TTABlog Quarterly Index: October - December 2025

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Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is NYCU Confusable with NYU for Educational Services? [Yes]
• TTABlog Test: Is BLACKTHORN for Construction Management SAAS Confusable with BLACKTHORNE for Computer-Based Information Systems Consulting? [Yes]
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• On Remand, TTAB Again Denies Petition to Cancel BABIE'S MAGIC TEA Registration: Confusion Unlikely with BABY MAGIC for Skincare Products
• TTABlog Test: Is WISHBONES for a Casino Bar Confusable with WISHBONE FARMS for Restaurant Services? [Yes]
• TTAB Denies SMARTLING/EASYLING Cancellation Petition for Translation Software Due to Differences in Marks, Purchaser Sophistication, and Lack of Actual Confusion

• TTABlog Test: Is LA PACHANGA MARGARITAS Y FIESTA Confusable with PACHANGA MEXICAN GRILL for Restaurant Services? [Yes]
• TTAB Reverses Two Section 2(d) Refusals: Cited Third-Party Websites Failed to Show Relatedness of Charitable Food Distribution and Fundraising Services
• Precedential No. 11: TTAB Awards Section 44(d) Priority to Domiciliary of British Virgin Islands Based on Reciprocity, Grants Summary Judgment Motion Contingent on Ultimate Registration
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• TTAB Grants Petition to Cancel RAFT Registration for Computer Game Software Based on Prior Trademark Use and Analogous Use
• TTABlog Test: Two Section 2(d) Refusals of THE JILLY BOX: How Did the Appeal Turn Out?
• TTABlog Test: Is DANKE Confusable with MERCI for Chocolates? [No]
• Again Finding Wine Related to Whiskey, TTAB Upholds Refusal of ALTAMURA DISTILLERIES & Design Over ALTAMURA
• TTABlog Test: Is TRIFOX for Bicycle Forks Confusable With FOX for Bicycle Shock Absorbers? [Yes]
• TTABlog Test: Is DUO for Personal Mobility Devices Confusable with DUOPOWER for Land Vehicles? [Yes]
• Precedential No. 10: TTAB Explains How to Submit Video Evidence, Reverses 2(d) Refusal of GASPER ROOFING Over JASPER CONTRACTORS

• Which of These Three Section 2(d) Refusals Was/Were Reversed?
• TTABlog Test: Are T-Shirts and Hats Related to Toy Action Figures Under Section 2(d)? [Yes]
• TTABlog Test: Is TROOMY for Supplements Confusable with TROOP for Mushroom-Containing Supplements? [No]
• Two Recent Section 2(d) Oppositions Sustained by the TTAB
• TTAB Dismisses Section 2(d) Opposition to HABANA BRISA: not Confusable with HAVANA TAN! for Sun Care Preparations
• TTAB Reverses VERSAMAX Section 2(d) Refusal: Applicant's Specific Tractors not Related to Trailers, Purchasers Careful
• On Remand, TTAB Reverses Course, Sustains Section 2(d) Opposition to ECHO D'ANGELUS for Alcoholic Beverages and Wine
• Precedential No. 9: Affirming GASPARILLA Section 2(d) Refusal, TTAB Rejects Flimsy Consent Agreement
• TTABlog Test: Is "1849 BOURBON" for Distilled Spirits Confusable With "1849" for Wine? [Yes]
• TTABlog Test: Which One of These Four Section 2(d) Appeals Was Successful?
• TTABlog Test: Is KARMA KRACKERS for Crackers Confusable with KARMA for Nuts? [Yes]
• Weakness of "BNB" Brings Cancellation Denial: "COMPLETE BNB" Not Confusable with "AIRBNB"

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

• TTABlog Test: How Did These Three Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Is "MUSIC.AI" Merely Descriptive of Music Production Software? [Yes]
• TTABlog Test: Is HOLY HABITS Merely Descriptive of Spiritual Growth Management Software? [Yes]
• TTAB Finds PALAPA to be Merely Descriptive of Event Venue Services
• TTAB Orders Cancellation of STORIES OF THE PROPHETS Registration, Finding it Merely Descriptive of Religious Books
• SHIPPERCOPILOT Merely Descriptive of AI Software Services for Facilitating Shipping, Says TTAB
• TTABlog Test: Is "TAC-O" Merely Descriptive of Food Seasonings and Cooking-Related Services? [Yes] 

