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

In a rare case in which a party proved a negative, the Board granted Mobigame's petition for cancellation of a registration for the mark EDGE GAMES for computer game software, on the ground of nonuse. The Board found that the case "ultimately . . .turns on the answer to a simple question: do we believe the testimony of Dr. Timothy Langdell, the CEO of Respondent Edge Games, Inc., that Respondent used the mark EDGE GAMES on or before the date it filed the use-based application that matured into the challenged registration?" The answer was "no." Mobigame v. Edge Games, Inc., Cancellation No. 92075393 (October 30, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The CAFC has acknowledged that "proving nonuse is essentially 'prov[ing] a negative,' which can be challenging, . . . [but] 'direct evidence' is not required: it is perfectly appropriate to rely on 'proper inferences' from indirect evidence."

Where the testimony of use comes only from an interested witness “testifying long after the events happened …, such testimony … should be most carefully scrutinized” to make sure it is reliable. B.R. Baker Co. v. Lebow Bros., 150 F.2d 580, 583-84 (CCPA 1945). The testimony should not be “characterized by contradictions, inconsistencies and indefiniteness,” but rather should carry with it “conviction of its accuracy and applicability.”

Mobigame relied on circumstantial evidence to show that Respondent did not use the mark before filing its application: prior enforcement litigation and other assertions regarding various EDGE marks of Respondent, but never the mark EDGE GAMES; testimony from Mobigame's CEO and founder that he was unaware of any use by Respondent of EDGE GAMES as a mark prior to the filing date of Respondent’s underlying application (October 7, 2010); and Respondent's filing of that application on the day after it agreed to a the stipulated judgment cancelling its EDGE registrations.

The clear inference we draw from this circumstantial evidence is that before October 2010, Respondent never considered EDGE GAMES a trademark—and never used it as such.

In rebuttal, Respondent relied solely on the testimony of its CEO, Dr. Langdell, but the Board found his testimony to be "wholly unreliable."

He testified repeatedly that his memory of events prior to 2010 is weak, or nonexistent. His testimony about whether, as CEO of Respondent or its predecessor, he worked with any other corporate officers is both contradictory and simultaneously vague. He was evasive, nonresponsive, and argumentative during his two depositions in this case. And, while this case was pending and in the trial period, he lied to the USPTO in filing his combined Section 8/15 Declaration for the very registration at issue here.

Reviewing past rulings by the Board and various courts involving Dr. Langdell, the Board saw "an astoundingly abysmal record of disregard and contempt for the solemnity and integrity of government adjudicatory proceedings involving Respondent’s trademarks, and repeated instances of untruthfulness in such cases on the part of Dr. Langdell." From these rulings, the Board drew "a level of comfort" that its decision to reject Dr. Langdell’s testimony about pre-filing use "is not an outlier."

In sum, the Board found "no credible evidence in the record that Respondent, prior to filing its application, used EDGE GAMES as a trademark" for computer game software. It therefore ruled that Mobigame had proven its nonuse claim by a preponderance of the evidence, and so it granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: In proving the negative, taking the deposition of Dr. Langdell was crucial. Compare the recent FAT KATZ case, TTABlogged here.

Text Copyright John L. Welch 2025.

Recommended Reading: A Legal Strategist's Guide to Trademark Trial and Appeal Board Practice, Fifth Edition

The American Bar Association has just published the Fifth Edition of "A Legal Strategist's Guide to Trademark Trial and Appeal Board Practice," edited by the indefatigable Ted Davis. To quote myself from the back cover: "A must-have resource for both TTAB tyro and veteran, this book combines legal expertise with practical insights. Well-organized and plentifully annotated, it will make us all much better TTAB practitioners." The book may be purchased here for a very modest sum.

The Introduction by Ted Davis reminds us that this project was the brainchild of the late Judge Jonathan Hudis, a force of nature in the trademark field, admired and befriended by many.

In this helpful guide, experienced trademark lawyers and specialists who practice before the U.S. Trademark Trial and Appeal Board share invaluable analysis and practical insights drawn from their years of practice. Chapters include a checklist of critical items to consider during each stage of a Board proceeding. This updated edition considers all relevant case law, as well as the 2021 and 2023 changes to the Board's rules.

Now completely updated, this one-of-its-kind treatment provides invaluable analysis and practical insights from an array of experienced attorneys who practice before the U.S. Trademark Trial and Appeal Board.

