Ted Davis: "Federal Court and Trademark Trial and Appeal Board Review"

Ted Davis has graciously consented to my posting a link here to his article, "Recent Developments in United States Trademark and Unfair Competition Law." This article is a companion to Ted's presentation at the 2025 Annual Meeting of INTA in San Diego.

Read comments and post your comment here.

USPTO Fails to Prove Section 2(a) False Connection of ENAIRA with the Central Bank of Nigeria

Despite the applicant's "egregious conduct" during prosecution of its application and during this appeal, the Board was "duty-bound" to decide this case "solely on the record and the applicable law," and so it reversed the USPTO's Section 2(a) refusal to register the mark ENAIRA on the Supplemental Register, for “Financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network." The Office had maintained that the mark falsely suggests a connection with the Central Bank of Nigeria. In re Mefona LLC, Serial No. 97065669 (May 14, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

Applicant Mefona LLC, appearing pro se, "made numerous unfounded and offensive accusations of unethical and even illegal conduct by the Examining Attorney, officials of the United States Patent and Trademark Office," and the Board; "unnecessarily inflated the record, and complicated and prolonged the ultimate disposition of this case;" and "caused the Board and other offices in the USPTO to waste their limited resources on multiple matters not germane to the merits of this case." The Board needed 10 pages of this 24-page opinion to describe the contentious prosecution history of the subject application.

The Office initially refused registration on the ground that the mark is merely descriptive because the "Naira" is Nigeria’s currency and "eNaira" is the name given to Nigerian currency in electronic form. Mifona then amended the application to seek registration on the Supplemental Register. This Section 2(a) refusal ensued.

To establish a false suggestion of a connection between Applicant Mefona and the Central Bank of Nigeria, the Office had to prove that: 

• (1) The term ENAIRA in Applicant’s mark is the same as, or a close approximation of, the Central Bank of Nigeria’s name or identity, as previously used or identified with the Central Bank of Nigeria; 
• (2) The term ENAIRA in Applicant’s mark would be recognized as such because it points uniquely and unmistakably to the Central Bank of Nigeria; 
• (3) The Central Bank of Nigeria is not connected to or otherwise affiliated with Applicant; and 
• (4) The Central Bank of Nigeria is of sufficient fame or reputation that, when the term ENAIRA is used in connection with the “Financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network” identified in the application, a connection with the Central Bank of Nigeria would be presumed.

The examining attorney failed to establish any one of these elements, and so reversal of the refusal was required.

The examining attorney argued that "ENAIRA is a mark used by the Central Bank of Nigeria, that it would be recognized as such in that it points uniquely and unmistakably to that institution, that the institution is not connected with the applicant, and that the reputation of the institution is of such a nature that a connection would be presumed."

In its opinion, the Board focused on the fourth element as dispositive. The Board pointed out that in prior cases in which a false suggestion of a connection with a foreign person or institution has been found, the records have included evidence of "significant exposure of the person or entity to United States consumers."

The examining attorney did not provide any evidence regarding the extent, if any, of the exposure of any of the materials in the record to United States consumers. "Many of the webpages and articles in the record come from what appear to be foreign websites based either on their domain names or their contents."

The Board observed that there was no evidence of the size or activities of the Nigerian diaspora in the United States, no evidence of the extent or nature of the trade or financial relations between the United States and Nigeria, no evidence regarding the number of visitors to the website of the Central Bank of Nigeria at cbn.gov.ng, including the number of United States consumers who have visited the site, and no evidence of the size of the United States readership or viewership of the articles and websites in the record.

The Board concluded that it could not, from this record, draw the inference that the Central Bank of Nigeria is so well-known to United States consumers that the use of the ENAIRA mark will cause consumers of the services identified in the application to presume a connection with the Central Bank of Nigeria. "At the very least, we have significant doubt that the Central Bank of Nigeria is sufficiently well-known in the United States, and we must resolve that doubt in favor of Applicant."

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: What will happen if the applicant tries to enforce its rights, if any, in the mark? Will the adversary do the work to come up with better evidence? PS: see the Board's last footnote: "Our decision, of course, does not prevent the Central Bank of Nigeria, or any other interested party, from petitioning to cancel Applicant’s Supplemental Register registration based on Section 2(a), or other grounds for cancellation, and providing a better-developed record."

