TTABlog Test: Is DANKE Confusable with MERCI for Chocolates?

August Stork KG opposed an application to register the mark DANKE in the stylized form shown here, for "chocolate; chocolate bars," claiming likelihood of confusion with its registered mark MERCI for "chocolate and chocolates." Applying the doctrine of foreign equivalents, the Board found that both marks mean "thank you" in English. How do you think this opposition came out? August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, Opposition No. 91277224 (November 14, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen).

Applicant Florend (a Brazilian company) argued that the doctrine of foreign equivalents should not apply, but it failed to meet its burden to prove that it is unlikely that U.S. consumers will stop and translate the two terms. See Vetements, 137 F.4th at 1331. "Based on the evidence of record, an appreciable number of U.S. purchasers are capable of translating MERCI and DANKE, and in the context of the marks’ use with chocolate, a purchaser with ordinary sensibilities would translate the wording." But that was not the end of the story.

[Florend's mark] is pronounced DAHN-kuh' whereas MERCI is pronounced 'mehr-SEE'. The marks look and sound nothing alike. To state the obvious, [Florend's mark] and MERCI do not share any letter strings and although they are both two-syllable terms, overall they are quite dissimilar in appearance and sound.

The Board recognized that the marks have the identical meaning of "thank you" and share the connotation of gratitude. "But ... the message of 'thanks' is widely used in the industry and pervasively associated with chocolate. Further, when it comes to commercial impression, because the marks are derived from different foreign languages and have distinct appearances and pronunciations, we find the marks are somewhat dissimilar overall in commercial impression, despite sharing an identical meaning."

We are not convinced by Opposer’s argument that these differences are outweighed by the marks’ “exact same connotation and meaning,” particularly because the shared meaning is a common message related to chocolate. Rather, we find the differences in sound and appearance and the differences in commercial impression outweigh the marks’ identical meaning and weigh strongly against a finding of likelihood of confusion.

The Board next turned to the issue of the strength of Stork's mark. Stork proved use of its mark since 1965, sales in various national retail stores, and revenues of more than $100 million in the 2017-2022 time period. It advertised in a number of online magazines and on many television shows. However, its evidence of sales and marketing efforts were provided without context. The Board concluded that this evidence supported a finding that the mark has some commercial strength in the marketplace, but was not a famous mark for purposes of Section 2(d).

Florend offered only one third-party registration for a mark containing the word MERCI, but under the 13th DuPont factor the Board considered the results of a Google® images search intended to show that ‘Thank you’ is commonly associated with goods made of chocolate. The Board rejected Stork's claim that saying “thank you” with chocolate is a unique theme, instead finding that "thank you" is conceptually weak when used in relation to chocolate "because consumers are conditioned to seeing this phrase used as an expression of gratitude."

In sum, while MERCI is not conceptually weak under the sixth DuPont factor, the common use of “thank you” in connection with chocolate supports that the meaning of the mark MERCI is conceptually weak under the thirteenth DuPont factor.

Balancing the relevant DuPont factors, the Board concluded that "the substantial differences in sound, appearance and commercial impression of [Florend's mark] and MERCI under the first factor coupled with the conceptual weakness of “thank you” — the shared meaning of the terms and the only similarity between the marks — for chocolates under the thirteenth factor are dispositive and outweigh the other factors."

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TTABlogger comment: Do you think this opinion should have been deemed precedential?

Text Copyright John L. Welch 2025.

Anonymous Comment on Letters of Protest

Set out below is an anonymous comment on the ALTAMURA DISTILLERIES case, recently TTABlogged here.

The TTAB has published some statistics on the "approvals" of Letters of Protest. The number of LOP's increased after the TMA, but then the PTO started charging $50 and then raised it to $150.

In the past the USPTO rejected an extremely high percentage of LOP's because they "allegedly" contained irrelevant information or were filed improperly. They even had a class on it, although it was far from clear how to properly format the letter and what evidence to present. The class was TERRIBLE.

