The TTABlog®

TTABlog Quarterly Index: July - September 2026

2026-10-01T05:40:52.234-04:00

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield.com.

Section 2(d) - Likelihood of Confusion:

TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
TTABlog Test: Are Plastic Bags Related to Paper Labels Under Section 2(d)? [Yes]
TTABlog Test: Are these UPSTREAM-Formative Marks Confusable for Insurance Agencies? [Yes]
TTABlog Test: Is SNOWY THE MOUSE for Plush Toys Confusable with SNOWY for Stuffed Toys? [Yes]
TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
TTABlog Test: Is KARDASHIAN-JENNER for Online News Services Confusable with KARDASHIAN JENNER PRODUCTIONS for Entertainment Services? [Yes]
Precedential No. 6: "O EL CIELO VALLE DE GUADALUPE" Confusable with CIELO for Wine, TTAB Concludes
TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
TTABlog Test: Is GOSHI for Body Lotions Confusable with GOCHI for Supplements? [Yes]
TTAB Deems MONTANA EQUINE Confusable with MONTANA ROSE EQUINE THERAPY for Horse-related Services

Section 2(e)(1) - Mere Descriptiveness:

Section 2(e)(2) - Primarily Merely Geographically Descriptive:

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

Section 2(e)(4) - Primarily Merely a Surname:

TTABlog Test: Is "HANSEN HONEY FARM" for Honey Primarily Merely a Surname? [Yes]

Section 2(e)(5) - Functionality:

Section 2(f): Acquired Distinctiveness:

Precedential No. 5: Blue-and-White Stripes Trade Dress Lacks Inherent and Acquired Distinctiveness, Says TTAB

Abandonment/Nonuse/Specimen of Use:

Dilution by Tarnishment:

Genericness:

Lack of Bona Fide Intent:

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

Nonownership:

Precedential No. 7: Law Firm owns BIRTH JUSTICE logo, not the Associate who Conceived the Brand

Reexamination:

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

Discovery/Evidence/Procedure:

Recommended Reading:

Other:

Text Copyright John L. Welch 2026.

TTAB Posts October 2026 Hearing Schedule

2026-09-30T06:25:14.947-04:00

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled five oral hearings for the month of October 2026. The first three hearings will held in-person at the Madison East Building 600 Dulany Street, 9th Floor (Hearing Room C), Alexandria, VA. The last two will be held virtually. Briefs and other papers for each case may be found at TTABVUE via the links provided.

October 7, 2026 - 10:00 AM [In-Person]: Home Depot Product Authority, LLC v. Propane Depot Inc., Cancellation No. 92084445 [Petition for cancellation of a registration for the mark shown below left, for "Fuel delivery services featuring propane for homes and businesses" [PROPANE and .COM disclaimed], on the ground of likelihood of confusion with, and likely dilution of, opposer's orange logo (shown below right) registered for home improvement store services [HOME disclaimed].

October 15, 2026 - 10:00 AM [In-Person]: Pharma Cosmetics Laboratories Ltd v. Neora Switzerland Holdings GMBH, Cancellation No. 92079320 [Petition for cancellation of a registration for the mark NEORA for, inter alia, medicated and nonmedicated skin care preparations, on the ground of likely confusion with the registered mark NEOVA for nonmedicated skin care products and medicated skin care preparations.]

October 15, 2026 - 2:00 PM [In-Person]: In re A.J. and R.G. Barber Limited, Serial No. 90647853 [Refusal to register the mark shown below, for "Aged cheese," absent a disclaimer of "1833".]

October 21, 2026 - 11:00 AM [Virtual]: In re SimplyFresco LLC, Serial No. 97435689 [Section 2(d) refusal to register the mark COCINA FRESCA for "sauces; tomato based sauces; salsa; Mexican food sauces" in view of the registered mark CUCINA FRESCA for "Fresh pasta; filled pasta; pasta sauce; and macaroni and cheese."]

October 22, 2026 - 2:00 PM [Virtual]: Encyclopaedia Iranica Foundation Inc. v. Persian Heritage Foundation, Opposition No. 91245273 [Opposition to registration of the mark PERSIAN HERITAGE FOUNDATION and Design shown below left, for "Charitable foundation services, namely, providing fundraising activities, funding, scholarships and/or financial assistance for the furthering of Persian heritage and culture in academia" [PERSIAN HERITAGE FOUNDATION disclaimed] on the grounds of lack of bona fide intent and likelihood of confusion with the common mark "flower" design mark shown below right, for a variety of goods and services, including books and other printed or online publications, publication services, services consisting in promoting preservation and awareness of Iranian culture and heritage, charitable services, namely, providing fundraising activities and granting funds to support preservation and awareness of Iranian culture and heritage.]

Read comments and post your comment here.

TTABlogger comment: What say you? See any WYHA?s?

Text Copyright John L. Welch 2025.

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

2026-09-29T05:47:29.109-04:00

A now-retired TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal 95% of the time by looking at just the marks and the goods/services. Here are three appeals decided recently. Let's see how you do. [Answers in first comment].

In re Charlie Blue Therapy, LLC, Serial No. 99180551 (September 26, 2026) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of the mark CHARLIE BLUE for “Mental health therapy services; Clinical mental health counseling services; Counseling in the field of mental health and wellness; Psychological counseling services in the field of sports,” in view of the registered mark CHARLIE for, inter alia, “Mental health services; Providing mental health and wellness information; Psychotherapy; Psychiatric services; Outpatient and inpatient care services in the fields of mental health, psychology, psychiatry, addiction treatment, and social work; Telemedicine services in the fields of mental health, psychology, psychiatry, addiction treatment, and social work; … Cognitive therapy services; Cognitive-behavioral therapy (CBT); Dialectical behavior therapy (DBT); . . . Managed mental health care and treatment services.”] [Registrant's specimen of use shown below]

In re Happy Valley Hannah, Ltd., Serial No. 98423787 (September 24, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Section 2(d) refusal of the mark THE HAPPIEST VALLEY for “Hats; Ponchos; T-shirts; Clothing jackets; Hooded sweatshirts; Long-sleeved shirts,” in view of the mark HAPPY VALLEY, registered on the Supplemental Register for "Headwear; Shirts; Sweatshirts."]

In re FUL Foods B.V., Serial No. 98061361 (September 23, 2026) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of the mark shown below, for "beverages containing microalgae extracts for use as a dietary supplement" in International Class 5, and “mineral and aerated waters; carbonated drinks, non-alcoholic; non-alcoholic drinks containing fruit juices; fruit drinks and fruit juices; all the aforementioned products enriched with microalgae extract” in International Class 32 [WATER disclaimed] ,view of the registered marks BLUE WATER for a “nutritional supplement drink containing aloe” [WATER disclaimed] and BLU for “waters, namely, bottled waters; waters, namely, bottled natural spring waters; bottled waters; natural spring waters; bottled natural spring waters.”]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

TTABlog Test: Is "GOLF DARTS" Merely Descriptive of Action Skill Games?

2026-09-28T06:03:54.995-04:00

The USPTO refused to register the proposed mark GOLF DARTS for "action skill games," deeming the mark to be merely descriptive under Section 2(e)(1). Applicant P & P contended that the combination of GOLF and DARTS “presents a bizarre and incongruous meaning that cannot be grasped without some measure of imagination and mental pause,” since its game lacks traditional elements of either golf (no course, holes, etc.) or darts (no feathered darts, needle darts piercing a regulation dartboard, etc.). How do you think this appeal came out? In re P&P Imports LLC, Serial No. 98669267 (September 25, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

Examining Attorney Claudia A. Kopenski relied on dictionary definitions of GOLF ("a game in which a player using special clubs attempts to sink a ball with as few strokes as possible into each of the 9 or 18 successive holes on a course"), DART (“a small missile usually with a pointed shaft at one end and feathers at the other”) and DARTS ("a game in which darts are thrown at a target"). The Board found that "[t]hese definitions show that golf and darts are known games that use particular implements to attain particular objectives."

P & P’s specimen of use and excerpts from its website and Amazon.com product listing showed that the goods include a “dartboard target,” “darts scoreboard,” and so-called “‘Chip N’ Stick’ golf balls” that are modified with hook-and-loop fasteners so they can stick to the target. Its advertising states" GOLF DARTS: An exciting new chipping game that combines the precision of darts with the fun of golf; The included Chip N’ Stick golf balls stick to the oversized fabric target for scoring."

This evidence shows that Applicant’s “action skill games” include features that combine elements of both golf and darts. When the words GOLF and DARTS are combined into GOLF DARTS and used for Applicant’s goods, the words retain their original meanings as referring to features of the goods, which include aspects of both golf and darts.

The Board acknowledged that the the term GOLF DARTS "may at first glance seem unusual when considered in the abstract," but it found "nothing bizarre or incongruous about the combination of the words GOLF and DARTS when it is considered in relation to P & P's “action skill games."

As seen in Applicant’s specimen and advertising, Applicant’s game combines features from both golf and darts, including a dartboard-style target and modified golf balls. The specimen depicts players hitting golf balls at the dartboard target, and the game is specifically promoted as a way to improve one’s chipping skills while playing classic darts games.

Nor did the Board find that the combination of GOLF and DARTS would be perceived as jarring or suggestive, "especially in light of P & P’s own advertising materials and specimen." Moreover, the examining attorney provided evidence of others using the terms “Golf Darts” or “Dart Golf” with reference to a game that combines features of both golf and darts.

P & P pointed to existing registrations for SMACK DARTS and RINGER DARTS (DARTS disclaimed in both marks) and cancelled registrations for SEX-DARTS and GOLFDARTS, but the Board was unmoved. The cancelled registrations "are of limited value as they are evidence only of the fact that the registrations issued." The other registrations "involve different marks than the applied-for mark GOLF DARTS and are based on entirely different records." "The great variation in facts from case to case prevents the formulation of specific rules for specific fact situations. Each case must be decided on its own merits."

[T]he proposed mark GOLF DARTS directly and immediately conveys information about Applicant’s “action skill games,” namely, that they include features of the games of golf and darts. We therefore find Applicant’s proposed mark to be merely descriptive of the identified goods.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2026.

