The TTABlog®

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

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

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 Novel Brands USA LLC v. Zerodensity Yazilim Anonim Sirketi, Opposition No. 91254798 (July 27, 2026) [not precedential] (Opinion by Judge Thomas.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

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

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

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

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

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

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

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

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

And so, the Board sustained the mere descriptiveness claim.

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

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

And so, the Board reversed the refusal.

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

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

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

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

And so, the Board affirmed the refusal to register.

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

Read comments and post your comment here.

TTABlogger comment: Rock-solid decision?

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

TTABlogger comment: xxx

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

TTABlog Test: Are LA & Design and LAV (Stylized) Confusable for Drinking Glasses?

2026-07-17T06:29:31.481-04:00

In this Section 2(d) opposition, Opposer NameGürok alleged that Applicant TGL Golf's mark shown first below, is likely to cause confusion with its two registered marks shown second below, all for, inter alia, drinking glasses. Since the goods overlap, the Board presumed that these goods travel in the same channels of trade to the same classes of consumers, and it found that the goods are household items purchased with ordinary care. Once again, it all boiled down to the marks. How do you think this came out? NameGürok Turizm Ve Madencilik Anonim Sirketi v. TGL Golf Holdings, LLC, Opposition No. 91293362 (July 15, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Opposer NameGürok argued that the marks are confusingly similar in terms of appearance and sound because both of its marks contain the letters “LA,” with the lack of the letter “V” in applicant’s mark being "a subtle difference that consumers will not readily perceive." Applicant TGL Golf pointed to the differences in "font, style, and placement," as well as the design element in its marks, as distinguishing features.

TGL Golf maintained that its mark is pronounced as the separate letters “L” and “A” whereas Opposer’s LAV (stylized) marks are pronounced either as the “lav” portion of “lavatory,” or the “lav” portion of “lava.” TGL Golf asserted that the connotation and commercial impression opposer's marks differ with its mark because its mark has a well-known geographic connotation of Los Angeles, whereas opposer’s marks have no English word meaning and are “fanciful.” The Board went with TGL Golf.

When we consider the marks in their entireties, we find the marks are different in appearance and create different commercial impressions. Opposer’s marks are three-letter stylized marks where the letters LAV are recognizable; LAV has no meaning in English in relation to Opposer’s goods. Applicant’s mark is a composite mark consisting of highly stylized lettering which is less discernible or readily perceived as the letters LA, and incorporating a golf club design element, which adds to the overall commercial impression. LA in Applicant’s mark has meaning as a geographic term for Los Angeles and has been disclaimed.

The Board found that, although the marks share the letters LA, "the degree of stylization of LA in Applicant’s mark is so high that it more akin to a design mark rather than a stylized display of the letters LA." If therefore found that TGL Golf's mark "is not similar in sound, appearance, connotation or commercial impression to Opposer’s marks," and that the first DuPont factor weighed strongly in favor of a conclusion that confusion is unlikely.

Because TGL Golf's mark is" not similar in sound, appearance, connotation or commercial impression to Opposer’s marks," the first DuPont factor weighed heavily in favor of a conclusion that confusion is unlikely, and was dispositive.

And so, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: WYHO?

Text Copyright John L. Welch 2026.

Rejecting Incongruity Claim, TTAB Finds EGGBAR to be Merely Descriptive of Restaurant Services

2026-07-16T05:59:36.025-04:00

The Board upheld a refusal to register the proposed mark EGGBAR for "restaurant services featuring breakfast sandwiches, hash browns, coffee, matcha, and fruit drinks," finding the mark to be merely descriptive of the services. Applicant argued that EGGBAR is an incongruous combination of terms because "[w]hen consumers encounter the term 'BAR,' their immediate association is with alcohol service, not with a particular food or menu item." The Board didn't buy it. In re Eggbar Holdings, LLC, 98619785 (July 14, 2026) [not precedential] (Opinion by Judge Elizabeth K. Brock).

Examining Attorney Harrison Neidish relied on dictionary definitions of "egg" [“[t]he oval, thin-shelled reproductive body of a bird, especially that of a hen, used as a food"]” and BAR [a. A counter at which drinks, especially alcoholic drinks, and sometimes food are served. b. An establishment or room having such a counter]. Another dictionary noted use of "bar" in a “shop sense … a coffee bar.”

A screenshot of applicant's menu pictured seven sandwiches, including a “steam-baked egg,” either in the description or visible in the sandwich depicted. [website here]. "This shows that the 'breakfast sandwiches' listed in the identification of services all include eggs." Other evidence showed that "eggs are part of restaurant meals and that restaurants include bars."

The evidence establishes that the terms EGG and BAR retain their descriptive meaning in the proposed mark EGGBAR. An egg is a food sold in restaurants, and bars can also sell food; EGGBAR restaurant services immediately informs purchasers that the menu will include foods containing eggs. Additionally, consumers are used to phrases like “coffee bar,” confirming that the term "bar" is not limited to alcoholic drinks (as noted in the dictionary definitions).

Applicant argued that the proposed mark does not immediately describe its services because the “reasoning process requires mental steps and inference” since EGGBAR is an incongruous combination of terms. However, Applicant offered no evidence to support its assertion that consumers would associate the mark "with alcohol service and not with a particular food or menu item." Moreover, this argument was belied by the dictionary evidence that a "bar" may serve food, by the dictionary example of a "coffee bar," and by the evidence of food restaurants that include bars and bar service.

Finally, applicant contended that EGGBAR "does not fall within the category of marks whose meanings are immediately apparent." The Board pointed out, however, that "[d]escriptiveness of a mark is not considered in the abstract. Rather, it is considered in relation to the particular goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use." In short, "the question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them."

