The TTABlog®

TTAB Deems TALKIE Confusable with TALKIE.AI & Design for Chatbot Software, Rejecting Crowded Field Argument

2026-10-21T05:49:44.385-04:00

The Board affirmed a refusal to register the mark TALKIE for, inter alia, "downloadable computer chatbot software for simulating conversations in the field of entertainment, education, creative writing, role-playing, and personal companionship," concluding that confusion is likely with the registered mark shown below, for, inter alia, "downloadable computer chatbot and bot software for simulating conversation." Applicant Subsup pointed to the four other registrations cited in the final refusal, but the Board found them insufficient to show a "crowded field" of TALKIE-formative marks. In re Subsup Pte. Ltd., Serial No. 98680779 (October 19, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

Subsup argued that the entire identification of goods in the cited registration, "read as a whole, is lengthy and heavily oriented toward specialized AI and communications-processing functionalities, including extensive interaction and healthcare-focused features alongside other technical components," and is distinguishable from Subsup's "non-medical, AI chatbot software and related software offerings under TALKIE versus the registrant’s broad, specialized, and differently framed suite of goods under TALKIE.AI."

Examining Attorney Mitchell Knief maintained that the particular goods identified in the cited registration as "downloadable computer chatbot and bot software for simulating conversation" are broad enough to encompass applicant's more limited software. The Board agreed: "These goods are legally identical, and the second DuPont factor strongly supports a conclusion that confusion is likely." Furthermore, the Board must presume that these identical goods travel in the same channels of trade to the same classes of consumers.

Turning to a comparison of the marks, the Board noted that "[w]hen a mark comprises both words and a design, the words are normally accorded greater weight because they are more likely to be impressed upon a purchaser’s memory and would typically be used by purchasers to request the goods or services." And so, the Board gave greater weight to the literal element than the design element of the mark. Furthermore, the Board observed that since the mark at issue is in standard character form, it could be depicted in the same font style and size as the word TALKIE in the cited mark

The marks are similar in sound because the TALKIE element of each mark will sound identical. The marks are "quite similar" in connotation and commercial impression because TALKIE suggests “‘talking’ or ‘chatting,’ a commonplace concept in software used for conversation, messaging, and chatbot interaction.” The design element reinforces the idea of “talking” or “chatting,” and the .AI suffix in the cited mark "identifies one party to the conversation."

And so, the first DuPont factor "strongly supports" a conclusion that confusion is likely.

As to customer care, there was "nothing in the record to show that the least sophisticated potential purchaser of Applicant’s downloadable software is likely to exercise anything more than ordinary care," and so the fourth DuPont factor was neutral.

Subsup argued that TALKIE is conceptually weak, pointing to the TALKIE-related registrations cited by the Examining Attorney in the final refusal, and asserting that “the shared TALKIE/TALK element should be afforded a narrower scope in the overall Section 2(d) analysis ....” The Board pointed out that the cited registration issued on the Principal Register without a requirement of a showing of acquired distinctiveness, and so "we presume that it is inherently distinctive, i.e., that it is at worst suggestive of the goods." Nonetheless, common use of a term may indicate that the mark or common element has some conceptual weakness.

Applicant has pointed to no TALKIE-formative registrations in the record beyond the three cited registrations owned by the same entity and the fourth cited registration owned by a different entity. Even if we consider the four other cited registrations, reflecting only two additional source entities, to be “third-party registrations” vis-à-vis the mark shown in the ’449 Registration, “two sources are not enough to show dilution of a mark, nor [do] they show that there is a ‘crowded field’ of sources utilizing these similar terms.”

Finding that the first, second, and third DuPont factors supported the refusal and none weighed against it, the Board affirmed.

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TTABlogger comment: There were three third-party owners in the supposed "crowded field" (including the registrant). If applicant had added a word to TALKIE, would that have avoided the refual?

Text Copyright John L. Welch 2026.

TTAB Finds "PERMANENT JEWELRY WELDER" Merely Descriptive of . . . Guess What?

2026-10-20T06:05:13.683-04:00

The Board upheld a Section 2(e)(1) refusal to register the proposed mark PERMANENT JEWELRY WELDER, finding it to be merely descriptive of electric welding machines and welding education services. Applicant Sunstone argued that the mark is at most suggestive since permanent jewelry is a relatively new product, and unsophisticated consumers will not understand how welding, commonly understood as “a dangerous industrial process, involving high heat, bright flashes of light, and providing significant personal risk of bu[rn] injuries,” relates to formation of jewelry." The Board was unimpressed. In re Sunstone Engineering LLC, Serial No. 98088456 (October 16, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The Board pointed out that the proposed mark must be considered in the context of the goods and services, not in the abstract. "Here, the relevant consumers include prospective purchasers of electric welding machines, including machines used to affix permanent jewelry, and persons seeking instruction about the operation and maintenance of those machines, such as people who already have or would like to start a permanent jewelry business."

Sunstone conceded that its goods and services relate to "welders." Examining Attorney Kim Teresa Moninghoff submitted evidence that "permanent jewelry" refers to a "piece [of jewelry] (usually a necklace or bracelet) that’s welded together instead of secured with a clasp." She also provided third-party use-based registrations for goods or services relating to “jewelry” or “permanent jewelry” in which the term PERMANENT JEWELRY was disclaimed. Notably, the USPTO’s Acceptable Identification of Goods and Services Manual (2025) contains entries for repair or welding services for “permanent jewelry."

As to the proposed mark in its entirety, the evidence showed descriptive use of the wording PERMANENT JEWELRY WELDER in the marketplace: including articles, product listings, and websites. Applicant's own advertising used “Permanent Jewelry Welder” in a descriptive, if not generic, manner: "The World's Bestselling Permanent Jewelry Welder" and "“Professional permanent jewelry welder, built by Sunstone."

The Board therefore found that "the proposed mark PERMANENT JEWELRY WELDER describes a function, purpose or use of Applicant’s goods, that they are used to weld permanent jewelry."

