TTAB Denies Section 2(d) Cancellation Petition due to Unconvincing Testimony Regarding Priority

The Board rejected this Section 2(d) petition for cancellation of a registration for the mark OH. in the stylized form below, for various cosmetics and personal care products. Openly Human claimed likely confusion with its registered marks OH and OH OPENLY HUMAN for “body spray used as a personal deodorant and as a fragrance.” The petition failed because Openly Human failed to prove priority of use. Openly Human, LLC v. B. Cosmetics S.R.L., Cancellation No. 92078800 (March 11, 2025) [not precedential] (Opinion by Judge Robert H. Coggins).

Respondent conceded that a likelihood of confusion exists and acknowledged that "[t]his case hinges on priority – who used the OH logos ... first." Of course, in a 2(d) cancellation proceeding in which both parties own a registration, priority is at issue.

Respondent established a first use date of December 15, 2018. In its filings, Petitioner asserted multiple dates of first use in 2018: January 21, January 26, as of March, April 20. In his testimony, Petitioner's CEO referred to April 11, April 20, and April 22.

Sifting through the evidence of record, as we must when piecing together Petitioner’s priority puzzle, W. Fla. Seafood, 31 F.3d at 1125-26, we . . . find multiple unexplained inconsistencies and contradictions within Mr. Kent’s testimony and between his testimony and Petitioner’s public statements on social media posts of record.

Petitioner's social media posts were particularly troublesome. For example, on April 26, 2019, “Just a month or so from launch now! Woo hoo!” And on September 25, 2019, “[o]ur first production run is almost ready. It’s been nearly 2 years and so many iterations to create the best natural, vegan spray deodorant in the cosmos!”

Although Respondent raised in its brief the contradictions and inconsistencies in Petitioner’s testimony and between the testimony and the documentary evidence of record, Petitioner failed to address these issues in its rebuttal brief – and the silence is significant. Petitioner relies on a January 2018 sale for its priority, but never explains (or even expresses indirectly) how it seemingly developed one product – just one unit – to ship three months later, but did not have a single other unit to ship to consumers for another 14 or 18 months while the record shows its products were still being formulated.

Although the testimony of a single witness may suffice to prove priority, it "should not be characterized by contradictions, inconsistencies, and indefiniteness but should carry with it conviction of its accuracy and applicability." Here, the testimonial declarations were "quite short, imprecise, and internally inconsistent," and did not address the "glaring contradiction between the purported first sale of a single product (that appears to not have even been developed at that time) and Petitioner’s repeated social media statements that it had not yet launched its products, which were still in development." As a result, the testimony had little persuasive value.

The Board concluded that Petitioner failed to prove priority by a preponderance of the evidence, and so the petition for cancellation was denied.

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TTABlogger comment: OH well! Better to get your story straight in the first place. But then, petitioner didn't have much of a story.

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB's Dismissal of BULLSHINE FIREBULL Opposition Despite Commercial Strength of FIREBALL for Whisky

In a precedential opinion, the U.S. Court of Appeal for the Federal Ciruit affirmed the TTAB's decision (here) dismissing Sazerac Brand's opposition to registration of the mark BULLSHINE FIREBULL for "alcoholic beverages except beers." The Board found Sazerac's FIREBALL mark (for whiskey and liqueurs) to be commercially strong but conceptually weak, that the goods were purchased without great care, and that Bullshine Distillery did not act in bad faith in choosing its mark. But the Board concluded that confusion is unlikely because of the differences in the marks. The CAFC ruled that the Board did not err in its conclusion. Sazerac Brands, LLC v. Bullshine Distillery LLC, Appeals Nos. 2023-1682 and 2023-1900 (Fed. Cir. March 12, 2025) [precedential].

Genericness: The court first dealt with Bullshine's appeal from the Board's denial of its counterclaim seeking to invalidate Sazerac's pleaded registrations on the ground of genericness. Bullshine argued that the Board applied an incorrect legal standard, that "fireball" was a generic term prior to registration by Sazerac, and that the Board therefore erred in considering subsequent evidence of acquired distinctiveness.

The court noted that the appropriate time period for assessing whether a term is generic is a question of first impression. Bullshine argued that a term that is generic at any time prior to registration, regardless of how it is perceived at the time of registration, remains generic forever. Sazerac argued that the time of registration is the appropriate focus. The CAFC agreed with Sazerac.

