The TTABlog®

TTAB Reverses Section 2(d) Refusal of DAILY HARVEST CAFE Logo for Cafe Services: USPTO Fails to Prove Relatedness to Food Items and On-Line Services

2026-04-06T09:36:00.003-04:00

The Board reversed a Section 2(d) refusal of the mark shown below, for "cafe and restaurant services," finding confusion unlikely with the mark DAILY HARVEST registered for various food items and for "on-line retail store services featuring pre-prepared meals, desserts and beverages." It found that the marks to be similar in sound, appearance, connotation and commercial impression," but the USPTO failed to prove that the involved goods and services are related. In re Daily Harvest Café, Serial No. 98269684 (April 2, 2026) [not precedential] (Opinion by Judge Wendy B. Cohen).

As to the services, the Examining Attorney pointed to four restaurant websites at which pre-packaged food can be ordered online [e.g., Starbucks.com]. The Board was unimpressed: "Four websites in support of the relatedness of Applicant’s restaurant and café services and Registrant’s on-line retail store services falls short of demonstrating that the relevant services are related."

As to the goods, the Board agreed with the applicant that the Office "must show something more than that similar or even identical marks are used for food products and for restaurant services." The Board has found the "something more" requirement to be met where, for example, the applicant’s mark made clear that its restaurant specialized in registrant’s type of goods; or where the record showed that a registrant’s goods were actually sold in the applicant’s restaurant; or where the mark was found to be “a very unique, strong mark."

The Examining Attorney argued that "because Registrant offers pre-packaged smoothies, soups and coffee and Applicant offers smoothies, soups and coffee at its restaurant and café, 'both parties actually sell identical goods in similar settings, that is a retail food establishment.'" The Board was again unimpressed: "the evidence in the record only suggests a general similarity between the type of food packaged by Registrant and some of the items available on the menu in Applicant’s restaurant and café."

It is commonly known that there are a large number of restaurants and cafés in the United States .... [E]vidence of only three or four restaurants selling pre-packaged foods is far from what would be considered numerous or substantial. * * * Thus, the evidence before us indicates that the degree of overlap between the sources of restaurant services and the sources of pre-packaged foods is de minimis; this is far cry from establishing the requirement of “something more” than the fact that restaurants serve food."

Finally, the Board observed, "nothing has been placed in the record upon which to base a finding that the mark DAILY HARVEST is a “very unique, strong mark."

And so, the Board reversed the refusal to register

Read comments and post your comment here.

TTABlogger comment: I suspect that there are a whole lot of restaurants that offer pre-packaged food on-line.

Text Copyright John L. Welch 2026.

TTAB Affirms 2(e)(4) Refusal of Rare Surname "TUGENDHAT" for Seating Furniture Due to Applicant's Own Marketing Materials

2026-04-03T09:55:00.002-04:00

The Board upheld a Section 2(e)(4) refusal of the proposed mark TUGENDHAT for "seating furniture," deeming the mark to be primarily merely a surname. Applicant Knoll argued that Tugendhat is an exceptionally rare surname but the Board pointed out that "even a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname." The evidence showed that "there is meaningful and fairly sufficient exposure to the surname throughout the United States, especially Applicant’s own marketing materials in an online catalog or at the point of sale." In re Knoll, Inc., Serial No. 98370045 [not precedential] (Opinion by Judge George C. Pologeorgis).

Wikipedia entries indicated that "Tugendhat" was the surname of a family of Czech-Jewish textile and oil industrialists. Villa Tugendhat is an architecturally significant building in Brno, Czech Republic. The Tugendhat Chair was designed by Miles van der Rohe and Lilly Reich in 1929-1930 for the Tugendhat Villa. The Board noted that these Wikipedia statements are hearsay, but "because the content of the Wikipedia entries is consistent with other evidence of record, we accord these entries probative value to the extent that they show that TUGENDHAT, TUGENDHAT VILLA, and TUGENDHAT CHAIR have achieved recognition significant enough that Wikipedia entries devoted to them have been created."

Most significantly, Knolls's own promotional materials emphasized the connection with the Tugendhat family and villa, the historical association, and the surname's origins. Knoll stated in its brief that "the Goods are named after the Tugendhat chair designed for the Tugendhat Villa, and named for the Tugendhat family …."

The evidence revealed at most 423 persons with the surname Tugendhat. The Board pointed out, however, that "the determination of whether a surname is common or rare is not determined solely by comparing the number of listings of the surname to the total number of listings in a computerized database, because even the most common surname would represent only a small fraction of the database." "Moreover, "even if TUGENDHAT” is a relatively rare surname in the United States, that would not per se preclude a finding that a term is primarily merely a surname inasmuch as even a rare surname may be held primarily merely a surname."

Put simply, Applicant’s self-made connection between its products and the Tugendhat family and its eponymous villa exacerbates the surname significance of TUGENDHAT because actual purchasers of Applicant’s products will encounter the mark alongside surname use of TUGENDHAT when viewing Applicant’s own advertising and marketing material and even point-of-sale information.

Knoll argued that the term TUGENDHAT is best recognized as the name of an architectural landmark, i.e., the Villa Tugendhat, and a specific design style of furniture, namely, the Tugendhat chair, and so consumers will associate the term with aesthetics and design, not a family lineage. However, there was no evidence to support that contention, nor evidence showing that "Tugendhat" has any meaning other than as a surname.

Knoll contended that Tugendhat does not have "the typical structure or phonetic quality of common American surnames" but instead is like the coined terms used by Ikea for its furniture and home goods. The Board was unmoved. There was no evidence that consumers would perceive Tugendhat as a brand name akin to Ikea's brands. Moreover, the Ikea brand names (Swedish-based) are "linguistically and culturally distinct from the German or Czech language."

In sum, we find that the purchasing public will understand TUGENDHAT as a family name regardless of whether descendants currently work for Applicant simply because Applicant’s own marketing material ties the mark to the Tugendhat family villa, reinforcing the surname perception of the purchasing public.

Read comments and post your comment here.

TTABlogger comment: Does the reference to a old Czech surname necessarily mean that American consumers will think it's a current American surname?

Text Copyright John L. Welch 2026.

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

2026-04-02T09:50:00.004-04:00

In the first precedential opinion of 2026 (not counting the January re-designation of the 2025 DANKE/MERCI decision), the Board affirmed a refusal to register the proposed product configuration mark shown below, for pancakes, under Section 23(c) of the Lanham Act. The Board found that certain utilitarian advantages provided by the design, coupled with the applicants' own marketing materials and their statements to the Examining Attorney touting the design’s utilitarian advantages, required refusal of the application in order to "'protect[] competitors against a disadvantage (unrelated to recognition or reputation) that trademark protection might otherwise impose, namely their inability reasonably to replicate important non-reputation-related product features.'" (quoting Qualitex, 514 U.S. at 169). In re Misty Everson and Christine Maynard, Serial No. 97104306 (March 31, 2026) [precedential] (Opinion by Judge Robert Lavache).

The proposed mark "consists of a three-dimensional product design of a round pancake consisting of 8 uniform wedges. The broken lines depicting the curved outer edges of the wedges indicate placement of the mark on the goods and are not part of the mark. The stippling is a feature of the mark and does not indicate color."

Section 23(c) permits registration on the Supplemental Register of, inter alia, "any matter that as a whole is not functional." The Board observed that "the caselaw applying Section 2(e)(5) to potentially functional matter is equally applicable to functionality refusals under Section 23(c)." See Heatcon, 2015 TTAB LEXIS 360, at *12.

Matter is functional "'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article,’ that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage." Qualitex, 514 U.S. at 165 (quoting Inwood Labs. v. Ives Labs., 456 U.S. 844, 850 n.10 (1982)). The Board once again applied the Morton-Norwich factors to determine whether the subject design at issue is functional for trademark purposes:

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

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

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

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

Becton, 675 F.3d at 1374 (citing Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274 (Fed. Cir. 2002)); see Morton-Norwich, 671 F.2d at 1340-41.

Evidence was lacking as to the first and fourth Morton-Norwich factors, but the second and third factors supported the refusal.

Touting: Applicant's own "Brand Style Guide" stated that this design should be touted as a “new team-sized meal option” that is "shareable," 'dippable," and '[a]ny time-able." During prosecution, applicants explained that the design "allows pancakes . . . to be eaten seated, standing up, or walking," such that '[n]o utensils are needed, and it targets a family-sized serving." The design "allows family members to reach in to grab a slice or use a pie server to obtain a piece" of the pancake and enables "d[]ipping into a sauce such as maple syrup or blueberry compote."

Examining Attorney Joshua Sturman submitted excerpts from fourteen third-party websites that feature pancake recipes and that include photographs of pancakes cut into roughly equal wedges, often eight equal wedges.

The Board found that Applicant’s own marketing materials and statements "directly address, and express, the utilitarian advantages of the proposed product design, namely, facilitating more convenient serving, sharing, consumption, and transporting of the pancake." The third-party evidence provided "additional support for the conclusion that the product design embodied in the proposed mark offers certain utilitarian advantages, namely, shareability and customization of toppings on the individual wedges or slices."

We find that Applicant’s arguments to the contrary—that "there is no practical advantage to the [design’s] eight equal slices" and that the claimed design would "not confer any functional benefit like easier handling or consumption" contradict its own materials and prior statements in the record, which clearly emphasize the utility of a design that provides individual slices, particularly equal slices.

And so, the Board concluded that the second Morton-Norwich factor "strongly" supported the refusal.

Alternative Designs: Applicants argued that there is no competitive need to use their design because "there [are] many ways to present pancakes and that using 8 slices is only one of many," pointing to evidence showing six-, seven-, and ten-slice configurations, and also to photographs of pancakes presented in a stacked configuration, in some cases with a wedge cut out of the entire stack.

The Board, however, agreed with the Examining Attorney that, as a general matter, alternative designs need not be considered if the other evidence of record establishes functionality. See Becton, 675 F.3d at 1376 (stating that there is no need to consider availability of alternative designs “if functionality is found based on other considerations”). Nonetheless, for the sake of completeness, the Board considered these alternative designs.

As to the stacked pancakes, applicants failed to establish that this configuration "offers the same utilitarian benefits as the proposed design, at least with respect to facilitating more convenient serving, sharing, consuming, and transporting of the pancake," and so this is not a "functionally equivalent design." As to the unstacked pancakes, the only differences are in the number of slices.