Text Copyright John L. Welch 2025.

Third-Party Registrations and Uses Yield TTAB Reversal of Section 2(d) Refusal

The Board reversed a Section 2(d) refusal to register the mark STADIUM SPORTS BAR & GRILL for “Bar and restaurant services inside of a casino" [SPORTS BAR & GRILL disclaimed], over the registered mark shown below for, inter alia, bar services [EAT • DRINK • SPORTS • GAMES disclaimed]. The services are legally identical (registrant's services encompassed applicant's services) and presumably are offered in the same channels of trade to the same classes of consumers. But in light of the weakness of the formative STADIUM, the Board found the marks sufficiently dissimilar to render confusion unlikely. In re Boyd Gaming Corporation, Serial No. 97838771 (May 14, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant Boyd Gaming submitted evidence of nine third-party uses of marks containing the word STADIUM for restaurant or bar services, including STADIUM GRILL (Mattoon, IL), STADIUM TAKEOUT (Madison, WI), and THE STADIUM RESTAURANT (New Port Richey, FL). "This third-party use evidences commercial weakness of the term STADIUM."

As for the conceptual strength of the cited mark, Boyd Gaming pointed to nine registrations for marks containing the word STADIUM for restaurant or bar services, including STADIUM PIZZA, STADIUM ON WHEELS, and STADIUM66. The Board found that "STADIUM carries a highly suggestive connotation in the restaurant and bar industry for restaurants or bars that feature sporting events or are located near or in a stadium." This evidence was sufficient to establish the conceptual weakness and highly suggestive nature of the term STADIUM in connection with bar and restaurant services.

In sum, the term STADIUM is conceptually and commercially weak when used in connection with bar and restaurant services, such that consumers are educated to look for minute distinctions in STADIUM-formative marks in the marketplace. “Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.”

Turning to the marks, the Board observed that "[g]enerally, adding subordinate or descriptive matter to a term identical to one in a cited registration does little to obviate a finding of similarity." “However, an exception to the general rule is often found when, inter alia, the matter shared by the two marks is merely descriptive or commonly used or registered.”

The Board concluded that the marks at issue are "sufficiently dissimilar to avoid likelihood of confusion."

Considering the marks in their entireties and in view of the weakness of the cited mark, we find the addition of the terms SPORTS BAR & GRILL in Applicant’s mark and the design elements and additional terms EAT • DRINK • SPORTS • GAMES in Registrant’s mark are sufficient to render the marks distinguishable and dissimilar, even if used on legally identical services.

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Nine uses and nine registrations doesn't seem like a lot. Who ever heard of STADIUM GRILL in Mattoon, Illinois, which is in the middle of nowhere? And is STADIUM really descriptive of restaurant services?

Text Copyright John L. Welch 2025.

TTAB Affirms Another Section 2(e)(5) Functionality Refusal: Beach Canopy

In a thorough and instructive opinion, the Board upheld another Section 2(e)(5) functioality refusal, this time rejecting the proposed product configuration marks shown below for "Canopies of textile or synthetic materials." Once again, the applicant's utility patents and advertising established the functional benefits of its designs. In re Shibumi Shade, Inc., Serial Nos. 90785780 and 90785791 (May 13, 2025) [not precedential] (Opinion by Judge Jennifer L. Elgin).

The proposed marks consist of the configuration of a rectangular canopy (one with horizontal stripes) attached to a curved frame along one side. In real life, the canopies look like this:

As usual, the Board looked to the four factors set out in Morton-Norwich: utility patents, laudatory advertising, alternative designs, and lower cost of manufacturing.

Utility Patents:The specifications and drawings of Applicant Shibumi's utility patents "disclose a shading system where the segments are fitted together to form a single frame, which, in the preferred embodiment [shown below], are formed into a curved (i.e., arched) shape." Moreover, the curved configuration shown in the marks is specifically included in the patent claims in two of applicant's patents.

Here, there is no element of the applied-for marks as described in the applications, save the two-toned shading of the mark in the ’780 Application, which is not essential to the patented invention; and this shading is too incidental to transform the overall functionality of the applied-for mark into a nonfunctional mark.

The Board concluded that "the ’046 and ’904 utility patents are strong and explicit evidence that the applied-for marks have overall utilitarian benefits."