Interestingly, the number of rejections is substantially higher (about 30% v. 94%) for those filed post-publication - which makes no sense because that is when third parties often first become aware. Is that not the purpose of publication? But in typical PTO fashion they punish people for learning about it after publication. I guess because it messes up their "system."

Even though the rejections may have gotten better, this page makes it even more confusing.

The sad part is that a letter of protest had to be filed in this case in the first place.

This shows the inconsistency of the office in issuing refusals. Clearly, this was the exact same mark on related goods, so the examiner just completely blew it and failed to read his own search report which I checked and it clearly showed the issue. At least good for him that he noted his error and issued a refusal.

In almost identical situations, I have found that examiner's ignore the letter of protest and allow it to be published - maybe because they do not want to look like they blew it. This results in an expensive TTAB proceedings and in most cases having the application refused by TTAB.

Read comments and post your comment here.

Text Copyright John L. Welch 2025.

TTABlog Test: Is HOLY HABITS Merely Descriptive of Spiritual Growth Management Software?

The USPTO refused to register the mark HOLY HABITS for "Downloadable computer application software for mobile phones, namely, software for spiritual growth management, including tools for habit-building, personal reflection, daily scripture engagement, confession tracking, and personalized recommendations for holiness," deeming the mark merely descriptive of the goods. Applicant Acutis, appearing pro se, argued that a consumer seeing the mark would not know what the goods are, and furthermore that the mark is a double entendre and/or a unitary mark. How do you think this appeal came out? In re Acutis Technology Inc., Serial No. 98669016 (November 13, 2025) [not precedential] (Opinion by Judge Elizabeth K. Brock).

In support of the refusal, Examining Attorney Daniel Brody pointed to applicant's specimen of use, which states that applicant’s mobile application is used for “Catholic habit tracking,” to “track your daily spiritual habits."

As to Acutis's first argument, the Board observed once again that the mark at issue must be considered in the context of the goods, not in the abstract. “The question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” DuoProSS, 695 F.3d at 1254.

As to the double entendre argument, Acutis contended that the mark “may carry multiple connotations, including references to Catholic religious life (e.g., ‘habit’ as attire)” and “[t]his ambiguity and multiplicity of meaning reinforce the suggestiveness of the mark." The Board was not impressed. "The multiple meanings that make an expression a double entendre must be readily apparent from the mark itself in the context of the applied-for goods." Applicant did not provide any evidence that "potential purchasers confronted with Applicant’s goods would find ambiguity or multiplicity of meanings in Applicant’s mark."

As to the unitary mark argument, Acutis maintained that the mark "evokes a conceptual journey toward sanctity — a rich and layered meaning that is not directly descriptive of what the app does." However, the evidence showed that this meaning of "a conceptual journey toward sanctity" is "precisely how HOLY HABITS is used by third-parties:" to describe “practicing habits showing a devotion to a religion."

In conclusion, the Board found that purchasers of Acutis's goods would recognize HOLY HABITS "as immediately conveying knowledge of a quality of Applicant’s mobile application, as a tool 'for spiritual growth management,' as described in the identification of goods." And so, it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: I confess, at first glance I thought the mark had something to do with religious clothing. Also, I don't understand the Board's response to the unitary mark argument, nor why it would make any difference for the descriptiveness issue if it were a unitary mark. Anyway, is this a WYHA?

Text Copyright John L. Welch 2025.

Again Finding Wine Related to Whiskey, TTAB Upholds Refusal of ALTAMURA DISTILLERIES & Design Over ALTAMURA

A letter of protest derailed this application after approval for publication, the Office deeming the mark shown below, for "vodka, gin, whisky, blended whisky, malt whisky, wheat absinthe, all of the aforementioned distilled using wheat originating from Altamura, Italy," to be confusing similar to the registered mark ALTAMURA for wine. Unsurprisingly, the Board found the word ALTAMURA to be the dominant element in applicant's mark. Third-party use and registration evidence sugggested that the involved goods "are of a type that may emanate from the same source under the same mark." In re Altamura Distilleries SRL, Serial No. 97600477 (November 12, 2025) [not precedential] (Opinion by Judge Mark Lebow).

