The TTABlog®

TTAB Denies Petition for Cancellation of Giraffe Logo Registration: No Standing After Board Rejects Petitioner's Purported Testimony

2026-06-19T05:59:25.941-04:00

The Board denied a Section 2(d) petition for cancellation of a registration for the design mark shown here, for a raft of clothing items, ruling that Petitioner Wenbo Zhou failed to submit any admissible evidence in support of his entitlement to petition to cancel the registration. Mr. Zhou submitted a document entitled "Petitioner’s Evidentiary Submission Zhou Wenbo Transcript of Deposition on Written Questions," but the Board, after a detailed analysis, refused to consider that document for "multiple reasons." Wenbo Zhou v. Hangzhou Ai Xun Trade Co., Ltd., Cancellation No. 92082150 (June 17, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

Petitioner Zhou's Evidentiary Submission "purports to be some sort of trial testimony." Zhou characterized the document as both a "testimonial declaration on behalf of Petitioner" and as the "Zhou Wenbo Transcript of Deposition on Written Questions."

However, the Board found that it was not a proper declaration because it contained "no 'oath or affirmation to testify truthfully' acknowledged by the witness, Fed. R. Evid. 603, and no substitute declaration language referencing 18 U.S.C. § 1001 or 28 U.S.C. § 1746."

As to the characterization of the document as a deposition transcript, the Board noted the "absence of evidence that Mr. Zhou took an oath before participating in the “interview,” the lack of certification of the transcript by the person who recorded the "testimony," and the failure of the document to comply with any of the arrangement, indexing, and transcript form requirements.

Moreover, it was clear to the Board that the deposition on written questions was not conducted in English. "We are thus relying on the translation of the questions and answers from Chinese to English for the accuracy of Mr. Zhou’s testimony, but we have no information whatsoever regarding the translator, the process of translation, or the original Chinese-language questions and answers."

In the final analysis, although we are not certain exactly what the Evidentiary Submission is, we are quite certain about what it is not: sworn testimony in a proper deposition upon written questions, given by a witness testifying under oath before a qualified officer authorized to administer oaths, and translated from the witness’s native language into English by a qualified translator. Pursuant to Trademark Rule 2.123(k), we will not consider the Evidentiary Submission as evidence on behalf of Petitioner.

The Board observed once again that entitlement to a statutory cause of action (statutory standing) is a threshold requirement in every inter partes proceeding. Petitioner Zhou pointed to the allegations in his petition for cancellation regarding likelihood of confusion. The Board pointed out, however, that mere allegations are not enough:

Petitioner was required to “maintain [his] entitlement to the statutory cause of action throughout the proceeding and affirmatively prove its existence at the time of trial by introducing evidence to support the allegations in [his] pleading that relate to such entitlement as an element of [his] case-in-chief.” [Emphasis by the Board].

Since Mr. Zhou submitted no admissible evidence or testimony to prove his standing, the Board denied the petition for cancellation.

We are utterly mystified as to why Petitioner did not simply submit his sworn testimony declaration in appropriate Chinese-language and English-language versions, rather than going to the time and expense of taking a deposition on written questions in Indonesia, but “we must take the record as [Petitioner] made it.”

Read comments and post your comment here.

TTABlogger comment: Can the petitioner seek review by way of civil action, wherein new evidence is allowed? How would he introduce his testimony in a civil action?

Text Copyright John L. Welch 2026.

TTAB Denies REVO Cancellation Petition for Failure to Prove Standing

2026-06-18T05:21:46.136-04:00

The Board denied a petition for cancellation of a registration for the mark shown below for real estate brokerage services. Petitioner claimed that the mark had been abandoned. Neither party submitted evidence or testimony during the trial period and only petitioner filed a brief. The Board found that petitioner had failed to prove statutory standing, which alone was enough to justify denial of the petition. It also failed to provide any evidentiary support for its abandonment claim. Revo Holdings, LLC v. Revo Real Estate Inc. and RE Virtual Office Inc., Cancellation No. 92085621 (June 16, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Petitioner did attach to its trial brief a set of interrogatories and document requests to which respondent had not responded. However, materials attached to a brief are not properly submitted evidence. Since respondent did not respond, they proved nothing anyway.

Of course, a plaintiff must prove its standing (i.e., its entitlement to a statutory cause of action) as a threshold matter in every inter partes proceeding. Petitioner did not address the issue in its brief. In its petition for cancellation it alleged only that it "believes it will be damaged by the continued registration of US Registration No. 4,066,391." It did not allege facts "which, if ultimately proven, would establish that petitioner has a real interest in the cancellation proceeding."

In addition to petitioner's deficient pleading, the Board reviewed respondent's answer and the file of its registration (which is automatically of record). However, neither contained "anything bearing on whether Petitioner has a reasonable belief in damage by continued registration."

Petitioner's failure to prove standing, by itself, required denial of the petition. Furthermore, the Board noted that the only admissible evidence in the case was the registration file and the pleadings, in which respondent denied abandonment. "Thus, there is no evidence supporting Petitioner’s sole claim that the mark has been abandoned." "This independently requires denial of the petition."

Read comments and post your comment here.

TTABlogger comment: This dog won't hunt.

Text Copyright John L. Welch 2026.

TTABlog Test: Is LIVIA JOLIE for Clothing Confusable with LIVIA & Design for Beachwear?

2026-06-17T06:05:22.950-04:00

The USPTO refused to register the mark LIVIA JOLIE for "Dresses; Pants; Shirts; Shorts; Skirts; Tops as clothing; Clothing jackets" [JOLIE disclaimed], concluding that confusion is likely with the mark shown below, for "beachwear, bathing suits." Applicant argued, inter alia, that its mark conveys a different commercial impression due to the use of the French word JOLIE, which evokes associations with French fashion and design, and that the actual trade channels and customers do not overlap. How do you think this came out? In re Maya Brooke Inc., Serial No. 98758658 (June 4, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

The Board found the cited mark to be inherently distinctive, noting that, even if LIVIA is a given name, "such marks are not per se regarded as lacking conceptual or inherent strength." In an attempt to show commercial weakness, applicant cited nine third-party registrations, but the Board pointed out that without evidence of the extent of use of those marks, the registrations are of minimal probative value.

Only five of the registrations were potentially probative as to conceptual weakness of the cited mark – ALIVIA FORD, ALIVIA, ELIVIA & CO., ALIVIA SIMONE, and OWLIVIA (Stylized). "Although these registrations have some probative value to show that LIVIA is a given name, they do not show any connection between the mark and the registered clothing goods – that is, the mark is arbitrary and conceptually strong as applied to these goods."

As to the involved marks, the Board observed that "LIVIA is the leading term in Applicant’s mark and the only term in the cited mark, a factor which "makes 'the marks similar.'" Moreover, applicant’s mark incorporates the cited mark in its entirety, a fact that often leads to a finding of similarity. And even if it's true that the term JOLIE evokes French fashion, "some consumers – particularly those familiar with the cited mark – are likely to believe the marks are related" - for example that applicant’s goods under the mark LIVIA JOLIE are a product line extension of registrant’s goods.

Discounting the impact of the stylization in the cited mark and the box around the literal portion, the Board found that the marks, "considered in their entireties, are similar in sight, sound, meaning, and overall commercial impression."

As to the goods, Examining Attorney Marianne Strassle submitted third-party evidence showing that same entity commonly provides applicant’s and registrant’s clothing items under the same mark. Moreover, it found that the goods overlap:

We take judicial notice that “beachwear” in the cited registration means “clothing for wear at a beach.” This broad identification, therefore, overlaps with the narrower identification in Applicant’s application, including “Shirts; Shorts; … Tops as clothing….” We find that the goods are legally identical in part.

The overlapping goods are presumed to travel in the same trade channels to the same classes of consumers. As to the merely related goods, the third-party internet evidence demonstrated that "the trade channels include stores or websites that sell clothing, and supported a finding that the trade channels and consumers of the relevant goods overlap." Applicant's argument about actual channels of trade was unsupported by evidence and, in any case, "actual channels are not material to the [Board's] analysis because [it] must presume all possible, not just actual, channels of trade."

Since all the relevant DuPont factors weighed in favor of likely confusion, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: I don't think a person should be able to register a given name and then preclude others from registering their full name.

Text Copyright John L. Welch 2026.