The record shows that in connection with Applicant’s services, purchasers would recognize EGGBAR as immediately conveying knowledge of a quality of Applicant’s “restaurant services featuring breakfast sandwiches” and other foods, namely, that the menu will include breakfast sandwiches containing eggs served in a “bar” setting or at a counter.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2026.

FLASHIN' ASSASSIN Confusable with ASSASSIN for Fishing Lures, Says TTAB

2026-07-15T07:00:20.859-04:00

The Board granted a petition for cancellation of a registration for the mark FLASHIN' ASSASSIN for, inter alia, fishing lures, concluding that confusion is likely with the registered mark ASSASSIN for inter alia, fishing lures. With the goods overlapping in-part and the channels of trade and classes of customers presumed to be the same for the overlapping goods, it all boiled down to the marks, with the second and third DuPont factors weighing "heavily" against the applicant. Bass Assassin Lures, Inc. v. Flashin Assassin Fishing Lures, L.L.C., Cancellation No. 92085824 (July 10,2026) [not precedential] (Opinion by Judge Wendy B. Cohen).

Petitioner Bass Assassin argued that its mark ASSASSIN is commercially strong, based on sales of lures under the "Bass Assassin and various other Assassin trademarks" since 1986. Petitioner testified that it had sold more than 29 million bags of fishing lures in connection with the Assassin Family of Marks. However, its financial figures were not broken down by mark and there was no evidence of market share that would allow the Board to assess the import of this evidence. The Board concluded that the evidence did not "suggest a level of commercial success and brand recognition that would indicate Petitioner’s [ASSASSIN] mark should be accorded more legal protection under the fifth DuPont factor."

As to the marks, the Board acknowledged that "the presence of FLASHIN’ contributes to the connotation of Respondent’s mark as a whole and certainly lends something to Respondent’s mark that is not present in Petitioner’s mark. Also, the presence of FLASHIN’ may reduce the visual similarities of the marks in a side-by-side comparison or help to differentiate the parties’ marks in sound when fully articulated." Nonetheless, the Board found the marks to be similar in appearance, sound, connotation and commercial impression. In comparing the parties’ marks, the Board noted that "where one party’s mark incorporates the entirety of the other party’s mark, the fact that it does typically increases the similarity between the two."

The Board found the term FLASHIN' to be a "descriptive or at least highly suggestive term," since respondent's lures "flash in cases where the sun can hit them when in use," according to respondent. Therefore, "FLASHIN’ is less significant in creating the connotation and commercial impression of Respondent’s mark and has little, if any, source-identifying significance."

Despite any rhyming qualities FLASHIN’ ASSASSIN might have, it does not impart a separate and distinct overall commercial impression. There is nothing of record that supports the conclusion that the rhyming quality imparts a new or different meaning to ASSASSIN or that FLASHIN’ does not retain its descriptive significance in relation to Respondent’s goods.

The Board noted that it is also likely that customers familiar with respondent’s lures may mistakenly associate petitioner’s ASSASSIN mark with Respondent or assume that the goods have a common source, "viewing Petitioner’s ASSASSIN mark as an abbreviated form of Respondent’s FLASHIN’ ASSASSIN mark." "In addition, consumers may shorten Respondent’s mark to ASSASSIN alone given the propensity of consumers to shorten marks when speaking."

The Board found the fourth, seventh, and eight factors to be neutral, and concluded that confusion as to source is likely.

Read comments and post your comment here.

TTABlogger comment: Fishing tends to make me drowsy, and so did this opinion. You might say it wasn't alluring.

Text Copyright John L. Welch 2026.

TTABlog Test: Is BLANCO (Stylized) Confusable with BLANCO LABEL for Clothing?

2026-07-14T06:28:49.885-04:00

Applicant Matthew Sinnerich applied to register the mark shown below, for "Hats; Pants; Shirts; Shorts; Socks; Collared shirts; Polo shirts; T-shirts; Tops as clothing," but Examining Attorney Catherine Lee concluded the confusion was likely with the registered mark BLANCO LABEL for "Clothing, Namely, Shirts, Pants, Sweatpants, Jeans, Sweatshirts, Bandanas, Hats, Shoes, Sox, Vests, Sweaters, Scarves, Pajamas, Sleepwear, Rain wear, Blouses, headbands, Belts for Clothing, Hosiery, Swimwear" [LABEL disclaimed]. The goods overlap and the marks share the word BLANCO. Was there any hope for Mr. Sinnreich in this appeal? In re Matthew Sinnreich, Serial No. 98713935 (July 7, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board unsurprisingly found the dominant portion of the cited mark to be BLANCO because the term LABEL had been disclaimed and was entitled to less weight in the Section 2(d) analysis. "Applicant’s mark BLANCO (stylized) is subsumed within the cited mark, and where the entirety of one mark is incorporated within another, likelihood of confusion has frequently been found."

As to appearance, Applicant ’s mark is in stylized form while the cited mark is in standard character form without a claim to any particular display. A standard character mark may be presented in any manner, including in the same size, font, and uppercase and lowercase letters as Applicant’s stylized mark.

Applicant Sinnreich argued that the word LABEL creates "visual, audio, and connoted differences between marks" in particular in "the textual portions, visual appearance, and pronunciations" with the connotation and commercial impression of a "luxurious brand identity" versus a "product line or a collection." The Board was unmoved.

Sinnreich also argued that BLANCO is a two-syllable, one-word "stand-alone term" consisting of six letters while BLANCO LABEL is a two-word "compound expression" having four syllables and 11 letters with 'elongated" pronunciation. The Board was unimpressed. "Although there are differences in appearance and pronunciation between the marks due to the additional term LABEL in the cited mark, consumers do not focus on the number of syllables, letters, or words in each mark."