This edition considers all relevant case law, as well as the 2021 and 2023 changes to the Board's rules. Every chapter clearly describes and analyzes a separate facet of Board practice and concludes with a valuable checklist of items for practitioners to bear in mind during each stage of a Board proceeding. Topics include:

• Inter partes matters and prefiling considerations
• Pleadings and commencement of proceedings
• Disclosures and discovery
• Motion practice
• Trial procedures and rules of evidence
• The use of experts
• Briefs on final hearing and oral argument
• Appeals from final TTAB decisions
• Settlement, alternative dispute resolution, and accelerated case resolution
• Ex parte appeals
• Ethical issues when practicing before the Board

Read comments and post your comment here.

TTABlogger comment: It's on my desk.

Text Copyright John L. Welch 2025.

Which of These Three Section 2(d) Refusals Was/Were Reversed?

The TTAB affirmance rate for Section 2(d) appeals last year fell just under 90%. So far this year it's back to 90%. 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 Greg Gillespie, Serial No. 97840298 (October 29, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Section 2(d) refusal of the mark DRAGONSLAYER, in standard form, for "Role playing game equipment in the nature of downloadable game book manuals," and "Role playing game equipment in the nature of printed game book manuals," in view of the registered mark shown below, for "Board games and equipment sold as a unit for playing boardgames."]

In re MVE Biological Solutions US, LLC, Serial No. 97930469 (October 30, 2025) [not precedential] (Opinion by Judge Elizabeth K. Brock). [Section 2(d) refusal of the mark CRYOCUBE for “Refrigerated shipping container” in view of the identical mark registered for "Freezers and refrigerators used in scientific laboratories."]

In re Biogena GmbH & Co KG, Serial No. 79396760 (October 30, 2025) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Section 2(d) refusal to register the mark shown immediately below, for, inter alia, dietary and nutritional supplements for sports and increased performance for medical purposes, in view of the registered mark JUPITER for "Dietary supplements; dietary supplemental drinks in the nature of vitamin and mineral beverages."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2025.

TTAB Posts November 2025 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled only one oral hearing for the month of November 2025. It will be held virtually. Briefs and other papers for the case may be found at TTABVUE via the links provided.

November 25, 2025 - 1 PM [Virtual]: Zuffa, Inc. v. Byron Belin, Cancellation No. 92077633 [Petition for cancellation of a registration for the mark BMF for "Entertainment media production services for motion pictures, television and Internet; entertainment services in the nature of a non-fiction television programming series on topics relating to family stories told by family members to preserve their heritage; entertainment services in the nature of organizing social entertainment events; entertainment services in the nature of presenting live musical performances; entertainment services in the nature of live musical performances and musical performances featuring prerecorded vocal and instrumental performances viewed on a big screen; entertainment services in the nature of fiction and non-fiction television programming series on topics relating to family stories, drug empires, gangs, organizing social entertainment, multimedia content, and day to day activities of self, friends, and family; entertainment services, namely, displaying a series of films; entertainment services, namely, multimedia production services; entertainment, namely, live performances by musical bands; multimedia entertainment services in the nature of recording, production and post-production services in the fields of music, video, and films; providing entertainment information via a website; providing a website featuring information in the field of music and entertainment," on the grounds of nonuse, fraud, and lack of bona fide intent.]

Read comments and post your comment here.

Text Copyright John L. Welch 2025.

TTAB Finds PALAPA to be Merely Descriptive of Event Venue Services

The USPTO refused to register the proposed mark PALAPA for "event venue services ...," deeming the mark to be merely descriptive of the services, and lacking acquired distinctiveness. Dictionary definitions and evidence of third-party usage of the term established that a palapa is an open-sided structure with a thatched roof. Applicant's venue fit the bill. In re Upper Buena Vista Management LLC, Serial No. 97976656 (October 30, 2025) [not precedential] (Opinion by Judge Mark Lebow).

Applicant Upper Buena Vista Management started off on the wrong foot by asking in its appeal brief that, if its appeal were denied, the mark be registered on the Supplemental Register. The Board said "no dice," pointing out that an application may be amended," if at all, only in accordance with Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g), which states, '[a]n application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer ... or upon order of the Director ....'"

Next, Buena Vista requested that the Board "incorporate by reference the exhibits and specimens" submitted to the Office in response to various Office Actions. No can do, said the Board: "Applicant’s attempt to incorporate previous arguments made during prosecution, but not presented in its brief on appeal, is improper. While we, of course, review the record and Applicant’s brief, we will not search the file for arguments made by Applicant during examination to address matters not raised in its brief."