[C]onsistent with the statements made in Applicant’s “Brand Style Guide” and in its response to the Examining Attorney’s request for information, both the drawing of the mark and the specimens of use show that the eight equal slices claimed in the applied-for configuration can result in eight appropriately-sized servings, especially when the pancake is large (or family-size) and shared among a group of people. As Applicant itself states, “[t]he number of slices in a pancake is usually determined by practical considerations, like the size of the pancake, [or] the desired portion size.

The Board observed that "the eight-equal-slices configuration is one of a very few superior designs for the utilitarian advantages Applicant itself touts. This same eight-slice configuration is commonly used with pizzas, pies, and cakes, as shown in the Examining Attorney’s evidence." [I find it a lot easier to cut eight more-or-less equal slices than seven or ten. - ed.] "Therefore, allowing 'exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage,' Qualitex, 514 U.S. at 165, and thus hinder competition."

Applicants pointed to the stippling in the mark which, according to their brief, represents “a texture” and “a gradient of the texture” of the pancake. The Board, however, noted the many photographs of pancakes in the record and concluded that the texture that Applicants claim "is simply the texture that typically results from the process of making pancakes. In other words, it is akin to a by-product of the manufacturing process. Therefore, we find that the claimed texture feature is functional." Cf., e.g., McGowen Precision Barrels, LLC v. Proof Rsch., Inc., No. 92067618, 2021 TTAB LEXIS 167, at *80, *84-85 (finding respondent’s trade dress functional because, inter alia, it resulted from the manufacturing process for the relevant products); Saint-Gobain Corp. v. 3M Co., No. 91119166, 2007 TTAB LEXIS 82, at *78 (finding the purple color of applicant’s sandpaper functional where, inter alia, it was a natural by-product of the manufacturing process).

Accordingly, the Board found that the third Morton-Norwich factor supported the refusal.

Conclusion: Finding the proposed configuration mark to be a functional design for applicants' goods, the Board affirmed the refusal under Section 23(c).

Read comments and post your comment here.

TTABlogger comment: Compare this decision with the Board's non-precedential decision in the Hershey bar case, TTABlogged here, where it reversed a functionality refusal of the 12-segment configuration of that candy bar.

Text Copyright John L. Welch 2026.

TTAB Posts April 2026 Hearing Schedule

2026-04-01T09:48:00.010-04:00

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

April 16, 2026 - 10:00 AM [Virtual]: In re Western Veterinary IP, LLC, Serial No. 98727230 [Refusal to register the mark MONTANA EQUINE for "Breeding services for horses; Horse breeding and stud services; Veterinary sports medicine and physical rehabilitation services for horses through use of modalities and exercise; Veterinary dentistry; Veterinary emergency and trauma services; Veterinary services; Veterinary services, namely, full service veterinary care for horses, ponies, mules and donkeys including surgery, vaccinations, lameness treatment, reproductive medicine, preventative care and internal medicine; Veterinary specialty services featuring advanced dental and oral surgery; Veterinary specialty services featuring advanced medical, diagnostic and surgical services for animals; Veterinary surgery" [EQUINE disclaimed] in view of the registered mark MONTANA ROSE EQUINE THERAPY for “Equine massage and for "Equine massage and kinesthesiology services; Massage therapy services for horses; Physical rehabilitation services for horses through use of massage and exercises" [EQUINE THERAPY disclaimed].]

April 23, 2026 - 2:00 PM [Virtual]: In re Cardiovascular Research Foundation, Serial No. 98354882 [Refusal to register the mark NEW YORK VALVES: THE STRUCTURAL HEART SUMMIT for "downloadable electronic publications, namely, medical journals, books, magazines, fact sheets, update sheets, newsletters, and booklets in the field of vascular medicine:" "educational services, namely, conferences, seminars, and workshops concerning mammalian or human circulation system or heart valves, valvular heart conditions or diseases, and transcatheter valve therapies or interventions; providing non-downloadable electronic publications, namely, non-down medical journals, books, magazines, fact sheets, update sheets, newsletters, and booklets in the field of vascular medicine;" and "vascular research" [NEW YORK, SUMMIT, and THE STRUCTURAL HEART SUMMIT disclaimed] on the ground that the proposed mark is primarily geographically descriptive under Section 2(e)(2).

April 28, 2026 - 10:00 AM [Virtual]: In re BS Liquor, LLC DBA MudHen Brewing Company, Serial No. 97474171 [Section 2(d) refusal of the mark MUDHEN BREWING COMPANY for "beer" [BREWING COMPANY disclaimed] on the ground of likelihood of confusion with the registered mark MUD HENS for "restaurant and bar services."]

April 30, 2026 - 11:00 AM [In-person]: Campari America LLC v. Seven Skies, LLC, Opposition No. 91291788 [Section 2(d) Opposition to registration of the mark SEVEN SKIES for "Non-alcoholic cocktails, namely, mocktails" and "Alcoholic cocktails; Alcoholic fruit cocktail drinks; Prepared alcoholic cocktail; Wine-based cocktails" in view of the registered mark SKYY for "distilled spirits, namely vodka."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2025.

TTAB Overturns 2(d) Refusal of HOUSE OF PRIM Due to Prior Settlement Agreement Between Applicant and Cited Registrant

2026-03-31T08:20:00.005-04:00

The Board reversed a refusal to register the mark HOUSE OF PRIM for goods and services related to home organization and design, concluding that confusion is unlikely with the registered mark PRIM for "Home organization services, namely, sorting and organizing household belongings." The Board found the marks confusingly similar and the services related, but not applicant's goods. However, a prior settlement agreement between applicants and the cited registrant outweighed all the other DuPont factors. In re Prim LLC, Serial Nos. 98301711, 98301726, 98301752, 98301773, 98301804 (March 27, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The tenth DuPont factor, the market interface between the applicant and registrant, required an evaluation of a March 11, 2022 “Settlement Agreement” between them. "'[D]epending on the circumstances,' agreements between the involved parties 'may ... carry great weight' since the parties are in a 'better position to know the real life situation than bureaucrats or judges."

In the Settlement Agreement, applicant promised to re-brand from PRIM LIVING to HOUSE OF PRIM and the parties agreed that this new mark would not cause confusion with the PRIM mark. Applicant agreed not to apply to register PRIM or any similar variant, including PRIM LIVING. The parties promised continued cooperation in taking reasonable action to avoid confusion, and to make reasonable efforts to rectify any instances of likelihood of confusion that came to their attention.

The Examining Attorney argued that the settlement agreement does not function as a consent to registration of the mark in these applications because it was executed before the applications were filed. The Examining Attorney also argued that the agreement does not contain provisions “fundamental to a consent agreement.”

The Board observed that in In re Dare Foods, Inc., No. 88758625, 2022 TTAB LEXIS 92, at *24, it stated that it was aware of "no authority requiring a consent agreement to discuss all of these factors [listed in Four Seasons Hotels] in order to be probative.”

In this case, the parties’ settlement agreement, while not technically a consent to registration of a mark in any particular application, is an acknowledgment of a broader settlement relating to PRIM LIVING and other confusingly similar variants, and also addresses Applicant’s ability to rebrand with the mark that is the subject of these applications. * * * While the settlement agreement does not include some of the provisions we would typically see in a consent agreement, it was reached after the parties had been seeking to resolve a dispute regarding marks Registrant determined were confusingly similar (infringing) to her PRIM mark.

The Board noted that the agreement explicitly refers to Registrant’s PRIM registration. "One would expect that, if the agreement’s broad provision that Applicant rebrand as HOUSE OF PRIM covered only the right to use that mark but not the right to register it for home organization services, the agreement would have said so explicitly."

The settlement agreement strongly supports Applicant’s position of no likelihood of confusion based on the reasoned analysis of Applicant and Registrant who understand the nature of their businesses.

The Board concluded that the agreement is entitled to "substantial weight," and it "outweighs the factors that indicate confusion is likely in all five applications."

Read comments and post your comment here.

TTABlogger comment: If during negotiations, applicant wanted to be able register HOUSE OF PRIM, it could have expressly included that in the agreement. So, I think the absence of such a provision is meaningless. The fact is that the registrant did not consent to registration. Will we see an opposition?

Text Copyright John L. Welch 2026.

TTAB Reverses CASA BLANCA Refusal: UPSTO Fails to Prove Relatedness of Tequila and Wine

2026-03-30T09:46:00.004-04:00

The Board reversed the USPTO's refusal to register the mark CASA BLANCA for "distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant,” concluding that the USPTO failed to prove likely confusion with the registered mark CASABLANCA for "wine." The Board found the marks to be "nearly identical" and the trade channels overlapping, with the goods subject to impulse purchases. However, it also found the cited mark to be "highly suggestive" and the evidence insufficient to establish that "Applicant’s and Registrant’s particular types of alcoholic beverages are related." In re Lucien G. Lallouz, Serial No. 90782980 (March 27, 2026) [not precedential] (Opinion by Judge Angela Lykos).

The Goods: The Examining Attorney submitted only two examples of third-party uses under the same mark, and no third-party registrations covering both tequila and wine. "Two examples of third-party marketplace uses is unconvincing, especially when there is no indication whether Applicant’s specific type of tequila is made by any of these wineries/distilleries."

The Examining Attorney also contended that the goods are related because they are "complementary beverages often used together as cocktail mixers." The Board observed, however, that "[i]t is not unusual for recipes to contain many different ingredients and consumers are not likely to assume merely from the fact that two items are called for in the same recipe that they necessarily emanate from the same source of origin."

The mere existence of a handful of cocktail recipes incorporating wine and tequila does not mean that consumers recognize both beverages as ingredients commonly used together for cocktail recipes. * * * [W]e cannot extrapolate from this evidence that consumers following each recipe believe that these ingredients come from the same source. There is no evidence that the recipes use the same brands producing both wine and tequila. For the most part, wine and tequila are distinct types of alcoholic beverages consumed individually, not together, and this evidence fails to show otherwise.

The Examining Attorney lastly argued, based on a single article, that wine and tequila are related because tequila can be made using wine-making techniques. "Again, this evidence fails to show wine and tequila offered to consumers from the same entity under the same trademark."