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

• TTABlog Test: Is RODEO TEXAS Primarily Geographically Descriptive of Sports Event Parties and Non-rodeo Clothing? [Yes]
• TTAB Grants Petition to Cancel ZIGONG LANTERN GROUP Registration due to Geographical Descriptiveness

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

• BOWENS for Guitars is Primarily Merely a Surname, Says TTAB

Section 2(f) - Acquired Distinctiveness:

• TTAB Deems Bottle Trade Dress a Mere Refinement of Existing Designs and so Not Inherently Distinctive

Abandonment:

• TTAB Denies Petition for Cancellation of FAT KATZ Registration for Failure to Prove Abandonment

Genericness:

• VETEMENTS AG Files Reply to USPTO's Certiorari Opposition: TTABlog Asks, What About the Perception of 99 Percent of American Purchasers as to Genericness?
• PT Medisafe Files Certiorari Petition Seeking to Overturn CAFC Green Medical Glove Genericness Ruling

Nonownership:

• TTAB Denies Cancellation of "WHY PAY A LOT FOR STORAGE?" Registration, Rejecting Non-Ownership Claim

Nonuse:

• TTAB Orders Cancellation of EDGE GAMES Registration Due to Nonuse, Rejecting Founder's Testimony

Request for Information:

• TTAB Affirms Refusal of PARKAI Application for Failed Response to Rule 2.61(b) Request for Information

Statutory Standing:

• Organization for Transformative Works Files Amicus Brief Supporting Grant of Certiorari in RAPUNZEL Standing Case
• Professor Curtin Files Petition for Certiorari in RAPUNZEL Consumer Standing Case
• TTAB Denies Petition to Cancel Registration of President XI Likeness Due to Lack of Statutory Standing
• Opposer Fails to Submit Evidence: TTAB Dismisses for Failure to Prove Statutory Standing

Discovery/Evidence/Procedure:

• TTAB Upholds Three Refusals Because Applicant Provided its Counsel's Address, not its Domicile Address
• Anonymous Comment on Letters of Protest
• Precedential No. 10: TTAB Explains How to Submit Video Evidence, Reverses 2(d) Refusal of GASPER ROOFING Over JASPER CONTRACTORS

CAFC Decisions:

• CAFC Upholds TTAB: BASIN BEVERAGE CO. Confusable With TAHOE BASIN, GREAT BASIN COFFEE, and NEW BASIN DISTILLING COMPANY
• CAFC Upholds TTAB's Grant of Counterclaim for Cancellation: Applicant Proved Priority Through Assignment of Common Law Mark After Proceeding Commenced
• CAFC Reverses TTAB: KAHWA not Generic for, or Descriptive of, Cafés and Coffee Shops - Substantial Evidence Lacking

Recommended Reading:

• Recommended Reading: The Trademark Reporter, November-December 2025 Issue
• Recommended Reading: A Legal Strategist's Guide to Trademark Trial and Appeal Board Practice, Fifth Edition
• Recommended Reading: The Trademark Reporter, September-October 2025 Issue

Other:

• USPTO Publishes November 2025 Revision of the Trademark Manual of Examining Procedure
• Recent Supreme Court Developments in TTAB cases
• USPTO Seeks Applicants for Chief Administrative Trademark Judge at the TTAB
• Supreme Court Developments in TTAB cases
• TTAB Deputy Chief Judge Thomas V. Shaw Retires
• TTAB Posts December 2025 Hearing Schedule
• TTABlog Celebrates 21st Anniversary!
• TTAB Posts November 2025 Hearing Schedule
• Judge Mary Beth Myles Has Resigned from the TTAB
• TTAB Quarterly Index: July - September 2025
• TTAB Posts October 2025 Hearing Schedule.

Text Copyright John L. Welch 2025.

TTABlog Test: Is LA PACHANGA MARGARITAS Y FIESTA Confusable with PACHANGA MEXICAN GRILL for Restaurant Services?

