Recommended Reading: Dustin Marlan, "Servicing Trade Dress: Demystifying the Tertium Quid"

In his article, "Servicing Trade Dress: Demystifying the Tertium Quid," 58 U.C. Davis Law Rev. 1513 (February 2025), Dustin Marlan, Assistant Professor of Law at the University of North Carolina School of Law, tackles the elusive term tertium quid that Justice Scalia injected into trademark law in Wal-Mart v. Samara. Justice Scalia posited that this third category of potentially protectable "trade dress" - neither product design nor product packaging - should be treated as "akin" to product packaging and therefore capable of being inherently distinctive. Professor Marlan thinks otherwise. [pdf here]. 

Courts and scholars have long struggled with how to determine whether trade dress is distinctive enough to function as a legally protectable trademark. In attempting to clarify this murky area, Justice Scalia articulated three types of trade dress in Wal-Mart Stores, Inc. v. Samara Brothers, Inc. These include (i) product packaging (e.g., a candy wrapper) and (ii) product design (e.g., an iPhone’s unique shape). The trouble lies in understanding the third category — what Scalia referred to as (iii) “some tertium quid” (e.g., a restaurant’s décor). Under the Supreme Court’s framework, product packaging is eligible for instant protection based on inherent distinctiveness because its “very purpose” is to identify a brand. Product design, though, must first acquire market recognition (i.e., secondary meaning) to be protectable since it usually serves goals unrelated to brand identification. However, the undefined tertium quid is considered capable of instant protection because it is thought to be, as Scalia believed, “akin to product packaging.”

In challenging this prevailing perspective, this Article seeks to demystify tertium quid trade dress. Seldom used in a legal context, tertium quid is an obscure Latin term meaning “third thing” that is associated with the arcane practice of alchemy, where alchemists would mix two inputs to try and produce gold (the third thing). The esoteric tertium quid label conceals this category’s true nature as consisting of what this Article labels “service dress” — trade dress for intangible services rather than tangible products. In recognizing the product/service distinction, this Article looks to the field of service design for legal insights. The service design literature casts serious doubt on whether service dress should be eligible for trademark protection absent secondary meaning. This is because service design, like product design, is usually intended to serve purposes other than brand identification. Moreover, requiring secondary meaning for service dress protection would support fair competition, providing for reasonable limits on the commercial appropriation of both physical and digital environments.

Read comments and post your comment here.

TTABlogger comment: Quid cogitas?

Introductory text Copyright John L. Welch 2025.

TTAB Quarterly Index: January - March 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) Deceptiveness:

• TTABlog Test: Is ECOTWEED Deceptive for "Footwear made of a Tweed-like Material"? [Yes]

Section 2(c) - Consent of Living Individual:

• TTAB Upholds Four Section 2(c) Refusals of Anti-Trump Marks Due to Lack of Consent

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is KINGS ARMOR Confusable with UNDER ARMOUR for Clothing?
• TTABlog Test: Are Sexual Arousal Supplements Related to Hair Care Products Under Section 2(d)? [Yes]
• TTABlog Test: Is STEED COMPANY Confusable with CORCEL for Clothing? [Yes]
• TTAB Upholds 2(d) and 2(e)(4) Bifusal of WYSE LONDON for Clothing
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTAB Denies Section 2(d) Cancellation Petition due to Unconvincing Testimony Regarding Priority
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• Finding Restaurant Services Related to Paper Food Containers, TTAB Sustains DON'T MESS WITH TEX-MEX Opposition
• TTABlog Test: Is CLEANFACE Confusable with DR.BELMEUR CLEAN FACE for Beauty Products? [No]
• TTABlog Test: Are Educational Services for Incarcerated Individuals Related to Legal Services Under Section 2(d)? [Yes]
• TTABlog Test: Are Cosmetics Related to Bottled Water for Section 2(d) Purposes?
• TTABlog Test: Are Pizza Parlors and Baked Goods Related Under Section 2(d)? [Yes]