To the average consumer familiar with the goods and services, which include “electric welding machines” and “education services, namely, providing educational seminars, lectures, presentations, workshops, and non-downloadable videos in the field of the operation and maintenance of an electric welder,” PERMANENT JEWELRY WELDER immediately conveys information about the goods and services, that they are or relate to welders for affixing permanent jewelry. Indeed, as noted by the Examining Attorney, the combination of “PERMANENT JEWELRY” and “WELDER” communicates to potential consumers that, as opposed to industrial welders, Applicant’s goods are appropriate for affixing jewelry, and its services relate to using welders for this purpose.

The Board did not find the proposed mark to be incongruous or to require imagination or a mental pause to convey information about the goods and services. "When the words PERMANENT JEWELRY and WELDER are combined to form the composite PERMANENT JEWELRY WELDER, they retain their original meanings as referring to features of the goods and services, which are or relate to welders for affixing permanent jewelry."

Applicant’s other arguments are also unavailing. It is of no moment that PERMANENT JEWELRY WELDER “does not appear in any pre-application dictionary, trade publication, or industry glossary as a recognized category name.” See In re Dahlquist, Inc., 1976 TTAB LEXIS 79, at *6.

Applicant asserted that the cited third-party uses are “knock offs” of Applicant’s product, but even if true, "this does not change the fact that the proposed mark is merely descriptive of a function, characteristic or purpose of the goods and services."

The fact that Applicant may be the first or only user of a term does not render the term distinctive if, as here, it has been shown to be merely descriptive of the goods identified in the application.” KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first” and thereby “depriv[ing] commercial speakers of the ordinary utility of descriptive words”)

Read comments and post your comment here.

TTABlogger comment: WYHA? The final office action included a "genericness advisory," but mere descriptiveness was the only issue on appeal.

Text Copyright John L. Welch 2026.

TTABlog Test: Is HIGHROAD PAVEMENT SERVICES Confusable with BUILDING THE HIGH ROAD for Road Construction Services?

2026-10-19T06:25:43.238-04:00

The USPTO refused to register the mark HIGHROAD PAVEMENT SERVICES, in the word-and-design form shown below, for "road paving" and other construction services, such as "concrete paving, site clearing, excavation, … grading, and asphalt paving" [PACEMENT SERVICES disclaimed], deeming confusion likely with the registered mark BUILDING THE HIGH ROAD for, inter alia, "road construction” services. The services are "identical," but what about the marks? How do you think this came out? In re HighRoad Services, LLC., Serial No. 98586837 (October 16, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

Applicant arguesd that “Registrant is a general contractor for land developers, and a private landscape designer serving private homeowners” and that “Applicant, on the other hand, is not a general contractor, and does not specialize in landscape design." Irrelevant, said the Board (unsurprisingly): "Applicant may not restrict the scope of the services covered in the application or the cited registration by argument or extrinsic evidence." The Board must presume that the identical services are offered in the same trade channels to the same classes of consumers. And so, the second and third DuPont factors "strongly" supported the refusal.

As to the marks, applicant's mark is dominated by the word HIGHROAD. The stylized H design at the top of the mark "helps emphasize the term HIGHROAD; this portion of the mark is stylized such that the parallel side lines of the 'H' converge much like a highway that runs to the horizon and, as a result, reinforce the road construction nature of the services offered."

We also keep in mind that when marks have clearly dominant elements, such is the case here with HIGHROAD in Applicant’s mark, there is a “penchant of consumers to shorten marks” and, when calling for the services, “it is reasonable that such a practice would lead many consumers to drop the highly descriptive/generic term[s]” in marks.

The cited mark is "strongly suggestive of Registrant’s 'road construction' services, and is a possible double entendre, "based on the multiple meanings of the term 'high road,' which include: 'highway' or 'the easiest course' or 'an ethical course.'" In any case, "the wording HIGH ROAD plays a strong role in the mark’s overall commercial impression and meaning."

The Board found the marks to be "very similar visually and aurally based on the shared term HIGHROAD or HIGH ROAD." [Visually? - ed.]. Moreover, "the possible figurative meaning that consumers may perceive in the registered mark is also present in Applicant’s mark. That is, consumers encountering Applicant’s mark, may also understand the highly visible and dominant term HIGHROAD as alluding to an easier or ethical course, or literally as suggesting a highway that may be in need of Applicant’s pavement services." And so the Board found that "the marks are overall very similar and this DuPont factor weighs in favor of a conclusion that confusion is likely."

Applicant argued that the cited mark is weak because it evokes the idiom of ‘taking the high road,’ suggesting an honorable or correct course of action. The Board disagreed: "We find no weakness here based on use of the idiom as there is no evidence of third-party use of marks projecting the same double entendre in connection with road construction or road pavement services." Moreover, "this suggestive connotation actually brings the marks closer in terms of similarity."

Applicant also pointed to two third-party registrations (HIGH ROAD HOMES for “custom construction of homes” and WE DON’T JUST TAKE THE HIGH ROAD, WE BUILD THEM for “consulting services in the field of soil erosion control") and five third-party websites. The Board pooh-poohed that evidence because the registrations and websites concerned unrelated services, such as home construction, home repair, or soil erosion services.

However, the Board found that, "based on the plain or literal meaning of the cited mark, BUILDING THE HIGH ROAD, it is suggestive of Registrant’s road construction services and thus bears some inherent weakness." The Board concluded that the sixth DuPont factor "weighs slightly against a finding that confusion is likely in our analysis."

As to consumer sophistication, the Board agreed with applicant that road construction and road paving services will generally be offered to larger companies or involve government contracts, but these services may also be offered to smaller entities, "including individuals interested in having private roads built, such as driveways."

[I]n the absence of restrictions in the identifications or evidence to the contrary, we must conclude that the least sophisticated purchasers here will not exercise anything other than ordinary care in selecting the services. Moreover, even sophisticated purchasers are not immune from source confusion, especially where, as here, the services are legally identical in part and would be offered under similar marks. * * * Accordingly, we find the fourth DuPont factor to be neutral in our analysis.