The USPTO refused to register the proposed mark LA PACHANGA MARGARITAS Y FIESTA in the word-and-design form shown below, for "providing of food and drink via a mobile truck; restaurant services" [MARGARITAS disclaimed], finding confusion likely with the registered mark PACHANGA MEXICAN GRILL (in standard characters with a disclaimer of MEXICAN GRILL) for “restaurant services." Applicant argued that the term PACHANGA, which means "a (lively) party" in Spanish, is a weak formative, further evidenced by third-party use of that word and of the English word PARTY in connection with restaurant services. How do you think this appeal came out? In re O&R Franchise Group LLC, Serial No. 98134084 (December 30, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Board first considered the strength of the cited mark. Applicant submitted four third-party registrations for marks containing the word PACHANGA, but none were for restaurant services. It also provided seven third-party websites showing use of PACHANGA in connection with restaurant services, but those were "not so plentiful to make a meaningful impact in terms of demonstrating commercial weakness."

Finally, Applicant pointed to 10 third-party registrations for marks incorporating the term PARTY in connection with food and restaurant services, arguing that these marks are relevant because, under the doctrine of foreign equivalents, PACHANGA is "the Spanish equivalent of PARTY and [thus is] similarly weak." The Board was unmoved: "Applicant does not cite to any authority to support the application of the doctrine of foreign equivalents in the manner it seeks, i.e., for purposes of using third-party registrations containing the English equivalent of an allegedly weak foreign term." Nonetheless, the third-party registrations and uses of PACHANGA-formative marks confirmed the suggestive connotation of the word.

The Board concluded that PACHANGA is "somewhat conceptually weak in that it is plainly suggestive in connection with restaurant services" [i.e., a "festive dining atmosphere."] "But the fact that it is suggestive does not mean its scope of protection shrinks substantially," and so this sixth DuPont factor weighed "somewhat" in applicant's favor.

Turning to the marks, the Board found them to be "quite similar in appearance and sound because the dominant element of each mark is the term PACHANGA," attributing no significance to the word "LA." Both marks "are suggestive of a festive Mexican-themed or cuisine establishment."

In sum, we conclude that the marks are overall very similar. Consumers are likely to call for the respective services by using the nearly identical terms LA PACHANGA or PACHANGA. The marks also have similar connotations and convey similar commercial impressions. Accordingly, the first DuPont factor weighs in favor of a conclusion that confusion is likely.

Since the involved services are identical, the Board must presume that they are offered in the same trade channels to the same classes of consumers, and so the second and third DuPont factors weighed "heavily" in favor of affirmance of the refusal.

Though the shared term, PACHANGA, is plainly suggestive and thus has some conceptual weakness and a minimal showing of third-party use, which tend to favor a finding that confusion is not likely, this is far outweighed by the other aforementioned factors. We thus conclude on this record that Applicant’s mark is likely to cause confusion with the registered mark.

Ands so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: How did you do? Would you dub this a WYHA? What do you think about the doctrine of equivalents issue?

Text Copyright John L. Welch 2025.

TTAB Reverses Two Section 2(d) Refusals: Cited Third-Party Websites Failed to Show Relatedness of Charitable Food Distribution and Fundraising Services

In a lengthy, detailed opinion, the Board reversed Section 2(d) refusals of the mark POTS in standard character and logo form (shown below) for food distribution and charitable services, in view of the mark POTS for fundraising software and services. Relying on the Board's OSF Healthcare decision [pdf here] in analyzing the relatedness issue, the Board found that the differences in the goods and services, channels of trade, and classes of consumers outweighed the identity and similarity of the marks, making confusion unlikely. In re Part of the Solution, Serial Nos. 97791804 and 97791806 (December 18, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

In seeking to prove the relatedness of the involved goods and services, the Examining Attorney relied  solely on extrinsic evidence in the form of eight third-party websites of charitable organizations. The Board found that evidence "insufficient in quantity and quality to establish relatedness." 

In view of the number of charitable organizations in United States that provide goods and render services to those in need, "eight websites strike us as too few in number to show that 'the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark,' 10 TTABVUE 5 (emphasis added), even if the websites were probative of that issue." Moreover, ....

The websites here are not probative of that issue, however, because they do not show that the same entities offer both the services actually identified in the ’804 and ’806 Applications and the goods or services actually identified in the ’860 Registration. As the Board explained in OSF Healthcare, under the second DuPont factor, examining attorneys must focus on the actual language in the identification of goods or services in an application, rather than on broadened or generalized descriptions of the identified goods or services. OSF Healthcare, 2023 WL 6140427, at *12. (emphasis supplied).