Sinnreich claimed that the marks have "divergent meanings:" his mark "conveys a singular concept - whether as a surname, a geographic reference, or the Spanish word for 'white'" whereas the cited mark conveys "a compound idea in which the term LABEL modifies the meaning of BLANCO" conveying the idea of "a sub-brand or a labeled series of goods." According to Sinnreich, his mark evokes a luxurious brand and "thoughts of penmanship [LOL - ed.], craftsmanship and high quality" while BLANCO LABEL evokes the impression of "a product line, a collection; or a branded tag." The Board didn't buy it.

BLANCO in both marks could evoke the same meaning (surname, geographic name, or Spanish word for white) and give the impression of the name of a clothing label or luxurious brand identity with Applicant’s BLANCO (stylized) mark being viewed merely as a variant of Registrant’s BLANCO LABEL mark. We find that the marks create similar commercial impressions.

The Board considered the impact of the inclusion of the word LABEL in the cited mark but found that "this difference is not sufficient to overcome the overall similarities of appearance, sound, connotation, and commercial impression resulting from the initial shared term BLANCO, particularly in view of the fallible memories of consumers, who retain general impressions of trademarks." Moreover, the Board noted that consumers have a "penchant" for shortening marks, and found it likely that "consumers would shorten BLANCO LABEL simply to BLANCO in verbalizing and recalling the cited mark."

Finding the mark to be "highly similar" in appearance, sound, meaning and commercial impression, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2026.

TTABlog Test: How did These Three Recent Section 2(d) Appeals turn out?

2026-07-13T06:13:34.379-04:00

For the past decade, about 90% of Section 2(d) refusals have been affirmed on appeal. A TTAB Judge (now retired) once said to me that one can predict the outcome of a Section 2(d) appeal 95% of the time just by considering the marks and the goods/services. [Apparently, if you just say "affirmed," you will be right 90% of the time. It's the other 5% that's the challenging part.] Here are three recent Section 2(d) appeals. Let's see how you do. [Answer in first comment].

In re MacLan, Inc., Serial No. 98126959 (July 8, 2026) [not precedential] (Opinion by Judge David K. Heasley). [Section 2(d) refusal of the mark TRUGRIT for “power-operated abrasive wheels, namely, abrasive grinding wheels for metals (in Class 7) in view of the registered mark TRUE GRIT for “abrasive lapping compounds for industrial sharpening and grinding” (Class 3).]

In re Huda Beauty Limited, Serial No. 98565357 (July 9, 2026) (Opinion by Judge Christen M. English) [Section 2(d) refusal to register the mark CHERRY BLOSSOM for “cosmetic powder; cosmetic face powder; cosmetic under eye powder; make up setting powder; powder compacts sold filled with cosmetic powder; loose powder for the face and under eye area; pressed powder for the face and under eye area; skin color correcting liquid for cosmetic purposes” in view of the identical mark registered for "false eyelashes."]

In re DEO Company LLC, Serial No. 99057517 (July 10, 2026) [not precedential] (Opinion by Judge Robert Lavache). [Section 2(d) refusal of the mark DEO for “Non-electric diffusers for air fragrancing preparations, namely, reusable containers with releasably joined parts to hold and dispense scents in a space" (Class 21) in view of the identical mark registered for "air fragrance reed diffusers” and “aromatics essential oils" in Class 3.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

Rejecting Extrinsic Evidence, TTAB Finds FUNTASYA Confusable with FUNTASIA ADULT SHOP for Clothing and Retail Store Services

2026-07-10T06:03:19.724-04:00

The Board sustained a Section 2(d) opposition to registration of the mark FUNTASYA for various clothing items and online retail services featuring clothing, concluding that confusion is likely with the registered mark FUNTASIA ADULT SHOP in the logo form shown below, for "Retail store and online retail store and wholesale store services featuring adult products, videos, DVDs, magazines, toys, novelties, lingerie and leather clothing" [ADULT SHOP disclaimed]. The Board found the marks to be "overall similar," and the goods/services overlapping, rejecting applicant's attempt to import restrictions into the identification of goods "based on alleged real world conditions." In re Stefan Thaler, Serial No. 79395386 (July 7, 2026) [not precedential] (Opinion by Judge Christen M. English).

The Marks: The Board unsurprisingly found FUNTASIA to be the dominant part of the cited mark "because it is the first literal element in the mark and it is displayed in a much larger font than THE ADULT SHOP, which has been disclaimed." As to the words FUNTASYA and FUNTASIA, "[a]verage consumers with a general recollection are unlikely to notice or remember the one letter difference in the last syllable of the words." Since applicant’s mark is in "block letter" form, it "may be displayed in a font style similar to the font style used for the term FUNTASIA in the Cited Mark, which would increase the visual similarity between the marks." The two words are likely to be pronounced the same way.

This similarity in sound is significant because FUNTASIA is the dominant element in the Cited Mark. Indeed, consumers may drop the non-distinctive phrase THE ADULT SHOP when referring to Registrant’s services.

FUNTASYA and FUNTASIA both call to mind the words “fantasia” and “fantasy,” with the registered mark carrying "a connotation and commercial impression of a fantasia or fantasy of a fun, sexual nature." Nonetheless, "the marks still share a similar general connotation and commercial impression related to a fun fantasia or fantasy."

To the extent that for some consumers the marks do not call to mind the words “fantasia” or “fantasy,” the marks will be perceived as coined terms with no particular meaning. Because the dominant term FUNTASIA in the Cited Mark is nearly identical to Applicant’s coined mark FUNTASYA, the marks would likely be perceived the same, albeit with the Cited Mark conveying an added sexual connotation

The Board concluded that consumers are likely to perceive applicant's mark "as a variation of the Cited Mark identifying a line extension or to otherwise mistakenly believe that Applicant’s goods and services are associated with or sponsored by Registrant."