In sum, the first, second, and third DuPont factors "strongly" supported the conclusion that confusion is likely, and outweighed the finding that the cited mark bears some inherent weakness under the sixth DuPont factor. The remaining factors for which there was evidence were neutral. And so, the Board affirmed the refusal.

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TTABlogger comment: What do you think?

Text Copyright John L. Welch 2026.

TTAB Remands RAPUNZEL Application to the Examining Attorney for Re-Consideration of the Registrability of RAPUNZEL for Dolls

2026-10-16T06:41:04.253-04:00

On April 14, 2026, the Supreme Court denied Professor Rebecca Curtin's petition for a writ of certiorari seeking review of the CAFC's decision that, as a mere consumer, she lacked entitlement to bring an opposition to registration of the mark RAPUNZEL for dolls. [TTABlogged here]. The TTAB has just issued an order stating that it would terminate the opposition "in due course;" but meanwhile it ordered that the application be "remanded to the Trademark Examining Attorney for further examination to consider the registrability of RAPUNZEL." Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (October 14, 2026) [not precedential].

The Board observed that "the registrability (or not) of the mark at issue remains before the USPTO." [How so? It's been examined and published. How does the issue remain before the USPTO? - ed.]. Moreover, "[e]ven if an opposition is dismissed, an application must be 'entitled to registration' in order to register. Trademark Act Section 13(b), 15 U.S.C. § 1063(b)."

The CAFC, in its May 22, 2025 decision denying standing [TTABlogged here], explained:

“Unless registration is successfully opposed,” the USPTO shall register the trademark if it is “entitled to registration,” issue a certificate of registration, and publish a notice of registration in the Official Gazette. 15 U.S.C. § 1063(b); see Heritage All. v. Am. Pol'y Roundtable, 133 F.4th 1063, 1071 (Fed. Cir. 2025) (“The opposition provision of the Lanham Act says that registration generally follows when an opposition, if any, fails, but the stated precondition is that the mark at issue be a ‘mark entitled to registration,’ 15 U.S.C. § 1063(b), which might allow the PTO, after an opposition fails, to reconsider the examiner’s pre-opposition allowance.”). Curtin, 137 F.4th 1359, 1362 (emphasis supplied); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 706.01 (May 2026) (explaining that the Office may “issue a new refusal” to the registration of the mark if “it is necessary to do so to prevent the issuance of a registration that would violate the Trademark Act.”).

The Board looked to Trademark Rule 2.131, which provides that the Board may remand an application if, “during an inter partes proceeding involving an application under section 1 or 44 of the Act, facts are disclosed which appear to render the mark unregistrable, but such matter has not been tried under the pleadings as filed by the parties.” 37 C.F.R. § 2.131. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 515 (June 2026) and cases cited therein." The Board found that Rule 2.131 applies here:

First, the facts disclosed during these proceedings, including in connection with the parties’ summary judgment briefing and the evidence presented at trial, see 27-28 TTABVUE; 43-44 TTABVUE; 53 TTABVUE, appear to render the mark unregistrable. Second, the claims asserted in Opposer’s operative pleading were not tried in view of the Board’s determination on entitlement to a statutory cause of action. See 14 TTABVUE ¶¶ 8, 14 (asserting claims under Section 2(e)(1) for mere descriptiveness and under Sections 1, 2, and 45 for genericness); see also In re United Trademark Holdings, Inc., 2017 WL 2876825 (TTAB 2017) (denying the registration of LITTLE MERMAID as merely descriptive for use with dolls) (precedential) [TTABlogged here]. (emphasis supplied)

And so, the application was remanded to the Trademark Examining Attorney for further examination to consider the registrability of RAPUNZEL. See Trademark Rule 2.131, 37 C.F.R. § 2.131.

The Board noted that, if the Examining Attorney finally refuses registration, an appeal may be taken as provided by Trademark Rules 2.141 and 2.142, 37 C.F.R. §§ 2.141 and 2.142.

Read comments and post your comment here.

TTABlogger comment: What happens if the examining attorney does not refuse registration? Will the application be published for opposition for the second time, even though the same application was already published once? BTW: Hat tip to Professor Curtin: although she lacked statutory standing, the evidence she submitted during the proceeding may yield the result she wanted anyway.

Text Copyright John L. Welch 2026.

TTAB Orders Cancellation of "THE REMNANT" Registration for Religious Services Despite Weakness of Petitioner's Identical Common Law Mark

2026-10-15T06:12:58.921-04:00

The Board granted a petition for cancellation of a registration for the mark THE REMNANT for "religious and spiritual services, namely, providing gatherings to develop and enhance the spiritual lives of men," concluding that confusion is likely with petitioner's identical, common law mark for printed newspapers and the provision of online information, commentary and news services in the field of or pertaining to Catholicism. Petitioner had no trouble proving priority, and the marks are identical. What about the services? And how weak is "remnant" for religious-type services? The Remnant, Inc. v. New Life Worship Center, Inc., Cancellation No. 92085610 (September 28, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

Petitioner relied on only two marks, THE REMANT and REMNANT TV, and claimed to own a "family" of marks. However, the evidence did not show that those two marks were promoted in a manner that would cause consumers to recognize REMNANT as a common source-identifying element. [Turns out, it didn't need the "family" anyway - ed.]

The Board focused on petitioner's mark THE REMNANT. The fact that the two marks at issue are identical weighed "heavily" in petitioner's favor.

As to the services, third-party use evidence demonstrated that "it is common for religious organizations to offer, under the same mark, the same services as Respondent as well as the same or very similar goods and services to those of Petitioner." "The parties adopted the term due to its biblical significance and as a show of faith, and so too apparently have several other religious organizations." "The record before us demonstrates that the term REMNANT is not only conceptually weak but also has some commercial weakness."

Respondent relied on petitioner's admission that it was unaware of any instances of actual confusion between the parties’ marks, arguing that "[a] Catholic newspaper and a Protestant men’s spiritual gathering are not self-evidently related." The Board pointed out, however, that respondent’s broadly worded identification "does not limit its gatherings to any particular denomination." And so, it considered respondent's identification as encompassing religious and spiritual gatherings directed to men of any denomination, including Catholic men.