During prosecution, Examining Attorney Robert Cohen required the applicant to amend its identification of goods to indicate that its distilled alcoholic beverages are made using wheat from Altamura, Italy. "According to Applicant, this means that the combined term “has a clear, distinct and well-known meaning and provides a distinct commercial impression to consumers, that the product is distilled using wheat that originates in the unique Altamura area of Italy." The Board was unmoved: this "does not mean that consumers are aware of this. Consumers encountering the marks are unaware of the contents of trademark files at the USPTO, such as specific identifications or goods or services, or any required amendments thereto."

Similarly, “ALTAMURA” as a surname may not be known to many consumers, and even if recognized as such in Registrant’s mark, those same consumers might interpret Applicant’s mark as likewise incorporating a surname, given the shared identical term. Or, they might perceive Registrant’s ALTAMURA mark as an extension of Applicant’s offerings under a shortened version of Registrant’s mark.

Applicant argued that relatively few companies sell wine together with whiskey, gin and/or vodka, or if they do, they sell them under different marks. The Board, however, observed that "the third-party use evidence in this case shows a significant number of companies that do offer both types of goods." That evidence corroborated the third-party registration evidence showing that both wine and whiskey, gin and/or vodka often originate from a common source, which "bolsters our finding of relatedness."

Applicant then contended that wine is found in a different section of a retail store than spirits or liquor, under different signage, and that the same is true of most websites. The Board, however, pointed out that there was no evidence to support this argument, and in any case, "the issue before us is not whether consumers would confuse Applicant’s and Registrant’s goods, but rather whether there is a likelihood of confusion as to the source of these goods."

Applicant oddly maintained that consumers of wine and distilled spirits are "generally very well educated" "well read," or "consult with other consumers and experts of these products before purchasing." That said, “even careful or sophisticated purchasers are not immune from source confusion.” Again, there was no evidence to support this attorney argument, and in any case "even careful or sophisticated purchasers are not immune from source confusion."

Furthermore, there are no restriction in the subject application or as to price or quality, and so the goods are presumed to include wines and distilled spirits offered at both low and high prices.

Finding that the first, second, third and fourth DuPont factors weigh in favor of a finding of likelihood of confusion, and the other factors were not relevant or argued, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: The letter of protest is an inexpensive way to protect one's trademark. See Trademark Rule 2.149(d)(1), 37 C.F.R. § 2.149(d)(1) and TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1715.02. See September 1, 2023 Letter of Protest Memorandum. I wonder how many are filed in a given year and how many are accepted.

Text Copyright John L. Welch 2025.

Organization for Transformative Works Files Amicus Brief Supporting Grant of Certiorari in RAPUNZEL Standing Case

The Organization for Transformative Works (OTW), "a nonprofit organization founded by fans, whose mission is to serve the interests of fandom by both providing access to and preserving the history of noncommercial fanworks and fan culture in its myriad forms," has filed an amicus brief [pdf here] at the Supreme Court in support of Professor Revecca Curtin's petition for writ of certiorari in the RAPUNZEL case. In Curtin v. United Trademark Holdings, Inc., 2025 USPQ2d 784 (Fed. Cir. 2025), the CAFC ruled that Professor Curtin, as a mere consumer, lacked statutory standing to oppose registration of the mark RAPUNZEL for dolls and toy figures. Set out below are several excerpts from OTW's amicus brief.

This Court should grant certiorari to determine the minimal scope of the rights of the public to access and use those items in the public domain. The specific issue before the Court is whether the Trademark (Lanham) Act of 1946 allows the federal government and courts, without direct authority from Congress, to exclude the public from objecting to the registration of a trademark regarding “Rapunzel,” a character that is indisputably in the public domain.