TTABlog Test: Is CELEBRITY PITCH TANK Confusable with SHARK TANK for Business-Themed Entertainment Services?

2026-06-16T05:45:46.170-04:00

Sony Pictures opposed an application to register the mark CELEBRITY PITCH TANK for "Entertainment, namely, a continuing reality show broadcast over the internet during which participants give away cash for scholarships and startup businesses" [CELEBRITY PITCH disclaimed], claiming likely confusion with the registered mark SHARK TANK for "entertainment services in the nature of an ongoing reality television series, involving presentation of business concepts." What to you think? Did David conquer Goliath? Sony Pictures Television Inc. v. Tim Lynch, Opposition No. 91289684 (June 9, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board found the involved services to be closely related because both involve business-themed entertainment services. It found some overlap between channels of trade and classes of consumers because television shows may be offered via the internet through streaming services and YouTube.

As to the conditions of purchase, "[o]rdinary consumers who watch Applicant’s and Opposer’s reality programs are likely to exercise only ordinary care, especially given that Applicant’s internet shows may be available for free and at least the first run shows of Opposer’s television program are broadcast on the ABC network and 'free.'"

Turning to the strength of Opposer Sony's mark, based on a raft of evidence and on pro se Applicant Lynch's own admissions, the Board found that the SHARK TANK mark "falls on the higher end of the fame spectrum, and is entitled to broad protection." As to conceptual strength, the Board concluded that "SHARK TANK (i.e., a natural or artificial pool, pond or lake or liquid receptacle containing elongate elasmobranch mostly marine fishes) is arbitrary when used in connection with reality shows."

As to the marks, the Board acknowledged that the first words in a mark can make the biggest impact, but here "this impact is blunted in Applicant’s mark because the disclaimed terms CELEBRITY PITCH are at least descriptive, in that they identify a feature of the reality program Applicant offers." The Board concluded that "consumers are likely to focus on the TANK portion of Applicant’s mark."

The Board found that the "overall commercial impression conveyed by the marks is similar and likely to be the same for many consumers." It concluded that the marks are "sufficiently similar in their entireties such that persons who encounter the marks would be likely to assume a connection between the parties."

Finally, Applicant Lynch admitted that he “selected [his Mark] in order to make reference to, or call to mind, Opposer’s SHARK TANK Television Program." Based on this admission, the Board found "sufficient evidence in the record to support a finding of bad faith intent to confuse."

And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: The Board struggled a bit to find the marks confusingly similar. Do you agree with the result?

BTW: Should intent be a factor in the DuPont calculus? How does the applicant's intent have anything to do with consumer perception? Thomas L. Casagrande (now a TTAB judge) said it didn't in this article: "A Verdict for Your Thoughts? Why an Accused Trademark Infringer’s Intent Has No Place in Likelihood of Confusion Analysis." [pdf here].

Text Copyright John L. Welch 2026.

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

2026-06-15T06:45:35.554-04:00

The Board affirmed a refusal to register the mark PROSCIUTTO DI CARPEGNA & Design (shown below) for "Prosciutto from the Carpegna region of Italy made in accordance with specific standards," finding that the mark comprises the Italian flag, in violation of Section 2(b). In re Consorzio Prosciutto di Carpegna, Serial No. 87811048 (June 12, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Section 2(b) requires refusal of any mark that "[c]onsists of or comprises the flag … of any foreign nation, or any simulation thereof." "[T]he word 'comprises' in the clause '[c]onsists of or comprises' means 'includes.'" "Whether matter included in a mark is, or includes, a flag 'is determined by a visual comparison of the matter and the actual flag.' (citation omitted). As with most things trademark (except, notably, functionality), our comparison focuses on the perception of the relevant consumers."

The Italian flag (shown immediately above) is rectangular, wider than it is tall, with equal vertical parallel stripes of green, white, and red. The relevant matter in applicant's mark includes green, white, and red parallel stripes arrayed almost vertically. "It is not depicted as a rectangle, but, depending on one's perspective, looks either like a tilted rectangle (i.e., parallelogram) or, more likely, like a rectangle as seen from an angle, rather than head-on."

The Board found that "consumers will perceive the matter as the Italian flag or a close simulation—i.e., something that gives the appearance or effect of the Italian flag."

Applicant originally described this feature as the Italian flag, but then insisted that consumers would not recognize it as the flag because the mark "merely includes only stylized flag elements, red and green vertical stripes, and is incomplete. There is no border around it and the middle section is merely a gap." Moreover, according to applicant, the mark is dominated by the words PROSCIUTTO and CARPEGNA.

The Board, however, observed that whether other elements of the mark are dominant is irrelevant. "We’re determining whether the mark includes a flag, or a simulation of a flag. Period. Unless the matter is so small or obscured that consumers wouldn’t even notice that it was included—which is not the case here—size does not matter."

The Board noted that the mark has a white background, thus explaining the "gap" in the middle. Furthermore, the relevant consumers "are consumers of 'Prosciutto from the Carpegna region of Italy,' which predisposes them to viewing the mark through an Italian lens."

Applicant pointed to the TMEP, which states that "if the flag design is used to form a letter, number, or design,” examining attorneys will not refuse registration. The Board noted, however, that the TMEP does not state "as part of a design." Reviewing the examples in the TMEP, the Board found most relevant this mark that the TMEP advised should be refused registration under Section 2(b):

In sum, the Board found that Examining Attorney Lisa Papale "correctly found that the mark includes an Italian flag, or simulation of an Italian flag, and correctly determined that the application must be refused under Section 2(b)."

Read comments and post your comment here.

TTABlogger comment: Looking through an Irish lens, it still looks like the flag of Italy.

Text Copyright John L. Welch 2026.

TTABlog Test: Is FOODANALYZER Generic for Food Sensitivity Testing Services?

2026-06-12T06:24:21.694-04:00

The USPTO refused to register the proposed mark FOODANALYZER (on the Supplemental Register) for “Diagnostic testing and analysis services for medical diagnostic and treatment purposes, namely, for food sensitivity testing" on the ground of genericness under Sections 23(c) and 45 of the Trademark Act. Applicant Access Medical contended that because food itself is not analyzed, FOODANALYZER cannot be generic. The Board gave that argument limited weight: "Our analysis must focus on the broader record of how the relevant public actually perceives the term FOODANALYZER as a whole." How do you think this appeal came out? In re Access Medical Laboratories, Inc., Serial No. 97708719 (June 9, 2026) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

There was no dispute that the relevant genus was co-extensive with applicant's recitation of services, and the Board found the relevant consumers to be ordinary purchasers, users, or providers of such services. The question, then, was whether the relevant public understands FOODANALYZER "as the name of the category of services."

Applicant argued that the Office must prove genericness by "clear evidence," but the CAFC in PT Medisafe, clarified that it has “never held that the examining attorney must find genericness by clear and convincing evidence.” The court explained that “[a] potentially confusing reference to ‘clear evidence’ in the TMEP . . . has recently been clarified and no longer suggests a clear and convincing evidence burden. . . .” The correct standard is a preponderance of the evidence.

The Board found the record evidence to be "mixed." FOODANALYZER is not a dictionary term, nor is it found in in industry glossaries, trade publications, or media articles. There were some third-party references to applicant's branded services, and several third-party uses that appeared to be source-identifying. Applicant itself used the term in a trademark manner.

On the other hand, there was evidence of use of FOODANALYZER appearing in service lists alongside other apparently generic terms. But the "total volume of third-party evidence − approximately fifteen references, some of which describe a test with specifications identical to Applicant's own offering and using the same formatting ('foodAnalyzer') − does not establish that the relevant consuming public understands FOODANALYZER as the generic name for a class of food sensitivity testing services."

We acknowledge that FOODANALYZER bears a close descriptive relationship to the identified services and that “food” and “analyzer” individually have descriptive significance for those services. But descriptiveness, even high descriptiveness, is not tantamount to genericness. Applicant has conceded descriptiveness by seeking a registration on the Supplemental Register. The Examining Attorney must establish something beyond that, namely that the relevant public perceives FOODANALYZER primarily as a category name rather than as a source identifier, even a weak one. On this record, that additional showing has not been made.

The Board found that the limited record evidence "create[s] doubt about whether consumers would perceive [FOODANALYZER] as generic, or rather as capable of indicating source and thus eligible for registration on the Supplemental Register." Resolving that doubt in applicant's favor, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: The "mixed record" approach is probably the best get-out-of-jail-free card for genericness refusals.