With regard to the substantive issues, Examining Attorney Maureen Reed submitted several dictionary definitions of "palapa, including: "A structure, such as a bar or restaurant, in a tropical resort, that is open-sided and thatched with palm leaves." (American Heritage Dictionary). Buena Vista admitted that its venue is a structure with a thatched roof. Photographs of the venue (see photo above) showed open sides, and BUena Vista promoted its venue as offering an "open-air experience."

The Examining Attorney also provided Internet evidence showing that "the word ‘palapa’ is often used in connection with similar event venues and social function facilities to mean that the venue or facility has a thatched roof and open sides...."

Buena Vista made a number of unsuccessful arguments against the refusal: that a "palapa" is a dwelling; that a palapa must be open on four sides; that the dictionary definitions are too vague; and that none of the third-party evidence shows use of "palapa" to describe a third-party’s banquet or social function facilities, or pavilion facilities used for concerts or exhibitions. As to the last argument, the Board pointed out that a term can be merely descriptive even if an applicant is the first and only user of the term.

The evidence thus establishes that PALAPA describes a significant characteristic or feature of the services—namely, that the services are provided in a palapa. The lack of exact alignment with every detail of the recitation of services is irrelevant, as the mark PALAPA immediately conveys that the services are provided in a palapa structure, a central feature of Applicant’s services.

Turning to Buena Vista's Section 2(f) claim, its evidence was unimpressive. It was unclear when Buena Vista began using the term, and the social media coverage that it claimed were merely applicant's own social media posts or those of customers who had visited the venue. Moreover, its use of "palapa" did not appear to be substantially exclusive. "Exact identity between the third-party services and an applicant’s recitation of services is not required; use in analogous and overlapping fields are probative if they expose relevant consumers to competing sources."

The Board found that "Applicant has failed to demonstrate that the highly descriptive word PALAPA has acquired distinctiveness for its identified services. Applicant has not shown that “consumers have come to associate the mark with a single source." And so, it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: More about palapas here.

Text Copyright John L. Welch 2025.

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

The Board denied a petition for cancellation of a registration for the mark WHY PAY A LOT FOR STORAGE? for "Providing self-storage facilities for others," rejecting the claim that Registrant Gargoyle Management was not the owner of the mark. The mark was jointly owned by Petitioner Michael R. Postar and his brother David until they split in 2017 and stopped rendering the services. In 2019, Respondent, now owned only by David, began using the mark and registered it. That was okay, says the Board. Michael R. Postar v. Gargoyle Management, Inc., Cancellation No. 92082894 [not precedential] (Opinion by Judge Martha B. Allard).

In reponse to discovery requests, petitioner admitted that he had not used the involved mark in 2018, 2019, 2020, 2021, 2022, 2023, or 2024. The Board noted that "[a]n admission in response to a request for admission “conclusively establishe[s]” the matter that is subject of that request."

In 2017, when the business relationship between the brothers ended, they were unable to reach an agreement regarding the division of their business holdings, and so they voluntarily participated in a mediation. The result was a Mediation Agreement addressing the disposition of assets and liabilities, including the intellectual property assets: which included “logos, marks, etc., as well as all of the websites, domain names, and marketing assets,” all of which were, according to Michael’s testimony, “to be divided equally between [Michael] and David.” They then listed the assets in a separate document; however, the mark at issue here was not mentioned.

The Board found that the issue of abandomnet, at the heart of the dispute, had been tried by implied consent. In considering when the mark may have been abandoned, the Board considered whether the mark was abandoned prior to February 4, 2019, the filing date of Respondent’s underlying application.

The parties agreed that the mark, as used by the brothers jointly, appeared in telephone book advertisements in 2013- 2017, while they shared ownership of their storage business. "Thus, at the point the business was split in August 2017, the mark was an asset of the business and the record does not show that it was subsequently assigned to either brother."

Use of the mark ceased at least as of the date of the Mediation Agreement, August 24, 2017. "Moreover, due to the fact that the business was terminated and the mark was not assigned to either brother, we reasonably infer that the brothers through their former business discontinued use of the mark with intent not to resume such use joint use."