• RTC RICH TRAPPERS CLUB Logo Not Confusable with RTC for Clothing, Says TTAB
• Eleven Third-Party Uses of "Cowbell" Not Enough to Overcome Cited COWBELL CREAM ALE Registration
• 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?
• TTAB Reverses Section 2(d) Refusal of "12 & Design" for Cosmetics Due to Third-Party Registration Evidence
• TTAB Reverses USPTO's Section 2(d) Refusal of PBE AWARDS & Design for Marketing Award Services
• E.D. Va. Reverses TTAB's Precedential Decision in HME Opposition, Orders USPTO to Issue Registration
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out
• TTAB Reverses Section 2(d) Refusal of FITO for Seeds Due to Dissimilarity of Marks and 13th DuPont Factor (Strategic Partners)
• Opposer Proves Prior Use of Common Law REVOLUTION JEWELRY WORKS Marks, Wins Opposition Battle
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• In 2024, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?

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

• TTABlog Test: How Did These Recent Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• In 2024, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals?
• Precedential No. 30: Illustration of Block Puzzle Merely Descriptive of Computer Game Software, Says TTAB

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

• TTAB Upholds 2(d) and 2(e)(4) Bifusal of WYSE LONDON for Clothing
• TTABlog Test: Is SELECT BY LANDRY'S Primarily Merely a Surname for a Customer Reward Program?

Section 2(e)(5) - Functionality:

• TTAB Lets Stand Bifusal of Leveling Leg Configuration: De Jure Functional and Non-Distinctive
• TTAB Affirms 2e5 Functionality Refusal of Fire Extinguisher Pressure Gauge Configuration, Despite Applicant's Design Patent
• CAFC Affirms TTAB: Pink Color De Jure Functional for Hip Joint Implants
• Precedential No. 1: TTAB Upholds USPTO Objections to Over-Inclusive Drawings for Watch Configuration Marks

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 1: TTAB Upholds USPTO Objections to Over-Inclusive Drawings for Watch Configuration Marks

Section 14(3) - Misrepresentation of Source:

• Precedential No. 2: TTAB Sustains Section 14(3) Opposition to LA MONTSERRATINA for Meat Products Based on Reputation in USA Without Use

Abandonment/Nonuse/Specimen of Use:

• TTAB Finds "RUFFAREE" T-Shirt Specimen Acceptable for Dog Park Services
• TTAB Denies "DISORDERLY FASHION" Nonuse Cancellation Petition: It's Hard to Prove a Negative

Dilution:

• PANERA Fails to Prove Fame Before Applicant's First Use Date, TTAB Dismisses Opposition to PANERALUX for Unrelated Products
• Porn Star Name GIGI DIOR Dilutes-by-Blurring Famous DIOR Mark

Failure-to-Function:

• BON VOYAGE Fails to Function as a Trademark for Travel Pillows, Sinking Cancellation Petitioner's 2(d) Claim

Fraud:

• On Remand, Great Concepts Escapes With TTAB Wrist Slap for its Fraudulent Section 15 Declaration

Genericness:

• TTABlog Test: Is MUSH Generic for Oat-Based Cereals? [Yes]
• TTAB Finds "BRILLIANT ROSE" Generic for . . . Guess What?
• TTAB Finds MENTCHEES Generic for .... Guess What?

Non-ownership:

• Applicant Contractually Barred from Using Mark in 11 Metro Areas Still Entitled to Registration
• On Summary Judgment TTAB Sustains Opposition: Applicant Merely Re-packaged Branded Goods and so Does Not Own the Mark
• TTAB Grants Petition to Cancel VIVACE Registration for Microneedling Device: Manufacturer Owns the Mark, Not Distributor

Prosecution Issues:

• Precedential No. 1: TTAB Upholds USPTO Objections to Over-Inclusive Drawings for Watch Configuration Marks

Discovery/Evidence/Procedure:

• Precedential No. 3: Dismissal with Prejudice but Without Judgment Suffices for Claim Preclusion Defense
• Res Judicata Thwarts Applicant Seeking to End Run Prior Opposition by Limiting Services in Second Applications

CAFC Decisions:

• CAFC Affirms TTAB's MONEY MART Decision, Confirming that Zone of Natural Expansion Doctrine Applies Only Defensively
• CAFC Affirms TTAB's Dismissal of BULLSHINE FIREBULL Opposition Despite Commercial Strength of FIREBALL for Whisky
• CAFC Hears Oral Arguments in FUCK and RAPUNZEL Appeals
• CAFC Affirms TTAB: Pink Color De Jure Functional for Hip Joint Implants