Text Copyright John L. Welch 2026.

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

2026-06-11T06:26:15.685-04:00

The Board affirmed two refusals to register the mark THE OHIO IPA for beer [OHIO disclaimed], finding the mark to be primarily geographically descriptive of the goods and likely to cause confusion with the registered mark OHIO PALE ALE, also for beer [ALE disclaimed]. Applicant TBK argued, among other things, that young people perceive an alternate meaning of “Ohio:” a slang for “weird, bizarre, or foolish.” The Board didn't buy it. In re TBK Operating Company, LLC, Serial No. 98551577 (June 9, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Geographical Descriptiveness: Section 2(e)(2) prohibits registration of a “mark which … when used on or in connection with the goods of the applicant is primarily geographically descriptive of them . . . .” The test for determining whether a mark is primarily geographically descriptive is whether: 1. the mark sought to be registered (or a portion thereof) is the name of a place generally known to the public; 2. the source of the goods or services is the geographic region named in the mark; and 3. the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or services for which the mark is sought to be registered originate in that place.

Applicant TBK did not argue that Ohio is not a well-known geographic location. It asserted that “[c]onsumers will see the wording ‘THE’ as a source identifying term that changes the primary significance of the mark from the word ‘OHIO.’” However, there was no evidence to support that argument. As to the purported slang meaning of OHIO, again there was no evidence to support the attorney's argument.

Likewise, the inclusion of the term IPA did not overcome the refusal. "Generally, 'the presence of generic or highly descriptive terms in a mark which also contains a primarily geographically descriptive term does not serve to detract from the primary geographical significance of the mark as a whole.'" The Board found that the primary significance of THE OHIO IPA is geographic.

As the second and third elements of the Section 2(e)(2) test, the evidence from TBK’s website showed that its "production facility" for its beers and ales is in Middleburg Heights, Ohio. Therefore, the Board applied the presumption that consumers will make a goods/place association when the goods come from the place named. It concluded that the mark is primarily geographically descriptive, and affirmed the refusal to register on that ground.

Likelihood of Confusion: The goods are identical and therefore presumably travel through the same trade channels to the same classes of consumers. As to the marks, THE OHIO IPA and OHIO PALE ALE "look and sound alike only to the extent they contain the term OHIO. But, . . . in the beer context, there is evidence that 'IPA' signifies a sub-type of pale ale: India pale ale. So the respective marks have very similar meanings."

TBK argued that the Board gave too much weight to the word OHIO and not enough to THE. According to TBK, the word THE signifies that its “Ohio IPA” is "unique and the most outstanding or prominent choice for beer." The Board was unconvinced:

We fail to see how this essentially laudatory use of “THE” in Applicant’s mark, which points to the words that follow (Applicant’s “OHIO IPA” beer) distinguishes source from the seller of “OHIO PALE ALE” beer, which is essentially the same thing (an Ohio beer or pale ale). * * * In short, we find the marks, overall, to be similar, especially in meaning.

With all the relevant DuPont factors pointing one way, the Board had "no difficulty, on the record here, concluding that confusion is likely." And so it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA? a half-WYHA?

Text Copyright John L. Welch 2026.

TTAB Affirms Reexamination Decision Ordering Cancellation of BAIA Registration for Non-use, Rejects Residual Goodwill Argument

2026-06-10T06:38:39.008-04:00

The Board affirmed the USPTO's decision on reexamination, ordering cancellation of a registration for the mark BAIA & Design (shown below) for " Boats; Ships; Yachts" because Registrant Hanako failed to demonstrate use of the mark in commerce by the critical date (the date of filing its statement of use, or the last date for filing same). The petition for reexamination presented a prima facie case, shifting the burden to Hanako to show use of the mark. In re Hanako design SA, Reexamination No. 2024-101552R for Registration No. 7220244 (June 5, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Registrant Hanako failed to submit a "verified statement signed by someone with firsthand knowledge of the facts to be proved, setting forth … factual information … about the use of the mark in commerce … and how the evidence demonstrates use of the mark in commerce as of any relevant date” as required by Rule 2.93(b)(7). That failure alone justified affirmance of the reexamination decision.

Nonetheless, in the interest of completeness, the Board addressed Hanako's arguments. Hanako did not contend that it ever sold any goods under the mark. Instead, it argued that it succeeded to rights in the mark tracing back to the owner of a prior BAIA registration that was cancelled in 2012. However, the Board found four missing links in the chain-of-title.

Hanako also argued that, although it lacked evidence that it or its purported predecessors-in-interest used the registered mark, there were "multiple active U.S. listings for BAIA yachts" that "advertise the yachts for purchase." According to Hanako, this "secondary market" preserved "trademark significance" and "demonstrates that the … Mark remains visible to consumers and retains its goodwill." The Board rejected that argument.

While evidence of residual goodwill can serve to negate a charge of abandonment based on a mark having become the generic name for the goods, see Adamson Sys. Eng’g, Inc. v. Peavey Elecs. Corp., No. 92076586, 2023 TTAB LEXIS 454, at *18, the problem here is different: Registrant’s nonuse (and the lack of evidence that Registrant’s alleged predecessor-in-interest, Italproperties, ever used the mark). Alleged residual goodwill does not defeat nonuse. See, e.g., id. at *43-44; see also Azeka Bldg. Corp. v. Azeka, No. 91218679, 2017 TTAB LEXIS 123, at *29-32; Gen. Motors Corp. v. Aristide & Co., No. 91167007, 2008 TTAB LEXIS 18, at *14-15 (TTAB 2008). Nonuse remains nonuse.

Read comments and post your comment here.

TTABlogger comment: For a discussion of the significance of residual goodwill, see Jerome Gilson and Anne Gilson LaLonde, The Zombie Trademark: A Windfall and A Pitfall, 98 TMR 1280 (November - December 2008).

Text Copyright John L. Welch 2026.

TTAB Grants Two Cancellation Petitions Based on Registrant's Deemed Admissions of Non-use

2026-06-09T06:03:03.223-04:00

In this consolidated cancellation proceeding, the Board granted petitions to cancel two registrations for the mark SUPERKING for bags, bath towels, and various other goods in classes 18 and 24, on the ground of non-use as of the filing dates of the underlying use-based applications. Respondent did not respond to discovery, submit any evidence or testimony, or file a brief. Its attorney told petitioner that his client was not responding to his communications. Super Kings International, Inc. v. Shenzhen BMX Network Technology Ltd., Cancellation Nos. 92085356 and 92085358 (Consolidated) (June 5, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

Specimen of Use

Petitioner argued that respondent's failure to defend was sufficient to warrant judgment, but the Board disagreed:

The plaintiff always bears the burden of proving that the defendant is not entitled to obtain or maintain a registration “even in the absence of contrary evidence or argument.” DC Comics v. Cellular Nerd LLC, No. 91246950, 2022 WL 17832492, at *9 (TTAB 2022) (citation omitted). Defendants thus are not required to “defend” a case by submitting evidence or a brief, and there are no adverse consequences flowing simply from a defendant’s failure to do either.

The Board observed that “[a]n application based on use of the mark in commerce under Section 1(a) . . . is void ab initio if the mark was not in use in commerce in connection with the goods identified in the application at the time the application was filed.”

Petitioner relied on respondent’s deemed admissions of non-use resulting from its failure to respond to requests for admission served by petitioner under Rule 36 of the Federal Rules of Civil, which provides that "[a] matter is admitted, unless within 30 days after being served, the party to whom the request is directed serves on the requesting party a written answer or objection addressed to the matter and signed by the party or its attorney.” “The effect of such admissions is that the subject matter of the requests is ‘conclusively established" . . . .

Respondent thus admitted that its marks had “never been used in commerce in the United States," that “none of the goods or services listed under Registrant’s Mark[s] have ever been sold, offered for sale, or distributed under Registrant’s Mark[s] in the United States,” and that “the specimens of use submitted in registering Registrant’s Mark[s] were not of products in commerce in the United States at the time of registration or at any time before or after registration, but instead fraudulent fabricated specimens.”

Consequently, the Board found that the two registrations at issue were void ab initio, and so it granted the petitions for cancellation.

Read comments and post your comment here.