[T]he Mediation Agreement provides that the brothers agree to negotiate “which brand each member will use … as well as an equitable division of any other intellectual property, training videos, and marketing assets.” Because the brothers reached a timely agreement as to the division of the intellectual properly assets, as evidenced by the executed “Store Names, Logos & Trademarks” document, the literal terms of the agreement were met. Because the involved mark was not listed, it at best remained an asset of the jointly-owned business, and, as we discussed above, was abandoned when the brothers’ former business stopped rendering services. While neither Michael nor David may have expressly or impliedly “surrendered ownership of the Mark as a result of the MSA,” the mark’s abandonment occurred by operation of law.

Because the brothers abandoned the mark as of August 24, 2017, it was free for Respondent to adopt and use in its business. See Azeka, 2017 TTAB LEXIS 123, at *22. Accordingly, the Board found that when Respondent filed its application on February 4, 2019 based on use in commerce, it was the rightful owner of the mark.

Read comments and post your comment here.

TTABlogger comment: Oh, Brother!

Text Copyright John L. Welch 2025.

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

Proving a negative is never easy, as this petitioner found out in its failed attempt to prove abandonment of the mark FAT KATZ (in standard character and design form) for "restaurant and bar services." Petitioner 1645 Restaurant Group alleged that Respondent Buell had allowed use of his marks (by restaurants of which Buell was part owner) without a proper license, resulting in abandonment. However, 1645 had no direct proof that a license did not exist, and its attempted inference regrding same from indirect evidence fell short. "We are at a loss to understand why Petitioner did not depose Respondent and representatives of the Fat Katz Restaurants ...." 1645 Restaurant Group, Inc. v. Gregg Alan Buell, Cancellations Nos. 92080535 and 92080536 (October 27, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

Initial Issues: The parties skirmished over evidentiary objections and pleading issues. Interestingly, the Board pointed out that "the document speaks for itself" or "the public records speak for themselves" is not a proper response to an allegation in a adversary's pleading: "A party 'must . . . admit or deny the allegations asserted against it by an opposing party,' Fed. R. Civ. P. 8(b)(1)(B), and a 'denial must fairly respond to the substance of the allegation.' Fed. R. Civ. P. 8(b)(2)." "An allegation--other than one relating to the amount of damages--is admitted if a responsive pleading is required and the allegation is not denied." Fed. R. Civ. P. 8(b)(6). "As a general matter, a response stating that a document 'speaks for itself' may be problematic because it often begs the question 'Exactly what does it say?'" The Board resolved the amiguities against Respondent Buell and considered his "speaks for itself" responses as admissions, and as a result Petitioner 1845 established its statutory standing.

Abandonment: 1645 Restaurant Group conceded that Buell's marks had been in use up to the time of trial by third parties in which Buell has an ownership and management interest. It described the issue before the Board as "[w]hether Registrant’s Marks have been abandoned due to nonuse by Registrant in his individual capacity and his failure to properly license the Registrant’s Marks." The Board observed that:

[I]f Respondent has never personally used the marks shown in the ’506 and ’507 Registrations, that fact alone does not prove nonuse of the marks under the first definition of abandonment if the marks were used by “related companies” under Section 5 of the Trademark Act, 15 U.S.C. § 1055. The Trademark Act creates a legal fiction that use of a registered mark under license from the registrant is the registrant’s use, and makes the registrant the de jure user of the mark even if the registrant is not the de facto user.

Since Buell's registrations enjoyed a presumption of validity, it was 1645's burden to establish abandonment by a preponderance of the evidence. "The most obvious potential source of evidence supporting Petitioner’s theories of abandonment would be deposition testimony from Respondent or the Fat Katz Restaurants regarding the circumstances surrounding the use of the involved marks."

However, 1645 offered no direct evidence regarding the "related companies" issue. Instead, it asked the Board to infer abandonment from indirect evidence, primarily in the form of Internet webpages and articles. However, its evidence did not establish "foundational facts regarding the management or operation of the Fat Katz Restaurants from which we can reasonably infer that there is no valid license between Respondent and the Fat Katz Restaurants, or that the Fat Katz Restaurants are not related companies of Respondent."

Parties that elect to try to carry their burden of proof on fact-intensive claims such as abandonment based solely on materials, such as Internet webpages, printed publications, and actual official records, that are made of record under notices of reliance run the risk that they will fail because of the limitations on the probative value of such evidence discussed above. We are at a loss to understand why Petitioner did not depose Respondent and representatives of the Fat Katz Restaurants, but whether their testimony might have yielded direct evidence enabling Petitioner to prove either of its theories of abandonment "is not a subject on which we can, should or do speculate. Rather, we must take the record as [Petitioner] made it."