According to Respondent, its services are offered to “members resid[ing] in Rhode Island, Connecticut, and Massachusetts” and it “has no plans to expand beyond New England.” Thus, respondent essentially acknowledged that there has not been a “meaningful opportunity for actual confusion” during the few years of concurrent use of the parties’ marks.

In sum, the evidence establishes an absence of known actual confusion. However, because the parties’ actual concurrent use has been geographically limited and relatively brief, the record does not establish a meaningful opportunity for confusion to have occurred. We therefore treat both the seventh and eighth factors as neutral.

The parties are using an identical mark, and that weighed heavily in favor of a likelihood of confusion. The parties’ goods and services are "closely related," and the trade channels and classes of consumers overlap. "These factors outweigh our finding that the term REMNANT is conceptually weak and has some commercial weakness in connection with religious goods and services."

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TTABlogger comment: Did respondent have a prayer of winning?

Text Copyright John L. Welch 2026.

TTAB Dismiss AURI Supplements Opposition, Finding the Goods Unrelated to Agricultural Services and Rejecting Actual Confusion Evidence

2026-10-14T05:56:37.595-04:00

In a 78-page decision, the Board dismissed an opposition to registration of the mark AURI for "nutritional supplements in the form of gummies," concluding that confusion is unlikely with the two composite marks shown immediately below, for research, consultation, education, and various related services in the field of agriculture. The Board found that opposer failed to prove the relatedness of the involved goods and services, nor any overlap in channels of trade or classes of consumers. The Board analyzed in detail opposer's evidence of actual confusion (a substantial number of misdirected voice mails and emails) and found it of little probative value. This blog post will attempt to hit the high points. Agricultural Utilization Research Institute v. Ejec Ventures, LLC, Opposition No. 91292154 (October 8, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Marks: The Board found the term "auri" to be the dominant element in Opposer's marks: "the word 'auri' in stylized lowercase letters is '[d]isplayed in a large, bold typeface' and, to varying degrees, comprises the largest literal portion of the mark[s] in terms of size, position, and emphasis. It is also the first term in the mark[s], further establishing its prominence."

As to appearance, the Board observed that applicant's standard character mark could be displayed in a lower case form like that used by registrant. [And see applicant's specimen of use, below]. As to sound, for both of the cited marks, "the marks would sound similar because the word 'auri' is the first thing heard when Opposer’s mark is verbalized and the only thing heard when Applicant’s mark is verbalized."

As to connotation and commercial impression, a consumer "could readily understand Applicant’s mark to be the acronym auri, and the word auri, in Opposer’s marks." And so, the Board found the marks to be similar in connotation and commercial impression.

Therefore, the first DuPont factor favored opposer.

The Goods/Services: On the issue of relatedness, Opposer submitted a single registration that covered both supplements and scientific research, which the Board found of limited probative value. Opposer's testimony that opposer "has provided services to several clients in the mushroom area" was vague and unsubstantiated. [Where is the "mushroom area" anyway? - ed.] The Board found that "Opposer’s services and Applicant’s goods are unrelated, and the second DuPont factor strongly supports a conclusion that confusion is not likely ...."

There was no evidence that opposer’s services "are rendered through any of the actual current and potential channels of trade in which nutritional supplements in the form of gummies are sold to consumers." Nor did the evidence show "the similarity of the consumers of nutritional supplements in the form of gummies and the consumers of the services identified in the ’975 and ’051 Registrations."

Nutritional supplements in the form of gummies are sold to individual consumers, while the services identified in the ’975 and ’051 Registrations are rendered to what Opposer’s website describes variously as “[l]eading agricultural institutions,” “businesses, farmers and entrepreneurs,” “[a]gricultural processors,” and “[f]ood and beverage entrepreneurs,” among other institutional clients. [Don't farmers take supplements? - ed.].

Purchaser Care: The Board found that "the least sophisticated potential purchaser of Opposer’s services is likely to exercise at least some degree of care in purchasing them, and that the least sophisticated potential purchaser of nutritional supplements in the form of gummies is also likely to exercise “at least a moderate degree of consumer care when purchasing [such] dietary supplements." The Board found the fourth DuPont factor to be neutral. [Seems like it favored Applicant - ed.]

Actual Confusion: Opposer pointed to 102 instances of purported actual confusion (emails and calls that it received). Many of the emails were from protective re-sellers and business partners, mostly "generic 'form' emails that could be sent to any company regarding resale of any product, and none of them refers to nutritional supplements in the form of gummies sold by Applicant."

They are all solicitations offering services rather than customer emails. The Board has long recognized that persuasive evidence of actual confusion must show confusion as to source or sponsorship, not mere carelessness in attempts to contact a business. *** [B]ut even assuming that the senders were only trying to reach Applicant to purchase nutritional supplements in the form of gummies for resale, we find on this record that it is more likely than not that they reached Opposer because they searched the Internet using “Auri,” or a search term containing “Auri,” and selected Opposer’s website at its auri.org address rather than Applicant’s website at the less intuitive tryauri.com address.

The Board next considered four emails from consumers, and was likewise unimpressed. "We again find that it is more likely than not that the four consumer senders of emails to Opposer reached Opposer because they searched the Internet for 'Auri' and selected Opposer’s website at auri.org." Opposer did not attempt to reach any of these consumers to find out why and how they contacted Opposer: "without direct testimony from the supposedly confused individuals . . . there is insufficient evidence to ascertain what they were thinking, or whether they were actually confused."

We cannot infer that the consumers reached Opposer because they believed Opposer to be the source of the products that they had purchased rather than because they were careless in trying to find Applicant’s email address on the Internet.

Finally, the Board considered ten or so telephone voicemail messages and call summaries. "There is again no doubt that the callers were trying to call Applicant, but we are again confronted with the issue of why they called Opposer instead."

