The TTABlog®

TTABlog Test: Three More Section 2(e)(1) Mere Descriptiveness Appeals - How Did They Turn Out?

2026-08-21T05:44:47.422-04:00

So far this year the Board affirmed a whopping 96% of the Section 2(e)(1) mere descriptiveness refusals reviewed on appeal. Here are three recent appeals. How do you think they came out? [Answer in first comment].

In re Concert Black LLC, Serial No. 97921491(August 18, 2026) [Opinion by Judge George C. Pologeorgis]. [Section 2(e)(1) mere descriptiveness refusal of CONCERT BLACK for various clothing items "excluding formalwear, concert attire, uniforms, concert band uniforms, marching band uniforms, robes, gowns, choir robes, tuxedos, and any other clothing specifically designed for use in musical performances." Applicant argued that its goods are street wear and therefore cannot be used to create a "concert black" outfit, particularly since it has excluded formal wear from its identification of goods.]

In re The Carlstar Group LLC, Serial No. 98674193 (August 18, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Mere descriptiveness refusal of SP-Y-KE for "Tractor towed agricultural implements, namely, closing wheels; closing wheels for use with agricultural seed planting machines; tractor towed agricultural implements, namely, spiked closing wheel." Applicant maintained that the mark is a double entendre: the intentional misspelling together with the hyphenation to isolate the “Y” represents an obvious play on the intended result of a closing wheel, which is the growth of a plant (the “Y”) from a furrow (the hyphenation).]

In Re Technip Energies France, Serial No. 79355823 (August 19, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon). [Refusal to register the mark shown below, absent a disclaimer of the merely descriptive term E.FURNACE, for "Apparatus, namely, industrial electric ovens and gas purification installations for the production of ethylene, propylene, butadiene, benzene, toluene, xylene, hydrogen, vinyl chloride monomers, with low carbon dioxide emissions; apparatus and installations for the production of ethylene, propylene, butadiene, benzene, toluene, xylene, hydrogen, vinyl chloride monomers, with low carbon content." Applicant argues that the even if the term E.FURNACE must be disclaimed because of the electric ovens in the identification, the term is not merely descriptive of the “gas purification installations” also listed as part of the first goods identified in the application.]

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TTABlog comment: How did you do? See any WYHA?s

Text Copyright John L. Welch 2025.

Naked Consent Agreement Fails to Prevent Section 2(d) Refusals of GODZILLA X KONG: THE NEW EMPIRE over GODZILLA

2026-08-20T06:12:04.896-04:00

The Board affirmed Section 2(d) refusals in twelve applications (consolidated for appeal) to register the mark GODZILLA X KONG: THE NEW EMPIRE for various goods and services (including film production, action figures, etc.), finding confusion likely with certain GODZILLA or GODZILLA-formative marks, registered by Toho Co., Ltd., for a variety of goods and services. In attempting to overcome the refusals, Applicant Legend IP submitted a "License and Consent Agreement," but the Board found that the agreement "suffers multiple failings" and "weighs only slightly against a conclusion of likely confusion." In re Legend IP Holdings Production, LLC, Serial No. 97914992 et al. (August 13, 2026) [not precedential] (Opinion by Judge Martha B. Allard).

The issue was "how much evidentiary weight should be afforded the Agreement given by the owner of the registrations that have been cited as a bar to registration under Section 2(d)." Not much, the Board concluded.

The entire agreement was set forth in one-half page. Although styled as a License Agreement under which Applicant Legend holds the applied-for marks "in trust for" Toho, "it remained subject to the same analytical framework applicable to consent agreements under the tenth DuPont factor (market interface). The Agreement states that applicant “is authorized to seek registration of the Trademarks incorporating [Registrant’s IP] in connection with the exploitation of the Picture."

In re Ye Mystic Krewe provided a list of non-exclusive factors that may be considered in assessing the import of a consent agreement:

Whether the consent shows an agreement between both parties;
Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;
Whether the parties agree to restrict their fields of use;
Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and
Whether the marks have been used for a period of time without evidence of actual confusion.

The first factor was met, since the agreement was signed by both parties, but the remaining factors were not. As a result, the Board found the Agreement to be a “naked” consent.

There are simply no undertakings of record between Applicant and Registrant which impact the likelihood of confusion analysis. This Agreement is too bare and conclusory for us to conclude that the marks can coexist without a likelihood of confusion.

Legend did not explain or address how the involved goods and/or services travel, or will travel, in separate trade channels (second element). There was no agreement to restrict their fields of use (third element). There was no agreement regarding efforts that the parties must take to prevent confusion or to avoid any confusion that may arise in the future (fourth element). And there was no evidence regarding how long Legend and Registrant Toho simultaneously used their marks in the United States without evidence of actual confusion (fifth element).

Here, Applicant filed each of its applications on an intent to use basis and no amendments to allege use have been filed, nor does Applicant argue that the marks have coexisted in the marketplace for any length of time. Along these lines, we note that the Agreement consents solely to registration of the marks of the involved applications but does not separately consent to their use. [These are I-T-U applications. How would Legend obtain registrations without use? - ed.].

The Board noted that a simple solution to avoid likely confusion "would have been for Registrant to have filed the applications in its own name, which would have resulted in its being identified as the registrant, rather than relying on Applicant to hold them “'in trust for Toho.'" [Would consumers know or care who the registrant is? Wouldn't they assume, in any case, that the parties are related or cooperating? ed.].

In short, the Agreement appears to simply to be an arrangement between the parties solely as to registration with no regard to whether it reflects the realities of no likelihood of confusion if and when both marks are concurrently used in the marketplace. While we give some weight to the existence of the Agreement and its express authorization by Applicant “to seek registration of the Trademarks incorporating [Registrant’s IP] in connection with the exploitation of the Picture,” we find that the Agreement as a whole suffers multiple failings such that this factor “weighs only slightly against a conclusion of likely confusion.”

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TTABlogger comment: Twelve applications down the drain. PS: As I have previously posited, naked consents are effective only in nudist colonies.

Text Copyright John L. Welch 2026.

TTABlog Test: Is HVNLYDAZE Confusable with HVNLYFIT for Overlapping Clothing Items?

2026-08-19T06:05:19.596-04:00

The USPTO refused to register the mark HVNLYDAZE for various clothing items, including t-shirts, concluding that confusion is likely with the registered mark HVNLYFIT for overlapping clothing items, including t-shirts. Applicant argued that the marks have different connotations, and that HVNLY is equivalent to "heavenly," a common term and a weak formative. How do you think this appeal came out? In re Heavenly Daze Limited, Serial No. 98209106 (August 14, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

Applicant did not make of record any third-party uses or registrations of HVNLY-formative marks for clothing under the sixth DuPont factor (the “number and nature of similar marks in use on similar goods”). The Board took judicial notice that "the word 'heavenly,' the acknowledged 'phonetic equivalent' of HVNLY, has a colloquial meaning of 'completely delightful' in addition to religious meanings such as 'of or relating to heaven or the heavens' and 'suggesting the blessed state of heaven.'"

We find that in the context of the clothing identified in the cited ’362 Registration, the prefix HVNLY- makes the cited mark HVNLYFIT as a whole merely mildly suggestive of “completely delightful” garments, and “we find the cited mark is entitled to ‘the normal scope of protection to which inherently distinctive marks are entitled.’”

The Board found HVNLYFIT and HVNLYDAZE to be "visually similar, as both begin with the disemvoweled contraction HVNLY." The second elements of the marks are different "and some consumers may notice and recall the difference." "But the marks share the same structure, starting with the dominant 'HVNLY' element and then add a second word to create a HVNLY-formative mark. This structure results in marks that look like variations on a 'heavenly' theme."

This is important because consumers familiar with the HVNLYFIT mark and the goods provided under that mark may view the HVNLYDAZE mark as an extension of the HVNLYFIT mark or as an affiliated branch of the business that provides clothing under the HVNLYFIT mark.

In sum, the Board found that the HVNLYFIT and HVNLYDAZE marks "are similar in appearance from the standpoint of a consumer with a general rather than specific recollection of the cited HVNLYFIT mark for clothing who separately sees the HVNLYDAZE mark used for legally identical goods."

The Board next found that the marks are similar in sound, since the first and dominant element of each mark will sound identical.

Finally, the marks HVNLYFIT and HVNLYDAZE "are also similar in meaning and are likely to create the same commercial impressions" because the prefix HVNLY- "dominates the meaning of the marks, as the first element" of both marks.

The HVNLY-prefix imbues both marks with the same celestial aura of “complete delight,” and the respective -FIT and -DAZE suffixes “do not add more distinctive or striking content to the mark[s].” The HVNLYFIT and HVNLYDAZE marks are similar in appearance, sound, connotation, and commercial impression, and the first DuPont factor strongly supports a conclusion that confusion is likely.

And so, the Board upheld the refusal.

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TTABlogger comment: How did you do? I find the "line extension" argument to be superfluous at best, and at worst conclusory and questionable. Either the marks are confusingly similar, or they're not. The line extension argument seems to be a way of end-running the similarity issue when the marks aren't really that close. Also, I don't think the marks have the same connotation: "heavenly days" is not the same as "heavenly fit."

Text Copyright John L. Welch 2026.

TTABlog Test: Three Recent Section 2(e)(1) Mere Descriptiveness Appeals - How Did They Turn Out?

2026-08-18T06:07:42.170-04:00

Last year the Board affirmed about 88% of the Section 2(e)(1) mere descriptiveness refusals reviewed on appeal. So far this year, the rate is well over 90%. Here are three recent appeals. How do you think they came out? [Answer in first comment].

In re Learn 2 Read Read 2 Learn LLC, Serial No. 99176400 (July 30, 2026) [Opinion by Judge Robert Lavache]. [Section 2(e)(1) mere descriptiveness refusal of WORD BANK: WORD LEARNING PROGRAM for educational publications and services provided in the field of early literacy and vocabulary instruction. Applicant argued that the proposed mark "does not instantly describe Applicant’s proprietary literacy platform" because "[i]t does not tell a consumer what the system is, how it works, what materials it uses, or how it delivers instruction."]

In re Evan Jordan Maisano, Serial No. 99276833 (August 12, 2026) [not precedential] (Opinion by Judge Robert Lavache). [Mere descriptiveness refusal of MAGNETBALL for "action skill games." Applicant maintained that "[a] consumer encountering the term MAGNETBALL would not immediately know what the sport involves without further explanation," which "places the mark squarely in the suggestive, not descriptive, category."]