Other:

• Current Roster of TTAB Judges
• The Trademark Reporter's 2025 "Annual Review" of U.S. Trademark Cases
• TTAB Posts March 2025 Hearing Schedule
• Three Recent Inter Partes Proceedings: The Bigger They Are ....
• TTAB Posts February 2025 Hearing Schedule
• TTAB Chief Judge Gerard F. Rogers Retires; Thomas V. Shaw Appointed Acting Chief Judge
• The Top Ten TTAB Decisions of 2024 (Part II)
• The Top Ten TTAB Decisions of 2024 (Part I)

Text © John L. Welch 2025.

TTAB Posts April 2025 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled four (4) oral hearings for the month of April 2025. All will be held virtually. Briefs and other papers for each case may be found at TTABVUE via the links provided.

April 3, 2025 - 11 AM [Virtual]: In re MoKappa, LLC, Serial No. 97858923 [Refusal to register the mark RAINY for "Streaming of audio, visual and audiovisual material via a global computer network; Communications services, namely, transmitting streamed sound and audiovisual recordings via the Internet; Electronic transmission and streaming of digital media content for others via global and local computer networks," on the ground that the specimens of use did not evidence an association between the mark and the recited services.]

April 8, 2025 - 10:30 AM [Virtual]: In re Atlas Supplies Inc., Serial No. 90115814 [Section 2(d) refusal of the mark SWAN & Design for various food products in classes 29 and 30 in view of the registered marks ALWAZAH TEA (SWAN BRAND) and design for "tea"; ALWAZAH in standard characters for "tea"; and KYKNOS in standard characters for " compotes; preserved, dried and cooked fruit and vegetables; tomato paste" and "ketchup, tomato sauce" and "fruit drinks and juices, preparations for making beverages, namely, fruit drinks and fruit juices; syrups for making soft drinks."]

April 17, 2025 - 11 AM [Virtual]: In re Shibumi Shade, Inc., Serial Nos. 90785780 and 90785791 [Section 2(e)(5) refusals to register the product configuration marks shown below for "Canopies of textile or synthetic materials," on the ground of functionality.]

April 22, 2025 - 1 PM [Virtual]: In re Lost Boy Entertainment LLC, Serial Nos. 98054896 and 98136618 [Bifusal of KANGAROO TOSS in standard character and slightly stylized form for "sporting equipment sold as a unit for playing action type target games in which players throw or fling bags at targets, excluding toys for children and boardgames" on the grounds of likelihood of confusion with the registered mark KANGAROO, in standard character and stylized form, for various toys and sports balls, and applicant's failure to comply with a requirement that it disclaim the word TOSS.]

Read comments and post your comment here

TTABlog comment:  Any predictions? 

Text Copyright John L. Welch 2025.

TTABlog Test: Is MUSH Generic for Oat-Based Cereals?

The USPTO refused to register the proposed mark MUSH for "Ready-to-eat cereals; Breakfast cereals; all the foregoing made in whole or significant part of oats," finding the term to be generic for the goods. Applicant Mush Foods argued that none of its competitors use "mush" to name their goods, and further that the evidence failed to show that consumers primarily use the term generically. How do you think this came out? In re Mush Foods, Inc., Serial No. 97315576 (March 28, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Board, as usual, found the genus at issue to be defined by the identification of goods in the application. The relevant purchasers include "members of the general public looking to purchase 'ready-to-eat cereals' or 'breakfast cereals' made entirely or in significant part of oats."

Examining Attorney William Verhosek submitted a dictionary definition of "mush": "a thick porridge made with cornmeal boiled in water or milk." The Board took judicial notice of the definition of "porridge": "a soft food made by boiling oatmeal or another cereal in water or milk." Another dictionary defined "oatmeal mush" as "porridge made with oatmeal."

The Examining Attorney also submitted Internet evidence showing third-party use of the term "mush" in connection with food items made of oatmeal."

The Board pointed out that evidence of generic use of a term may be relevant, but not necessary "where, as here, other evidence shows that consumers will understand the term to refer to the genus."