The CAFC looked to the statute, which "prevents registration of a generic term because it would deceive customers as to the origin of the goods." [What? -ed.]. "This inquiry necessarily looks to what consumers would think at the time of registration." Moreover, Section 14 of the Act permits cancellation of a registration "at any time" if the mark becomes generic. Bullshine's position is thus inconsistent with the statute.

As to the Board's factual finding that FIREBALL was not generic, the court ruled that substantial evidence supported the Board's decision.

Likelihood of Confusion: Sazerac cross-appealed from the dismissal of its Section 2(d) likelihood of confusion claim. Sazerac contended that the Board had erred in its analysis of the fame of the FIREBALL mark, in finding the mark to be conceptually weak, and in not appropriately considering the lack of similar marks in use on similar goods under the sixth DuPont factor.

The court observed that most of Sazerac's fame evidence related to shots, which constitutes only a subset of the genus of goods. Moreover, the Board accorded the FIREBALL mark a broad scope of protection, and so any error regarding fame was harmless.

With respect to the finding of weakness, Sazerac mainly argued that the Board should not have considered dissimilar goods like popcorn and beef jerky, but Sazerac failed to explain why it was error to discuss use of the term "fireball" to denote the same flavor in dissimilar goods. In any event, other substantial evidence supported the Board's finding, including Sazerac's own admissions and prior statements.

Finally, as to the sixth DuPont factor, the Board found in favor of Sazerac. Nonetheless, the Board decided that FIREBALL is so conceptually weak that the marks are "too different in appearance and sound, and especially meaning and commercial impression, for confusion to occur."

Sazerac does not dispute that substantial evidence supports the Board’s findings with respect to the similarity of the marks, and we affirm the Board’s finding with respect to the mark’s conceptual weakness. On this record, we affirm the Board’s determination of no likelihood of confusion.

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TTABlogger comment: Not the most elegant or informative CAFC opinion I've ever read. Opposer Sazerac came on like a fireball but flamed out rather spectacularly. BTW: Section 14 says that a registration can be cancelled "[a]t any time if the registered mark becomes the generic name for the goods or services." What if the term does not "become" generic but was already generic when it was registered?

Text Copyright John L. Welch 2025.

CAFC Hears Oral Arguments in FUCK and RAPUNZEL Appeals

The CAFC recently heard oral argument in two appeals from the TTAB. In In re Brunetti, the Board refused registration of the mark FUCK for phone cases, jewelry, bags, and retail store services on the ground of failure-to-function, concluding that the word "fuck" is in such widespread use that it does not create the commercial impression of a source indicator, but rather expresses well-recognized, familiar sentiments. [TTABlogged here].

In re Brunetti oral argument

In Curtin v. United Trademark Holdings, Inc., the Board dismissed Professor Rebecca Curtin's opposition to registration of the mark RAPUNZEL for dolls and toy figures, finding that Curtin, as a mere consumer of fairytale-themed products, failed to prove her entitlement to a statutory cause of action. [TTABlogged here]

Curtin v. United Trademark Holdings, Inc. oral argument

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TTABlogger comment: My prediction, based on the oral arguments: Brunetti reversed; Curtin affirmed.

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 a bit lower, but the year is young. 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 Ayablu Inc., Serial No. 97904206 (March 6, 2025) [not precedential] (Opinion by Judge David K. Heasley). [Section 2(d) refusal of HONEYBEE REWARDS PROGRAM for "Administration of a customer loyalty program which provides discounts for the company’s goods and loyalty points to be used toward purchase of the company’s goods; Arranging and conducting incentive reward programs to promote the sale of infant and children’s apparel and related accessories" [REWARDS PROGRAM disclaimed] in view of the registered mark HONEY BEE for "Women’s clothing, namely, tops, pants, skirts, dresses, blouses, swimwear and cover ups."]

In re Namchak Foundation, Serial No. 97150350 (March 6, 2025) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of COMPASSION IN ACTION for "Religious and spiritual services, namely, providing gatherings and retreats to develop and enhance the spiritual lives of individuals interested in the teachings and practices of the Namchak Tibetan Buddhist Fellowship" in view of the identical mark registered for "religious and charitable services namely providing meals for indigent people, residential care for homeless men, gifts for elderly shut-ins, gifts for patients in hospitals, rest homes and infirmaries, gifts for imprisoned persons, and gift packages to members of the armed forces."]

