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

Last year the Board affirmed about 88% of the Section 2(e)(1) mere descriptiveness refusals reviewed on appeal. So far this year, the rate is well over 90%. Here are three recent appeals. How do you think they came out? You might respond by asking, what was the evidence? Well, give it a try anyway. [Answer in first comment].

In re Lifetime Brands, Inc., Serial No. 98012956 (June 30, 2025) [Opinion by Judge Angela Lykos]. [Section 2(e)(1) mere descriptiveness refusal of SNACKLEBOX for "cutting boards and attached serverware, namely, serving platter with compartments sold together as a unit." Applicant argued that the term is suggestive because it is “a play on the words, ‘snack’ and ‘tackle box’, and does not immediately convey that applicant’s goods feature a cutting board and a serving platter with compartments.”]

In re Lewitt, Hackman, Shapiro, Marshall & Harlan, Serial No. 98115823(July 2, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington). [Mere descriptiveness refusal of JUSTICENTER for “Attorney services; Attorney services, namely, representation of clients in personal injury matters; Legal services." Applicant contended that JUSTICENTER, “as a telescoped mark, has no meaning in and of itself.”]

US Ghost Adventures Llc, Serial No. 98186224 (July 3, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Mere descriptiveness refusal of MONSTER HOUSE for "Museum services, namely, exhibiting to the public a historical site” and “Hotel accommodation services.” Applicant argued that MURDER HOUSE could indicate something other than a house where a murder took place, such as a restaurant with food so good diners want to “murder” their meals or a house where crows gather.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2025.

Precedential No. 6: TTAB Refuses to Add Affirmative Defense of Abandonment but Allows Addition as Counterclaims

In this opposition to registration of the mark JOKER SMOKER, in the form shown below, for smoker's articles and related retail services, the applicant moved for leave to amend its answer to add an affirmative defense of abandonment regarding the opposer's pleaded JOKER registrations. The Board deemed the proposed addition improper, since an abandonment claim is an attack against the validity of the registrations that can be raised only by way of a counterclaim or separate petition for cancellation, not by an affirmative defense. However, the Board allowed applicant 15 days within which to add counterclaims for cancellation of the registrations. Republic Technologies (NA), LLC v. Joker Smoker Shop, Inc. dba Joker Smoker, Opposition No. 91286550 (June 6, 2025) [precedential] (Order by Interlocutory Attorney Michael Webster).

Applicant's proposed affirmative defense alleged that "Opposer has discontinued use of its marks, Registration Nos. 1,087,438, and 2,661,926, for a period of more than three (3) years, with intent not to resume use, and has thereby abandoned use of such marks pursuant to Section 45 of the Lanham Act.” The Board found those allegations to be legally sufficient to support counterclaims for abandonment. Lewis Silkin LLP v. Firebrand LLC, Can. No. 92067378, 2018 WL 6923002, at *4-6 (TTAB 2018) (“The petition to cancel pleads that Respondent is not using the mark with its goods and services, and has no intent to resume use. The Board finds that no more is necessary for a legally sufficient abandonment claim in the context of the Board’s narrow jurisdiction limited to trademark registrability.”).

Further, the Board observed, applicant did not unduly delay in seeking to amend its answer (within two months after receiving amended discovery responses from the oppposer). See Black & Decker Corp. v. Emerson Elec. Co., Opp. No. 91158891, 2007 WL 894416, at *3 (TTAB 2007); Karsten Mfg. Corp. v. Editoy AG, Opp. No. 91101408, 2006 WL 1258869, at *2 (TTAB 2006) (motion for leave to amend pleading granted because grounds for new claim learned during discovery); see also TBMP § 507.02(a). Opposer did not argue that it would be prejudiced by allowing the amendment (six weeks remained in the discovery period). See, e.g., Topco Holdings, Inc. v. Hand 2 Hand Indus., LLC, Opp. No. 91267988, 2022 WL 157880, at *4 (TTAB 2022) (no undue prejudice when three months remain in discovery). Nor was there any evidence applicant acted in bad faith or had a dilatory motive in seeking leave to amend, and it had not previously amended its pleading.