The number of misdirected emails and calls here is substantial, but in this context quantity does not have a quality all its own. On this record, the contacts are at least equally consistent with inattention and carelessness on the part of the senders and callers in using the Internet to locate Applicant as they are with the actual mistaken belief that Opposer sells Applicant’s gummies

The Board found that this evidence had limited probative value and did not support a finding of actual confusion. The seventh DuPont factor was deemed neutral.

Conclusion: The Board concluded that, although the marks are similar, "confusion is unlikely because the parties’ respective goods and services have not been shown to be related, and they are not offered through overlapping channels of trade to overlapping consumers." The second and third DuPont factors outweighed the first factor.

Read comments and post your comment here.

TTABlogger comment: Misdirected phone calls and messages seem inevitable in the Internet age. If the "confused" consumers aren't asked to explain the circumstances, how can you present probative evidence of confusion as to source?

Text Copyright John L. Welch 2026.

TTABlog Test: Is TRU SUPPORT COMFORT YOU CAN FEEL for Clothing Confusable with TRUSUPPORT for Bras?

2026-10-13T06:23:40.740-04:00

The USPTO refused to register the mark TRU SUPPORT COMFORT YOU CAN FEEL for footwear and clothing, including footwear, jackets, pants, t-shirts, sweatshirts, dresses, and hosiery, concluding that confusion is likely with the registered mark TRUSUPPORT for "bras." The goods are different, the marks are different, and the cited mark has "some conceptual weakness." How do you think this appeal came out? In re Columbia Insurance Company, Serial No. 98848901 (October 7, 2026) [not precedential] (Opinion by Judge Jessica B. Bradley).

The Board began by considering the strength of the cited mark. Applicant argued that the TRUSUPPORT is entitled to only a narrow scope of protection in light of "widespread use and registration of ‘TRU’-formative trademarks in connection with bras,” and given that “the term ‘SUPPORT’ is descriptive of a key feature of bras and is routinely disclaimed in registrations covering bras." However, Applicant did not submit any evidence of marketplace use, and therefore the Board declined to considerer the commercial strength of TRUSUPPORT.

As for conceptual strength, five third-party registrations for bras, with the word "support" disclaimed, together with a definition of “support” (“something that holds up or serves as a foundation or prop), led the Board to find that the term “support” in the cited mark "has some conceptual weakness in relation to Registrant’s bras."

Turning to the marks, the Board agreed with Examining Attorney Heather Kennedy that TRU SUPPORT is the dominant element in applicant's mark. The addition of “Comfort You Can Feel” "reinforces the message of physical support conveyed by the Cited Mark TRUSUPPORT." Furthermore, applicant could display its mark in a way that prominently emphasizes the term TRU SUPPORT.

[C]onsumers are accustomed to seeing messaging of “support” and “comfort” together both in relation to Applicant’s goods and Registrant’s goods which reinforces the overall similarity in meaning and commercial impression. As such consumers are likely to view “Comfort You Can Feel” as merely an additional informational or laudatory slogan added to the Cited Mark rather than as a distinguishing element.

The Board concluded that "[a]pplicant’s addition of the phrase 'Comfort You Can Feel' to Registrant’s mark TRUSUPPORT “do[es] little to alleviate confusion."

Applicant pointed to two prior Board decisions that found identical or nearly identical marks not confusable - CROSSOVER/CROSS-OVER for sportswear and bras, and PLAYERS for shoes and underwear - but the Board was unmoved, distinguishing them on the facts and observing once again that each case must be decided on its own record.

[T]he evidence in this case shows that the current retail environment for clothing and bras has changed since the time the Board decided these cases -- in particular given the advent of widespread internet shopping -- and the record here demonstrates the similarity of the goods, trade channels and consumers.

Evidence of 20 third-party registrations supported the relatedness of the involved goods, along with ten third-party websites that offer one or more of the articles of clothing included in Applicant’s identification of goods, under the same mark as bras. The Board agreed with the examining attorney that:

"the evidence clearly establishes that both bras and other clothing items, including applicant’s tops, bottoms, dresses, coats, hosiery, and footwear, are commonly produced by the same manufacturer, and are marketed to the same consumers, under the same mark, and through the same websites, thus establishing a very close relatedness between bras and [Applicant’s applied-for] clothing." ("applied-for" clothing? - ed.).

Accordingly, the Board concluded that the first, second, and third DuPont factors favored a finding of likelihood of confusion. "The Cited Registration has some conceptual weakness, but this does not outweigh the other factors or alter our conclusion that confusion is likely."

And so, the Board affirmed the refusal.

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TTABlogger comment: Do you think confusion as to source is likely in the real world?

Text Copyright John L. Welch 2026.

ZEN WAFFLES Confusable with ZEN BAKERY, Says TTAB

2026-10-09T05:56:56.002-04:00

The Board upheld a Section 2(d) refusal of the mark ZEN WAFFLES for "Waffles; Filled waffles; Frozen waffles; Waffle mixes; Protien [sic]-enriched waffles" [WAFFLES disclaimed], concluding that confusion is likely with the registered mark ZEN BAKERY in standard character form, for "bakery goods; muffins, cookies, rolls, pastry; bakery goods for retail and wholesale distribution and consumption on or off the premises," and in stylized form for "muffins, cookies, rolls, pastry" [BAKERY disclaimed]. Applicant claimed that ZEN is a weak formative because it "refers to calmness, mindfulness, and wellness, concepts that are routinely used in food and lifestyle branding." The Board didn't buy it. In re Zen Cafe Corp., Serial No. 99185689 (October 7, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

The Board agreed with Examining Attorney Mackenzie Olson's assessment of the conceptual weakness argument: "[p]eople do not tend to seek out waffles and baked goods in a search for peace or calmness; consumers seek out waffles and baked goods because they are hungry." Applicant also claimed that ZEN is commercially weak because "the marketplace is saturated with ZEN-formative marks for tea, matcha, spices, noodles, packaged foods, beverages, cafes, and restaurants" and the term is also used in connection with many other food and wellness-themed products. However, there was no admissible evidence in support of that argument.