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

2026-09-25T06:01:28.339-04:00

So far this year, the Board has affirmed all but one of the 29 mere descriptiveness refusals reviewed on appeal. Here are three recent appeals. Did any of them buck the trend? [Answer in first comment].

In re Mitchell Industrial Tire Co., Inc., Serial No. 98814134 (August 26, 2026) [not precedential] (Opinion by Judge Jessica B. Bradley). [Section 2(e)(1) mere descriptiveness refusal of WIDE TRACK for “tires; solid tires.” Applicant argued that a track is a “result of a use” of a tire, i.e., the imprint left by the tire on a surface, and not a “use” of a tire, and as such does not meet the standard for a merely descriptive mark as set out in TMEP § 1209.01(b).]

In re AdReach LLC, Serial No. 99207780 (September 15, 2026) [not precedential] (Opinion by Judge David K. Heasley). [Mere descriptiveness refusal of ADREACH for “advertising, marketing, and promoting the goods and services of others via placement of advertisements on packaging for food and beverages.” Applicant argued that its proposed mark is not merely descriptive because it is suggestive, a double entendre, incongruous, or indicative of an end result.]

In Re AgBio LTDA, Serial No. 98544842 (September 15, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of BIOINPUT for Biological fungicides, herbicides and insecticides in International Class 5; Business consulting services in the agriculture field in International Class 35; Agricultural research; Providing temporary use of online non-downloadable computer software for inputting, managing, visualizing, and analyzing data and providing recommendations to improve profitability and yield in the field of agriculture in International Class 42; and Agriculture services, namely, providing agricultural advice and analysis of data for others related to row crops; Agricultural advice, namely, providing recommendations for plant and soil nutrition supplements in International Class 44. Applicant argued that “[t]he mark functions as a unitary whole with a distinct commercial impression,” and that BIOINPUT is unitary because “the words of the mark are merged together so that they cannot be viewed as separable elements."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2025.

TTABlog Test: Is "HANSEN HONEY FARM" for Honey Primarily Merely a Surname?

2026-09-24T05:37:19.969-04:00

The USPTO refused to register the mark HANSEN HONEY FARM for honey and related products, fiding the mark to be primarily merely a surname under Section 2(e)(4). The applicant did not dispute that the significance of HANSEN to consumers would be as a surname. The question, then was whether the addition of the words HONEY FARM "alters the primary significance of the mark as a whole." How do you think this came out? In re Hansen Honey Farm, Serial No. 98224899 (September 22, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Applicant did not dispute that HANSEN is a common, not rare, surname. [HANSEN appears 286,420 times in the LEXISNEXIS surname database]. It did not dispute that HANSEN is the surname of its president. And applicant did not argue that HANSEN has a recognized meaning other than a surname, or that it does not have the 'structure and pronunciation' of a surname." The Board, applying the relevant Benthin factors, found that "the primary significance of the term HANSEN to the purchasing public would be that of a surname."

The Board then turned to the question of "whether adding the additional term to the surname alters the primary significance of the mark as a whole to the purchasing public." "A key element in this determination is the relative distinctiveness of the additional terms in the mark. * * * Nondistinctive terms typically are accorded less weight and are not likely to detract from the primary surname significance of the mark."

Examining Attorney Darryl Spruill maintained that HONEY FARM is descriptive of, or generic for, the goods. He submitted seven third-party registrations on the Principal Register in which “HONEY FARM” and “HONEY FARMS” are disclaimed as descriptive, printouts from four third-party websites using the phrase “honey farm” “in connection with goods and/or services that are the same as or similar to Applicant’s goods, and other website evidence showing use of "honey farm" as part of the names of businesses selling honey. As a result, the Board found that "it is very common for businesses to use the last names of their owners along with the descriptive phrase 'honey farm[s]' in their names."

Applicant pointed to third-party registrations for LOCKHART HONEY FARMS, BEDILLION HONEY FARM, WEEKS HONEY FARM, and GEORGIA HONEY FARM to show that combining a surname or geographic term with “HONEY FARM” yields a registrable mark. The Board was unmoved because applicant's mark is "readily distinguishable from those examples." In the first three, HONEY FARM was disclaimed. The LOCKHART registration relied on Section 2(f) acquired distinctiveness. As to BEDILLION and WEEKS, the USPTO records were not in evidence and so it was uncertain whether these two were found to be common surnames. The GEORGIA mark was a word-and-design mark with the literal portion disclaimed.

The Board therefore concluded that the inclusion of the descriptive phrase HONEY FARM "does not detract from or change the primary surname significance of the entire mark HANSEN HONEY FARM."

We also are not convinced by Applicant’s argument that registering the proposed mark poses no risk of competitive harm or confusion because other competitors use distinct surnames alongside “honey farm.” The lack of potential confusion with third-party marks does not override the statutory bar under Trademark Act Section 2(e)(4) against registering a mark where the significance to the purchasing public remains primarily merely a surname.

And so, the Boad affirmed the refusal.

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TTABlogger comment: What do you think about this refusal? The Board noted that "a word which, by itself, is primarily merely a surname is no longer such when coupled with a distinctive design."

Precedential No. 8: Tribal Sovereign Immunity Inapplicable in Board Proceedings, Says TTAB

2026-09-23T06:10:10.972-04:00

In a case of first impression, the TTAB ruled that the defense of tribal sovereign immunity is not available in Board proceedings. The Board therefore denied Respondent Sycuan Tribal Development Corporation's motion to dismiss a petition for cancellation (on the grounds of nonuse and naked licensing) of four registrations for certain word-and-design marks (one of which is shown immediately below) for cigarettes and other tobacco products. Philip Morris USA Inc. v. IP Services International Inc. and Sycuan Tribal Development Corporation, Cancellation No. 92063134, 2026 TTAB LEXIS 255 (TTAB 2026) [Precedential].

Respondent Sycuan's motion was originally styled a motion for summary judgment, but because the issue of tribal sovereign immunity is jurisdictional, the Board construed the motion as one seeking dismissal for lack of subject matter jurisdiction. Although the time for filing an FRCP 12(b) motion had passed before Sycuan was added as a party (after the subject registrations were assigned to it), the Board considered the motion on the merits, noting that "the Board must dismiss a proceeding if it lacks subject matter jurisdiction." See FRCP 12(h)(3).

The Board began by considering the CAFC's ruling in St. Regis Mohawk Tribe v. Mylan Pharm. Inc., in which the court held that tribal sovereign immunity does not apply to inter partes review ("IPR") proceedings before the Patent Trial and Appeal Board ("PTAB"). The CAFC observed that immunity generally "does not apply where the federal government acting through an agency engages in an investigative action or pursues an adjudicatory agency action.”

The CAFC found that an IPR proceeding "is neither clearly a judicial proceeding instituted by a private party nor clearly an enforcement action brought by the federal government," but rather a ‘hybrid proceeding’ with ‘adjudicatory characteristics’ similar to court proceedings, but more like a specialized agency proceeding in other aspects.

Subsequently, the CAFC ruled in Regents of the Univ. of Minn. v. LSI Corp that state sovereign immunity does not apply in IPR proceedings. The Board later ruled that state sovereign immunity does not apply in opposition proceedings before the TTAB. Mountain Gateway Ord., Inc. v. Va. Cmty. Coll. Sys. What about tribal sovereign immunity at the Board?

The Board first observed that federally recognized tribes may apply for registration under the Trademark Act and are subject to the same provisions of the Act as any other applicant, including those "subjecting applications to opposition and registrations to cancellation proceedings." The Board saw no reason to depart from its reasoning in Mountain Gateway just because this case involved tribal rather than state sovereign immunity. Cf. U. Minn. v. LSI, 926 F.3d at 1341 (“We conclude that state and tribal sovereign immunity do not differ in a way that is material to the question of whether IPR proceedings are subject to state sovereign immunity.”).

In TTAB proceedings, a plaintiff may challenge only an applicant's right to obtain a registration or a registrant's right to maintain a registration. "Board proceedings do not involve the exercise of personal jurisdiction over the registrant, the assessment of liability for monetary damages, and the imposition of injunctive relief. * * * Consequently, '[t]raditional civil action-type remedies are unavailable in opposition [or cancellation] proceedings.'"

The Board acknowledged that TTAB proceeding "share more characteristics with district court litigation than do IPR proceedings," including a broader range of discovery tools. However, although TTAB proceedings have "adjudicatory characteristics," they also operate "like a specialized agency proceeding" (noting various powers of the Director of the USPTO with respect to Board proceedings).

But the Board cannot exercise personal jurisdiction or impose monetary or injunctive remedies, and so "the tribe’s sovereignty over its tribal members and territories remains undiminished by the Board’s administrative inter partes proceedings. Such proceedings do not implicate the tribe’s 'ability to regulate within its own domain.'"

Inter partes proceedings before the Board fulfill the trademark regulatory scheme (of which Sycuan availed itself when it acquired the involved registrations) by ensuring that only eligible marks are registered and maintained on the federal trademark register.

The Board observed that, if tribal sovereign immunity were recognized as a defense at the TTAB, "Nothing would prevent a tribe 'from lending its sovereign immunity to private parties, as the tribe attempted to do in St. Regis. Such manipulation would undo Congress’ central quality control mechanism in creating post-grant administrative proceedings.'"

If Respondents’ position were adopted, not only could Indian tribes shield their federal applications and registrations from challenge, but non-tribal entities could also use the doctrine to insulate invalid registrations from removal from the register by assigning them to a tribe or an arm of the tribe. The danger of such gamesmanship is plainly evidenced by Respondents’ conduct here, stretching so far as to attempt to blanket itself in immunity even prior to the assignment from IP Services to Sycuan.

In short, "Respondents’ attempt to invoke tribal immunity would contravene the very letter and purpose of the federal Trademark." And so, the Board denied the motion to dismiss.

Read comments and post your comment here.

TTABlogger comment: This proceeding was commenced in 2016. The subject motion was filed in 2018. And it's still not over! In the face of the cited precedents, Respondent Sycuan was up the creek with not much of a paddle.

Text Copyright John L. Welch 2026.