If Applicant files an amended answer with counterclaims, the Board will construe Applicant’s motion for leave to amend as asking to add properly pleaded counterclaims for abandonment. Accordingly, a decision on the motion for leave to amend is deferred and proceedings remain suspended.

Read comments and post your comment here.

TTABlogger comment: Does this ruling merit the "precedential" tag? If the Board had denied the motion, would applicant simply have filed a new motion to add the counterclaims?

Text Copyright John L. Welch 2025.

TTABlog Test: Is BREAK OUT THE BANDIDO Confusable with BANDIT for Overlapping Alcoholic Beverages?

Sutter Home Winery opposed an application to register BREAK OUT THE BANDIDO for "distilled blue agave liquor" (a/k/a tequila) on the ground of likelihood of confusion with its registered mark BANDIT for "alcoholic beverages except beer[s]." The goods are legally identical and presumably travel in the same trade channels to the same classes of consumers. But what about the marks? How do you think this came out? Sutter Home Winery, Inc. v. Roar Spirits, LLC, Opposition No. 91281737 (June 26, 2025) [not precedential] (Opinion by Judge Mark Lebow).

The Board found the BANDIT mark to be conceptually strong. It has achieved "slight commercial strength, but not enough to increase the scope of protection the mark is entitled as an inherently distinctive mark." Applicant Roar Spirit’s evidence of third-party use of similar marks on similar goods did not diminish its strength. The Board, after weeding out marks for unrelated goods and marks not in use in the United States, was left with two third-party registrations and seven third-party uses – Bandito wine, Bandido wine, Cosmic Bandido mead, Bandito’s Blood wine, Bandido de Amores tequila, Goofy Bandit Espressotini liqueur, Barrel Bandit whiskey, and Time Bandit vodka. But there was no evidence as to the extent of use of the third-party marks.

These several Bandit-esque uses, coupled with the two third-party registrations as discussed above, fail to demonstrate a consistent pattern of use of the term ‘BANDIT’” in a manner that would prove that term “has a normally understood and well recognized descriptive or suggestive meaning,”

As for the marks, Opposer Sutter argued that BANDIDO is the dominant element of the opposed mark, but the Board disagreed, finding that BREAK OUT THE BANDIDO is a unitary mark. The Board rejected Sutter's argument that consumers will shorten the mark to BANDIDO when referring to Roar's product.

The Board found that the marks BANDIT and BREAK OUT THE BANDIDO are "very different in overall appearance, sound, connotation, and commercial impression."

Even if it is known that “bandido” is a synonym of “bandit,” there are still differences in connotation because “bandido” is defined (in MERRIAM-WEBSTER’S) as “an outlaw of Mexican extraction or origin” (consistent with Applicant’s offering of tequila, a Mexican liquor), whereas Opposer’s mark refers generally to an outlaw or robber. Furthermore, and to extent consumers understand the meaning of the word “bandido” as Opposer contends, we again point out that Applicant’s mark is BREAK OUT THE BANDIDO, not BANDIDO. Furthermore, we find some merit to Applicant’s argument that BREAK OUT THE BANDIDO connotes “breaking a prisoner out of jail,”100 which calls to mind breaking an imprisoned Mexican outlaw out of jail.

The Board concluded that "the dissimilarity of the marks in appearance, sound, connotation, and commercial impression is so great as to outweigh the other DuPont factors."

Read comments and post your comment here.

TTABlogger comment: In 2023, Suttor's assignee of the BANDIT mark suceessfully opposed Roar's application to register EL BANDIDO YANKEE for tequila [TTABlogged here].

Text Copyright John L. Welch 2025.