Put plainly, the definitions establish that “mush” is a type of food made by boiling oatmeal or other cereal grains. Indeed, the last definition discussed above makes clear that there is “oatmeal mush,” which is a type of “porridge made with oatmeal.” Applicant’s goods, which include “breakfast cereals … made in whole or significant part of oats,” are clearly encompassed by these definitions.

The Internet recipes for different types of “mush” or “oatmeal mush,” were "highly probative for purposes of determining the general public’s understanding as to the meaning of 'mush' in connection with the goods identified in the application." This evidence also undermined the applicant's assertion regarding the lack of evidence that consumers use or understand the term “mush” in the generic sense.

Although [MUSH] may be a less common term today than it once was, and it frequently is associated with porridge now, the word “mush” remains in use today to refer to a food item that may be made of oats, such as the goods identified in the application. “Mush” is a common name that the relevant public understands as primarily describing the genus of goods, which are ready-to-eat cereals or breakfast cereals made of oats, and thus it is legally incapable of indicating the source of the goods.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Mush to do about nothing? Not for this applicant.

Text Copyright John L. Welch 2025.

TTABlog Test: Is KINGS ARMOR Confusable with UNDER ARMOUR for Clothing?

Under Armour petitioned to cancel a registration for the mark KINGS ARMOR for various items of clothing, claiming a likelihood of confusion with its registered mark UNDER ARMOUR for overlapping products. Registrant Valiant Praize, appearing pro se, started out behind the 8-ball (or maybe under the 8-ball), since the goods are in-part identical and presumably travel through the same channels of trade to the same classes of consumers. But what about the marks? Are they confusable? Under Armour, Inc. v. Valiant Praize Productions LLC, Cancellation No. 92082443 (March 26, 2025) [not precedential] (Opinion by Judge Robert H. Coggins).

"In view of the identity of the goods, and the presumed identity of the trade channels and classes of consumers, the second, third, and part of the fourth DuPont factors weigh heavily in favor of a conclusion of a likelihood of confusion." [Emphasis added]. 

"Because the UNDER ARMOUR mark is conceptually strong and commercially very strong, it is entitled to a broad scope of protection and so the fifth DuPont factor also weighs heavily in favor of a conclusion of a likelihood of confusion." [Emphasis added].

"[B]ecause the goods are in-part identical, and Petitioner’s mark is strong, the degree of similarity between the parties’ marks required to support a conclusion of likelihood of confusion decreases." 

Respondent did not supply any sales figures for its goods, so the absence of evidence of actual confusion was not meaningful because there was no proof that there had been a reasonable opportunity for confusion to occur.

But what about the marks? The Board found the words ARMOR and ARMOUR to be the dominant element of the respective marks. "The respective first terms UNDER and KINGS modify and draw attention to the word ARMO(U)R, thus reinforcing the significance of that term." [I'm not buying that - ed.]

"In the context of identical types of clothing, the addition of UNDER to ARMOUR connotes a defensive covering beneath a layer of clothing, while the addition of KINGS to ARMOR connotes a defensive covering worn by or on behalf of a sovereign. Both marks imply defensive coverings worn in battle." [Really? in the context of the goods? - ed.]

The Board found the marks to be more similar than dissimilar in terms of appearance, sound, and commercial impression.

Concluding that confusion is likely, the Board granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Do you think the marks are confusable? What do you think a survey would have shown? Do you think UA could win on an infringement claim in court?

Text Copyright John L. Welch 2025.

TTABlog Test: Are Sexual Arousal Supplements Related to Hair Care Products Under Section 2(d)?

The USPTO refused to register the mark MIM, in standard character form, for (inter alia) "supplements for sexual health and enhancing sexual arousal," finding confusion likely with the registered mark shown below, for hair care preparations. The marks are close enough to be confusable, but what about the goods? Are they related? In re UTI Guard, LLC, Serial No. 97295184 (March 25, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

Applicant argued that the marks are visually different because of the stylized presentation of the cited mark, but the Board pointed out that Applicant’s standard character mark can be presented in any font, stylization, or size, including in lower case letters with reduced spacing between the letters. Furthermore, the marks are likely to be pronounced in the same way. In short, they are "are highly similar and this fact weighs heavily in our likelihood of confusion analysis." [Why heavily? ed.].

