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 Pumpernickel Associates, LLC v. Ningbo Panera Lighting Co., Ltd., Opposition No. 91272857 (March 18, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).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.

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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.

Current Roster of TTAB Judges

With the retirements of Chief Judge Gerard F. Rogers at the end of 2024, and Judges Peter W. Cataldo and Karen S. Kuhlke last month, the Board’s membership now stands at twenty-seven (27) Administrative Trademark Judges. The current roster is set forth below, beginning with Acting Chief Judge Thomas V. Shaw and then proceeding alphabetically.

Shaw, Thomas V. (Acting Chief Judge): Appointed to TTAB in 2011. Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Adlin, Michael B.: Appointed to TTAB in 2012. Prior Professional Experience: TTAB Interlocutory Attorney; USPTO Office of External Affairs; Private Practice; Education: B.A., Duke University; J.D., Boston University School of Law.

Allard, Martha B.: Appointed to TTAB in 2021. Prior Professional Experience: Private Practice (Nashville); Education: B.S. University of Kentucky; J.D., Western New England University School of Law.

Bradley, Jessica D.: Appointed to TTAB in 2024. Prior Professional Experience: Private Practice ; LexisNexis; Education: B.A., George Washington University; J.D., Catholic University of America Columbus School of Law.

Brock, Elizabeth K.: Appointed to TTAB in 2024. Prior Professional Experience: Private Practice; Education: B.A., University of Michigan; J.D., Wayne State University Law School.

Casagrande, Thomas L.: Appointed to TTAB in 2023. Prior Professional Experience: Private Practice (Texas), USPTO Associate Solicitor 2012-2023; Education: B.A., University of Pennsylvania; J.D., University of Connecticut School of Law.

Coggins, Robert H.: Appointed to TTAB in 2017. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Davidson College; J.D., Wake Forest School of Law.

Cohen, Wendy B.: Appointed to TTAB in 2023. Prior Professional Experience: Private Practice, 1998-2012, TTAB Interlocutory Attorney, 2012-2023; Education: B.A, University of Missouri - Columbia; J.D., University of Missouri - Columbia School of Law.

Dunn, Elizabeth A.: Appointed to TTAB in 2019. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Boston University; J.D., American University Washington College of Law.

Elgin, Jennifer L.: Appointed to TTAB in 2023. Prior Professional Experience: Private Practice, 1993-2020, TTAB Interlocutory Attorney, 2020-2023; Education: B.S., Cornell University; J.D., Emory University School of Law.

English, Christen M.: Appointed to TTAB in 2019. Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Boston College; J.D. Catholic University Columbus School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State College of Law.

Greenbaum, Cindy B.: Appointed to TTAB in 2012. Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney (2006-2011); Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015. Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., The Johns Hopkins University; J.D., University of Maryland School of Law.

Johnson, Melayne K.: Appointed to TTAB in 2020. Prior Professional Experience: Corporate Counsel; Senior Counsel, Office of General Counsel at the U.S. Department of Health and Human Services (HHS); Education: B.A., University of Michigan; J.D., Ohio State University Moritz College of Law.

Larkin, Christopher C.: Appointed to TTAB in 2016. Prior Professional Experience: Private Practice (Los Angeles, CA; New York, N.Y.); Education: B.A., Stanford University; J.D., Columbia Law School.

Lavache, Robert: Appointed to TTAB in 2024. Prior Professional Experience: Trademark Legal and Examination Policy Specialist; various other USPTO positions; Education: B.A., University of Miami; J.D., Cornell Law School.

Lebow, Mark: Appointed to TTAB in 2020. Prior Professional Experience: Private Practice (Alexandria, Virginia); Education: B.A., Florida Atlantic University; J.D., Hofstra University School of Law; L.L.M., John Marshall Law School.

Lykos, Angela: Appointed to TTAB in 2010. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., The Johns Hopkins University; J.D., Duke University Law School.

Lynch, Cynthia C.: Appointed to TTAB in 2015. Prior Professional Experience: Private Practice; Attorney-Advisor at the International Trade Commission; USPTO Assistant Solicitor: USPTO Administrator for Trademark Policy and Procedure; Education: B.A., University of North Carolina; J.D., University of Virginia School of Law.