In Re Benjamin Langhofer, Serial No. 98693560 (August 13, 2026) [not precedential] (Opinion by Judge Wendy B. Cohen). [Mere descriptiveness refusal of FAMILY HANDBOOK for "downloadable documents in the field of custom documents designed by parents to establish and memorialize the purpose and direction of their family." Applicant contended that "a consumer would understand FAMILY HANDBOOK to mean a handbook about childcare or parenting techniques."]

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHA?s

Text Copyright John L. Welch 2025.

Renown of Serena Williams Doesn't Avoid Refusal of SERENA VENTURES over SERENA for Investment Services

2026-08-17T06:19:44.004-04:00

The Board swatted away various feeble arguments by Applicant Serena Williams in affirming a refusal to register SERENA VENTURES [VENTURES disclaimed] in view of the registered mark SERENA, for overlapping investment services. Starting out behind the 8-ball, Applicant Williams had to somehow overcome the obvious similarity of the marks. She failed to do so. In re Serena Williams, Serial No. 90321926 (August 12, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Williams cryptically argued that her mark has a "layered meaning" that "conveys a distinct corporate and institutional identity." Interpreting this as an argument that SERENA VENTURES refers to Applicant Williams as a well-known tennis player, the Board pointed out that "[s]urprisingly, Applicant did not make of record any evidence to support her identity or claim of fame (especially as to her first name without her surname, as appears in the mark), and nevertheless, attorney argument is not evidence." However, the Board came to her rescue:

We take judicial notice, as a commonly known fact not subject to dispute, that Applicant is a well-known tennis player. See TBMP § 1208.04 and authorities cited therein. We do so solely for the limited purpose of evaluating whether the term SERENA carries a particular connotation relevant to the first DuPont factor.

The Board then observed that, even if consumers would associate SERENA VENTURES with Applicant, the same connotation would be applied to the cited mark SERENA in connection with the same services. "In short, there is nothing inherent in the marks or the financial services at issue that would portray different meanings to consumers – as it might, for example, for services related to tennis or sports in general." And so the Board found that the first DuPont factor favored a finding of likely confusion.

Williams feebly argued that the registrant's services are offered only in Clearwater, Florida, while her services are not offered in Clearwater. Irrelevant, said the Board, pointing out that this might be relevant in an infringement action, but the registrant "owns an unrestricted registration which gives Registrant presumptive exclusive rights to nationwide use of its mark in connection with the identified services under Trademark Act Section 7(b), 15 U.S.C. § 1057(b), regardless of its actual extent of use."

The Board acknowledged that both applicant’s and registrant's customers would exercise "somewhat greater than ordinary care" in seeking and providing venture capital investment services, and so the fourth DuPont factor tipped "slightly against likelihood of confusion."

Williams asserted that there was no evidence of actual confusion, but the Board noted that there was "no opportunity to hear from Registrant about whether it is aware of any reported instances of confusion in the context of this ex parte appeal." In any case, according to Williams, there was no actual overlap in trading areas that might generate incidents of actual confusion.

Summarizing, the Board found that the first, second, and third DuPont factors weighed "heavily" in favor of likelihood of confusion, and outweighed the fourth DuPont factor, which weighed slightly against likelihood of confusion. The fifth, seventh, eighth, tenth, twelfth, and thirteenth factors were neutral.

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TTABlogger comment: WYHA? What if the proposed mark had been SERENA WILLIAMS? Would her fame overcome a similar refusal?

Text Copyright John L. Welch 2026.

Prof. Thomas A. Reichert: The Board Changes Its Mind Without Changing the Record: Factor Six After Apex Bank

2026-08-14T06:23:31.622-04:00

Here is a guest blog post by Thomas A. Reichert, Assistant Professor of Law at Simmons Law School, Southern Illinois University, in Carbondale, Illinois. The Board's recent decision on remand in the Apex Bank case [TTABlogged here] led to Professor Reichert's observations on the changing role of the sixth DuPont factor in the Board's Section 2(d) analysis.

The Board Changes Its Mind Without Changing the Record: Factor Six After Apex Bank

by Professor Thomas A. Reichert

The Board has now decided the same opposition twice, on the same trial record, and reached opposite outcomes. Between the two decisions neither party filed a new brief, no witness testified, and the only additions to the record were a few judicially noticed housekeeping facts. One DuPont factor was re-scoped on appeal. Two factors flipped. The outcome inverted.

Doctrine rarely runs a controlled experiment on itself, but in CC Serve Corp. v. Apex Bank, Opposition No. 91254295 (TTAB July 17, 2026), the Board was ordered to do just that.

CC Serve has owned the standard-character mark ASPIRE for credit card services since 1998. It opposed Apex Bank’s three applications for ASPIRE BANK design marks (the word "aspire" over a disclaimed BANK, a mountain peak behind) for banking and financing services. In May 2023 the Board sustained the opposition: the services were legally identical in part under the second factor and the marks highly similar under the first. Every other factor favored confusion or sat neutral. On the sixth factor—the number and nature of similar marks in use on similar goods—the Board confined the relevant universe to marks used for credit card services. It counted nine ASPIRE-formative marks within this relevant universe and deemed the forty-odd others in the record “essentially irrelevant.” Nine, the Board held, fell short of the “considerable” or “ubiquitous” use that demonstrates weakness (according to Jack Wolfskin and Juice Generation), so CC Serve’s ASPIRE mark received the normal scope of protection of an inherently distinctive mark.

On appeal, the Federal Circuit affirmed as to the second factor and vacated the sixth. Apex Bank v. CC Serve Corp., 156 F.4th 1230 (Fed. Cir. 2025) (Hughes, J.) (precedential). The Federal Circuit decreed that the Board could not find credit card services and banking/financing services “highly similar” for the factor that helps the opposer and then shrink the relevant universe to credit cards for the factor that helps the applicant. “That was an error.” “When the Board has already made a factual finding that the services are highly similar—in fact, partially legally identical—in its analysis of the second DuPont factor, . . . the Board should retain the same scope in its consideration of similarity under the other factors.” And because “reconsideration of the sixth DuPont factor may result in a different determination of the mark’s commercial strength or weakness and affect the overall commercial impression,” the first factor fell with it.

Thus, on remand, the relevant universe grew from nine marks to twenty-three third-party users, covering credit, banking, and financing services, with some consideration given to eighteen more for retirement and wealth management. The same record now showed a mark “commercially and conceptually quite weak,” the word ASPIRE being highly suggestive of exactly what consumers of credit card services are doing: aspiring to reach their financial goals. The marks themselves had not changed, and the Board still found them similar in their entireties; but in a crowded field, consumers “are likely to notice and rely on the minor differences between the marks to distinguish them.” Thus, the generic word BANK and a mountain peak, which counted for little in 2023, apparently now were enough to distinguish the involved marks (and change the direction of factor one). The Board found “the heavy weight of the sixth factor is the dominant consideration,” held that factors one and six outweighed two and three, and dismissed the opposition. To its credit, the Board was precise about which marks in the field made the difference: a closing footnote states it would reach the same conclusion even without the eighteen retirement and wealth-management marks. The flip thus rested on the scope of the universe the Federal Circuit ordered.

How often does factor six actually do this?

Unsurprisingly, almost never. The evidence is a coded corpus of roughly 4,000 final Board decisions under Section 2(d), drawn from a pair of empirical studies of confusion doctrine at the Board (here) and in the federal courts (here).

The story those numbers tell is short. Start with the two findings that decide most oppositions: the marks are similar, and the services are close. How often does an applicant lose on both factors and still win? In about 3,500 comparisons where the Board made both findings in favor of opposer, the answer is twenty-nine times. In those 29 cases, the fight is over the other DuPont factors: third-party use, fame, actual confusion, sophistication, and the rest.

Factor six is the best of a bad lot. It accounts for applicant’s success in 17 of those 29 cases. But notice how often it is raised and still fails: the Board found the sixth factor favored the applicant in about 935 of those 3,500 comparisons, but the applicant won only 17 times, roughly one in fifty-five. That is what makes this remand worthy of attention. Apex Bank is the Federal Circuit giving applicants a little room to work with when the field is crowded.

Two footnotes for the curious. The sixth factor is analyzed about half the time, and its share has been climbing, to roughly 62% in 2024 and 65% in 2025, so a practitioner’s sense that it now turns up in nearly every case is directionally right and a few years ahead of the record. And the corpus is entirely pre-Apex Bank. It shows the baseline that the scope correction now perturbs, decided under the narrower factor-six practice the Federal Circuit just rejected. Whether the remand is the first observation of a new regime or a one-off is the question worth watching, and given the volume of Board determinations each year, we should be able to answer it in about eighteen months.

What Apex Bank changes at the Board

The practice rule is fairly straightforward: scope the third-party-use record to the relevant services as the Board finds them under the second factor, not to the opposer’s identification as written. An opposer’s broad win on the second factor now hands the applicant a wide sixth-factor universe. The finding that hurt Apex Bank on factor two is the finding that saved it on factor six.

For opposers, the remand is a catalog of rebuttals that failed:

CC Serve showed an active enforcement program. The Board credited it, quoted McCarthy’s observation that diligent policing enhances strength, and then found the field crowded anyway.
CC Serve objected that the third parties are largely regional credit unions and community banks. The Board itself counted thirteen of the twenty-three as regional, and answered that online and mobile banking can be done from anywhere.
CC Serve objected that the record did not show the extent of third-party use. The Board invoked the presumption that advertised services are rendered and the rule that voluminous third-party evidence can be “powerful on its face” (Jack Wolfskin).

A factor, or a sub-factor?

The vacatur of the first factor is the doctrinal news. The court’s logic is that third-party use bears on a mark’s commercial strength, and that commercial strength in turn colors the overall commercial impression the mark conveys. Re-scope the sixth factor and the first factor can move with it. The remand executed exactly that sequence. The historical record, though, shows the two factors moving nearly independently: where factor six favors the applicant, factor one still favors the opposer nearly three-quarters of the time. If third-party use does its work through commercial impression, factor six collapses into factor one as a sub-factor, and Apex Bank is the most explicit appellate statement of that sequence to date. On the data, that linkage is doctrine leading practice by a wide margin.

The remand deserves a wider audience

The remand opinion carries the “This Opinion is Not a Precedent of the TTAB” banner, which is a strange fate for the decision that shows what the Federal Circuit’s scope rule does in practice. The Board changed its mind without changing the record; the least it can do is say so citably. If you agree, you may want to file a request for precedential designation, as I recently did.

The Federal Circuit, for its part, is already citing Apex Bank downstream. See Fuente Marketing Ltd. v. Vaporous Technologies, LLC, No. 24-1460 (Fed. Cir. Apr. 8, 2026). [TTABlogged here].

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TTABlogger comment: Do you think that, in the real world, any consumer would encounter the APEX credit card mark and all 23 third-party marks?