In OSF Healthcare, the Board explained that “[w]ith respect to Internet evidence, in determining exactly what services are offered through the respective websites, we acknowledge that services may not be explicitly described at all, or may be described in colloquial language that does not track the technical language of acceptable identifications of goods and services in applications and registrations, including those involved here.” OSF Healthcare, 2023 WL 6140427, at *10 (citation omitted). “In such instances, we must determine the nature of the services that are offered, and decide whether they fall within the full scope of the language in the involved identifications.”

The Examining Attorney did not follow OSF Healthcare because "she quotes only snippets of the Class 36 identification in the ’860 Registration, and otherwise paraphrases the involved identifications of goods and services."

We agree with the Examining Attorney that the evidence shows that charitable organizations such as Applicant engage in fundraising; indeed, money or in-kind donations raised through such efforts are the lifeblood of those organizations. But unlike the fundraising-related goods and services identified in the ’860 Registration, which are necessarily provided to, and for the benefit of, entities other than Registrant, the fundraising activities of Applicant and other charitable organizations are for the benefit of the organizations themselves and are not provided to, and for the benefit of, other entities. As a result, those fundraising activities are not “services” for purposes of the second DuPont factor.

The Board concluded that the goods and services identified in the cited registration and the services identified in the subject applications are not related, and "the second DuPont factor strongly supports a conclusion that confusion is not likely...."

Furthermore, the evidence "also does not establish that the channels of trade or classes of consumers for these [goods and] services overlap."

Read comments and post your comment here.

TTABlogger comment: Judge Larkin also wrote the opinion in OSF Healthcare.

Text Copyright John L. Welch 2025.

BOWENS for Guitars is Primarily Merely a Surname, Says TTAB

The Board affirmed a Section 2(e)(4) refusal to register the proposed mark BOWENS for guitar and audio equipment, finding the mark to be primarily merely a surname and therefore barred from registration (absent a showing of acquired distinctiveness). The Board observed that BOWENS is neither a rare surname nor a common one, but it is the surname of tens of thousands of individuals. There was "some evidence that this term has surname significance in some other established contexts," and no evidence of any other established meaning of BOWENS. In re The Hoist Group Inc., Serial No. 98444366 (December 22, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

In determining whether the mark BOWENS is primarily merely a surname, the Board considered the following four Benthin factors:

1. Whether the surname is rare; 
2. Whether anyone connected with the applicant has that surname; 
3. Whether the term has any recognized meaning other than as a surname e.g., an “ordinary language” meaning; and, 
4. Whether the term has the structure and pronunciation of a surname.

As to the first factor, the LEXIS/NEXIS surname database included more than 23,000 individuals with the Bowens surname, located across the United States. Examining Attorney Komal Vo provided evidence from ancestry.com showing more than 72,000 persons with the Bowens surname.

Applicant argues BOWENS is not a common surname, as it accounts for a tiny fraction of the individuals in the United States. Both the Trademark Examining Attorney and the Applicant are correct here, as BOWENS is not a rare or common surname. It rests somewhere between these two points on the range of surnames in the United States. The standard, however, asks whether the BOWENS surname is rare. We find it is not rare, though it is not particularly common either. The first factor supports the refusal, but is not conclusive of the primary significance of the applied-for mark.

The second factor was neutral: there was no evidence that the surname BOWENS is connected to anyone associated with Applicant Hoist Group.

As to the third, Hoist argued that BOWENS has other meanings - for example, BOWENS ISLAND, near San Antonio, Texas. However, the evidence showed that the area was named after John Bowen and thus this evidence supported the Section 2(e)(4) refusal. The same was true of other examples provided by Hoist, including a disease named for a person who identified it. "None of the evidence Applicant submitted shows an established non-surname meaning of Bowens."

Examining Attorney Komal Vo also submitted evidence showing that BOWENS does not have a dictionary definition, as well as evidence from ancestry.com about the family history of the Bowens surname - it originated in Dutch as the name Bouwens and later became Bowens in Welsh-Irish and English. The Board concluded that the third factor supported the refusal.

The fourth factor presented "something of a conundrum, because we have no clear guidance on what structure or pronunciation is typical of a surname. Indeed, surnames can be found with many different structures and pronunciations, making it difficult to apply this factor in a consistent and meaningful way."

The Examining Attorney pointed to three other surnames—BOWEN, BOUWENS and BAUWENS—and argued that BOWENS is similar in structure and pronunciation. But there was "no evidence of what it is about these names that would lead consumers to understand them as surnames." "This evidence doesn’t tell us much about whether consumers will understand BOWENS as primarily merely a surname."

