CAFC Reverses TTAB - Remands ECHO D’ANGÉLUS Opposition Due to Lack of Substantial Evidence Supporting Dismissal

The CAFC reversed the Board's decision [here] dismissing in part an opposition to registration of the mark ECHO D’ANGÉLUS for wine, and remanded the case to the Board. The TTAB had found the mark not confusingly similar to opposer's mark ECHO DE LYNCH BAGES, also for wine, placing "great weight" on its finding that the marks "incorporate[d] different-appearing house marks as part of unitary expressions." The appellate court concluded that that finding was not supported by substantial evidence. Chateau Lynch-Bages v. Chateau Angelus S.A., Appeal No. 2024-1197 (Fed. Cir. June 13, 2025) [not precedential].

Although neither party "appeared to argue" that the marks included house marks, the Boad "opined" that “[i]t appears that ANGÉLUS and LYNCH BAGES are the parties’ ‘house marks.’” IN support of this finding, the Board observed that applicant owns four registrations that included the term “ANGELUS,” and that opposer’s name and its letterhead contained the phrase “LYNCH BAGES.”

Ultimately, the Board found that “ECHO” had “some conceptual weakness in connection with the goods at issue,” and that “the use of ECHO with D’ and DE followed by the parties’ house marks contributes significantly to the overall commercial impressions of the marks as invoking the respective house marks.”

The Board concluded that the similarities in the marks were outweighed by the dissimilarities and it deemed this the "predominant factor" in its Section 2(d) analysis. The CAFC, however, ruled that this analysis was "flawed" because it was not supported by substantial evidence.

In considering the similarity of the marks, the Board declined to place an emphasis on the common term “ECHO” because it believed that the marks were unitary expressions not dominated by this term. Appx. 21–22. Therefore, the Board’s analysis primarily revolved around comparing the terms “ANGÉLUS” and “LYNCH BAGES.” Here, rather than simply concluding that the substantial differences in the sound, appearance, and commercial impression of these terms rendered the marks dissimilar, see In re i.am.symbolic, llc, 866 F.3d 1315, 1323 (Fed. Cir. 2017), the Board opted to find that the terms “appear” to be the parties’ house marks. Appx. 22.

The Board made the "observation" regarding house marks "based on its own investigation." It did not cite any authority for the proposition that applicant's ownership of multiple registrations with a common term renders that term a house mark, nor did the Board find that those marks had broad use in commerce. Moreover, the evidence that “LYNCH BAGES” was opposer’s house mark was even more sparse.

[T]he Board’s analysis was unclear, as its survey of the case law resulted in a conclusion that “none of [its] precedents” governed the situation that it concocted itself: where the competing marks supposedly contained both a shared word and each party’s house mark.

The Board’s determination that the competing marks contained house marks was erroneous, and because this finding was critical in the Board’s similarity analysis, the conclusion of dissimilarity lacked substantial evidence. Moreover, since the Board gave “predominant” weight to the similarity factor in its DuPont analysis, it is not clear whether the Board would have arrived at the same conclusion of no likelihood of confusion absent this error.

The court therefore remanded the case for additional proceedings consistent with its opinion.

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TTABlogger comment: So will the Board allow additional evidence and briefing? Or will it re-do its analysis without the "house mark" wrinkle? How do you think this will come out?

Text Copyright John L. Welch 2025.

TTABlog Test: Are These Two Word-And-Design Marks Confusable for Keys and Key Blanks?

The USPTO refused to register the mark shown below left, for "pre-fabricated metal ignition keys for starting heavy equipment, namely construction and agricultural equipment" [disclaimer of EQUIP KEY CO required], finding confusion likely with the registered mark shown below right, for "metal, brass and aluminum key blanks; metal and aluminum key chains; metal and brass locks, lock cylinders, pad locks and door locks" [representation of a key disclaimed]. The Board affirmed the refusal based on the applicant's failure to comply with the disclaimer requirement. But what about the Section 2(d) refusal? In re EquipKeyCo, LLC, Serial No. 97344289 (June 10, 2025) [not precedential] (Opinion by Judge Albert J. Zervas).

Disclaimer: Dictionary definitions of "equip," "key," and "co" submitted by Examining Attorney Michael Kazazian, convinced the Board that disclaimer of EQUIPKEY CO is required. Applicant's failure to disclaim that term was itself sufficent to support refusal of the application.