Text Copyright John L. Welch and Thomas A. Reichert 2026.

TTABlog Test: Is "ROUNDS" Merely Descriptive of Cigars?

2026-08-13T06:41:27.042-04:00

The USPTO refused to register the proposed mark ROUNDS, finding it to be merely descriptive of "cigars" under Section 2(e)(1). Applicant Kretek argued that the Board should ignore Kretek's registration for CUBAN ROUNDS, in which it relied on Section 2(f) with regard to the word ROUNDS, and further contended that ROUNDS is a double entendre. No cigar, said the Board. In re Kretek International, Inc., Serial No. 98478188 (August 11, 2026) [not precedential] (Opinion by Judge Angela Lykos).

Kretek did not claim acquired distinctiveness but instead took the position that ROUNDS is an inherently distinctive mark. It asserted that its prior reliance on Section 2(f) "is not dispositive here and is of minimal persuasive value to a determination of whether ROUNDS is merely descriptive of a quality, feature, or characteristic of cigars at this time and on the record before the Board." The Board disagreed, pointing to In re Am. Furniture Warehouse Co., No. 86407531, 2018 TTAB LEXIS 122, at *6-7 [TTAB 2018].

Applicant Kretek’s claim of acquired distinctiveness in part as to the word ROUNDS reflected in its prior registration for CUBAN ROUNDS constitutes a concession that its applied-for mark ROUNDS is not inherently distinctive. On this basis alone, we affirm the Examining Attorney’s mere descriptiveness refusal under Section 2(e)(1).

In addition, Examining Attorney Dannean Hetzel submitted evidence demonstrating that ROUNDS is merely descriptive of “cigars.” The Board observed that "[i]t is well established that a term describing the shape or form of the identified goods is merely descriptive." It noted that the online platform WordReference.com defines "round" as "something circular in cross section, as a rung of a ladder or chair."

Applicant counters that “information about a cigar’s cylindrical nature does not meet the required vitalness, immediacy, and particularity elements of a merely-descriptive term.” Applicant’s argument is unpersuasive. Within the context of the goods, consumers will immediately understand the plural noun ROUNDS as describing cigars round in shape or circular in cross-section. It is common for cigars to be sold in a round shape and not uncommon for the advertising and packaging to highlight the shape.

The evidence showed that consumers may specifically shop for cigars designated as “round” for their unique qualities. "'Cigar aficionados often praise round cigars for 'their smooth, even draw' and 'cylindrical shape' allowing 'for consistent airflow, making it easier to smoke.'"

Alternatively, Kretek contended that ROUNDS is a double entendre referring to "the types of activities commonly performed or played in 'rounds,' such as rounds of golf, rounds of drinks, or rounds of shooting or ammunition." In support, it submitted advertisements and social media posts from Instagram showing that each of these activities is commonly associated with smoking cigars. The Board was not impressed: "The multiple interpretations that make a proposed mark a double entendre must be 'readily apparent from the mark itself' and not 'other indicia.'"

Consumers are far more likely to understand ROUNDS as referring to a characteristic of the goods, such as their shape and cross-sectional diameter, rather than as an allusion to a round of golf, round of ammunition or round of drinks. Here, the alternate meanings are too attenuated based on the mark itself. The record summarized above shows that “rounds” in relation to cigars is not a unique, clever play on words but is instead part of the cigar industry’s lexicon.

Concluding that the proposed mark ROUNDS "immediately conveys, without conjecture or speculation, a key attribute of Applicant’s goods," the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2026.

TTAB Deems PULSE DECOMPOSITION ANALYSIS Generic for . . . . Guess What?

2026-08-12T06:04:27.696-04:00

The Board affirmed a refusal to register, on the Supplemental Register, the proposed mark PULSE DECOMPOSITION ANALYSIS, finding it to be generic for patient monitors and patient sensors for monitoring and measuring physiological parameters. Applicant CareTaker Medical argued that the proposed mark identifies a method or function by which the sensors and monitors measure blood pressure, not the device itself. The Board was unmoved. In re CareTaker Medical, LLC, Serial No. 90881906 (August 7, 2026) [not precedential] (Opinion by Judge Robert Lavache).

The Board stated the issue as this: "the ultimate inquiry here is whether healthcare and medical professionals understand PULSE DECOMPOSITION ANALYSIS to refer to a class or category of 'patient monitors and patient sensors,' or to a key aspect or subcategory of those goods."

Examining Attorney Candace W. Hays maintained that a key aspect or feature of CareTaker's goods is the measurement of blood pressure through a particular method of analyzing a patient’s pulse. In support, she pointed to various articles referring to Pulse Decomposition Analysis (PDA) as a "non-invasive method of measuring blood pressure without a cuff," and to CareTaker's own patent and its website discussing measurement of breathing rate by pulse decomposition analysis. the Board concluded that the phrase "refers to a method for analyzing a patient’s pulse waves to measure, inter alia, blood pressure and other vascular characteristics."

CareTaker argued that the proposed mark cannot be deemed generic because “[t]here is no evidence of record that shows ‘pulse decomposition analysis’ being used as the name of a patient sensor or medical device, and thus “[t]he record does not show that one could go to a medical supply store and ask to purchase a ‘pulse decomposition analysis’ or go to a hospital and ask that a ‘pulse decomposition analysis’ be brought into the room." The Board was not persuaded.

Nor was the Board persuaded by the argument that PULSE DECOMPOSITION ANALYSIS can't be generic because it refers only to “the method applied by Applicant” or “a function that can be applied to data collected by a sensor.”

The Board found that CareTaker's arguments rely "on an unduly narrow application of the genericness standard." "As the Examining Attorney points out, '[a]ny term that the relevant public understands to refer to a particular genus of goods and/or services is generic.' * * * [T]hat would include a term that identifies a key aspect or subcategory of the relevant genus."

Finally, the Board shrugged off CareTaker's assertion that PULSE DECOMPOSITION ANALYSIS can't be generic because it is used only by Applicant, or only in connection with Applicant’s goods. "[W]hile evidence that a term is used by competitors, if it exists, may be relevant to a genericness analysis, it is not required where, as here, other evidence shows that consumers will understand the term to refer to the genus."

And so, the Board affirmed the refusal under Sections 23(c) and 45 of the Trademark Act.

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TTABlogger comment: I think this is one of those "key aspect" cases that goes too far. Remember BLUEBERRY MUFFIN for beer?

Text Copyright John L. Welch 2026.

TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?

2026-08-11T05:48:33.191-04:00

TTAB affirmances of Section 2(d) refusals are running at about 84% so far this year, appreciably below the usual 90%. Here are three appeals decided last week. How do you think they came out? [Answer in first comment].

In re Happy Ears Hearing Center, LLC, Serial No. 97036010 (August 6, 2026) [not precedential] (Opinion by Judge George C. Pologeorgis) [Section 2(d) refusal of the mark HAPPY EARS HEARING (In standard character form) for “Medical diagnosis, treatment, and evaluation of hearing and balance disorders; hearing aid services" [EARS HEARING disclaimed] in view of the registered mark HAPPY EARS for “ear plugs for noise reduction or soundproofing” and for “ear plugs for noise reduction or soundproofing” [EARS disclaimed].]

In re Oxford Healthspan LLC, Serial No. 97096288 (August 6, 2026) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of the mark PUREMIDINE for “Nutritional supplements for pets” in view of the identical mark registered for spermidine and various spermidine mixtures, derivatives, and isomers, all used as raw ingredients in the manufacture of foods and nutritional and dietary supplements.]

In re Scrap-It, LLC, Serial Nos. 98080185 (August 6, 2026) [not precedential] (Opinion by Thomas L. Casagrande). [Section 2(d) refusal of the mark shown below, for "downloadable software application for mobile phones for scheduling debris removal services" in view of the registered mark SCRAP-IT! for "Software as a service (SAAS) services featuring software for connecting customers wanting items removed from a location with companies and people that can haul away the items."]

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TTABlogger comment: How did you do? See any WYHA?s ?

Text Copyright John L. Welch 2026.

Professor McCarthy: The Trademark Trial and Appeal Board’s (Mis)Treatment of the Anti-Dilution Act

2026-08-10T06:21:43.997-04:00

Professor J. Thomas Mc Carthy has given me permission to post the following comments on the TTAB's treatment of the issue of dilution. His comments stem from the Ninth Circuit's recent decision in the BAD SPANIELS case [TTABlogged here], in which the appellate court vacated the permanent injunction issued by the Arizona district court, based on dilution by tarnishment, and remanded the case for entry of judment in favor of VIP Products.

The Trademark Trial and Appeal Board’s (Mis)Treatment of the Anti-Dilution Act

Ever since enactment of the Trademark Dilution Revision Act of 2006, the Trademark Trial and Appeal, in my view, has been much more willing than the courts to find a violation of Section 43(c) of the Trademark Act because the Board’s requirement for proof of a violation is much less demanding than that applied by the courts.

The Lanham Act defines dilution by blurring as resulting from an “association arising from the similarity between [an accused] mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” Similarly, the Act defines dilution by tarnishment as an “association arising from the similarity between [an accused] mark or trade name and a famous mark that harms the reputation of the famous mark.” In both situations, an essential element of a violation is proof of the likelihood of some form of detriment to the mark: either impairment of the strength of the famous mark or harm to its reputation.

European Union law explicitly prohibits both dilution and free-riding. But unlike European Union law, federal U.S. anti-dilution law solely prohibits the likelihood of dilutive injury. The 2006 Trademark Dilution Revision Act is not an “anti-free-riding” law.

“Association” (the accused mark calls to mind the famous mark) and harm to the famous mark are two separate elements of a claim of dilution. But the Trademark Trial and Appeal Board has consistently made the assumption that if the accused mark is so similar to the famous mark that there is “association” (it calls to mind the famous mark), then it can be assumed without proof that there is a likelihood of harm or impairment to the famous mark. As discussed in the McCarthy treatise at §24:100, the Board does not require any evidence to conclude that there is a likelihood of detriment to the mark. The Board simply assumes that if the accused mark calls to mind the famous mark, then there must be harm to the famous mark.

The fallacy of the Board’s reasoning is shown by the recent Ninth Circuit decision in the Jack Daniel’s case. VIP Products, LLC v. Jack Daniel's' Properties, Inc., 2026 WL 2237625 (9th Cir. 2026). The Ninth Circuit said that evidence of harm is required and here, the evidence did not support a conclusion of harm to the famous Jack Daniel’s whiskey mark and trade dress. Jack Daniel's claimed that VIP’s parody dog toy constituted both trademark infringement and dilution by tarnishment. After remand from the Supreme Court, the district court found no trademark infringement but did find dilution by tarnishment. It reasoned that a parody dog toy with a label featuring jokes about dog poop constituted dilution by tarnishment and it enjoined the accused dog toy.

