TTABlog Test: Is MONSTER STRAW for Drinking Straws Confusable with MONSTER for Energy Drinks?

Frequent TTAB litigant Monster Energy opposed an application to register the mark MONSTER STRAW (in standard character form) for "drinking straws" [STRAW disclaimed], alleging likelihood of confusion with its registered mark MONSTER for "energy drinks; fruit drinks; soft drinks; sports drinks." The dispute boiled down to a question of the relatedness of the goods. How do you think this came out? Monster Energy Company v. Monster Straw Company, LLC, Opposition No. 91250784 (April 14, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Monster Energy relied on seventeen registrations for MONSTER, MONSTER ENERGY, MONSTER-formative marks, and MONSTER ENERGY-formative marks in connection with various goods and services, including beverages, beverageware, nutritional supplements in liquid form, and restaurant and bar services. It claimed to own a family of MONSTER marks but the Board was unimpressed, finding opposer's testimony to be vague, ambiguous, and conclusory, and insufficient to demonstrate such use and promotion of the "MONSTER family feature" that would show that the public "recognizes a MONSTER family of marks."

The Board focused on opposer's registration for the mark MONSTER for "energy drinks; fruit drinks; soft drinks; sports drinks," because that registration had the "most points in common with Applicant's mark." Not surprisingly, the Board found applicant's mark to be "highly similar in sound, appearance, connotation and commercial impression." The first DuPont factor therefore weighed "heavily" in opposer's favor.

The Board then found the mark MONSTER to be arbitrary and conceptually strong, but opposer's evidence fell short of showing that MONSTER by itself is commercially strong. Because opposer uses its marks on a variety of goods, the Board found that the ninth DuPont factor favored opposer. [What about the mark MONSTER by itself? was it used on a variety of goods? - ed.].

The channels of trade for drinking straws and energy drinks overlap, as do the classes of consumers (the general public). These low-priced items are purchased with no more than ordinary care.

Turning to the second DuPont factor, the relatedness of the goods, opposer submitted photographs of “how Monster’s beverages are served and consumed, including through straws.” One photo showed a licensed "“flavored ice” MONSTER ('Slurpee') product sold by 7-Eleven in 2008 and 2009 that was offered with straws." [Isn't that item of evidence a bit stale (assuming a Slurpee could go stale)? - ed.]

The Board concluded that "Opposer’s beverages and Applicant’s straws are often used together when consuming beverages, are complementary goods, and thus related." [How about sugar and coffee? Bread and butter? Shouldn't the question be whether the goods are sold under the same mark by third parties? - ed.]

Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks.

The Board found confusion likely and it sustained the opposition.

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TTABlogger comment: The applicant appeared pro se, submitted no testimony or evidence, and did not file a brief. That worked well! In the real world, would someone who bought a 7-11 MONSTER Slurpy with a straw in it think that Monster Energy was the source of the straw. Or that packs of straws sold in the same store were offered or licensed by Monster Energy? 

Text Copyright John L. Welch 2025.

Return of MEET THE BLOGGERS: Monday, May 19th, 8-10 PM

Recognized by many (?) as the best non-INTA event at the INTA annual meeting, MEET THE BLOGGERS returns for its 18th edition on Monday night, May 19th, from 8-10 PM at Coin-Op Game Room (Gaslamp), 789 Sixth Ave, San Diego, CA 92101.

All thanks to our sponsor, Wolf, Greenfield & Sacks, P.C. Stop by and meet some of the world's best trademark attorneys, and also say hello to Marty Schwimmer and me. [Register here]

BTW: The first MTB was an intimate gathering in 2005, held in San Diego at Henry’s Pub. We returned to Henry's in 2015, with an overflow crowd in attendance.

MEET THE BLOGGERS - San Diego 2005(Click on photo for larger picture)

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Text Copyright John L. Welch 2025.

Professor J. Thomas McCarthy: "What is the 'Zone of Natural Expansion' Doctrine?"

Professor McCarty, renowned author of McCarthy on Trademarks and Unfair Competition, cast a critical eye on two recent decisions (one from the CAFC, one from the TTAB) discussing the zone-of-natural-expansion "doctrine." He asks, "what is it?" "How does it fit with the familiar 'related goods and services' rule and the test of likelihood of confusion?" The professor concludes that it is not a "doctrine" at all. "Neither the Federal Circuit nor the T.T.A.B. has the authority to replace the statutory likelihood of confusion test with a 'doctrine' of 'zone of natural expansion' to decide issues of priority and entitlement to registration."