Myles, Mary Beth: Appointed to TTAB in 2024. Prior Professional Experience: Private Practice, TTAB Interlocutory Attorney; Education: B.A., Bethany College; J.D., Columbia University School of Law.

O'Connor, Catherine Dugan: Appointed to TTAB in 2024. Prior Professional Experience: Law Clerk to Hon. Denny Chen (SDNY); private practice; Education: B.A., University of Connecticut; J.D., St. John's University School of Law.

Pologeorgis, George C.: Appointed to TTAB in 2015. Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A., University of Pennsylvania; J.D., George Washington University National Law Center.

Stanley, Lawrence T., Jr.: Appointed to TTAB in 2024. Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Indiana University; J.D., New England School of Law.

Thurmon, Mark A.: Appointed to TTAB in 2019. Prior Professional Experience: Private Practice; Adjunct Professor of Law, University of Texas School of Law; Assistant Professor of Law, Levin College of Law, University of Florida; Professor of Law at the Southern University Law Center, Southern University; Education: B.S, Louisiana State University; J.D. with high honors, Duke University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007. Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Zervas, Albert J.: Appointed to TTAB in 2005. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York and Washington, D.C.); Education: B.A. and J.D., University of Virginia.

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Text Copyright John L. Welch 2025.

TTAB Upholds 2(d) and 2(e)(4) Bifusal of WYSE LONDON for Clothing

The Board affirmed this bifusal of the proposed mark WYSE LONDON for various clothing items, including "hats," and for retail store services [LONDON disclaimed], finding confusion likely with the registered mark WYSE (in slightly stylized form) (Supplemental Register] for clothing-related goods, including zippers, buckles, and "hat ornaments for hats," and further deeming the mark to be primarily merely a surname under Section 2(e)(4). As to the former refusal, applicant argued that the cited mark is used only with sales to "commercial purchasers who then incorporate the Class 26 goods into final products offered to consumers." The Board was unimpressed. In re Wyse London Limited, Serial No. 90742109 (March 13, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

Likelihood of Confusion: The Board found the marks to be "highly similar," and therefore the first DuPont factor weighed "heavily" in favor of affirmance. As to the goods, the applicant's hats and the registrant's ornaments for hats were found to be "closely related." Moreover, other goods identified in the Registration "are also intended for use with clothing, including zippers and buttons, which are items commonly found as part of clothing. This complementary nature of these goods is sufficient to show that at least some of the identified goods are closely related." Third-party registration evidence confirmed this close relationship.

These goods, despite being in different classes, are sold under a single brand, a practice that will leave relevant consumers accustomed to seeing the goods identified in the Application and the goods identified in the cited Registration sold under a single mark.

As to applicant's retail store services, the Examining Attorney submitted evidence of ten uses of a store brand that is also used on goods sold in the store, including GUCCI, RALPH LAUREN, VERSACE, ANN KLEIN, and ANTHROPOLOGIE. The Board concluded that the applicant's retail services are closely related to the goods identified in the cited Registration.

Of course, applicant was off target with its argument that the registrant uses its mark only with sales to "commercial purchasers who then incorporate the Class 26 goods into final products offered to consumers," since there are no such limitations in the cited registration.

Finally, because the cited mark is registered on the Supplemental Register, "the surname aspect of the cited mark reduces the mark’s conceptual strength." The Board concluded that the cited WYSE mark is "somewhat weak conceptually. This fact slightly reduces the likelihood of confusion."

The mark has been registered for fifteen years and given that passage of time, the surname aspect of the cited mark is probably less significant than when the mark was first registered. The evidence supports only a small shift in the balance due to the conceptual weakness of the cited WYSE mark. This factor weighs against a likelihood of confusion finding, but it is far too limited in its impact to overcome the first, second and third DuPont factors, which weigh in favor of a likelihood of confusion finding.