The Ninth Circuit reversed. “Association” was not in issue because as a parody, the point of the dog toy joke was to bring to mind the Jack Daniel’s marks. The court emphasized that both association and harm must be proven. “The plaintiff … bears the burden of both establishing association and showing that the association dilutes the famous mark. [Jack Daniel’s] did not do so here.“ The plaintiff’s survey expert only provided evidence of the broad impact of a message of defecation with regard to the consumption of food and drink. “There is no evidence in the record from which a court could reasonably infer that scatological references made on a dog toy have the same likelihood of generating disgust as identical references on a consumable product meant for humans might. “ Thus, there was no evidence of harm to the famous Jack Daniel’s marks.

The Ninth Circuit decision is consistent with the Second Circuit’s 2009 decision holding that proof of association is not itself proof of detriment to the famous mark. The Second Circuit held that a small, family-owned coffee roaster’s MISTER CHARBUCKS for a dark-roasted blend was not proven to be likely to “tarnish” plaintiff's famous STARBUCKS mark for coffee: “[A] mere association between ‘Charbucks’ and ‘Starbucks,’ coupled with a negative impression of the name ‘Charbucks,’ is insufficient to establish a likelihood of dilution by tarnishment. “ Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 110 (2d Cir. 2009) (“We will not assume that a purportedly negative-sounding junior mark will likely harm the reputation of the famous mark by mere association….”).

These Second and Ninth Circuit cases are both consistent with the Supreme Court’s 2003 Victoria’s Secret case. While the high court was dealing with the 1996 Act, this part of the ruling is equally applicable to the 2006 version: “[T]he mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution. …. [S]uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner….” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003).

The Trademark Trial and Appeal Board is clearly out of step with these decisions.

Read comments and post your comment here.

TTABlogger comment: If you put the word "spaniels" in the TTABlog search engine, you'll get a whole string of posts regarding the VIP case.

Text Copyright John L. Welch and J. Thomas McCarthy 2026.

TTABlog Test: Is THE SKIN MIXOLOGY for Skin Care Preparations Confusable with MIXOLOGY for Custom-Blended Body Products?

2026-08-07T06:22:11.279-04:00

The USPTO refused to register the mark THE SKIN MIXOLOGY for various non-medicated skin care preparations, not including "custom-blended aromatherapy creams, lotions, oils, massage oils, or exfoliating body scrubs" [SKIN disclaimed], deeming confusion likely with the registered mark MIXOLOGY for "Custom-blended aromatherapy bath and body products, namely, creams, lotions, oils, massage oil, exfoliating body scrubs” What do you think were the chances of a reversal? In re SHM Ventures, LLC, Serial No. 99019667 (August 5, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Applicant SHM Ventures, appearing pro se, got off on the wrong foot, arguing that the term “mixology” is “a conceptually weak and diluted term” in the “beauty field” or “skincare industry.” However, the evidence in support of that argument was attached to its appeal brief and was therefore untimely. The Board ignored it.

As to the marks, the Board found that the term MIXOLOGY dominates applicant's mark, since SKIN is disclaimed. "So while SKIN creates a visual and sound difference, we find it plays a relatively small role in the overall commercial impression of the mark THE SKIN MIXOLOGY." Applicant claimed that MIXOLOGY has a different connotation in the two marks and that its mark is anchored in the field of skin care. However, registrant's products are also in the skin care field, "[s]o adding SKIN to the term MIXOLOGY wouldn’t make the connotation of the registered mark different from that of the same term in Applicant’s mark."

Thus, while the marks are not identical, we find them to be very similar overall in that the term MIXOLOGY, which is the entirety of the registered mark, is the dominant element in creating the overall commercial impression of Applicant’s mark.

During prosecution, SMH Ventures tried to distinguish the goods by limiting its non-medicated skin care preparations to “facial and body moisturizers, serums, and toners” and adding the exclusionary language “none of the foregoing being custom-blended aromatherapy creams, lotions, oils, massage oils, or exfoliating body scrubs." However, the Board found that the goods still overlapped.

That’s because, while the application might exclude “custom-blended aromatherapy” versions of skin-care moisturizers, the product category “moisturizers” in the amended application covers moisturizers in any physical form, including cream form, lotion form, and oil form, so long as they are not “custom-blended aromatherapy” versions of those products. And the evidence of record shows that other skin care companies offer moisturizers (as in the application) in the form of creams, lotions, and oils (as in the registration).

The Board found that the goods are legally identical in part [I'm not sure how - ed]. "At minimum, they are closely related." The legally identical goods presumably travel in the same trade channels to the same classes of consumers.

In sum, none of the factors weighed in favor of applicant, and so the Board affirmed the refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2026.

Ninth Circuit Vacates BAD SPANIELS Injunction Based on Dilution by Tarnishment, Orders Judgment for VIP

2026-08-06T06:27:41.991-04:00

In the latest chapter of the long-running BAD SPANIELS case, the U.S. Court of Appeals for the Ninth Circuit has vacated the permanent injunction issued by the Arizona district court, based on dilution by tarnishment, and has remanded the case for entry of judment in favor of VIP Products. The appellate court ruled that "[t]he district court erred in concluding that JDPI met that burden and that [expert] Dr. Simonson’s testimony was sufficient to prove a likelihood of dilution beyond speculation." VIP Products, LLC v. Jack Daniel's' Properties, Inc., Appeal No. No. 25-2027 (9th Cir., August 4, 2026).

"To prove dilution of its mark by tarnishment, the plaintiff must establish that its mark is famous, the allegedly diluting mark is similar to the famous one, and the diluting mark creates a mental association with the famous mark likely to damage the famous mark’s reputation." The Ninth Circuit held that JDPI failed to carry its burden of proof.

Because VIP conceded similarity, the Ninth Circuit focused on the question of whether JDPI established a likelihood that “Bad Spaniels” and the toy’s trade dress harm the reputation of “Jack Daniel’s” and its registered trade dress (the only two marks that JDPI proved to be famous).

In evaluating whether the Bad Spaniels toy tarnishes “Jack Daniel’s,” the district court relied on the testimony of JDPI’s expert, Dr. Itamar Simonson. It concluded that “[b]ecause Jack Daniel’s produces a product intended for human consumption, association of Jack Daniel’s marks with something like dog feces is” not only tarnishing, but “particularly detrimental.”

The Ninth Circuit, however, concluded that Dr. Simonson’s analysis "ignored the effect of a 'humorous difference' on whether Bad Spaniels harms the reputation of JDPI’s famous marks."

To be sure, the district court credited Dr. Simonson’s conclusion that the first step of his dilution analysis was satisfied “because the point of VIP’s product was to bring Jack Daniel’s whiskey to mind”; that conclusion was based on VIP’s transparently parodic use. * * * Parody, however, is inherent in the Bad Spaniels product—indeed, as Dr. Simonson recognized, it was the “whole point.” Failing to consider the effect of VIP’s obvious parody on the likelihood of tarnishment was a critical misstep, and the district court erred in adopting the conclusions that followed.

The Ninth Circuit obvserved that, "to the extent Dr. Simonson’s testimony established any negative association, it was between some broad concept of defecation and consumption of food and drink products. Dr. Simonson acknowledged that he did not conduct a study on whether the Bad Spaniels dog toy itself creates harmful associations."

There is no evidence in the record from which a court could reasonably infer that scatological references made on a dog toy have the same likelihood of generating disgust as identical references on a consumable product meant for humans might. Dr. Simonson’s opinion to the contrary is pure conjecture.

Notably, the Ninth Circuit observed that "even where 'parody is not automatically a complete defense to a claim of dilution' because 'the defendant uses the parody as its own designation of source,' the TDRA “does not require a court to ignore the existence of a parody that is used as a trademark, and it does not preclude a court from considering parody as part of the circumstances to be considered for determining whether the plaintiff has made out a claim for dilution."

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TTABlogger comment: Long live parody! PS: If you put the word "spaniels" in the TTABlog search engine, you'll get a whole string of posts regarding this case. Will Jack Daniel's petition for certiorari? If it does, I think that dog won't hunt.

Text Copyright John L. Welch 2026.

TTAB Reverses Specimen Refusal, Finding Webpage Sufficient for Pet Food Products

2026-08-05T07:05:23.472-04:00

The Board overturned a specimen refusal of the mark RAISED RIGHT RR VETERINARY SUPPORT (in standard characters) for "Cat food; Dog food; Pet food; Edible cat treats; Edible chews for dogs; Edible dog treats; Edible pet treats," finding that applicant's website constituted an acceptable "display associated with the goods." In re Raised Right Pets, L.P., Serial No. 98709772 (August 3, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Under Section 45 of the Trademark Act, a mark is deemed to be in use in commerce on goods when, among other things, “it is placed in any manner on the goods or their containers or the displays associated therewith ....”

To establish that a webpage constitutes a “display associated with the goods,” the following criteria must be met: (1) the website contains a picture or textual description of the identified goods; (2) the website shows the mark in association with the goods; and (3) the website provides a means for ordering the identified goods. MN Apparel, 2021 TTAB LEXIS 162, at *19 (citing TMEP § 904.03(i)).

The Managing Attorney maintained that this specimen is split across five different pages, requiring multiple “clicks” to purchase the pet foods products; but only the first page displays the proposed mark. Applicant argued that, considered together, the website is an acceptable display associated with the goods: the mark appears at the top of the page; the "corresponding contiguous webpages display and describe the goods identified in the application”"; and 'the adjoining webpages provide a direct purchasing mechanism."

The Board sided with the applicant. It noted that "the top of the webpage shows the mark RAISED RIGHT RR VETERINARY SUPPORT in a stylized format along with the menu for 'buy a box' and a shopping cart symbol." "Further down the webpage we find explanations and pictures which make clear to the consumer that Applicant’s goods are human-grade pet food that is cooked and frozen by Applicant; thawed by the consumers; and then served to the pet."

Applicant explained that the button “choose recipes” may be used by consumers to proceed to purchase the goods. This button is not a model of clarity in terms of directing consumers to add the pet food items sold under the mark to the shopping cart. But the “buy a box” dropdown tab and the shopping cart, which appear in close association with the mark, fill in the blanks. We infer that the drop-down options lead consumers to a webpage on Applicant’s website, as presented in the specimen, from which they can select a box of bagged pre-cooked and frozen pet food to purchase.

In sum, the proposed mark appears prominently at the top of the webpage, in close association with the product images, descriptions, and ordering mechanisms. "Viewed as a whole, the specimen demonstrates that the mark functions as a source identifier for the goods being offered for sale."