The Board concluded that the second DuPont factor weighed against a likelihood of confusion finding, noting that "on a more developed record" it might rule otherwise.

Channels of Trade: The evidence showed that the normal trade channels for both tequila and wine include U.S. importers, wholesale distributors, online retailers, and the premises of winery/distillery tasting rooms. Applicant Lallouz argued that "in retail settings, wines are typically segregated and displayed separately from distilled spirits, a segregation that extends to online platforms and restaurant menus." The Board was unmoved: "Consumers browsing the aisles in retail liquor establishments are likely to 'jaunt to another counter or section of the store' and encounter a variety of alcoholic beverages and spirits, including wine and tequila."

Strength of the Cited Mark: The evidence revealed that "Casablanca" refers to wine originating from the Casablanca Valley in Chile, "making the cited mark highly suggestive." Third-party marketplace use of "Casablanca Valley" in connection with wine to indicate geographic origin "does not demonstrate commercial weakness because none of the examples involve use of 'Casablanca Valley' as a trademark. But with over 1200 examples, it is a strong indicator of conceptual weakness as it signals geographic origin." The Board therefore found that the sixth DuPont factor favored Applicant Lallouz.

Conclusion: Weighing the relevant DuPont factors, the Board found that "the lack of competent evidence to prove the relatedness between the goods, combined with the cited mark’s relative conceptual weakness in connection with wine, outweighs the virtual similarity of the marks and overlapping trade channels." It concluded that confusion is unlikely.

Read comments and post your comment here.

TTABlogger comment: Will we see an opposition by the cited registrant?

Text Copyright John L. Welch 2026.

Prof. Curtin Files Reply to Opposition to Petition for Certiorari in RAPUNZEL Consumer Standing Case

2026-03-27T08:24:00.005-04:00

Petitioner/Opposer/Appellant Rebecca Curtin has filed her Reply [here] to UTH's Opposition to her Petition for Writ of Certiorari. The case has been distributed for conference on April 17, 2026.

The Court has long held that the standards applicable to administrative agencies and federal courts differ. Indeed, the Court eighty-five years ago instructed that the “vital differentiations between the functions of judicial and administrative tribunals” must be observed. FCC v. Pottsville Broad. Co., 309 U.S. 134, 144 (1940). The Federal Circuit has disregarded that admonishment by imposing doctrines restricting access to federal courts, such as the zone-of-interests test, on administrative trademark opposition proceedings. That not only conflicts with this Court’s decisions, but also with the decisions of the Third, Fifth, and D.C. Circuits, which hold that such restrictions do not apply to administrative agencies.
* * * * * * * *
The importance of the issue presented further reinforces the need for this Court’s review. And this case is the appropriate vehicle to address the question presented. UTH suggests the result would be the same under the test that existed before the Federal Circuit’s errant decision in this case. But that suggestion ignores the record in this case. The Trademark Trial & Appeal Board (“Board”) concluded that Curtin satisfied the long-standing test from Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999), that governed who may participate in opposition proceedings. Only after improperly importing the test from Lexmark—requiring the zone-of-interests and proximate-causation tests—did the Board change position. The resolution of the question presented is of consequence to this case.

Read comments and post your comment here.

Text Copyright John L. Welch 2026.

TTABlog Test: Is DUNDER MIFFLIN Confusable with MIFFLIN for Paper Products?

2026-03-26T08:59:00.007-04:00

The Office [The USPTO, that is] refused to register the proposed mark DUNDER MIFFLIN for various goods in class 16, including gift wrapping paper, paper gift wrapping ribbons, printed greeting cards, and paper party supplies, finding confusion likely with the registered mark MIFFLIN for "paper labels and tags” and “plastic ornamental bows for decoration and gift wrapping and other paper products. The Board found the goods to be complementary and related, but what about the marks? How do you think this came out? In re NBCUniversal Media, LLC, Serial No. 97831933 (March 24, 2026)[not precedential] (Opinion by Judge Elizabeth A. Dunn).

The Examining Attorney argued that MIFFLIN (the name of Pennsylvania's first governor) is the dominant word in Applicant NBCUniversal's mark: "MIFFLIN could be seen as a shortened version or reference to DUNDER MIFFLIN. For example, DUNDER could be considered suggestive of dunderhead, which refers to an idiot in colloquial terms and thus act as a modifier to MIFFLIN, evoking humorous buffoonery."

The Board didn't buy it. There was no evidence that DUNDER is a dictionary term or has any descriptive significance vis-a-vis the involved goods. "The record provides no reason to find that the term DUNDER would be perceived as a form of 'dunderhead,' or that the term DUNDER would be perceived as a modifier of MIFFLIN."

Based on its fanciful nature and first position in the mark, we find the term DUNDER is slightly dominant in creating the commercial impression of Applicant’s DUNDER MIFFLIN mark. * * * In fact, we find that the mark DUNDER MIFFLIN creates a different commercial impression than the one created by the mark MIFFLIN alone.

Google search results for DUNDER MIFFLIN uniformly refer to the fictional paper supply company which is the setting for the television show "The Office." An article from Variety states that "The Office" was "by Far the Most-Streamed TV show in 2020," according to Nielsen ratings. Merchandise from Amazon, Peacock Shop, Etsy, and Spencer’s bear the DUNDER MIFFLIN mark and associate the mark with the show.

The Examining Attorney oddly argued that the comparative fame of the involved marks "is not significant” in an ex parte appeal. While that may be true in the abstract, "determining the connotation and overall commercial impression created by the two marks is part of the likelihood of confusion analysis." The Board found the evidence of how the purchasing public encounters the DUNDER MIFFLIN mark to be directly relevant to the assessment of the mark’s connotation and commercial impression. "That the same type of evidence may be considered in connection with fame does not bar its consideration."

The Board also disagreed with the Examining Attorney’s argument that “[A]pplicant has not established the relevant consumer of the applied-for goods would readily recognize the reference of DUNDER MIFFLIN to a fictional paper company associated with The Office.” The Board noted that "[t]he paper labels and tags and paper gift wrap involved here are paper products available to the general consumer. The Office was a television show about a paper company, and originally available to the general consumer on a television network, and, as demonstrated by the article in Variety, subsequently viewed by many more consumers via streaming services."

We find that the fanciful prefatory term DUNDER alters the overall commercial impression created by the term MIFFLIN alone. In addition, we find significant evidence that the connotation of the term DUNDER MIFFLIN to the general consumer of Applicant’s goods is a reference to the setting for the television show “The Office.”

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I used to watch the original British version of "The Office," when I still liked Ricky Gervais.

Text Copyright John L. Welch 2026.

TTAB Reverses 2(d) Refusal of GOOD TIMES for Bourbon over Five "GOOD TIME(S)" Registrations for Alcoholic Beverages

2026-03-25T10:02:00.006-04:00

The USPTO cited five registrations in refusing to register the mark GOOD TIMES for "bourbon," all of the registrations owned by different owners. Although the goods are legally identical or related, the Board found that the differences in the marks and the conceptual weakness of "good times" (the first and sixth DuPont factors) outweighed the second and third factors. In re Genuine Risk, Serial No. 90170906 (March 23, 2026) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Examining Attorney cited the following registered marks:

GOODE TIMES GUARANTEED for “alcoholic beverages except beers”
LET THE GOOD TIMES ROLL for “distilled spirits”
WE GROW GOOD TIMES for “alcoholic beverages except beers; distilled spirits”
CERTIFIED GOOD TIME and Design for “distilled spirits; vodka"
GUARD THE GOOD TIMES for “whiskey”

The Goods/Trade Channels/Customers: Because the broad identifications in each of the five cited registrations encompass Applicant Genuine Risk's more narrowly defined goods, the second DuPont factor "strongly" favored a finding of likelihood of confusion. Furthermore, since the involved goods are legally identical and there are no restrictions as to trade channels or classes of purchasers in any of the cited registrations or the involved application, the Board presumed that the goods are provided in the same trade channels and are offered to the same classes of purchasers. And so, the third DuPont factor also weighed "heavily" in favor of finding a likelihood of confusion.

Strength of the Cited Marks: Genuine Risk argued that the term "GOOD TIMES" is suggestive and inherently weak and diluted when used in connection with the goods listed in the cited registrations because it is "suggestive of the merriment consumers anticipate enjoying when imbibing alcoholic beverages." The Board agreed.

We find that the cited GOOD TIMES-formative marks themselves, each of which is combined with other terms and each of which covers one or more pertinent alcoholic beverages, show that marks containing the term GOOD TIMES for alcoholic beverages can be distinguished by additional matter and/or the differing connotations conveyed in light of the conceptual weakness of the “GOOD TIMES” element.

Genuine Risk did not submit any evidence of third-party use of marks identical or similar to the cited marks, and third-party registrations alone do not establish weakness in the marketplace. However, the registration evidence did show that "use of the wording GOOD TIMES in marks used in connection with alcoholic beverages has a commonly understood suggestive meaning and, therefore, this component of the cited marks is conceptually weak."

In light of its conceptual weakness, the GOOD TIMES component of each of the cited marks is entitled to only a limited scope of protection. Accordingly, the sixth DuPont factor favored a finding that confusion is not likely.

Comparing the Marks: The Board found that the cited marks and the mark GOOD TIMES "are somewhat similar visually and aurally in light of the shared wording GOOD TIMES. However, the similarity of the marks ends there." Bearing in mind that the wording GOOD TIMES is conceptually weak, the Board found that the cited marks "have differing connotations and overall commercial impressions when compared to Applicant’s mark."

Indeed, the structure and distinctive sentiments expressed in each of the cited marks are absent from Applicant’s mark. For example, the cited mark GUARD THE GOOD TIMES connotes protecting the good times one is experiencing. Further, the cited mark LET THE GOOD TIMES ROLL suggests that one should keep on having a good time. These connotations and commercial impressions are not present in Applicant’s mark. Moreover, given that the cited marks use “GOOD TIMES” as part of an overall distinctive phrase, we find it unlikely that consumers will view Applicant’s mark as a shortened form of any of the cited marks.

In sum, the Board found that the involved marks are "sufficiently dissimilar in structure, meaning and overall commercial impression, notwithstanding any similarities in sound and appearance due to the shared wording GOOD TIMES." Therefore, the first DuPont factor favored a finding that confusion is not likely.