TTABlogger comment: The underlying applications were filed by attorney Nyall Engfield. In March 2025, while these proceedings were pending, Mr. Engfield was publicly reprimanded and put on probation for six months by the USPTO’s Office of Enrollment and Discipline (“OED”) for misconduct in the representation of numerous Chinese applicants before the USPTO. Note also that registrant's attorney in these proceedings, Jonathan G. Morton, was suspended from practice before the U.S. Patent and Trademark Office for a period of twenty-four months, commencing on April 24, 2022, as stated in a Final Order of suspension (pdf here). Mr. Morton had acknowledged that did not conduct reasonable inquiries regarding the specimens of use that he submitted on behalf of his clients.

Text Copyright John L. Welch 2026.

Second Circuit Vacates Peju Summary Judgment: Lower Court Misapplied Issue Preclusion and Misread B&B Hardware

2026-06-08T11:38:49.273-04:00

A mere three weeks after hearing oral argument, the U.S. Court of Appeals for the Second Circuit vacated and remanded the July 12, 2024 judgment of the district court in Cesari S.R.L. v. Peju Province Winery L.P., Civil Action No. 17 Civ. 873 (NRB) (S.D.N.Y. Dec. 11, 2017) [pdf here], in which the court granted Plaintiff Cesari's motion for partial summary judgment on its trademark infringement claim, ruling that preclusion applied to the issue of likelihood of confusion based on a 2004 TTAB decision. The Second Circuit's non-precedential order may be downloaded here.

In the TTAB opposition, Cesari contended that Peju’s LIANA mark was likely to cause confusion with its LIANO mark. The TTAB conducted its Section 2(d) analysis exclusively “on the basis of the identification of goods set forth in [Peju’s] application,” without considering “the particular nature of [Peju’s] goods, the particular channels of trade[,] or the class of purchasers to which the sales of goods are directed.”

Ten years later, Cesari sued Peju for trademark infringement, and then moved for partial summary judgment on the issue of whether Peju was precluded from relitigating the “likelihood of confusion” element of the trademark-infringement claim. The district court granted the motion, ruling that Peju was “precluded from relitigating the likelihood of confusion between the parties’ marks” – an element of Cesari’s trademark infringement claim – because the TTAB’s 2004 trademark registration decision had settled the matter once and for all."

The Second Circuit, however, found that "the TTAB decision – on its face – did not consider the parties’ 'actual usage in the marketplace.'" "Importantly, the TTAB never considered the merits of Peju’s principal defense to Cesari’s infringement claim: “that its wine [wa]s distinguishable [from Cesari’s] because it is a dessert wine” and therefore not likely to confuse consumers.

Therefore, because the issues before the TTAB and the district court were not the same, the district court should not have given preclusive effect to the TTAB’s ruling on the likelihood of confusion.

Read comments and post your comment here.

TTABlogger comment: TTABlog hat tip to Joel MacMull (who argued the case) and Marty Schwimmer. If you listened to the oral argument, you are not surprised by the swiftness of this ruling.

Text Copyright John L. Welch 2026.

TTAB Case Update: New York IP Law Assn - June 24th at Noon

2026-06-07T06:16:28.876-04:00

The TTABlogger will present a TTAB Case Update at the New York Intellectual Property Law Association's Seminar entitled "Hot Topics in Trademark and Copyright Law," on June 24th. Details here.

Read comments and post your comment here.

Text Copyright John L. Welch 2026.

TTABlog Test: Is THRESHER WORM for Fishing Lures Confusable with THRASHER RODS for Fishing Rods?

2026-06-05T06:04:33.300-04:00

The USPTO refused to register the mark THRESHER WORM for “Artificial fishing bait; fishing lures” [WORM disclaimed], concluding that confusion is likely with the registered mark THRASHER RODS for “Fishing rod blanks; Fishing rod handles; Fishing rods; Rods for fishing; Fishing gaffs; Structural parts of fishing rods, namely, Grips, Rings, Reel seats” [RODS disclaimed]. Applicant Good Sportsman argued, unsurprisingly, that the marks differ in appearance, sound, connotation, and commercial impression, and also that the goods are completely unrelated. How do you think this appeal came out? In re Good Sportsman Marketing, L.L.C., Serial No. 98897724 (June 3, 2026) [not precedential] (Opinion by Judge Angela Lykos).

The Marks: In addition to the differences in appearance and sound, Good Sportsman contended that the marks differ in connotation and commercial impression because "thresher" is a species of shark or a type of agriculture machinery used to separate grains from stalk or husks, whereas "thrasher" is a bird species or a moniker for an avid skateboarder.

The Board noted that each mark is comprised of two words and ends with a single, monosyllabic word, making them similar in structure and cadence. They begin with THRESHER or THRASHER, which is the portion of the mark consumers are most likely to recall. The record showed the "thresher" and "thrasher" may be synonyms: "When used as an intransitive verb, the word 'thrash' is defined as 'to move or stir about violently: toss about' or 'thresh.'"

The second words in each mark, WORM and RODS, are different in sound and appearance, but each is associated with fishing. "Considered within that context, THRESHER WORM and THRASHER RODS convey the same imagery of a fish splashing in the water or resisting being reeled in by a rod after being lured by bait."

Overall, the marks are similar in appearance and sound, and project a similar connotation and commercial impression. Consumers “have but dim recollections from having previously seen or heard one or the other of the involved marks.” Neutrogena Corp. v. Bristol-Myers Co., 410 F.2d 1391, 1393 (CCPA 1969).

The Goods: Examining Attorney Heather Kennedy established that the goods are related via three third-party registrations covering both lures and rods and three third-party websites offering these goods under the same mark. The Board also observed that lures and rods "are complementary goods since they are used together for fishing."

Other factors: The evidence demonstrated that the normal trade channels for the involved goods are the same, namely, online retail websites specializing in fishing equipment, and that the consumer classes overlap. Although some rods may be expensive and some purchasers sophisticated, there were no restrictions in the cited registration as to classes of purchasers and price.

We must therefore assume that Applicant’s and Registrant’s fishing equipment products are available to all members of the general public, including ordinary consumers of such products at all price points. This would include not only avid fishing enthusiasts and expert professionals, but also the novice hobbyist. While some of these consumers might be highly sophisticated and knowledgeable about fishing, others may be new to the activity. Basing our analysis “on the least sophisticated potential purchasers,” Stone Lion, 746 F.3d at 1325, this DuPont factor is neutral.

Conclusion: Weighing the relevant DuPont factors and finding that none favored the applicant, the Board affirmed the refusal.

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TTABlogger comment: I think the connotation discussion is a stretch. In the real world, do you think confusion is likely?

Text Copyright John L. Welch 2026.

TTAB Upholds Refusal of LACONIA MOTORCYCLE WEEK for Clothing and Patches - Merely Ornamental and not a Source Indicator

2026-06-04T06:02:26.346-04:00

The Board affirmed a refusal to register the mark LACONIA MOTORCYCLE WEEK for various clothing items and for cloth and fabric patches for clothing, finding that, as used on the specimens of use [shown below], the phrase would be perceived by consumers as merely ornamental and not as a source indicator. Applicant City of Laconia claimed acquired distinctiveness based on more than 100 years of use but it failed to provide any probative evidence in support of that claim. In re City of Laconia, New Hampshire, Serial No. 98201363 (May 28, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

The "critical question" for the Board was how consumers perceive the proposed mark as displayed on the specimens of use: will they perceive LACONIA MOTORCYCLE WEEK as source indicator or as merely ornamental wording on the shirt and patch? Examining Attorney Bianca Allen argued that:

the applicant’s submitted specimen shows the applied-for mark, “LACONIA MOTORCYCLE WEEK”, located directly on the upper-center area of the front of the shirt and the middle of the cloth patch, where ornamental elements often appear. … Furthermore, the design element that contains the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods. Lastly, the applied-for mark appears to be a design and slogan that is used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance.

Applicant City of Laconia contended that its use of the phrase serves as an identifier of secondary source because "[t]he consuming public recognizes LACONIA MOTORCYCLE WEEK as the name of a specific, municipally controlled event" and that the City" exercises quality control" such that "[m]erchandise bearing the wording is widely understood to be officially licensed goods." That argument failed, however, because there was no evidence to support it. "[W]e are left only with the unverified statements of Applicant’s counsel, which are not evidence."