The Goods: Internet evidence consisting of webpages from a number of sources established that the same entity commonly provides prefabricated metal ignition keys and key blanks under the same mark. Furthermore, applicant's specimen of use states, “32 of our most popular heavy construction equipment keys on 1 ring …. These are not basic machine key copies. They are designed and manufactured to meet or exceed the quality of most other keys used on heavy construction equipment." Thus, applicant’s goods "are related to key rings – or key chains – because they are used together, with the ring holding the keys."

Trade Channels: The Board found that the internet "is a trade channels for such goods and the DuPont factor involving trade channels favors a finding of likelihood of confusion." [The internet is a trade channel for everything, I suppose - ed.].

Purchaser Care: Because of a lack of evidence, the Board was unable to find that those who operate or own heavy equipment are sophisticated, or take anything but ordinary care, in purchasing low-cost goods. Moreover, applicant did not argue that purchasers of key chains - goods within Respondent’s identification of goods - are sophisticated. The Board therefore found the third DuPont factor to be neutral.

The Marks: The Board observed that "KEYCO" has conceptual weakness and is not a particularly distinctive term for Registrant’s goods. It found this term to be "distinctive, but highly suggestive of Registrant’s identified goods, and an extremely weak source indicator."

Looking at the marks in their entireties, the design portions are very different overall. The literal portions are different as well due to the addition of the term EQUIP. Given the conceptual weakness of the element “KEYCO,” we find that consumers will look to other aspects of these marks to distinguish source, and that the addition of EQUIP and the design elements of Applicant’s mark are sufficient to distinguish it from the cited mark.

Conclusion: The Board found the first DuPont factor to be dispositive, and so it reversed the Section 2(d) refusal.

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TTABlogger comment: I'll bet you got it right! BTW: the Board allowed applicant thirty days to submit the required disclaimer.

Text Copyright John L. Welch 2025.

TTAB Finds VORSPRUNG for Electric Vehicle Charging Stations Confusable with VORSPRUNG DURCH TEKNIK for Land Vehicles

The Board affirmed another Section 2(d) refusal, finding the mark VORSPRUNG for various electrical goods for vehicles, including charging stations, confusable with the registered mark VORSPRUNG DURCH TEKNIK (owned by Audi AG) for "Land vehicles and structural parts thereof." Applicant feebly argued that the word VORSPRUNG in its mark has a different meaning than the same word in the cited mark. The Board was unmoved. In re DropNet Ltd, Serial No. 97660649 (June 10, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Marks: Noting that consumers are more likely to recall the first part of multi-part marks and tend to shorten marks, the Board found the marks to be "highly similar" in appearance and sound.

As to meaning, both marks must be translated into English. Applicant translated “Vorsprung” to “Lead” in English. Registrant, during prosecution, translated its mark as "Progress by Technology." This was the basis for applicant's argument that the marks have different meanings. The Board didn't buy it.

Despite the different translations in the records, we find these words mean the same thing in German, as they are identical words used in similar contexts. The cited mark, therefore, could have been translated as “Lead by Technology,” and the applied-for mark could be translated as “Progress.” There is no difference in the words used, and we find, there is no difference in the translated meaning of the word “Vorsprung” for the purposes of this appeal.

The inclusion of the words "by technoloty" in the cited mark does not create a difference in meaning because "Applicant identifies technical goods for vehicles, and thus, also offers goods that include technology." The Board found the meanings of the two marks to be "effectively identical."

Finally, the Board found no difference in the commercial impressions of the marks. "Both marks suggest forward movement, possibly leadership of that movement, within a technical field (vehicles and their parts). To 'lead' or 'progress' within a technical field suggests these parties provide technically advanced goods of high quality."

In conclusion, the marks are similar in sight, sound, meaning and commercial impression. This fact increases the likelihood of confusion and this factor weighs heavily in our analysis. [Why increases? Why heavily? - ed.]

The Goods: Registrant's "land vehicles" include electric vehicles. Examining Attorney Christine Martin submitted evidence showing that vehicle makers [e.g., Tesla, Ford, GM, VW] often use their marks on both electric vehicles and the chargers and charging stations for electric vehicles. Consumers are "accustomed to seeing electric vehicles (a subset of the “land vehicles” identified in the cited registration), vehicle chargers and charging stations for electric vehicles under a single mark. Therefore, the involved goods are related and the second DuPont factor favors an affirmance of the refusal.

Consumer Care: Applicant insisted that the relevant consumers are "sophisticated" because land vehicles are expensive, but it did not submit any evidence on either point. There was a lack of evidence regaring the price range of land vehicles nor of the pricing of applicant's various electric goods. "Given the limited evidence in the record, we cannot determine the level of customer care for all the goods."

