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 Appeal for the Federal Ciruit 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, Appeals Nos. 2023-1682 and 2023-1900 (Fed. Cir. March 12, 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.

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?

The TTAB affirmance rate for Section 2(d) appeals last year fell just under 90%. So far this year it a bit lower, but the year is young. Here are three recent Board decisions, at least one of which reversed the refusal. How do you think they came out? [Answer in first comment].

In re Ayablu Inc., Serial No. 97904206 (March 6, 2025) [not precedential] (Opinion by Judge David K. Heasley). [Section 2(d) refusal of HONEYBEE REWARDS PROGRAM for "Administration of a customer loyalty program which provides discounts for the company’s goods and loyalty points to be used toward purchase of the company’s goods; Arranging and conducting incentive reward programs to promote the sale of infant and children’s apparel and related accessories" [REWARDS PROGRAM disclaimed] in view of the registered mark HONEY BEE for "Women’s clothing, namely, tops, pants, skirts, dresses, blouses, swimwear and cover ups."]

In re Namchak Foundation, Serial No. 97150350 (March 6, 2025) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of COMPASSION IN ACTION for "Religious and spiritual services, namely, providing gatherings and retreats to develop and enhance the spiritual lives of individuals interested in the teachings and practices of the Namchak Tibetan Buddhist Fellowship" in view of the identical mark registered for "religious and charitable services namely providing meals for indigent people, residential care for homeless men, gifts for elderly shut-ins, gifts for patients in hospitals, rest homes and infirmaries, gifts for imprisoned persons, and gift packages to members of the armed forces."]

In re Manic Panic N.Y.C., Inc., Serial No. 97928060 (March 7, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of SEA NYMPH for "wigs" in view of the registered mark NYMPH for, inter alia, false beards and false mustaches.]

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2025.

Finding Restaurant Services Related to Paper Food Containers, TTAB Sustains DON'T MESS WITH TEX-MEX Opposition

Less than one month after oral argument, the Board sustained this opposition to registration of DON'T MESS WITH TEX-MEX for restaurant service, finding confusion likely with the registered mark DON'T MESS WITH TEXAS for paper food containers, paper bags, and cups. However, opposer's dilution-by-blurring claim was dismissed due, in part, to failure to prove its mark famous for the stated goods. Texas Department of Transportation v. El T. Mexican Restaurants, Inc., Opposition No. 91264923 (March 7, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

"Keeping in mind the well-settled principle that not all of the so-called 'axes' of comparison ... have to align for confusion to be likely," the Board found that the involved marks, while not identical, are "highly similar overall."

Of the several registrations pleaded by Opposer, the Board chose to consider the registrations covering "paper food containers, paper bags," and "cups." "Those two registrations seems like good choices to compare to restaurant services. If we find a likelihood of confusion as to either or both of these registrations, that alone would require refusal of Applicant’s application."

The Board took judicial notice of the "generally known facts that restaurants frequently provide their patrons with paper food containers and paper bags for take-out orders and for dine-in customers to take home leftovers, as well as cups for beverages, and that these containers, bags, and cups commonly bear the restaurant’s mark and/or logo."

The Board concluded that the involved goods and services are related, the channels of trade and classes of consumers overlap, and purchasers would exercise no more than ordinary care in selecting restaurant services, "and may exercise less."

Opposer focused "most intently" on its assertion that the mark DON'T MESS WITH TEXAS is famous, but without success. As to conceptual strength, the Board found the mark to be arbitrary, but as to commercial strength, there was no evidence regarding the number of units sold, revenue generated, advertising or promotion, or third-party publicity for opposer's paper food containers, paper bags and cups.

Opposer offered the results of a survey on the fame issue, but the Board saw several flaws in the survey design that "sap the survey of the evidentiary impact Opposer urges." First, it is a "aided awareness survey." An “aided awareness” survey prompts respondents by mentioning the brand. Opposer's survey asked a "classic" aided-awareness question: "Have you ever seen, read, or heard of ‘Don’t Mess with Texas’?" The Board observed that "'In general, the Board has discouraged heavy reliance on aided awareness to prove fame.'" ProMark Brands Inc. v. GFA Brands, Inc., No. 91194974, 2015 WL 1646447, at *13 (TTAB 2015).

Second, the survey questions were not directed to the strength of Opposer’s mark as to the “paper food containers” and “paper bag” products. And so, opposer' failed to prove its mark famous.