TTAB Reverses 2(e)(2) Geographical Descriptiveness Refusal of BUCKEYE CUSTOM E-BIKES

Finding that the primary significance of the word "BUCKEYE" is not a geographic location, the Board reversed a Section 2(e)(2) refusal of the mark BUCKEYE CUSTOM E-BIKES for "On-line retail store services featuring electric bicycles and electric bicycle accessories; Retail store services featuring electric bicycles and electric bicycle accessories.” However, the Board required a disclaimer of CUSTOM E-BIKES. In re Buckeye Custom E-Bikes, LLC, Serial No. 98321088 (June 27, 2025) [not precedential] (Opinion by Judge George C. Pologeorgis).

The test for determining whether a mark is primarily geographically descriptive under Section 2(e)(2) is whether: 1. the mark sought to be registered (or a portion thereof) is the name of a place generally known to the public; 2. the source of the goods or services is the geographic region named in the mark; and 3. the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or services for which the mark is sought to be registered originate in that place.

Additionally, in order to refuse registration, “the geographical meaning [must be] perceived by the relevant public as the primary meaning and that the geographical significance of the mark is to be assessed as it is used on or in connection with the goods [or services].”

As to the first prong of the test, the Examining Attorney relied on dictionary definitions, third-party registrations, and website references, in maintaining that the term BUCKEYE is a commonly used nickname for the U.S. state of Ohio. As to the second prong, there was no dispute that applicant is located in Ohio. As to the third, because Ohio is generally known to the purchasing public as a state in the United States and applicant’s services originate there, there is a presumption of a services-place association by the public.

Applicant argued that the numerous definitions of “buckeye” submitted by the Examining Attorney invariably define the term BUCKEYE first as a tree or shrub, and second as the seed produced by such a tree or shrub. The Board sided with the applicant.

As demonstrated by the dictionary and website article evidence of record, the term ‘buckeye,” standing alone, is primarily defined as a tree or shrub or the seed from such tree or shrub. The record also shows that the nickname for the state of Ohio is not “buckeye” but the “Buckeye State.” And while the tertiary dictionary definition of “buckeye” is “a native of Ohio,” that definition primarily defines a person, not a geographic location.

The Board concluded that, although the term “buckeye” may be suggestive of the state of Ohio, the evidence demonstrated that the primary significance of BUCKEYE is not that of a geographic location."

The Board ordered that the application be reopened and remanded to the Examining Attorney for entry of the disclaimer of the wording CUSTOM E-BIKES. See Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g).

Read comments and post your comment here.

TTABlogger comment: I think it's fair to say that consumers in Ohio will think that BUCKEYE is a geographical reference. Isn't that enough for a Section 2(e)(2) refusal? In the doctrine of foreign equivalents context, a few hundred thousand foreign language speakers are enough to support a mere descriptiveness refusal of a foreign-language term. Surely there are more than a few hundred thousand people who find BUCKEYE to be geographically descriptive.

Text Copyright John L. Welch 2025.

TTAB Quarterly Index: April - June 2025

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

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

• USPTO Fails to Prove Section 2(a) False Connection of ENAIRA with the Central Bank of Nigeria
• CAFC Affirms TTAB: US SPACE FORCE Falsely Suggests a Connection with the United States

Section 2(d) - Likelihood of Confusion:

• WYHA? TTAB Finds VITAWHEY Confusable with VITAWAYS for Dietary and Nutritional Supplements
• TTABlog Test: Are Jewelry and Underwear Related Under Section 2(d)? [Yes]
• Prior Registration Under 13th DuPont Factor Fails to Save RAIN DANCER From Section 2(d) Refusal
• TTABlog Test: Are These Two Word-And-Design Marks Confusable for Keys and Key Blanks?
• TTAB Finds VORSPRUNG for Electric Vehicle Charging Stations Confusable with VORSPRUNG DURCH TEKNIK for Land Vehicles
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTABlog Test: Which of These Section 2(d) Refusals Was/Were Overturned on Appeal?
• Yankees Win! TTAB Sustains Section 2(d) Opposition to NYC NEW YORK CANNABIS & Design for Clothing
• TTABlog Test: Are Golf Simulator Services Related to Restaurant Services Under Section 2(d)? [Yes]
• Third-Party Registrations and Uses Yield TTAB Reversal of Section 2(d) Refusal
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• TTABlog Test: Are Leather Bags Related to Cosmetics Under Section 2(d)? [Yes]
TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• TTAB Dismisses THOR Opposition, Finding Boats Unrelated to Recreational Vehicles: 34 Pairs of Third-Party Registrations Proved Decisive
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?

• TTABlog Test: Is MONSTER STRAW for Drinking Straws Confusable with MONSTER for Energy Drinks? [Yes]
• Professor J. Thomas McCarthy: "What is the 'Zone of Natural Expansion' Doctrine?"
• TTAB Partially Grants GUIDEON Cancellation Petition but Rejects Zone-of-Natural-Expansion Claim
• CAFC Affirms TTAB: CHICKEN SCRATCH for Beer is Confusable with CHICKEN SCRATCH for Restaurant Services
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?

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

• TTABlog Test: Is "USNA" Merely Descriptive of Cosmetics? [Yes]
• POWER CAPSULE and POWER TUNNEL Merely Descriptive of Energy Storage Containers, Says TTAB
• WYHA? TTAB Finds DOCRETENTION Merely Descriptive of Document Retention Software
• TTABlog Test: Is PIZZACCIA Merely Descriptive of Pizza and Cheese? [Yes]
• SWIPE LEFT Merely Descriptive of, and Fails-to-Function as a Source Indicator for, Matchmaking Software, Says TTAB
• TTABlog Test: Is BLADE Merely Descriptive of Hammers for Hammer Mill Machines? [Yes]
• TTABlog Test: Is UNITED STATES COAST GUARD Merely Descriptive of Employment Counseling and Recruiting Services? [Yes]
• TTABlog Test: Which of These Three Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals Was/Were Reversed?

Section 2(e)(5) - Functionality:

• TTAB Affirms Another Section 2(e)(5) Functionality Refusal: Beach Canopy

Abandonment/Nonuse/Specimen of Use:

• Providing Warranty Services With One's Own Goods is not a Recognizable Service Under the Trademark Act
• TTABlog Test: Is this Trademark Mutilation?
• TTABlog Test: Do You Recognize Trademark Mutilation When You See It?
• TTAB Grants HALFANIMAL Cancellation Petition on the Ground of Abandonment

Dilution:

• Two Dilution Claims: TTAB Finds "IVY LEAGUE" to be Famous, But Not "ASUS"

Failure-to-Function:

• TTAB Affirms Failure-to-Function Refusal of YOUR BEST CHOICE for Educational Services
• TTAB Affirms Failure-to-Function Refusal of Certification Badges for Completion of Skills Evaluation Courses
• SWIPE LEFT Merely Descriptive of, and Fails-to-Function as a Source Indicator for, Matchmaking Software, Says TTAB

Genericness:

• CAFC Affirms TTAB's VETEMENTS Genericness Ruling
• TTAB Finds SLEEP HEADPHONES to be Generic for . . . . Guess What?
• CAFC Affirms TTAB: Dark Green Color is Generic for Chloroprene Medical Examination Gloves
• TTABlog Test: Is HEELS Generic for Medicated Skin Care Cream?