Applicant Hoist referred to several registrations for Bowen-variant marks that were registered without a showing of acquired distinctiveness, but it also submitted evidence of Bowen-variant marks that were registered with a showing of acquired distinctiveness. This evidence "do[es]not help us determine whether BOWENS has the structure and pronunciation of a surname." Finding the evidence "equivocal as to the import of the structure and pronunciation of BOWENS," the Board deemed this factor neutral.

In conclusion, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: BOWENS certainly seems to have to structure and pronunciation of BOWEN.

Text Copyright John L. Welch 2025.

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

Affirmances in Section 2(e)(1) mere descriptiveness cases are running at about 90% this year (as usual). Here are three recent appeals. No hints this time. How do you think they came out? [Answer in first comment].

In re Asthetik Skin LLC, Serial No. 98004456 (December 19, 2025) [not precedential] (Opinion by Judge Jessica B. Bradley). [Mere descriptiveness refusal of ÄSTHETIK for "Eye gels; Lip balm; Non-medicated skin toners; Skin care products, namely, non-medicated skin serum; Skin cleansers; Skin masks; Skin moisturizer," and for "Cosmetic skin care services, namely, facials, chemical peels, microdermabrasion; Health spa services for health and wellness of the body and spirit, namely, providing massage, facial and body treatment services, cosmetic body care services; Permanent makeup services." Applicant argued that "[d]ue to the prominent use of an umlaut on the ‘A,’ even to non-German speakers, this term is recognizable as a German term, not an American English term," that "ÄSTHETIK" is not pronounced like the English word "AESTHETIC," and that "'ÄSTHETIK’ is a noun in German, which means '[the] study of beauty, especially in art'" which is "used in a purely philosophical context."]

In re Laundry CEO LLC, Serial No. 98382558 (December 18, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of LAUNDRY CEO (in standard character form) for "Downloadable non-fiction books on a variety of topics; Electronic publications, namely, books, magazines, manuals, e-books, newsletters, e-journals, and training videos featuring business, all recorded on computer media," for a "Series of printed non-fiction books in the field of business," and for "Education services, namely, providing classes, seminars, and workshops in the field of business; Educational and entertainment services, namely, providing motivational speaking services in the field of business; Providing online non-downloadable electronic publications in the nature of books, magazines, manuals, e-books, blogs, newsletters, e-journals, and training videos in the field of business." Applicant argued that LAUNDRY "has no immediate meaning in connection with entertainment and educational services, and books relating to business" and that CEO "does not immediately bring to mind a specific meaning in connection with its identified goods and services."]

In re LumaClean, LLC, Serial No. 98444087 (December 8, 2025) (Opinion by Judge David K. Heasley) [Mere descriptiveness refusal of STOMADISC for "wound dressings; wound dressings, namely, pledgets; sterile wound dressings." Applicant argued that the term is suggestive, unitary, and/or incongruous. It also argued that STOMADISC functions as a double entendre, "with one meaning possibly suggestive of a product related to stoma care and another as a coined brand name."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2025.

Recommended Reading: The Trademark Reporter, November-December 2025 Issue

The November-December 2025 (Vol. 115 No.5) issue of The Trademark Reporter has arrived. [pdf here].

Willard Knox, Staff Editor-in-Chief, summarizes the contents as follows (and below): The TMR devotes its November–December 2025 (Vol. 115, No. 6) issue to emerging intellectual property (“IP”) enforcement in online markets and digital spaces. The TMR’s first-ever Guest Editor, Michael P. Goodyear, has curated a collection of leading scholarship in this rapidly developing area impacting both trademarks and complementary IP. The issue’s high-profile thought leaders explore topics ranging from mass-defendant IP litigation targeting online sellers to the ongoing dialogue between non-fungible tokens and trademark law—and explore what may be next for brand owners and IP rights holders in an increasingly virtual world.

Editor’s Note: Theme Issue—Emerging IP Enforcement in Online Markets and Digital Spaces, by Michael P. Goodyear. The TMR’s first-ever Guest Editor, Michael P. Goodyear, has curated this comprehensive collection of leading scholarship on the enforcement of trademarks and complementary intellectual property rights in the ever-evolving digital world.