As to the marks, the Board acknowledged the “penchant of consumers to shorten marks.” It found the shared distinctive term ZEN to be the dominant element in both marks, resulting in similar appearance and sound. It also noted that applicant's mark could be displayed a style similar to that of the cited stylized mark.

Applicant claimed that the marks have different meanings and connotations: a modern, product-specific brand focused on a particular type of food, as opposed to a traditional bakery business offering a range of baked good. The Board was unmoved: "Applicant's arguments . . . are not well taken or supported by evidence. The far more dominant term is the distinctive ZEN, and waffles and bakery products and pastries are not so different that they impart starkly different connotations to consumers."

As to the goods, the examining attorney submitted twelve third-party use-based registrations that identify goods in both the cited registrations and the application at issue. Evidence of six third-parties, each selling the goods under a single mark, confirmed the relatedness of the goods.

Applicant argued that the Board should consider the goods and services actually offered by applicant and registrant: "protein-enriched waffles that are marketed as functional, health-oriented breakfast products" versus "traditional bakery offering fresh baked goods, muffins, cookies, and pastries, distributed through wholesale grocery channels" and no waffles. The Board pointed out that there are no such limitations in the application or cited registrations. "We cannot read limitations into identifications of goods based on either argument or evidence of actual use."

The Examining Attorney’s third-party registration and use evidence is persuasive and uncontroverted. In view of the foregoing, we find that the goods identified in the application are related to the goods identified in the cited registration.

As to channels of trade, "Applicant’s and Registrant’s goods presumptively move in all normal trade channels and to all consumers that purchase such goods. * * * For this reason, the evidence of real-world trade channels and consumers relied on by Applicant are irrelevant." In short, the goods "may be encountered in the same retail outlets by the same consumers, and thus the channels of trade overlap."

Furthermore, bakery goods are low-priced items subject to impulse buying, which increases the likelihood of confusion because purchasers "are held to a lesser standard of purchasing care.” And so, the Board found that the third and fourth DuPont factors favored likelihood of confusion.

Finally, applicant pointed to the lack of evidence of actual confusion, but the Board pointed out that this is an ex parte proceeding in which the owner of the cited registration has no opportunity to submit evidence of actual confusion. Furthermore, applicant did not submit any evidence to show there has been a significant opportunity for actual confusion to have occurred.

In this case, the first and second DuPont factors – which we consider most important – weigh in favor of likelihood of confusion given the similarity of the marks and similarity of the goods. * * * The third and fourth factors also weigh in favor of likelihood of confusion. The fifth, sixth, seventh, and eighth factors are neutral on this record. No factors weigh against likelihood of confusion. We conclude that confusion is likely.

Read comments and post your comment here.

TTABlogger comment: Is this a "WYHA?"? [That double question mark is tricky].

Text Copyright John L. Welch 2026.

TTAB Grants Petition to Cancel STORYTELLER OVERLAND (Clothing) Registrations for Nonuse, Rejects Laches Defense

2026-10-08T06:29:11.823-04:00

The Board granted a petition for cancellation of two registrations for the mark STORYTELLER OVERLAND, in standard character and logo forms, for various items of clothing, finding that Respondent Storyteller failed to overcome Petitioner Overland's prima facie case of nonuse. Storyteller made a half-baked attempt at a laches defense, but it was inadequately pled, was not tried by consent, and was not supported by the evidence. Overland Sheepskin Co., Inc. v. Storyteller Overland, LLC, Cancellation No. 92082396 (October 6, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Nonuse: Storyteller did not contest that it had no documentation showing sales as of the filing dates of the underlying applications (in 2018 and 2019). That was sufficient to make out a prima facie case for Petitioner Overland, shifting the burden of production onto Storyteller. [Of course, the ultimate burden to prove nonuse remained on Overland].

In rebuttal, Storyteller relied nearly exclusively on the testimony of its founder, Mr. Hunter, provided during discovery and at trial. The Board went through his testimony and Storyteller's evidence in detail, finding that his testimony was "vague and uncertain as to when Storyteller first used the marks in commerce. "[H]is testimony is liberally infused with a lot of 'would have been's' and sprinkled with a few 'probably’s.'" The "sketchy" documentation offered by Storyteller did not show the sale or interstate transport of any clothing items to the general public as of the relevant dates.

The Federal Circuit has likened assessing evidence of prior use to putting together a jigsaw puzzle, where it is often the case that, while no individual piece proves prior use, sometimes the pieces viewed together bring the prior-use picture into focus. See W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 1125-26 (Fed. Cir. 1994). Here, however, there are just too many missing pieces for us to complete the puzzle the way Respondent urges us to do. Key gaps include missing documentary corroboration of Mr. Hunter’s vague and imprecise (and keenly-interested) testimony and the lack of any corroboratory testimony from the two people implicated by name in Mr. Hunter’s testimony.

The Board concluded that Storyteller failed to overcome Petitioner Overland’s prima facie case of nonuse as of either relevant date.

Laches: Storyteller assert in its answer: "Registrant pleads the affirmative defenses of unclean hands, laches, estoppel, and acquiescence.” The Board was not happy: "That’s it. The bare recitation of the names of four equitable affirmative defenses in one short sentence is patently insufficient." "[B]y merely typing the word 'laches' in its Answer, Respondent failed to adequately plead this defense. This prevented Petitioner from obtaining fair notice of the relevant facts and circumstances underlying this defense." That "grossly insufficient" pleading alone warranted rejection of the laches defense.

Furthermore, without express or implied consent, "the Board does not allow the assertion at trial of unpleaded claims or defenses—and we consider Respondent’s one-word recitation of the word 'laches' to be the equivalent of an unpleaded defense."

Respondent said not a word about laches, defending itself only on the merits of the nonuse claim. This had the natural effect of lulling Petitioner into thinking Respondent’s one-word incantation of “laches” in its Answer—assuming Petitioner even noticed it—was a throwaway. In its reply brief—the first chance Petitioner had to confront the defense—Petitioner objected to the belated insertion of laches into the case. We therefore think it entirely unfair for Respondent to have developed the defense for the first time in its defending trial brief. We do not consider the defense to have been tried by implied consent.