The Goods/Services: Applicant argued that registrant’s services, trade channels are limited to sexual products sold through adult sex shops and to consumers seeking intimate products that are purchased only after age verification. The Board, however, pointed out that there are no such restrictions in the cited registration.

Registrant’s identification does not include any limitations on the nature of these services, the trade channels through which they are sold or the relevant consumers. Nor may we consider extrinsic evidence on how Registrant uses its mark to narrow these services.

The Board focused its analysis on registrant’s “retail store and online retail store and wholesale store services featuring … leather clothing.” Applicant's goods are "clothing, namely, shirts, pants, hats, shorts, jerseys, hoodies," an identification broad enough to encompass leather shirts and pants. Because services featuring leather clothing encompass a subset of applicant’s goods, namely, leather pants and shirts, "here is overlap on the face of Applicant’s Class 25 and Registrant’s Class 35 identifications."

Applicant’s Class 35 services include “retail online store services featuring clothing; retail and wholesale online store services featuring clothing.” These services are broad enough to encompass Registrant’s “retail and online retail store and wholesale store services featuring … leather clothing.”

As to applicant's clothing items, where “one party uses its mark on goods that are sold in retail [and wholesale] stores that customarily vend those goods, it is clear that the trade channels and customers overlap.” With respect to the services, because they are in-part legally identical and there are no restrictions as to trade channels or consumers in the identifications, the Board presumed that the identical services travel through the same channels of trade to the same purchasers.

As to purchaser care, applicant asserted that "it is self-evident that the respective purchasers of Applicant’s and Registrant’s goods and services exercise entirely different levels of discernment." "Again, this argument relies on a restriction (goods sold through an adult sex shop) that is not identified in Registrant’s identification.

Finding that none of the DuPont factors favored applicant, it sustained the opposition.

Read comments and post your comment xxx">here.

TTABlogger comment: Do you think there is any likelihood of confusion in the real world?Should applicant seek restriction of the registration under Section 18?

Text Copyright John L. Welch 2026.

TTAB Finds BALLETCOLLECTIVE to be Generic for . . . . . Guess What?

2026-07-09T06:01:15.624-04:00

The Board upheld a refusal to register the proposed mark BALLETCOLLECTIVE for entertainment services in the nature of dance and ballet performances, finding the term to be generic for the services. The applicant argued that the lack of a space between the words was significant, but that argument fell flat. In re BalletCollective Inc., Serial No. 97567146 (July 7, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

There was no disagreement that the genus at issue was defined by the recitation of services in the application, which the Board summarized as "entertainment services in the nature of dance and ballet performances." The relevant consumers are "ordinary purchasers, or attendees, of entertainment services in the nature of dance and ballet performances." The question then was "whether these consumers understand BALLETCOLLECTIVE as primarily referring to a class or category of entertainment services in the nature of dance and ballet performances."

Relying on dictionary definitions of the constituent terms, evidence of third-party use of "ballet collective(s)" in connection with ballet performances and entertainment, and use of that term as part of third-party trademarks and trade names, Examining Attorney Amy E. Thomas contended that "the relevant consuming public would understand the term BALLETCOLLECTIVE to refer primarily to a group providing ballet performances and related ballet services including the other services listed in the application."

Applicant argued that the evidence showed use of the component terms only with a space between them, not in a compound form. The Board pooh-poohed that argument, noting the Supreme Court's statement in Booking.com that "[a] compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services."

The words “ballet” and “collective” retain their same defined meanings despite being joined—and consumers will not discern any additional non-generic meaning as a result of their joinder. Rather, the relevant consumers will easily and readily understand BALLETCOLLECTIVE as merely an expression of a “ballet collective,” without the space, and a reference to the genus of services. Simply put, the proposed compound mark, BALLETCOLLECTIVE, conveys the same generic meaning to consumers as the sum its generic component terms—”the entire formulation does not add any meaning to the otherwise generic mark.” See Steelbuilding, 415 F.3d at 1297.

Applicant also pointed to its actual use of the mark in the form "BalletCollective," with the first letter in each component term capitalized. The Board took a different view: "[t]o the contrary, capitalizing the first letter of each word further assists consumers to more quickly identify each generic term. In any event, applicant sought registration of a mark in standard character form, not in the form used by applicant.

[T]he evidence of use of the term BALLET COLLECTIVE in third-party marks or trade names, along with source-identifying matter, e.g., “Ignite Ballet Collective” and “Deep South Ballet Collective,” further establishes that this is a term readily used by others in connection with ballet performances. In other words, the evidence proves that the relevant public perceives BALLETCOLLECTIVE primarily as the genus of services rather than as a source identifier.

The Board agreed with the examining attorney that applicant’s own description of its services on its website was probative and corroborated the genericness of the proposed mark: Applicant describes itself as a "non-profit art collective, "consist[ing] of a rotating group of artists and collaborators" and "with each new collective," it offers entertainment services in the nature of "ballet-based works."

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: If you looked in a telephone directory, would you find a heading "ballet collectives?"

Text Copyright John L. Welch 2026.

TTABlog Test: How did These Three Recent Section 2(d) Appeals turn out?

2026-07-08T06:28:03.336-04:00

TTAB affirmances of Section 2(d) refusals are running at about 84% so far this year. Here are three recent decisions. How do you think they came out? [Answer in first comment].

In re AM Hospitality, LLC, Serial No. 98891881 (June 30, 2026) [not precedential] (Opinion by Judge Elizabeth K. Brock). [Section 2(d) refusal of the mark SIDE PIECE PIZZA for "restaurant featuring pizza" [PIZZA disclaimed] in view of the registered mark SIDE PIECE, in standard character form, for "Food and drink catering; Preparation of food and beverages; Providing of food and drink; Restaurant services, namely, providing of food and beverages for consumption on and off the premises; all of the foregoing excluding services involving pizza, private labeled beer, and/or breweries."]