As to the involved goods, the evidence revealed that three Internet retail sites sell erectile dysfunction treatments - "the same as or highly similar to the 'Pharmaceutical preparations and substances, namely, natural, herbal, dietary and nutritional supplements for sexual health and enhancing sexual arousal' identified in the subject application - as well as shampoos and conditioners, as part of their hair loss treatment products, all under a single mark. A fourth website offers vaginal lubricant - similar to the "vaginal moisturizers" in the application - and hair loss treatments for women, including shampoos and conditioners.

This evidence "also shows a business focus on treating sexual arousal issues in men and hair loss for men. We find this connection important because the hair loss treatment side of the business is very likely to sell shampoo and conditioner. The evidence of record confirms that this business focus is shared by at least three third parties."

[I]t is at least somewhat common for a business to offer both sexual arousal treatments and shampoo and conditioner under a single brand. These businesses cater to men and women with hair loss and sexual arousal or other sexual-activity-related issues.

In addition, there was evidence of third parties selling general purpose supplements and vitamins as well as shampoo and/or conditioner under the same mark

The Board agreed with the applicant that its consumers will exercise "a little more care than an ordinary consumer making an ordinary purchase." Although this factor favored applicant, it did not outweigh the first two DuPont factors.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is the deck stacked against the Section 2(d) appellant. Is it just too easy to show relatedness between goods? Are three websites enough?

Text Copyright John L. Welch 2025.

TTABlog Test: Is STEED COMPANY Confusable with CORCEL for Clothing?

The USPTO refused to register the mark STEED COMPANY for "Men’s clothing, namely, t-shirts and sweatshirts, outerwear, namely hats" [STEED disclaimed], finding confusion likely with the registered mark CORCEL for "Bottoms as clothing; Footwear; Headwear; Jackets; Tops as clothing." The English translation of CORCEL (Portuguese) is "steed." Applicant argued that "steed" is a weak term for clothing, based on three third-party registrations, and that the doctrine of equivalents is just a guideline that doesn't apply here. How do you think this came out? In re Steed Company LLC, Serial No. 98002385 (March 20, 2025) [not precedential] (Opinion by Judge Robert Lavache).

The Board found the involved goods to be overlapping, and so the second DuPont factor weighed "strongly" in favor of affirmance. [Why strongly? - ed.]. As to the legally identical goods, the Board "must presume that the relevant trade channels and classes of purchasers are the same."

As to the conceptual strength of the cited mark CORCEL, applicant pointed to three registrations for marks containing the word STEED for clothing: FIRESTEED, FOURSTEEDS, and YLSTEED. The Board found these marks too few in number and too different in their commercial impression to prove "that the term STEED has a normally understood and well-recognized descriptive or suggestive meaning in connection with clothing." Applicant also cited dozens of registrations for marks containing the word HORSE, but the Board, while noting that a steed is a horse, pointed out that the terms at issue are STEED and CORCEL, not HORSE.

As to the commercial strength of the CORCEL mark, applicant did not submit any evidence of third-party marketplace usage of either CORCEL or STEED. The third-party registration evidence did not establish "that the relevant consuming public has been exposed to widespread use of similar marks in connection with clothing."

As to the marks, Examining Attorney Henry Urban argued that, when the doctrine of foreign equivalents is applied, "the overall commercial impression of the applied-for mark created by its dominant feature [STEED] is similar to . . . the registered mark [CORCEL]." The Board agreed with the applicant that "while words from modern languages are generally translated into English, the doctrine of foreign equivalents has evolved into a guideline, not an absolute rule, and is applied only when it is likely that 'the ordinary American purchaser would 'stop and translate' [the term] into its English equivalent.'"

1973 Ford Corcel

Applicant argued that the doctrine should not apply, but did not explain why. The Board noted the evidence indicating that “Portuguese is the eleventh most commonly spoken non-English language in the USA," and so concluded that the involved marks "are likely to be encountered by American purchasers who are proficient in Portuguese and would actually translate CORCEL into its English equivalent, STEED."