Lack of Bona Fide Intent:

• Three Recent TTAB Inter Partes Decisions: a Mixed Bag of Defeats for the Plaintiffs
• Precedential No. 4: TTAB Sustains Opposition to CUADRA for Alcoholic Beverage Due to Lack of Bona Fide Intent

Pan-American Convention:

• E.D. Va. Affirms TTAB Decision Ordering Cancellation of two General Cigar Registrations for "COHIBA" Under Pan-Am Convention

Discovery/Evidence/Procedure:

• Three Recent TTAB Inter Partes Decisions: a Mixed Bag of Defeats for the Plaintiffs
• Precedential No. 5: TTAB Will Not Accept Incorporation-By-Reference of An Appellant's Prosecution Arguments
• CAFC Affirms TTAB: Mere Consumer Curtin Lacked Statutory Standing to Oppose RAPUNZEL for Dolls
• Petitioner Failed to Prove "Standing" for Cancellation of KINNEY SHOES Registration
• TTAB Dismisses LIVE RESIN Oppositions Under Rule 2.132(a) for Failure to Prosecute

CAFC Decisions:

• CAFC Reverses TTAB - Remands ECHO D’ANGÉLUS Opposition Due to Lack of Substantial Evidence Supporting Dismissal
• CAFC Affirms TTAB: Mere Consumer Curtin Lacked Statutory Standing to Oppose RAPUNZEL for Dolls
• CAFC Affirms TTAB's VETEMENTS Genericness Ruling
• CAFC Overturns TTAB Dismissal of SFERA Opposition, Remanding for Reconsideration of1st and 2nd DuPont Factors
• CAFC Affirms TTAB: US SPACE FORCE Falsely Suggests a Connection with the United States
• CAFC Affirms TTAB: Dark Green Color is Generic for Chloroprene Medical Examination Gloves
• CAFC Affirms TTAB: CHICKEN SCRATCH for Beer is Confusable with CHICKEN SCRATCH for Restaurant Services
• CAFC Upholds TTAB Dismissal of "fleur-de-lis" Cancellation Petition Due to Lack of Standing
• CAFC Affirms TTAB Dismissal of IVOTERS Opposition Due to Failure to Prove Acquired Distinctiveness (Priority) of Pleaded Marks

Recommended Reading:

• Recommended Reading: The Trademark Reporter, May-June 2025 Issue
• Ted Davis: "Federal Court and Trademark Trial and Appeal Board Review"
• The Trademark Reporter's 2025 "Annual Review of European Trademark Law"
• Professor J. Thomas McCarthy: "What is the 'Zone of Natural Expansion' Doctrine?"
• Recommended Reading: Dustin Marlan, "Servicing Trade Dress: Demystifying the Tertium Quid"

Other:

• Christina Hieber Named TTAB Acting Chief Administrative Trademark Judge
• Updated Roster of TTAB Administrative Trademark Judges
• TTAB Posts May 2025 Hearing Schedule
• Trademark Reporter: Call for Submissions for Theme Issue on Third-Party Liability and Related IP and Product Disputes
• TTAB Posts April 2025 Hearing Schedule

Text © John L. Welch 2025.

TTAB Posts July 2025 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled two oral hearings for the month of July 2025. Both will be held virtually. Briefs and other papers for each case may be found at TTABVUE via the links provided.

July 22, 2025 - 1 PM [Virtual]: Sueros y Bebidas Rehidratantes, S.A. de C.V. v. Bebidas Electromas S.A. de C.V., Opposition No. 91285906 [Opposition to registration of the mark ELECTROMAS for "food supplements," "Fruit drinks; Mineral water; Preparations for making non-alcoholic fruit-flavored beverages," and "Alcoholic beverages containing fruit; Alcoholic beverages, except beer; Alcoholic cocktail mixes; Prepared alcoholic cocktail," in view of the registered mark ELECTROLIT for, inter alia, sports drinks containing electrolytes, energy drinks, and soft drinks, on the grounds of likelihood of confusion and likelihood of dilution.]

July 29, 2025 - 10 AM [Virtual]: In re VCDF, Serial No. 97795205 [Section 2(e)(1) mere descriptiveness refusal of WORLDWIDECRYPTO for "Cryptocurrency exchange services; Cryptocurrency exchange services featuring blockchain technology; Cryptocurrency payment processing; Cryptocurrency trading services."