Advertising: Shibumi's advertising confirmed that the "arched frame and canopy design has at least the following utilitarian advantages: (1) ease of set-up; (2) maximization of shade; and (3) ease of repositioning to follow the movement of the sun or direction of the wind." And so, the second Morton-Norwich element "strongly supports a determination that the applied-for marks are functional."

Alternative Designs: The Board noted that competitors sell alternative beach shade designs that "work with the wind and not against it," but it could not determine from the evidence whether those designs work "equally well" as Shibumi's. In any event, "it is not necessary for a finding of functionality that there are a few other designs available; it is sufficient if the product design Applicant seeks to register is one of only a few superior designs." The Board deemed this factor to be neutral

Cost of Manufacture: Examining Attorney Kathryn Browning offered little evidence regarding this factor, and so the Board considered it neutral.

Design Patents: Shibumi argued that its six design patents presumptively indicate that its design is not de jure functional. In re OEP Enters., Ser. No. 87345596, 2019 TTAB LEXIS 278, *20-21 (TTAB 2019). However, the Board noted, this fact alone is not dispositive: the Board "must examine the totality of the evidence, including Applicant’s utility patents and advertising."

Conclusion: Ruling that Shibumi's design patents and other evidence "[do] not tip the balance in its favor," the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Seems like if the wind shifts, you've got a problem

Text Copyright John L. Welch 2025.

TTAB Finds SLEEP HEADPHONES to be Generic for . . . . Guess What?

The Board sustained an opposition to registration of the proposed mark SLEEP HEADPHONES for "Audio speakers; Calculators; Camera flashes; Cases for smartphones; Contact lens cases; Dust masks; Earphones; Protective glasses" [HEADPHONES disclaimed] on the grounds of genericness and, in the alternative, mere descriptiveness. Applicant moved to delete "earphones" from its identification of goods, but the Board denied the motion as "too little, too late." Shenzhen Tianjian Business Co. Limited v. Shenzhen Ruiquansheng Technology Co., Ltd., Opposition No. 91273631 (May 7, 2025) [not precedential] (Opinion by Judge David K. Heasley).

"Standing": The Board found that opposer, who uses the term "sleep earphones" to sell its product on Amazon, was entitled to commence an opposition based on genericness or mere descriptiveness even if it does not own proprietary rights in the subject mark. "To put [Applicant] in possession of a right it does not have, which it might at any time decide to assert..., would, in our opinion, be damaging... since it could at least be used to harass [Opposer] into ceasing use of [the term] on pain of defending a lawsuit."

Motion to Amend: The Board denied applicant's motion to delete "earphones" from the identification of goods for several reasons. First, earphones are a type of "audio speaker" and so the identification of goods would still encompass earphones, and the proposed deletion of “earphones” would be "an exercise in futility." Second, "if Applicant’s proposed mark, SLEEP HEADPHONES, is generic or merely descriptive of any of its identified goods, whether they are earphones or audio speakers, then registration is properly refused as to the entire Class of goods." 

Applicant cannot circumvent a finding of genericness or mere descriptiveness by arguing that the term is not generic or descriptive of its other Class 9 goods. Applicant’s motion to amend is, in sum, too little, too late, and it is denied.

Genericness: The Board agreed with opposer that "Sleep Headphones" is "a compound of generic terms that does not create any additional meaning distinguishing the goods. ‘Sleep’ and ‘Headphones’ together simply describe headphones for sleeping, which is the product’s primary purpose."

Dictionary definitions, use of the term "sleep headphones" by applicant's competitors, applicant's own website and advertising materials describing the function of its headphones (for sleeping), generic use by commentators (e.g., N.Y Times Wirecutter) led the Board to find by a preponderance of the evidence that SLEEP HEADPHONES "denotes a category or class of goods, not a single source. As such, it is generic, and may not be monopolized by Applicant in the form of a registered trademark."

Mere Descriptiveness: Observing that "the generic name of a thing is in fact "the ultimate in descriptiveness," Marvin Ginn v. Fire Chiefs, 782 F.2d at 989, the Board pointed out that its finding of genericness "also implies that it is at least merely descriptive of Applicant’s goods." "The term SLEEP HEADPHONES immediately conveys the function, purpose, and use of Applicant’s earphones and audio speakers, as demonstrated by the above dictionary definitions, by Applicant’s advertising, by competitors’ use, and by commentators’ use."