Imagine a single company being able to monopolize the market for dolls or figurines identified as the “Virgin Mary” or “Santa Claus” or “Cinderella” or “Uncle Sam,” and the public being unable to object. That is what is at stake here.

However, this Court has never addressed whether the public has standing to oppose an application to register a public domain term as the trademark of an item embodying public domain material under the framework used below as outlined in Lexmark International Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014).

In accepting the lower court’s analysis, wide swaths of now common items could be privatized in pieces thereby threatening the right of the public to use and create embodiments of characters like the Virgin Mary, Santa Claus, Cinderella, Rapunzel, and others in the public domain.

REASONS FOR GRANTING THE PETITION

• I. This Court Should Clarify the Role of the Public in Trademark Registration
• A. This Court has not addressed the role of the public domain in trademark registration 
• B. The Federal Circuit’s interpretation of the zone of interests for registration is unduly constrained
• i. The Lanham Act does not specify the zone of interest for opposing registration 
• C. One of the Lanham Act’s purposes is to protect the public from deceptive practices 
• E. (sic) Economic limitations and trademark bullies will drive out small businesses that participate in commerce and cater to the public.

Read comments and post your comment here.

TTABlogger comment: The USPTO should have pulled back this application and re-examined it.

Text Copyright John L. Welch 2025.

TTABlog Test: Is TRIFOX for Bicycle Forks Confusable With FOX for Bicycle Shock Absorbers?

Fox Factory petitioned for cancellation of a registration for the mark TRIFOX for “bicycles; bicycle frames; bicycle handlebars; bicycle parts, namely, forks; bicycle parts, namely, handle bar stems; bicycle saddles; bicycle seat posts; bicycle water bottle cages; bicycle wheels,” claiming likely confusion with its registered mark FOX, in standard and logo form, for bicycle shock absorbers and other bicycle parts. How do you think this came out? Fox Factory, Inc. v. Dong Yongqiang, Cancellation No. 92081730 (November 6, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

In a cancellation proceeding where both parties own registrations, priority is in issue. Respondent Yongqiang did not introduce evidence of use of TRIFOX prior to Fox Factory's constructive first use dates (the filing dates of its underlying applications), and so Fox Factory had priority.

As to the goods, the Board agreed with Yongqiang that bicycle forks and shock absorbers are not legally identical, but "the evidence makes it abundantly clear that these two components are very closely related and share the same purpose, i.e., absorbing shocks from uneven terrain and assist control by keeping the bike’s wheels in contact a bike with the ground." Moreover, these items are "are offered to the same class of consumers, bike enthusiasts, and may be found in the same retail environments, namely, online and retail stores that sell bicycle parts."

The Board concluded that the second and third DuPont factors weigh "heavily" in favor of Fox Factory. [Why "heavily"? -ed.].

The Board found that the FOX marks to are inherently distinctive and also "enjoy significant marketplace presence with evidence showing considerable exposure amongst consumers of bicycle parts, particularly in the mountain bike marketplace." Yongqiang's evidence of third-party use and registration of FOX-containing marks, although not completely discounted, did "little to show any conceptual or marketplace weakness to Petitioner’s FOX marks."

The Board next found the involved marks to be "quite similar," "mainly due to the recognizable and arbitrary word FOX being the sole literal element in Petitioner’s marks and merely preceded by the prefix TRI- in Respondent’s mark."

Fox Factory admitted that it was unaware of any actual confusion, but it pointed to the results of a Squirt-style survey showing 50% confusion. The Board agreed with Yongqiang, however, that the survey "has very little probative value given the circumstances in this proceeding." 

That is, in view of Petitioner’s strong evidence showing significant commercial strength and consumer exposure to its FOX marks in connection with bicycle parts that include forks, the Squirt survey was ill-suited for purposes of showing the likelihood that consumers would be confused with respect to Petitioner’s FOX mark.