Conclusion: The Board deemed the first and sixth DuPont factors to be "pivotal" and to outweigh the legal identity of the goods under the second DuPont factor, as well as the presumed identical trade channels and classes of purchasers under the third DuPont factor.

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TTABlogger comment: Good times for Genuine Risk! Would consumers think that one or two of the registered marks are slogans used by Genuine Risk: for example, LET THE GOOD TIME ROLL?

Text Copyright John L. Welch 2026.

United TM Holdings Files Opposition to Petition for Certiorari in RAPUNZEL Consumer Standing Case.

2026-03-24T09:53:00.003-04:00

Applicant/Appellee/Respondent United Trademark Holdings, Inc. has filed a Brief in Opposition [pdf here] to Professor Rebecca Curtin's Petition for a Writ of Certiorari [here], now pending before the Supreme Court in the RAPUNZEL trademark opposition.

You will recall that the CAFC affirmed the Board's holding that "only commercial actors affected by the mark’s registration fall within the zone of interests to oppose the registration as generic, descriptive, or [failing to function as a trademark]," and it upheld the Board's dismissal of mere consumer Curtin's opposition to registration of the mark RAPUNZEL for dolls and toy figures on the ground of lack of statutory standing. Curtin v. United Trademark Holdings, Inc., 2025 USPQ2d 784 (Fed. Cir. 2025) [precedential]. Two excerpts from the Preliminary Statement in UTH's Brief in Opposition are set out below:

The Petition for a Writ of Certiorari (“Petition”) should be denied. The Federal Circuit’s unanimous decision faithfully applies the analytical framework this Court established in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), to determine whether Petitioner, a self-described consumer and not a competitor, falls within the class of persons Congress authorized to bring an opposition proceeding under the Lanham Act (the “Act”). The decision below creates no circuit split, conflicts with no precedent of this Court, and raises no question of national importance warranting the exercise of this Court’s certiorari jurisdiction. As noted, Petitioner is not a competitor of Respondent, but a law professor who has publicly promoted her role in this dispute, suggesting that her interest in appearing before this Court is principally academic rather than grounded in the vindication of a cognizable legal injury.

* * * * * * * *

Petitioner’s attempt to recast this case as presenting the question whether Article III standing requirements apply to administrative proceedings fundamentally mischaracterizes the decision below. The Federal Circuit did not impose constitutional standing requirements on the Board. It engaged in precisely the exercise this Court prescribed in Lexmark: interpreting the statutory text of 15 U.S.C. § 1063 to determine the class of persons Congress authorized to bring an opposition. That exercise in statutory construction is not only appropriate but required, regardless of the forum.

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TTABlogger comment: Do you think the Court will grant the petition? BTW: that doll looks like Paige Bueckers to me.

Text Copyright John L. Welch 2026.

TTAB Requires Disclaimer of "MADE BY DENTISTS" in Five Word-and-Design Marks for Toothbrushes and the Like

2026-03-23T09:37:00.006-04:00

The Board affirmed the USPTO's refusal of the mark shown immediately below, along with four other similar word-plus-design marks (same font and wording, different cartoon designs) for mouthwash, teeth-whitening products, dental cleaning tools, toothbrushes, and the like, absent a disclaimer of the phrase MADE BY DENTISTS. Spotlight argued that the products are not made by dentists, and therefore "imagination, thought, and perception" is required "to reach a conclusion as to the nature of the goods recited in the Application." In other words, according to Spotlight, the phrase is merely suggestive. Not so, said the Board. In re Spotlight Oral Care Limited, Serial Nos. 79380381 et al. (March 19, 2026) [not precedential] (Opinion by Judge David K. Heasley).

Examining Attorney Jesse Nelman maintained that "MADE BY DENTISTS" immediately conveys to consumers a feature or characteristic of the goods - that they are designed by dentists, since Spotlight is owned by dentists. Spotlight, pointing to dictionary definitions, asserted that "MADE" means "artificially produced" or "put together of various ingredients," and "BY" means "through or through the medium of" or "through the agency or instrumentality of." In other words, the goods are not made by dentists - "they are not put together, manufactured, constructed, shaped, or formed by dentists."

The Board rejected Spotlight's narrow definition of "made," pointing out that "made" can also mean "more generally, '[p]roduced or created artificially' or '[h]aving been invented,' or '[t]o cause to exist or happen; bring about; create.'" Moreover, the word should be understood "in relation to the goods or services for which registration is sought, the context in which the mark is used, and the possible significance that the mark is likely to have to the average purchaser encountering the goods or services in the marketplace."

Here, if “MADE” means “[t]o cause to exist or happen; bring about; create,” then “MADE BY DENTISTS,” considered in its entirety and in the context of dental goods such as toothpaste, mouthwash and toothbrushes, comprehends the contributions made by the dentists who founded Applicant, provided the designs, specified the ingredients, and directed how the ingredients were to be put together into the dental goods. *** In that sense, the dentists “MADE” the dental goods in the same sense that Henry Ford “made” the Model T, even if he didn’t assemble the cars by hand.

The evidence showed that others in the dental field use the phrase "made by dentists" to describe their products. Furthermore, "[i]t is well-established that a term which describes the provider of goods or services is also merely descriptive of those goods and services.” In re Major League Umpires, No. 75154506, 2001 WL 777067, *2 (TTAB 2001) (protective vest was invented by one of the owner/umpires).

Spotlight submitted some two hundred registrations and allowed applications containing “MADE BY _____” without disclaimers: e.g., MADE BY TWO HAIRY GUYS for wax for removing hair; MADE BY FIREMEN FOR FIREMEN for fire-fighting equipment [FIREMEN disclaimed]. The Board, however, found that evidence of little probative value. Most of the marks did not refer to any purveyor or designer of the goods and others did not identify a type of professional or entity. "Thus, most of Applicant’s registered third-party marks do not indicate the provenance and characteristics of their identified goods."

The remaining registrations were "too few in number and result from the decisions of other examining attorneys, not the Board." "[P]rior decisions and actions of other examining attorneys in registering other marks have little evidentiary value and are not binding on the USPTO or the Board."

[W]e have no doubt that consumers who see the term MADE BY DENTISTS in Applicant’s marks, used on the identified goods, would immediately understand a significant characteristic is that the goods are designed and provided by dentists. The definitions of the words MADE and BY show their descriptiveness in this context, and as the above evidence makes clear, the combination of MADE BY and DENTISTS indicates skilled professional providers of the goods.

And so, the Board upheld the disclaimer requirement, allowing Spotlight thirty-days within which to submit the required disclaimer, in which case the applications will be passed to publication.

Read comments and post your comment here.

TTABlogger comment: Looks like the Board brushed off Spotlight's oral argument.

Text Copyright John L. Welch 2026.

TTABlog Test: Are Cat Food and Cat Food Supplements Related to Cat Litter Under Section 2(d)?

2026-03-20T09:32:58.488-04:00

The USPTO refused to register the mark ZENCAT in the word-and-design form shown below, for cat food and nutritional supplements for cats, concluding that confusion is likely with the registered mark ZEN KITTY for cat litter [KITTY disclaimed]. The Board found that the similarity of the marks weighed "strongly" in favor of affirmance, but what about the goods? How do you think this came out? In re Phoenix Niesley-Lindgren Watt, Serial No. 98009242 (March 18, 2026) [not precedential] (Opinion by Judge Angela Lykos).

Applicant Watt got off on the wrong paw when she attempted to submit additional evidence with her appeal brief and her reply brief. The Board pointed out once again that "the record should be complete prior to the filing of an appeal” and “[e]vidence should not be filed with the Board after the filing of an appeal.” See Rule 2.142(d).

As to the relatedness of the goods, Examining Attorney Javier Jaramillo relied (as usual) on third-party registrations and uses: sixteen websites offering “nutritional supplements for cats” or “cat food” and "cat litter" under the same mark (three of the websites - for ONLY NATURAL PET, PURINA, and WERUVA - offered all three); and fifteen third-party registrations covering all three. That did the trick:

[T]he Examining Attorney’s third-party evidence demonstrates that consumers are accustomed to seeing a single mark associated with a single source that offers all the relevant goods.

Because neither identification of goods includes a restriction on channels of trade or classes of consumers, the Board presumed that the respective goods travel through all usual trade channels therefor and are offered and sold to the usual customers for those goods. The third-party use evidence showed that the channels of trade overlap.

Our findings are confirmed by the Examining Attorney’s evidence of third-party websites referenced above which demonstrate that the goods are sold together. See In re Ox Paperboard, LLC, No. 87847482, 2020 WL 4530517, at *7 (TTAB 2020). Moreover, in addition to this evidence of third-party websites that offer the relevant goods, we can also presume based on common knowledge that brick-and-mortar stores and veterinarian offices also offer the relevant goods, namely, Applicant’s cat supplements and food and Registrant’s cat litter.

Applicant Watt pointed out that she owns a registration (issued in May 2018) for the same ZENCAT word-and-design mark for use in "similar trade channels prior to the granting of Registrant’s mark," and she wondered "why the mark ZEN KITTY was allowed to be registered (in April 2018) in the first place," since "ZEN KITTY is the newcomer in the cat space, not ZenCat."

The Board observed that Watt appeared to be "attempting to rely on" Strategic Partners, Inc., No. 77903451, 2012 WL 1267930 (TTAB 2012). However, that case requires, inter alia, that the goods or services in the prior registration be "identical" to those in the later application. Here, as the Examining Attorney pointed out, the goods and services in Watt's prior registration are not the same as in the instant application.

Finally, Watt argued that because her prior registration and the cited registration are allowed to co-exist, the Board should be consistent by allowing registration based on the instant application. The Board clawed back with its usual response:

The USPTO is required to apply the applicable statutory requirement to the unique facts and evidence of each case. The “Board has ‘recognize[d] that ‘consistency is highly desirable,’ [but] consistency in examination is not itself a substantive rule of trademark law, and a desire for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules.” In re Korn Ferry, No. 90890949, 2024 WL 3219482, at *5 n.13 (TTAB 2024) (cleaned up).

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Are cat toys related to cat litter under Section 2(d)?

Text Copyright John L. Welch 2026.