In re GE Precision Healthcare LLC, Serial No. 98098739 (July 6, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin) [Section 2(d) refusal of the mark OMNI for "Medical apparatus and instruments for use in positron emission tomography/computed tomography (PET-CT) imaging" in view of the registered mark OMNITOM for "computed tomography (CT) imaging machines."]

In re Nawkaw, Inc., Serial No. 98499982 (July 6, 2026) [not precedential] (Opinion by Judge David K. Heasley). [[Section 2(d) refusal of the mark ECOTONE for "Coating compositions in the nature of paint, namely, clear and pigmented coatings specifically formulated for application to concrete and masonry surfaces by professionals, not for retail sale or consumer use, and not for use on wood surfaces" in view of the registered mark ECO-TONES for "interior and exterior stains, sealers and coatings for roofs, siding and timber; wood preservatives; restorative preparations in the nature of stains for wood; and coatings for wood, namely, stains, coatings, sealers, preservatives and restoratives in the nature of stains."]

Read comments and post your comment here.

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

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

2026-07-07T06:47:53.421-04:00

The Board upheld a refusal to register a design comprising parallel blue and white stripes (shown below) for frozen confections and confections, fruit drinks, alcoholic beverages, franchising services, and restaurant services (in six classes), finding that the proposed mark is not inherently distinctive and lacks acquired distinctiveness. The Board observed that Applicant Ralph's "blue & white stripes are simply a refinement or variation of the common practice of using alternating colored stripes." As to acquired distinctiveness, "the plethora of third-party uses of blue & white or similar stripes in connection with the same goods and services presents a nearly insurmountable hurdle for any such effort to succeed because they show that such use has not been ‘substantially exclusive.’” In short, “Applicant has not come anywhere close to proving its alternative claim that the proposed trade dress has acquired distinctiveness." In re Ralph’s Famous Italian Ices Franchise Corp., 2026 U.S.P.Q.2d 553 (TTAB 2026) [precedential] (Opinion by Judge Thomas L. Casagrande).

"The mark consists of a repeating pattern of alternating blue and white vertical stripes, which are of equal width and proportion. The repeating pattern appears on a portion of the surface of the goods, on a portion of the packaging for the goods, on a portion of the building facades in which the services are offered, and on displays, marketing and advertising materials associated with the services."

Inherent Distinctiveness: Product packaging trade dress may qualify as inherently distinctive, depending on the evidence. See, e.g., Two Pesos, 505 U.S. at 773-74 (restaurant décor); In re Chippendales USA, Inc., 622 F.3d 1346, 1351 (Fed. Cir. 2010) (design of a costume worn by a service provider, i.e., “trade dress” constituting the “packaging” of the service). Whether such trade dress is inherently distinctive requires an assessment of:

whether it was a ‘common’ basic shape or design,
whether it was [not] unique or unusual in the particular field,
whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods [or services] viewed by the public as a dress or ornamentation for the goods [or services], or
whether it was capable of creating a commercial impression distinct from the accompanying words.

Chippendales, 622 F.3d at 1351 (quoting Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (CCPA 1977)). If the answer to any of the first three Seabrook inquiries is “yes,” the design is not inherently distinctive.

In In re Fantasia Distrib., Inc., No. 86185623, 2016 WL 5866950 (TTAB 2016), the Board adapted and applied this test to a design constituting a repeating ornamental pattern on goods, as follows:

the nature of Applicant’s goods and whether there is an industry practice of ornamenting such goods;
the nature of the pattern, including whether any element of the pattern might be perceived as source indicating if it were standing alone;
how common the pattern is, whether it is composed of common or unusual repeating shapes, whether such shapes repeat in a common or unusual manner, and whether the overall pattern is similar to, or a mere refinement or variation of, a common and well-known form of ornamentation;
the manner in which the repeating pattern appears on the product, including the size and location of the pattern on the product and how much of the product is covered by the pattern; and
whether the pattern creates a distinct commercial impression apart from any accompanying wording and design elements.

As to each class of goods and services, the Board considered the substantial third-party evidence submitted by Examining Attorney Hai-Ly Lam. With respect to the goods in classes 29 and 30 and the restaurant services in class 43, the evidence "overwhelmingly " showed that Ralph's blue-and-white stripes "are simply a refinement or variation of the common practice of using alternating colored stripes." As to the beverages in classes 32 and 33 and the franchising services in class 35, the evidence was not as voluminous but nonetheless showed that "stripes generally are a rudimentary form of ornamentation and Applicant uses them in an unremarkable way."

Acquired Distinctiveness: Because the evidence showed that stripe trade dress is a commonly-used form of ornamentation, Ralph's faced a "nearly insurmountable hurdle" to prove acquired distinctiveness. Its evidence fell far short.

Ralph's claimed 20 years of sales and $100 million in revenues under the proposed mark, and expenditures of $2 million in advertising, but the evidence was neither segregated by product or service nor placed in context vis-a-vis its competitors. There was no "look-for" advertising, no "direct attempt to educate consumers that the stripes trade dress indicates a unique source for the relevant goods and services," and no evidence as to the effectiveness or success of its alleged efforts to create the required unique association.

But even if Applicant had made concerted efforts to educate consumers to regard the stripe pattern as uniquely indicating Applicant’s goods and services, the plethora of third-party uses of blue & white or similar stripes in connection with the same goods and services presents a nearly insurmountable hurdle for any such effort to succeed because they show that such use has not been “substantially exclusive.” See, e.g., Levi Strauss, 742 F.2d at 1403; Ayoub, 2016 WL 4474509, at *13. We find that Applicant has not come anywhere close to proving its alternative claim that the proposed trade dress has acquired distinctiveness.