Balancing the relevant DuPont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

Surname refusal: The fact that applicant’s founder is Marielle Wyse, a fact that Applicant promotes on its website, was "particularly important . . . because it shows that the applied-for mark is the surname of Applicant’s founder and that Applicant communicates that fact to actual and prospective customers as part of its origin story." The addition of the word LONDON "would lead consumers to believe Applicant’s business is operated by or connected with someone with the Wyse surname, and is located in London."

And so, the Board affirmed the Section 2(e)(4) refusal.

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TTABlogger comment: WYHA? The surname refusal was insurmountable.

Text Copyright John L. Welch 2025.

TTAB Finds "RUFFAREE" T-Shirt Specimen Acceptable for Dog Park Services

Finding some of applicant's various specimens of use to be acceptable, the Board overturned the USPTO's refusal to register the mark RUFFAREE for “recreational dog park services.” The Board agreed with the examining attorney that most of applicant's specimens were inadequate, but applicant hit paydirt with photos of an employee wearing the shirt at the dog park. In re Brewhound Coffee-Bar Co., Serial No. 88681779 (March 14, 2025) [not precedential] (Opinion by Judge Angela Lykos).

Trademark Rule 2.56(b)(2) states: "A service mark specimen must show the mark as used in [1] the sale of the services, including use in the performance or rendering of the services, or [2] in the advertising of the services. The specimen must show a direct association between the mark and the services." The Board observed that "[w]hile the exact nature of the services does not need to be specified in the specimen, 'there must be something which creates in the mind of the purchaser an association between the mark and the services that have been recited in the application.'"

An acceptable specimen need not explicitly refer to the services if it shows use of the mark in the rendering, i.e., sale, of the services. See In re Red Robin Enters., 222 USPQ 911, 914 (TTAB 1984) (bird costume used as a mark for entertainment services in the nature of personal appearances by a clown).

Applicant’s original specimens consisted of (1) a printout from Applicant’s website; (2) an advertisement published in the magazine “Unleash Jacksonville”; and (3) a red t-shirt displaying RUFFAREE on the back. The Board agreed with the Examining Attorney that none of these specimens was acceptable: the website printout did not display the mark, the advertisement used the term only in connection with a job title, and the t-shirt photo did not "show use of the mark in connection with the identified services either in the form of an advertisement or the actual rendering of 'recreational dog park services.'"

The Office also rejected a set of three photos consisting of "pictures of employees at the recreational dog park," each wearing a t-shirt displaying the term RUFFAREE [see image above], contending that these specimens failed to associate the mark with the services. Applicant argued that they showed a direct association because the employees were wearing the shirts while providing the services.

The Board agreed with applicant. "Applicant explained during prosecution that the shirts are employee uniforms, and are worn on employees daily while working at Applicant’s recreational dog park. Each photograph supports Applicant’s explanation. Thus, Applicant’s mark is displayed on the uniform of employees in the course of rendering 'recreational dog park services.'"

Consumers of Applicant’s services will therefore perceive the display of RUFFAREE on the back of Applicant’s employee uniforms as service mark usage. See JobDiva, 121 USPQ2d at 1126 (a key consideration is the perception of the consumer). 

Consequently, these specimens were deemed acceptable, and the Board reversed the refusal to register.

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TTABlogger comment: Hat tip to FOB Woody Pollack and his dogged determination. Note my refusal to employ any other cheap puns, like barking up the wrong tree, bark worse than bite, etc.

Text Copyright John L. Welch 2025.

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

Last Friday, the Board ruled on three Section 2(d) appeals. How do you think they came out? [Answer in first comment].

In re Tyler Clement, Serial No. 97626706 (March 14, 2025) [not precedential] (Opinion by Judge Jennifer L. Elgin) [Section 2(d) refusal of the mark MOONSTONE RITUALS for "Candles for home decor and modern living" in view of the registered mark MOONSTONE CHANDLERY for "aromatherapy fragrance candles; candles" [CHANDLERY disclaimed].]

