood of confusion for
marks on the Supplemental Register)).
With these principles in mind, we compare Applicant’s standard-character mark
TAX.COM with the cited standard-character mark ETAX.COM.
Applicant’s mark and the Cited Mark are similar in sound and appearance
because they share the identical element TAX.COM, and Applicant’s mark contains
no additional wording. Although inclusion of one mark within another does not per
se establish likelihood of confusion, the fact that Applicant’s mark is wholly subsumed
within the Cited Mark heightens their similarity. Likelihood of confusion often has
been found where the entirety of one mark is incorporated within another. See e.g.,
Charger Ventures, 64 F.4th at 1381-82 (SPARK LIVING and SPARK confusingly
similar); In re Mighty Leaf Tea, 601 F.3d. 1342, 1347-48 (Fed. Cir. 2010) (ML and ML
MARK LEES confusingly similar); Coca-Cola Bottling Co. v. Joseph E. Seagram and
Sons, Inc., 526 F.2d 556, 557 (CCPA 1975) (BENGAL and BENGAL LANCER
confusingly similar); In re West Point-Pepperell, Inc., 468 F.2d 200, 201 (CCPA 1972)
(WEST POINT PEPPERELL and WEST POINT confusingly similar); Lilly Pulitzer,
Inc. v. Lilli Ann Corp., 376 F.2d 324, 324-25 (CCPA 1967) (THE LILLY and LILLI
ANN confusingly similar); Christian Broad. Network Inc. v. ABS-CBN Int’l, No.
92044366, 2007 TTAB LEXIS 72, at *30 (ABS-CBN and CBN confusingly similar).
The marks also convey similar commercial impressions. The combination of “TAX”
with the generic top‑level domain “.COM” suggests tax‑related services provided
online. The Cited Mark adds the letter “E” before “TAX.COM,” but, as Applicant

Serial No. 98041889
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concedes, “the prefix ‘E’ in ETAX.COM is a common abbreviation for ‘electronic’ or
‘online,’ which is widely used in the industry to denote digital tax services.”9 See also
In re Styleclick.com Inc., No. 75459910, 2000 TTAB LEXIS 721, at *10 (“the meaning
of the ‘e-’ prefix is commonly recognized and understood by virtually everyone as a
designation for the Internet”). As such, the abbreviation “E” for “electronic” or
“online” in the Cited Mark reinforces that Registrant’s tax-related services are
provided online.
Finally, Applicant’s mark and the Cited Mark are both in standard-character
format, so we must consider that Applicant and Registrant could display their marks
in a font style, size, or color similar to the other, thereby heightening the likelihood
of confusion. In re Aquitaine Wine USA, LLC, No. 86928469, 2018 TTAB LEXIS 108,
at *13; In re Strategic Partners Inc., No. 77903451, 2012 TTAB LEXIS 80, at *6-7.
Applicant argues that TAX.COM is so weak that any additional matter added to
“TAX.COM” suffices to distinguish the marks.10 Even assuming arguendo that
consumers could differentiate TAX.COM‑formative marks on that basis, the
argument fails here because Applicant’s mark consists solely of TAX.COM and
includes no additional matter.
Considering the marks in their entireties, we find them highly similar in
appearance, sound, meaning, and commercial impression because they share the
identical element TAX.COM. Any differences are outweighed by that shared element,
9 Applicant’s Reply Br., 9 TTABVUE 2.
10 Applicant’s Br., 6 TTABVUE 15-16; Applicant’s Reply Br., 9 TTABVUE 2.

Serial No. 98041889
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which is the sole element of Applicant’s mark. Accordingly, the similarity of the
marks favors a finding of likelihood of confusion.
C. The Services and Trade Channels
We turn next to the second DuPont factor, which considers the “similarity or
dissimilarity and nature of the … services as described in an application or
registration,” and the third DuPont factor, which considers “[t]he similarity or
dissimilarity of established, likely-to-continue trade channels.” Detroit Athletic, 903
F.3d at 1306, 1308 (quoting DuPont, 476 F.2d at 1361). It is “not necessary that the
products [or services] be similar or even competitive to support a finding of a
likelihood of confusion.” Coach Servs., 668 F.3d at 1369 (quoting 7-Eleven, Inc. v.
Wechsler, Opp. No. 91117739, 2007 TTAB LEXIS 58, at *28 (TTAB 2007)).
“[L]ikelihood of confusion can be found ‘if the respective products [or services] are
related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the same
source.’” Id.
In making our determination regarding the similarity of the services, we must
look to the services as identified in the subject application and the cited registration.
See Stone Lion Cap. Partners, 746 F.3d at 1323 (citing Octocom Sys., Inc. v. Hous.
Comput. Servs. Inc., 918 F.2d 937, 942 (Fed. Cir. 1990) (“‘[T]he 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