Unsurprisingly, TTAB Deems JAPANESE COWBOY Confusable with TOKYO COWBOY for Restaurant and Bar Services

2026-03-19T09:25:50.456-04:00

The Board affirmed a Section 2(d) refusal to register the mark JAPANESE COWBOY for "Restaurant and bar services" [JAPANESE disclaimed], concluding that confusion is likely with the registered mark TOKYO COWBOY for "bar services; restaurant services." Applicant Catch & Shoot mainly contended that COWBOY is a weak formative in the restaurant field, pointing to 15 third-party registrations og marks containing the word COWBOY. The Board was not roped in by that argument. In re Catch & Shoot, LLC, Serial No. 98888426 (March 17, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Because the cited mark is registered on the Principal Register without a claim of acquired distinctiveness under Section 2(f), the Board observed that "it is inherently distinctive, i.e., that it is at worst suggestive of the [services]." Nonetheless, an applicant may show that "the existence of third-party registrations on similar services diminish[es] the cited mark’s conceptual strength."

The Board found that 15 of the registrations submitted by the applicant were probative, including registrations for the marks COCKTAIL COWBOYS, ITALIAN COWBOY, NORTHERN COWBOY, and THE CAJUN COWBOY.

These registrations are probative to demonstrate that COWBOY is a common element in marks for restaurant and bar services. Apex Bank v. CC Serve Corp., 156 F.4th 1230, 1235 (Fed. Cir. 2025) (“The sixth DuPont factor requires the Board to consider similar marks for similar goods and services.”). This shows that the COWBOY term is relatively weak as applied to the restaurant and bar services in the cited mark. Juice Generation, 794 F.3d at 1339 (“Third party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.”).

There was no evidence of third-party use of COWBOY-formative marks in the restaurant/bar field that might affect the commercial strength of the TOKYO COWBOY mark.

The Board observed once again that "where (as here) the parties services are identical, a 'lesser degree of similarity between the marks may be sufficient to give rise to a likelihood of confusion.' Coach Servs., 668 F.3d at 1368." Applicant Catch & Shoot argued that the differences between TOKYO and JAPANESE are sufficient to distinguish the marks in sight and sound. Examining Attorney Jonah R. Berthelsen maintained that the shared term COWBOY is the dominant element in both marks, and that their overall meanings are similar (since Tokyo is a city in Japan), resulting in similar commercial impressions.

The Board noted applicant's argument that consumers often focus on the first term in marks, but here, according to the Board, consumers would focus on the marks as a whole due to their incongruous nature. Moreover, "simply replacing the word TOKYO in the cited mark with JAPANESE is unlikely to obviate confusion because consumers may mistakenly believe that the mark denotes a new line of restaurants and bars from the same owner." The Board concluded that, "[d]espite the weakness of the shared COWBOY term, . . . the marks, considered in their entireties, are similar in sight and sound, and more importantly very similar in meaning and overall commercial impression.

In this case, the second, and third DuPont factors weigh heavily in favor of likelihood of confusion given the identical nature of the services provided in overlapping trade channels to the same classes of consumers. The first factor weighs strongly in favor of a likelihood of confusion due to the shared connotation and commercial impression. These factors outweigh the sixth factor, which weighs only slightly against a likelihood of confusion.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA? Based on the third-party registration evidence, what meaning is to be ascribed to the term "cowboy" in the restaurant and bar field? Since there was no evidence that these registered marks were in use, they should have no effect on the commercial strength of the cited mark.

Text Copyright John L. Welch 2026.

TTABlog Test: Are Perfumes Related to Cosmetics for Make-Up Artist Work, Under Section 2(d)?

2026-03-18T09:33:38.189-04:00

The USPTO refused to register the marks OUD NEBULA (OUD disclaimed) and FLORAE NEBULA (FLORAE disclaimed) for “perfumes; fragrances and perfumery," finding confusion likely with the registered mark NEBULA for "Cosmetics, in particular airbrush make-up, and powders, make-up and make-up removing preparations for stage, film and television in the nature of theatre cosmetics, and cosmetics for other make-up artist work." The Board found the marks similar in appearance, sound, connotation and commercial impression. But what about the goods? How do you think this appeal came out? In re Harmonist Inc., Serial No. 98456042 (here) and 98456022 (here) (March 12, 2026) [not precedential] (Opinion by Judge Christen M. English).

The Goods: Applicant Harmonist Inc. argued that “the Examining Attorney has treated the cited registration as if it covers cosmetics in general rather than cosmetics limited to theatre cosmetics and cosmetics for other make-up artist work." The Board, however, observed that the phrase "for other make-up artist work" is a limitation on the consumers for the goods but not on the types of cosmetics that registrant offers. "'Make-up artist work' includes more than make-up artists working in stage, film and television; it encompasses all types of make-up artist work, including for events like weddings, parties and photo shoots, as well as make-up artists providing their services at cosmetic counters in retail stores."

Furthermore, the Board pointed out that "cosmetics" is a broad identification that includes perfumes. See USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) (listing “cosmetics in general, including perfumes” as an acceptable identification of goods in Class 3). "Because perfume is a type of 'cosmetic,' and 'cosmetics' are covered by Registrant’s identification, there is overlap in Applicant’s and Registrant’s goods; the goods are in-part legally identical."

The Board also found that cosmetics and perfumes are complementary products that are marketed together, sold together in sets, and often applied at the same time to enhance beauty. Third-party registration and use evidence confirmed the complementary nature of the goods.

"The normal classes of consumers for perfume thus include make-up artists – in both their professional and personal capacity – the same consumers who purchase Registrant’s goods. There is consumer overlap." The evidence also showed an overlap in trade channels, since cosmetics, including perfumes, are sold through retail beauty stores

The Board acknowledged that "make-up artists generally are likely to exercise care in purchasing cosmetics for use in their jobs. It is foreseeable that they may also exercise some degree of care in purchasing cosmetics, including perfume, for their personal use." However, since not all perfumes are expensive, the least sophisticated purchaser of perfume "would not be likely to exercise a heightened degree of care."

[B]ecause make-up and perfume are sold by the same entities under the same mark, sometimes packaged together as a set, make-up artists familiar with Registrant’s NEBULA cosmetics who encounter Applicant’s [marks] perfume and fragrances may mistakenly believe that Registrant is expanding from make-up into a line of perfumes, and expanding from cosmetics for make-up artist work to cosmetics for the general public.

The Marks: The Board accepted Harmonist's argument that "one meaning and commercial impression of the Cited Mark NEBULA for Registrant’s goods may 'suggest[] the shimmery, luminescent makeup colors associated with nebula' as 'many nebulae are visible due to fluorescence caused by embedded hot stars….'" The Board noted, however, that another meaning and commercial impression of the cited mark is of a "spray cosmetic that produces a cloud similar to a nebula." "Applicant’s mark has a similar meaning and commercial impression as it is likely to suggest a perfume spray that produces a scented nebula-like cloud."

The Board concluded that "[g]iven the similarities between the marks . . . consumers may perceive Applicant’s mark OUD NEBULA [and FLORAE NEBULA] as a variation of Registrant’s NEBULA mark identifying a companion line of products or may otherwise mistakenly believe that Applicant’s goods are associated with or sponsored by Registrant."

And so, the refusals were affirmed.

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2026.

TTABlog Test: Is VEGGIES IN EVERY BITE Merely Descriptive of Pasta?

2026-03-17T09:46:13.877-04:00

In November 2024, the Board suspended the appeal from a failure-to-function refusal of VEGGIES IN EVERY BITE for "pasta, macaroni and cheese, pasta sauce, pizza, pizza crust, croutons, frozen meals consisting primarily of pasta or rice" and remanded the application to the USPTO for consideration of additional grounds for refusal, including mere descriptiveness under Section 2(e)(1). [TTABlogged here]. The Office then added a mere descriptiveness refusal. Applicant Litehouse on appeal argued that the mark is only suggestive because "it does NOT directly tell the viewer what the goods are, but instead requires the viewer to exercise imagination, thought or perceptions." How do you think this appeal came out? In re Litehouse, Inc., Serial No. 97501419 (March 11, 2026) [not precedential] (Opinion by Judge Angela Lykos).

Litehouse's argument is high on the "Top Ten Losing TTAB Arguments" list: mere descriptiveness is not a guessing game. "The determination of whether a proposed mark is merely descriptive must be made in relation to the goods for which registration is sought, not in the abstract." Bayer, 488 F.3d at 964.

In other words, the question is not whether someone presented only with the proposed mark could guess the goods listed in the identification. Rather, the question is whether someone who knows what the goods are will understand the proposed mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254 (Fed. Cir. 2012) (internal citation omitted).

The Board observed that "a proposed mark that refers to an ingredient is merely descriptive." TriVita, Inc., 783 F.3d at 874. The record shows that Applicant’s processed food items are made from vegetables. Litehouse's own website uses the mark descriptively: "Say hello to your new favorite pasta! Our 3-ingredient pasta is filled with veggies in every bite, and takes everything that you love about pasta and levels it up a notch." The Board pointed out that "An applicant’s own 'marketing materials may be … 'the most damaging'' evidence of mere descriptiveness." In re Berkeley Lights, Inc., No. 88895703, 2022 TTAB LEXIS 382, at *17-18. Moreover, competitors commonly use the phrase in advertising their pasta, mac & cheese, and pizza.

The evidence not only shows the phrase “Veggies in Every Bite” as a descriptive phrase used by third-parties but also demonstrates that consumers specifically look for pasta, pizza and rice composed of vegetables in lieu of semolina flour or wheat for nutritional value or other health reasons. Competitors in the food industry should be free to use this merely descriptive language when describing their own items to the public in advertising and marketing materials.

And so, the Board affirmed the Section 2(e)(1) mere descriptiveness refusal, declining to reach the failure to function refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2026.

TTAB Finds UX ACADEMY Generic for . . . . Guess What?

2026-03-16T09:41:00.005-04:00

The Board affirmed a genericness refusal of the proposed mark UX ACADEMY for "Education services, namely, providing live and on-line classes, seminars, workshops in the field of user interface and user experience design" [ACADEMY disclaimed]. Alternatively, the Board considered Applicant Designlab's claim that the term is at most descriptive and has acquired distinctiveness, but the Board rejected that claim as well. In re Designlab Learning, Inc., Serial No. 98192682 (March 13, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

"Whether a term is generic 'turns on whether that term, taken as a whole, signifies to consumers the class of ... services.'" Booking.com, 591 U.S. at 557. The Board found, as usual, that the recitation of services in the application defined the genus. The relevant consumers comprise "all potential purchasers of these services, given that the identification of services contains no limitations as to channels of trade or classes of consumers."

