The TTABlog®

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 v. Mango Republic LLC, Cancellation No. 92086279 [not precedential] (Opinion by Judge Robert Lavache).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.

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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.

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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 (September 3, 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.

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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.

Text Copyright John L. Welch 2026.

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?

Text Copyright John L. Welch 2026.

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

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

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 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 ?

Text Copyright John L. Welch 2026.

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."

Text Copyright John L. Welch 2026.

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!

Text Copyright John L. Welch 2026.

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?

Text Copyright John L. Welch 2025.

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.

Text Copyright John L. Welch 2026.

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].

Text Copyright John L. Welch 2026.

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

2026-08-25T06:22:57.127-04:00

TTAB affirmances of Section 2(d) refusals are running at about 86% so far this year, below the usual 90%. Here are three appeals decided recently. How do you think they came out? [Answer in first comment].

In re Ripped Franchise, LLC, Serial No. 98369548 (August 10, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Section 2(d) refusal of the word-plus-design mark shown below, for "Physical fitness instruction," in view of the registered mark GET RIPPED for “physical fitness training services and educational services, namely, providing training of physical fitness instructors for certification in the field of physical fitness training."]

In re A.W. Farrell & Son, Inc., Serial No. 98597246 (August 10, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of the word-plus-design mark shown below, for "Roofing contracting; Roofing installation; Roofing maintenance; Roofing repair; Roofing services" [ROOFING disclaimed] in view of the registered mark FARRELL BUILDING COMPANY for "construction of buildings; real estate development; building construction services" [BUILDING COMPANY disclaimed.]

In re Iberostar Hoteles Y Apartamentos, S.L., Serial No. 79385220 (August 13, 2026) [not precedential] (Opinion by Judge Wendy B. Cohen). [Section 2(d) refusal of the mark JOIA BY IBEROSTAR BEACHFRONT RESORTS for “services for providing food and beverages; providing temporary accommodation; temporary accommodation reservation services for travellers; hotel accommodation and restaurant services" [BEACHFRONT RESORTS disclaimed] in view of the registered mark JOIA BEACH for “restaurant and bar services."]

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

Text Copyright John L. Welch 2026.

TTAB Finds NEUROPSYCHIATRIC SERVICES, S.C. to be Generic for . . . . Guess What?

2026-08-24T05:57:32.974-04:00

Finding the record evidence of genericness "overwhelming," an obviously annoyed Board panel upheld a refusal to register the term NEUROPSYCHIATRIC SERVICES, S.C. on the Supplemental Register, for "Psychiatric services; outpatient and inpatient care services; behavioral health services in the nature of psychiatric and outpatient psychiatric care services; neuropsychiatric testing." In re Neuropsychiatric Services, S.C., Serial No. 98169669 (August 19, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Board, as usual, found the genus at issue to be defined by applicant's recitation of services. The relevant consumers are persons "seeking healthcare services of the type identified in the application."

Applicant used the term NEUROPSYCHIATRIC SERVICES generically in its specimen of use, stating: "Neuropsychiatric Services, S.C. is a leader in providing integrated neuropsychiatric services to adult and geriatric patients." Other evidence defined the term as "a branch of medicine concerned with both neurology and psychiatry." Materials from the American Neuropsychiatry Association showed that neuropsychiatry is an established field of medicine that has a recognized association of practitioners.

This evidence is highly probative of the fact that at least the key “NEUROPSYCHIATRIC” part of the applied-for mark is a generic word for a type of medical practice. When we combine this fact with the specimen, which confirms that applicant provides neuropsychiatric services, there can be little, if any, doubt that the applied-for mark is generic.

In addition, Examining Attorney Evan Federico submitted evidence of third-party use of the words “neuropsychiatry” and “neuropsychiatric” for services provided by Stanford, Brigham and Women’s Hospital, UCLA, and at least five third-party practice groups that use “neuropsychiatry” or “neuropsychiatric” in their business name. Technical articles, online newspapers, and other publications use “neuropsychiatry” and “neuropsychiatric” to refer to the type of medical services identified in the application.

The Board found it "difficult to imagine a clearer case of genericness." "There is nothing remotely distinctive in the use of NEUROPSYCHIATRIC SERVICES as part of [the] proposed mark" for Applicant’s recited services.

Applicant maintained that the term as a whole is not generic because of the word “services” and the “S.C.” at the end. The Board deemed these arguments "specious." "The word 'service' and its plural 'services' are found throughout the Trademark Act. Applicant seeks registration of a service mark. To argue that the word service is not generic for a service is pushing the limits of zealous advocacy."

The applied-for mark NEUROPSYCHIATRIC SERVICES, S.C. is generic for the services identified in the application, which constitute the genus for our analysis. The record is overwhelming. There is no evidence supporting Applicant. Indeed, the only evidence Applicant submitted was a definition of the word “service.” That evidence merely confirms that service is a generic word for a service.

The Board batted away the argument that the letters S.C. "somehow saved the term entire enterprise from the pit of genericness."

Not so. A business identifier like Inc. or Co. (S.C. identifies a Service Corporation, as the Trademark Examining Attorney established) is not a distinctive source identifier. This suffix adds nothing to the rest of the mark. See, e.g., Booking. com, 591 U.S. at 558 (noting the principle that “a generic corporate designation added to a generic term does not confer trademark eligibility”) (citing Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888)). And nothing plus nothing is still nothing.

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

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TTABlogger comment: Is this a double WYHA? Would have appealed? Would you have applied to register?

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

Text Copyright John L. Welch 2025.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

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

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

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

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

And so, the Board upheld the refusal.

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

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

Text Copyright John L. Welch 2025.

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

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

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

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

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

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

by Professor Thomas A. Reichert

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

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

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

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

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

How often does factor six actually do this?

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

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

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

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

What Apex Bank changes at the Board

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

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

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

A factor, or a sub-factor?

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

The remand deserves a wider audience

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

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

Read comments and post your comment here.

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

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

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

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

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

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

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

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

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

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

Read comments and post your comment here.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

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

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

TTABlogger comment: WYHA?

The TTABlog®

Failure to Prove Standing Leads to Denial of ZOCY Cancellation Petition

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

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

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

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

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

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

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

TTAB Posts September 2026 Hearing Schedule

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

TTAB Affirms Functionality Refusal of the Color Green for Surveyor Tripods

Recommended Reading: The Trademark Reporter, July-August 2026 Issue

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

TTAB Finds NEUROPSYCHIATRIC SERVICES, S.C. to be Generic for . . . . Guess What?

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

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

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

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

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

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

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

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

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

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

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