Serial No. 98041889
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class of purchasers to which sales of the goods are directed.’”)). It is sufficient for a
finding of likelihood of confusion as to a particular class if relatedness is established
for any identified service within that class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335, 1336 (CCPA 1981).
Evidence of relatedness might include news articles and/or evidence from
computer databases showing that the relevant services are used together or used by
the same purchasers; advertisements showing that the relevant services are
advertised together or sold by the same manufacturer or dealer; and/or copies of prior
use-based registrations of the same mark for both an applicant’s services (or similar
services) and the services listed in the cited registration (or similar services). See, e.g.,
Davia, 2014 TTAB LEXIS 214, at *21-24 (finding pepper sauce and agave related
where evidence showed both were used for the same purpose in the same recipes and
thus consumers were likely to purchase the products at the same time and in the
same stores).
As noted above, the Class 42 services in the subject application are:
Software as a service (SAAS) services featuring software for use
in real and personal property tax compliance and appeals
management, sales and use tax calculation and compliance
management, unclaimed property compliance management,
transfer pricing documentation and reporting, and identification
of public and private funding sources for tax calculation and
compliance management;11
11 “SaaS” (the abbreviation for “Software as a Service”) is defined as “a software distribution
method in which a service provider gives customers access through the internet to
applications, usually ones developed and owned by the provider.” March 28, 2024 Non-Final
Office Action, TSDR at 147 (definition from dictionary.com).

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and the Class 42 services in the cited registration are: “Providing a website featuring
on-line non-downloadable software that enables users to prepare and file tax forms.”
The Examining Attorney submitted third‑party website evidence showing that the
same entities commonly provide the relevant services under the same marks.
Specifically, the record includes screenshots from several providers offering online
tax‑form preparation and filing, as well as tax compliance and calculation
functionality.12 For example:
• avalara.com: Describing Avalara’s online software solutions for, among
other things, preparing and filing tax returns and calculating sales, use,
and property taxes.13
• sovos.com: Describing Sovos’ online software solution for, among other
things, preparing and filing tax forms and calculating use and sales
taxes.14
• cscglobal.com: Describing CSC’s online software solutions for, among
other things, preparing and filing tax forms and automating all aspects
of personal and real property tax compliance.15
• wolterskluwer.com: Describing Wolters Kluwer’s online software
solutions for, among other things, preparing and filing tax forms and
managing tax compliance.16
• yondatax.com: Describing Yonda’s online software solution for, among
other things, preparing and filing tax forms and calculating and
reporting sales tax.17
12 March 28, 2024 Non-Final Office Action, TSDR at 28-104, 112-146; November 15, 2024
Final Office Action, TSDR at 43-50, 53-92.
13 March 28, 2024 Non-Final Office Action, TSDR at 28-51.
14 Id. at 52-58.
15 Id. at 59-80.
16 Id. at 81-104.
17 Id. at 112-15.

Serial No. 98041889
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• accuratetax.com: Describing Accurate Tax’s online software solution, for
among other things, preparing and filing tax forms and automating the
sales tax process.18
• sage.com: Describing Sage’s online software solution, for among other
things, preparing and filing tax forms and calculating sales and use
taxes.19
• taxjar.com: Describing Tax Jar’s online software solution, for among
other things, preparing and filing tax forms and calculating sales tax.20
• vertexinc.com: Describing Vertex’s online software solution, for among
other things, preparing and filing tax forms and calculating sales and
use taxes.21
• thomsonreuters.com: Describing Thomson Reuter’s online software
solution, for among other things, preparing and filing tax forms and
managing tax compliance.22
This evidence shows consumer exposure to Applicant’s and Registrant’s respective
services as identified in the involved application and cited registration emanating
from a common source under a single brand name. See Detroit Athletic, 903 F.3d at
1306 (evidence that third parties use the same mark for the involved goods and
services “suggests that consumers are accustomed to seeing a single mark associated
with a source that sells both”); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
1261, 1267 (Fed. Cir. 2002) (stating that evidence that “a single company sells the
goods and services of both parties, if presented, is relevant to a relatedness analysis”);
In re Davey Prods. Pty Ltd., No. 77029776, 2009 TTAB LEXIS 524, at *14-15 (third-
18 Id. at 131-35.
19 November 15, 2024 Final Office Action, TSDR at 43-50.
20 Id. at 68-74.
21 Id. at 75-80.
22 Id. at 81-92.