The Board first considered each term in the proposed mark "as a step on the way to an ultimate determination of whether the proposed mark, as a whole, is generic." The evidence submitted by Examining Attorney Drew Sander showed that "UX has a well-recognized meaning and is substantially synonymous with 'user experience.'" Designlab's specimen of use (shown above) offered courses in UX design.

The Board found that "UX" is generic because consumers "would immediately understand UX as referring to the subject matter of the courses." [Note: Professor McCarthy has repeatedly pointed out that "referring to" is not the test for genericness -- ed.]. Based on dictionary definitions, the Board found that ACADEMY is also generic, a point that Designlab appeared to concede.

As to the combined term, the evidence showed that third parties use UX and ACADEMY together "to refer to services that are effectively identical to Applicant’s, namely, educational services in the field of user experience design." [refer to? - ed.].

Designlab argued that UX "suggests or describes the training services offered by Applicant,” and when combined with ACADEMY creates a non-generic term. It pointed to a number of registrations for ACADEMY-formative marks (such as ALARM ACADEMY and GRILL ACADEMY) that include a disclaimer of “academy” and a claim of acquired distinctiveness under Section 2(f). The Board brushed them off: "Marks that are merely descriptive or generic do not become registrable simply because other seemingly similar marks appear on the register.” Also, for the umpteenth time the Board stated that it is "not bound by prior decisions made in connection with different marks, and each case must be decided on the proceeding record before us and on its own merits."

And so, the Board found "the meaning of the compound term UX ACADEMY to be no more than the sum of its individual generic parts, and thus it is generic and not registrable as a whole."

Assuming arguendo that UX ACADEMY is not generic but only highly descriptive, the Board considered Designlab's Section 2(f) claim and found the evidence wanting. "Despite Applicant’s arguably substantial gross sales and length of use, there is no evidence of the extent to which the public perceives the term UX ACADEMY as indicating source in Applicant." Its evidence of sales and advertising were imprecise, its own use of the term UX ACADEMY was preceded by the word Designlab, diluting the impact of UX ACADEMY. Moreover, there was evidence of third parties using names "highly similar to or including UX ACADEMY for related services."

[Designlab's] evidence, much of which is vague, is outweighed by other evidence showing that the phrase UX ACADEMY is – at best – highly descriptive, coupled with the absence of any direct evidence from relevant consumers showing recognition of the wording by consumers as a source indicator for Applicant’s services.

The Board concluded that "given the highly descriptive nature of the term, much more evidence (especially in the form of direct evidence from customers) than what Applicant has submitted would be necessary to show that the designation has become distinctive as an identifier of the source of Applicant’s services."

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TTABlogger comment: Is UX ACADEMY the "generic name for the . . . services" (See Section 14(3))? I think not.

Text Copyright John L. Welch 2026.

TTAB Grants Petition to Cancel Registration of BMF For Media Production Services Due to Nonuse as of SOU Filing Date

2026-03-13T09:17:00.007-04:00

The Board granted a petition for cancellation of a registration for the mark BMF for a broad range of entertainment and media production services, finding that Registrant Byron Belin's mark was not in use for the recited services when he filed his statement of use in the underlying application. Belin's evasive testimony and lack of business records regarding use of the mark led the Board to find that Opposer Zuffa (an American sports promotion company specializing in mixed martial arts) had established nonuse by a preponderance of the evidence. Zuffa, LLC v. Byron Belin, Cancellation No. 92077633 (March 10, 2026) [not precedential] (Opinion by Judge Thomas W. Wellington).

To prove nonuse as of the SOU deadline, Petitioner Zuffa relied on indirect evidence and reasonable inferences to "prove a negative." Belin, when deposed in March 2024 - only four years after the relevant date - was asked whether he was using the BMF mark in connection with all twelve services listed in his registration when he signed his SOU in January 2020. His answer: "I don't recall." When pressed about advertising and first use dates for each of the twelve listed services, Belin repeatedly testified that he could not recall, or "my attorney has all that." The Board, citing Nationstar Mortgage LLC v. Ahmad, found Belin's testimony "not at all credible," noting that a person in his position "would normally be expected to know" basic information about his own alleged use of a mark.

Belin's documentary evidence fared no better. The only pre-deadline sales documents he produced were "seriously flawed:" a "sales receipt" and a "payment receipt" purporting to show a single sale or rental of prop money and a prop gun - documents that, as Beline admitted, were prepared by the buyer. The "sales receipt" had "BMF" on the letterhead; the "payment receipt" was addressed to HeataHD Visuals but was signed "Thanks, HeataHD Visuals." Belin admitted that he handwrote "For BMF Prop Money" at the bottom of the payment receipt. The Board was unmoved by the argument that selling prop money to a videographer constitutes use of a mark in connection with multimedia entertainment production services. "Put simply, we are not convinced that the single sale of “prop money” is tantamount to multimedia production services."

Other evidence also fell short. A confidentiality agreement with a photographer was illegible and appeared to be signed by only one party. A declaration from a script writer was undated and had the declarant's own surname misspelled - including at the signature line. Agreements with actors showed only preparations for a production, not actual rendition of any listed services. And actual copies of the YouTube videos Belin claimed to have posted were never introduced into the record; providing a hyperlink, the Board reminded, is not sufficient to make content of record.

Drawing adverse inferences from both the evasive testimony and the absence of business records, and "left with no credible evidence in the record that Respondent, prior to January 30, 2020, used BMF as a mark in connection with the services listed in his registration," the Board found that Petitioner Zuffa had established nonuse by a preponderance of the evidence, and so it ordered that the BMF registration be cancelled.

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TTABlogger comment: In March 2025, Belin's trademark infringement action against rapper 50 CENT and several media companies was suspended pending the outcome of this cancellation proceeding. (C.D. Cal. Civil Action No. 2:21-cv-09586). The district court had dismissed the case in 2023 based on fair use under Rogers v. Grimaldi, but the Ninth Circuit vacated and remanded in view of the Supreme Court's Jack Daniels decision limiting the scope of the Rogers doctrine. The appellate court directed the district court to "consider in the first instance whether the defendants use the BMF mark as a trademark."

TTABlog Test: Are Safari Expedition Services Related to Restaurant Services Under Section 2(d)?

2026-03-12T10:44:00.003-04:00

The USPTO refused to register the mark WHERE LIFE HAPPENS for "arranging and conducting safari expeditions for recreational purposes," finding confusion likely with the identical mark registered for "restaurant services." The fact that the marks are identical weighed "heavily" in favor of affirmance, and it also lessened the degree of similarity of the services needed to support the refusal. How do you think this came out? In re Aggressor Adventures, LLC, Serial No. 98356369 (March 9, 2026) [not precedential] (Opinion by Judge Jessica B. Bradley).

The Examining Attorney argued that the term "safari" included any recreational tour or expedition, pointing to a second-listed meaning found in the Merriam-Webster dictionary. However, the Board, relying on the primary definition in that dictionary and on other dictionaries, as well as on Aggressor's website, agreed with Aggressor that a "safari" is "specific type of journey or expedition that includes viewing and/or hunting game, and does not encompass other kinds of recreational tours or expeditions."

To establish relatedness between safari expeditions and restaurant services, the Examining Attorney submitted evidence of eighteen third-party uses. The Board found them wanting. Five did not reference either of the involved services. Of the remaining thirteen, twelve involved recreational activities with no connection to safari expeditions - scuba and water sports, fly-fishing, catamaran cruises, snowcat and snowmobile excursions, and the like. Only one third-party, a Hard Rock hotel in Punta Cana, in the Dominican Republic, offered a "safari half day tour," but the accompanying screenshots showed no restaurant services.

The Office's third-party registration evidence also fell short. Only three of the registrations covered both safari expedition services and restaurant services, and two of those were owned by the same entity. Although Aggressor's owns prior use-based registrations for other marks that cover both services, the Board found that on balance - given that the vast majority of the evidence showed only one or the other service, not both - "the evidence of record does not show that consumers are accustomed to seeing Applicant’s and Registrant’s services originating from the same source."

The Examining Attorney argued that because neither identification contained restrictions, the services should be presumed to travel in the same channels to the same purchasers. Wrong. That presumption applies only when the services are identical or legally identical. When the services differ, the proper presumption is merely that each is offered in the normal channels of trade for that particular type of service. The evidence did not reveal any overlap between the normal channels for safari expeditions and those for restaurant services.

As to purchaser care, the Board noted that purchasers of safari expedition services are likely to exercise some care, while restaurant services can range from fast-casual impulse purchases to fine dining. The Board deemed this DuPont factor to be neutral.

Balancing the relevant factors, the Board concluded that "the differences in the services, channels of trade, and classes of consumers outweigh the identity of the marks." And so, the refusal to register was reversed.

Read comments and post your comment here.

TTABlogger comment: Aggressor Adventures offers some amazing tours.

TTAB Tosses Out Cancellation Petition: Untimely Section 2(d) Claim Masquerading as a Section 14(3) Claim

2026-03-11T08:07:00.005-04:00

Finding petitioner's Section 2(d) claim time-barred and its Section 14(3) misrepresentation claim wholly deficient, the Board denied a petition for cancellation of a registration for the mark CAMP AWESOME for "child care services." Petitioner, alleging use of the name "Camp Awesum" since 2014, had filed two applications to register that mark for "providing camps for persons with intellectual or developmental disabilities services,” but the applications were blocked by Respondent O'Brien's 2015 registration. The Board was in O'Brien's camp. Camp Awesum, Inc. v. James M. O’Brien, Cancellation No. 92084926 (March 6, 2026) [not precedential] (Opinion by Judge Robert Lavache).

Likelihood of Confusion: The only ground for cancellation set out in the petition for cancellation (filed in April 2024) was likelihood of confusion under Section 2(d). However, since O'Brien's registration was more than five years old at the time the petition was filed, the Section 2(d) claim was barred by Section 14 of the Lanham Act. The Board observed that "[u]nder Trademark Act Section 14, a registration that has existed for at least five years on the Principal Register may be cancelled only for a very limited set of potential grounds, including genericness, functionality, abandonment, fraud, and misrepresentation of source." "Accordingly, Petitioner’s putative likelihood-of-conclusion claim is time-barred under Section 14(3) and we cannot consider it."