Yongqiang brought up the lack of evidence of actual confusion, but the Board observed that "there has not been a meaningful opportunity for actual confusion to have occurred." And so, the eighth DuPont factor was neutral

As to purchaser care, the Board noted that" the identifications of the parties’ goods in the registrations do not set a particular price point." It therefore presumed that the goods are offered to ordinary consumers at prices ranging from inexpensive to expensive, and it deemed the fourth DuPont factor to be neutral.

Balancing the relevant DuPont factors, the Board found confusion likely, and it granted the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: The Board rejected Yongqiang's argument that Fox Factory's choice of the Squirt survey format was evidence of the weakness of its marks.

Text Copyright John L. Welch 2025.

TTABlog Test: Is DUO for Personal Mobility Devices Confusable with DUOPOWER for Land Vehicles?

The USPTO refused to register the mark DUO for "motorized, electric-powered, self-propelled, self-balancing, wheeled personal mobility, transportation device," finding confusion likely with the registered mark DUOPOWER for "electric vehicles, namely, buses; buses and land vehicles; engines and motors for buses and land vehicles; drive trains for use in land vehicles and power trains for use in land vehicles; vehicle power train mechanism comprised of clutch, transmission, drive shaft, and differential." Applicant DEKA argued that the goods are "divergent" because its device is fully electric while the registrant's vehicles are gas/electric-powered, that DUO is a weak formative, that the marks are "significantly different," and that consumers will exercise care in their purchasing decisions. How do you think this appeal came out? In re DEKA Research & Development Corp., Serial No. 98740807 (November 7, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

Beginning with the goods, the Board found DEKA's "motorized, electric-powered, self-propelled, self-balancing, wheeled personal mobility, transportation device" to be fully encompassed within Registrant’s "land vehicles," and so it deemed the goods legally identical in part. The legally identical goods presumably travel in the same trade channels to the same classes of consumers. The Board concluded that "the second and third DuPont factors weigh heavily in favor of likelihood of confusion." [Why "heavily"? - ed.].

Regarding the strength or weakness of the cited mark, DEKA pointed to four existing registrations for DUO-formative marks - DUOLEVER for motorcycles and parts therefor; DUO-SKID for street sweeper vehicles; and DUO LIFT for agricultural implements; and REV FLEX DUO for ambulances - but only three were relevant, they were too few in number, and each included an additional element not present in either DEKA’s mark or the cited mark. The Board found the sixth DuPont factor to be neutral.

Turning to the marks, the Board observed that "the common element DUO is the leading term in each mark, rendering it dominant in position, and most likely to be noticed and remembered by consumers." The Board rejected DEKA's argument that the commercial impressions of the marks "diverge meaningfully" due to a purported association of DUOPOWER with hybrid vehicles. "There is no evidence that the addition of POWER changes the meaning of DUO in DUOPOWER."

The Board opined that the word POWER "has some descriptive or suggestive meaning when used with Registrant’s goods, including 'buses and land vehicles,' which must have a power source to operate. It is also descriptive to the extent it is laudatory in nature." "[T]o the extent it is descriptive or suggestive it is appropriately given less weight in the likelihood of confusion analysis than the more distinctive term DUO"

Moreover, according to the Board, "consumers may perceive DUO, the more source-identifying part of the mark, as a brand extension of the senior DUOPOWER mark." [Really? Are consumers that dumb? -ed.].

Considering the involved marks in their entireties, the Board deemed them "similar," and so, the first DuPont factor weighed in favor of likelihood of confusion.

The Board next found that the involved goods "are not the subject of routine purchases, such that consumers may exercise some care in purchasing, but we are mindful that even careful or sophisticated consumers are not immune from source confusion." It found that the fourth DuPont factor weighed slightly against a likelihood of confusion.

Balancing the pertinent DuPont factors, the Board concluded that confusion is likely and so it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Is this an example of the "stacked deck" against Section 2(d) appellants? Seems like the Board knew what conclusion it wanted to reach, and then mechanically applied various of its standard formulae to get there.

Text Copyright John L. Welch 2025.