We find that the three-part test for a display associated with the goods as set forth in MN Apparel, 2021 TTAB LEXIS 162, at *19, is satisfied because the Second Substitute Specimen includes: (1) A picture or textual description of identified goods (images of pet food and descriptions of human-grade pet food that is cooked, frozen, thawed, and served); (2) The mark shown in association with the goods (mark in upper-center portion of webpage in close proximity to images of the goods); and (3) A means for ordering the goods (collectively, the “buy a box” dropdown, shopping cart icon, and “choose recipes” button, leading to an ordering page).

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TTABlogger comment: Good to see the Board side with the applicant on a specimen issue.

Text Copyright John L. Welch 2026.

TTAB Sustains Nike's Section 2(d) Opposition to GOT EM KICKS for Consignment Stores for Retro Sneakers and Clothing

2026-08-04T06:12:01.408-04:00

The Board sustained Nike's opposition to registration of the mark GOT EM KICKS for "Retail consignment stores featuring retro sneakers and clothing," in view of the Nike's common law rights in the mark GOT 'EM for retail store services featuring footwear and clothing. The Board found that "all factors weigh in favor of a likelihood of confusion or are neutral, and none weigh against it." This post will hit some of the "highlights." NIKE, Inc. v. Gotemkicks, Opposition No. 91287908 (July 29, 2026) [not precedential] (Opinion by Judge Martha B. Allard).

he Board found that Nike launched its on-line SNKRS Platform in February 2015 and has used the GOT ’EM mark in connection with sales on that platform since its launch. Thus, Nike established use of its mark "at least in connection with its computer software application featuring footwear for sale since at least March 27, 2018, which is prior to any date upon which Applicant may rely."

Applicant’s brief focused mainly on the argument that Nike’s mark is a "commonly understood message [that] does not function as a trademark because it does not identify and distinguish source." However, the evidence showed that "consumers do indeed perceive the GOT ’EM phrase as identifying Opposer as the source of the online shopping platform services and computer software application."

Considering the totality of the evidence of record, the record does not demonstrate that Opposer’s mark is used in general parlance or that it conveys a common social, political, patriotic, religious or other informational message, such as was found to be the case in the phrases I ♥ DC, ONCE A MARINE, ALWAYS A MARINE and DRIVE SAFELY. Instead, we find that it shows that consumers perceive used with a computer software application as associated with Opposer rather than as a commonplace expression. * * * On this limited record we are simply not persuaded by Applicant’s arguments and cannot find, as Applicant argues, “widespread use and public exposure” of the phrase.

Applicant feebly argued that Nike failed to establish priority because its mark appeared on promotional items that were given away, not sold, to consumers. The Board kicked that argument to the curb: "As an initial matter, it ignores the fact that Opposer did in fact sell millions of items of footwear through its platform, where each successful sale caused the GOT ’EM mark to be displayed to the buyer. Regardless, '[t]he [Trademark Act] does not require that goods or services be sold for purposes of establishing priority.'"

Applicant also claimed that Nike's delay in seeking registration of its mark suggested that Nike itself did not consider the phrase to function as a mark. According to applicant, had Nike considered the GOT ’EM mark as a source indicator, it would have filed the application at or near the same time that it filed applications to register the SNKRS marks. The Board kicked that argument over the curb: "This is not persuasive, as there is no requirement that a mark owner apply to register its marks at all, much less that it seek to register all marks used with a particular good or service at the same time, or contemporaneously with the launch of the good or service."

Applicant did not dispute that the relatedness of the involved goods and services, nor that the parties’ channels of trade or classes of consumers are similar.

As to the conceptual strength of Nike's mark, the Board found that Nike's mark is suggestive, meaning that it is inherently distinctive. However, Nike's evidence regarding commercial strength fell short of proving that GOT 'EM is a particularly strong mark.

The record is clear that the SNKRS Platform is popular. However, with regard to the fifth DuPont factor, it is difficult to discern how many sales of footwear products were made via Opposer’s computer software application and how many of the consumers who visited the SNKRS Platform successfully purchased footwear and, as a consequence, were exposed to Opposer’s stylized mark. Even considering the unsolicited media evidence, we cannot find, on this record, that Opposer’s mark is entitled to be placed on the very high end of the fame/commercial strength spectrum; rather, we find that Opposer’s mark is entitled to the normal scope of protection

Applicant argued that the marks are dissimilar due to Applicant’s inclusion of the term KICKS and Opposer’s use of an apostrophe. The Board disagreed that these differences are enough to distinguish the marks. It found, instead, that the first DuPont factor weighed "heavily" in favor of a likelihood of confusion.

Finally, Applicant pointed to the lack of evidence of actual confusion. The Board was again unimpressed: "Here, Applicant’s co-existence as of the time of trial of about three years without evidence of actual confusion when the extent of its use is limited to services offered at a single location that has itself had low sales does not render confusion unlikely. We find the seventh and eighth DuPont factors neutral."

And so, the Board sustained the opposition.

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TTABlogger comment: Nike just did it.

Text Copyright John L. Welch 2026.

TTAB Upholds Section 2(e)(5) Functionality Refusal of Office Chair Wheel Configuration

2026-08-03T06:16:34.864-04:00

The Board put the brakes on Applicant Equiper, LLC's attempt to register a mark comprising the three-dimensional configuration of an office chair wheel (shown immediately below). The Board, relying in part on a third-party utility patent, found the configuration to be functional under Section 2(e)(5). In re Equiper, LLC, Serial No. 98448363 (July 30, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The CCPA's Morton-Norwich decision sets forth the following four factors to be considered when assessing functionality under Section 2(e)(5):

the existence of a utility patent disclosing the utilitarian advantages of the design;
advertising materials in which the originator of the design touts the design’s utilitarian advantages;
the availability to competitors of functionally equivalent designs; and
facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

The Board observed that a utility patent that claims the features of a proposed mark may be strong evidence of the functionality of those features. Furthermore, the patent’s specification and/or drawings may provide evidence of functionality even if the features are not explicitly claimed as part of the invention. "To be relevant under the first Morton-Norwich factor, the utility patent need not be owned by the applicant, but may be owned by a third party."

The crux of Applicant’s argument appears to be that the features of the wheel design claimed as its trade dress are not functional because they can be made in other shapes or designs and these non-functional shapes or designs outweigh the functional characteristics. Having carefully reviewed the [third-party] ’820 Patent . . . we agree with the Examining Attorney that it discloses both the utilitarian advantages of Applicant’s overall design and of significant features claimed by Applicant as part of its trade dress, supporting a finding that the proposed mark, as a whole, is functional.

As to the second factor, Examining Attorney Gregory Gutierrez submitted advertising of both applicant and third parties that touted the utilitarian features of the design and supported a finding that the proposed mark, as a whole, is functional.

Since the first two factors were met, the Board did not need to consider the third and fourth factors. For the sake of completeness, however, the Board considered them anyway and found them to be neutral.

Applicant’s overall design and the significant features thereof are, as a whole, functional. Any non-functional features, such as specific shapes used by Applicant, are outweighed by the significant functional features. See, e.g., Heatcon, 2015 TTAB LEXIS 360, at *35-37 (citing Becton, Dickinson, for the proposition that the Board is to weigh functional and non-functional matter in determining whether a mark in its entirety is overall functional).

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TTABlogger comment: Why aren't statement made in the specification of a third-party patent inadmissible hearsay? Of course, a patent applicant will make assertions regarding the benefits of its design. Why should a trademark applicant be tarred and feathered with third-party statements? PS: I like to see a clear discussion of de facto functionality versus de jure functionality.

Text Copyright John L. Welch 2026.

TTAB Sustains Mere Descriptiveness Opposition to REALITY ENGINE for Computer Software Design But Dismisses Lack of Bona Fide Intent Claim

2026-07-31T06:13:48.996-04:00

The Board rendered a split decision in this opposition to registration of REALITY ENGINE for, inter alia, computer software design, computer programming, computer system design, and updating and rental of computer software [ENGINE disclaimed], finding the mark to be merely descriptive of the services under Section 2(e)(1). However, Opposer Novel's lack-of-bona-fide-intent claim bit the dust. Novel Brands USA LLC v. Zerodensity Yazilim Anonim Sirketi, Opposition No. 91254798 (July 27, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

Lack of Bona Fide Intent: Opposer Novel bore the burden of proof to demonstrate by a preponderance of the evidence that Applicant lacked a bona fide intent to use the mark at the time it filed its Section 66(a) request for extension of protection in September 2018. Novel argued that applicant failed to introduce any objective evidence that it intended to use the REALITY ENGINE mark for the identified services at the time that it filed the Application.

Applicant’s witness testified that applicant (a Turkish company) currently provides "complementary engineering, design, consultancy, software development, training, rental, and production services," and that applicant is "comprised of skilled video production and computer professionals" experienced in the relevant fields. He also testified that The Weather Channel (TWC) has been a customer "using the Reality Engine system in their daily shows" since 2019. And as early as "April 4, 2016, ZD formed Zero Density Inc., (ZDI) in the United States "as a distributor and authorized entity to enter into contracts with third party resellers for licensing the Reality Engine broadcast compositing system."

Taken together, these uncontroverted averments indicate that Applicant had the demonstrated capacity or experience to provide the Remaining Services at the time the application was filed. *** Accordingly, we find Opposer has not met its burden of demonstrating that Applicant lacked a bona fide intent to use its mark in commerce in connection with respect to the Remaining Services.

Mere Descriptiveness: Based on Opposer Novel's evidence (dictionary definitions, applicant's website and advertising, media articles), the Board found that "Applicant’s mark REALITY ENGINE describes a type of computer software that 'performs a fundamental function of a larger program' in connection with augmented reality or virtual reality applications."

While we are keenly aware that the involved application does not list goods, such as this type of software, the services listed in the application do include “computer software design … computer programming … computer system design … [and] updating and rental of computer software.” And these services are broad enough to include the use or design or involve augmented reality or virtual reality engine software as a primary feature or purpose of those services. In which case, REALITY ENGINE mark immediately conveys information about these services to those who know what they are.

Applicant contended that, upon hearing the mark as a whole, a multi-step thought process is necessary before a consumer realizes the descriptive significance of the mark. The Board disagreed.

Because the terms REALITY and ENGINE are merely descriptive of features or purposes of Applicant’s services, and these individual terms do not lose their descriptive significance when combined, consumers aware of Applicant’s services will immediately understand the mark REALITY ENGINE to convey information about the services.