In re Manic Panic N.Y.C., Inc., Serial No. 97928060 (March 7, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of SEA NYMPH for "wigs" in view of the registered mark NYMPH for, inter alia, false beards and false mustaches.]

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2025.

Finding Restaurant Services Related to Paper Food Containers, TTAB Sustains DON'T MESS WITH TEX-MEX Opposition

Less than one month after oral argument, the Board sustained this opposition to registration of DON'T MESS WITH TEX-MEX for restaurant service, finding confusion likely with the registered mark DON'T MESS WITH TEXAS for paper food containers, paper bags, and cups. However, opposer's dilution-by-blurring claim was dismissed due, in part, to failure to prove its mark famous for the stated goods. Texas Department of Transportation v. El T. Mexican Restaurants, Inc., Opposition No. 91264923 (March 7, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

"Keeping in mind the well-settled principle that not all of the so-called 'axes' of comparison ... have to align for confusion to be likely," the Board found that the involved marks, while not identical, are "highly similar overall."

Of the several registrations pleaded by Opposer, the Board chose to consider the registrations covering "paper food containers, paper bags," and "cups." "Those two registrations seems like good choices to compare to restaurant services. If we find a likelihood of confusion as to either or both of these registrations, that alone would require refusal of Applicant’s application."

The Board took judicial notice of the "generally known facts that restaurants frequently provide their patrons with paper food containers and paper bags for take-out orders and for dine-in customers to take home leftovers, as well as cups for beverages, and that these containers, bags, and cups commonly bear the restaurant’s mark and/or logo."

The Board concluded that the involved goods and services are related, the channels of trade and classes of consumers overlap, and purchasers would exercise no more than ordinary care in selecting restaurant services, "and may exercise less."

Opposer focused "most intently" on its assertion that the mark DON'T MESS WITH TEXAS is famous, but without success. As to conceptual strength, the Board found the mark to be arbitrary, but as to commercial strength, there was no evidence regarding the number of units sold, revenue generated, advertising or promotion, or third-party publicity for opposer's paper food containers, paper bags and cups.

Opposer offered the results of a survey on the fame issue, but the Board saw several flaws in the survey design that "sap the survey of the evidentiary impact Opposer urges." First, it is a "aided awareness survey." An “aided awareness” survey prompts respondents by mentioning the brand. Opposer's survey asked a "classic" aided-awareness question: "Have you ever seen, read, or heard of ‘Don’t Mess with Texas’?" The Board observed that "'In general, the Board has discouraged heavy reliance on aided awareness to prove fame.'" ProMark Brands Inc. v. GFA Brands, Inc., No. 91194974, 2015 WL 1646447, at *13 (TTAB 2015).

Second, the survey questions were not directed to the strength of Opposer’s mark as to the “paper food containers” and “paper bag” products. And so, opposer' failed to prove its mark famous.

[B]oth Opposer’s survey and several articles in the record support the assertion that many people view the phrase as a commonplace expression of Texas pride or bravado. In response to the survey question quoted above asking what message the phrase communicates, 67% of respondents indicated that the phrase was simply an expression of Texas pride and only 21% associated it with litter prevention. And Applicant is correct in noting that a number of articles discuss how Opposer’s anti-littering campaign slogan has caught on with the public beyond Opposer’s services and now is commonly used in an informational way wholly apart from Opposer or its goods or services.

In sum, [b]ecause of the mark’s conceptual strength by itself ... the fifth likelihood-of-confusion factor weighs somewhat in Opposer’s favor."

On the issue of likelihood of confusion, the survey results were given "no weight." First, respondents were presented with a picture of applicant's billboard (shown above), when the mark of the opposed application is in standard characters." And second, there was no question directed to possible confusion as to source.

"[A]ll of the factor[s] that tilt in any direction (i.e., are not neutral), all tilt in Opposer’s favor." And so, the Board sustained the Section 2(d) claim.

As to its dilution claim, opposer’s trial brief did not once mention the root term “dilut-,” mention the root term 'blur-,' mention the root term 'tarnish-,' or cite Section 43(c). Opposer impliedly waived (or forfeited) its dilution claim (or claims) by not addressing dilution in its trial brief."

But even if the Board considered the dilution claim, opposer's evidence fell well short of proving fame for dilution purposes. "Professor McCarthy posits that a threshold response in the range of 75% of the general consuming public is necessary to prove fame for purposes of dilution." Opposer's survey "showed that only 21% of respondents who recognized Opposer’s slogan (even after prompting) associated the slogan with litter prevention, while 67% recognized the slogan instead as an expression of Texas pride or bravado."