What is It? The "zone of natural expansion" argument has sometimes been discussed in both court litigation and U.S.P.T.O. inter partes cases. But unlike infringement litigation in court, the issue in T.T.A.B. cases is not enjoining an intervening user. The issues are priority, ownership and registration rights. Recently both the Federal Circuit and the Trademark Trial and Appeal Board applied and discussed at length the “zone of natural expansion." But what is it? How does it fit with the familiar “related goods and services” rule and the test of likelihood of confusion?

The basic theory seems to be that use of a mark on goods or services in the A market (for a hypothetical, assume it’s ALPHA auto tires) has an exclusive “zone of natural expansion” that extends to goods and services in the B market (for example, bicycle tires) that are encompassed within a zone that buyers would usually expect a mark in the A market to expand into. It is usually used in a situation where a junior intervening user starts use of a similar mark in the B market (hypothetically, assume it’s ALFAH bicycle tires). Then the senior user later expands into that market (ALPHA bicycle tires). In this hypothetical example, the senior user of ALPHA argues that there is a conflict because buyers would think that bicycle tires are in a "natural expansion zone" for ALPHA auto tires.

But if we change the facts of the hypothetical and have the intervening use be ALFAH for use on vehicle collision avoidance software, it is likely a judge would find that ALPHA’s later expansion from auto tires to use on vehicle collision avoidance software is not a “natural expansion.” If the decision rests solely on using the “zone of natural expansion,” then the senior user’s later expansion to ALPHA vehicle collision avoidance software is likely an infringement of the intervening use by ALFAH on the same kind of software. In the U.S.P.T.O. ALFAH would be deemed “senior user” and entitled to a registration for vehicle collision avoidance software.

Federal Circuit and Trademark Board Use of “Zone of Natural Expansion.” In March 2025 the Federal Circuit in the Dollar Financial case [TTABlogged here] held that: “We decline to expand the scope of the zone of natural expansion doctrine and affirm that the doctrine may only be used defensively to prevent junior users from registering similar marks on goods in a senior user’s zone of natural expansion.” But the meaning of the court’s “defensive” versus “offensive” distinction is both unclear and unhelpful. It needs explanation. On April 11, 2025 the T.T.A.B. in Streeter v. GuideOn Education [TTABlogged here] applied the Dollar Financial approach, referring to the petitioner’s “fallback position” of natural expansion. In both cases, the judges held that the senior user had not proven that it was entitled to prevail.

It is not clear what the court meant by a forbidden “offensive” use of the natural expansion concept. Apparently it means that once it has been proven that the intervening use is on unrelated goods or services, then the senior user cannot use the natural expansion argument to change that situation. Although the court did not say so, this necessarily implies that the intervening use on unrelated goods or services was not likely to cause customer confusion with the senior user.

“Zone of Natural Expansion” is Not a “Doctrine.” Both the Trademark Board and the Federal Circuit have continually referred to the concept of zone of natural expansion as a “doctrine.” This creates the incorrect impression that it is a freestanding rule to determine if there is a trademark conflict and priority independent of the statutory test of likelihood of confusion of sponsorship, affiliation or connection. But "zone of natural expansion" is not a “doctrine.” It is an argument that the goods or services are related and confusion is likely. The “doctrine” is the statutory test of likelihood of confusion.

As discussed in my treatise at §24:20, the “natural expansion” argument is just a way to argue that there is a likelihood of confusion of source or sponsorship in a particular factual situation. If the “intervening” junior use was likely to cause confusion when commenced, it was an infringement. In that case, the senior user has the right to enjoin such use, whether the senior user had in fact already expanded itself or not. Conversely, if the “intervening” use was not likely to cause confusion when it began, then the intervening user is not an infringer. If the senior user later expands to that unrelated line, then it is an infringer in that line of goods or services.