The Board found that consumers encountering the mark REALITY ENGINE in connection with “computer software design … computer programming … computer system design … [and] updating and rental of computer software" services "will quickly understand that the mark imparts information about these services in that they involve the design, use or rental of virtual or augmented reality engine software."

And so, the Board sustained the mere descriptiveness claim.

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TTABlogger comment: Applicant accepted judgment as to some of its services, conceding that it had no evidence to prove an intent-to-use as to those items. However, under Wet Seal, that did not render the entire application void ab initio.

Text Copyright John L. Welch 2026.

KUL STOOL for Portable Coolers Confusable with KÜHL for Water Bottles, Says TTAB

2026-07-30T06:24:19.280-04:00

The Board sustained an opposition to registration of the mark KUL STOOL and Design for "Portable coolers, non-electric" [COOL STOOL disclaimed], concluding the confusion is likely with the registered mark KÜHL for "Water bottles sold empty; Empty water bottles for bicycles; Plastic water bottles sold empty; Reusable plastic water bottles sold empty." The Board found that the marks to be similar and that the goods closely related and marketed through overlapping channels of trade to overlapping classes of consumers. None of the DuPont factors favored the applicant. Alfwear, Inc. v. Kul Products LLC, Opposition No. 91290865 (July 16, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Marks: Opposer's registration states that KÜHL translates to "cool" in English. The opposed application states that "KUL" also translates to "cool" in English. The Board not surprisingly found KUL to be the dominant element of applicant's mark since it is the first word in the literal portion of the mark.

Applicant argued that the umlaut over the “U” in KÜHL creates a visual and aural difference. The Board agreed that it creates a minor visual difference, but as to the sound of the mark, the Board noted that "there is no correct pronunciation of a trademark, and [a]bsent evidence in the record indicating that U.S. consumers pronounce KÜHL differently than they would pronounce KUL, we are not persuaded that these words sound different from one another."

The word STOOL in applicant's mark is generic or highly descriptive, since one of the functions of applicant's product, besides being a cooler, is to provide "a sturdy stool for seating."

The Board acknowledged the "minor" differences in the marks, but found the marks, overall, to be similar.

The Goods: Opposer submitted evidence that more than two dozen entities offer both applicant's and opposer's goods. "This amply shows substantial consumer exposure to nonelectric coolers and water bottles coming from the same source." Applicant feebly argued that the involved goods are different and can be told apart, and furthermore that its product doubles as a seat. Irrelevant, said the Board.

Based on the plentiful third-party use evidence, we find that the respective goods in the application and the goods in Registration No. 5931177 are closely related. In our final weighing of the relevant factors, this factor will count in favor of a conclusion that confusion is likely.

Trade Channels/Consumers: Opposer pointed to evidence that several online retail outlets offer both nonelectric portable coolers and water bottles. Furthermore, several third-parties offer their own-branded coolers and water bottles on their own websites. The Board found that the involved goods are offered in overlapping trade channels to overlapping classes of customers.

Purchaser Care: There were no limitations as to price in the registration or challenged application. The Board noted that some water bottles sell for more that some coolers. On the other hand, there was no evidence that these products are the type of goods generally subject to impulse-purchasing. The Board found this factor to be neutral.

Strength of Opposer's Mark: Due to lack of pertinent evidence from opposer, the Board found the fifth DuPont factor to be neutral. As to the sixth factor, applicant argued that there are numerous ‘COOL/KOOL/KUL’ marks on coolers/water bottles/clothing, but it provided no evidence in support.

The Board briefly discussed the eighth (lack of evidence of actual confusion), ninth (the variety of goods on which a senior user’s mark is used), tenth (the market interface between the parties), and eleventh (the extent to which applicant has a right to exclude others from use of its mark on its goods) DuPont factors and found them all to be neutral. As to the twelfth factor (the extent of potential confusion, i.e., whether de minimis or substantial), it found that "[w]here, as here, both parties’ products 'are the type of goods that would be marketed to and purchased by significant numbers of purchasers,' this factor will count a bit in favor of a conclusion that confusion is likely."

Conclusion: All of the non-neutral factors favored Opposer, and so the Board concluded that confusion is likely and it sustained the opposition.

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TTABlogger comment: Judge Casagrande's discussion of the import/purpose of several of the DuPont factors is worth reading.

Text Copyright John L. Welch 2026.

TTABlog Test: Is MUSEUM OF NAMES Merely Descriptive of Entertainment and Educational Services in the Field of Names?

2026-07-29T05:42:33.310-04:00

The USPTO refused to register the mark MUSEUM OF NAMES (in standard character form), deeming it to be merely descriptive of "entertainment and educational services, namely, the presentation of seminars, workshops and panel discussions, and ongoing television and radio shows all in the field of names" [MUSEUM disclaimed]. So far this year, the Board has affirmed all 11 Section 2(e)(1) mere descriptiveness refusals that have been appealed. How do you think this one came out? In re Taymitch & Associates, Serial No. 99033907 (July 27, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Examining Attorney provided dictionary definitions of “museum” (an institution devoted to the procurement, care, study, and display of objects of lasting interest or value or a place where objects are exhibited), “of” (relating to: about), and “name” (a word or combination of words by which a person, place or thing, a body or class or any object of thought is designated, called, or known), an entry from Encyclopaedia Britannica related to “virtual museum” ([A] collection of digitally recorded images, sound files, text documents, and other data of historical, scientific, or cultural interest that are accessed through electronic media), and webpages from physical museums that offer virtual access to their collections.

The Examining Attorney contended that the proposed mark describes the provider of the services, whether physical or virtual.

Applicant Taymitch argued that the Examining Attorney’s evidence was insufficient since its services do not involve collections or access to collections in virtual form and "[n]othing in the identified services involves collections, study, display, or museum operation." [See Applicant's website here]. The Board agreed with Taymitch.

Applicant’s recited services are not identified as museum services, virtual museum services, museum-based educational or entertainment programming, or retail gift shop services provided in or by a museum. The record also contains no evidence that Applicant’s identified services involve the study or display of collections, otherwise constitute a museum-like institution, or are virtual museum services.

The Board observed that, although a proposed mark is considered merely descriptive if it describes the source of the services (see, e.g., Omaha Nat’l Bank, 819 F.2d at 1119; Major League Umpires, 2001 TTAB LEXIS 515, at *5; see generally TMEP § 1209.03(q) (listing cases)), there was no evidence that Applicant Taymitch is a museum.

And so, the Board reversed the refusal.

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TTABlogger comment: Compare this decision with yesterdays' decision deeming NATRUAL BRIDGE CAVERNS to be merely descriptive even though the recited services were not identified as involving cave systems or cave. Is the mark MUSEUM OF NAMES misdescriptive? PS: What is the "field of names"?

TTABlog Test: Is NATURAL BRIDGE CAVERNS Merely Descriptive of Theme Park-Related Services?

2026-07-28T05:51:23.363-04:00

The USPTO refused to register NATURAL BRIDGE CAVERNS as a service mark for cabin rentals, provision of parking spaces, theme park services, and provision of campground facilities (in four classes), on the ground of mere descriptiveness under Section 2(e)(1). Applicant argued that the mark cannot be merely descriptive of the identified services because it is not seeking to register the proposed mark for cave systems or cave tours. How do you think this appeal came out? In re Natural Bridge Caverns, Inc., Serial Nos. 97438479, 97438507, 97546721 & 97546743 (July 24, 2026) [not precedential] (Opinion by Judge Robert Lavache).

Examining Attorney Danielle Anderson submitted dictionary definitions of NATURAL BRIDGE (“a rock formation in which the central bottom part has been completely eroded away, leaving a structure that looks like a bridge”) and CAVERN ("cave"), as well as excerpts from third-party websites using the term "natural bridge" to refer to a type of natural rock formation, and other websites using "cave" interchangeably with "cavern."

The Board found that the combination NATURAL BRIDGE CAVERNS "connotes a cave system featuring a naturally occurring rock formation with a bridge-like structure." But, the Board asked, what is the relevant consumers’ understanding of the term as used in connection with Applicant’s services?

The Examining Attorney asserted that NATURAL BRIDGE CAVERNS is merely descriptive of these services because the phrase describes a key aspect or characteristic of them, namely, that they are provided in connection with an attraction consisting of a cave system featuring a naturally occurring bridge-like rock formation. The Board agreed.

In view of the evidence of record, we agree with the Examining Attorney that “a consumer knowing that applicant’s services are being offered for the purposes of viewing a cavern with a natural bridge will immediately understand the wording NATURAL BRIDGE CAVERNS as conveying information about the services, namely that applicant’s rental cabins[,] [parking facilities, temporary accommodations, campgrounds, social function facilities, and theme-park special event services] are for the purpose of accessing” a cave system featuring a naturally occurring bridge-like rock formation.

The Board rejected applicant's assertion that it was applying a "per se" rule that would find the mark descriptive of any goods or services offered at or near a natural cavern: e.g., snack foods. Not so, said the Board.

In this case, our determination does not rest on such a per se rule, but on the specific relationship between the proposed mark and the particular services identified in each application, as established by this record. *** The third-party evidence of record likewise shows that accommodations, campgrounds, parking facilities, event facilities, and similar services are routinely offered specifically to provide access or proximity to cavern and natural-bridge attractions. This record thus establishes a direct nexus between the proposed mark and a feature, characteristic, or fundamental purpose of these services—not a categorical rule that everything offered on Applicant’s premises is descriptive

With respect to the argument that applicant's recitations of services do not include cave systems or tours, the Board pointed out that the wording of the proposed mark need not actually appear in the identification of services. It is sufficient that the proposed mark merely describes a feature, characteristic, or purpose of the identified services. "Here, the wording used to identify Applicant’s various services is broad enough to include such services offered in connection with an attraction consisting of a cave system featuring a naturally occurring bridge-like rock formation."

And so, the Board affirmed the refusal to register.

Two significant reasons for not registering merely descriptive marks are: “(1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods [or services]; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.” *** [W]e agree with the Examining Attorney that other entities in the marketplace who offer the same services in connection with an attraction consisting of, or including, a cave system featuring a naturally occurring bridge-like rock formation, should be free to use NATURAL BRIDGE CAVERNS in advertising such services.

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TTABlogger comment: Rock-solid decision?

TTABlog Test: Is BRECKIN ANKLES Confusable with BREKENS B & Design for Overlapping Clothing Items?