The Board concluded that "Opposer’s dilution claim is forfeited, but even if Opposer hadn’t failed to address it, Opposer failed to prove its mark is famous as required by Section 43(c)(1)."

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TTABlogger comment: In the real world, is confusion likely? Anyway, I always enjoy Judge Casagrande's down-to-earth opinion writing, which is why I liberally quote his words.

Text Copyright John L. Welch 2025.

TTABlog Test: Is ECOTWEED Deceptive for "Footwear made of a Tweed-like Material"?

The USPTO refused to register the proposed mark ECOTWEED for "Footwear made of a tweed-like material," finding the mark to be deceptive under Section 2(a) or deceptively misdescriptive under Section 2(e)(1). Applicant argued that “the word ‘tweed’ has no globally accepted precise definition” and that, instead, it “is an evolving and imprecise term," and further that ECOTWEED is a coined term and consumers would not be deceived because the prefix "eco" causes the mark to mean "something else other than just 'tweed.'" The Board rendered a split decision. How do you think it came out? In re Twisted X, Inc., Serial No. 90002268 (March 6, 2025) [not precedential] (Opinion by Judge Robert Lavache; dissenting opinion by Judge Mark A. Thurmon).

Section 2(a): A proposed mark must be refused as deceptive if: (1) it consists of or comprises a term that misdescribes the character, quality, function, composition, or use of the goods; (2) prospective purchasers are likely to believe that the misdescription actually describes the goods; and (3) the misdescription is likely to affect the purchasing decision of a significant or substantial portion of relevant consumers. In re Budge Mfg. Co., 857 F.2d 773, 775 (Fed. Cir. 1988).

Dictionary definitions and Internet excerpts use the term “woolen” or “wool” to describe the material composition of “tweed.” Other evidence showed that consumers have been exposed to the word “tweed” used to describe a significant aspect of footwear.

Applicant's own evidence generally indicated that it is incorrect to refer to fabric that does not contain wool as “tweed." Moreover, the evidence did not establish that the term “tweed” is ambiguous or imprecise, "but that a misconception about the nature of tweed exists among some parties in the relevant marketplace."

Applicant admitted that its products do not contain tweed but are made from recycled plastic bottles. There was no evidence to convince the Board that "most consumers, even those aware that products may be made from recycled materials, would conclude that ECOTWEED refers to a tweed-like material made from recycled plastics. In fact, some evidence of record indicates that the term may be perceived as referring to actual tweed made from wool." [Does this make sense? - ed.]

Thus, we find that ECOTWEED is misdescriptive because it includes a term that is merely descriptive of a significant aspect of Applicant’s footwear that the footwear could plausibly possess but, in fact, does not.

The same evidence supported a finding that prospective purchasers are likely to believe that misdescription.

Finally, the evidence established that tweed purportedly possesses the attributes of durability, warmth, and weather resistance. "Any of these could be desirable characteristics that would matter to someone in the market for footwear." The Board therefore found that "the misdescription here is likely to affect the purchasing decision of a significant or substantial portion of relevant consumers."

All three prongs of the Section 2(a) test having been met, the Board found that ECOTWEED is deceptive of applicant's goods and it therefore affirmed the Section 2(a) refusal.

Section 2(e)(1): The test for deceptive misdescriptiveness is identical to the first two prongs of the Section 2(a) deceptiveness test. Since both prongs were satisfied, the Board affirmed this refusal as well.

Judge Mark A. Thurmon, in dissent, contended that the identification of goods should be read in its entirety, and therefore the consumer would know that the footwear was not made from tweed, but from "tweed-like material."

Consumers who are familiar with Applicant’s actual goods, will understand ECOTWEED as a tweed like fabric made from recycled water bottles. Those who know only what the identification discloses may not know the fabric is made from recycled water bottles, but given the evidence of various “tweeds” on the market, including synthetic tweeds (there is evidence of synthetic tweed footwear and synthetic tweed fabric in the record), these consumers will understand that “tweed like” means not tweed, but like tweed, in some respect. There is nothing misdescriptive here, let alone deceptive.