[B]oth Opposer’s survey and several articles in the record support the assertion that many people view the phrase as a commonplace expression of Texas pride or bravado. In response to the survey question quoted above asking what message the phrase communicates, 67% of respondents indicated that the phrase was simply an expression of Texas pride and only 21% associated it with litter prevention. And Applicant is correct in noting that a number of articles discuss how Opposer’s anti-littering campaign slogan has caught on with the public beyond Opposer’s services and now is commonly used in an informational way wholly apart from Opposer or its goods or services.

In sum, [b]ecause of the mark’s conceptual strength by itself ... the fifth likelihood-of-confusion factor weighs somewhat in Opposer’s favor."

On the issue of likelihood of confusion, the survey results were given "no weight." First, respondents were presented with a picture of applicant's billboard (shown above), when the mark of the opposed application is in standard characters." And second, there was no question directed to possible confusion as to source.

"[A]ll of the factor[s] that tilt in any direction (i.e., are not neutral), all tilt in Opposer’s favor." And so, the Board sustained the Section 2(d) claim.

As to its dilution claim, opposer’s trial brief did not once mention the root term “dilut-,” mention the root term 'blur-,' mention the root term 'tarnish-,' or cite Section 43(c). Opposer impliedly waived (or forfeited) its dilution claim (or claims) by not addressing dilution in its trial brief."

But even if the Board considered the dilution claim, opposer's evidence fell well short of proving fame for dilution purposes. "Professor McCarthy posits that a threshold response in the range of 75% of the general consuming public is necessary to prove fame for purposes of dilution." Opposer's survey "showed that only 21% of respondents who recognized Opposer’s slogan (even after prompting) associated the slogan with litter prevention, while 67% recognized the slogan instead as an expression of Texas pride or bravado."

The Board concluded that "Opposer’s dilution claim is forfeited, but even if Opposer hadn’t failed to address it, Opposer failed to prove its mark is famous as required by Section 43(c)(1)."

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TTABlogger comment: In the real world, is confusion likely? Anyway, I always enjoy Judge Casagrande's down-to-earth opinion writing, which is why I liberally quote his words.

Text Copyright John L. Welch 2025.

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

The USPTO refused to register the proposed mark ECOTWEED for "Footwear made of a tweed-like material," finding the mark to be deceptive under Section 2(a) or deceptively misdescriptive under Section 2(e)(1). Applicant argued that “the word ‘tweed’ has no globally accepted precise definition” and that, instead, it “is an evolving and imprecise term," and further that ECOTWEED is a coined term and consumers would not be deceived because the prefix "eco" causes the mark to mean "something else other than just 'tweed.'" The Board rendered a split decision. How do you think it came out? In re Twisted X, Inc., Serial No. 90002268 (March 6, 2025) [not precedential] (Opinion by Judge Robert Lavache; dissenting opinion by Judge Mark A. Thurmon).

Section 2(a): A proposed mark must be refused as deceptive if: (1) it consists of or comprises a term that misdescribes the character, quality, function, composition, or use of the goods; (2) prospective purchasers are likely to believe that the misdescription actually describes the goods; and (3) the misdescription is likely to affect the purchasing decision of a significant or substantial portion of relevant consumers. In re Budge Mfg. Co., 857 F.2d 773, 775 (Fed. Cir. 1988).

Dictionary definitions and Internet excerpts use the term “woolen” or “wool” to describe the material composition of “tweed.” Other evidence showed that consumers have been exposed to the word “tweed” used to describe a significant aspect of footwear.

Applicant's own evidence generally indicated that it is incorrect to refer to fabric that does not contain wool as “tweed." Moreover, the evidence did not establish that the term “tweed” is ambiguous or imprecise, "but that a misconception about the nature of tweed exists among some parties in the relevant marketplace."

Applicant admitted that its products do not contain tweed but are made from recycled plastic bottles. There was no evidence to convince the Board that "most consumers, even those aware that products may be made from recycled materials, would conclude that ECOTWEED refers to a tweed-like material made from recycled plastics. In fact, some evidence of record indicates that the term may be perceived as referring to actual tweed made from wool." [Does this make sense? - ed.]

Thus, we find that ECOTWEED is misdescriptive because it includes a term that is merely descriptive of a significant aspect of Applicant’s footwear that the footwear could plausibly possess but, in fact, does not.

The same evidence supported a finding that prospective purchasers are likely to believe that misdescription.

Finally, the evidence established that tweed purportedly possesses the attributes of durability, warmth, and weather resistance. "Any of these could be desirable characteristics that would matter to someone in the market for footwear." The Board therefore found that "the misdescription here is likely to affect the purchasing decision of a significant or substantial portion of relevant consumers."