TTABlog Test: Are Plastic Bags Related to Paper Labels Under Section 2(d)?

2026-09-22T05:54:52.584-04:00

The USPTO refused to register the mark MAXXOUT for "General purpose plastic bags; Merchandise bags," deeming confusion likely with the registered mark MAXOUT! for "Multi-layer pressure sensitive paper labels." The marks are too close for comfort, but what about the goods? How do you think this came out? In re Sol NY Corp., Serial No. 98587411 (September 16, 2026) [not precedential] (Opinion by Judge Angela Lykos).

Applicant Sol NY feebly argued that the extra letter “X” and the exclamation point in the cited mark distinguish the marks in appearance and commercial impression. The Board was not convinced: "Both marks not only sound the same but also look virtually identical. Each mark is comprised of two words, beginning with the word “max” or its phonetic equivalent “maxx” and ending with the word “out.” This makes each mark the same in structure and cadence."

Overall, the marks are virtually identical in appearance and identical in sound, connotation and commercial impression. Consumers “have but dim recollections from having previously seen or heard one or the other of the involved marks.”

As to the goods, Sol maintained that they are unrelated because they serve different functions: mass-market bags "purchased by retail establishments and ultimately used by consumers for bought items," versus registrant’s "highly specialized labels with multiple layers or pages designed to provide more information than can fit on a standard single-layer label and often used to affix detailed regulatory or instructional information directly onto products or their packaging." The Board was unmoved: "applicant's general purpose bags are not limited to any particular use. Registrant's labels are "unrestricted as to industry or application meaning that while the labels themselves are specific in nature, they are not limited to any specialized or technical uses as Applicant contends."

Furthermore, the evidence showed that "it is not uncommon for third-parties to offer via their business-to-business websites 'general purpose plastic bags' or 'merchandise bags' on one hand, and pressure sensitive paper labels on the other."

Sol claimed that its goods are ordinarily sold through retail channels, including convenience stores, smoke shops, small retail outlets, and general-merchandise suppliers, and that the classes of consumers include retailers and wholesalers, with the general public serving as the ultimate end users. In contrast, the cited registration’s goods are “multi-layer pressure-sensitive paper labels" that are specialized industrial or commercial products rather than consumer goods. Irrelevant, said the Board.

Neither the registration nor the application contains any limitations on the channels of trade, or classes of purchasers. As such, Applicant’s and Registrant’s goods presumptively move in all normal trade channels and to all types of consumers that purchase such goods. * * * We must therefore assume that Registrant’s goods are available to ordinary consumers of such products at all price points. * * * While some of these consumers might be highly sophisticated and knowledgeable, others may not. * * * Basing our analysis “on the least sophisticated potential purchasers,” Stone Lion, 746 F.3d at 1325, this DuPont factor is neutral.

https://www.blogger.com/comment/fullpage/post/9072179/6629202388663149644

With no factors weighing against a likelihood of confusion, the Board concluded that confusion is likely, and so it affirmed the refusal.

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TTABlogger comment: Do you think that confusion is likely in the real world?

Text Copyright John L. Welch 2026.

TTABlog Test: Is CODEBOX Merely Descriptive of Electronic Lock Boxes?

2026-09-21T06:00:18.248-04:00

The USPTO refused to register the word-plus-design mark shown immediately below, for "Lockboxes, namely, digital lockboxes; Digital deadbolts and digital door locks," absent a disclaimer of CODEBOX. Applicant argued that CODEBOX is not a common descriptive term in the industry, that the mark is unitary, that the commercial impression engendered by the mark is ambiguous, that the term CODEBOX is incongruous, and that "some imagination, thought, or multistage reasoning [is required] . . . to associate the mark with Applicant’s goods." How do you think this appeal came out? In re CodeBox, Inc., Serial No. 98597114 (September 18, 2026) [not precedential] (Opinion by Judge Robert Lavache).

Examining Attorney Valerie Kaplan submitted internet evidence showing that the word CODE is often used to describe a feature and/or characteristic of the goods: using a code to open the lock box. Applicant's specimen show that the goods include instructions to "Enter [the] Code" to open the lockbox. As to the word "box," some of the same evidence used wording such as "combination key lock box," "combination lock box," "key box," and "lock box" to refer to lockable storage devices for holding keys and other items for accessing a property.

The Board agreed with the applicant that "the record does not establish widespread, or even significant, use of 'CODEBOX' or 'CODE BOX,' in connection with digital lockboxes or any of the other identified goods." However, the fact that applicant may be the first or only user of a proposed mark does not prove that the mark is not descriptive.

[T]he evidence shows that CODE and BOX are commonly used to describe significant features or aspects of lockboxes. Simply combining CODE and BOX, and omitting the space between them, does not change the meaning of these terms or the overall impression they create.

Applicant asserted that CODEBOX is ambiguous and incongruous, but failed to identify "what the relevant incongruity is or explain[] the multistage reasoning that would be required to determine the significance of the term in connection with Applicant’s goods." The Board had "no doubt that 'someone who knows what the goods . . . are will understand the mark to convey information about them.'"

Having found that the term CODEBOX is merely descriptive of the goods, the Board considered applicant's argument that the proposed word-plus-design mark is "unitary," and therefore does not require disclaimer of the literal portion. According to applicant, "the coloring [in the mark] unifies the design by visually connecting the dark blue ‘E’ in the first syllable with the dark blue rectangular background surrounding the second syllable, ‘BOX,’ creating the overall impression of a lockbox with an open shackle." The Board was unmoved:

[W]e agree with the Examining Attorney that nothing about the meaning of the words or their relation to the other elements in the mark renders these elements so merged together, either physically or conceptually, that they would be perceived as inseparable. Nor does the mark otherwise present any obvious incongruity between the literal portion and design portion of the mark that would render the mark unitary.

And so, the Board upheld the disclaimer requirement.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2026.

Changes in Mark and Services Fail to Avoid Claim Preclusion in PET-AGREE GROOMING SUPPLIES Opposition

2026-09-18T07:27:08.740-04:00

The Board sustained this opposition to registration of the mark PET-AGREE GROOMING SUPPLIES for certain wholesale supply store services for pet grooming supplies, finding that claim preclusion (a/k/a res judicata) applied, based on an earlier opposition between the same parties. Applicant PAGS had filed a second application for a mark that slightly differed from its first, successfully opposed mark, for narrowed services, but those changes were insufficient to avoid the prior judgment. Mars, Incorporated v. PAGS Inc., Opposition No. 91263504 (September 16, 2026) [not precedential] (Opinion by Judge Angela Lykos).

In 2019, the Board sustained Opposer Mars' opposition to registration of the mark PET AGREE for “wholesale and retail supply store services featuring pet grooming supplies; online wholesale and retail services featuring pet grooming supplies," concluding that confusion is likely with the registered mark PEDIGREE for pet food. [pdf here]. PAGS appealed to the CAFC but then dropped its appeal and instead filed this new application.

In the new application, the mark was changed to PET-AGREE GROOMING SUPPLIES and the services were narrowed to the following: "wholesale supply store services for pet grooming supplies in the business to business market directed to pet professionals and commercial pet groomers, expressly excluding pet food, pet treats and products fed to pets and animals and excluding bowls, cups and containers for pet food, pet treats and products fed to pets and animals." Mars opposed the new application on the same grounds (likelihood of confusion and dilution) as in the prior opposition but added claim of claim preclusion (res judicata) and issue preclusion (collateral estoppel) based on its prior successful opposition.

The Board observed that "[a] second suit is barred by res judicata or claim preclusion if (1) the parties (or their privies) are identical;(2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the claim in the first proceeding." PAGS conceded that the first two prongs were met.

Thus, Opposer’s res judicata claim hinges on whether the current Section 2(d) claim is based on the same set of transactional facts as in the Prior Opposition; in other words, whether Opposer’s claims comprise the same “core [or nucleus] of operative facts” or are “based on the same, or nearly the same, factual allegations” as those asserted in the Prior Opposition.

In order to make that determination, the Board considers (1) whether the marks involved in the prior proceeding are the same marks, in terms of commercial impression, as the marks involved in this proceeding; and (2) whether the evidence of likelihood of confusion between the marks in the prior proceeding would be identical to the evidence of likelihood of confusion in this proceeding. The Board answered both of those inquires in the affirmative.

As to the marks, the Board found that PAGS' current mark, PET-AGREE GROOMING SUPPLIES, creates the same, continuing commercial impression as its earlier mark PET-AGREE, noting that the only source-indicating element in its current mark is PET-AGREE since the newly added wording GROOMING SUPPLIES is generic.

As to the services, the Board found that PAGS' current identification of services does not present a new set of transactional facts for res judicata purposes. "The services identified in the Prior Opposition and those in the present application are in part legally identical. This is because the amended identification merely narrows, rather than changes, the prior services by removing the retail services and by adding language directed to the business-to-business market, pet professionals and commercial pet groomers."

Furthermore, "the additional language expressly excluding Opposer’s goods of 'pet food, pet treats and products fed to pets and animals and excluding bowls, cups and containers for pet food, pet treats and products fed to pets and animals,' does nothing to change the core nucleus of facts." And although there are not limitations on channels of trade and classes of purchasers, "none of Opposer’s registrations have now been restricted. We therefore continue to apply the well-established principle that Opposer’s goods presumptively move in all normal trade channels and to consumers that purchase such goods."

In addition, while PAGS' limited its purchasers to "presumably those who are more knowledgeable and sophisticated, Mars' registrations remain unrestricted as to purchasers and price. "While some 'pet professionals and commercial pet groomers' might be highly sophisticated, knowledgeable and discriminating about purchases, others may not. Where the purchasers consist of both professionals and the public, the standard of care that applies is that of “the least sophisticated potential purchasers."

Finally, we emphasize the point made earlier that the substantial duplication of the testimonial and documentary evidence in the two proceedings further confirms that Opposer’s likelihood of confusion claims rest on the same operative facts.

And so, the Board sustained the opposition on the ground of claim preclusion.

Read comments and post your comment here.

TTABlogger comment: It's not that easy to end-run a prior adverse judgment after a full trial on the merits.