The panel majority responded:

[W]e conclude that even the most rational consumers who encounter shoes made of fabric resembling or characteristic of tweed being offered under Applicant’s proposed ECOTWEED mark may be deceived. In short, to side with the Dissent we would need to find either that (1) consumers somehow know the goods are imitation tweed or (2) the mark itself makes that clear. But, based on this record, we cannot and do not, find that either is true.

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TTABlogger comment: What do you think? Deceptive or not? If the goods were just "footwear," would that change your opinion?

Text Copyright John L. Welch 2025.

BON VOYAGE Fails to Function as a Trademark for Travel Pillows, Sinking Cancellation Petitioner's 2(d) Claim

Kennedy International petitioned to cancel a registration for the mark BON VOYAGE for travel pillows, claiming likelihood of confusion with its identical common law mark for the same goods. Priority was the question. Bye-bye was the answer. Kennedy International, Inc. v. Sutton Home Fashions, Inc., Cancellation No. 92080461 (March 5, 2025) [not precedential] (Opinion by Judge Elizabeth K. Brock).

To establish priority, Petitioner Kennedy had to prove by a preponderance of the evidence that it owns proprietary rights in "a mark or trade name previously used in the United States . . . and not abandoned . . . ." Threshold.TV, Inc. v. Metronome Enters., Inc., Opp. No. 91152662, 2010 TTAB LEXIS 314, at *13-14 (TTAB 2010).

A cancellation petitioner seeking to cancel a registration under Section 2(d) must demonstrate "that it has prior use of a mark that is distinctive, inherently or otherwise, prior to the first use or constructive first use of the respondent’s mark." See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 1320 (CCPA 1981) (emphasis by the Board)."

“One way a proposed mark fails to function is if consumers will view it as a merely informational slogan or phrase instead of something that ‘point[s] out distinctively the origin of the goods to which it is attached.’” In re Brunetti, Ser. Nos. 88308426, 88308434, 88308451, and 88310900, 2022 TTAB LEXIS 297, at *16 (TTAB 2022) (quoting In re Bose Corp., 546 F.2d 893, 897 (CCPA 1976))."

“Consumers ordinarily take widely-used, commonplace messages at their ordinary meaning, and not as source indicators, absent evidence to the contrary.” Brunetti, at *18-19.

The Board observed that “Bon voyage” is a French expression “[u]sed to express farewell and good wishes to a departing traveler”; the words “bon voyage” translate directly to “good journey.”

Kennedy applied the phrase BON VOYAGE to its pillows in the same manner as it displayed other travel-related words and phrases: “Vacay Vibes”, “Do Not Disturb”, “Frequent Flyer”, “Vacay”, “Jet Set”, “First Class”, “Live Love Travel”, and “Explore”. Thus, Kennedy's own use use of BON VOYAGE "makes clear that the term is not a designation of source but a feature of the goods."

In selecting one of these travel pillows, customers may choose one reading “Bon Voyage” instead of “Vacay” based on personal preference of the message conveyed. Expressing enthusiasm for travel does not serve a source-indicating function. See D.C. One Wholesaler, Inc. v. Chien, 2016 TTAB LEXIS 536, at *20. We find that Petitioner’s use of “Bon Voyage” fails to function as a trademark and is just one of many stylistic options that Petitioner makes available on its travel pillows.

The Board concluded that Kennedy failed to demonstrate that it owns prior common law rights in the trademark BON VOYAGE for travel pillows, and so the Board denied the petition for cancellation for failure to prove priority.

Registrant's specimen of use

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TTABlogger comment: Note how registrant uses BON VOYAGE as a mark.

Text Copyright John L. Welch 2025.

Applicant Contractually Barred from Using Mark in 11 Metro Areas Still Entitled to Registration

In this opposition to registration of the mark shown below, for educational services in the field of cardiopulmonary resuscitation, Opposer claimed that the applicant "cannot claim use to support an unrestricted registration in view of the terms in the Dissolution Agreement between the parties." The Board disagreed. CPR Certification LLC v. CPR, LLC, Opposition No. 91276058 (February 26, 2025) [not precedential] (Opinion by Judge Karen S. Kuhlke).

Halabi and Joos formed Fit Industries, which performed services related to training and certification in CPR and First Aid. On February 8, 2021, Fit Industries was dissolved by a Dissolution Agreement. Applicant was then formed and is operated by Joos; Opposer is owned and operated by Halabi.

Under the terms of the Dissolution Agreement, applicant was barred from eleven metropolitan areas in the United States for one year, but free to use the mark otherwise throughout the United States. Opposer is barred from using the mark.