Serial No. 98041889
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party website evidence shows that the applicant’s and registrant’s products “can be
manufactured and sold by a single source”).
Based on this evidence and discussion, we find that Applicant’s services and
Registrant’s services are related.
Turning to the trade channels, the Internet evidence discussed above establishes
that Applicant’s and Registrant’s services are offered by the same entities via the
same websites, indicating shared trade channels. See, e.g., Charger Ventures, 64 F.4th
at 1382 (third-party website evidence showed that services and channels of trade
were similar); Davey Prods. Pty Ltd., 2009 TTAB LEXIS 524, at *17-18 (website
evidence of third parties offering goods of both applicant and registrant showed same
or overlapping channels of trade and purchasers).
Applicant argues that its services and Registrant’s services are not related
because, among other things: (1) “Registrant is not a tax and accounting firm”;
(2) “Registrant does not offer professional accounting or tax preparation services”;
(3) Registrant “provides non-downloadable software that lets individuals and small
business owners prepare and file their own taxes;” and (4) “[t]he Applicant’s
subscription based customized software is used at Enterprise-Level organizations” to
perform a variety of complex functions that “[i]ndividuals and small businesses filing
their own tax forms would have little use for such software.”23 Applicant further
contends that “[t]he fact that both parties use the Internet and websites to offer their
23 Applicant’s Br., 6 TTABVUE 10-13.

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services is, today, no different than saying that both companies have telephone
numbers” and therefore any overlap in trade channels is insignificant.24
Applicant’s arguments are unpersuasive. As we have explained in innumerable
decisions, the Board may not consider arguments “about how the parties’ actual
goods, services, customers, trade channels, and conditions of sale are narrower or
different from the goods and services identified in the applications and registrations.”
In re FCA US LLC, No. 85650654, 2018 TTAB LEXIS 116, at *12 n.18; see also, e.g.,
i.am.symbolic, 866 F.3d at 1327 (“[T]he Board properly declined to import restrictions
into the identification of goods based on alleged real-world conditions.”); Levi Strauss
& Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373 (Fed. Cir. 2013) (“The
[US]PTO proceedings are ‘based on the content of the registration application’ and
not upon any specific use of the challenged mark in commerce.”) (quoting
Mayer/Berkshire Corp. v. Berkshire Fashions, Inc., 424 F.3d 1229, 1232 (Fed. Cir.
2005)); Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 902 (CCPA 1973)
(Board must “give full sweep” to an identification of services regardless of the
registrant’s actual business); In re Thor Tech, Inc., No. 78634024, 2009 TTAB LEXIS
253, at *15 (“We have no authority to read any restrictions or limitations into the
registrant’s description of goods.”). It is the identifications of services in the
application and cited registration that control. See Nat’l Football League v. Jasper
Alliance Corp., No. 91077966, 1990 TTAB LEXIS 37, at *10-11 & n.5.
24 Id. at 12.

Serial No. 98041889
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The cited registration broadly identifies “non‑downloadable software that enables
users to prepare and file tax forms,” without limitation as to the type of tax forms or
the nature of the “user.” Thus, it encompasses both simple and complex tax forms,
including those used in connection with Applicant’s services,25 and the “user” could
be an individual preparing their own tax forms, as Applicant asserts, or a tax
professional preparing forms for individuals or businesses.
Finally, we disagree with Applicant’s suggestion that the Examining Attorney
assumed source confusion because both parties operate in the tax sector.26 The
third‑party website evidence discussed above demonstrates that the online services
of the type offered by both Applicant and Registrant commonly emanate from the
same source under the same mark via the same website.
Because the record shows the services are related and their trade channels
overlap, these factors weigh in favor of finding a likelihood of confusion.
D. Purchasing Conditions
DuPont also tells us to consider the “conditions under which … sales are made,
i.e. ‘impulse’ v. careful, sophisticated purchasing.” DuPont, 476 F.2d at 1361.
Purchaser sophistication or degree of care may tend to minimize likelihood of
confusion. See, e.g., Magnaflux Corp. v. Sonoflux Corp., 231 F.2d 669, 671 (CCPA
1956) (“confusion is less likely where goods are expensive and are purchased after
careful consideration than where they are inexpensive and are purchased casually”)
25 November 15, 2024 Final Office Action, TSDR 9-42 (screenshots from nerdwallet.com and
bankrate.com identifying various tax forms filed by individuals and businesses).
26 Applicant’s Br., 6 TTABVUE 13-14.