We therefore find by a preponderance of the evidence that Applicant’s proposed mark is merely descriptive—indeed, highly descriptive, if not generic—of its identified goods, within the meaning of Section 2(e)(1). 15 U.S.C. § 1052(e)(1). “‘Our society is better served if ... highly descriptive or generic terms remain available for use among competitors.’ In re Water Gremlin Co., 635 F.2d 841, [844] (CCPA 1980) (footnote omitted).” Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., 2020 WL 636467, *15 (TTAB 2020).

Read comments and post your comment here.

TTABlogger comment:The applicant should have seen this problem from the git-go when it filed the application.

Text Copyright John L. Welch 2025.

Two Dilution Claims: TTAB Finds "IVY LEAGUE" to be Famous, But Not "ASUS"

On May 8th, the Board decided two oppositions involving claims of dilution-by-blurring under Secction 43(c) of the Lanham Act. In one, it found the marks THE IVY LEAGUE and IVY LEAGUE to be "household names." Council of Ivy Group Presidents v. IV League Nurse Concierge, Inc., Opposition No. 91285794 (May 8, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.). In the other, the Board found that the mark ASUS had achieved at most "niche" fame for computers and related products as of the critical date. ASUSTeK Computer Incorporation v. ASOS plc, Opposition No. 91264402 (May 8, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

IVY LEAGUE: The Board sustained this opposition to registration of the mark shown above, for "intravenous (IV) hydration therapy services" [NURSE CONCIERGE, INC. disclaimed], on the ground of dilution-by-blurring under Section 43(c) of the Lanham Act. The Board declined to reach opposer's Section 2(d) likelihood of confusion claim.

The term “Ivy League” was coined in the 1930s by a sportswriter to collectively refer to Brown University, Columbia University, Cornell University, Dartmouth College, Harvard University, the University of Pennsylvania, Princeton University, and Yale University. Continuous and extensive promotion and use of the marks, unsolicited media coverage, social media engagements, licensing and policing of the marks, and dictionary listings of the term "Ivy League" led the Board to conclude that THE IVY LEAGUE and IVY LEAGUE are "household names, and for the purposes of dilution, famous marks." The Board also found that the IVY LEAGUE marks were famous before applicant's constructive first use date in 2022.

Next, the Board deemed Applicant’s mark and Opposer’s THE IVY LEAGUE and IVY LEAGUE marks to be "similar because they share the same phonetically identical dominant terms, 'IV LEAGUE' in Applicant’s mark and 'IVY LEAGUE' in opposer’s marks." Opposer's marks are inherently distinctive and there was no evidence that their use was not substantially exclusive. Although there was no direct evidence (e.g., a survey) of the degree of recognition of opposer's marks, the indirect evidence proved that the marks "have attained a significant level of recognition."

We find that THE IVY LEAGUE and IVY LEAGUE marks are publicly associated with Opposer’s educational services such that these marks are “now primarily associated with the owner of the mark[s] even when [they are] considered outside of the context of the owner’s goods and services.” Toro, 2001 TTAB LEXIS 823, at *59-60

There was no evidence that applicant intended to create an association with opposer, nor any evidence of any actual association of applicant's mark with those of opposer.

Concluding that all of the dilution factors favored opposer or were neutral, the Board sustained the dilution-by-blurring claim.

ASUS v. ASOS: ASUSTeK opposed registration of the mark ASOS for downloadable application software and downloadable publications for mobile devices for the purpose of the retail of goods in relation to fashion, clothing, footwear, activewear, headwear, cosmetics, toiletries, grooming, homeware and gifts, in view of the registered ASUS for a variety of products, including gaming hardware, desktop computers, laptop computers, monitors, graphics cards, keyboards, mice, headsets and microphones, mobile phones, other computer and communication devices. The Board dismissed ASUSTeK's likelihood of confusion claim primarily because of a failure to prove that the involved goods are related, supported by the eighth DuPont factor: the lack of evidence of actual confusion despite 20 years of concurrent use.

With respect to its dilution claim, ASUSTeK had to show that its mark became famous before applicant's constructive first use date in November 2016. Its proofs fell short. Although it has used ASUS mark for 35 years, ASUSTeK's sales figures were post-2016 and its evidence of advertising prior to 2016 was "spotty" and not limited to the United States. And it provided no evidence of social media followers or customers in the United States as of the critical date.