Text Copyright John L. Welch 2026.

TTABlog Test: Are these UPSTREAM-Formative Marks Confusable for Insurance Agencies?

2026-09-17T06:33:13.136-04:00

The USPTO refused to register the marks UPSTREAM LIFE in standard characters and in the logo form shown first below [LIFE and EST 1912 disclaimed], concluding that confusion is likely with the registered mark shown second below [INVESTMENT PARTNERS disclaimed], both marks for, inter alia, "insurance agencies." Applicant was swimming upstream from the git-go, since the services overlap and those overlapping services are presumed to be offered in the same trade channels to the same classes of consumers. What about the marks? Will applicant sink or swim? In re Upstream Life Holdings, Inc., Serial Nos. 98778253 and 98778258 (September 15, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

The Board noted that "when evaluating a mark that consists of words and a design, 'the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.'" Applicant did not dispute that UPSTEAM is the dominant term in each mark.

Since applicant's mark UPSTREAM is in standard character form, the Board must consider the possibility that the word UPSTEAM could be displayed more prominently than the word LIFE. In fact, that's how applicant uses the mark, as shown in the composite drawing above. As to sound, the Board observed that consumers have a tendency to shorten marks, and are likely to emphasize the word UPSTREAM, and not LIFE or INVESTMENT PARTNERS.

There was no evidence that UPSTREAM has any conceptual significance with respect to insurance agency services or insurance services generally. "Thus, [t]o the extent [UPSTREAM] has a meaning in connection with [insurance agency services], it would have the same connotation in Applicant’s mark as in Registrant’s mark.'"

The Board concluded that these marks are similar in appearance, sound, meaning, and commercial impression, and so the first DuPont factor supported the conclusion that confusion is likely.

As to applicant's composite mark, applicant contended that "the overall appearance of the respective marks are sufficiently distinct such that consumer confusion between the marks is highly unlikely." The Board disagreed.

In the context of Applicant’s composite mark, the chevron design just as easily merely reinforces the meaning of, and directs attention to, the term UPSTREAM – as does the triangle river design in the cited mark. The disclaimed phrase EST 1912, to the extent consumers notice it due to its diminutive size and placement, merely describes when Applicant or its predecessor began operating. Likewise, the disclaimed term LIFE is almost imperceptible.

Again, the Board found the marks to be similar in appearance, sound, meaning, and commercial impression, and so, the first DuPont factor supported this refusal.

There was no evidence "that ordinary consumers exercise any greater than normal care in selecting an insurance agency, as opposed to an insurance underwriter or policy." "Board precedent requires the decision to be based on the least sophisticated potential purchasers.” Stone Lion, 746 F.3d at 1325."

Conclusion: the Board affirmed the refusal

Read comments and post your comment here.

TTABlogger comment: Applicant was sunk. Are both appeals WYHA?s?

Text Copyright John L. Welch 2026.

TTABlog Test: Is SNOWY THE MOUSE for Plush Toys Confusable with SNOWY for Stuffed Toys?

2026-09-16T06:13:58.596-04:00

Hey kids, here's one for you! The USPTO refused to register the mark SNOWY THE MOUSE for "plush toys; jigsaw puzzles" [MOUSE disclaimed], concluding that confusion is likely with the registered mark SNOWY for "stuffed toys." Applicant Farm to Fun argued that SNOWY is descriptive of an owl and, based on registrant’s specimen of use, SNOWY is used as the name of an “Animated Snowy Owl,” not a stuffed toy. Now, even a child can tell an owl from a mouse! How do you think this appeal came out? In re Farm to Fun LLC, Serial No. 98753836 (September 14, 2026) [not precedential] (Opinion by Judge Wendy B. Cohen).

Since "stuffed toys" are also known as "plush toys," the involved goods are in-part identical. The Board presumed that these identical goods travel through the same channels of trade to the same classes of consumers. These factors "not only weigh heavily in favor of finding a likelihood of confusion but also reduce the degree of similarity between the marks necessary to find a likelihood of confusion."

Farm to Fun seemed to claim that the proposed mark is famous, based on "industry recognition," but proof was lacking. However, "[e]ven if Applicant had established that its own mark is famous, that alone would not support registration of the mark." That is, 'fame of either mark increases the likelihood of confusion by making it more likely that purchasers will remember the famous mark and think of it when encountering similar goods sold under a similar mark. Of course, such likelihood of confusion is only a reason to refuse a new registration, not grant one."

As to Farm to Fun's arguments regarding the descriptiveness of SNOWY, the Board must presume that the cited mark is at most suggestive of the goods. "[A]n attack on the validity of registrant’s registration . . . is not permitted in an ex parte appeal proceeding." And even if the cited mark is "inherently weak, that is not fatal to a finding of likelihood of confusion because even weak marks are entitled to protection against confusion."

With regard to argument that registrant's specimen of use was improper (showing an animated owl, not a stuffed toy), "Applicant did not submit a copy of the specimen during prosecution and we do not take judicial notice of a registration file in an ex parte appeal." Moreover, "a claim that a . . . specimen of use does not demonstrate trademark usage would be an impermissible collateral attack on the cited registration."

Turning to the marks, the Board observed that "[g]enerally, first terms in marks tend to contribute more than terms that follow in creating a mark’s commercial impression, especially when the following terms are disclaimed, descriptive terms, as in the case of the term MOUSE in Applicant’s mark." "Although Applicant’s mark contains additional terms, the dominant portions of the marks are identical in appearance, sound, connotation and commercial impression."

Applicant’s and Registrant’s broadly identified goods encompass legally identical stuffed or plush toys and the general impression conveyed by both Applicant’s mark SNOWY THE MOUSE and the cited mark SNOWY is likely to be that of a stuffed toy—possibly a stuffed mouse—named “Snowy.”

Farm to Fun's reliance on its intended use of SNOWY THE MOUSE as a character name "used across books, animation, toys, puzzles and digital media" and on registrant’s purported actual use as a descriptive term for “a single toy product” missed the mark. "The relevant comparison is between the marks as they appear in the application and registration, not on extrinsic marketplace uses."

The Board concluded that, "when comparing the marks overall, they are similar in sound, appearance, connotation and commercial impression." None of the DuPont factors supported Farm to Fun's position, and so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Well, kids, how did you do? Would you have appealed?

Text Copyright John L. Welch 2026.

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

2026-09-15T06:00:00.000-04:00

Here are three Section 2(d) appeal decided on the same day. Keep in mind the assertion by a now-retired TTAB judge that one can predict the outcome of a Section 2(d) appeal 95% of the time by looking at just the marks and the goods/services. How do you think these appeals came out? [Answers in first comment].

In re Rivers IP Holdings, LLC, Serial No. 97811850 (September 11, 2026) [not precedential] (Opinion by Judge Elizabeth K. Brock). [Section 2(d) refusal of the mark shown below [TACO disclaimed] for "Fast casual take away restaurant services featuring Mexican food served to patrons in a casino," in view of the registered mark SUERTE for "Restaurant services; Bar services; Catering services."]

In re MAP Elite & MAP Prospects LLC, Serial No. 98651023 (September 11, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor). [Section 2(d) refusal of the mark shown below [ADVANCED PLAYER disclaimed] for “sports training services in the field of hockey training programs; sports training services in the field of competitive hockey player development and training programs," in view of the registered mark APX for "Consulting services in the fields of fitness and exercise; physical fitness and exercise studio services, namely, providing group and individual exercise, pilates and aerial pilates instruction, classes, equipment, and facilities; providing physical fitness and exercise studio services, namely, pilates and aerial pilates instruction, classes, training techniques, pilates and aerial pilates apparatuses, equipment and facilities; health club services, namely, providing instruction and equipment in the fields of fitness and exercise."]

In re Silver & Silver, P.A., Serial No. 97772966 (September 11, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin). [Section 2(d) refusal of the mark shown below [INJURY LAW WWW.SILVERINJURYLAW.COM disclaimed] for "Providing legal services in the field of personal injury, car accidents, motorcycle accidents, truck accidents, wrongful death, bicycle accidents, boating accidents, criminal defense, DUI, injuries to children, dog bites, premises liability, slip and fall, workplace accidents, medical malpractice, catastrophic injuries, product liability," in view of the registered mark SILVER LAW GROUP for "legal services" [LAW GROUP disclaimed].]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

Precedential No. 7: Law Firm owns BIRTH JUSTICE logo, not the Associate who Conceived the Brand

2026-09-14T06:19:17.818-04:00

In a dubiously precedential ruling, the Board sustained a law firm's opposition to registration of the composite mark shown below, for "legal services, namely, providing legal consultation and research services, and litigation assistance and strategy services relating to birth injury," ruling that Applicant Emily Grace Thomas, who conceived the mark before employment by the firm, was not the owner of the mark. Olsman, MacKenzie, Peacock & Wallace, P.C. v. Emily Grace Thomas, Opposition No. 91272167, 2026 TTAB LEXIS 254 (TTAB 2026) [precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

It took the Board 15 pages to set out the factual background for its decision. The ruling broke no new legal ground, and so its precedential value seems to be minimal, at best.

The Board began by refusing to consider Applicant Thomas's implied license defense because it was neither pleaded nor tried by consent. [Will Ms. Thomas seek review by way of civil action, where she can raise this additional issue? -ed.].

The Board began by observing that "[o]nly the owner of a mark may file an application to register it under Section 1(a) of the Trademark Act. 15 U.S.C. § 1051(a)(1)." The question for the Board was "whether Applicant, in her individual capacity, owned the Birth Justice Logo for the identified services as of the December 16, 2020 application filing date."

Thomas conceived the "brand" in January 2018 and registered the birthjustice.com domain, prior to her employment by opposer in February 2019. "It is well settled that merely designing or inventing a symbol does not create trademark rights. See Hole In 1 Drinks, 2020 WL 859853, at *10; see also J. Thomas McCarthy, 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:11 (5th ed. June 2026 Update). "Nor does registering a domain name, standing alone, confer trademark rights. See Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1052 (9th Cir. 1999).