The Board agreed with the Examining Attorney: "the proposed mark appears among other wording and designs and, in this context, the overall commercial impression is that the proposed mark is merely part of a larger ornamental design containing information about a motorcycle rally, e.g., held in 'June 2023' in 'New Hampshire.' Put simply, the consumers will not pull out the proposed mark as a source identifier."

And so, the Board affirmed the refusal.

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TTABlogger comment: Well, what would you do next? File a new application? Seek review by way of civil action, which would allow the submission of the missing evidence, e.g., a declaration by somenone with knowledge of the facts?

Text Copyright John L. Welch 2026.

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

2026-06-03T06:02:34.176-04:00

Finding that the applicant lacked the requisite bona fide intent at the time it filed the subject Section 1(b) application, the Board sustained Nike's opposition to registration of the mark BLUE RIBBON TEAM & Design for "[o]n-line retail store services” featuring dozens of categories of goods, including sporting equipment and accessories. The Board declined to reach Nike's likelihood of confusion claim based on alleged common law rights in the mark BLUE RIBBON SPORTS for retail store services offering sporting goods and equipment. Nike, Inc. v. Blue Ribbon Team, Opposition No. 91269520 (May 29, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Opposer Nike had the burden to prove, by a preponderance of the evidence, that applicant lacked a bona fide intention to use the mark in commerce on the goods identified in the involved application when the application was filed. "Because this sort of claim requires a plaintiff to prove a negative, we permit an opposer to make out a facie case by showing the absence of any documentary evidence regarding Applicant’s intent to use the mark." If Opposer satisfies its initial burden, applicant must bring forth rebuttal evidence showing its bona fide intent.

Nike pointed to applicant’s lack of documentary evidence and to the discovery deposition testimony of applicant, and specifically to applicant's failure to produce any documents or things responsive to Nike's FRCP 34 productions requests, including business plans, sales and advertising figures, and store locations. See, e.g., Honda Motor Co. v. Winkelmann, No. 91170552, 2009 WL 962810, at *2 (TTAB 2009) (“The Board has held … that the absence of any documentary evidence regarding an applicant’s bona fide intention to use a mark in commerce is sufficient to prove that an applicant lacks such intention . . . .").

Nike also relied on the deposition testimony of applicant's' founder about his plans to “implement[ ] his business in three, sequenced phases: establishment of the business entity, clearance of the trademarks at the national level, and institution of use of those trademarks in publicly launching the business." Nike noted that not only did applicant have no documents reflecting that it had ever taken any such steps, but also that Applicant had done nothing to accomplish, or even plan, any of those steps. Moreover, all of the prior business experience of applicant's founder was unrelated to the online retail services identified in the application.

Applicant’s failure to produce any documentation concerning the proposed online retail store venture, its admitted failure to take any steps to set up the business, and Mr. Kraus’s nearly-total lack of experience in that field establishes a prima facie case—at minimum—that Applicant lacked a bona fide intent to use its mark in commerce at the time it filed its application.

Applicant's only argument regarding the bona fide intent issue appeared to be that he was waiting to take any steps toward setting up its business, or even develop a written plan, until after this opposition proceeding was over. The Board, however, saw this as an attempt “to reserve a right in the mark” first, see M.Z. Berger, 787 F.3d at 1376, and then plan its business. As Opposer aptly puts it, this is 'the sort of cart-before-the-horse approach to trademark registration that Section 1(b) forbids.'"

Thus, applicant failed to rebut Nike's prima facie case, and so the Board sustained the opposition.

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TTABlogger comment: This opposition lasted five years from start to finish. BTW: According to Wikipedia, Nike was first known as "Blue Ribbon Sports."

Text Copyright John L. Welch 2026.

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

2026-06-02T05:39:38.882-04:00

So far this year, the frequencey of TTAB affirmances of Section 2(d) refusals has dropped to the 84% range. Here are decisions in three recent appeals. How do you think they came out? [Answer in first comment].

In re Dillon M. Fink, Serial No. 98418182 (May 27, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon) [Section 2(d) refusal of the mark WHIRL PONG for "Equipment sold as a unit for playing drinking games featuring a rotating turntable that holds cups" [PONG disclaimed] in view of the registered mark WHIRLBALL for "portable action skill games; portable target games; the aforementioned goods specifically excluding amusement park equipment."]

In re Octavio J. Ramirez Bartolomei, Serial No. 98798291 (May 27, 2026) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal of HAPPY MAMITA for "Shirts; Tee shirts" in view of the registered mark MAMITA for "Clothing, namely, T-shirts, jackets, pants, sweaters for children."]

In re Naturel Goods LLC, Serial No. 98702670 (May 28, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Section 2(d) refusal of the mark B NATUREL and design, shown below left, for "Body and beauty care cosmetics; Hair care creams; Hair care lotions; Hair care preparations; Beauty creams for body care; Cosmetic preparations for body care; Cosmetics sold as an integral component of non-medicated skincare preparations" [NATUREL disclaimed] in view of the registered mark B NATURAL and design, shown below right, for "Non-medicated cosmetics and toiletry preparations; perfumery, essential oils; cleaning and abrasive preparations for human skin" [NATURAL disclaimed].

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

Text Copyright John L. Welch 2026.

TTAB Denies Petition to Disqualify Attorney Who Submitted Testimony Declaration

2026-06-01T05:48:03.291-04:00

The Board, acting under authority delegated by the Director of the USPTO, denied a petition seeking disqualification of cancellation petitioner Cove Surf's attorney, Mr. Omid E. Khalifeh, who submitted a testimony declaration in this proceeding, ruling that Mr. Khalifeh was not a necessary witness. The testimony declaration supported certain exhibits accompanying Cove Surf's notice of reliance. Cove Surf Company Inc. v. Columbia Insurance Company, Cancellation No. 92085620 (May 27, 2026) [not precedential] (Decision by Cheryl Butler, Appointed TTAB Petitions Attorney).

Cove Surf alleged abandonment and fraud vis-a-vis Respondent's registration for the mark COVE SHOE COMPANY for "footwear." Cove Surf maintained that "the footwear allegedly sold under the 'COVE' mark was not genuinely offered to or purchased by third-party retailers, and that the [Respondent's] alleged purchase orders may reflect internal transactions or fictitious sales."

Cove Surf's notice of reliance included as exhibits copies of the purchase orders in question (from "The Shoe Factory"), a picture of a boot (shown above), and copies of email exchanges between Mr. Khalifeh and the email address shoefactoryoutlet@hhbrown.com. The Exhibits were introduced by the declaration of Mr. Khalifeh.

Mr. Khalifeh recites that 1) he called the Shoe Factory Outlet to confirm the purchases identified in the purchase orders produced by Respondent; 2) he spoke with “Dan” who informed him that the store did not carry footwear under the COVE brand and referred Mr. Khalifeh to “Denise, who has been with the company for over 30 years.”; 3) that subsequently he spoke with Denise who also informed him that COVE branded shoes were not available at the store; 4) that he inquired about a photo of a COVE branded boot and was asked to send the image by email, and did so; 4) that Denise indicated she could not recall the store selling such boot or any footwear under the COVE brand; 6) and that Dan explained the store was locally referred to as COVE but “the store carries only H & H, Caroline, Cochran, and Matterhorn branded footwear, and not any product bearing the COVE mark.”

The Board observed that disqualification of counsel "is a drastic measure which courts should hesitate to impose except when absolutely necessary." “[S]uch motions should be viewed with extreme caution for they can be misused as techniques of harassment.”

Section 11.307(a) of THE USPTO RULES OF PROFESSIONAL CONDUCT, 37 C.F.R. § 11.307(a), states:

A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless: (1) The testimony relates to an uncontested issue; (2) The testimony relates to the nature and value of legal services rendered in the case; or (3) Disqualification of the practitioner would work substantial hardship on the client. [Emphasis supplied].

Respondent Columbia Insurance contended that because the declaration included Mr. Khalifeh’s opinion as to the authenticity and credibility of Columbia’s evidence by suggesting that the produced purchase orders appear “facially irregular,” Mr. Khalifeh has made himself a necessary witness and must be disqualified from representing Cove Surf.

Cove Surf maintained that the evidence submitted with the declaration was offered to highlight the absence of corroboration, internal inconsistencies and lack of ordinary indicia of Columbia's documents. Furthermore, it argued, the information contained in the declaration is obtainable from other sources: from Respondent Columbia itself and from the customer identified in the purchase orders.