2026-07-27T06:30:46.498-04:00

The USPTO refused to register the mark BRECKIN ANKLES for various clothing items "used in relation to basketball," including tops and bottoms [ANKLES disclaimed], concluding that confusion is likely with the mark shown below, for clothing items, including tops and pants. The Board found the goods to be overlapping, but what about the marks? How do you think this came out? In re Andrew Riess, Serial No. 98436600 (July 23, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Goods: The Board found that the "tops" of the cited registration encompass Applicant Riess's "tops . . . to be used in relation to basketball," and Riess's "bottoms . . . to be used in relation to basketball" quivalent to registrant's "pants." Because the involved goods are identical in-part, the Board presumed that these goods travel in the same trade channels to the same classes of consumers.

The Board therefore found that the second and third DuPont factors "strongly" support a conclusion that confusion is likely.

The Marks: The Board agreed with the Examining Attorney that BREKENS is the dominant portion of the cited mark. It noted that Applicant's mark is in standard character form, and could be displayed in the same font, style, and style as the word BREKENS in the cited mark.

Even assuming such a depiction of the mark BRECKIN ANKLES, however, we find that the dissimilarities of the marks in appearance outweigh their similarities. Although the dominant word BRECKIN in Applicant’s mark may resemble the word BREKENS in the cited mark, the presence of the word ANKLES in Applicant’s mark makes the marks, in their entireties, slightly dissimilar in appearance.

With respect to sound, the Board agreed with the Examining Attorney that the word BRECKIN, standing alone, likely "is not pronounced 'BREAKING'." However, it observed that "[t]here is no correct pronunciation of a trademark that is not a recognizable word. *** BRECKIN, standing alone, is not a 'recognizable word' in the sense that it does not appear in any of the English-language dictionaries in the record other than as a name of Irish origin, but '[a]bsent evidence to the contrary, we must consider all reasonable possibilities' for the pronunciation of BRECKIN as part of Applicant’s mark BRECKIN ANKLES when it is verbalized in its entirety."

On the other hand, the record showed that consumers of clothing items "to be used in relation to basketball" and 'basketball accessories" are likely to be familiar with the phrase "breaking ankles": "[A] point guard in basketball breaks ankles when they are dribbling and cross over a defender, causing them to trip up on their feet and fall over." The OXFORD ENGLISH DICTIONARY defines the "ankle-breaking" in the same way, albeit more formally. And Google search results provide links to videos captioned “NBA - The Art of Breaking Ankles” and “NBA ‘Broken Ankles Moments.”

We find that for consumers of clothing items “to be used in relation to basketball” and “basketball accessories” sold under Applicant’s mark BRECKIN ANKLES, the pronunciation of the mark as a whole as a slang variant of “breaking ankles,” through the dropping of the “g” in the gerund “breaking,” which involves a common practice in colloquial American English speech, is a reasonable possibility.

And so, the Board found BREKENS and BRECKIN ANKLES to be "slightly dissimilar in sound due to the presence in Applicant’s mark of the word ANKLES, which causes the mark as a whole to be likely to be spoken and heard as something akin to “Breakin’ Ankles.'"

Finally, and most importantly, with respect to meaning, the cited mark would likely be understood to be a name, particularly given the presence of the initial “B” in close proximity to BREKENS in the mark, while Applicant’s mark would likely be understood as a slang variant of the phrase “Breaking Ankles” when used in connection with clothing items “to be used in relation to basketball” and “basketball accessories."

And so, the Board found the marks "somewhat dissimilar" in appearance and sound, and "quite dissimilar" in connotation and commercial impression. "The first DuPont factor strongly supports a conclusion that confusion is not likely."

Ruling that the first DuPont factor was dispositive, the Board reversed the refusal.

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TTABlogger comment: Not quite a slam dunk, but maybe a reverse lay-up?

TTAB Finds SAAS Services Related to Consulting Services, Rejecting Thor Tech Third-Party Paired Registration Argument

2026-07-24T05:51:12.683-04:00

In a lengthy opinion, the Board upheld a refusal to register the mark GREENVIEW for “Software as a service (SAAS) services featuring software for deploying and reviewing reports, dashboards and analytics in a customizable interface that can be white labeled for external use," concluding that confusion is likely with the registered mark shown below, for business consulting services. There was no doubt about the similarity of the marks. Applicant argued that the services are unrelated, but the Boad took a dim view of that contention. Applicant pointed to 18 pairs of third-party registrations for identical or substantially similar marks, where one entity’s registration covers software and the other’s covers business consulting. The Board found that evidence of little probative value. In re Green Leaf Consulting Group, Inc., Serial No. 98620760 (July 21, 2026) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

The Board observed that "[w]here a technology service automates or facilitates the same function that a professional service performs, the two may be found intrinsically related. Examining Attorney Jaime Batt's evidence confirmed that "the same entity commonly provides both business consulting services of the type identified in the cited registration and SaaS analytics platforms of the type identified in Applicant’s application." And the Board noted that applicant itself offers both consulting and SaaS analytics under the mark GREEN LEAF CONSULTING GROUP.

Applicant countered the Examining Attorney’s evidence by submitting eighteen pairs of use-based registrations owned by different entities, for identical or substantially similar marks, where one entity’s registration covered software and the other’s covers business consulting. According to applicant, these paired registrations demonstrate the Office’s repeated recognition that business consulting services on the one hand and software or SaaS on the other are not related for likelihood of confusion purposes. See In re Thor Tech, Inc., No. 85667188, 2015 WL 496133, at *4 (TTAB 2015) (reversing a Section 2(d) refusal based in part on approximately 50 pairs of registrations for similar marks owned by different entities for automobiles versus recreational vehicles). [TTABlogged here]

The Board distinguished Thor Tech on its facts: "the examining attorney there relied on only two third-party registrations, the goods were expensive (respectively ranging between about $8,000-23,000 and $17,000-40,000), and the record did not establish overlapping trade channels." It found applicant's registration evidence of "little weight for several reasons."

First, three of the registrations had been cancelled. Second, there was no evidence "whether the listed marks are currently in use, whether the public is familiar with them, or whether consumers have formed any expectations based on their coexistence."

Third, there was no evidence as to "whether the paired registrants entered into coexistence agreements, whether their marks actually coexisted in the marketplace without confusion, or whether they operate in a crowded field that has conditioned consumers to distinguish among similar marks."

Fourth, these paired registrations "almost certainly present an incomplete picture of USPTO practice. There is no comparative evidence of how many applications covering the relevant services were refused registration based on similar marks." "Moreover, the fact that these types of services may sometimes emanate from different sources does not negate the affirmative evidence that they may also emanate from a common source."

Fifth, each case must be decided on its own merits, and prior decisions of other examining attorneys carry little evidentiary weight and are not binding on the Board.

The paired registrations demonstrate that the USPTO has sometimes permitted coexistence, but they do not establish that confusion never occurs or that the services are categorically unrelated. The Examining Attorney’s affirmative marketplace evidence, particularly Applicant’s own website, demonstrates that these services do in fact emanate from the same source in the actual marketplace − a showing that paired registrations, without more, cannot overcome.

The Board concluded that the second DuPont factor weighed in favor of likelihood of confusion.

The Board next found that the channels of trade overlap. It then considered the consumers for these services and found that they are the same: namely, business professionals and organizations seeking data analytics, reporting, and advisory solutions. Applicant argued that the consumers are sophisticated and exercise a heightened degree of care, but it submitted no supporting evidence. The Board "must consider the full range of potential purchasers and base our analysis on 'the least sophisticated potential purchasers.'" See Stone Lion Cap. Partners, 746 F.3d at 1325.

However, the Board acknowledged that "even the least sophisticated purchaser of SaaS analytics services or business consulting would likely exercise at least some degree of care beyond a casual impulse purchase. These are not inexpensive consumer goods purchased off a shelf; by their nature, they involve a threshold level of evaluation." It concluded that the fourth DuPont factor slightly weighed against finding a likelihood of confusion.

On balance, the factors favoring a likelihood of confusion − the virtual identity of the marks, the relatedness of the services, and the overlapping trade channels − outweigh the modest counterweight of the fourth factor.

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TTABlogger comment: xxx

Law Firm Fails to Win Big in its Opposition to "844-I-WIN-BIG" for Legal Services, TTAB Tosses Out Non-Use and Section 2(d) Claims

2026-07-23T06:15:18.931-04:00

Sigal Law sought to register the mark 844-I-WIN-BIG for legal services, but Newton, Udinson, & Hill PLLC opposed, claiming non-use and likelihood of confusion with its common law mark WIN BIG LAW, also for legal services. The Board, however, found that applicant was using its mark as a source indicator as of the filing date of its application, and further found that opposer failed to prove that its alleged mark was distinctive. Newton, Udinson, & Hill PLLC v. Sigal Law Firm, PLLC, Opposition No. 91289155 (July 13, 2026) [not precedential] (Opinion by Judge Mark Lebow).

The Board spent about half of its opinion dealing with various evidentiary and procedural objections, overruling nearly all of them. It found opposer's reply brief was too long, and so it refused to consider the brief.

Likelihood of Confusion: Opposer claimed common law rights dating back to May 2021, but opposer failed to address the issue of whether WIN BIG LAW mark is distinctive "even though Applicant made it an issue." [Emphasis by the Board].

Applicant also made of record approximately 46 third-party registrations for marks containing the words BIG and/or WIN” for legal services “to show the descriptiveness and/or suggestiveness of Opposer’s Mark and its related weakness.” In addition, Opposer itself highlights, in its main brief, that “in a directly related opposition involving the same parties and services, [it] alleges that the phrase ‘WIN BIG’ is merely descriptive or laudatory and so commonly used that it lacks distinctiveness.

Opposer admitted in its pending application for WIN BIG LAW that "the meaning of the phrase is a law practice that 'wins big' on behalf of its clients, and the commercial impression is that the mark describes the service provider." The Board observed that "[t]his is precisely the type of laudatory, outcome-oriented message that has been held merely descriptive in analogous contexts."

The Board found the claimed mark WIN BIG LAW to be merely descriptive. Consequently, opposer was required to prove that the mark had acquired distinctiveness through secondary meaning.

Here, Opposer’s evidence consists primarily of its length of use of the term WIN BIG LAW for around five years, or since May 6, 2021, substantial advertising expenditures, social media activity, and billboards. While this evidence demonstrates commercial promotion of the claimed mark, it consists largely of testimony from an interested party and lacks objective evidence such as consumer surveys or third-party declarations showing that the relevant consumers perceive WIN BIG LAW as identifying Opposer as the source of the services, rather than as a promotional slogan touting successful results.

The Board concluded that, given the highly descriptive nature of the mark WIN BIG LAW, Opposer’s evidence fell short of the "substantial showing" required to establish acquired distinctiveness.

Because Opposer failed to establish that it owns a protectable mark, it failed to prove priority, and so its Section 2(d) claim was dismissed.