There was no evidence that CORCEL is the type of foreign term that consumers will simply accept on its face without translating it, Cf. Tia Maria, 1975 TTAB LEXIS 130, at *4, nor evidence "that STEED, whether in English or Portuguese, has any demonstrated meaning or significance in the context of clothing."

The Board ruled that the similarity between the marks in terms of their equivalent meaning and connotation outweighed the differences in sound and appearance. And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2025.

PANERA Fails to Prove Fame Before Applicant's First Use Date, TTAB Dismisses Opposition to PANERALUX for Unrelated Products

In an 83-page opinion, the Board dismissed this three-pronged opposition to registration of the mark PANERALUX for various goods in class 9 (e.g., database management software) and class 11 (including cooking ranges), ruling that Opposer Pumpernickel Associates, owner of the registered mark PANERA for restaurant services and food products, failed to prove its claims of likelihood of dilution (Section 43(c)), likelihood of confusion (Section 2(d)), and false suggestion of a connection (Section 2(a)). One might be tempted to call this opposition "half-baked," but I will refrain from doing so. Pumpernickel Associates, LLC v. Ningbo Panera Lighting Co., Ltd., Opposition No. 91272857 (March 18, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

Dilution-by-Blurring: Pumpernickel claimed that its mark PANERA became famous before Applicant first used its mark in 2019, but the evidence mostly concerned post-2019 activities. And so, the Board found that "the first fame factor does not support a finding that the PANERA mark had achieved dilution-level fame by 2019."

As of 2019, the PANERA mark had been in use for 22 years, but that compared "unfavorably" to two famous competitors: McDonalds (60 years as of 2014) and STARBUCKS (35 years as of 2004), as did their respective geographic footprints. Pumpernickel's sales figures lacked industry context.

With respect to "[p]erhaps the most significant" fame factor - "actual public recognition of the mark as a source-indicator for the goods or services in connection with which it is used" - Pumpernickel relied on awards and media coverage, the number of visitors to its websites and mobile apps, and a consumer survey.

The Board found that none of the media articles referred to the mark as well-known, famous, or a household name. The various awards were of limited probative value. The data regarding website and mobile visits was post-2019, providing no insight as to the fame of the mark before applicant's first use date.

A fame survey conducted by survey expert Hal Poret indicated that 91.3% of the general consuming public recognize the PANERA mark. The Board first noted that the survey was conducted in 2022, and thus did not bear on the fame of the mark as of applicant's first use date. Second, the survey tested “aided” rather than “unaided” awareness of the PANERA mark and therefore was deemed non-probative by the Board.

We find that Opposer failed to show that by 2019, the PANERA mark had “become a ‘household term [with] which almost everyone is familiar,” TiVo Brands, 2018 WL 6921323, at *12 (quotation omitted), and had earned entry into “the select class of marks – those with such powerful consumer association that even non-competing uses can impinge on their value. . . .” Advance Mag. Publishers, 2023 WL 4261426, at *17.

Likelihood of Confusion: The Board found the PANERA mark to be conceptually and commercially strong for restaurant services, and the marks PANERA and PANERALUX to be "quite similar in appearance, sound, and connotation and commercial impression."

With respect to the many items listed in the opposed applications, Pumpernickel focused on applicant's data management software and its cooking-related products, but its proofs of relatedness were woefully inadequate. There was no evidence that Pumpernickel or other restaurants sell (or even use) database management software, and no evidence that consumers could perceive applicant's cooking-related goods as emanating from Pumpernickel.

We find that none of Opposer’s cited goods or services are related to any of the Class 9 and Class 11 goods specifically discussed by Opposer, or to any of the other identified goods. The second DuPont factor weighs heavily in favor of a conclusion that confusion is not likely with respect to both applications. *** Opposer did not show that the channels of trade for the involved goods and services overlap or are otherwise at all related, and the third DuPont factor weighs heavily in favor of a conclusion that confusion is not likely with respect to both applications.

Concluding that the second and third DuPont factors outweighed the first and fifth factors, the Board dismissed the Section 2(d) claim.

Section 2(a) False Connection: The Board observed that in assessing the fame of the PANERA mark for purposes of the fourth element of the Section 2(a) test - whether Opposer is of sufficient fame or reputation that, when Applicant’s mark is used in connection with its goods, a connection with Opposer would be presumed - it is appropriate to consider whether applicant's goods "are similar to goods or services associated with the party complaining of a false association."