Read comments and post your comment here.

Text Copyright John L. Welch 2025.

Three Recent TTAB Inter Partes Decisions: a Mixed Bag of Defeats for the Plaintiffs

Here for your consideration are three recent Board decisions. The plaintiff lost in each one: for lack of standing, failure to prove priority, and failure to prove lack of bona fide intent.

California Wheel Distributor Inc. v. Peregrine Automotive, LLC., Cancellation No. 92080626 (June 26, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington) [The Board denied this petition for cancellation of a registration of the mark REVENGE AUTO PARTS for “on-line wholesale and retail store services featuring auto parts,” because the petitioner failed to prove its statutory standing. Petitioner alleged nonuse and abandonment and claimed that it had standing to bring the petition because its application to register the mark REVENGE was blocked by the challenged registration. However, it failed to submit a copy of the file history of its application and there was no other supporting evidence.]

Schiebel Industries AG v. Camera Copters, Inc., Cancellation No. 92071596 (June 25, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.) [The Board denied this petition for cancellation of the mark CAMERA COPTERS, in word-and-design form, because Petitioner Schiebel failed to prove priority. Schiebel claimed prior common law rights in the mark CAMCOPTER and alleged use of the mark since 2009, but it failed to put its sales figures in competitive context, and its long use of the mark was by itself insufficient to establish acquired distinctiveness for its highly descriptive mark.]

Retrobrands USA LLC v. Data Access Sarl, Opposition No. 91283839 (June 24, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen) [The Board dismissed this six-year-old opposition to registration of the mark HELENE CURTIS for cosmetics and hair care products because Opposer Retrobrands failed to prove its claim that the applicant lacked a bona fide intent to use the mark. The Board found that applicant had shown "both the capacity to market and/or manufacture perfumes and cosmetic-type products, having produced them in the past under different marks." Although applicant did not have a detailed business plan, the Board found that applicant's assertion that it "believes such [a detailed plan] is unnecessary in view of Applicant’s prior experience" was reasonable.]

Read comments and post your comment here.

TTABlogger comment: Retrobrands has lost several other TTAB cases in its attempts to revive "zombie" marks, including CHICLETS and KINNEY SHOES.

Text Copyright John L. Welch 2025.

TTABlog Test: Is "USNA" Merely Descriptive of Cosmetics?

The USPTO refused to register the proposed mark KECA’S USNA for “Cosmetics" because the applicant failed to disclaim the word USNA. There was no dispute between the applicant and Examining Attorney Michael FitzSimons that USNA is a Croation word meaning "lips," but there was a dispute as to whether "Croatian is a common, modern language and whether other West Balkan languages in the standardized Serbian-Croatian language family . . . translate 'USNA' as 'lip,' broadening the number of people in the United States that understand USNA as 'lip' in English." Whether consumers would "stop and translate" the term, and whether the term is merely descriptive of the goods were the remaining issues. How do you think this came out? In re Monica Walls, Serial No. 98049431 (June 25 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board first found that Croatian is a modern language, since it is spoken in Croatia and elsewhere. As to whether the language is common, "it is enough to demonstrate that an 'appreciable' number of Americans are capable of translating the term USNA from Croatian into English."

“The doctrine should be applied only when it is likely that the ordinary American purchaser would ‘stop and translate [the word] into its English equivalent.’” For purposes of the doctrine, the “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English."

Given that Bosnian, Croatian, Montenegrin and Serbian are mutually intelligible among each other and are considered “nearly identical” in vocabulary and grammar, we consider the census and other website information relating to the “Serbo-Croatian” language family probative.

The Board observed that there is no "minimum threshold number of speakers of a foreign language that is required for the language to be considered a “common” one in the United States."