Nonuse: In its brief, Opposer argued that applicant’s use did not qualify as bona fide trademark use because (1) applicant’s services are provided only in Michigan, and (2) applicant uses 844-I-WIN-BIG solely as a telephone number and point of contact, rather than as a source identifier for its legal services. The Board was not impressed.

Use of a mark in connection with services that affect interstate commerce satisfies the “use in commerce” requirement of Section 1(a), even if the services themselves are rendered in only one state. * * * Applicant’s website is accessible to potential clients throughout the United States, and its services affect interstate commerce.

As to the question of non-use, the Board offered little discussion: "[t]he evidence shows that Applicant was actively providing personal injury legal services to clients as of the filing date of the application and was displaying 844-I-WIN-BIG on its website in connection with those services and alongside its firm name."

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TTABlogger comment: Opposer, on the last day of its rebuttal period, tried to add a failure-to-function claim, but the Board refused, finding that the claim was not tried by implied consent.

SERVICE WEST is Primarily Geographically Descriptive of Furniture Repair, Maintenance, and Transportation Services, Says TTAB

2026-07-22T05:50:01.424-04:00

In a rare Section 2(e)(2) inter partes proceeding, the Board sustained an opposition to registration of the mark SERVICE WEST (in standard character form), finding it to be primarily geographically descriptive of applicant's services of "Installation, maintenance and repair of furniture, architectural walls and portable trade show booths,” in International Class 37, and “Transportation and storage of goods; transportation of furniture, musical instruments, stage scenery, stage props, costumes, sound equipment, stage machinery, industrial equipment, laboratory equipment and computer equipment; furniture moving; warehouse storage” in International Class 39 [SERVICE disclaimed]. Applicant claimed acquired distinctiveness under Section 2(f), but its proofs fell short. Service West, Inc. v. Service West, Inc., Opposition No. 91293505 (July 17, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon).

In determining whether a mark is primarily geographically descriptive under Section 2(e)(2), the Board considers three questions (quoting In re Newbridge Cutlery Co., 776 F.3d 854, 860-61 (Fed. Cir. 2015):

Is the applied-for mark “the name of a place known generally to the public?”
Would relevant consumers make a services/place association, that is would they “believe that the [services] for which the mark is sought to be registered originate in that place?” and,
Do the services originate from “the geographic region named in the mark?”

As to the first question, the Board found that the word “WEST” as used in SERVICE WEST is primarily geographically descriptive. On its website, applicant states, “Service West is the West Coast leader in commercial furniture installation, warehousing and logistics.” The Board deemed this statement to be "strong evidence that the word 'west,' at least as used in West Coast, is a place generally known to the public. If that were not the case, Applicant would not use such a label, in a geographic manner, on its own website."

Considering the mark as a whole, the Board found that SERVICE WEST "connotes a business providing furniture installation and related services to customers from its 'West Coast' location." "The mark conveys nothing more than the fact that Applicant’s services, or a substantial part of the services, originate from the 'West,' and in particular here, from the West Coast region."

As to the third question, applicant submitted testimony that 70% of its business comes from California, or from its West Coast locations.

Because the West Cost is a location generally known to the public and applicant's services emanate from there, it is presumed that relevant consumers would make an association between the services and the geographic location. "That is exactly what consumers will do upon hearing or seeing the applied-for mark. Consumers will understand, indeed will be told by Applicant, that furniture-related services may be obtained from this West Coast business. The services/location association is established by the record."

All three prongs of the Section 2(e)(2) test having been satisfied, the Board found that SERVICE WEST is primarily geographically descriptive of applicant's services.

Turning to the Section 2(f) claim, applicant submitted "very little evidence *** perhaps believing that showing a long period of use is sufficient evidence to show distinctiveness." Applicant provided testimony that it has used the SERVICE WEST mark for more than forty years, but the record "raises as many questions as it answers about Applicant’s use through the years."

Applicant relied on a single witness who was employed by applicant since 2019. However, there was no explanation "for how the witness would know what happened years before he joined Applicant’s business."

We find this witness’ testimony as to events before 2019 lacks a proper foundation and cannot be relied upon to prove whether consumers understood the Service West name as a service mark. It is equally plausible that consumers understand Service West as a tradename and not as a distinctive service mark.

In sum, applicant's evidence fell short of supporting its Section 2(f) claim. And so, the Board sustained the opposition.

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TTABlogger comment: Opposer also claimed genericness but submitted no probative evidence on that claim. The Board declined to reach opposer's mere descriptiveness claim.

TTAB Affirms Reexamination Decision Cancelling DISCUSS.IO Registration: Mere Offering of Services is not Use of the Mark

2026-07-21T06:02:07.197-04:00

The Board upheld a reexamination decision cancelling a registration for the mark DISCUSS.IO for streaming services and SAAS market research services, on the ground that the registrant had failed to use the mark prior to the filing date of its underlying use-based application. The Board tossed aside registrant's claim that it was "unclear" that rendering of the services was required, rather than mere offering of the services, to constitute use of the mark. In re Discuss.io Inc., Reexamination No. 2023-100526R for Registration No. 6729238 (July 17, 2026) [not precedential] (Opinion by Judge Christen M. English).

Not only did Examining Attorney Renee Servance put the registrant on notice that evidence of the rendering of the services was required to show use, but Section 45 of the Trademark Act sets forth two requirements for establishing that a service mark is in use in commerce: (1) the mark must be used or displayed in the sale or advertising of services; and (2) the services must be rendered in commerce. See Coutoure v. Playdom, Inc., 779 F.3d 1379, 1381 (Fed. Cir. 2015).

And so, the issue on appeal was whether registrant was rendering the services – not just promoting them – as of the use-based application date.

Registrant submitted promotional materials, consumer reference guides, several articles, and a Wayback Machine screenshot dated March 16, 2016 (more than five years before the application filing date of May 12, 2021). As to the first two, they plainly did not demonstrate use of the mark in the rendering of the services.

Turning to the articles, even if the statements therein were true, this evidence was "at best, indirect evidence requiring us to infer that Registrant was rendering its services as of the Application Date." The Board observed that this type of indirect evidence "is insufficient to overcome the Director’s finding of a prima facie case of nonuse."

Finally, the Wayback Machine screenshot, even if accepted as accurate, was "not reasonably contemporaneous with the filing date of the application."

It is notable that Registrant did not introduce any direct evidence consisting of a declaration from someone with firsthand knowledge attesting to when Registrant began rendering its services and other pertinent information such as its number of customers or user agreements.

The Board concluded that Registrant’s evidence failed to demonstrate use of the mark in commerce as of the application filing date, and so it affirmed the reexamination decision. "Registrant’s Registration No. 6729238 for the Registered Mark DISCUSS.IO will be cancelled in its entirety in due course under Section 16B(g) of the Trademark Act, 15 U.S.C. § 1066b(g)."

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TTABlogger comment: One might say that registrant's evidence was "use-less."

On Remand, TTAB Dismisses ASPIRE BANK Opposition After Re-Assessing First and Sixth DuPont Factors

2026-07-20T06:18:38.021-04:00

On remand from the CAFC, the Board dismissed this opposition to registration of ASPIRE BANK & Design (in three similar forms) for "banking and financing services" (BANK disclaimed), concluding that confusion is unlikely with the registered mark ASPIRE for "credit card services." In May 2023, the Board had sustained the opposition [pdf here], but in September 2025 the CAFC vacated and remanded the case for further consideration of the Board's findings regarding the first (similarity of the marks) and the sixth (third-party marks) DuPont factors. [TTABlogged here]. CC Serve Corporation v. Apex Bank, Opposition No. 91254295 (July 17, 2026) [not precedential] (Opinion by Judge Christen M. English).

As to the sixth factor, the CAFC ordered reconsideration of "the appropriate scope of third-party marks eligible for consideration in view of the Board’s factual finding that the parties’ services are highly similar.” As to reconsideration of the first DuPont factor, the court explained that “[b]ecause commercial impression informs the analysis under the first DuPont factor … reconsideration of the sixth DuPont factor may result in a different determination of the mark’s commercial strength or weakness and affect the overall commercial impression.”

The Board had concluded that because "the parties’ services are legally identical to the extent Applicant’s ‘banking and financing services’ encompass Opposer’s ‘credit card services,’ … for purposes of the sixth DuPont factor, the properly defined relevant public are consumers of ‘credit card services.'" The Court held that this “analysis was legally flawed.” According to the CAFC:

The sixth DuPont factor requires the Board to consider similar marks for similar goods and services. In the Board’s analysis of the second DuPont factor, the Board determined that the parties’ services are highly similar, which led the Board to conclude that the second factor weighed heavily in favor of finding likelihood of confusion. When analyzing the sixth Dupont factor, however, the Board restricted the universe of marks it considered to only those relating to credit card services and excluded marks related to other banking and financing services. That was an error.

The appellate court explained that “[w]hen the Board has already made a factual finding that the services are highly similar – in fact, partially legally identical—in its analysis of the second DuPont factor, the Board should retain the same scope in its consideration of similarity under the other factors."

And so, the Board reviewed some 30 third-party marks in use for credit card services, banking services, and financing services, as well as registrations for some of those marks [including, e.g., THE ASPIRE CARD, ASPIRE CHECKING, and ASPIRE FINANCIAL COUNSELING]. Opposer argued that there was no evidence regarding the scope of the third-party use or advertising, but the Board pointed out that "even where the record does not include particulars about the extent of third-party uses in the marketplace, evidence of widespread third-party use may be powerful on its face to demonstrate 'that consumers have been educated to distinguish between different marks on the bases of minute distinctions.'" [See Juice Generation and Jack Wolfskin].

In sum, the Board found that, under the sixth DuPont factor, Opposer’s ASPIRE mark "is commercially and conceptually quite weak as the evidence shows it is common for third parties to adopt and use marks comprised of the first term ASPIRE coupled with a generic word, e.g. ASPIRE CHECKING, ASPIRE SAVINGS, ASPIRE LENDING." See Juice Generation, 794 F.3d at 1338-39 (explaining that “evidence of third-party use bears on the strength or weakness of an opposer’s mark” and that “highly suggestive [marks] are entitled to a narrower scope of protection, i.e., are less likely to generate confusion over source identification, than their more fanciful counterparts.”).

Overall, we find the parties’ marks in their entireties are similar in appearance, sound, connotation and commercial impression. However, taking into account the significant weakness of the shared term ASPIRE, we find that consumers are likely to notice and rely on the minor differences between the marks to distinguish them. * * * The sixth DuPont factor thus weighs heavily against finding a likelihood of confusion. Indeed, we find that the heavy weight of the sixth factor is the dominant consideration in this case.

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TTABlogger comment: Ouch! Three years later, victory is turned into defeat.