TTAB Affirms Refusal of PARKAI Application for Failed Response to Rule 2.61(b) Request for Information

In this application to register the proposed mark PARKAI for parking meters, parking lot services, and monitoring of parking, the USPTO refused registration on the ground of mere descriptiveness and, as to some of the class 9 goods, indefiniteness of the identification. Examining Attorney Drew Ciurpita also requested information and documentation regarding the goods and services, under Rule 2.61(b). The Board affirmed the last refusal due to Applicant MPS's "failure to respond adequately" to that request. In re Municipal Parking Services, Inc., Serial No. 98187940 (November 5, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

Under Rule 2.61(b), "[t]he Office may require the applicant to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the application."

The Board found that the Examining Attorney's requests for information were reasonably necessary to the proper examination of the application because (1) the information is directly relevant to whether the wording [PARK] in the proposed mark . . . is merely descriptive of the goods and services identified in the application," and (2) because "the Examining Attorney’s questions regarding the possible use of artificial intelligence properly sought information that is directly relevant to whether the initialism AI in the proposed mark . . . is merely descriptive of the goods and services identified in the application."

The question, then, was whether Applicant MPS complied with the requests “fully and in good faith.” DTI P’Ship, 2003 WL 22169270, at *3 n.3.

MPS argued that it filed the application based on intent to use and therefore did not possess the requested information. The Board pointed out, however, that "[i]ntent-to-use applicants are not exempted from responding to information requests simply because use of the proposed mark has not yet commenced." SICPA Holding, 2021 WL 2374679, at *1 n.1. "To the contrary . . . information requests are especially useful where, as here, an 'application is based on intent-to-use' and the identifications of goods and services are 'technical in nature.' DTI P’Ship, 2003 WL 22169270, at *3 n.3."

The Board took judicial notice of MPS's ownership of a registration for mark SENTRY for the same goods and services as identified in classes 9 and 39 here, in which it claimed a first use date in 2014.

Applicant cannot possibly have no “[f]actual information about the [Class 9] goods [including] how they operate, salient features, and prospective customers and channels of trade,” no “factual information [including] what the [Class 39] services are and how they are rendered, salient features, and prospective customers and channels of trade,” and no documents reflecting those goods and services.

As to MPS's "highly technical" class 42 and 45 services, all of which are described as "using computers or sensors," MPS stressed its bona fide intent regarding those services  The Board found it "simply impossible to believe that Applicant has no 'factual information [including] what the . . . services are and how they are rendered, salient features, and prospective customers and channels of trade,' and no documents reflecting those services."

Applicant’s suggestion that it does not understand what is meant by the letters “AI” is disingenuous at best in view of the current ubiquitous use of “AI” in American English. *** At a minimum, it is self-evident that Applicant itself knows what it means by the letters “AI” in its mark, but it did not provide even that information to the Examining Attorney.

And so, finding that MPS "failed to respond fully and in good faith to the Examining Attorney’s information requests," the Board affirmed the refusal under Rule 2.61(b) and declined to reach the other two refusals.

Read comments and post your comment here.

TTABlogger comment: Was MPS's claim of lack of intelligence artificial?

Text Copyright John L. Welch 2025.

TTABlog Celebrates 21st Anniversary !

Well actually it's tomorrow, November 8th. The TTABlog debuted on November 8, 2004, with a post entitled "Leo Stoller Loses Again." (here). Here we are, more than 5,800 blog posts and 15,000 "tweets" later. Thank you all for reading!

Read comments and post your comment here.

Text Copyright John L. Welch 2025.