Petitioner Overland, apparently out of caution, addressed the merits of the laches issue, and so the Board did too. The Board found that Overland's delay of approximately three years after the registrations issued, before filing its petition for cancellation, was not unreasonable. The Board noted that "[T]he filing of a petition to cancel a registration less than three years after issuance (May 2020) falls comfortably within the time allowed under Section 14(1)." Moreover, Storyteller was put on notice via a cease-and-desist letter in April 2022, and Overland was dealing with other infringers at the time.

The Board also found the Storyteller was not prejudiced by the delay. Storyteller argued that it "significantly invested" in the brand during the delay period, but there was no evidence that this investment involved its clothing products rather than its core camper and van business. And so, the Board saw "no economic prejudice at all, let alone economic prejudice caused by the alleged 'delay.'"

Storyteller claimed evidentiary prejudice because its witness, Mr. Hunter, would have had a better memory of events had the petition been filed earlier. The Board was unmoved.

[I]t seems much more likely to us that Mr. Hunter’s sketchy recall of events concerning clothing stems from (1) his lack of direct involvement in merchandising and (2) his instead being locked on getting Respondent’s first vehicle to the market, and not from any “loss of memory” that occurred in the less-than-three-year period between the issuance of the registration and the filing of this Petition.

Storyteller also claimed that documentary evidence was lost during the delay, but the Board again was unmoved: "So far as we can tell, no evidence connects Respondent’s alleged loss of documentation to any post-registration period of delay."

Finally, the Board observed that "[a] party asserting the defense must also convince us that the equities favor application of the defense under the circumstances." "On this front, Respondent faces a headwind: the strong public policy in ridding the Register of registrations found to be void ab initio." The Board also noted the inequity of Storyteller "surprising Petitioner by developing, in several pages of its trial brief, a defense it hadn’t mentioned since asserting the word 'laches' (lumped together with three other one-word defenses) in its answer.

Respondent offers no reasons why equity favors application of the defense in the circumstances presented here. With no equities that we can discern favoring application of laches and two circumstances disfavoring it, we find that the equities disfavor application of the defense.

And so, the Board rejected Storyteller's laches defense.

Read comments and post your comment here.

TTABlogger comment: Another down-to-earth opinion by Judge Casagrande. BTW: clothing seems to be merely ancillary to Storyteller's main business. One wonders whether this battle was worth it?

Text Copyright John L. Welch 2026.

TTAB Affirms Two Failure-to-Function Refusals: Marks Not Perceived as Source Indicators on Specimens of Use

2026-10-07T06:12:27.549-04:00

We haven't had a failure-to-function refusal in a while, but here's a double-header. The Board affirmed refusals to register, on the Supplemental Register, the marks BILL OF RESPONSIBILITIES and DECLARATION OF INTERDEPENDENCE, in standard character form, for educational services in the fields of science, technology, engineering, and mathematics. The Board found that the marks, as displayed on the specimens of use, would not be perceived as source indicators. In re International FIRST Committee Association, Serial Nos. 98849390 and 98849414 (September 28, 2026) [not precedential] (Opinions by Judge Robert Lavache).

The Board observed that "“the central question in determining whether Applicant’s proposed mark functions as a service mark is the commercial impression it makes on the relevant public (e.g., whether the term sought to be registered would be perceived as a mark identifying the source of the services)." "To make this determination we look to the specimens and other evidence of record showing how the designation is actually used in the marketplace."

Examining Attorney Joseph Greene maintained that "consumers will perceive the applied-for mark on the original specimen as merely identifying or referring to the statement of values, and not as the source of any services." The Board agreed.

When viewed in its entirety, [each] specimen is simply a statement of the values [or list of responsibilities] of Applicant’s organization FIRST Global. * * * The fact that the applied-for mark appears on a wall-mounted plaque, where such statements typically appear, reinforces this conclusion.

Furthermore, the examining attorney submitted various excerpts from third-party websites showing that it is common for organizations in various industries to publish "bills of responsibilities" and "declarations of interdependence," setting forth lists of values and responsibilities for their organizations.

The Board concluded that, as to each mark, "the only function the applied-for mark serves is to identify the type and nature of the statements displayed."

Applicant submitted substitute specimens, but they also merely listed the values and responsibilities of First Global, with no reference to any services being provided.

And so, the Board affirmed the refusals.

Read comments and post your comment here.

TTABlogger comment: "[T]the mere fact that the applied-for mark appears on the specimen does not make it a service mark."

Text Copyright John L. Welch 2026.

TTABlog Test: Is CARSCAN Merely Descriptive of Automobile Diagnostic Services?

2026-10-06T06:14:08.363-04:00

The USPTO refused to register the proposed mark CARSCAN for "Automobile diagnostic services provided on-line, via a computer network and by telephone," finding it to be merely descriptive under Section 2(e)(1). Applicant Innova argued that CARSCAN is at most suggestive because it "could allude to a multitude of automotive inspection services wholly unrelated to diagnostics," such as a visual survey for dents or a physical smog check, and therefore does not describe its online and telephone diagnostic services with particularity. How do you think this appeal came out? In re Innova Electronics Corporation, Serial No. 97851338 (September 29, 2026) [not precedential] (Opinion by Judge Mark Lebow).

The problem with applicant's argument is that "the test is not whether the mark, viewed in the abstract, could refer to other automotive activities."

Someone who knows that the services are “automobile diagnostic services provided on-line, via a computer network and by telephone” will understand CARSCAN to convey that those diagnostic services involve scanning cars. DuoProSS, 695 F.3d at 1254. The mark need not describe every detail of the identification.

Innova claimed ownership of an existing registration for CARSCAN for "automotive diagnostic devices, including code readers and scan tools," which issued without a descriptiveness refusal. Irrelevant, said the Board. "Each application, however, must be decided on its own record. *** The ’892 Registration covers goods, not the services here, and it does not bind us on this record."