Opposer’s evidence shows, at most, that as of November 16, 2016 the ASUS mark was recognized for computers and similar products. This is not sufficient for a dilution claim. Coach Servs., 668 F.3d at 1372 (“By using the ‘general consuming public’ as the benchmark, the TDRA eliminated the possibility of ‘niche fame,’ which some courts had recognized under the previous version of the statute.”).

Therefore, the Board dismissed the dilution-by-blurring claim.

Read comments and post your comment here.

TTABlogger comment: Cast yourself back to 2016. Was ASUS a household name in your house? Maybe if you had a cat named ASUS.

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'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 Sycamore Growth Group, LLC, Serial No. 98125231 (May 8, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen). [Section 2(d) refusal of the mark SYCAMORE GROWTH GROUP for "tax consulting services in connection with identifying tax credits" [GROUP disclaimed] in view of the registered mark SYCAMORE CAPITAL in word and logo form for "financial services, namely, financial management, investment advice, mutual fund investment, financial planning services, and investment management services” [CAPITAL disclaimed].

In re All Strong Industry (USA) Inc., Serial No. 98293359 (May 8, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark GREEN LIVING for "Indoor window blinds" [GREEN disclaimed] in view of the registered mark LIVINGREEN for "Furniture; furniture, namely, mirrors, tables, desks, chairs; picture frames."]

In re Mae Daly’s Events LLC, Serial No. 98126095 (May 5, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal to register the mark MAE DALY’S for "Restaurant services; bar services; catering services" in view of the registered mark DALY for "Restaurant services."]

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2025.

E.D. Va. Affirms TTAB Decision Ordering Cancellation of two General Cigar Registrations for "COHIBA" Under Pan-Am Convention

The U.S. District Court for the Eastern District of Virginia has affirmed the TTAB's decision [TTABlogged here] ordering cancellation of two registrations for the mark COHIBA, under 8 of the Pan-American Convention. General Cigar Co. v. Empresa Cubana Del Tabaco d/b/a Cubatobaco, Civil Action No. l:23-cv-227 (LMBAVEF) (E.D. Va. May 7, 2025).

Read comments and post your comment xxx">here.

TTABlogger comment: Prof. Christine Haight Farley explains the Pan American Convention and Board's COHIBA decision here.

Text Copyright John L. Welch 2025.

Precedential No. 4: TTAB Sustains Opposition to CUADRA for Alcoholic Beverage Due to Lack of Bona Fide Intent

In a dubiously precedential ruling, the Board sustained this opposition to registration of the mark CUADRA for "alcoholic beverages, except beer; distilled spirits produced in Mexico in accordance with specific standards," finding that applicant "fail[ed] to show a bona fide intention to use the mark in a real and legitimate commercial sense on the identified goods in United States commerce at the time it filed [its] application." Tequila Cuadra S. de RL de CV v. Manufacturera de Botas Cuadra, S.A. de C.V., 2025 USPQ2d 729 (TTAB 2025) [precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Opposer had the initial burden of demonstrating by a preponderance of the evidence that applicant lacked a bona fide intent to use the mark on the identified goods on the filing date of its application. "The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof sufficient to prove that the applicant lacks a bona fide intention to its use its mark in commerce." "If an opposer establishes a prima facie case, the burden shifts to the applicant to rebut that prima facie case by producing evidence which would establish that it had the requisite bona fide intent to use the mark when it filed its application."

Applicant had no documentary evidence to support its claim of bona fide intent: no communications with the necessary regulatory authority in the United States concerning the production and sale of any CUADRA branded alcoholic beverage, no communications, no invoices, no contracts, no labels, no formulas, no applications for regulatory approval, no purchase orders, no business plans, and no meeting minutes.

The only documents that the applicant relied on are "documents showing Applicant’s ownership and/or control of the land, facilities, equipment and personnel necessary to produce and market the Identified Goods in U.S. commerce under the CUADRA mark." Those documents related, however, to applicant’s foreign capacity (i.e., applicant’s part-ownership of various wineries outside the United States).