In determining whether or not disqualification is required, the first consideration is whether the attorney is a necessary witness, and the second is, if necessary, does that attorney meet a listed exception. An attorney will be considered a necessary witness where no other person is available to testify in his place. * * * Without a showing by the petitioning party that the attorney has information only he may attest to, that person will not be deemed a necessary witness.

The Board found that Mr. Khalifeh was not a necessary witness:

Clearly there are other persons available to testify on the potential matters brought up by NOR 5. The Shoe Factory Outlet is available to address its relationship with Respondent and products purchased. More specifically to NOR 5, the Shoe Factory Outlet’s employees are available to address the inquiry made, the information they purported provided, the request for a photo that originated from one of the employees, and contents of the telephone and email exchanges. Respondent is the primary source to address its relationship with the Shoe Factory Outlet, including the sales made and the products sold.

And so, the Board denied the petition for disqualification

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TTABlogger comment: Does Columbia Insurance Company sell footwear? Anyway, it got the boot.

In 2015, the Board denied a petition to disqualify an opposer's counsel who had signed and verified certain prosecution and maintenance documents because he was not the sole source for information regarding those documents and therefore was not a "necessary witness." [TTABlogged here].

Text Copyright John L. Welch 2026.

TTABlog Test: How Did These Three Mere Descriptiveness Appeals Turn Out?

2026-05-29T06:17:47.826-04:00

So far this calendar year, the Board has affirmed all 12 mere descriptiveness/disclaimer refusals that it has reviewed on appeal. Here are three recent appeals, decided on the same day. How do you think they came out? [Answer in first comment].

In re Brainlab SE, Serial No. 98004456 (May 26, 2026) [not precedential] (Opinion by Judge Martha B. Allard). [Requirement to disclaim the merely descriptive term DYNAMIC SURFACE in the mark EXACTRAC DYNAMIC SURFACE for, inter alia, "computer hardware and recorded software for image guided patient positioning and monitoring, particularly based on optical and thermal imaging modalities" and for "image-processing and image-presenting instruments and apparatus for medical and surgical purposes and for image guided patient positioning and monitoring, particularly based on optical and thermal imaging modalities for use in radiotherapeutic procedures." [SURFACE disclaimed]. Applicant argued that the term DYNAMIC must be considered on its own and that, on its own, it is a suggestive term.]

In re P&P Imports LLC, Serial No. 98559658 (May 26, 2026) [not precedential] (Opinion by Judge Thomas W. Wellington). [Mere descriptiveness refusal of WOVN for "recreational furniture." Applicant argued that its specimen of use shows that its chairs do not match any of the definitions provided by the Examining Attorney: "the back and seat are not textiles formed by weaving, or interlaced threads, or made of yarn, and do not stretch diagonally, as required by the Wikipedia reference, nor do they constitute a woven fabric."]

Applicant's specimen of use

In re Fast Slow Motion, LLC, Serial No. 98631466 (May 26, 2026) (Opinion by Judge Thomas W. Wellington) [Mere descriptiveness refusal of SCALABLE BUSINESS FRAMEWORK (in standard form) for "Computer software consulting; Consultation services relating to computer software; Consulting services for others in the field of design, planning, and implementation project management of computer software; Consulting services in the design and implementation of computer-based information systems for businesses; Consulting services in the field of software as a service (SAAS); Consulting in the field of IT project management" [FRAMEWORK disclaimed]. Applicant argued that consumers must make "mental leaps" before understanding the descriptive significance of Applicant’s mark.]

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

Text Copyright John L. Welch 2026.

TTABlog Test: Is PRO-GO for Bendable Lotion Containers Confusable with HANDY PRO-GO for Plastic Pails?

2026-05-28T05:50:41.141-04:00

The USPTO refused to register the mark PRO-GO for "lotion containers sold empty for domestic use, namely bendable tubing for personal transport of such lotions," concluding that confusion is likely with the registered mark HANDY PRO-GO for "portable plastic containers, namely, pails." Applicant Sun Tube argued that the goods are different and the cited mark is dominated by the word HANDY. How do you think this came out? In re Sun Tube, LLC, Serial No. 97365902 (May 22, 2026) [not precedential] (Opinion by Judge Elizabeth K. Brock).

The Goods: Of course, even if the goods are not identical, they can be related under Section 2(d). The examining attorney submitted excerpts from nine websites, contending that each showed the involved goods being sold under a single mark. The Board reviewed each website and found that the first three did not show bendable tubing for personal transport of lotions, and another one was a foreign website that had no probative value. Only four were probative.

In sum, we find that four websites . . . show that the broader category of lotion containers may be sold under the same website house mark as plastic pails, but also sometimes not, and of these four websites that offer both types of goods, only the latter three include tube containers that might be considered “bendable” like Applicant’s. Given the potential differences in the lotion container products and Applicant’s own identification (and the lack of evidence that such differences are not consequential), as well as the limited number of entities offering both types of goods, we are not persuaded that the goods are sufficiently related such that confusion is likely.

The s:The Board found the marks to be "similar in appearance and sound, to an extent, and the entirety of Applicant’s PRO-GO mark is identical to the PRO-GO component of Registrant’s mark." However, it was "not convinced that HANDY PRO-GO and PRO-GO have similar meanings and create similar commercial impressions."

When viewed in connection with the goods in the Cited Registration, i.e., plastic pails, we agree with Applicant’s assessment that this might suggest professional painters’ buckets, however, some of these meanings may change. Here, PRO-GO for travel lotion containers certainly leans on the “go” aspect of travel and portability, but the other meanings of PRO do not carryover as well; travel lotion containers for personal use do not so clearly suggest a professional use in the same manner as a plastic pail.

The Board concluded that the marks create different commercial impressions. "Overall, we do not find the find the marks sufficiently similar, which weighs against a conclusion that confusion is likely."

With the first and second DuPont factors weighing in applicant's favor, the Board reversed the refusal.

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TTABlogger comment: How did you do?

No Evidence of Priority, So TTAB Dismisses NEAU Coffee Opposition

2026-05-27T06:01:16.979-04:00

In this train wreck of an opposition, the Board dismissed Opposer's Section 2(d) claim based on alleged likelihood of confusion between applicant's mark NEAU COFFEE and opposer's common law marks NEAUX and NEAUX COFFEE COMPANY, both for coffee. Opposer failed to introduce any evidence to show its entitlement to bring the opposition, but applicant's evidence established that Opposer is in the business of selling coffee under the pleaded marks "and is more than a mere interloper." Opposer then tripped over the requirement to prove priority. Neaux Coffee LLC v. NEAU Brands, Inc., Opposition No. 91284466 (May 21, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

Under Section 7(c) of the Act, applicant may rely upon the filing date of its application (March 14, 2022) as a constructive use date for purposes of priority. "Put plainly, it was Opposer’s burden to prove by a preponderance of the evidence that it acquired common law rights in its pleaded marks based on use of those marks prior to March 14, 2022."

Although opposer introduced no evidence, applicant submitted Internet materials regarding opposer’s use of its marks. The Board, however, found that those materials, sufficient to prove opposer's standing, were insufficient to prove opposer's priority.

We cannot rely on any purported dates within those materials inasmuch as they are merely screenshots from websites and, without supporting testimony, any statements made in these materials or the websites are hearsay and not reliable for their truth. “Internet evidence is only admissible for what it shows on its face, and because it does not fall within an exception to the hearsay rule, will not be considered to prove the truth of any matter stated therein. * * * Indeed, Opposer, objected to Applicant’s evidence on this very basis, namely, that statements made within the materials constitute hearsay

Because opposer failed to submitted evidence that it owns “a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States,” the Board dismissed its Section 2(d) claim.

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TTABlogger comment: By submitting the Internet evidence, did applicant make an admission against interest regarding the contents thereof? Will the opposer seek review by way of civil action under Section 1071, during which it can submit (additional) evidence?

TTAB Test: Are these two "NWA" Marks Confusable for Clothing?

2026-05-26T06:20:09.552-04:00

The USPTO refused to register the mark shown below, for "Hats; Sweatshirts; T-shirts," on the ground of likelihood of confusion with the registered mark NWA for "Clothing, namely, shirts, t-shirts, sweatpants, sweatshirts, track suits, hooded sweatshirts, long sleeve shirts, tank tops, hats, beanies, baseball caps, bandanas." The goods overlap and the overlapping goods are presumed to travel in the same channels to the same classes of consumers. But what about the marks? How do you think this came out? In re Malibu Shirts, Inc., Serial No. 98696754 (May 21, 2026) [not precedential] (Opinion by Judge Robert Lavache).