In re Brouhaha Tea Company LLC, Serial No. 97669586 (March 14, 2025) [not precedential] (Opinion by Judge Robert H. Coggins). [Section 2(d) refusal of the mark BROUHAHA TEA CO. for tea, tea bags, and various tea products [TEA CO. disclaimed] in light of the registered marks BREW HAHA! for coffee and BREW-HAHA! for "restaurant, cafe, and retail bakery services; retail stores featuring ground and whole bean coffee; cocoa; tea; baked goods; namely, cookies, muffins[;] housewares; namely, coffee cups, mugs."]

In re OBON3 LLC, Serial No. 97858042 (March 14, 2025) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal of the mark shown below for "Downloadable computer software for conducting financial transactions, gratuity payment processing and instructional user guides sold as a unit; Downloadable computer software and firmware for conducting financial transactions, gratuity payment processing," in view of the registered mark E-Z TIP for downloadable software for electronic payments.]

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2025.

TTAB Denies Section 2(d) Cancellation Petition due to Unconvincing Testimony Regarding Priority

The Board rejected this Section 2(d) petition for cancellation of a registration for the mark OH. in the stylized form below, for various cosmetics and personal care products. Openly Human claimed likely confusion with its registered marks OH and OH OPENLY HUMAN for “body spray used as a personal deodorant and as a fragrance.” The petition failed because Openly Human failed to prove priority of use. Openly Human, LLC v. B. Cosmetics S.R.L., Cancellation No. 92078800 (March 11, 2025) [not precedential] (Opinion by Judge Robert H. Coggins).

Respondent conceded that a likelihood of confusion exists and acknowledged that "[t]his case hinges on priority – who used the OH logos ... first." Of course, in a 2(d) cancellation proceeding in which both parties own a registration, priority is at issue.

Respondent established a first use date of December 15, 2018. In its filings, Petitioner asserted multiple dates of first use in 2018: January 21, January 26, as of March, April 20. In his testimony, Petitioner's CEO referred to April 11, April 20, and April 22.

Sifting through the evidence of record, as we must when piecing together Petitioner’s priority puzzle, W. Fla. Seafood, 31 F.3d at 1125-26, we . . . find multiple unexplained inconsistencies and contradictions within Mr. Kent’s testimony and between his testimony and Petitioner’s public statements on social media posts of record.

Petitioner's social media posts were particularly troublesome. For example, on April 26, 2019, “Just a month or so from launch now! Woo hoo!” And on September 25, 2019, “[o]ur first production run is almost ready. It’s been nearly 2 years and so many iterations to create the best natural, vegan spray deodorant in the cosmos!”

Although Respondent raised in its brief the contradictions and inconsistencies in Petitioner’s testimony and between the testimony and the documentary evidence of record, Petitioner failed to address these issues in its rebuttal brief – and the silence is significant. Petitioner relies on a January 2018 sale for its priority, but never explains (or even expresses indirectly) how it seemingly developed one product – just one unit – to ship three months later, but did not have a single other unit to ship to consumers for another 14 or 18 months while the record shows its products were still being formulated.

Although the testimony of a single witness may suffice to prove priority, it "should not be characterized by contradictions, inconsistencies, and indefiniteness but should carry with it conviction of its accuracy and applicability." Here, the testimonial declarations were "quite short, imprecise, and internally inconsistent," and did not address the "glaring contradiction between the purported first sale of a single product (that appears to not have even been developed at that time) and Petitioner’s repeated social media statements that it had not yet launched its products, which were still in development." As a result, the testimony had little persuasive value.

The Board concluded that Petitioner failed to prove priority by a preponderance of the evidence, and so the petition for cancellation was denied.

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TTABlogger comment: OH well! Better to get your story straight in the first place. But then, petitioner didn't have much of a story.

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB's Dismissal of BULLSHINE FIREBULL Opposition Despite Commercial Strength of FIREBALL for Whisky

In a precedential opinion, the U.S. Court of Appeals for the Federal Circuit affirmed the TTAB's decision (here) dismissing Sazerac Brand's opposition to registration of the mark BULLSHINE FIREBULL for "alcoholic beverages except beers." The Board found Sazerac's FIREBALL mark (for whiskey and liqueurs) to be commercially strong but conceptually weak, that the goods were purchased without great care, and that Bullshine Distillery did not act in bad faith in choosing its mark. But the Board concluded that confusion is unlikely because of the differences in the marks. The CAFC ruled that the Board did not err in its conclusion. Sazerac Brands, LLC v. Bullshine Distillery LLC, 2025 USPQ2d 433 (Fed. Cir. 2025) [precedential].