A SAD Scheme of Abusive Intellectual Property Litigation, by Eric Goldman. This article examines the rise in mass-defendant intellectual property litigation and argues that plaintiffs in these cases are abusing the U.S. judicial system to the detriment of online merchants, marketplaces, and consumers.

The Counterfeit Sham, by Sarah Fackrell. This article examines the use of mass-defendant design patent litigation and argues that plaintiffs in these cases are intentionally conflating design patent infringement with counterfeiting (which the Lanham Act limits to registered trademarks) to secure benefits and relief not otherwise available to design patent holders.

The Structure of Secondary Copyright Liability, by Felix T. Wu. This article argues that secondary copyright liability would benefit from being viewed by judges and legislators through the lens of online platform liability principles.

The Role, Responsibility, and Liability of Online Intermediaries Under EU IP Law, by Eleonora Rosati. This article offers fashion brand owners a comprehensive analysis of the law in the European Union and the United Kingdom (with reference to U.S. law as well) on potential liability of information society service providers or online intermediaries.

Rising Above Liability: The Digital Services Act as a Blueprint for the Second Generation of Global Internet Rules, by Martin Husovec. This article provides an in-depth overview of the European Union’s Digital Services Act (the “DSA”) (and its origin in the United States’ Digital Millennium Copyright Act) and how the principles underlying the DSA could open a dialogue between the world’s liberal democracies on how to best regulate user-generated content going forward.

Confusion in Trademarked NFTs, by Andrew C. Michaels. This article provides critical updates on the ongoing dialogue between the blockchain-based technology of non-fungible tokens and trademark law (and the free speech clause of the First Amendment to the U.S. Constitution).

Read comments and post your comment here.

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®.

TTABlog Test: Is NYCU Confusable with NYU for Educational Services?

New York University opposed an application to register the mark NYCU for "organization of exhibitions for cultural or educational purposes; providing information about education," claiming a likelihood of confusion with its registered mark NYU for educational services, and its identical common law mark for the provision of information in the field of education. Applicant National Yang Ming Chiao Tung University argued that the fame of the NYU mark weighed against likelihood of confusion, that consumers of the services are sophisticated and will distinguish the marks, and that the existence of universities operating under the marks SUNY and CUNY weakened the scope of opposer's rights. I suspect that you can guess how this came out. New York University v. National Yang Ming Chiao Tung University, Opposition No. 91284793 (December 19, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

Applicant National University attacked New York University's priority with regard to the common law NYU mark, based on a purported failure by opposer to show continuous use for informational services. The Board pointed out, however, that continuous use is not required to establish opposer’s priority. Kemi Organics, LLC v. Gupta, No. 92065613, 2018 TTAB LEXIS 149, at *22 (quoting W. Fla. Seafood, 31 F.3d at 1128 (“Section 2(d) does not speak of ‘continuous use,’ but rather of whether the mark or trade name has been ‘previously used in the United States by another and not abandoned.’”)) (cleaned up). "To the extent that Applicant is arguing Opposer abandoned any common law rights in its NYU mark in connection with the information services, it did not plead such a defense."

National University argued that "the fame of NYU Mark[ ] weighs against likelihood of confusion." However, the CAFC made it "very clear" in Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 354 (Fed. Cir. 1992), that "[f]amous or strong marks enjoy a wide latitude of legal protection" and therefore "the fifth DuPont factor 'plays a dominant role' in cases where such a mark is present. Id. at 352. Thus, Applicant’s attempt to use the renown of Opposer’s mark as a liability fails."

National University also argued that, because opposer is renowned as a university with a primary campus in New York City, "the public is highly unlikely to be confused with services provided by Applicant based in Taiwan." The Board pointed out that the opposed application and opposer’s registrations are unrestricted geographically and involve rights nationwide in scope. "It is thus irrelevant that the parties may have their main campuses or are based in different cities or countries. We must assume that Applicant will offer and advertise its services in the same geographic region as Opposer, including New York."

National University pointed to two other higher education institutions in New York using the initials NY—the State University of New York (SUNY) and the City University of New York (CUNY). The Board observed that those third-party uses "are not only few in number, but the university initialisms, SUNY and CUNY, do not approximate Opposer’s NYU mark in the same manner as does Applicant’s mark, NYCU."

[T]he record shows that Opposer’s NYU mark is extremely strong and broadly so in connection undergraduate and post-graduate educational services. While Opposer’s mark, NYU, is admittedly an abbreviation for “New York University,” it retains this strength and has no demonstrated weakness.