Thomas did not dispute that she was an employee, an "associate attorney," of opposer. "Generally, 'the mere suggestion by … an employee during or before entering employment that the employer market its product under a particular designation cannot bestow any proprietary right in said trademark upon the employee.' Scranton Plastic Laminating, Inc. v. Mason, No. 91053914, 1975 WL 21259, at *9 (TTAB 1975)." There was no written or oral agreement between the parties regarding ownership of the mark.

Relying on the RESTATEMENT (THIRD) OF AGENCY, the Board had "no doubt" that Thomas was acting within the scope of her employment "when she participated in the development of the Birth Justice Logo and subsequently used the logo."

Opposer is a law firm, and promotional work for a law firm is squarely within the scope of an attorney’s employment. The development of a mark to promote the firm’s legal services in the birth-injury field is exactly that—promotional work for the firm, and Applicant was hired for her birth‑injury expertise. She arrived at the firm with a concept for a logo, but the logo had not been finalized, let alone ever used in connection with any goods or services. Applicant and others at the Olsman firm, in conjunction with a graphic design firm retained and paid-for by Opposer, took Applicant’s idea for a logo and developed that idea into a final logo design that Applicant and the firm used to promote Applicant’s practice-area specialty at the Olsman firm. It was natural and appropriate for Applicant to provide design input. Indeed, this is consistent with the input the Olsman firm sought from Applicant on birth-injury marketing matters generally.

Because the Birth Justice Logo was created and used within the scope of Thomas’s employment, "there is a presumption that any use of the Birth Justice Logo “‘during [the relevant] period .... was done so [by Applicant] as [an employee of] opposer, on behalf of opposer, and in furtherance of opposer’s business; and any goodwill created by such use inured to opposer’s benefit.’” DowntownDC Bus. Improvement Dist., 2024 WL 4449409, at *15 (quoting Scranton Plastic Laminating, 1975 WL 21259, at *9).

The Board concluded that Thoms failed to rebut opposer’s prima facie case, and so it sustained the opposition.

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TTABlogger comment: The Board noted that "Applicant appears to have performed exceptionally well as an attorney at the Olsman firm, including obtaining 'two of the biggest settlements in the history of the Olsman firm[,]' which resulted in Opposer 'receiv[ing] compensation from these two cases far in excess of any of the funds they may have fronted Applicant for her cases.'"

Text Copyright John L. Welch 2026.

Failure to Prove Standing Leads to Denial of ZOCY Cancellation Petition

2026-09-11T06:24:42.876-04:00

Shanghai Y&A Garment petitioned for cancellation of a registration for the mark ZOCY for "jump ropes" on the ground of nonuse, but it failed to prove its entitlement to a statutory cause of action (i.e., its "standing"). Shanghai alleged certain facts in the petition for cancellation but submitted no evidence to support its claim of standing. Shanghai Y&A Garment Co., Ltd. v. Mango Republic LLC, Cancellation No. 92086279 [not precedential] (Opinion by Judge Robert Lavache).

In the petition for cancellation, Shanghai alleged that it has a "real interest" in this proceeding and a reasonable belief that it is being and will be damaged by the registration because it sells various products, including jump ropes, in e-commerce under the mark ZOCY. It also alleged that it plans to file an application to register the ZOCY mark for jump ropes. Shanghai repeated those allegations in its brief on appeal. However, it failed to properly submit any evidence in support of those allegations, and, as the Board noted, "[a]ttorney argument is no substitute for evidence.")

Again, the record here consists only of Respondent’s involved registration file and the parties’ pleadings. And Respondent’s answer does not contain any admissions that would establish Petitioner’s entitlement to a statutory cause of action. On the contrary, Respondent specifically denies Petitioner’s allegations concerning entitlement.

The requirement to establish an entitlement to a statutory cause of action is "a low threshold, intended only to ensure that the plaintiff has a real interest in the matter, and is not a mere intermeddler." "Nonetheless, given Petitioner’s failure to provide any evidence of its entitlement to a statutory cause of action, let alone establish a preponderance of the evidence, we find Petitioner unsuccessful in crossing even that low threshold."

And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Could opposer cure the lack of evidence problem by instituting a civil action for review under Section 1071, wherein additional evidence may be introduced into the record?

Text Copyright John L. Welch 2026.

TTABlog Test: Is KARDASHIAN-JENNER for Online News Services Confusable with KARDASHIAN JENNER PRODUCTIONS for Entertainment Services?

2026-09-10T06:07:56.314-04:00

The USPTO refused to register the mark KARDASHIAN-JENNER for "Providing information, news, and commentary in the field of current events via the Internet; Providing current event news via a global computer network," concluding that confusion is likely with the registered mark KARDASHIAN JENNER PRODUCTIONS for "Entertainment services, namely, multimedia production services; production of audio and video recordings; creation, development and production of entertainment and pop culture content" [PRODUCTIONS disclaimed]. The marks are "very similar,' but Applicant Brenda Core contended that her services are "specific and limited," "distinctive from those of the cited registration," and "cannot be mistaken with providing current event news information and content." How do you think this came out? In re Brenda Core, Serial No. 97608134 (September 8, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Examining Attorney Robert Clark relied on use-based third-party registrations to show the relatedness of the involved services. He also provided internet evidence from Buzzfeed and Vice Media, which offer both information on current events and information relating to culture. Consequently, the Board found the services to be related under the second DuPont factor.

Since there were no limitations in the application and cited registration as to channels of trade, the Board presumed that the respective services travel in the normal trade channels for those services, to the all the usual prospective consumers. "The consumer[s] of Applicant’s and Registrant’s services are those consumers who consume news and pop culture information and media and are interested in news and entertainment." [Is the Board saying that the consumers overlap? -ed.] The Board noted that, because the services are not legally identical, "there is no presumption of trade channel overlap." Due to lack of evidence as to channels of trade, the Board found the second DuPont factor to be neutral. [If the USPTO fails to prove that the services travel in the same channels, should that be dispositive in favor of applicant? -ed.].

Considering the marks in their entireties, the Board found applicant’s mark to be "very similar" to registrant’s mark in sound, appearance and meaning. Moreover, "[b]ecause of these similarities, Applicant’s and Registrant’s marks engender similar overall commercial impressions."

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: What do you think? The USPTO also refused registration under the false suggestion of a connection portion of Section 2(a), but the Board declined to reach that issue. In light of the channels of trade issue, maybe the Board should have affirmed the 2(a) refusal and skipped the 2(d) refusal.

Text Copyright John L. Welch 2026.

Precedential No. 6: "O EL CIELO VALLE DE GUADALUPE" Confusable with CIELO for Wine, TTAB Concludes

2026-09-09T05:27:38.329-04:00

The Board sustained an opposition to registration of the mark O EL CIELO VALLE DE GUADALUPE for “wine” [VALLE DE GUADALUPE disclaimed], concluding that confusion is likely with the registered mark CIELO for "wines." Applicant's use of its mark in a manner that emphasized the words EL CIELO, coupled with the identity of the goods and the presumed identity of channels of trade and classes of consumers, provided the foundation for the Board's decision. Cielo e Terra, S.p.A. v. Hoteles y Viñedos del Valle de Guadalupe S.A. de C.V., Opposition No. 91287216, 2026 TTAB LEXIS 240 (TTAB 2026) [precedential] (Opinion by Judge Christopher C. Larkin).

Applicant started out behind the proverbial 8-ball and never escaped. Under the first DuPont factor, the identity of the marks "strongly" supported the conclusion that confusion is likely. Furthermore, "where the parties’ goods, wine, are identical, we must presume that they would be marketed to the same classes of customers--ordinary adult wine drinkers and purchasers--through the same channels of trade." Thus, the third DuPont factor also "strongly" supported a conclusion that confusion is likely.

The fifth DuPont factor considers “[t]he fame of the prior mark (sales, advertising, length of use).” DuPont, 476 F.2d at 1361. “Fame for confusion purposes arises as long as a significant portion of the relevant consuming public . . . recognizes the mark as a source indicator.” Joseph Phelps Vineyards, 857 F.3d at 1324-25 (quoting Palm Bay, 396 F.3d at 1375). The Board considers "fame" of the prior mark in Section 2(d) cases in terms of the mark’s "commercial strength."

The commercial strength of a mark may be measured indirectly “by the volume of sales and advertising expenditures in connection with the goods sold under the marks, for example, and other factors such as length of time of use of the mark; widespread critical assessments; notice by independent sources of the products identified by the marks; and the general reputation of the products and services.” Monster Energy, 2023 WL 417620, at *11 (quoting Weider Publ’ns, LLC v. D & D Beauty Care Co., No. 91199352, 2014 WL 343269, at *6 (TTAB 2014)).

Opposer claimed substantially exclusive use of CIELO in the United States for more than four decades. Between 2013 and 2024, it sold more than 4,000,000 bottles of wine bearing the CIELO mark, accounting for gross sales in excess of $13,100,000. It has won several awards at international competitions. The Board was not impressed.

We have carefully considered Opposer’s sales, advertising and promotion, and awards evidence, but find that it is insufficient to establish that Opposer’s CIELO mark has achieved significant commercial strength in the United States, much less that it is “renowned in the wine market and among consumers of fine wine.” Joseph Phelps Vineyards, 857 F.3d at 1325. We find that Opposer’s mark is of average strength, and the fifth DuPont factor is neutral in our analysis of the likelihood of confusion.

Under the sixth DuPont factor, the Board considers a mark's conceptual strength and commercial strength. Applicant contended that third-party registrations for marks "that include ‘cielo,’ ‘heaven,’ or ‘sky’ for wine, beer, and spirits are relevant in showing the ubiquity of Opposer’s Cielo mark and its resultant weakness as a source indicator.”

The Board found that wine and “distilled blue agave liquor” (but not beer) are “similar” goods for purposes of the sixth factor, noting that opposer had enforced its mark against third-party "CIELO" marks against different types of alcoholic beverages other than beer, including “distilled blue agave liquor” and “distilled agave liquors." "Having apparently asserted likelihood of confusion claims against those goods, Opposer is hard pressed to deny the similarity of those goods to wine for sixth factor purposes."