Opposer framed the issue thusly: "[w]hether Applicant’s Application for the applied-for mark claiming unrestricted, nationwide exclusive use, when applied for during a contractually agreed-to Restricted Period, is invalid due to Applicant’s attempt to obtain trademark rights it is not entitled to.”

The Board noted that on September 8, 2021, Applicant’s filing date, Applicant could use the mark in commerce in more than one State. "The restrictions that applied during that time [the one-year period? - ed.], did not restrict Applicant to only intrastate commerce, it [they? ed.] merely prohibited use in eleven counties in the United States. In view thereof, the application is in compliance with the Trademark Act as to the “restricted” services because they could still be performed by Applicant in more than one state."

The Board agreed with applicant that "[e]ven with the Restrictive Covenant, both Applicant and Opposer were nonetheless entitled to engage in other competitive activities, including using their respective marks in commerce, without restrictions in every single state in the United States"

And so, the Board dismissed the opposition.

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TTABlogger comment: In my opinion, this opinion is not a model of clarity.

Text Copyright John L. Welch 2025.

The Trademark Reporter's 2025 "Annual Review" of U.S. Trademark Cases

The Trademark Reporter has published its latest "Annual Review" of U.S. Trademark Cases: "The Seventy-Seventh Year of Administration of the Lanham Act of 1946," by Theodore H. Davis, Jr. and yours truly, John L. Welch. [download pdf here].

In his introduction, Ted Davis observes that the Supreme Court "delivered the final installments of two separate twenty-first century trilogies of opinions interpreting the Lanham Act." The very recent decision in Dewberry Group v. Dewberry Engineers Inc. completed a trifecta with Romag Fasteners, Inc. v. Fossil, Inc. and Abitron Austria GmbH v. Hetronic International, Inc., addressing the remedy of an accounting of a defendant’s profits under Section 35(a) of the Lanham Act. In the other trilogy, two decisions found unconstitutional certain provisions of Section 2(a) - Matal v. Tam [disparagement], and Iancu v. Brunetti [scandalousness] - while the third, Vidal v. Elster, rejected a bid that the "names clause" of Section 2(c) is unconstitutional. In this writer's opinion, this latter trio of decisions has generated a number of articles, webinars, and symposia wholly disproportionate to their importance to the daily practice of trademark law. In any case, kudos to Ted for pointing out the Court's "numerous cringeworthy uses of 'trademark' as a verb" in the Elster opinion. On the TTAB side of things, perhaps the most interesting case involved the CAFC's reversal of the Board's ruling in Chutter, Inc. v. Great Concepts, LLC that had found fraud based on a recklessly false Section 15 incontestability declaration. On remand, the miscreant escaped with a mere slap on the wrist, the only consequence for its bad behavior being an order that the Office withdraw its Notice of Acceptance of the declaration - apparently leaving the door open for the filing of a new Section 15 declaration once the dust has cleared.

TTABlogger comment: Once again I thank The Trademark Reporter for granting leave to provide a link to this issue, which is Copyright © 2025 the International Trademark Association and reprinted with the permission of The Trademark Reporter®, 115 TMR No. 1 (January-February 2025).

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Text Copyright John L. Welch 2025.

Precedential No. 3: Dismissal with Prejudice but Without Judgment Suffices for Claim Preclusion Defense

In this cancellation proceeding involving four registrations for the mark FARAM, in various forms, for furniture and parts therefor, petitioner claimed abandonment and nonuse, but respondent pointed to the dismissals of two prior proceedings as a basis for claim preclusion. In view of the parties' stipulation that the prior proceedings be dismissed "WITH PREJUDICE, with CONSENT of both parties, and without the entry of judgment against either party," the proceedings were accordingly dismissed with prejudice. The Board here ruled that these dismissals sufficed to support a claim preclusion defense, and so it partially granted respondent's motion for summary judgment. Faram Holding and Furniture, Inc. v. Faram 1957 S.p.A., Cancellation No. 92084197 (February 24, 2025) [precedential] (by the Board).

For claim preclusion to apply, the following requirements must be satisfied: (1) the parties (or their privies) must be identical; (2) there must be an earlier final judgment on the merits of a claim; and (3) the second claim must be based on the same set of transactional facts as the first.