Read comments and post your comment here.

TTABlogger comment: Judge Casagrande's opinions are always down-to-earth and easy reading, albeit this one is a bit long (66 pages).

TTABlog Quarterly Index: April - June 2026

2026-07-06T06:35:47.395-04:00

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

Section 2(a) - False Suggestion of a Connection:

Precedential No. 4: TTAB Affirms Refusal of WEMBY for Athletic Apparel - False Connection with and Lack of Consent from the real Wemby

Section 2(b) - Flag/Coat of Arms/Insignia:

TTAB Upholds Section 2(b) Refusal: PROSCIUTTO DI CARPEGNA Mark Includes Italian Flag or Simulation Thereof

Section 2(c) - Consent to Register:

Precedential No. 4: TTAB Affirms Refusal of WEMBY for Athletic Apparel - False Connection with and Lack of Consent from the real Wemby

Section 2(d) - Likelihood of Confusion:

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

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

TTAB Affirms Bifusal of THE OHIO IPA for Beer: Geographically Descriptive and Confusable with OHIO PALE ALE for Beer

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

TTAB Upholds Surname Refusal of GOLIA for Candy

Section 23(c) - Functionality:

Precedential No. 1: TTAB Finds 8-Slice Pancake Configuration Mark De Jure Functional

Abandonment/Nonuse/Specimen of Use:

Non-distinctiveness:

TTAB Affirms Refusals to Register Restaurant Interior Designs: Distinctiveness Neither Inherent Nor Acquired

Genericness:

Lack of Bona Fide Intent:

TTAB Sustains Nike's Opposition to BLUE RIBBON TEAM for Sports Stores Due to Lack of Bona Fide Intent

Reexamination:

Discovery/Evidence/Procedure:

CAFC Decisions:

CAFC Affirms TTAB: Stick Figure for Vapes Not Confusable with "X" for Cigars

Supreme Court Decisions:

Supreme Court Denies Petition for Certiorari in RAPUNZEL Consumer Standing Case

Recommended Reading:

Other:

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?

2026-07-03T06:17:17.800-04:00

TTAB affirmances of Section 2(d) refusals are running at about 84% so far this year. Here are three recent decisions. At least one of them resulted in a reversal. What say you? [Answer in first comment].

In re Connecting Forward, LLC, Serial No. 97565017 (June 26, 2026) [not precedential] (Opinion by Judge Robert Lavache). [Section 2(d) refusal of the mark MISTER JUNETEENTH, for “Organizing events in the field of pageants for cultural or educational purposes; Entertainment in the nature of pageant competitions" [JUNETEENTH disclaimed], in view of the registered marks JUNIOR MISS JUNETEENTH [JUNIOR and JUNETEENTH disclaimed], TEEN MISS JUNETEENTH [TEEN and JUNETEENTH disclaimed], and MISS JUNETEENTH SCHOLARSHIP PAGEANTRY PROGRAM [JUNETEENTH SCHOLARSHIP PAGEANTRY PROGRAM disclaimed] for “Entertainment in the nature of pageant competitions; organization of events for cultural purposes; organization of events in the field of pageants for educational purposes."]

In re Kayed Lafi, Serial No. 98191310 (June 30, 2026) [not precedential] (Opinion by Judge David K. Heasley) [Section 2(d) refusal of the mark GALLO'S ELITE PERFORM LIKE A PRO & design, shown below left [PRO disclaimed], in view of the registered mark GALLO GLOBAL NUTRITION & design, shown below right [GLOBAL NUTRITION disclaimed], both for nutritional supplements.]

In re NowOne Ventures, LLC, Serial No. 98757552 (June 30, 2026) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.). [[Section 2(d) refusal of the mark OMMI for "Vitamins; Dietary supplements; Herbal supplements; Nutritional supplements; Gummy vitamins; Mineral supplements" in view of the registered mark OMMIE for "Grain-based food bars also containing dried fruits and seeds."]

Read comments and post your comment here.

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

TTAB Posts July 2026 Hearing Schedule

2026-07-01T06:22:49.010-04:00

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (6) oral hearings for the month of July 2026. In the first and third cases listed below, the hearings will held in-person at the Madison East Building 600 Dulany Street, 9th Floor (Hearing Room C), Alexandria, VA. The rest will be held virtually. Briefs and other papers for each case may be found at TTABVUE via the links provided.

July 8, 2026 - 10:00 AM [In-Person]: Constellation Brands U.S. Operations Inc. v. The Vineyard House LLC, Opposition No. 91245800 et al. [Consolidated oppositions against twelve applications for registration of marks comprising variations of the name Henry Walker Crabb, for wine, on the grounds that (1) Applicant lacked a bona-fide intent to use nine of its marks at the time the opposed applications were filed; (2) the CRABB’S BLACK BURGUNDY trademark violates the wine and spirits provision of Section 2(a); (3) applicant’s marks misdescribe qualities and characteristics of applicant’s Goods in a way that would deceive consumers; (4) applicant’s marks are likely to cause confusion as the source of goods because they are confusingly similar to opposer’s marks; and (5) applicant’s marks create a false association with opposer and opposer’s TO KALON Vineyard.]

July 16, 2026 - 11:00 AM [Virtual]: Airbnb, Inc. v. AirEase,LLC, Opposition No. 91287634 [Opposition to registration of the mark AIREASE for "Downloadable mobile applications for the connection of short-term rental seekers and hosts offering last-minute and overflow lodging and transportation opportunities" on the grounds of likelihood of confusion with, and likely dilution of, the registered mark AIRBNB for arranging temporary housing accommodations, and related software and services.]