As to conceptual strength, "third-party registrations containing an element that is common to both the opposer’s and the applicant’s marks can show that that element has ‘a normally understood and well-recognized descriptive or suggestive meaning.’” Spireon. Applicant argued that the Board should apply the doctrine of foreign equivalents under the sixth DuPont factor to consider third-party registrations of marks incorporating the English equivalent of the foreign-language mark CIELO ("sky"). The Board declined.

"In discussing this factor, the Federal Circuit has explained that “third-party registrations containing an element that is common to both the opposer’s and the applicant’s marks can show that that element has ‘a normally understood and well-recognized descriptive or suggestive meaning.’” Spireon. Since those marks don't include the word CIELO, the Board concluded that "they are not probative of the conceptual weakness of Opposer’s mark." The Board cryptically noted, however, that "there may be circumstances, based on a different factual record, where it would be appropriate to apply the doctrine of foreign equivalents to third-party marks under the sixth DuPont factor."

Taken together, the third-party registrations and uses do not show that CIELO has “‘a normally understood and well-recognized descriptive or suggestive meaning’” with respect to wine. Spireon, 71 F.4th at 1363 (quoting Jack Wolfskin, 797 F.3d at 1374). They show, at most, that “cielo” is mildly suggestive of some celestial quality of the goods. The record as a whole does not show that Opposer’s CIELO mark is conceptually weak.

As to the commercial strength of the CIELO mark, applicant made of record five third-party uses of CIELO-formative marks for wine, but there was "no information regarding the extent of consumer exposure to these third-party marks through the websites or sales of the goods."

In the absence of any evidence regarding the exposure of these five third-party marks, they have little probative value in diminishing the commercial strength of Opposer’s mark unless they are sufficient in number to fall within an important exception to the general rule that the “probative value of third-party trademarks depends entirely upon their usage.” Palm Bay, 396 F.3d at 1373 (citation omitted).

Under Jack Wolfskin (26 third-party marks) and Juice Generation (14 marks,) the specifics of the third-party uses may not be necessary when there is “voluminous” or “extensive” evidence of use of third-party marks. Here, however, the third-party registrations and uses "do not constitute voluminous or extensive evidence of use of such marks that is 'powerful on its face,' and thus they are insufficient to permit us to infer that 'customers have become so conditioned by a plethora of such similar marks that customers ‘have been educated to distinguish between different [such] marks on the bases of minute distinctions.'' Omaha Steaks, 908 F.3d at 1324 (quoting Palm Bay, 396 F.3d at 1374)."

We find that the third-party mark evidence falls short of establishing that Opposer’s CIELO mark for wine is either conceptually or commercially weak under the sixth DuPont factor. The sixth DuPont factor is neutral in our analysis of the likelihood of confusion, and we will accord Opposer’s CIELO mark the “normal scope of protection to which inherently distinctive marks are entitled.” Iron Balls, 2024 WL 2844425, at *15 (citation omitted).

The Board then turned to a consideration of the marks. Noting that applicant prominently displays the term EL CIELO on its labels (see below) and that the letter O "appears to be an interjection without any source-identifying significance," the Board found EL CIELO to be the dominant portion of applicant’s mark "because they are the first significant literal elements in the mark, and the words VALLE DE GUADALUPE are geographically descriptive and have been disclaimed."

Because each of the marks at issue are presented in standard-character form, "each could be used in any typeface, color, or size, including the same stylization actually used or intended to be used by the other party, or one that minimizes the differences or emphasizes the similarities between the marks." Applicant introduced several examples of use of its mark, including the depiction shown above. "This actual display of Applicant’s standard-character mark shows that the mark could be used in a manner that draws attention to the dominant words EL CIELO in the mark." Consequently, the Board found the marks to be similar in appearance.

As to sound, the Board noted the tendency of consumers to shorten marks. Iron Balls, 2024 WL 2844425, at *25 (quoting In re Bay State Brewing Co., No. 85826258, 2016 WL 1045677, at *3 (TTAB 2016) (citing In re Abcor Dev. Corp., 588 F.2d 811, 815 (CCPA 1978) (Rich, J., concurring) (“the users of language have a universal habit of shortening full names from haste or laziness or just economy of words.”)). Noting that applicant’s own website identifies its goods as “El Cielo Wines,” the Board found it "very likely, indeed probably inevitable, that wine consumers will shorten Applicant’s 'O EL CIELO VALLE DE GUADALUPE' mark to 'El Cielo' when verbalizing it, such as when ordering the wine in bars and restaurants, or recommending it by word of mouth to others." Cf. Bay State Brewing, 2016 WL 1045677, at *3.

As to connotation, wine consumers who speak Spanish or Italian would understand CIELO to mean "sky" in both marks, and for the many who do not speak those languages, "[t]o the extent [CIELO] has a meaning in connection with wine, it would have the same connotation in Applicant's mark as in [Opposer's] mark." Aquitaine Wine, 2018 WL 1620989, at *2.

In sum, the Board found the marks to be similar in appearance, sound, and meaning and commercial impression.

The key first and second DuPont factors, and the third factor, support a conclusion that confusion is likely, and the other applicable factors are neutral. The goods, channels of trade, and classes of consumers are identical, and the CIELO and O EL CIELO VALLE DE GUADALUPE marks are similar. We find, based on the record as a whole, that consumers with a general recollection of Opposer’s CIELO mark for wine who separately encounter Applicant’s mark O EL CIELO VALLE DE GUADALUPE for wine are likely to believe mistakenly that the goods have a common source.

And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: Judge Larkin's opinion is, as usual, well written and instructive. But I do not understand why this opinion is deemed precedential. It is highly fact-dependent and seemingly does not break any new legal ground.

Text Copyright John L. Welch 2026.

Sale of Four Saxophones over Five-Year Period Suffices to Avoid Abandonment, Say TTAB

2026-09-08T07:03:33.339-04:00

In this six-year old proceeding, the Board denied a petition for cancellation of a registration for the mark ADOLPHE SAX & CIE for "musical instruments" on the ground of abandonment. Petitioner relied on the presumption that a mark that is not used for a three-year period is presumed abandoned, but it "failed to show three consecutive years of nonuse or use that was not bona fide use in the ordinary course of trade." Henri Selmer Paris, S.A.S. v. Karel Goetghebeur, Cancellation No. 92074077 (September 3, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

"There are two elements to a claim for abandonment: (1) nonuse; and (2) intent not to resume use." If the petitioner is able to prove that a mark was not in use for a three-year period, abandonment is presumed, and the burden shifts to the registrant to overcome that presumption by showing that he either used the mark during the statutory period or intended to resume use. [See Section 45 of the Act: "Nonuse for 3 consecutive years shall be prima facie evidence of abandonment."].

Petitioner limited its abandonment claim to the period between December 15, 2015, and April 28, 2020 (the period between the issuance of the registration and the filing of this Petition). It put "all its eggs in the 'presumption' basket," claiming that the evidence "establishes the presumption of abandonment through non-use of the mark . . . .” However, the parties stipulated that "registrant sold four saxophones identified by the mark at issue to U.S. residents from the time of the issuance of the registration of the mark until the initiation of this cancellation proceeding," and further that "these sales constitute use of the mark in commerce."

Notwithstanding this stipulation of use, Petitioner insists that the presumption still applies, arguing that these instances of use do not constitute “bona fide use of such mark made in the ordinary course of trade,” as set forth in the statutory definition of “abandonment,” because they are “de minimis, sporadic, casual, nominal, or isolated.”

Petitioner "relied heavily" on Adamson Sys. Eng’g, Inc. v. Peavey Elecs. Corp., No. 92076586, 2023 WL 7274674 (TTAB 2023) [TTABlogged here], in which the Board found that Peavey's sales of a few amplifiers bearing the mark "CS" fell short of the statutory standard of “bona fide use made in the ordinary course of trade." The Board distinguished Adamson on the facts.

First, unlike in Adamson, there are invoices of Respondent’s U.S. saxophone sales. Second, in Adamson, there was evidence that the respondent stopped advertising the amplifiers with the mark, had a representative recommend another brand because the amplifiers with the mark were out of stock, and stated on its website that the amplifiers with the mark were no longer available. And third, Respondent here is an individual, as opposed to a sizeable company. What is "the ordinary course of trade" for a sizeable company is unlikely to be the same for an individual.

Here, there was "nothing that would show that Respondent’s U.S. sales were stopped or were purposefully being 'drawn-down.'" Nothing in Respondent’s deposition testimony "even vaguely intimat[ed] that Respondent’s sales were made in anything other than the ordinary course of trade." Respondent testified that his prices are posted on his website, that his media posts are intended for a worldwide audience, and that he has employees that assist him.

Respondent’s U.S. sales are small, but, critically, they’ve never stopped (as Petitioner concedes), and we do not see how they were made in anything other than the ordinary course of Respondent’s modest trade. * * * In summary, the record shows, and we find, that Respondent, at minimum, sold one saxophone in 2016 or 2017 (that invoice spans the end of the year into the new year), another in 2017, one in 2018, and one in 2019.22 There is no three-year consecutive period of nonuse in the roughly four-and-a-half-year period that Petitioner contests.

Since Petitioner failed to show three consecutive years of nonuse or use that was not bona fide use in the ordinary course of trade, it could not rely on the presumption of abandonment. And so, the Board denied the petition for cancellation.

Adolphe Sax

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TTABlogger comment: Adolphe Sax invented the saxophone in the 1840s and patented it in 1846.

TTAB Finds "FIND - FETCH - TRANSFER" Merely Descriptive of Delivery Robots

2026-09-04T06:20:43.683-04:00

The Board upheld a Section 2(e)(1) refusal to register the proposed mark FIND - FETCH - TRANSFER, finding it to be merely descriptive of "self-driving robots for delivery." Applicant Drobot's own website provided "particularly compelling" evidence in support of the refusal, and "the most revealing evidence of how the relevant public would understand Applicant’s proposed mark comes from Applicant’s own arguments." In re Drobot, Inc., Serial No. 99010898 (September 1, 2026) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Examining Attorney Catherine Lee submitted dictionary definitions of "find," "fetch," and "transfer." The Board found that "[e]ach of these terms describes a function or purpose of Applicant’s self-driving delivery robots. *** These are not tangential or incidental features; they are the core functions that define the very purpose of delivery robots."