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(citations omitted). Conversely, impulse purchases of inexpensive goods or services
may tend to have the opposite effect. Palm Bay Imps., 396 F.3d at 1376.
Applicant asserts that its “target audience is tax professionals, CFOs, and
controllers,” whereas Registrant targets “users attempting to file their own tax
forms.”27 Applicant also emphasizes that its subscription‑based software is
“expensive,” while Registrant’s services begin at $49.99.28 In view of these differences,
Applicant argues purchaser sophistication makes confusion unlikely.29
The Examining Attorney did not address the fourth DuPont factor in her brief.
Applicant’s application and the cited registration identify services that are not
restricted by price or consumer sophistication. However, because the services involve
preparing and filing tax forms and broader tax compliance, purchasers are likely to
exercise some degree of care. In re Info. Builders Inc., No. 87753964, 2020 TTAB
LEXIS 20, at *12-14 (“some degree of purchasing care may be exercised” in view of
the inherent nature of the involved computer software goods and computer system
services). On balance, this factor slightly weighs against finding a likelihood of
confusion.
III. Conclusion –Balancing the DuPont Factors
The final step in analyzing likelihood of confusion is to weigh the DuPont factors
for which there is evidence and argument, “explain the results of that weighing,” and
address “the weight [we] assigned to the relevant factors.” Charger Ventures, 64 F.4th
27 Applicant’s Br., 6 TTABVUE 17.
28 Id. at 14, 18-19 (citing May 15, 2025 Request for Reconsideration, TSDR at 11-12).
29 Id. at 17-20.

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at 1384. “No mechanical rule determines likelihood of confusion, and each case
requires weighing of the facts and circumstances of the particular mark.” Mighty Leaf
Tea, 601 F.3d. at 1346; see also Naterra Int’l, 92 F.4th at 1116-17 (“Only the DuPont
factors of significance to the particular mark need be considered in the likelihood of
confusion analysis.”).
After carefully considering the entire record and the parties’ arguments, we find
that the marks are highly similar in appearance, sound, meaning, and commercial
impression, which weighs in favor of a likelihood of confusion. The services identified
in the application and cited registration are related, and the record shows they move
in the same trade channels; these factors also weigh in favor of a likelihood of
confusion. The weakness of the Cited Mark weighs against a likelihood of confusion,
and purchaser sophistication slightly weighs against a likelihood of confusion. No
other relevant DuPont factor weighs against such a finding.
On balance, the factors favoring a likelihood of confusion − similarity of the marks,
relatedness of the services, and overlapping trade channels − outweigh the factors
against − weakness of the Cited Mark and purchaser sophistication. As we frequently
point out, even weak marks are entitled to protection against similar marks used for
related goods or services. See In re FabFitFun, Inc., No. 86847381, 2018 TTAB LEXIS
297, at *20 (citing China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 1340 (Fed.
Cir. 2007)). Likewise, sophisticated purchasers are not immune from source
confusion, particularly when confronted with similar marks for related offerings. See
Shell Oil, 992 F.2d at 1208 (“even sophisticated purchasers can be confused by very

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similar marks”); Weiss Assocs., Inc. v. HRL Assocs., Inc., 902 F.2d 1546, 1548 (Fed.
Cir. 1990) (similarities of goods and marks outweighed sophisticated purchasers,
careful purchasing decision, and expensive goods); In re Research & Trading Corp.,
793 F.2d 1276, 1279 (Fed. Cir. 1986) (quoting Carlisle Chem. Works, Inc. v. Hardman
& Holden Ltd., 434 F.2d 1403, 1406 (CCPA 1970)) (“That the relevant class of buyers
may exercise care does not necessarily impose on that class the responsibility of
distinguishing between similar trademarks for similar goods [or services]. ‘Human
memories even of discriminating purchasers … are not infallible.”’). Accordingly,
confusion is likely.
Decision: The Section 2(d) refusal to register is affirmed.