Conclusion. The “zone of natural expansion” is not an independent rule to resolve a conflict between trademark uses. The “doctrine” that is required to decide these cases of an intervening use is the §2(d) statutory test of likelihood of confusion. The focus should be on consumer perception, not on a judge’s decision as to whether an expansion is “natural” or not. Neither the Federal Circuit nor the T.T.A.B. has the authority to replace the statutory likelihood of confusion test with a “doctrine” of “zone of natural expansion” to decide issues of priority and entitlement to registration.

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TTABlogger comment: What he said!

Introductory Text Copyright John L. Welch 2025.

CAFC Upholds TTAB Dismissal of "fleur-de-lis" Cancellation Petition Due to Lack of Standing

Michel J. Messier of Rutland, Vermont, petitioned to cancel a registration for the mark shown below, owned by the New Orleans Saints football team, for "entertainment services in the form of professional football games and exhibitions." Mr. Messier alleged that he is a "direct descendant of the Kings of France (Scotland, Aragon, and Castille)” and that he and his family own “intellectual property rights to the Fleur de Lys, Orleans and Saints marks." Not good enough, said the CAFC. Michel J. Messier v. New Orleans Louisiana Saints, LLC, Appeal No. 2024-2271 (April 14, 2025) [not precedential].

Petitioner Messier made no claim that he or his family currently use any fleur-de-lis marks in commerce or receive any revenues (e.g., from licensing) in connection with any mark. The Board concluded that the petition for cancellation (as amended) failed to "allege any commercial interests in the mark, or that [Mr. Messier] owns or conducts any business under the mark."

[A]lthough Article III standing is not necessarily a requirement to appear before an administrative agency, once a party seeks review in a federal court, the constitutional requirement that it have standing kicks in.” * * * Mr. Messier, as the party seeking appellate review, has the burden to show he has Article III standing. *** In particular, Mr. Messier must demonstrate "(1) an actual or imminent injury-in-fact that is concrete and particularized; (2) a causal connection between the injury and the conduct complained of; and (3) likely redressability by a favorable decision." (citations omitted).

Petitioner Messier did not allege that he or his family make, offer for sale, or sell any products or services using a fleur-de-lis design, nor that he is involved in "football entertainment services." Thus he failed to "identify any alleged injury aside from the Board denying . . . the particular outcome . . . desired,” the cancellation of the Saints Mark, which “is insufficient to confer standing."

His references to the Saints Mark being confusingly similar to his family’s private use of fleur-de-lis designs, now and for several centuries, or the "SAINT Louis Cathedral’s home [in] New Orleans, Louisiana” and its gift shop that “sells fleur de Lis adorned goods to preserve the Cathedral,” and his speculation that in the future he may license fleur-de-lis marks, are, at best, allegations of “hypothetical” or “future possible injury,” which are insufficient to confer Article III standing.

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TTABlogger comment: If a party is appealing from a TTAB decision holding that the party lacks "entitlement to a statutory cause of action," why does the CAFC apply the Article III test for standing? Why does the party have to prove some commercial damage? BTW: what does this decision portend for the RAPUNZEL appeal currently awaiting the CAFC's decision on standing?

Text Copyright John L. Welch 2025.

TTAB Partially Grants GUIDEON Cancellation Petition but Rejects Zone-of-Natural-Expansion Claim

The Board granted in part this petition for cancellation of a registration for the mark GUIDEON for, inter alia, providing online employment information (class 35) and educational services (class 41) to veterans and military families, finding confusion likely as to the class 35 services with the identical mark registered for "Computer application software for smartphone operating systems, namely, software for a directory of listings with corresponding location primarily on military installations." Registrant's class 41 services, however, were deemed not related to Petitioner Streeter's services, nor did the zone-of-natural-expansion apply. Katharine Lee Streeter v. GuideOn Education Consulting LLC, Cancellation No. 92077751 (April 11, 2025) [not precedential] (Opinion by Judge David K. Heasley).

Class 35 services: The Board found that the Streeter registration's broad language, "a directory of listings with corresponding location primarily on military installations,” encompassed Registrant's provision of online employment information. The Board agreed with Streeter that her software is more than a "map app," because it provides not only location information but also links "to online/website locations," including links to employment-related information and websites.

Class 41 services: Because Streeter does not offer the services that may be found at the links provided, nor control the nature of quality of those services, Streeter's identification of goods does not "encompass" Registrant's educational services. Her evidence of relatedness consisted of three third-party registrations - "too few in number to carry much probative value" and covering unrelated services - and a few websites that were relevant to Registrant's class 35 services, but not to educational services.