As noted, the Board found the evidence from Drobot's own website to be "particularly compelling:" "Our robots are able to operate in tight, cluttered and dynamic environments, such as Manufacturing job shops, where they will find, fetch, and transfer things, not just in a pre-scheduled manner, but also responding to ad hoc requests by shopfloor Operators and Technicians."

This is not a case of incidental reuse in an unrelated context; the proposed mark and the product description are one and the same. That Applicant uses the exact wording of its proposed mark—without quotation marks, capitalization, or other source-indicating formatting—in ordinary descriptive prose demonstrates that the phrase naturally functions as a description of the goods’ capabilities, not as a source identifier.

Third-party evidence corroborated the descriptive nature of the component terms. "The Examining Attorney made of record materials from MIT, IEEE Spectrum, Robots Guide, AutoStore, Fanuc, and AGV Network showing that the terms 'find,' “'fetch,' and 'transfer' are commonly used in the robotics and warehouse automation industries to describe functions of robots — specifically, locating items, retrieving them, and moving them from one place to another."

Drobot asserted that this third-party evidence was insufficient because it showed only that the individual terms are in use, not the composite phrase FIND - FETCH - TRANSFER. The Board pointed out, however, that evidence of third-party use of the exact composite phrase is not required. "Rather, where the individual components each retain their descriptive significance in relation to the goods, the third-party evidence serves to corroborate that the relevant purchasing public encounters these terms in connection with the very functions described by the mark."

During prosecution, Drobot "repeatedly acknowledged—and indeed embraced—the descriptive significance of each component term and of the composite phrase as applied to the identified goods." For example, it stated: "[T]he term ‘FIND’ in the applicant’s mark introduces a unique element that emphasizes the process of locating or identifying items before they are delivered;” “[T]he term ‘FETCH’ is commonly used in various industries, particularly in technology and service sectors, to describe actions related to retrieving or obtaining information or items;" and “[T]he phrase ‘TRANSFER’ in the applicant’s mark further differentiates its meaning by indicating the act of moving or conveying items from one location to another.” Drobot summed it up thusly: "[T]he combination of ‘FIND - FETCH - TRANSFER’ creates a cohesive and descriptive phrase that clearly communicates the functionality and purpose of the applicant’s goods."

These concessions independently confirm what the dictionary definitions and website evidence establish: a consumer who knows the goods are self-driving delivery robots will immediately understand FIND - FETCH - TRANSFER to describe core functions those robots are designed to perform.

Drobot trotted our various other arguments that the Board somewhat robotically tossed aside. Plainly, Drobot had shot itself in the feet and there was no way to avoid the descriptiveness refusal via attorney argument.

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TTABlogger comment: WYHA?

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

2026-09-03T05:49:22.339-04:00

In re BS Liquor, LLC DBA MudHen Brewing Company, Serial No. 97474171 (August 31, 2026) [not precedential] (Opinion by Judge Wendy B. Cohen). [Section 2(d) refusal of the mark MUDHEN BREWING COMPANY for "beer" [BREWING COMPANY disclaimed] in view of the registered mark MUD HENS for "bar and restaurant services."]

In re ALLCITY Network, Inc., Serial No. 98209334 (August 31, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin). [Section 2(d) refusal of the mark KNUX for various clothing items, including t-shirts, sweatshirts, and jackets, in view of the registered mark NUX for various clothing items, including t-shirts, sweatshirts, and jackets.]

In re Leskro Incorporated, Serial No. 98644460 (September 1, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Section 2(d) refusal of the mark KATIE’S KANDY KORNER [CANDY disclaimed] in view of the registered mark CAROL’S CANDY CORNER, both marks in standard form, for candy.]

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

Claim Preclusion and Nonuse Block "ERA 8 BY LAMAR JACKSON" Trademark Application

2026-09-02T06:05:33.796-04:00

Baltimore Ravens quarterback Lamar Jackson (who wears number "8") was tackled for a loss in his attempt to register the mark ERA 8 BY LAMAR JACKSON for "athletic bags; backpacks; duffel bags; sport bags; carry-on bags; travelling bags," in International Class 18 and "bottoms as clothing; footwear; headwear; tops as clothing; undergarments," in International Class 25. Claim preclusion knocked him down as to most of the goods, and as to the rest (carry-on bags and travelling bags), the Board piled on by finding that Jackson hadn't used the mark for those goods prior to filing his use-based application. New Era Cap, LLC v. Lamar Jackson, Opposition No. 91264801 (August 27, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

Claim Preclusion: Under the doctrine of claim preclusion (or res judicata), "'a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action.'" Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1362 (Fed. Cir. 2000)(quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322). For claim preclusion to apply, there must be:

(1) identity of parties (or their privies);
2) an earlier final judgment on the merits of a claim; and
(3) a second claim based on the same set of transactional facts as the first claim.

A prior opposition was brought by New Era against Jackson, alleging priority and likelihood of confusion based on a number of registrations for NEW ERA, in standard character and stylized form, and other ERA-formative marks. The prior opposition involved the identical mark ERA 8 BY LAMAR JACKSON and nearly the same goods as in the instant opposition. Jackson failed to serve and file an Anwer to the notice of opposition, and so judgment was entered by default against Jackson on September 28, 2019.

The Board agreed with Jackson that claim preclusion does not apply to the goods "added" into the new application: namely, carry-on bags and travelling bags. New Era did not cite any case law applying claim preclusion to goods in a subsequent application that were not encompassed by the goods identified in the prior application.

Jackson also argued that his professional achievements since the default judgment was entered in the prior opposition represented a material change in circumstances, such that New Era did not show that the new opposition rose from the same set of transactional facts as the prior one. [According to Jackson, the strength of his mark had increased, but the Board pointed out that the DuPont analysis considers the strength of the cited mark, not the "applied-for" mark]. "Since the prior default, Mr. Jackson has also achieved high ranking sales of his No. 8 jersey, reached 3.2 million social media followers and registered his word and design mark featuring a wild dog design and the words 2018 ERA 8 BY LAMAR JACKSON 2018." The Board was unmoved.

Here, we do not find a material change in the facts relevant to the claim of likelihood of confusion. As detailed above, except for the newly added goods (which we conclude are not subject to claim preclusion), the Prior Opposition involved the same parties (or their privies), the same mark, and the same goods, and resulted in a judgment by default, which operates as a judgment on the merits. This Application was filed approximately six months after default judgment was entered in the Prior Opposition. Evidence in the record indicates that Mr. Jackson’s upward trajectory was well in motion in September 2019 when the default judgment was entered.

The Board concluded that Jackson failed to show a material change in circumstances that would alter the likelihood of confusion analysis in this proceeding from the prior opposition.

Jackson claimed that he didn't receive notice of the default in the prior opposition, but the Board pointed out that he can't rely on a lack of communication from prior counsel. "While such circumstances may be relevant to a [timely] request for relief under Fed. R. Civ. P. 60(b) in the Prior Opposition, they do not negate the finality of the earlier judgment for purposes of claim preclusion here."

Nonuse: Jackson admitted during discovery that he never used the subject mark on athletic bags, backpacks, duffle bags, sport bags, carry-on bags, or traveling bags. Nonuse was also supported by his "failure to proffer any affirmative testimony or documentary evidence, such as purchase orders or invoices, showing that it sold or shipped any athletic bags, backpacks, duffel bags, sport bags, carry-on bags or travelling bags under the mark as of the filing date."

And so, the Board ruled that Jackson's application to register was void ab initio as to all of the bags listed therein, based on nonuse at the time the application was filed.

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TTABlogger comment: Quoth the Raven, "Nevermore."

TTABlog Test: Is GOSHI for Body Lotions Confusable with GOCHI for Supplements?

2026-09-01T05:58:40.686-04:00

The USPTO refused to register the mark GOSHI for "Body lotions; Body wash, Facial moisturizers; Facial washes; Skin toners," concluding that confusion is likely with the registered mark GOCHI for, inter alia, "Nutritional supplements, dietary supplements, and liquid dietary supplements" (both marks in standard character form). The marks are awfully close. What about the goods? How do you think this came out? In re Garrett Gutierrez, Serial No. 98666953 (August 27, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Applicant Gutierrez argued that the cited mark is conceptually weak because it is suggestive of goji berries, a primary ingredient in one of registrant’s products. The Board was unimpressed.

Although the product contains goji juice, there is no evidence that consumers view the cited mark GOCHI as referring to goji berries. Nor is there any evidence that the mark is commercially weak. We conclude that the sixth DuPont factor is neutral and accord the mark the normal scope of protection due to inherently distinctive marks.

Gutierrez asserted that the marks would be pronounced differently, but he offered no evidence in support. The Board pointed out the "sh" and "ch" may be pronounced the same way (e.g. "Chicago"). And there was no evidence that the marks have different meanings or connotations. "In sum, we find GOSHI and GOCHI are highly similar in appearance and sound. * * * Therefore, the first DuPont factor favors a finding of likelihood of confusion."

Turning to the goods, Examining Attorney Lindsey Olson Diefenbach submitted five registrations and internet excerpts showing use by 13 third parties of a single mark for both skin care products and supplements, supporting a finding that the involved products are related. This same evidence also showed that the products "are complementary in nature and closely related insofar as dietary and nutritional supplements and topical skincare (i.e. lotions, washes, moisturizers, and toners) are advertised and typically used together as part of a single skin care or health regimen or routine."

Gutierrez argued that “Registrant’s goods are sold in bulk quantities and are intended to be consumed in small doses.” However, the cited registration contains no such limits, and the Board must evaluate the trade channels based on the goods identified in the registration, regardless of real-world conditions. Moreover, the third-party website evidence "shows that the same online providers sell both the goods in the cited registration and the goods in the subject application, and that these goods are bought by the same consumers — e.g., those seeking improved skin."

Although registrant's goods are sold at a "relatively expensive price," its registration covers "all goods of the type identified, without limitation as to their nature or price" and presumably includes goods that are relatively inexpensive.