Genericness: The court first dealt with Bullshine's appeal from the Board's denial of its counterclaim seeking to invalidate Sazerac's pleaded registrations on the ground of genericness. Bullshine argued that the Board applied an incorrect legal standard, that "fireball" was a generic term prior to registration by Sazerac, and that the Board therefore erred in considering subsequent evidence of acquired distinctiveness.

The court noted that the appropriate time period for assessing whether a term is generic is a question of first impression. Bullshine argued that a term that is generic at any time prior to registration, regardless of how it is perceived at the time of registration, remains generic forever. Sazerac argued that the time of registration is the appropriate focus. The CAFC agreed with Sazerac.

The CAFC looked to the statute, which "prevents registration of a generic term because it would deceive customers as to the origin of the goods." [What? -ed.]. "This inquiry necessarily looks to what consumers would think at the time of registration." Moreover, Section 14 of the Act permits cancellation of a registration "at any time" if the mark becomes generic. Bullshine's position is thus inconsistent with the statute.

As to the Board's factual finding that FIREBALL was not generic, the court ruled that substantial evidence supported the Board's decision.

Likelihood of Confusion: Sazerac cross-appealed from the dismissal of its Section 2(d) likelihood of confusion claim. Sazerac contended that the Board had erred in its analysis of the fame of the FIREBALL mark, in finding the mark to be conceptually weak, and in not appropriately considering the lack of similar marks in use on similar goods under the sixth DuPont factor.

The court observed that most of Sazerac's fame evidence related to shots, which constitutes only a subset of the genus of goods. Moreover, the Board accorded the FIREBALL mark a broad scope of protection, and so any error regarding fame was harmless.

With respect to the finding of weakness, Sazerac mainly argued that the Board should not have considered dissimilar goods like popcorn and beef jerky, but Sazerac failed to explain why it was error to discuss use of the term "fireball" to denote the same flavor in dissimilar goods. In any event, other substantial evidence supported the Board's finding, including Sazerac's own admissions and prior statements.

Finally, as to the sixth DuPont factor, the Board found in favor of Sazerac. Nonetheless, the Board decided that FIREBALL is so conceptually weak that the marks are "too different in appearance and sound, and especially meaning and commercial impression, for confusion to occur."

Sazerac does not dispute that substantial evidence supports the Board’s findings with respect to the similarity of the marks, and we affirm the Board’s finding with respect to the mark’s conceptual weakness. On this record, we affirm the Board’s determination of no likelihood of confusion.

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TTABlogger comment: Not the most elegant or informative CAFC opinion I've ever read. Opposer Sazerac came on like a fireball but flamed out rather spectacularly. BTW: Section 14 says that a registration can be cancelled "[a]t any time if the registered mark becomes the generic name for the goods or services." What if the term does not "become" generic but was already generic when it was registered?

Text Copyright John L. Welch 2025.

CAFC Hears Oral Arguments in FUCK and RAPUNZEL Appeals

The CAFC recently heard oral argument in two appeals from the TTAB. In In re Brunetti, the Board refused registration of the mark FUCK for phone cases, jewelry, bags, and retail store services on the ground of failure-to-function, concluding that the word "fuck" is in such widespread use that it does not create the commercial impression of a source indicator, but rather expresses well-recognized, familiar sentiments. [TTABlogged here].

In re Brunetti oral argument

In Curtin v. United Trademark Holdings, Inc., the Board dismissed Professor Rebecca Curtin's opposition to registration of the mark RAPUNZEL for dolls and toy figures, finding that Curtin, as a mere consumer of fairytale-themed products, failed to prove her entitlement to a statutory cause of action. [TTABlogged here]

Curtin v. United Trademark Holdings, Inc. oral argument

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TTABlogger comment: My prediction, based on the oral arguments: Brunetti reversed; Curtin affirmed.

Text Copyright John L. Welch 2025.