The Examining Attorney argued that the involved marks share the same dominant element, NWA. Applicant Malibu Shirts maintained that NORTHWEST AIRLINES "dominates the overall visual impression of the mark" and "introduces a distinct visual structure and additional textual content that alters the viewer’s focus and perception of the mark as a whole." Moreover, the marks differ in pronunciation, connotation, and commercial impression. According to Malibu:

[T]he inclusion of the words ‘NORTHWEST AIRLINES’ . . .immediately directs consumers to interpret the mark as identifying or evoking an airline or aviation-related entity,” specifically “an airline operating in or associated with the northwestern region.” Thus, according to Applicant, “[c]onsumers encountering [Applicant’s] mark on apparel would likely view the goods as promotional or commemorative merchandise tied to an airline or aviation-themed brand, rather than as general fashion items.”

The Board agreed with Malibu that "there are significant differences between the respective marks in terms of sound, appearance, connotation, and overall commercial impression."

[T]o the extent that NWA does create a unique impression in the minds of consumers, that impression is likely to be that NWA is an abbreviation, or initialism, of NORTHWEST AIRLINES. Thus, we find that purchasers with a general rather than specific impression of Registrant’s mark are at least as likely to focus on and remember the words NORTHWEST AIRLINES and the wing-like design elements, as they are the initialism NWA alone, which merely abbreviates NORTHWEST AIRLINES.

The wing-like design elements in Malibu's mark reinforces the impression that the mark “identif[ies] or evok[es] an airline or aviation-related entity” and that the goods are thus “promotional or commemorative merchandise tied to an airline or aviation-themed brand.” There was no evidence that consumers would perceive the same connotation when viewing the cited mark.

The Examining Attorney pointed out that the cited mark, registered in standard characters, may be presented in any font style, size, or color, including the same font style, size, and color of the NWA portion of Applicant’s mark. The Board acknowledged that this general proposition is true, but "applying that proposition in this case is of little consequence."

Even if the cited NWA mark were displayed in the relatively nondescript block capital letter font style featured in Applicant’s mark, we are not convinced that it would lead to confusion, given that Applicant’s mark has other differentiating elements that create a distinct commercial impression and that are not encompassed by Registrant’s standard-character claim.

Finding that the first DuPont factor outweighs the second and third factors, the Board reversed the refusal.

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TTABlogger comment: Surprised?

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

2026-05-22T07:00:11.741-04:00

TTAB affirmances of Section 2(d) refusals continue to run at about 90% this year. Here are three recent decisions. How do you think they came out? [Answer in first comment].

In re Skylark Nails Supply, Serial No. 97612916 (May 6, 2026) [not precedential] (Opinion by Judge Wendy B. Cohen) [Section 2(d) refusal of the mark CRE8TION for "Acrylic nail powder and liquid preparations for shaping or sculpting nails; Adhesives for affixing false eyelashes; Artificial eyelashes; Nail hardeners; Nail tips" and for manicure and pedicure implements and eyelash curlers, in view of the registered mark CREATION (in standard characters) for perfumes, beauty products, tanning products, skin toners, lotions, and creams, and other class 3 products.]

In re Lucky Day Entertainment, Inc., Serial No. 98391360 (May 8, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Section 2(d) refusal of LUCKY DAY for “Downloadable software in the nature of a mobile application for playing games of chance; Downloadable computer game programs" in view of the registered mark MY LUCKY DAY (in standard characters) for "Machines for playing games of chance."]

In re GSM Services, Inc., Serial Nos. 98318207 and 98318223 (May 20, 2026) [not precedential] (Opinion by Mark A. Thurmon). [Section 2(d) refusal of the mark GSM HEATING AND COOLING SINCE 1927, in standard form and in the word-and-design form shown below, for "Advisory services relating to the installation of heating and cooling apparatus; Air conditioning apparatus cleaning services; Air duct cleaning services; Home energy assessment services for the purpose of determining home improvements needed to improve energy use and efficiency; HVAC contractor services; HVAC duct cleaning services; Installation of heating and cooling apparatus; Installation of insulating materials; Installation of insulating materials in buildings and structures; Installation of building insulation; Repair or maintenance of power generators; Installation of HVAC systems; Maintenance and repair of electricity generators,” in view of the registered mark GSM ROOFING for "Roofing services."]

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

TTAB Affirms Requirement to Disclaim DATA STREAMS for Database Management and Storage Services

2026-05-21T06:22:10.530-04:00

The USPTO affirmed a refusal to register the mark CHAINLINK DATA STREAMS for “Database management services, namely, collecting secure data for use by decentralized computing networks” (International Class 35) and “Storing of secure electronic data for use by decentralized computing networks” (International Class 42), absent a disclaimer of the term DATA STREAMS. Applicant argued, inter alia, that the wording CHAINLINK DATA STREAMS, as a whole, is unitary, and so DATA STREAMS cannot be descriptive. The Board disagreed. In re SmartContract Chainlink Limited SEZC, Serial No. 98004679 (May 7, 2026) [not precedential] (Opinion by Judge Mark Lebow).

Examining Attorney David Tooley contended that “[t]he wording DATA STREAMS is a well-defined term in the computer industry referring to a manner of transmitting data across computer networks.” He submitted dictionary definitions and numerous examples showing the meaning of “data streaming” within the relevant industry. He concluded that the term DATA STREAMS is descriptive of applicant’s services because they all involved streaming of data among networked computers.

The Board agreed: "Here, DATA STREAMS is not a blended or coined unitary term. It’s a common, well-established phrase in the computer and data-processing industry that directly and immediately conveys the continuous transmission or flow of data – precisely the core feature of Applicant’s services."

Applicant maintained that DATA STREAMS has multiple meanings. The Board pointed out, however, that “[i]t is well settled that so long as any one of the meanings of a term is descriptive, the term may be considered to be merely descriptive.”

Applicant’s own promotional materials of record confirm that its CHAINLINK DATA STREAMS offering involves the reliable delivery and availability of data in distributed systems using active multi-site deployment models that ensure continuous operations.

Applicant also argued that its services involve “data at rest," while the Examining Attorney’s evidence relates primarily to real-time analytics, ingestion pipelines, and transmission, not to the identified storage and database management services. The Board was unmoved.

These services necessarily involve the collection of data from one or more sources and the provision of that data for use by a decentralized network of computers. In the context of computer networks – especially decentralized ones – collecting and making data available for network use inherently requires the transmission or flow of data across network nodes. One of the primary methods for transferring data among network nodes is via data streams, as the record abundantly demonstrates. Applicant’s own promotional materials of record confirm that its CHAINLINK DATA STREAMS offering involves the reliable delivery and availability of data in distributed systems using active multi-site deployment models that ensure continuous operations.

Applicant further contended that the combination of CHAINLINK (its alleged house mark) with DATA STREAMS creates an incongruity because “streams” “connotes ephemerality and flow, and Applicant’s identified services focus on durable, secure storage. The Board waved off that argument: "There is no incongruity in using a term that describes a key feature or function of the services simply because the services have multiple aspects. DATA STREAMS directly and immediately describes the transmission aspect inherent in collecting and making data available for use by decentralized computing networks." The mere addition of the house mark, CHAINLINK, does not create an incongruity.

Applicant’s own evidence confirms that its services employ multi-site deployment models to ensure continuous, reliable data availability across distributed origins. For the foregoing reasons, the term DATA STREAMS is merely descriptive of a feature of Applicant’s services.

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TTABlogger comment: WYHA?

TTABlog Test: Is GRUPPO VAVA for Clothing Excluding Lingerie Confusable with VAVA for Lingerie?