The Board noted that prospective consumers for nutritional supplements "might be expected to exercise a reasonable degree of care regarding products that they ingest to improve their health." Nonetheless, "[w]hen relevant consumers include both consumers who exercise more care and the general public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser, who is unlikely to exercise more than an ordinary degree of care. In re Samsung Display Co., No. 90502617, 2024 TTAB LEXIS 258, at *22 (citing Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 1325 (Fed. Cir. 2014))."

Gutierrez pointed to the lack of evidence of actual confusion, but the Board observed that this has little probative value in an ex parte context, since the registrant has no opportunity to address the issue. Moreover, there was no evidence that, "in the actual marketplace, the same consumers have been exposed to both marks for the respective goods, such that we could make a finding as to the 'length of time during and conditions under which there has been concurrent use without evidence of actual confusion.'"

Finally, Gutierrez invoked Strategic Partners, pointing to it ownership of a registration, more than five years old, for the identical mark GOSHI for "Exfoliating cloths; Exfoliating pads; Loofahs for household purposes; Bath sponges; Bath products, namely, loofah sponges; Cleaning cloth; Facial cleansing sponges; Scrub sponges.” Under that ruling, "[w]here an applicant owns a prior registration and the mark is 'substantially the same' as in the applied-for application [sic], this can weigh against finding that there is a likelihood of confusion." Unfortunately for Gutierrez, the prior registration "does not cover any of the topical skincare goods identified in the present application; instead, it covers various cloths and sponges for personal cleaning use."

Registrant’s GOCHI and Applicant’s applied-for mark GOSHI, both in standard characters, are highly similar in appearance and sound. The goods are related in part, and these related goods are offered in overlapping channels of trade to the same classes of consumers. The fourth, fifth, sixth, seventh, eighth, and thirteenth factors are neutral. No factors weigh against likelihood of confusion.

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TTABlogger comment: Is this WYHA? Takeaway: you can't win without evidence!

TTAB Posts September 2026 Hearing Schedule

2026-08-31T06:31:10.367-04:00

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled one oral hearing for the month of September 2026. The hearing will held virtually. Briefs and other papers for the case may be found at TTABVUE via the links provided.

September 17, 2026 - 10:00 AM [Virtual]: Aysha NY LLC v. ASHYA, LLC, Cancellation No. 92084257 [Petition for cancellation of a registration for the mark ASHYA (stylized) for "Handbags, purses and wallets," in view of the registered marks AYSHA, AYSHA SAEED, and AYSHA NEW YORK & Design for women's clothing, jewelry, handbags, and accessories.]

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TTABlogger comment: No oral hearings in August and only one in September. As Marvin Gaye would say, what's goin' on?

TTAB Deems MONTANA EQUINE Confusable with MONTANA ROSE EQUINE THERAPY for Horse-related Services

2026-08-28T05:48:30.540-04:00

The Board affirmed a Section 2(d) refusal of the mark MONTANA EQUINE for, inter alia, "Veterinary sports medicine and physical rehabilitation services for horses through use of modalities and exercise," [EQUINE disclaimed], concluding that confusion is likely with the registered mark MONTANA ROSE EQUINE THERAPY for, inter alia, "Physical rehabilitation services for horses through use of massage and exercises" [EQUINE THERAPY disclaimed]. Applicant Western Veterinary jockeyed for a reversal but the Board rode with Examining Attorney Tracy Fletcher. In re Western Veterinary IP, LLC, Serial No. 98727230 (August 24, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Western argued that the Board should consider the extrinsic evidence regarding its and registrant’s actual uses to show that the involved services are “disparate.” The Board pointed out, however, that "we may not consider arguments “about how the parties’ actual … services … are narrower or different from the … services identified in the application[] and registration[ ].” The Board found the above-recited services to be "in part identical and in part legally identical."

Western contended that the services are offered in different trade channels and marketed to different localized customers. The Board was unmoved, pointing out again that "[t]he real-world use restrictions argued by Applicant do not appear in the identification of services, and we cannot read limitations into identifications based on either argument or evidence of actual use."

Moreover, although Applicant contends that the trade channels do not overlap because Applicant’s and Registrant’s services are each local to a specific geographic area, the Board is constrained to evaluate likelihood of confusion in terms of nationwide markets when an applicant is seeking a geographically unrestricted registration.

The Board was required to presume that the in part identical and legally identical services are offered to the same classes of consumers and move through the identical trade channels.

As to purchaser care, the Board acknowledged that "a decision as important as choosing a veterinarian or a provider of rehabilitation services for horses will be made with some thought and research and a higher degree of care," and it found that the fourth DuPont factor weighed in Western's favor.

As to the strength of registrant’s mark, the Board found it to be inherently distinctive but noted that the Board may consider whether an inherently distinctive mark is “weak as a source indicator.” Western contended that the terms MONTANA and EQUINE are weak because MONTANA is primarily geographic and commonly used in third-party registered marks, and EQUINE is generic or descriptive for horse-related services and is a term used in many third-party registrations.

Registrant’s services, however, are offered in Minnesota, not Montana, and Western did not show that Montana is known for physical rehabilitation horse exercise and massage services. Therefore, the Board did not find the word MONTANA in Registrant’s mark to be conceptually weak as a geographic term. The Board also did not find that MONTANA or MONTANA ROSE have any surname significance. However, EQUINE is a conceptually weak term. The Board concluded that the sixth DuPont factor was neutral.

Turning to the marks, the Board found that the dominant term in Western’s mark is MONTANA while the dominant terms in registrant’s mark are MONTANA ROSE. The additional words in the cited mark " do not materially alter the similar overall commercial impression created by the shared initial term MONTANA and the related wording EQUINE."

Considered in their entireties, we find that Applicant’s MONTANA EQUINE mark and Registrant’s MONTANA ROSE EQUINE THERAPY mark are similar overall in appearance, sound, connotation, and commercial impression due to the shared terms MONTANA and EQUINE, which are likely to create a similar overall recollection of the marks. Even if consumers note and remember the additional middle and end words in Registrant’s mark, they are not likely to ascribe the differences between the marks to differences in the source of the respective services.

The Board concluded that the factor weighing against confusion was outweighed by the similarity of the marks, the identical-in-part and legally identical services, and the overlapping trade channels and consumers.

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TTABlogger comment: Not the most exciting decision I've ever read.

TTAB Affirms Functionality Refusal of the Color Green for Surveyor Tripods

2026-08-27T06:09:56.614-04:00

The Board affirmed a refusal to register the color "green," on the Supplemental Register, as a trademark for "Construction and Surveyor Tripod," finding the proposed mark to be functional and therefore unregistrable under Section 23(c). In re Dave White’s SitePro, LLC, Serial No. 98404066 (August 25, 2026) [not precedential] (Opinion by Judge Robert Lavache).

According to the application, "[t]he mark consists of the color green, which is the equivalent of Pantone Matching System 2297C, applied to the legs of the tripods. The matter shown in the drawing in broken lines serves only to show positioning of the mark and no claim is made to it."

The Board observed that "color marks may be found functional where, inter alia, the relevant color improves the safety or visibility of a product or the product’s user; facilitates identification of a particular type of product; serves a particular function in the relevant market or industry; or simply makes the product more useful to the user." [See cited cases for examples, including "black" for outboard motors and "pink" for wound dressings].

Examining Attorney Tasneem Hussain maintained that the proposed mark is functional because it consists of a bright, “neon or fluorescent green” that, as applied to the identified construction and surveyor tripod, "acts as a visual indicator to ensure that users are employing safety measures by using high-visibility gear."

As usual, the Board applied the Morton-Norwich factors:

(1) the existence of a utility patent disclosing the utilitarian advantages of the design;

(2) advertising materials in which the originator of the design touts the design’s utilitarian advantages;

(3) the availability to competitors of functionally equivalent designs; and

(4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

As to the first factor, there was no evidence or argument regarding the existence of a utility patent. As to the second, the Examining Attorney pointed to applicant's website statements: "Out-performs others and gets seen on the jobsite with UV-resistant high-visibility," and "the first hi-vis heavy-duty composite tripod designed for all environments." An Amazon listing for the product points out the "[h]igh visibility flo-yellow composite legs and struts."

This and other evidence demonstrated that "A high-visibility color, such as bright or fluorescent green, applied to products used in construction provides a utilitarian advantage when applied to such products because it enhances safety by increasing visibility and awareness."

Applicant argued that its statements touting the product were "mere puffery" that described a feature that is not essential to the functioning of the product. The Board was unmoved: "Applicant’s argument that the color is merely a feature, not an essential function, of the goods relies on an overly strict application of the functionality standard."

The evidence also shows the color claimed in the proposed mark is one of a few colors that provide high visibility in these environments. Thus, the high visibility provided by the color claimed in the proposed mark is more than a product feature; it fulfills an essential purpose or function of the goods and affects their quality and usefulness, such that granting Applicant exclusive right to the use of the color would result in a significant non-reputation-related disadvantage to competitors.

The Board therefore found that the second Morton-Norwich factor "strongly supports the conclusion that the applied-for mark is functional."

As to the third factor, the Board noted that "alternative designs need not be considered if the other evidence of record establishes functionality." In any case, "while other colors may provide similar functionality, the record establishes that the color at issue here is one of a very few colors that provide the utilitarian advantages that Applicant and others tout."

As to the fourth factor, applicant argued that its goods in the claimed color are “more costly to produce than other colors,” but it provided no evidence to support that claim. Moreover, "[e]ven if the claimed color does increase the production cost of Applicant’s goods, that higher cost does not necessarily render the claimed color nonfunctional if it otherwise results in a product of superior quality."

Thus, registration of the proposed mark must be refused to “protect[] competitors against a disadvantage (unrelated to recognition or reputation) that trademark protection might otherwise impose, namely their inability reasonably to replicate important non-reputation-related product features.”

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TTABlogger comment: When is the last time the Board found a single color mark to be registrable? I think it was In re Hodgdon Powder Company, Inc., 119 USPQ2d 1254 (TTAB 2016) [precedential], involving the color white for "preformed gunpowder charges for muzzleloading firearms." [TTABlogged here].