As a "fallback" position, Streeter contended that Respondent’s services are within the natural zone of expansion of her software. No way, said the Board.

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." Dollar Fin. Grp., Inc. v. Brittex Fin., Inc., __ F.4th __, 2025 WL 850653, at *3.

Defensive use of the doctrine "allow[s] the senior user to prevent the junior user's registration of a similar mark on logically related goods." Here, Streeter attempted to use the doctrine offensively to defeat Respondent's intervening rights. That is not allowed.

To determine whether the doctrine is applicable in a particular case, the Board considers a number of nonexclusive factors:

1. Whether the second area of business (that is, the subsequent user’s area of business into which the first user has or potentially may expand) is a distinct departure from the first area of business (of the prior user), thereby requiring a new technology or know-how, or whether it is merely an extension of the technology involved in the first area of business; 
2. The nature and purpose of the goods or services in each area;
3. Whether the channels of trade and classes of customers for the two areas of business are the same, so that the goodwill established by the prior user in its first area of business would carry over into the second area; and 
4. Whether other companies have expanded from one area to the other.

Under the first factor, the Board found that Respondent’s educational services "are not merely an extension of the technology involved in Petitioner’s registered, identified goods," but are "a distinct departure from simply providing an app that leads users to various service providers." Under the second factor, "[t]he nature and purpose of the goods or services in each area are quite distinct."

Under the third factor, there is some "broad overlap" in trade channels and classes of consumers. Under the fourth factor, there was a dearth of evidence showing that other companies have expanded from one area to the other.

Overall, Petitioner cannot rely on the doctrine to expand into Respondent’s Class 41 services. To expand Petitioner’s rights beyond those specified in her identification of goods would, in effect, accord her trademark rights in gross, covering all of the same or similarly named websites, businesses and service providers to which her app may lead her customers.

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TTABlogger comment: The distinction between "offensive" and "defensive" use of the zone-of-natural-expansion doctrine doctrine seems rather murky to me. Would it be better to just drop those two terms? If this was a prohibited "offensive" use of the zone doctrine, why go through the four factors? Moreover, if the DuPont factors say the services are not related, as here, shouldn't that be the end of the story? Why do we even need this doctrine?

Text Copyright John L. Welch 2025.

TTAB Dismisses LIVE RESIN Oppositions Under Rule 2.132(a) for Failure to Prosecute

The Board tossed out two oppositions to registration of the mark RAW GARDEN REFINED LIVE RESIN for CBD-containing herbs for smoking, for failure to prosecute. Opposer Adapted Energy claimed likely confusion with its registered mark LIVE RESIN for supplements. However, it introduced no evidence or testimony during its assigned testimony periods, nor did it timely submit a copy of its registration, and Applicant Central Coast made no admissions in its Answer. The Board granted Central Coast's motion to dismiss under Rule 2.132(a). Adaptive Energy LLC v. Central Coast Agriculture, Inc., Oppositions Nos. 91275644 and 91280840 (April 11, 2025) [not precedential].

Trademark Rule 2.132(a), provides, in relevant part, as follows: If the time for taking testimony by any party in the position of plaintiff has expired and it is clear to the Board from the proceeding record that such party has not taken testimony or offered any other evidence, the Board may grant judgment for the defendant.  * * * The party in the position of plaintiff shall have twenty days from the date of service of the motion to show cause why judgment should not be rendered dismissing the case. In the absence of a showing of excusable neglect, judgment may be rendered against the party in the position of plaintiff.

In response to the motion to dismiss, Adaptive Energy asserted that it "has been very clear from the inception of this Proceeding on the evidence and testimony that it is going to rely on" [sic]; that "[w]ith its Opening Brief Opposer will submit its Argument with Affidavits and evidence it is relying on in this case."

Of course, submitting evidence and testimony along with a party's opening brief is too late. "The Board will not consider evidence … attached to the briefs unless . . . properly made of record during the time assigned for taking testimony."

Adaptive Energy made no showing of excusable neglect, and so the Board deemed dismissal with prejudice to be appropriate.

Read comments and post your comment here.

TTABlogger comment: TTABlog tip: Read the rules. 