Here, the Board found that the involved goods and services "are entirely dissimilar" for the reasons discussed in connection with Pumpernickel's Section 2(d) claim.

While Opposer proved that its PANERA mark is very strong in connection with restaurant services, we find that Opposer is not of sufficient fame that consumers of any of the entirely dissimilar Class 9 and Class 11 goods identified in the two applications would presume a connection with Opposer when they view the PANERALUX mark used for those goods.

And so, the Board dismissed the Section 2(a) claim.

Read comments and post your comment here.

TTABlogger comment: I'll bet this decision will be appealed. BTW: I don't think the marks are confusingly similar.

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB's MONEY MART Decision, Confirming that Zone of Natural Expansion Doctrine Applies Only Defensively

The CAFC upheld the Board's latest decision (on remand) in this long-running dispute over Dollar Financial Group's registrations for the mark MONEY MART, in standard character and design form, for loan financing and check cashing services. The appellate court ruled that the Board "correctly determined that DFG may not rely on the zone of natural expansion doctrine to establish priority and that confusion was likely with respect to DFG’s recited pawn brokerage and pawn shop services." [TTAB opinion here]. Therefore, the Board properly ordered that "pawn brokerage and pawn shops" be deleted from DFG's registrations. Dollar Financial Group, Inc. v, Brittex Financial, Inc., 2025 USPQ2 480 (Fed. Cir. March 19, 2025) [precedential].

The Board found that cancellation Petitioner Brittex had priority because it was "clearly the first to offer pawn brokerage and pawn shop services under [its] mark[]." Brittex had used the mark MONEY MART PAWN or MONEY MART PAWN & JEWELRY for pawn shop services since 1993, whereas DFG used the MONEY MART mark in connection with pawn brokerage and pawn store services only since 2012. DFG argued that it had priority because pawn shop services were within the natural zone of expansion of its loan financing and check cashing businesses that it operated since the 1980s. The Board, however, concluded that DFG could not rely on the zone of natural expansion doctrine to claim priority because the doctrine is purely defensive.

The Board then found that the DuPont factors heavily favored a finding of likelihood of confusion because the marks are "highly similar" and the parties’ pawn services overlap and travel through the same, normal trade channels to the same classes of consumers. And so, the Board partially granted Brittex's petition for cancellation, requiring (as an alternative remedy requested by Brittex) that “[p]awn brokerage and pawn shops” be deleted from DFG's registrations.

The CAFC observed that under the doctrine of natural expansion:

the first user of a mark in connection with particular goods or services possesses superior rights in the mark as against subsequent users of the same or similar mark for any goods or services which purchasers might reasonably expect to emanate from it in the normal expansion of its business under the mark. Orange Bang, Inc. v. Ole Mexican Foods, Inc., 116 U.S.P.Q.2d 1102, 2015 WL 5675641, at *19 (T.T.A.B. Sept. 10, 2015) (precedential).

The CAFC's predecessor court considered the applicability of the doctrine in Jackes-Evans Manufacturing Co.v. Jaybee Manufacturing Corp., 481 F.2d 1342, 1345 (C.C.P.A. 1973), holding that "the ‘expansion of business’ doctrine is purely a defensive doctrine.” Defensive use of the doctrine permits the senior user to prevent the junior user’s registration of a similar mark on logically related goods. Id. But the doctrine does not give the senior user the right to "offensive use," i.e., the "right to register [a] mark on an expanded line of goods where the use of the mark covered by such registration would lead to a likelihood of confusion, mistake or deception." Id. [Emphasis added].

DFG could have properly invoked the zone of natural expansion in a defensive manner had Brittex attempted to register its MONEY MART mark in connection with pawn services in the 1990s and DFG opposed that registration. *** But the doctrine may not be used offensively to establish priority in the manner DFG suggests because that would essentially grant DFG the right to register its mark on a line of expanded goods, even though it would likely cause confusion with Brittex’s established common law rights.

The appellate court then considered the Board's Section 2(d) analysis. It found that the Board properly assessed the strength of Brittex's marks, that substantial evidence supported the finding that DFG's marks "are highly similar to Brittex’s marks in appearance, sound, connotation, and commercial impression," and that the remaining applicable DuPont factors were neutral.