National University then contended that, because opposer did not identify any instances of actual confusion, this factor weighs against likelihood of confusion. It also made the "curious" argument that the lack of instances of actual confusion "is not surprising in that a customer would be unlikely to confuse the two source provider institutions, one in New York, and one in Taiwan." Again, the Board was unimpressed.

[T]he involved application is based on Applicant’s allegation of an intent to use the NYCU mark in commerce in the U.S., and there is scant evidence that U.S. consumers have been exposed to use of this mark in the marketplace. Given this void of evidence, we cannot conclude that the “circumstances have been such that [actual confusion] could be expected to have happened."

Finally, National University tried the sophisticated consumer argument, maintaining that, because opposer "provides an expensive service that students compete to attend, it is highly unlikely they will be confused with another service provider." Applicant pointed to opposer’s acceptance rate and asserted that "Opposer’s customers are undoubtedly sophisticated, they are admitted at a rate of only 12%." The Board was unmoved. Referring to applicant's informational services, the Board replied: "we cannot assume that consumers of these services will necessarily exercise more care in registering for these exhibitions or educational information services."

There are no factors that weigh against finding a likelihood of confusion and, as to the other factors argued, we find them neutral in our analysis. On balance, we have no difficulty concluding on this record that there is a likelihood of confusion between Applicant’s mark, NYCU, and Opposer’s mark, NYU, as registered and for which it has common law rights.

Read comments and post your comment here.

TTABlogger comment: Applicant's initials are NYMCTU. Why did it drop the letters "M" and "T"?

Text Copyright John L. Welch 2025.

TTAB Upholds Three Refusals Because Applicant Provided its Counsel's Address, not its Domicile Address

The Board affirmed refusals to register the mark shown below, along with two similar marks, for film production and streaming services, on the ground that Applicant Solace Cine LLC failed to provide its domicile address as required by Section 1(a)(2) of the Lanham Act and by Rule 2.189. Solace provided the address of its counsel’s law firm, but with no statement that the law firm address was Solace’s principal place of business. That was unacceptable. In re Solace Cine LLC, Serial Nos. 98558485, 98558583, and 98558650 (December 18, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

In an office action response, Solace stated its address as 10261 4th Street North, Saint Petersburg, Florida 33716. The response was signed by Cameron W. Brumbelow, its counsel of record, at the mailing address of Brumbelow Morales, P.A., 10261 4th Street North, Saint Petersburg, Florida 33716.

Section 1(a)(2) of the Lanham Act provides that "[t]he application shall include specification of the applicant’s domicile ...." Trademark Rule 2.189 requires that "[a]n applicant or registrant must provide and keep current the address of its domicile, as defined in Rule 2.2(o)," which states that "[t]he term domicile as used in this part means the permanent legal place of residence of a natural person or the principal place of business of a juristic entity." Rule 2.2(p) states: "[t]he term principal place of business as used in this part means the location of a juristic entity’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled."

During prosecution of its application, Solace was asked to provide its domicile address, i.e., the principal place of business for its video streaming and film production services. "Despite being given ample opportunity to do so, or to petition for a waiver of the requirement, Applicant did not provide its domicile address or seek such a waiver. Counsel’s law firm address, with no statement that the law firm address was Applicant’s principal place of business, was insufficient."

Furthermore, Solace did not state that it lacks a fixed physical address. If that were the case, Solace had various response options. TMEP § 601.01(c)(iv)(a). "However, none of these options include listing a law firm."

Applicant’s contention in its brief that “attorney Cameron Brumbelow is an executive with the applicant LLC and works in a separate non-legal capacity for the company,” even if timely raised would not satisfy the domicile address requirement. The requirement is for the address for Applicant’s principal place of business, not the address for another business where Applicant’s executive works.

Solace asked for a remand to the USPTO so it could file a petition to the Director asking for a waiver. However, Solace failed to show good cause for the remand, and in any case, it was too late to seek a waiver because such a petition would be untimely under Rule 2.146(d)(1), which requires filing of the petition within two months of the office action.

The Board concluded that the three applications were properly refused for failure to provide the required domicile address. "Because this is a sufficient basis for affirming the refusal to register each of Applicant’s marks, we do not reach the refusal based on Applicant’s failure to provide the mark description and color statement."