There was no dispute as to the first element. As to the second, although the parties stipulated that the withdrawals should be "without entry of judgment," the fact that they were then dismissed "with prejudice" by Board order, "[a]s a matter of law, operates as a final judgment for purposed of claim preclusion." [see cited cases]. Thus, the second element was satisfied. 

As to the third element, things were complicated. One of the registrations had not issued at the time of termination of the prior opposition proceeding on June 21, 2019, and so an abandonment claim could not have been brought in that proceeding. Similarly, as to nonuse, since that application was filed under the Madrid Protocol, such a claim was available only after three years of registration. And so that claim was not precluded.

As for the other three registrations, with respect to abandonment, claim preclusion does not bar claims based on activities occurring after the termination of the prior cancellation proceedings on June 21, 2019. However, the current petition for cancellation did not include any allegations regarding respondent's alleged nonuse after 2019, and so these abandonment claims did not arise out of the same set of transactional facts as the pre-2019 claims and thus were not precluded.

As to the never-been-used claims against these three registrations, such a claim under Section 1046(6) was not available until December 18, 2021 - after termination of the prior cancellations - when the Trademark Modernization Act of 2020 took effect. However, in each of the prior proceedings, petitioner alleged that "Registrant has never used the Trademark in commerce." Thus, petitioner raised this never-been-used claim in the prior cancellations and it did not allege any new facts here. And so, these claims are based on the same transactional facts as the prior abandonment claims, and so the third element of claim preclusion was met.

In sum, claim preclusion barred the abandonment claims based on activities prior to June 21, 2019, and with respect to the "never used" claims against the latter three registrations. The Board entered summary judgment dismissing those claims. However, claim preclusion does not apply to the abandonment and Section 1064(6) claims against the first registrations, nor the abandonment claims based on events occurring after June 21, 2019 against the latter three registrations.

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TTABlogger comment: I'm puzzled as to why the "never used" claims were barred against the latter three registrations. Claiming "never used" as of 2019 is not the same a claiming "never used" after 2019.

Text Copyright John L. Welch 2025.

TTABlog Test: Is CLEANFACE Confusable with DR.BELMEUR CLEAN FACE for Beauty Products?

The USPTO refused to register the mark CLEANFACE for "Beauty serums," finding confusion likely with the registered mark DR.BELMEUR CLEAN FACE (with the first two words displayed above the second two) for, inter alia, beauty masks [CLEAN FACE disclaimed]. The Board found the goods to be related, but what about the marks? How do you think this came out? In re Sorrentino, Serial No. 97256728 (February 28, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board took judicial notice of the definition of "serum" as "a usually lightweight cosmetic preparation especially for use on the face specifically: a typically water-based, often concentrated preparation that lacks lubricating and thickening agents an antiaging facial serum." It also took judicial notice of "mask" as "a cosmetic preparation for the skin of the face that produces a tightening effect as it dries." Third-party website evidence showing both products offered by various entities convinced the Board that the goods are related. The same evidence indicated that the goods are offered through the same trade channels to the general public.

Third-party registration evidence, most with "face" and "clean" disclaimed, along with dictionary definitions of "clean" and "face" [judicial notice again], led the Board to find that CLEAN FACE is conceptually weak, and so "the strength of the cited mark is somewhat limited by the disclaimed terms CLEAN FACE." There was no third-party evidence that would bear on the commercial strength of the cited mark.

As to the marks, the Board noted their dissimilarities in terms of appearance, sound and meaning. The examining attorney contended that the addition of registrant’s house mark to the word CLEAN FACE does not avoid a likelihood of confusion. The Board, however, pointed out that:

where there are some recognizable differences in the asserted conflicting product marks or the product marks in question are highly suggestive or merely descriptive or play upon commonly used or registered terms, the addition of a house mark and/or other material to the assertedly conflicting product mark has been determined sufficient to render the marks as a whole sufficiently distinguishable.

The Board observed that the disclaimed term CLEAN FACE "contributes less to the mark’s commercial impression than does the house mark DR.BELMEUR due to the descriptiveness of CLEAN FACE."

We find that Registrant’s addition of its house mark DR.BELMEUR suffices to distinguish Applicant’s and Registrant’s marks when they are viewed in their entireties and that based on Registrant’s disclaimer of CLEAN FACE, the dictionary definitions, and third-party registration evidence, purchasers are able to distinguish between Applicant’s and Registrant’s marks.

The Board then found the first DuPont factor dispositive and it reversed the refusal.

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