July 16, 2026 - 2:00 PM [In-Person]: In re Sozosei Foundation, Serial No. 97351330 [Refusal to register the mark MENTAL ILLNESS IS NOT A CRIME on the ground of failure-to-function as a source indicator for publications and services in the field of mental health and mental illness.]

July 22, 2026 - 12:00 PM [Virtual]: In re ALLCITY Network, Inc., Serial No. 98209334 [Section 2(d) refusal of the mark KNUX for "Clothing, namely, t shirts, polos, tanks, sweatshirts, hoodies, jackets; headwear, namely, sports caps and hats," in view of the registered mark NUX for, inter alia, sport shirts, t-shirts, sweatshirts, shirts, tank tops, and caps.]

July 22, 2026 - 2:00 PM [Virtual]: Matos Insurance Agency, Inc. and Armando J. Matos v. Mattos Insurance, Inc., Cancellation No. 92082310 [Petition for cancellation of a registration for the mark MATTOS INSURANCE for "Insurance agency and brokerage" [INSURANCE disclaimed] on the ground that the mark is primarily merely a surname and lacks acquired distinctiveness.]

July 29, 2026 - 2:00 PM [Virtual]: In re Joshua James Waldrop, Serial No. 97691670 [Section 2(d) refusal to register the mark ULTIMA PRO WRESTLING UPW for " Entertainment services in the nature of creation, development, and production of television programming; Entertainment, namely, a continuing professional wrestling show broadcast over television, satellite, and internet.; Entertainment services, namely, wrestling exhibits and performances by a professional wrestler and entertainer" [PRO WRESTLING disclaimed] in view of the registered mark ULTIMA LUCHA for "Entertainment services, namely, an ongoing television series featuring sports entertainment broadcast over television, satellite, audio and video media and via a global computer network; entertainment services, namely, live events featuring wrestling contests and exhibitions; entertainment services, namely, performances by a professional wrestler and entertainer; providing wrestling news, information and non-downloadable video via a global computer network" [LUCHA disclaimed].]

Read comments and post your comment here.

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

Precedential No. 4: TTAB Affirms Refusal of WEMBY for Athletic Apparel - False Connection with and Lack of Consent from the real Wemby

2026-06-30T07:02:21.414-04:00

The Board upheld a refusal to register the proposed mark WEMBY for "athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms," finding that the mark falsely suggests a connection with NBA star Victor Wembanyama under Section 2(a), and that applicant lacked a consent from Mr. Wembanyama under Section 2(c). Applicant mainly argued that, based on the constructive first use date of its application (January 12, 2023), it should be deemed the prior user of WEMBY, since Wembanyama was little known before being drafted by the San Antonio Spurs in the summer of 2023. In re Wemby Corporation, 2026 U.S.P.Q.2d 548 (TTAB 2026) [precedential] (Opinion by Judge Thomas. W. Wellington).

Section 2(a) - False Connection: Section 2(a), in pertinent part, bars registration of a mark that "consists of or comprises . . . matter which may . . . falsely suggest a connection with persons . . . ." To establish that a proposed mark falsely suggests a connection with a person or institution, it must be shown that:

(1) The mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
(2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
(3) The person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and
(4) The fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

In re Foster, 136 F.4th 1090, 1094 (Fed. Cir. 2025) [Emphasis added].

There was no dispute as to the third element of the test: Victor Wembanyama is not connected with the applicant. As to the first element, the evidence established that "Wemby" is Victor Wembanyama's nickname. The Board found that "the record is clear that WEMBY was previously used to identify Mr. Wembanyama," including articles reflecting "the public attention accorded to Mr. Wembanyama at that time and indicate an excitement for the upcoming 2023 NBA season and potential sensation he would make as a top draft pick."

As to the second element, the Board considered all the evidence submitted "during the examination process," as approved by the CAFC in Foster, and found that WEMBY "is a well-recognized nickname that points uniquely and unmistakably to Mr. Wembanyama."

As to the fourth element, the Board concluded that "[g]iven Mr. Wembanyama’s demonstrated fame as an NBA player and his inherent and demonstrated relationship with athletic apparel like that described in the application, . . . consumers would presume a connection with Mr. Wembanyama upon encountering use of WEMBY on these goods."

And so, the Board found that applicant’s mark WEMBY falsely suggests a connection with Mr. Wembanyama, as prohibited under Section 2(a) of the Act.

Section 2(c) Consent Section 2(c) of the Act prohibits registration of a mark that "[c]onsists of or comprises a name … identifying a particular living individual except by his written consent . . . ." “[T]he Board has set forth two ways to show that a ‘name’ identifies a particular living individual for purposes of Section 2(c): 1) if the person is so well known that the public would reasonably assume the connection, or 2) if the person is publicly connected with the business in which the mark is being used." The Board found that both elements of the test were met here.

First, "Mr. Wembanyama’s fame as the 2023 NBA first draft pick, and reference to him as 'Wemby' is such that the public would reasonably assume a connection between Applicant’s WEMBY mark and Mr. Wembanyama." Second, "he has also been publicly associated with goods identified in the application, including his debut of a new Nike shoe and the sale of sports apparel bearing his name." Moreover, it is common knowledge that the NBA is well-known for marketing athletic apparel. "Thus, as an NBA basketball player, Mr. Wembanyama is “publicly connected” with the business of Applicant’s identified athletic apparel and footwear."

And so, the Board found that applicant’s proposed mark, WEMBY, identifies a particular living individual, Victor Wembanyama, whose written consent is not of record. Therefore, the Board affirmed the Section 2(c) refusal.

Read comments and post your comment here.