Concluding that the Board did not err with respect to its priority analysis and that substantial evidence supported the Board’s determinations for each disputed DuPont factor, the CAFC affirmed

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TTABlogger comment: Is there anything new here? If the doctrine were available offensively, wouldn't that be tantamount to reserving a right to register? 

Text Copyright John L. Welch 2025.

TTAB Lets Stand Bifusal of Leveling Leg Configuration: De Jure Functional and Non-Distinctive

The Board upheld two refusals to register the product configuration shown below as a trademark for "Food service equipment levelers of metal," finding the proposed mark to be de jure functional under Section 2(e)(5), and, alternatively, lacking in acquired distinctiveness. Applicant Kason's ownership of a design patent for the same design "presumptively indicated that the design is not de jure functional," In re Becton, Dickinson and Co., but utility patent evidence overcame that presumption. In re Kason Industries, Inc., Serial No. 97602791 (March 18, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Section 2(e)(5): Applicant's proposed trademark is "identical to the device protected by its utility patent" entitled “Height Adjustable Support For Food Service Equipment." According to the patent, the leg adjustments are made by rotating the lower tubular external segment about a threaded internal stud that, at its top end, is threaded to structure at the bottom of the stove, refrigerator, or other restaurant equipment. The Board observed that "[n]o leg shape other than one that employs two cylindrical tubular sections could accomplish what the patent seeks to accomplish."

While a smaller, non-cylindrical leg segment could be made sufficiently small to “rotate” within the larger segment without the corners catching, the necessary size disparity would create gaps between the two segments, and the specification’s discussion of the shortcomings of the prior art makes clear that gaps between the upper and lower segments are a significant problem, because they allow bugs to crawl in.

The Board found that "the disclosures in both the specification and claims of the utility patent provide strong and explicit evidence that the applied-for mark as a whole is functional, conclusively rebutting any initial presumption of non-functionality." Based on this evidence, and noting that "[t]he three other types of potentially-relevant functionality evidence mentioned in Morton-Norwich don’t play much of a role in this case," the Board affirmed the functionality refusal.

Lack of Distinctiveness: Although Section 2(e)(5) is an absolute bar to registrability, the Board, in the interest of completeness, considered the alternative ground of lack of distinctiveness.

We know, of course, that a product configuration cannot be inherently distinctive and may be registered only upon proof of acquired distinctiveness. Applicant Kason offered no direct evidence (e.g., survey results, customer declarations) in this regard. It submitted indirect or circumstantial evidence in the form of sales and advertising figures: 3,281,944 levelers sold since 2004, generating approximately $10,929,447 in revenue. Kason spent approximately $34,480 on advertising.

The Board observed that, because consumers are not predisposed to consider product designs (as opposed to words) to be trademarks, a relatively stronger showing of acquired distinctiveness is required. The Board found Kason's evidence "underwhelming."

For the 19-year period from 2004 through August 2023, the average yearly sales revenue is $575,235 and the average yearly advertising expenditure is $1,815. These bare numbers simply come nowhere close to demonstrating that Applicant has successfully educated relevant consumers to view two concentric leg portions of a restaurant equipment leg as an indicator of the source of the product.

The Board further noted that, even if the numbers were much larger, it "would still have to look to other evidence to be confident that the sales simply didn’t simply reflect the desirability of the product - which is especially acute in cases where a product feature is integral part of a product covered by a utility patent."

And so, the Board affirmed the non-distinctiveness refusal.

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TTABlogger comment: The existence of both a utility patent and a design patent for the same configuration demonstrates why ownership of a design patent should not provide any presumption regarding non-functionality in a trademark sense. The question for design patentability is whether the design is the only one that works. If not, design patent protection is available, even if it's the best design (and so not registrable as a trademark). In short, in my view, the existence of a design patent should have no bearing on the issue of whether the proposed mark is functional in a trademark sense because the respective standards for "functionality" are different. See Sarah Fackrell (Burstein), Faux Amis in Design Law, 105 TMR 1455 (2015). [pdf here]

Text Copyright John L. Welch 2025.