Conclusion: The Board found that Petitioner 1645 "did not establish a prima facie case of abandonment on either of its theories of abandonment to overcome the presumption of validity of the ’506 and ’507 Registrations." And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Reminiscent of the TV Azteca case TTABlogged here (official records showing that an establishment had lost its liquor license did not prove that it had closed).

Text Copyright John L. Welch 2025.

Recommended Reading: The Trademark Reporter, September-October 2025 Issue

The September-October 2025 (Vol. 115 No.5) issue of The Trademark Reporterhas arrived. [pdf here].

Willard Knox, Staff Editor-in-Chief, summarizes the contents as follows (and below): "This issue of The Trademark Reporter (TMR) offers an exploration by two rising authors of honest concurrent use in India; another rising author’s examination of the doctrine of greater care in India; a roadmap for practitioners through the key challenges facing their clients’ certification marks; an in-depth survey of so-called weak trademarks in the European Union; and a call-to-action to major global economies to address the threats posed by abusive trademark registrations."

A Brief History of Honest Concurrent Use in Indian Trademark Law, by Lkesh Vyas and Praharsh Gour. This article by two rising authors (and bloggers at SpicyIP) explores honest concurrent use as a defense in trademark infringement cases.

The “Doctrine of Greater Care”: Pharmaceutical Trademarks in India, by Aparajita Lath. This article by a rising author (and blogger at SpicyIP) examines the developing area of the doctrine of greater care to assess likelihood of confusion between pharmaceutical trademarks.

Certification Mark Pitfalls: Managing Problems of Genericness, Descriptiveness, and Consumer Perception, by B. Brett Heavner and Caroline G. Segers. The authors of this article expertly guide practitioners through the challenges posed to certification marks by genericness, descriptiveness, and consumer perception.

Scope of Protection of Weak Marks in the European Union—Analysis of the Case Law of the European Union Courts, by Jeroen Muyldermans and Paul Maeyaert. This in-depth article by two European Union practitioners surveys the evolving case law on so-called weak trademarks.

Abusive Trademark Registrations: Threats to International Trade and Commerce, by Daniel Bereskin, C.M., K.C. This article by a seasoned practitioner addresses the threats posed to major global economies by various forms of abusive trademark registrations.

Read comments and post your comment here.

TTABlog comment: This issue of the TMR is Copyright © 2025, the International Trademark Association, and is made available with the permission of the Trademark Reporter®.

TTAB Orders Cancellation of STORIES OF THE PROPHETS Registration, Finding it Merely Descriptive of Religious Books

Inter partes decisions involving mere descriptiveness are rather rare. Here the Board granted a petition for cancellation of a registration for the mark STORIES OF THE PROPHETS, finding it merely descriptive of "religious books." Applicant Noaha claimed acquired distinctiveness under Section 2(f), based only on its allegedly substantially exclusive use of the mark for more than five years (since 1980). However, the "overwhelming" evidence showed that its use was not substantially exclusive. Paramus Publishing, Inc. v. Noaha, Cancellation No. 92079706 (October 23, 2025) [not precedential] (Opinion by Judge David K. Heasley).

Statutory Standing: Although the petitioner did not claim proprietary rights in the phrase "stories of the prophets," its testimony established that it used the phrase in publications since 2009, including in a children's book entitled, "Stories of the Prophets in the Holy Qur’an.’" "Consequently, Petitioner’s interest in using 'Stories of the Prophets” is within the zone of interests protected by statute, and Petitioner has a reasonable belief in damage proximately caused by Respondent’s registration. Corcamore, 978 F.3d at 1303-05. It has established its entitlement to pursue cancellation."

The issue at hand was "whether Petitioner has disproven Respondent’s claim of acquired distinctiveness, thereby establishing that the registered mark is merely descriptive, and therefore unregistrable." In other words, since the registration is entitled to a presumption of validity, the petitioner has the initial burden to overcome that presumption. If it does so, the burden of production shifts to the registration, but the petitioner always bears the final burden of persuasion.

Petitioner’s vice president testified not only to petitioner’s “Stories of the Prophets” books, but declared that "I also personally know of various other publications that have used the phrase 'stories of the prophets' to publish similar books." He identified publications from 1927 and 2003. Two bookstore owners each testified that "[o]ur store carries a variety of publications, including many with the phrase ‘stories of the prophets."