Misrepresentation of Source: In its petition for cancellation, petitioner did not mention its Section 14(3) misrepresentation claim. However, on the ESTTA cover sheet it checked the box for that claim (but not the Section 2(d) box).

Noting that a Section 14(3) claim for misrepresentation of source is not barred by Section 14, the Board pointed out this claim "refers to situations where it is deliberately misrepresented by or with the consent of the registrant that goods and/or services originate from a manufacturer or other entity when in fact those goods and/or services originate from another party."

[A] misrepresentation-of-source claim goes beyond mere likelihood of confusion and requires pleaded facts reflecting the respondent’s “deliberate misrepresentation” of the source of the petitioner’s services; the respondent’s “blatant misuse of the mark” in a manner calculated to trade on the goodwill and reputation of the petitioner; or conduct amounting to the respondent’s “deliberate passing-off” of the petitioner’s services as those of the respondent. Otto Int’l, 2007 TTAB LEXIS 62, at *9.

The Board found the record to be the devoid of any pleading, argument, or evidence pertinent to such a claim. "In fact, after selecting the relevant Section 14(3) misrepresentation-of-source claim in the ESTTA petition form, Petitioner did not again refer to the claim in the body of the petition, let alone plead the elements of the claim." In its briefs, petitioner again did not mention this claim. It addressed priority and various DuPont factors and stated that the issues were priority and likleihood of confusion.

[W]e find that this is a case of a “Section 2(d) claim masquerading as a misrepresentation-of-source claim.” Bayer, 2009 TTAB LEXIS 203, at *17 (cleaned up). Thus, the misrepresentation-of-source claim was not sufficiently pleaded and we may deny the petition for that reason alone. Alternatively, putting aside the insufficiency of the pleading, Petitioner otherwise waived the claim by failing to argue the claim in its brief.

And so, the Board denied the misrepresentation-of-source claim.

Read comments and post your comment here.

TTABlogger comment: Successful Section 14(3) misrepresentation-of-source claims are few and far between. Last year's Plumrose decision is one example [TTABlogged here].

TTAB Reverses 2(d) Refusal of DURAJECT for Ophthalmic Instruments Over DURO-JECT for Bone Cement Injector

2026-03-10T09:37:00.005-04:00

The DURAJECT decision that was included in yesterday's TTABlog Test deserves closer attention, both because of the applicant's impressive evidence and arguments, and the Board's careful analysis of the second, third, and fourth DuPont factors. The Board reversed a Section 2(d) refusal of the mark DURAJECT for "medical and surgical apparatus and instruments for use in ophthalmic procedures," finding confusion unlikely with the registered mark DURO-JECT for a "medical device, namely, a high pressure bone cement injector." Although the marks are "very similar," the Board found the goods dissimilar, the channels of trade distinct, and the relevant purchasers sophisticated. In re EyePoint Pharmaceuticals US, Inc., Serial No. 98414251 (March 6, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Examining Attorney argued that ophthalmic instruments and bone cement injectors are related because they can both be found on the same websites, including those of certain large medical suppliers - pointing to Rarefied International, Cardinal Health, Medtronic, Stryker, 3M/Solventum, and others. Applicant Eyepoint argued that "all such sites cited by the Examining Attorney are (1) large marketplaces offering a wide range of medical goods from different manufacturers or (2) single vendors offering a wide range of medical goods under different categories. In no case are both kind of goods offered under the same category or on the same page."

As the Board explained in OSF Healthcare, examining attorneys and the Board must focus on the precise language of the relevant identifications of goods or services, not on broadened or generalized goods or services, OSF Healthcare, 2023 WL 6140427, at *12, especially where, as here, at least one of the identifications is very specific.

The Board found that none of the sites showed ophthalmic instruments and a "high pressure bone cement injector" being sold under the same mark. The Rarefied International site listed both dental instruments (including "dental cement injectors") and ophthalmic instruments, but under separate headings and not under the same mark - and the Examining Attorney never established that teeth are made of bone or that a bone cement injector is used in dental procedures. The 3M evidence suffered the same dental-versus-bone problem. The Stryker products were for sinus surgery, not ophthalmic procedures. The Cardinal Health site showed ophthalmic kits and a bone surgery supply checklist, but no high pressure bone cement injector.

Because the record does not show that “medical and surgical apparatus and instruments for use in ophthalmic procedures” and “a high pressure bone cement injector” are commonly sold under the same marks, and there is no other probative evidence of relatedness, we find that the second DuPont factor strongly supports a conclusion that confusion is not likely. OSF Healthcare, 2023 WL 6140427, at *17.

As to channels of trade and classes of consumers, there was agreement that the goods ultimately flow through the same large GPOs (group purchasing organizations) and end up in the same hospitals and medical centers that provide ophthalmic and orthopedic surgery. But the Board, relying on Electric Design & Sales v. Electronic Data Systems, 954 F.2d 713 (Fed. Cir. 1992), drew a key distinction: the mere fact that two products are purchased by the same institution does not establish overlapping channels of trade or consumer confusion. “The likelihood of confusion must be shown to exist not in a purchasing institution, but in a ‘customer or purchaser.’”

The Board found that here, as in Elec. Design & Sales, the involved goods are sold to large institutions, but their brand names are not exposed to the same “customer or purchaser” within those institutions. The Examining Attorney appeared to agree that “‘there is no such thing as a single purchaser for a hospital customer’ because ‘different individuals or groups within a buying institution are responsible for purchasing different kinds of medical goods.’” The Board therefore found that the third DuPont factor supported reversal.

As to purchaser sophistication, the Board found the purchaser class consists entirely of professional buyers of medical supplies - not a mixed class of professionals and consumers. Even the least sophisticated professional buyer could be expected to exercise care when purchasing FDA-regulated surgical instruments for specific medical specialties. The fourth factor supported reversal.

The Board concluded that "the dissimilarity of the goods and channels of trade, and the sophistication of the professional purchasers of the goods, outweigh the similarity of the marks, and make confusion unlikely."

Read comments and post your comment here.

TTABlogger comment: This is another example where the involved goods or services fall under a broad umbrella term, but evidence was lacking to show that anyone sells the identified goods or services under the same mark. Judge Larkin has stressed this point in at least two other relatively recent decisions: here and here.

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

2026-03-09T09:40:00.007-04:00

TTAB affirmances of Section 2(d) refusals continue to run at about 90% this year. Here are three recent decisions in Section 2(d) appeals. At least one of them resulted in a reversal. What say you? [Answer in first comment].

In re EyePoint Pharmaceuticals US, Inc., Serial No. 98414251 (March 6, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin). [Section 2(d) refusal of the mark DURAJECT for “Medical and surgical apparatus and instruments for use in ophthalmic procedures" in view of the registered mark DURO-JECT for a “Medical device, namely, a high pressure bone cement injector.”]

In re Catholic Questions Corporation, Serial No. 97646030 (March 5, 2026) [not precedential] (Opinion by Judge Mark Lebow) [Section 2(d) refusal of CATHOLIC QUESTIONS for "Charitable education services, namely, providing one-on-one explanations and commentary via e-mail, telephone, and postal mail in the field of Catholic apologetics" [CATHOLIC disclaimed] in view of the registered mark shown below, for "Entertainment, namely, a continuing religious education show broadcast over internet, radio, and via podcast" [CHRISTIAN QUESTIONS disclaimed].]

In re Jeremiah C Jones, Serial No. 98668832 (February 27, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor). [Section 2(d) refusal of the mark DUODISH for “plates, bowls” in view of the registered mark DUO COVER for “dishware covers for use with microwave ovens; non-electric cookware, namely, pans, pots, plates, dishes, bowls, for use in microwave ovens; heat-resistant dish holders; insulated containers for food and beverages" [COVER disclaimed]].

Read comments and post your comment here.

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

CHATGPT Not Inherently Distinctive, but USPTO Accepted Claim of Acquired Distinctiveness

2026-03-06T09:48:00.009-05:00

The Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the proposed mark CHATGPT for downloadable and non-downloadable “chatbot software for simulating conversations.” The sole issue on appeal was whether Applicant’s mark CHATGPT is inherently distinctive for the goods and services identified in the application. Applicant OpenAI argued that ordinary consumers would not know that GPT is an acronym for "generative pre-trained transformer," but the Board pointed out that "the evidence demonstrates that many users of Applicant’s goods and services actually are sophisticated users," and further that the term GPT appears in mainstream dictionaries and mainstream media. In re OpenAI OpCo, LLC, Serial No. 97733261 (March 4, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

OpenAI submitted two expert reports asserting that the term "GPT" is not generic, but the Board found them largely irrelevant since the only issue before the Board was mere descriptiveness, not genericness.

The Board first found that consumers "would recognize the separate component terms: CHAT, which is a recognizable word to consumers; and GPT, which . . . is an initialism." The Board then turned to a consideration of the individual terms.

[T]he evidence shows that “chatbots,” as used in the identification of Applicant’s goods and services, electronically converse or “chat” with humans in the ordinary sense of that word. There is no multi-stage reasoning needed; rather, CHAT immediately describes Applicant’s downloadable and non-downloadable software “for simulating conversations” or “chatting.”

Open AI contended that the term CHAT is merely suggestive because it has several meanings relevant in the context of Applicant’s goods and services, including “to talk in an informal or familiar manner” and “to take part in an online discussion in a chat room.” The Board found, however, that these definitions are equally descriptive of Open AI's downloadable or non-downloadable “computer programs and … computer software for the artificial production of human speech and text” and “for natural language processing, generation, understanding and analysis.”

Based on the identifications of goods and services, we must presume that in addition to being used by software developers, Applicant’s downloadable and non-downloadable software is available to the general public and casual users who do not take time to craft “effective prompts,” but rather are likely to interact with the software to facilitate everyday communication or “chatting.”

And so, the Board concluded that the term CHAT "is merely descriptive of a purpose or function of Applicant’s software, i.e., to assist or facilitate communication in a conversational manner, as reflected in Applicant’s identifications of goods and services."