Text Copyright John L. Welch 2025.

TTABlog Test: Which of These Three Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals Was/Were Reversed?

Last year the Board affirmed about 88% of the mere descriptiveness/disclaimer refusals reviewed on appeal. So far this year, the rate is about 95% - but it's early. Here are three recent appeals. At least one resulted in a reversal. How do you think they came out? You might respond by asking, what was the evidence? Well, give it a try anyway. [Answer in first comment].

In re Saint George Atelier LLC, Serial Nos. 98160447 and 98160447 (April 9, 2025) [not precedential] (Opinion by Judge Angela Lykos). [Section 6(a) disclaimer requirement of the word ATELIER in the mark SAINT GEORGE ATELIER for backpacks, clothing, and retail clothing store services. The Merriam-Webster definition of "atelier" is “an artist’s or designer’s studio or workroom” or “workshop." Applicant submitted 10 third-party registrations for marks containing the word ATELIER, all without disclaimers, for goods such as citrus squeezers, carpets, salad dressings, kitchen towels and disinfecting wipes.]

In re Rashbi LLC, Serial No. 97767502 (April 9, 2025) [not precedential] (Opinion by Judge Mark Lebow). [Mere descriptiveness refusal of RAIZ DE TEJOCOTE for “Dietary supplements; Nutritional supplements; Vitamin supplements." The Board found that the mark to be accurately translated as "root of tejocote." Applicant did not deny that its goods contain “root of tejocote” (or “tejocote root”), but only that they “do not primarily contain tejocote root.”]

In re ThreatLocker, Inc., Serial Nos. 97156251 and 97214203(April 7, 2025) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Mere descriptiveness refusal of RINGFENCING for, inter alia, downloadable anti-piracy software, software for controlling application access to data, and computer hardware, namely, firewalls. Applicant argued that the mark "has one universally accepted definition" in the finance context – to put aside and protect a particular sum of money for a specific purpose." According to Applicant, in the cybersecurity setting, the term is suggestive, requiring consumers “to engage in a multi-step attenuated analysis to deduce the potential nature of the software and its purposes."]

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

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB Dismissal of IVOTERS Opposition Due to Failure to Prove Acquired Distinctiveness (Priority) of Pleaded Marks

The CAFC affirmed the TTAB's dismissal of an opposition to registration of the marks IVOTERS and IVOTERS.COM for a website providing information on political issues, on the ground that Opposer Heritage failed to prove acquired distinctiveness of its pleaded marks IVOTERGUIDE and IVOTERGUIDE.COM for voters guides prior to Applicant APR’s constructive use date, and thus failed to prove priority. Heritage Alliance and AFA Action, Inc. v. The American Policy Roundtable, 2025 USPQ2d 613 (TTAB 2025) [precedential].

Heritage began using its marks well before APR's constructive first use date, i.e., its filing date of January 22, 2019. The Board, however, ruled that Heritage’s marks "could not support its challenge because the marks were not themselves protectable as trademarks (before APR’s first use date), so they lacked cognizable priority." Opposition No. 91249712, 2023 WL 6442587, at *13 (Sept. 29, 2023).

In assessing the distinctiveness of Heritage's marks, the Board proceeded in two steps: first it found that the marks were not just descriptive but "highly descriptive" because the marks "clearly described the entire service offered: providing a voter guide on the Internet." See id. at *7–9. Second, it found that Heritage's evidence failed to establish acquired distinctiveness. See id. at *10–12.

Heritage argued that the Board  relied on insufficient evidence in the analysis of the prefix “i,” and erred infocusing on the individual components of the asserted marks instead of the marks as a whole. The CAFC disagreed.

The CAFC concluded that substantial evidence supported the Board’s finding that Heritage's marks are not just descriptive but highly descriptive. As to the components of the marks, the Board cited substantial evidentiary to support its conclusion that the prefix “i” generally refers to something Internet-based. Heritage did not challenge the "facially reasonable findings" that “VoterGuide” and “.com” were not distinctive. Moreover, the Board did consider the marks as a whole in its descriptiveness analysis.