TTABlogger comment: The discussion about prior use is of questionable relevance. The TTAB in its (non-precedential) Foster decision stated: "[P]rior use in the context of a false suggestion of a connection is not a question of priority as contemplated in a likelihood of confusion context. Indeed, prior use 'may be found when one’s right to control the use of its identity is violated, even if the name claimed to be appropriated was never commercially exploited as a trademark or in a manner analogous to trademark use.'" The CAFC in Foster did not consider this point but instead ruled on whether evidence after the filing of the application could be considered for purposes of the Section 2(a) refusal. The CAFC said yes.

The Board here found it unnecessary to consider the issue of intent, but for this observer it is difficult to imagine that the applicant came up with his mark out of the blue.

Precedential No. 3: Ownership of Lapsed Registration No Justification for New Application for Same Mark and Goods/Services

2026-06-29T06:44:35.977-04:00

Foreign owners of registrations based on Section 44 or 66 should pay close attention to this decision. The Board affirmed a Section 2(d) refusal of the mark TOUCH MOBILE for telecommunications equipment and telecommunications services [MOBILE disclaimed], concluding that confusion is likely with the registered mark MOBILE TOUCH for "Text and numeric wireless digital messaging services; Broadcast communication services, namely, transmitting text messages to designated recipients for others." Applicant TextNow owned a registration for TOUCH MOBILE for the same goods and services, but while the new application was pending TextNow failed to file its Section 8 Declaration. The cited registration had issued prior to the lapsed registration, but the Board ruled that their coexistence was irrelevant to the examination of the new application. In re TextNow Inc., 2026 U.S.P.Q.2d 545 (TTAB 2026) [precedential] (Opinion by Judge Jessica B. Bradley).

TextNow's prior registration issued on October 17, 2017 under Section 44(e) of the Trademark Act. That registration was cancelled by operation of law as of the end of the sixth anniversary of the registration date, October 17, 2023, for failure to file a Declaration of Use and/or Excusable Nonuse Under Section 8 of the Act. TextNow filed its new application on October 19, 2023, during the prior registration's grace period.

TextNow contended that ownership of the prior registration, which (it unsuccessfully claimed) remained in force at the time its new application was filed, was relevant to the registrability of its identical mark of the new application, specifically under the doctrine of res judicata and pursuant to the Board's Strategic Partners decision. The Board disagreed.

The Board distinguished this case from Strategic Partners because there, the prior registration was still in force when the new application was filed, and the prior registration was more than five years old and could not be challenged on the ground of likelihood of confusion. Moreover, in Strategic Partnersthe mark of the prior registration had been in actual use, whereas here it appeared that TextNow's mark had never been used. Thus, TextNow's mark and the cited mark had never co-existed in the marketplace.

Simply put, co-existence of marks on the trademark register does not equate to co-existence in the marketplace, and the notion of “co-existence” of these marks specifically in the marketplace is illusory where the Prior Registration and current application are both based on Section 44(e), not use in commerce.

The Board concluded that the six years of co-existence between TextNow's lapsed registration and the cite registration "holds less weight than that in Strategic Partners."

TextNow asserted that the examining attorney "would presumably have determined that the mark TOUCH MOBILE is registrable if the Examining Attorney had had a shorter backlog of applications to review and had therefore considered [Applicant’s] application just five (5) months after its filing date rather than about 7-1/2 months after its filing date [i.e., before Applicant’s Prior Registration was cancelled]." The Board was unmoved.

Applicant had already missed the October 17, 2023 deadline to file a Section 8 Declaration to maintain its Prior Registration, and subsequently failed to file a Section 8 Declaration by the April 17, 2024 grace period deadline. As a result, the current application did not overlap with the term of the Prior Registration. While the timing is unfortunate for Applicant, the maintenance of its Prior Registration was entirely within its control.

As for TextNow's res judicata argument, the Board pointed out that re judicata does not apply in the prosecution context, and "there is no rule that a prior registration entitles [an applicant] to another registration." In re Country Oven, Inc., 2019 TTAB LEXIS 381, at *23 (TTAB 2019).

Turning to the Section 2(d) refusal, the Board found the involved marks to be "highly similar and this weighs heavily in our analysis." The goods and services are in-part identical or closely related, and the trade channels and classes of consumers are presumed identical or overlapping. The factors regarding the strength or weakness of the cited registration and TextNow's prior registration (factor 13) were deemed neutral

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Foreign owners of non-use based U.S. registrations may want to file new applications earlier than later when they know their marks have not been used in the U.S., so that examination of the new application will occur before the prior registration lapses.

The TTABlog®

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

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

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

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

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

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

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

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

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

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

TTABlog Test: Are LA & Design and LAV (Stylized) Confusable for Drinking Glasses?

Rejecting Incongruity Claim, TTAB Finds EGGBAR to be Merely Descriptive of Restaurant Services

FLASHIN' ASSASSIN Confusable with ASSASSIN for Fishing Lures, Says TTAB

TTABlog Test: Is BLANCO (Stylized) Confusable with BLANCO LABEL for Clothing?

TTABlog Test: How did These Three Recent Section 2(d) Appeals turn out?

Rejecting Extrinsic Evidence, TTAB Finds FUNTASYA Confusable with FUNTASIA ADULT SHOP for Clothing and Retail Store Services

TTAB Finds BALLETCOLLECTIVE to be Generic for . . . . . Guess What?

TTABlog Test: How did These Three Recent Section 2(d) Appeals turn out?

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

TTABlog Quarterly Index: April - June 2026

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?

Recommended Reading: The Trademark Reporter, May-June 2026 Issue

TTAB Posts July 2026 Hearing Schedule

Precedential No. 4: TTAB Affirms Refusal of WEMBY for Athletic Apparel - False Connection with and Lack of Consent from the real Wemby

Precedential No. 3: Ownership of Lapsed Registration No Justification for New Application for Same Mark and Goods/Services