Petitioner adds its Notice of Reliance, which contains, among other things, depictions of books published in 1963 and 1985 incorporating “Stories of the Prophets” in their titles; a Wikipedia article for “Qisas al-Anbiya,” translated to “stories of the prophets” to show how the public would understand the term; and YouTube playlists, one entitled “Stories of the Prophets” for 17 videos with a combined viewership of about 1.5 million, and the other, “Stories of the Prophets – Quran Stories”, consisting of over 250 videos with over 900,000 subscribers.

Petitioner also submitted the testimony of a scholar of Islamic history and thought, who attested that the term “Stories of the Prophets” (and its Arabic original 'Qisas al-Anbiya') "is a term that has a basis in the religion of Islam dating back to the origins of Islam in 6th Century Arabia and the revelation of the Qur’an."

The Board found that petitioner had made out a prima facie case of mere descriptiveness, shifting to respondent the burden of producing additional evidence or argument in defense of the registration.

Respondent, appearing pro se, offered no evidence, but raised several arguments in its Notice of Reliance, which the Board chose to consider anyway, even though the arguments "do not rise to the level of testimony." Respondent attempted to "tack its use to a centuries-old version of "Stories of the Prophets."[Why would tacking on an earlier use or proving first use matter anyway? -ed.]. The Board was unimpressed by respondent's argument.

In sum, the evidence adduced by Petitioner, coupled with Respondent’s admissions, overwhelmingly establish that Respondent’s use of STORIES OF THE PROPHETS on religious books has not been “substantially exclusive,” either at the time of registration [April 20, 2021] or thereafter. *** We find that Petitioner has met its ultimate burden of proving, by a preponderance of evidence, that Respondent’s designation STORIES OF THE PROPHETS has not acquired distinctiveness, and remains merely descriptive, as Respondent impliedly conceded during prosecution of its application.

Read comments and post your comment here.

TTABlogger comment: Seems like a lot of time and effort was spent on Respondent's irrelevant claims regarding the original source of the stories. The issue was public perception at the time of registration or the time of trial.

Text Copyright John L. Welch 2025.

Judge Mary Beth Myles Has Resigned from the TTAB

Administrative Trademark Judge Mary Beth Myles has resigned from the Trademark Trial and Appeal Board. She was appointed to the Board in 2024. Ms. Myles has joined Greenberg Traurig in its Los Angeles office. A current roster of the TTAB judges may be found here.

Read comments and post your comment here.

Text Copyright John L. Welch 2025.

TTABlog Test: Are T-Shirts and Hats Related to Toy Action Figures Under Section 2(d)?

The USPTO refused to register the mark I HAVE THE POWER for “T-shirts and hats,” finding confusion likely with the identical mark for "toy action figures and accessories therefor." Keeing in mind that a TTAB Judge once told me that you can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and goods (at least for ex parte cases), how do you think this appeal came out? In re David Swan, Serial No. 98517490 (October 23, 2025) [not precedential] (Opinion by Judge Robert Lavache).

Applicant Swan argued that the mark has a different meaning when applied as a slogan on packaging for action figures as opposed to a trademark for t-shirts. However, the Board pointed out once again that it must consider the registered mark as it appears in the registration, regardless of how it appears on the product. Nor was there any explanation why the mark would inherently have a different meaning on a t-shirt. Since the marks are identical, the first DuPont factor weighed heavily in favor of a conclusion that confusion is likely.

As to the goods, Examining Attorney Andrea Cornwell submitted internet evidence showing “that the same entity commonly produces the relevant goods and markets the goods under the same mark;" e.g., SPONGE BOB, BATMAN, G.I.JOE. She also made of record copies of 34 active, used-based, third-party registrations showing a single mark registered for toy action figures and shirts and/or hats.

Applicant Swan contended that the evidence failed to establish “‘something more’ to show relatedness in a manner that indicates the relatedness is well known or generally recognized." However, as stated in In re Samsung Display Co., the "something more" requirement does not apply when only goods are involved. And so, the Board found that the second DuPont factor weighed in favor of affirmance.

Snow feebly argued that the goods are not competitive and have different customers and trade channels. However, there were no limitations in his application or the cited registration as to classes of consumers or channels of trade, and the evidence showed that the goods are available in the same channels for the same customers.