It determined that the proposed marks “on their face refer to online voter guides” and no evidence demonstrated that the combination of the individual components of the asserted marks conveyed “any distinctive source identifying impression contrary to the descriptiveness of the individual parts.” (quoting In re Fat Boy Water Sports LLC, 2016 WL 3915986, at *6 (T.T.A.B. 2016) (quoting Oppedahl & Larson, 373 F.3d at 1175)).

The appellate court saw "no reason to disturb the Board’s finding that the iVoterGuide marks are highly descriptive."

Beyond conveying a characteristic of the product or service, the “iVoterGuide” marks are such that the whole of the marks directly and immediately conveys the whole of the product—provision of a voter guide on the Internet. That property suffices for the marks to be highly descriptive.

With respect to its claim of acquired distinctiveness, Heritage pointed to two aspects of the record: (a) the undisputed evidence that it continuously used the iVoterGuide marks for more than five years before APR’s first use date, and (b) declarations from three of Heritage’s panelists (i.e., volunteers who helped make Heritage’s voter guides) from 2008 that they associated the marks with Heritage. The CAFC was unmoved.

Heritage argued that the Board should have accepted its five-plus years of prior continuous use as “prima facie evidence” that the marks had acquired distinctiveness” under 15 U.S.C. § 1052(f). The court pointed out that Section 1052(f) says that the USPTO “may accept” such proof “as prima facie evidence that the mark has become distinctive."

That language indicates that the Board has discretion not to accept such evidence as prima facie evidence, much less as ultimately persuasive evidence, on a case-by case basis. Our case law similarly recognizes the Board’s discretion to weigh the evidence, especially for a highly descriptive mark. In the circumstances of this case, we see no unreasonableness in the Board’s declining to rely on Heritage’s five-year-prior-use evidence given the highly descriptive nature of Heritage’s marks and the limited additional evidence of acquired distinctiveness.

As to the three panelist declarations, the court saw "no error in the Board’s giving little weight to that evidence." The declarations were identical in form and came from individuals who were not random customers, but were "volunteers used by [Heritage] to 'help evaluate candidates so they could be graded regarding their positions on the issues.'" And the declarations did not explain the basis for their asserted belief that the marks were distinctive. Finally, there was no evidence regarding "the size and nature of the customer base that would allow an inference that the declarations that would allow an inference that the declarations meaningfully reflect consumer perception of [Heritage’s] purported marks in the marketplace."

In sum, the Board's rejection of Heritage's Section 2(f) claim was supported by substantial evidence.

The CAFC noted that the Board's decision and the court's affirmance "raise an obvious issue:" Do those rulings provide a reason for the PTO now to reconsider whether it should refuse registration to APR’s iVoters marks—as to which the Board found APR “effectively concede[d] likelihood of confusion” with Heritage’s marks?"

The opposition provision of the Lanham Act says that registration generally follows when an opposition, if any, fails, but the stated precondition is that the mark at issue be a “mark entitled to registration,” 15 U.S.C. § 1063(b), which might allow the PTO, after an opposition fails, to reconsider the examiner’s pre-opposition allowance. Also, if a person believes it “will be damaged . . . by the registration of a mark,” it may seek cancellation of the registration. 15 U.S.C. § 1064. Neither a PTO reconsideration nor a cancellation is before us, so we do not decide any issues concerning such processes.

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TTABlogger comment: Heritage would presumably be barred by claim preclusion from seeking to cancel APR's registration once it issues. Mere descriptiveness is an issue that Heritage could have raised (in the alternative) in the opposition, and so it can't be raised in a new proceeding. Could the USPTO cancel the registration and return it to the examining attorney for re-examination? The Board's NURSECON decision suggests that the answer is yes: "[T]he USPTO possesses inherent authority to correct its errors." [TTABlogged here].

Text Copyright John L. Welch 2025.

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

Here are three recent Section 2(d) appeals. No hint this time. How do you think they came out? [Answer in first comment].

In re PixelGood, Serial No. 98163828 (March 31, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.). [Section 2(d) refusal of the mark DESIGN IS IN THE DETAILS. for "visual design services in the nature of designing visual elements for on-line, broadcast, print, outdoor and other communication media," in view of the registered mark DESIGN IS IN THE DETAILS [no period at the end] for wall plaques, bowls, vases, and works of art in various media.]