[T]he evidence in the record shows, among other things, there are sizeable global populations of Serbo-Croatian (BCMS) speakers, a significant number of people from Balkan Peninsula countries living in major cities in the United States, evidence that Serbo-Croatian (BCMS) languages are taught by well-known and major U.S. universities, and U.S. census evidence that speakers of the Serbo-Croatian language in the home is over 240,000. Given this evidence, we do not view Croatian as obscure.

The next question was whether the relevant consumer would stop and translate USNA. The Board concluded that USNA has a clear, descriptive meaning in the context of applicant's goods, consumers familiar with the Croatian word USNA likely will focus on that meaning.

The Board noted that under the CAFC's recent VETEMENTS decision, "the burden is on the party opposing translation to show that it is unlikely the ordinary American purchaser would stop and translate the foreign term into its English equivalent."

The Board found that applicant had not met her burden "to show that Croatian is an obscure language or that an American consumer would not stop and translate USNA into its English equivalent, “lip,” in the context of Applicant’s goods."

Finally, the Board found that since applicant's cosmetic products are lipstick or lip gloss, the term "lip" is merely descriptive of applicant's goods.

And so, the Board upheld the disclaimer requirement but gave the applicant thirty days to submit the required disclaimer.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2025.

WYHA? TTAB Finds VITAWHEY Confusable with VITAWAYS for Dietary and Nutritional Supplements

Keep moving! Not much to see here. The Board upheld a Section 2(d) refusal of the mark VITAWHEY in the form shown below, for dietary and nutritional supplements "principally comprised of whey protein," finding confusion likely with the registered mark VITAWAYS for, inter alia, "dietary and nutritional supplements." Among other losing arguments, applicant noted that the registrant does not sell whey-protein supplements, but no way was that helfpful to its cause. In re Evlution Nutrition, LLC, Serial No. 98502228 (June 23, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Applicant conceded that the marks are phonetically similar. "The Board has  . . . found that similarities in pronunciation can lead to confusion notwithstanding distinctions in spelling."

We find that the nonidentical WHEY/WAYS endings do not offset the cumulative effect of the marks’ other similarities. Overall, the marks are very similar, regardless of what meaning, if any, might be assigned to the identical VITA- prefixes.

Although applicant's identifation of goods has a qualifier (the "whey" limitation), the registration has no qualifiers. "That means it covers all dietary and nutritional supplements, including those, like Applicant’s, principally containing whey protein."

As to applicant's assertion that registrant does not sell whey-specific supplements, the Board pointed out that "what the owner of the cited registration might or might not currently sell is irrelevant."

In sum, the goods are identical in part, and the second DuPont factor supported the refusal. The identical goods presumably travel through the same trade channels to the same classes of consumers.

Applicant asserts that its customers are "bodybuilders/athletes/other protein powder consumers who are interested in a whey-based powder” and that the customers who purchase goods offered by the owner of the registered mark are general consumers of vitamins. To the extent Applicant implies that consumers of dietary and nutritional supplements bearing the registered mark are different from its own customers, we reject the implication. The lack of restrictions in the registered mark means that all consumers of dietary and nutritional supplements—even that subset who are bodybuilders, athletes, and other protein powder consumers—are included.

Applicant claimed that the consumers of supplements are "sophisticated," but provided no supporting evidence. Nor was there evidence that the purchase of supplements may be an "impulse purchase. And so, the Board considered this factor to be neutral.

Finally, applicant argued that "vita" is a weak formative due to third-party use but again provided no supporting evidence. It feebly suggested that the USPTO’s “own database could confirm” its assertion, but the Board does not take judicial notice of registrations.

Since the relevant DuPont factors favored affirmance or were neutral, the Board sustained the refusal.

Read comments and post your comment here.

TTABlogger comment: Well, would you have?

Text Copyright John L. Welch 2025.

Recommended Reading: The Trademark Reporter, May-June 2025 Issue

The May-June 2025 (Vol. 115 No. 3) issue of the Trademark Reporter has arrived. [pdf here]. The issue is dedicated to past TMR Editor-in-Chief and prolific TMR contributor, Jerre B. Swann. 

Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "This issue offers readers an article examining single-color trademarks through the lens of the author’s own quantitative empirical investigation, an article exploring the intersection of trademarks and minority languages, an article supplying a toolkit for protecting certification marks under U.S. law, a commentary giving an insider’s perspective on successful genericness surveys, and a review of a comprehensive book on vitiviniculture and trademarks."

In Memoriam: Jerre B. Swann (1939–2025), by William H. Brewster, Theodore H. Davis Jr. and R. Charles Henn.

Should We Worry About Color Depletion? An Empirical Study of USPTO Single-Color Trademark Registrations, by Dr. Xiaoren Wang. In this cutting-edge article, returning TMR author Dr. Xiaoren Wang examines single-color trademarks—and the potential for color concentration and depletion—through the lens of her own quantitative empirical study of data from the United States Patent and Trademark Office.

Multiculturalism, Minority Language Rights, and Trademark Law: Protecting the Less-than-Average Consumer, by Ilanah Fhima. In this timely article, returning TMR author Ilanah Fhima argues that the approach to which trademarks are registered, and the scope of protection afforded them once registered, play an important role in recognizing minority interests—in particular, minority languages—in a multicultural society.

Keeping Promises: Enforcement Strategies for Certification Marks in the United States, by B. Brett Heavner and Caroline Segers. In this practitioner-focused article, returning TMR author B. Brett Heavner and first-time TMR author Caroline Segers offer brand owners an enforcement toolkit to proactively protect their certification marks under U.S. law.

Commentary: Oh, Snap! A Shift in Consumer Perception Surveys in Genericness Litigations After Snap Inc. v. Vidal, by David H. Bernstein, Jared I. Kagan, and Daniel N. Cohen. In this incisive commentary, returning TMR author David H. Bernstein and first-time TMR authors Jared I. Kagan and Daniel N. Cohen give an insider’s perspective on the genericness surveys conducted in the Snap Inc. v. Vidal case and offer practical guidance for future genericness litigations.

Book Review: Les grands arrets du droit vitivinicole Sous la direction de Théodore Georgopoulos. Reviewed by Mathilde P. Florenson. First-time TMR author Mathilde P. Florenson offers readers her English-language review of this French-language book concerning viti-viniculture—from grapevine growth and cultivation (viticulture) to the art and science of making wine (viniculture) and its trade—and trademarks.

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TTABlog comment: This issue of the TMR is Copyright © 2025, the International Trademark Association, and is made available with the permission of the Trademark Reporter®.

Christina Hieber Named TTAB Acting Chief Administrative Trademark Judge

The USPTO announced last week that Christina Hieber has been named Acting Chief Administrative Trademark Judge at the Trademark Trial and Appeal Board.

Christina Hieber is the Acting Chief Administrative Trademark Judge of the Trademark Trial and Appeal Board (TTAB). In this role, she leads the TTAB as it hears and decides appeals by trademark applicants—including final refusals of registration, oppositions brought by outside parties to challenge approved trademark applications, and petitions filed by outside parties to cancel trademark registrations—and determines geographic division of territories for marks involved in concurrent use proceedings.

Previously, Ms. Hieber served as the Senior Counsel for Trademark Policy and Litigation in the Office of the Solicitor at the USPTO. In that role, she defended decisions of the USPTO Director and the TTAB in cases before the Federal Circuit and district courts. She also provided advice and guidance to the USPTO Director, Commissioner for Trademarks, the TTAB, and other agency officials on trademark-related matters.

Before joining the Solicitor’s Office in 2006, Ms. Hieber was in private practice at a large intellectual property law firm in Washington, D.C., where her practice focused on trademark and unfair competition matters.

Ms. Hieber received her JD from the George Washington University Law School and her undergraduate degree from Dartmouth College.

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Text Copyright John L. Welch 2025.