Lack of Confusion: Applicant pointed to the lack of evidence of actual confusion, but the Board pointed out that the application at issue was filed on an intent-to-use basis, and there was no evidence that applicant's mark had been put into use.

Finding the first and second DuPont factors dispositive, the Board affirmed the refusal to register.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2025.

TTAB Affirms Failure-to-Function Refusal of YOUR BEST CHOICE for Educational Services

The Board upheld another failure-to function refusal, this time of the proposed mark YOUR BEST CHOICE for, inter alia, computer education training services, on the ground that the phrase fails to function as a source indicator under Sections 1, 2, 3, and 45 of the Trademark Act. Applicant's submission of numerous registrations for marks containing the phrases “your best” and “best choice” failed to move the needle in its favor. In re The School Board of Palm Beach County, Florida, Serial No. 98321285 (June 9, 2025) [not precedential] (Opinion by Judge Mary Beth Myles).

Examining Attorney R. Austin Blakeslee submitted numerous examples of third-party use of the phrase YOUR BEST CHOICE in connection with schools and educational services, conveying an informational or laudatory message touting the educational services or schools as the consumers’ “best choice.”

The Examining Attorney also submitted numerous examples of YOUR BEST CHOICE in use across a variety of other industries, conveying the same informational or laudatory message.

Applicant argued that “in almost every case, the words YOUR BEST CHOICE is [sic] used in a full sentence…as part of promotional or descriptive language tailored to specific entities or offerings” and demonstrates that the phrase "is regular English with a regular English meaning." The Board agreed. In fact, that's the point!

Applicant's third-party registration evidence was, of course, irrelevant since each case has to be decided on its own record.

And so, the Board affirmed the refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2025.

TTABlog Test: Is PIZZACCIA Merely Descriptive of Pizza and Cheese?

The USPTO refused to register the mark shown below for various food products in classes 29 and 30, including cheese and pizzas, because Applicant Panificio Villa refused to disclaim the word PIZZACCIA under Section 6(a) of the Trademark Act. Examining Attorney Kristin Dahling maintained that the term is merely descriptive of applicant's goods. How do you think this appeal came out? In re Panificio Villa S.r.l., Serial No. 79351998 (June 5, 2025) [not precedential] (Opinion by Judge Robert Lavache).

The Examining Attorney submitted website excerpts from various third-parties referring to restaurants offering "pizzaccia" as a pizza-like food item, a hybrid of pizza and focaccia bread. Applicant argued that the evidence showed that “pizzaccia” could refer to "a type of pizza type meal thrown together [and] containing elements of a pizza and focaccia," and therefore the term is suggestive, not merely descriptive.

The Board agreed that PIZZACCIA refers to a type of pizza with a focaccia base or crust, and that relevant purchasers would perceive the term accordingly. It acknowledged that pizzaccia is described differently in the various website references, "[b]ut the common thread in these examples, and almost all of the other evidence of record, is that PIZZACCIA is being used to identify a food that contains elements of both pizza and focaccia (i.e., dough/bread topped with sauce, cheese, and other toppings)." Applicant's own advertising refers to "THE MOST FOCACCIA PIZZA THERE IS!"

Applicant argued that, because some of the evidence suggests that there may be other names for focaccia-based pizza, including “focizza,” “focaccia pizza,” and “Pizzaccia Romana,” the evidence did not establish descriptive use of PIZZACCIA. The Board was not impressed. "Simply put, the fact that other terms may also be used to refer to a focaccia-based pizza does not preclude a finding that PIZZACCIA is descriptive."

Having concluded that pizzaccia describes a type of focaccia-based pizza, the Board turned to the question of whether the term is merely descriptive of any of Applicant’s identified goods in each class. If so, then the Section 6(a) refusal may be affirmed as to the entire class. See In re UST Global (Sing.) Pte. Ltd., Serial No. 87657822, 2020 TTAB LEXIS 19, at *26 (TTAB 2020)

The Class 30 goods include “pizzas,” “dough,” “pizza dough,” and “bread.” Moreover, the terms “dough,” “pizza dough” and “bread” could include dough and bread for making focaccia-based pizzas and thus PIZZACCIA merely describes a purpose, characteristic, or use of those goods as well.

Likewise, International Class 29 includes, among various other food items, “cheese.” Because the term “cheese” encompasses cheeses intended for use in making focaccia-based pizzas, the term PIZZACCIA directly conveys information to relevant purchasers about the purpose or use of the cheese and thus is merely descriptive.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2025.