In re BeBella Inc., Serial No. 97887864 (March 31, 2025) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 2(d) refusal of the mark GLITTERALLY PERFECT for "Eye-shadow; Eye liner," in view of the registered mark GLITTERALLY OBSESSED for "Glitter for cosmetic purposes; Body glitter; Body glitters; Face glitter; Face and body glitter; Hair glitter; Nail glitter; Nail grooming products, namely, tips, glue, lacquer and glitter."]

In re Cantina Imperfecto, LLC, Serial No. 97625773 (March 28, 2025) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) refusal of the mark CANTINA IMPERFECTO for restaurant, bar, and catering services [CANTINA disclaimed], in view of the registered mark IMPERFECT in standard character and design form, for "food and drink catering; bar services; restaurant services."]

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2025.

TTABlog Test: Is UNITED STATES COAST GUARD Merely Descriptive of Employment Counseling and Recruiting Services?

The USPTO refused to register the word-and-design mark shown below, for "Employment counseling and recruiting; providing career information," absent a disclaimer of the words UNITED STATES COAST GUARD under Section 6(a) of the Trademark Act. Applicant DHS argued that the phrase UNITED STATES COAST GUARD should be considered in the abstract, outside of the context of Applicant's employment and recruiting services, because consumers would "immediately think of the Coast Guard’s well-known law enforcement services." How do you think this appeal came out? In re United States Department of Homeland Security AKA DHS, Serial No. 97824026 (March 31, 2025) [not precedential] (Opinion by Judge Elizabeth K. Brock).

DHS acknowledged that the phrase UNITED STATES COAST GUARD is understood by the public to refer to the military organization of that name, one of the country’s armed forces operating under the Department of Homeland Security. DHS also acknowledged that the USCG "offers employment counseling and recruiting and provides career information as a public service."

Examining Attorney Andrea Saunders maintained that UNITED STATES COAST GUARD is descriptive of the recited services in three ways: (1) it describes the provider of the services; (2) it describes at least some of the intended users of the services, e.g., members of USCG; and (3) consumers who know the employment and recruiting services offered under the mark will immediately understand that those services pertain to the UNITED STATES COAST GUARD, i.e., that the employment and recruitment services are, in part, for USCG or its USCG members.

Applicant agreed that the mark must be considered in the context of the services, not in the abstract. The Board found that "the average purchaser of Applicant’s services, which includes members of the general public as well as the USGC, would understand the wording UNITED STATES COAST GUARD to refer to the USCG as part of the United States’ armed forces, as well as UNITED STATES COAST GUARD members."

Because recruiting activity is "an important function to USCG, and the average purchaser who may be a member of the general public or USCG is likely aware of this recruiting activity," the Board found for DHS’s “recruiting” services," the average purchaser encountering the wording UNITED STATES COAST GUARD in the mark would understand it to refer to USCG’s, or UNITED STATES COAST GUARD’s, recruiting services."

The Board also found that prospective and current members of USCG are some of the intended users of the recited services, and so the wording UNITED STATES COAST GUARD is descriptive of a significant population of the users.

And finally, the phrase UNITED STATES COAST GUARD describes DHS as the provider of the services. The Board noted that "there is no per se rule of law that wording descriptive of the provider or source of services is also necessarily descriptive of those services." Distinguishing the ORLANDO MIRACLE case (involving publications under the inherently distinctive name of the now defunct WNBA team):

In contrast with WNBA, the Examining Attorney’s evidence showed and Applicant conceded that the “phrase (‘UNITED STATES COAST GUARD’) accurately describes a portion of the organization’s primary responsibilities, namely, maritime security, search, rescue, and law enforcement.” We need not and do not decide whether UNITED STATES COAST GUARD is, in fact, the actual “name of applicant’s … [armed] services” as well as “a term which merely describes them.” And Applicant’s offering of employment and recruiting services “in the same manner that it is the mark under which applicant renders” its armed forces services does not elevate the UNITED STATES COAST GUARD wording from its descriptive function when it operates in the same manner, i.e., to describe the recruiting services of that armed force.

And so, the Board upheld the disclaimer requirement. However, because DHS had requested entry of the disclaimer should the Board find that same be required, the application was allowed to proceed with the proposed disclaimer.

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TTABlogger comment: The Board's discussion of the ORLANDO MIRACLE case was not the clearest. 

Text Copyright John L. Welch 2025.