OpenAI and the Examining Attorney agreed that GPT stands for "generative pre-trained transformer," and the evidence supported that conclusion.

Because “generative pre-trained transformer” refers to a machine learning algorithm that is pre-trained to produce human-like text in response to a human’s prompts, we find that it merely describes a feature or characteristic of Applicant’s downloadable and non-downloadable software, namely, that it facilitates “the artificial production of human speech and text, … natural language processing, generation, understanding and analysis,” and it simulates conversations.

Next, the Board considered whether relevant consumers will recognize the initialism GPT as the merely descriptive wording it represents, “generative pre-trained transformer.” The Board answered that question in the affirmative: first, many users of OpenAI’s goods and services actually are sophisticated users; second, the term appears in mainstream dictionaries, such as CAMBRIDGE DICTIONARY, Dictionary.com, and URBAN DICTIONARY, and in publications like THE NEW YORK TIMES, THE ECONOMIST, NEWSWEEK, FORBES MAGAZINE, USA TODAY, and BBC NEWS.

Finally, the Board considered the term CHATGPT in its entirety and found that CHATGPT "does not present an incongruity or lose its descriptive meaning, rather it immediately informs the consumer that Applicant’s goods and services feature a conversational chatbot, utilizing a generative, pre-trained transformer algorithm."

Having no doubt as to the descriptiveness of CHATBOT for OpenAI's goods and services, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Why didn't OpenAI claim acquired distinctiveness? My bad. They did so, and the mark will proceed to publication. I should have read the last sentence: "The application will proceed with Applicant’s claim of acquired distinctiveness under Section 2(f)." So the bottom line is that CHATGPT is not inherently distinctive.

COGNAC LIFE for Magazine Publishing Confusable with Famous COGNAC Regional Certification Mark, Says TTAB

2026-03-04T08:50:00.004-05:00

Applicant Dickens may have had Great Expectations when he filed his application to register COGNAC LIFE for "magazine publishing," but he fell on Hard Times when the Board sustained this opposition based on likelihood of confusion with the common-law regional certification mark COGNAC for brandy that comes from the Cognac region of France. The Board found that the COGNAC mark falls on the "high end of the fame spectrum," and therefore merits "a wider than normal scope of protection." Institut National de l’Origine et de la Qualité and Bureau National Interprofessionnel du Cognac v. Daret K. Dickens, Opposition No. 91272506 (March 2, 2026) [not precedential] (Opinion by Judge Christen M. English).

"Geographic certification marks are used to certify that authorized users’ goods originate in a specific geographic region." "The test for determining likelihood of confusion with respect to certification marks is the same as that applied to trademarks, i.e., the DuPont analysis derived from the seminal case setting forth possible probative factors."

COGNAC products have been sold continuously in the United States since 1794. From 2018 to 2022, 500 million bottles of COGNAC were sold, valued at about 7.5 billion dollars. The BNIC and its members have spent millions of dollars on promotions "that focus on showcasing and promoting the COGNAC geographical indication and creating awareness about the regions’ history, terroir, and product range expertise among US consumers.” Certified COGNAC wine spirts have garnered publicity “in countless publications" and COGNAC brandy has been the subject of many books.

[T]he evidence of record ... demonstrates that a significant portion of the relevant consuming public recognizes the COGNAC certification mark as indicating that brandy bearing the mark comes from the Cognac region of France, and falls on the high end of the fame spectrum as an indicator of geographic origin for purposes of the fifth DuPont factor, and therefore enjoys a wider than normal scope of protection.

As to Applicant Dickens's mark, the Board found that word COGNAC is dominant and the additional term LIFE "does not sufficiently distinguish Applicant’s mark from Opposers’ mark in any meaningful way." "[B]ecause Opposer’s COGNAC mark is the first word in Applicant’s mark, the marks share a similar sound, despite the additional second word LIFE in Applicant’s mark."

The record supports that consumers have been exposed to sources touting COGNAC brandy as a lifestyle product – a symbol of luxury, affluence, and sophistication – and describing COGNAC brandy as a popular drink in rap and hip-hop culture. Consumers therefore are likely to associate the COGNAC certification mark with such lifestyles. The addition of the second word LIFE in Applicant’s COGNAC LIFE mark thus reinforces and highlights the connotation and commercial impression of the COGNAC mark with certain lifestyles, and thus, the parties’ marks are quite similar in connotation and commercial impression.

In sum, the Board found the involved marks to be similar in appearance and sound, and very similar in connotation and commercial impression, and so the first DuPont factor weighed heavily in favor of finding confusion likely.

As to the issue of relatedness, "the parties’ correctly base their comparison under the second DuPont factor on the authorized users’ goods, namely, brandy from the Cognac region of France produced in accordance with prescribed standards." The evidence showed that COGNAC brandy is a product commonly featured in magazine articles as well as other publications. Moreover, since 2018, BNIC has published CULTURE COGNAC, a digital magazine promoting certified Cognac products.

Applicant’s magazine publishing services are broad enough to encompass publishing magazines for others on all subject matters, including lifestyle magazines such as those featuring content related to food and alcoholic beverages, including Cognac brandy.

We thus find a commercial relationship between COGNAC brandy and Applicant’s COGNAC LIFE “magazine publishing” services for others. In addition, circumstances support finding “something more” here, namely, the renown of Opposers’ COGNAC certification mark and the substantial similarity between the parties’ marks in meaning and commercial impression.

The parties’ trade channels, the buyers to whom sales are made and buyer sophistication under the third and fourth DuPont factors are neutral, as are the seventh and eighth DuPont factors concerning the absence of actual confusion.

Balancing the relevant DuPont factors, the Board concluded that confusion is likely.

Read comments and post your comment here.

TTABlogger comment: Nothing very novel about this opinion. BTW: there are a dozen or so registered COGNAC-formative marks for brandy and the like, owned by various entities. Why hasn't COGNAC been registered as a certification mark?

TTAB Posts March 2026 Hearing Schedule

2026-03-03T09:02:00.001-05:00

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

March 11, 2026 - 10:30 AM [Virtual]: In re Kickstand Brewery, LLC, Serial Nos. 97912847 [Refusal to register the mark KIDCKSTAND BREWING COMPANY for "restaurant services" on the ground of likelihood of confusion with the registered marks KICKSTAND for "Beer, ale and lager" and KICKSTAND COCKTAILS for "Alcoholic beverages, except beer; Alcoholic cocktail mixes; Alcoholic cocktails; Alcoholic mixed beverages except beers; Ready-to-drink alcoholic beverages, other than beer-based" [COCKTAILS disclaimed].]

March 16, 2026 - 3:15 PM [In-person - public event]: In re Wemby Corporation, Serial No. 97752244 [Refusal to register the mark WEMBY for "Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms" on the ground of false suggestion of a connection with NBA star Victor Wembanyama, aka "WEMBY," under Section 2(a), and lack of written consent to register from Victor Wembanyama, under Section 2(c).]

March 19, 2026 - 11 AM [In-person]: In re Keeling Curve Foundation v. Global Warming Mitigation Project, Opposition No. 91285627 [Opposition to registration of the mark KEELING CURVE PRIZE for "Accepting and administering monetary charitable contributions for supporting climate change solutions" on the grounds of fraud, false connection under Section 2(a), and likelihood of confusion under Section 2(d).]

March 26, 2026 - 10 AM [Virtual]: In re Knoll, Inc., Serial No. 98370045 [Refusal to register the mark TUGENDHAT for "seating furniture" on the ground that the mark is primarily merely a surname under Section 2(e)(4).]

Read comments and post your comment here.

The TTABlog®

TTAB Reverses Section 2(d) Refusal of DAILY HARVEST CAFE Logo for Cafe Services: USPTO Fails to Prove Relatedness to Food Items and On-Line Services

TTAB Affirms 2(e)(4) Refusal of Rare Surname "TUGENDHAT" for Seating Furniture Due to Applicant's Own Marketing Materials

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

TTAB Posts April 2026 Hearing Schedule

TTAB Overturns 2(d) Refusal of HOUSE OF PRIM Due to Prior Settlement Agreement Between Applicant and Cited Registrant

TTAB Reverses CASA BLANCA Refusal: UPSTO Fails to Prove Relatedness of Tequila and Wine

Prof. Curtin Files Reply to Opposition to Petition for Certiorari in RAPUNZEL Consumer Standing Case

TTABlog Test: Is DUNDER MIFFLIN Confusable with MIFFLIN for Paper Products?

TTAB Reverses 2(d) Refusal of GOOD TIMES for Bourbon over Five "GOOD TIME(S)" Registrations for Alcoholic Beverages

United TM Holdings Files Opposition to Petition for Certiorari in RAPUNZEL Consumer Standing Case.

TTAB Requires Disclaimer of "MADE BY DENTISTS" in Five Word-and-Design Marks for Toothbrushes and the Like

TTABlog Test: Are Cat Food and Cat Food Supplements Related to Cat Litter Under Section 2(d)?

Unsurprisingly, TTAB Deems JAPANESE COWBOY Confusable with TOKYO COWBOY for Restaurant and Bar Services

TTABlog Test: Are Perfumes Related to Cosmetics for Make-Up Artist Work, Under Section 2(d)?

TTABlog Test: Is VEGGIES IN EVERY BITE Merely Descriptive of Pasta?

TTAB Finds UX ACADEMY Generic for . . . . Guess What?

TTAB Grants Petition to Cancel Registration of BMF For Media Production Services Due to Nonuse as of SOU Filing Date

TTABlog Test: Are Safari Expedition Services Related to Restaurant Services Under Section 2(d)?

TTAB Tosses Out Cancellation Petition: Untimely Section 2(d) Claim Masquerading as a Section 14(3) Claim

TTAB Reverses 2(d) Refusal of DURAJECT for Ophthalmic Instruments Over DURO-JECT for Bone Cement Injector

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

CHATGPT Not Inherently Distinctive, but USPTO Accepted Claim of Acquired Distinctiveness

Recommended Reading: Ted Davis, "Inter Partes Litigation and Ex Parte Appeals Before the Trademark Trial and Appeal Board: A Primer"

COGNAC LIFE for Magazine Publishing Confusable with Famous COGNAC Regional Certification Mark, Says TTAB

TTAB Posts March 2026 Hearing Schedule