Precedential No. 10: TTAB Explains How to Submit Video Evidence, Reverses 2(d) Refusal of GASPER ROOFING Over JASPER CONTRACTORS

In a rather lackluster Section 2(d) ruling, the Board reversed a refusal to register the (standard character) mark GASPER ROOFING [ROOFING disclaimed], finding confusion unlikely with the registered mark JASPER CONTRACTORS [CONTRACTORS disclaimed] for "roofing services." The Board rejected the examining attorney's argument that GASPER and JASPER might be pronounced the same, and concluded that the differences in the marks and the "elevated level of purchaser care" outweighed the identity of the services and presumed channels of trade. Preliminarily, after rejecting Applicant Jimenez's attempt to submit YouTube videos, the Board explained how best to submit video evidence in connection with an ex parte appeal. In re Jason Jimenez, Serial No. 97551823 (November 5, 2025) [precedential] (Opinion by Judge Angela Lykos).

Video Evidence: An applicant may make video files of record during prosecution by submitting them in one of the formats designated as acceptable by the USPTO (see TMEP 904.03). However, once the TTAB has jurisdiction over an ex parte appeal and the time for filing a request for reconsideration has lapsed, "the only way to make a new video of record is to file with the Board a separately captioned written request for remand with a showing of good cause prior to the deadline for filing an applicant’s main appeal brief."

Practitioners should note that unlike during prosecution with TMEO (the Trademark Examining Operation electronic filing system), ESTTA, the Board’s filing system for uploading submissions via TTABVUE does not have the technical capacity to accept video files. Applicants should, if possible, file a transcript of the video content to support the request for remand with the Board, and indicate that if and when the remand request is granted and jurisdiction is restored to the examining attorney, the applicant will submit the video file through TMEO’s electronic filing system so that it can be uploaded to TSDR. This is another reason why applicants should not wait until after the filing of a notice of appeal to attempt to make video evidence of record.

Section 2(d): Relying on the line of case law holding that there is no correct pronunciation of a trademark, the examining attorney maintained that the surname GASPER and the term JASPER are phonetic equivalents because GASPER can be pronounced with a hard or soft letter “g” sound. The Board was unimpressed: "Because neither GASPER or JASPER is a coined term, case law . . . does not require us to find that these two terms may be pronounced in an identical manner."

The record in this case establishes that “Gasper” is a surname that begins with the letter strings “G-a-s” and “G-a-s-p,” each of which forms the words “gas” and “gasp” that are recognized in U.S. English, and pronounced with a hard letter “g” sound. * * * The dictionary entry for “jasper” further shows that it is pronounced as “ˈja-spər” with the soft letter “j” sound and not with the hard letter “g” sound. Therefore, contrary to the Examining Attorney’s argument, we find that “Gasper” would be pronounced with a hard letter “g” sound and that “Jasper” would be pronounced with a soft “j” sound, consistent with the rules of pronunciation for U.S. English. We find that “Gasper” and “Jasper” sound different when verbalized.

Further considering the differences in appearance and sound of the marks in their entireties, and the differences in connotation and overall commercial impression, the Board found that the first DuPont factor weighed against a finding of likelihood of confusion.

Moreover, the evidence supported a finding that "roofing service purchases may involve multiple steps and may be complex. As a result, even the least sophisticated consumer is likely to exercise an elevated level of care." The fourth DuPont factor therefore weighed against a likelihood of confusion.

Applicant Jiminez pointed to the lack of evidence of actual confusion, but the Board observed that "[t]he Examining Attorney is under no obligation to adduce such evidence in an ex parte appeal." In any event, “[t]he relevant test is likelihood of confusion, not actual confusion.”

Conclusion: The Board found that "the dissimilarity of the marks in sound, appearance, meaning and commercial impression is sufficiently great that, coupled with an elevated level of purchaser care, [it] outweighs the identical nature of the services, trade channels and classes of consumers." And so, the Board concluded that there is no likelihood of confusion, and it reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: What about filings in inter partes proceedings? Since the TTAB's ESTTA electronic filing system is unable to accept audio or video files, a party must record the materials on an appropriate medium, such as a CD-ROM or DVD, and physically file that medium with the Board. See TBMP 106.03; Hunter Industries, Inc. v. The Toro Company, 110 USPQ2d 1651 (TTAB 2014) pdf here.

Text Copyright John L. Welch 2025.

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.

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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.