All three prongs of the Section 2(a) test having been met, the Board found that ECOTWEED is deceptive of applicant's goods and it therefore affirmed the Section 2(a) refusal.

Section 2(e)(1): The test for deceptive misdescriptiveness is identical to the first two prongs of the Section 2(a) deceptiveness test. Since both prongs were satisfied, the Board affirmed this refusal as well.

Judge Mark A. Thurmon, in dissent, contended that the identification of goods should be read in its entirety, and therefore the consumer would know that the footwear was not made from tweed, but from "tweed-like material."

Consumers who are familiar with Applicant’s actual goods, will understand ECOTWEED as a tweed like fabric made from recycled water bottles. Those who know only what the identification discloses may not know the fabric is made from recycled water bottles, but given the evidence of various “tweeds” on the market, including synthetic tweeds (there is evidence of synthetic tweed footwear and synthetic tweed fabric in the record), these consumers will understand that “tweed like” means not tweed, but like tweed, in some respect. There is nothing misdescriptive here, let alone deceptive.

The panel majority responded:

[W]e conclude that even the most rational consumers who encounter shoes made of fabric resembling or characteristic of tweed being offered under Applicant’s proposed ECOTWEED mark may be deceived. In short, to side with the Dissent we would need to find either that (1) consumers somehow know the goods are imitation tweed or (2) the mark itself makes that clear. But, based on this record, we cannot and do not, find that either is true.

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TTABlogger comment: What do you think? Deceptive or not? If the goods were just "footwear," would that change your opinion?

Text Copyright John L. Welch 2025.

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

Kennedy International petitioned to cancel a registration for the mark BON VOYAGE for travel pillows, claiming likelihood of confusion with its identical common law mark for the same goods. Priority was the question. Bye-bye was the answer. Kennedy International, Inc. v. Sutton Home Fashions, Inc., Cancellation No. 92080461 (March 5, 2025) [not precedential] (Opinion by Judge Elizabeth K. Brock).

To establish priority, Petitioner Kennedy had to prove by a preponderance of the evidence that it owns proprietary rights in "a mark or trade name previously used in the United States . . . and not abandoned . . . ." Threshold.TV, Inc. v. Metronome Enters., Inc., Opp. No. 91152662, 2010 TTAB LEXIS 314, at *13-14 (TTAB 2010).

A cancellation petitioner seeking to cancel a registration under Section 2(d) must demonstrate "that it has prior use of a mark that is distinctive, inherently or otherwise, prior to the first use or constructive first use of the respondent’s mark." See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320 (CCPA 1981) (emphasis by the Board)."

“One way a proposed mark fails to function is if consumers will view it as a merely informational slogan or phrase instead of something that ‘point[s] out distinctively the origin of the goods to which it is attached.’” In re Brunetti, Ser. Nos. 88308426, 88308434, 88308451, and 88310900, 2022 TTAB LEXIS 297, at *16 (TTAB 2022) (quoting In re Bose Corp., 546 F.2d 893, 897 (CCPA 1976))."

“Consumers ordinarily take widely-used, commonplace messages at their ordinary meaning, and not as source indicators, absent evidence to the contrary.” Brunetti, at *18-19.

The Board observed that “Bon voyage” is a French expression “[u]sed to express farewell and good wishes to a departing traveler”; the words “bon voyage” translate directly to “good journey.”

Kennedy applied the phrase BON VOYAGE to its pillows in the same manner as it displayed other travel-related words and phrases: “Vacay Vibes”, “Do Not Disturb”, “Frequent Flyer”, “Vacay”, “Jet Set”, “First Class”, “Live Love Travel”, and “Explore”. Thus, Kennedy's own use use of BON VOYAGE "makes clear that the term is not a designation of source but a feature of the goods."

In selecting one of these travel pillows, customers may choose one reading “Bon Voyage” instead of “Vacay” based on personal preference of the message conveyed. Expressing enthusiasm for travel does not serve a source-indicating function. See D.C. One Wholesaler, Inc. v. Chien, 2016 TTAB LEXIS 536, at *20. We find that Petitioner’s use of “Bon Voyage” fails to function as a trademark and is just one of many stylistic options that Petitioner makes available on its travel pillows.

The Board concluded that Kennedy failed to demonstrate that it owns prior common law rights in the trademark BON VOYAGE for travel pillows, and so the Board denied the petition for cancellation for failure to prove priority.

Registrant's specimen of use

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TTABlogger comment: Note how registrant uses BON VOYAGE as a mark.

Text Copyright John L. Welch 2025.