Precedential No. 5: TTAB Will Not Accept Incorporation-By-Reference of An Appellant's Prosecution Arguments

The Board wasted little time in affirming a Section 2(e)(2) refusal to register the mark PRINCETON EQUITY GROUP, agreeing with Examining Attorney Marc Leipzig that the mark is primarily geographically descriptive of Applicant's financial services. The Board was more concerned about applicant's arguments on appeal, or lack thereof, and particularly with applicant's attempt to incorporate its prosecution arguments by reference. In re Princeton Equity Group LLC, Serial No. 97397212 (June 6, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

In its brief, applicant's only remark specifically directed to the refusal was to state that it "repeats and reiterates the arguments and evidence set forth" during prosecution of the application. The Board was not happy: "this is an insufficient presentation of whatever arguments Applicant may have contemplated."

[T]he Court in SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006) approvingly quoted Tolbert v. Queens Coll., 242 F.3d 58, 75 (2d Cir. 2001), for the proposition that arguments “adverted to in a perfunctory manner, unaccompanied by some effort at developed argumentation, are deemed waived.” 439 F.3d at 1320. More recently, in In re Killian, 45 F.4th 1373 (Fed. Cir. 2022), the court said that “failing to present anything more than a conclusory, skeletal argument” on an issue of patentability will result in forfeiture. Id. at 1385-86.

Here, applicant failed to present even "a 'conclusory, skeletal' substantive argument, nor does it advert to any particular issue 'in a perfunctory manner,' let alone display 'some effort at developed argumentation.'" Its statement leaves it to the Board to ferret out what applicant's argument might be, and acceptance of such an incorporation-by-reference might encourage circumvention of the 25-page limit on appeal briefs.

The Board noted that it could rule that applicant had forfeited any objection to the refusal. But because the Board has not previously held, in a precedential decision, that incorporation-by-reference statements are inadequate to present an applicant's argument, the Board made an attempt to identify what argumens applicant had it mind. But the Board made it clear that, in futuro:

Parties whose briefs purport to incorporate by reference arguments made during prosecution will be held to have failed thereby to present whatever arguments the incorporation statement purports to cover to the Board and will be deemed to have forfeited them.

Reviewing the prosecution history of the subject application, the Board did not find anything that "even purports to challenge that the proposed mark is primarily geographically descriptive." Applicant did assert, as it did in its appeal brief, that it is "common" for the USPTO to allow businesses in the financial field "to use geographic terms" in their marks, citing three registrations form marks containing the word ASPEN. The Board observed once again that each case must be decided on its own record, and that "[p]ointing to a few other registrations does nothing to show that the Section 2(e)(2) refusal in this case was improper."

And so, the Board affirmed the refusal.

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TTABlogger comment: WYHA?

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 Content Partners LLC, Serial No. 98416280 (June 3, 2025) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal of the mark shown below left in view of the registered mark shown below right, both for investment services.]

In re Natrol LLC, Serial Nos. 98027771, 98027798, 98027815, 98029191, and 98029200 (June 3, 2025) (Opinion by Judge Jennifer L. Elgin) [Section 2(d) refusal to register the word-plus-design marks SLEEP +, SLEEP + RECOVERY, SLEEP + BEAUTY, SLEEP + CALM, and SLEEP + IMMUNE HEALTH for "Vitamins; Dietary and nutritional supplement" in view of the registered mark SLEEP PLUS for "fragrances; room fragrances; household fragrances; aromatics for fragrances, namely, pillow sprays, linen sprays and room sprays; bath oils; massage preparations, namely, massage oils, and lotions; essential oils; nonmedicated skin care preparations; skin lotions, skin creams, skin moisturisers."]

In re Bison Designs, LLC, Serial No. 97786484 (May 30, 2025) [not precedential] (Opinion by Judge Jessica B. Bradley). [Section 2(d) refusal of the mark LAST CHANCE "Belts for clothing" in view of the identical mark registered for "retail discount stores featuring footwear; apparel; apparel accessories."]

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

Text Copyright John L. Welch 2025.

TTAB Affirms Failure-to-Function Refusal of Certification Badges for Completion of Skills Evaluation Courses

The Board affirmed refusals to register four proposed marks shown below, for "Evaluation of specific fields of employment for others to identify specific skills and specific content and level of knowledge required for probable success in such specific fields of employment, vocational assessments services in the field of job placement and job-related skills, namely, testing, analysis, and evaluation of the knowledge, skills, and abilities of others for career placement purposes," on the ground that the symbols fail to function as source indicators. Examining Attorney Robert Struck maintained that these badges operate as a credential or certification that indicates completion of Applicant’s courses, not as service marks. The Board agreed. In re ACT Education Corp., Serial Nos. 98020747, 98020760, 98020772, and 98020795 (June 3, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). 