Finally, Innova argued that its use of the mark for more than 17 years for diagnostic goods, and the absence of other live CARSCAN registrations owned by third parties, demonstrate a strong association between Innova and those goods and related services. The Board pointed out, however, that Innova did not claim acquired distinctiveness under Section 2(f). "Evidence that consumers associate a term with a particular source, and evidence of length of use, goes to acquired distinctiveness, not inherent distinctiveness."

And so, the Board sustained the refusal.

Read comments and post your comment here.

TTABlogger comment: Looks like Innova may want to file a new application with a Section 2(f) claim.

Text Copyright John L. Welch 2026.

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

2026-10-05T06:33:10.517-04:00

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

In re Rebel Athletic Inc., Serial No. 98676029 (September 28, 2026) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of the mark REBEL SUPER NOVA for “Gemstones; Artificial gemstones; Glass [jewelry]; Imitation stones for making jewelry all for use with cheer and dance apparel and equipment," in view of the registered mark SUPERNOVA MOISSANITE for “Gemstones” [(MOISSANITE disclaimed]].

In re Preserve Property Co., Serial No. 99048401 (September 30, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark PRESERVE PROPERTY CO. for “Rental of vacation accommodation" [PROPERTY CO. disclaimed], in view of the registered mark THE PRESERVE RESORT for “real estate services, namely, rental of vacation property” [RESORT disclaimed].]

In re RZT LLC, Serial No. 98913556 (October 2, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Section 2(d) refusal of the mark DIRDYBIRD for "Eyewear, namely, sunglasses, sports and safety glasses and goggles," in view of the registered mark DIRTYBIRD for "sunglasses."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

TTAB Finds "JASPE" Deceptively Misdescriptive of Clothing

2026-10-02T05:48:49.642-04:00

The Board affirmed a refusal to register the mark JASPE for various clothing items, finding the mark to be deceptively misdescriptive under Section 2(e)(1). The evidence established that Jaspe is a type of textile fabric, and Applicant Lee admitted that her clothing items do not contain jaspe. In re Teresa Michelle Lee, Serial No. 98081572 (September 29, 2026) [not precedential] (Opinion by Judge Christen M. English).

A proposed mark is deceptively misdescriptive under Section 2(e)(1) if: (1) it misdescribes a quality, feature, function, or characteristic of the goods or services with which it is used; and (2) consumers would be likely to believe the misrepresentation.

Examining Attorney Akeela Makshood relied on definitions of the term "jaspe" provided by third parties in the clothing industry (e.g., "Jaspe is a type of fabric characterized by its unique pattern. The fabric is made by weaving together different colors of thread, creating a variegated effect"), as well as on evidence of 13 third parties selling "jaspe" clothing.

The Board disagreed with Applicant Lee’s assertion that the word “jaspe” lacks a stable, commonly understood meaning. The Board found that the word “jaspe” has two descriptive meanings applicable to shirts and pants, as identified in the subject application. First, “jaspe” is a fabric made from unique techniques in dyeing yarn and twisting or weaving two different colors or shades of the dyed yarn. Second, it also means a blended, veined, spotted, mottled or variegated appearance resembling or imitating jasper (a mottled gemstone, shown above). Both meaning are immediately descriptive of clothing with a “jaspe” design or appearance.

Applicant Lee argued that she chose the proposed mark as "a meaningful tribute to her son, Jasper," and not to convey some descriptive meaning in connection with clothing. Irrelevant, said the Board.

Applicant Lee invoked the doctrine of foreign equivalents, arguing that “jaspe” means “jasper” in Spanish and because “Spanish is the most commonly spoken language in the United States after English … a very large population of United States consumers will immediately associate the JASPE mark with the jasper gemstone.” The Board was unimpressed: "the evidence shows that Applicant’s proposed mark is an English word, so the doctrine of foreign equivalents has no application here."

In sum, based on the evidence of record discussed above, we find that the proposed mark JASPE immediately describes shirts and pants that are made from or feature a jaspe fabric or design. * * * The word “jaspe” merely describes a significant feature—jaspe fabric or a jaspe design—that Applicant’s shirts and pants might plausibly possess but do not in fact possess. Accordingly, the first part of the test is met.

Under the second prong of the test, the Board applied the reasonably prudent consumer standard to assess whether consumers are likely to believe the misrepresentation. The evidence showed that consumers are likely to regularly encounter shirts and pants described as “jaspe.” As a result, the Board found that reasonably prudent consumers encountering the proposed mark JASPE for the shirts and pants identified in Applicant’s application are likely to mistakenly believe that these goods are made from or feature jaspe.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: The Examining Attorney withdrew a Section 2(a) deceptiveness refusal. That would have required proof that the misrepresentation was likely to affect the purchasing decision of a significant or substantial portion of relevant consumers. As you know, deceptively misdescriptive marks may be registered with acquired distinctiveness. Deceptive marks cannot be.

Text Copyright John L. Welch 2026.

TTABlog Quarterly Index: July - September 2026

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

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

Section 2(d) - Likelihood of Confusion:

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

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

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

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

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

Section 2(e)(5) - Functionality:

Section 2(f): Acquired Distinctiveness:

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

Abandonment/Nonuse/Specimen of Use:

Dilution by Tarnishment:

Genericness:

Lack of Bona Fide Intent:

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

Nonownership:

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

Reexamination:

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

Discovery/Evidence/Procedure:

Recommended Reading:

Other:

Text Copyright John L. Welch 2026.

TTAB Posts October 2026 Hearing Schedule

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

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

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

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

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

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

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

Read comments and post your comment here.

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

Text Copyright John L. Welch 2025.

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

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

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

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

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

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

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

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

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

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

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2026.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

And so, the Boad affirmed the refusal.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

And so, the Board upheld the disclaimer requirement.

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TTABlogger comment: Is this a WYHA?

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Conclusion: the Board affirmed the refusal

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

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

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

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

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

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

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

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

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

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

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

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

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