2026-05-20T06:09:15.296-04:00

The USPTO refused to register the mark GRUPPO VAVA for various clothing items, including hats, t-shirts, and sweatshirts (and excluding "lingerie, bras, underwear, or intimate apparel"), concluding that confusion is likely with the registered mark VAVA for "lingerie." Applicant ADG Vanguard conceded, in the face of third-party use and registration evidence, that the goods are related. It argued, however, that consumers will not perceive "VAVA" when applied to lingerie in the same way as when GRUPPO VAVA is applied to its clothing items. What do you think? Did ADG give the USPTO the slip? In re ADG Vanguard IP LLC, Serial No. 98516000 (May 18, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Board wasted little time in finding the marks confusable. Although ADG's mark begins with GRUPPO, and the first word of a mark can often make the biggest impact, here the impact of GRUPPO "is blunted because Applicant disclaimed GRUPPO—which is Italian for 'group'—because it has descriptive, rather than source-identifying, significance." Furthermore, the fact that applicant's mark incorporates the entire cited mark "can be significant in comparing the marks for likelihood-of-confusion purposes."

Applicant ADG argued that consumers will perceive the cited VAVA mark as comprising the first part of the known phrase “va-va-voom,” which connotes sexiness, an attribute naturally associated with lingerie. In contrast, consumers will not associate “va-va-voom” with ADG's mark because the word “GRUPPO” before the term “VAVA” will cause consumers to see “VAVA” not as part of “va-va-voom” but just a “vaguely Italian-sounding term.” Moreover, Applicant argued, its goods aren’t sexy.

The Board found these to be "interesting theories," but there was no evidence in support.

“Sexiness” is highly subjective, and we don’t think the “va-va-voom” connotation—if indeed that’s the connotation that “VAVA” without the “VOOM” imparts—can be so precisely limited only to lingerie. Although Applicant characterizes some of the clothing items in its identification of goods as “functional”—as opposed to “sexy”—items (e.g., business wear, running shoes, track suits), other types of clothing listed in the application (dresses, skirts, shirts, blouses, and shorts, for example) are made or worn in a wide variety of ways, including ways that are perceived as “sexy.”

Moreover, the Board noted, the dictionary definitions of “lingerie” in the record indicated that, "besides women’s intimate apparel, it also includes 'sleepwear,' which is not exclusively a 'sexy' category of goods, and—to use Applicant’s terms—includes 'functional' sleepwear."

In sum, the Board found the marks to be similar, the goods to be related, and the trade channels and classes of customers overlapping. No DuPont factors indicated that confusion is unlikely. "With the only relevant factors all indicating that confusion is likely and nothing to counterbalance them, there’s no real balancing to be done. On the record here, we conclude that confusion is likely."

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TTABlogger comment: The term VA-VA-VOOM, in my experience, is usually accompanied by a pair of eyeballs bulging out of a cartoon wolf's head.

TTABlog Test: Is HORSETHIEF CANYON VINEYARDS for Wine Confusable with HORSE THIEF HOLLOW for Beer?

2026-05-19T06:10:35.609-04:00

The USPTO refused to register (on the Supplemental Register) the mark HORSETHIEF CANYON VINEYARDS for "wine" [VINEYARDS disclaimed], concluding that confusion is likely with the registered mark HORSE THIEF HOLLOW for "beer." As we know, different alcoholic beverages are usually found to be related under Section 2(d) based on third-party registration and use evidence, but what about these marks? Did Applicant stand a chance? In re HC Vineyards LLC, Serial No. 98579854 (May 4, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

“There is no per se rule that holds that all alcoholic beverages are related.” Examining Attorney Lisa McCrary provided evidence of 16 entities offering both wine and beer under the same mark, 20 third-party registrations covering both goods, and an article in Wine Enthusiast titled “‘Give ‘Em What They Want’: These Craft Breweries Make Wine Now, Too.” [Why isn't this article hearsay? - ed.]

Applicant HC Vineyards, appearing pro se, argued that "these few examples are not representative of the industry standard. It is unusual for a winery to brew its own beer, just as it is even more rare for a brewery or restaurant/bar to produce and brand its own wine." The Board was unmoved, noting that applicant provided no evidence for its assertions, and further that the Office's evidence was sufficient to support a finding of relatedness under the second DuPont factor.

The same evidence established that the channels of trade "overlap to at least some degree." The third DuPont factor therefore supported the refusal.

Turning to the marks, the Board found that, "visually and phonetically, HORSETHIEF CANYON VINEYARDS and HORSE THIEF HOLLOW are similar due to the nearly identical first word(s) HORSETHIEF and HORSE THIEF." Moreover, the overall marks "engender similar impressions because they both convey the idea of a depressed area of land where thieves hide their stolen horses." The Board concluded that the first DuPont factor "somewhat heavily" supported the refusal.

HC Vineyards unsuccessfully argued that the involved consumers are sophisticated and exercise care in purchasing, but it provided no evidence thereof. The Board noted that neither identification of goods contains any limitations on quality or price of the goods, and they therefore must be presumed to include goods of all quality levels and price points. Beer is offered at moderate prices and wine may be more expensive but still includes moderately priced products that appeal to average consumers. The Board's decision must “be based on the least sophisticated potential purchasers.” "And even if some consumers of the goods are more sophisticated or discerning than others, even “careful or sophisticated consumers are not immune from source confusion.” The Board deemed the fourth DuPont factor to be neutral.

The Board also found the eighth, tenth, twelfth and thirteenth DuPont factors to be neutral, and no factor weighed in applicant's favor.

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TTABlogger comment: Unless this was your first rodeo, you surely got this right. A typical mechanical application of the Board's stacked-deck Section 2(d) analysis.

TTAB Affirms Genericness Refusal of THE SKIN COACH for . . . . Guess What?

2026-05-18T06:11:04.525-04:00

The Board upheld a genericness refusal of the proposed mark THE SKIN COACH for, inter alia, "Professional coaching services in the field of health and wellness," "Providing on-line training in the form of courses, workshops, seminars, and private coaching in the field of health and wellness," and "Holistic health services," rejecting the application for a Supplemental Registration under Sections 23(c) and 45 of the Trademark Act. Applicant acknowledged the considerable third-party evidence of use of "skin coach" "in connection with skincare, wellness, or esthetics," but contended that the term is at most descriptive, not generic. In re The Skin Coach LLC, Serial No. 98351505 (May 11, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Board determines the issue of genericness as a question of fact, based on the preponderance of evidence. ["Clear evidence" is not required]. The Office bears the ultimate burden of proof. "Determining whether a mark is generic . . . involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?"

The Board observed that "A term is generic if it refers to the class or category of goods or services on which it is used," citing Marvin Ginn and Dial-A-Mattress, or to "part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus," citing Royal Crown and Cordua. [Emphasis by the Board].

The Board found the genus of the respective two classes of services to be “Professional coaching services in the field of health and wellness” and “Providing on-line training in the form of courses, workshops, seminars, and private coaching in the field of health and wellness” in Class 41, and “Holistic health services” in Class 44. Applicant conceded that “‘skin coach’ may describe a niche focus within Applicant’s broader wellness services.” The question for the Board was whether the evidence showed "that the primary significance of THE SKIN COACH is to refer to that sub-genus of the involved services."

Turning to the public's understanding of the term THE SKIN COACH, Examining Attorney Janice McMorrow submitted dictionary definitions of "skin" and "coach," applicant's own specimen website pages (using “skin coach” generically in lowercase letters to identify the provider of the services, applicant’s principal “Malia,” as “your new skin coach & BFF”), and numerous third-party websites. After a detailed analysis of those websites, the Board concluded:

On balance, the third-party website evidence shows that the primary significance of the phrase “skin coach” is to refer to the sub-genuses of “professional coaching services in the field of health and wellness,” “on-line training in the form of courses, workshops, seminars, and private coaching in the field of health and wellness,” and “holistic health services” regarding skin care.

A number of LEXIS/NEXIS articles use "skin coach" and variants "generically to identified multiple instructors who provide services falling within" the sub-genuses listed above.

The Board found, from this evidence, that "the primary significance of THE SKIN COACH to the relevant consuming public is to refer to the sub-genuses of 'Professional coaching services in the field of health and wellness' and 'Providing on-line training in the form of courses, workshops, seminars, and private coaching in the field of health and wellness' in Class 41, and 'Holistic health services' in Class 44, regarding skin care."

And so, the Board affirmed the refusal.

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TTABlogger comment: I'm a bit confused. Is THE SKIN COACH a sub-genus of the sub-genuses? Anyway, the term seems merely descriptive to me. If you looked for a phone book listing of health or fitness providers, would you find a sub-heading, "skin coaches?" But then, a mere descriptiveness rejection that would still allow a Supplemental Registration. The Board didn't want that to happen.