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TTABlogger comment: These applications were based on intent-to-use. So, it seems that the law firm address could also be the principal place of a business that was still in the ITU phase. Solace should have said that.

Text Copyright John L. Welch 2025.

USPTO Publishes November 2025 Revision of the Trademark Manual of Examining Procedure

The USPTO has published a November 2025 revision of the Trademark Manual of Examining Procedure (TMEP), here. It has also provided a summary of several of the "highlights" [here].

The longest section in the summary of highlights concerns the doctrine of foreign equivalents, a revision triggered by the CAFC's decision in the VETEMENTS case [TTABlogged here], currently under consideration by the Supreme Court in connection with the applicant's petition for a writ of certiorari. That section includes this passage:

The burden is on the party opposing translation to show that it is unlikely the ordinary American purchaser would stop and translate the wording into its English equivalent. Vetements at 1331. As to this inquiry, the “ordinary American purchaser” encompasses “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” Id. at 1324 (quoting In re Spirits Int’l, N.V., 563 F.3d at 1352).

Factors to consider in determining whether the ordinary American purchaser will stop and translate non-English wording include whether: (1) the relevant English translation is literal and direct; (2) the non-English wording is from a common, modern language such that an appreciable number of Americans are capable of translating the wording; and (3) whether the context in which the wording appears, such as the specific goods, services, or marketplace circumstances, would cause an ordinary American purchaser with ordinary sensibilities to translate the wording or instead to take the wording at face value and not translate.

The revisions also include this caveat derived from the PRINCETON EQUITY GROUP case [TTABlogged here]: "[I]f an applicant's brief attempts to incorporate by reference an argument made during prosecution, such argument may be deemed to have been forfeited. In re Princeton Equity Grp. LLC, Ser. No. 97397212, 2025 TTAB LEXIS 242, at *9 (2025).

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TTABlogger comment: As stated in the Forward to the TMEP: "The guidelines set forth in this Manual do not have the force and effect of law."

Text Copyright John L. Welch 2025.

CAFC Upholds TTAB: BASIN BEVERAGE CO. Confusable With TAHOE BASIN, GREAT BASIN COFFEE, and NEW BASIN DISTILLING COMPANY

In a non-precedential ruling, the CAFC upheld the Board's decision [here] affirming the Section 2(d) refusal of the mark BASIN BEVERAGE CO. for "Tea-based beverages; Coffee based beverages; Kombucha tea," in International Class 30; "Beverages, namely, beer, sparkling water, non-alcoholic water-based beverages," in International Class 32; and "Beverages, namely, wine, hard seltzer; Hard kombucha tea," in International Class 33 [BEVERAGE CO. disclaimed]. As to the class 30 goods, the Board found confusion likely with the registered mark TAHOE BASIN for coffee and chai tea, and GREAT BASIN COFFEE, registered on the Supplemental Register for "coffee, tea, and coffee based beverages," and as to the remaining goods, with the mark NEW BASIN DISTILLING COMPANY for liquor [DISTILLING COMPANY disclaimed). In re Matthew Amoss, Appeal No. 2024-1617 (Fed. Cir. December 16, 2025) [not precedential].

The court set forth in some detail the Board's straightforward reasoning and concluded that the Board's findings were supported by substantial evidence. Applicant/Appellant Amoss contended that the Board erred by according the “GREAT BASIN COFFEE COMPANY” mark a greater scope of protection than it deserved as a mark on the Supplemental Register. The CAFC was unmoved.

[W]e see no basis in our law to restrict the scope of protection afforded to such a mark merely because it appears on the Supplemental Register, particularly where, as here, the mark still functions as a source identifier and the relevant DuPont factors otherwise support a likelihood of confusion.

Further, placement on the Supplemental Register reflects only a lack of inherent distinctiveness, not an inability to identify source or cause confusion. See id. (explaining that placement on the Supplemental Register does not render a mark incapable of causing confusion because (1) such marks must still be capable of distinguishing goods and (2) a lack of inherent distinctiveness does not necessarily equate to generic or common descriptive wording; thus, such non-generic descriptiveness may still support a § 2(d) refusal). Put simply, nothing in § 2(d) indicates that such registration limits a mark’s capacity to serve as a basis for a likelihood of confusion refusal. Cf. 15 U.S.C. § 1052(d).

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TTABlogger comment: "Non-generic descriptiveness" is a phrase I haven't heard before.

Text Copyright John L. Welch 2025.