This prima facie showing by the opposer shifted the burden of production onto applicant. (Of course, the ultimate burden of persuasion remained on opposer.) Applicant submitted documentary evidence - including advertising, social media posts, and Internet web pages showing bottles labeled CUADRA -  and testimony regarding its part ownership of several wineries in Mexico. However, its evidence fell short of rebutting opposer's prima facie case.

The Board noted that applicant's labels for the CUADRA-branded bottles of alcoholic beverages had Spanish-language text and did not appear to be targeted to U.S. consumers. The social media posts came from the account of Vinedo San Miguel (e.g., Facebook and Instagram), not applicant’s account. Nothing in the social media posts indicated an intention to specifically target U.S. alcoholic beverage consumers. "[E]ven if United States consumers engaged with these ads, that would not prove Applicant’s intent to offer alcoholic beverages under the CUADRA mark in the United States on March 20, 2020 when the application was filed."

Applicant relied heavily on the principle that "an applicant’s capacity to market and/or manufacture the identified goods is evidence that weighs against a finding that an applicant lacked bona fide intent to use." Swatch AG v. M. Z. Berger & Co., Opp. No. 91187092, 2013 TTAB LEXIS 515, at *45 (TTAB 2013), aff’d, 787 F.3d 1368 (Fed. Cir. 2015). However, there was no evidence of applicant's capacity to produce alcoholic beverages. Instead, it relied on the capacity of its commonly owned winegrowers based in Mexico. The Board was not impressed.

Even considering the capacity of the commonly-owned winegrowers, such as Vinedo San Miguel, Applicant failed to produce any communications between it and those commonly-owned winegrowers discussing even a plan to produce a CUADRA-branded alcoholic beverage, let alone any documents or testimony demonstrating that concrete steps have been taken towards bringing such a product to the U.S. market (or any other market)

Finally, the Board observed that, even applicant’s testimony and documentary evidence were taken as supporting "a bona fide intent to use the CUADRA mark in connection with alcoholic beverages generally (e.g., in Mexico), the record as a whole does not support a finding of a bona fide intent to use the mark in United States commerce." (Emphasis by the Board).

Read comments and post your comment here.

TTABlogger comment: Opposer also claimed a likelihood of confusion with its identical mark for tequila, but the Board found it unnecessary to consider that claim. 

Text Copyright John L. Welch 2025.

TTABlog Test: Are Leather Bags Related to Cosmetics Under Section 2(d)?

The USPTO refused to register the mark HUELLA for leather bags, leather wallets, and similar leather goods, finding confusion likely with the identical mark registered for cosmetics and make-up. The first DuPont factor weighed "heavily" in favor of affirmance, putting the applicant behind (or under) the 8-ball. But what about the goods? How do you think this appeal came out? In re Huella Studio LLC, Serial No. 97751731 (May 7, 2025) [not precedential] (Opinion by Judge Christen M. English).

The Board found "an inherent relationship" between leather bags and cosmetics. "Applicant’s leather bags are broad enough to encompass leather makeup bags for storing cosmetics." "Complementary or companion use has long been recognized as a relevant consideration in determining a likelihood of confusion. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567 (Fed. Cir. 1984)."

Moreover, Examining Attorney Ashton Copeland submitted 15 third-party use-based registrations, along with website screenshots showing 11 third parties using a particular mark for both cosmetics and leather bags.

Applicant argued that the cited marks "are famous designer brands that are often associated with 'the practice of designers to licensing their names for a wide variety of goods.'" Because "[t]he Examiner has not cited any evidence that either the owner of the cited mark or Applicant" are designers, Applicant asserted this evidence does not support a conclusion that the goods are similar or commercially related.

The Board agreed that in some cases "the marks of well-known or famous designers may have more limited probative value in demonstrating relatedness because consumers are more cognizant that such designers tend to use their marks on a wide variety of goods. Cf. In re Donnay Int’l, Societe Anonyme, Ser. No. 74160268, 1994 WL 515456, at *1, n.3 (TTAB 1994)."

Here, however, the third-party use evidence corroborates the evidence of inherent relatedness and supports that consumers encounter these inherently related goods in the marketplace in a manner that would lead consumers to believe they emanate from a common source. * * * The third-party use also corroborates the numerous third-party registrations showing that it is common for third-parties to register a single mark for both cosmetics and leather bags.

And so, the Board found that the second DuPont factor supported the refusal to registar.