Lastly, Snow contended that the Office should have taken into account his ownership of three registrations for the mark I HAVE THE POWER: for decorative magnets; refrigerator magnets, animal leashes; pet collars; pet tags; various types of bags; and key chains. The Board was unmoved.

Applicant’s arguments regarding its prior registrations appear to be based on a misconception of the ninth DuPont factor’s significance and application. Under this factor, the issue is not whether Applicant uses its mark on a variety of goods, but whether Registrant does. That is, if the prior user, the plaintiff in an inter partes case or the registrant in an ex parte case, uses its mark on a variety of goods, then purchasers are more likely to view a newcomer’s related goods under a similar mark as an extension of the prior user’s line.

Nor were Snow's prior registrations relevant under the 11th DuPont factor, which assesses “the extent to which applicant has a right to exclude others from use of its mark on its goods.” The claimed registrations cover different goods, and there was "no showing that [his] use of [his] mark in connection with these different goods has affected marketplace conditions or consumer perception so as to establish a right to exclude others from use of [his] mark on t-shirts and hats."

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: What if Mr. Shaw had submitted evidence that, say, bags and t-shirts are related?

Text Copyright John L. Welch 2025.

TTABlog Test: Is TROOMY for Supplements Confusable with TROOP for Mushroom-Containing Supplements?

Troop Nutrition opposed an application to register the marks TROOMY, in standard character and slightly stylized form, and the mark TROOMY NOOTROPICS in the form shown immediately below [NOOTROPICS disclaimed], for dietary and nutritional supplements, alleging likelihood of confusion with the registered mark TROOP, for dietary and nutritional supplements containing mushroom extract. Since the goods overlap, the Board presumed that those goods travel in the same trade channels to the same classes of consumers. But what about the marks? How do you think this came out? Troop Nutrition, Inc. v. BW Essentials LLC, Opposition No. 91287431 (October 22, 2025) [not precedential] (Opinion by Judge Jennifer L. Elgin).

The Board first considered the strength of the TROOP mark. Applicant submitted several website printouts supporting the meaning of TROOP as a group of mushrooms. Opposer's own use of the mark established that it has "some conceptual weakness in that it refers to a name for a group of mushrooms, a key ingredient" in Opposer's supplements. "Given that Opposer is openly marketing and reinforcing this connotation of its mark TROOP, we conclude that consumers of its products would give the mark this suggestive connotation."

The Board was unable to assess the commercial strength of opposer's mark due to "scant data" provided by opposer. DuPont factors five and six "weigh slightly against a finding of likelihood of confusion." The Board therefore accorded opposer’s mark "slightly less than 'the normal scope of protection to which inherently distinctive marks are entitled.'"

Turning to the marks, the Board unsurprisingly found TROOMY to be the dominant element in applicant's two non-standard marks. It also found that "TROOP (likely pronounced in its normal way, rhyming with “sloop” and “group”) and TROOMY (likely pronounced as rhyming with “roomy” and “gloomy”) look and sound different overall."

As to connotation and commercial impression, Applicant BW Essentials provided uncontroverted testimony that "TROOMY is a coined term (intended to mean 'true me' to connote a positive and healthy lifestyle and encourage users to be their 'true self' or find their 'true me') in combination with the words 'shroom' or 'shroomy' to refer to the functional mushroom extracts in Applicant’s goods." Moreover, the parties' advertising and packaging "corroborates that the marks have different connotations and commercial impressions that may be conveyed to consumers."

Because the products at issue are directly competitive, the degree of similarity required to prove a likelihood of confusion is lessened. Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992). Nonetheless, comparison of the marks’ sight, sound, meaning sand overall commercial impressions shows that Opposer cannot meet even this lowered standard, especially given the slightly narrowed scope of protection of its pleaded TROOP mark.

And so, the Board found that the first DuPont factor weighed "strongly against a finding of likelihood of confusion."

As to the remaining DuPont factors, the purchaser care factor slightly favored opposer, since "relevant purchasers are likely to exercise some degree of care when it comes to buying and using” goods that are ingested into the human body. Troop's claims of bad faith and actual confusion failed for lack of probative evidence.

The Board concluded that Opposer Troop failed to prove likelihood of confusion, and so it dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: How did you do? I think the Board was a bit loose with the evidence of how the marks are actually used. Should it be looking at just the marks themselves? Maybe the Board needed extrinsic evidence in order to bolster its conviction that the marks are not confusingly similar, despite both having the "TROO" prefix.

Text Copyright John L. Welch 2025.