The marks consist of a circular badges of various colors, and include a ribbon across the middle, the word "CERTIFIED" above the ribbon, the words "WORKKEYS NCRC" on the ribbon, and the word ACT appearing below the ribbon.

The Board looked to applicant's specimens of use to determine consumer perception of the badges: applicant's promotional brochures, webpages and advertising material. Example:

Applicant argued that the presence of four of its registered marks - ACT, ACT WORKKEYS NCRC and design, NCRC, and WORKKEYS - within the badges provide source-indicating significance to the badges. The Board disagreed: "the question before us is not whether the individual previously registered marks incorporated into the designations function as service marks."

Applicant also contended that that the specimens show dual use - use in connection with the services and use as a credential – analogizing this case to Board cases in which a term is used as the name of a process and also functions as a service mark. The Board didn't buy it.

Even though the specimens reference Applicant’s skill assessment (and evaluation) services, the explanations that follow make clear that the applied-for marks are not in reference to the assessment services but rather are the credential that is earned and can be displayed or shown after taking the skill assessments. Therefore, the initial or substitute specimens do not show dual use of the designations as a reference to both Applicant’s evaluation and vocational assessments services as well as the credential or certification earned.

And so, the Board affirmed the refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2025.

Updated Roster of TTAB Administrative Trademark Judges

With the recent departures of Judges Michael B. Adlin, Robert H. Coggins, and Cynthia C. Lynch from the TTAB, the Board’s membership now stands at twenty-four (24) Administrative Trademark Judges. The current roster is set forth below, beginning with Acting Chief Judge Thomas V. Shaw and Acting Deputy Chief Judge Melanye K. Johnson, and then proceeding alphabetically.

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

Johnson, Melanye K. (Acting Deputy Chief Judge): Appointed to TTAB in 2020. Prior Professional Experience: Private Practice (Detroit, MI; Washington, DC); Corporate Counsel; Senior Counsel, Office of General Counsel at the U.S. Department of Health and Human Services (HHS); Education: B.A., University of Michigan; J.D., Ohio State University Moritz College of Law.

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

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

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

Casagrande, Thomas L.: Appointed to TTAB in 2023. Prior Professional Experience: Law Clerk to Hon. B. Avant Edenfield, Chief U.S. District Judge (S.D. Ga.); Private Practice (Houston, TX; New Haven, CT); Associate Solicitor USPTO; Education: B.A., University of Pennsylvania; J.D. with Honors, University of Connecticut School of Law.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Thurmon, Mark A.: Appointed to TTAB in 2019. Prior Professional Experience: Private Practice; Adjunct Professor of Law, University of Texas School of Law; Assistant Professor of Law, Levin College of Law, University of Florida; Professor of Law, Southern University Law Center, formed Deputy Chief Administrative Trademark Judge; Education: B.S, Louisiana State University; J.D. with High Honors, Duke University School of Law.

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

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

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Text Copyright John L. Welch 2025.

Providing Warranty Services With One's Own Goods is not a Recognizable Service Under the Trademark Act

The Board upheld Examining Attorney Barbara Kim's refusal to register the mark EVERYDAY PROMISE for “Providing extended warranty services by the manufacturer for the lifetime of kitchen and bath fixtures and accessories, namely, sinks, and faucets," on the ground that the recited services do not constitute services that fall within the Trademark Act. In re Thompson Traders, Inc., Serial No. 97852613 (May 30, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

In determining what constitutes a recognizable service under the Act, the following criteria apply: "(1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service." The third element was at issue here.

The Board found that applicant’s warranty "is standard with its goods. It is not a separate service." That, according to the Board "is the key to this inquiry."

The Board distinguished the current situation from that in Otis Engineering., where the applicant provided certification service to some of its elevator customers, but with a separate charge for those services.

In essence, the applicant in the Otis Engineering case was providing ongoing services separate and apart from selling elevators. Some customers obtained such services from the applicant, but others did not. These services were billed and paid entirely separately from the cost of the original elevator. *** The services, therefore, were separate from the goods.

Here, there was no separate cost or fee for the warranty services: they are available to every buyer. No third-party goods are covered by the services. The Board found "absolutely nothing about Applicant’s warranty that is separate from the goods themselves."

We find Applicant’s warranty services are part of what Applicant provides to customers of its goods. Whether the warranty provided is limited to what is required by law is not the key issue. The real question is whether the warranty services are sufficiently separate from the purchase of the goods to constitute a separate and distinct service. They are not. The refusal must be affirmed.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2025.