As to channels of trade and classes of consumers, the application and cited registration contain no pertinent limitations, and so the Board must presume that the goods travel in all normal channels of trade to the usual classes of consumers (the general public).

In this case, the presumption regarding the channels of trade and classes of customers is confirmed by additional evidence, such as the excerpt from the HERMÈS website showing cosmetics sold side-by-side cosmetic bags, as well as six websites showing designer retailers selling both cosmetics and leather bags. Collectively, this evidence supports a finding that the goods are offered in at least one common channel of trade, namely, websites operated by third-party designer retailers.

Concluding that all the relevant DuPont factors supported the refusal, the Board affirmed.

Read comments and post your comment here.

TTABlogger comment: Are handbags, cosmetics, jewelry, and clothing all related for Section 2(d) purposes? 

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB: US SPACE FORCE Falsely Suggests a Connection with the United States

The CAFC upheld the Board's decision [TTABlogged here] affirming a Section 2(a) refusal to register the proposed mark US SPACE FORCE for a variety of goods in ten classes, including license plate frames, umbrellas, pillows, and toy spacecraft. The Board found that the mark falsely suggests a connection with the U.S. Space Force, a branch of the U.S. Armed Forces and a U.S. governmental institution. The CAFC ruled that the mark falsely suggested a connection with the United States (not just the Space Force), since the U.S. Space Force is an instrumentality of the United States. In re Thomas D. Foster, APC, 2025 USPQ2d 727 (Fed. Cir. 2025) [precedential]

Section 2(a) of the Lanham Act bars registration of a trademark that may “falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols." The Act defines "person" as including "the United States [and] any agency or instrumentality thereof." See Section 45.

Applicant Foster argued that (1) the Board improperly considered facts that post-date the application’s filing date and (2) the Board’s findings of fact under the first two parts of the four-part false connection test were not supported by substantial evidence. The CAFC disagreed.

Timeliness of the Evidence: In what appears to be an issue of first impression, the court held that
[t]he false connection inquiry can . . . include evidence that comes into existence during the examination process." It concluded that examinatinon continued through the Board's denial of Foster's request for reconsideration of the USPTO's final refusal (December 12, 2022). [Is the Board's reconsideration of its own decision really part of the "examination process"? - ed.] Foster failed to show that the Board relied on evidence that post-dated the decision on reconsideration, and so the court concluded that the Board did not err with regard to its assessment of the evidence.

False Connection: To establish that a proposed mark falsely suggests a connection with a person or an institution under Section 2(a), it must be shown that: 

•  (1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; 
•  (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; 
•  (3) the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and 
•  (4) the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

The Board found that all four elements of the test were satisfied, but Foster contended that the Board’s findings as to the first two were not supported by substantial evidence. The CAFC noted: 

As an initial matter, the mark need not be identical to the name or identity. It would suffice if the US SPACE FORCE mark falsely suggests a connection to the United States, even if the U.S. Space Force entity had not come into existence. The issue is whether the US SPACE FORCE mark falsely suggests a connection to the U.S., which undeniably has been used. [sic!]. In this case, however, the United States was using the entirety of the mark, U.S. Space Force, during the relevant time.

The CAFC concluded that substantial evidence supported the Board's finding that Foster's mark "is the same as or a close approximation." [of the United States? of the U.S. Space Force? -ed.].  President Trump announced the creation of the U.S. Space Force in 2018, and it was established in September 2019 amidst continuing news coverage.

Likewise, substantial evidence supported the Board finding that Foster's mark "points uniquely and unmistakably to the United States, particularly a military branch called the U.S. Space Force:" The court again pointed to President Trump’s announcement and subsequent coverage in major news publications. In fact, the court noted, the mark and name are identical.

Read comments and post your comment here.

TTABlogger comment: Applicant Foster is an IP attorney. He handled the appeal. WYHA? In my view, the court's discussion and analysis of the evidence was neither clear nor helpful. Why didn't it just stick with the Board's conclusion that Foster's mark falsely suggested a connection with the U.S. Space Force?

P.S.: Examination by the Examining Attorney ended on January 28, 2022. Maybe the CAFC picked the wrong date for the cut-off of evidence. However, it seemingly didn't make any difference anyway.

Text Copyright John L. Welch 2025.