CAFC Affirms TTAB: Dark Green Color is Generic for Chloroprene Medical Examination Gloves

The CAFC upheld the Board's decision [TTABlogged here] affirming a refusal to register a particular shade of green as a trademark for "chloroprene medical examination gloves" on the ground of genericness. The appellate court concluded that the Board applied the correct test for determining whether a color mark is generic, and that substantial evidence supported the Board's factual finding that Medisafe’s proposed mark is generic. In re PT Medisafe Technologies, Appeal No. 2023-1573 (Fed. Cir. April 29, 2025), cert. denied (November 24, 2025) [precedential].

The Genericness Test: The Board applied the two-part test it set out in Milwaukee Electric Tool, 2019 WL 6522400, at *9 [TTABlogged here], a modification of the Marvin Ginn test, which had not expressly considered color marks.

Whereas H. Marvin Ginn asks whether “the term sought to be registered or retained on the register [is] understood by the relevant public primarily to refer to [a] genus of goods or services,” 782 F.2d at 990 (emphasis added), Milwaukee asks “whether the color sought to be registered . . . is understood by the relevant public primarily as a category or type of trade dress for [a] genus of goods or services,” 2019 WL 6522400, at *9 (emphasis added).

The CAFC agreed that the Milwaukee test is appropriate for color marks and expressly adopted it.

Medisafe argued that the Milwaukee test improperly ignores language in the Lanham Act, which (Medisafe contended) allows for cancellation of a registration for genericness only when the mark is a "generic name." The court observed that it rejected "essentially this same contention" in Sunrise Jewelry Manufacturing Corp. v. Fred S.A., 175 F.3d 1322 (Fed. Cir. 1999), where the CAFC held that the statutory language "must be read expansively to encompass anything that has the potential but fails to serve as an indicator of source, such as . . . trade dress." Id. at 1325-26. The court here reiterated that "'trade dress,' including a color mark, 'that cannot serve as an indicator of source is generic and unprotectable.'"

The Genericness Finding: The Board properly deemed the genus at issue to be "chloroprene medical examination gloves." It did not err in rejecting the additional verbiage "sold only to authorized resellers." "The Board is not compelled to accept an applicant’s proposed definition of the applicable genus, and was right not to 'limit the universe of chloroprene medical examination gloves under evidentiary consideration to [Medisafe’s] own products.'"

The CAFC concluded that substantial record evidence - including screenshots of websites offering third-party chloroprene/neoprene medical examination gloves in the same or nearly the same dark green color - supported the Board's finding that the color of the proposed mark "'is so common in the chloroprene medical examination glove industry that it cannot identify a single source' and is, therefore, generic."

Read comments and post your comment here.

TTABlogger comment: Does a failure-to-function refusal fit better here? I think the Milwaukee test (2019) may have been created before the wave of failure-to-function cases arrived.

Text Copyright John L. Welch 2025.

TTAB Dismisses THOR Opposition, Finding Boats Unrelated to Recreational Vehicles: 34 Pairs of Third-Party Registrations Proved Decisive

In an exhaustive 69-page opinion, the Board dismissed this opposition to registration of the mark shown below, for "recreational watercraft, namely, boats," finding confusion unlikely with the registered mark THOR for "recreational vehicles, namely, travel trailers, motor homes, van campers and fifth-wheel trailers." Opposer's proof of relatedness fell short, particularly in light of Applicant's 34 pairs of registrations for boats and recreational vehicles, each for the same mark and owned by different owners.  This blog post will attempt to hit the high points. Thor Tech, Inc. v. Thor Boats, LLC, Opposition No. 91283957 (April 24, 2025) [not precedential] (Opinion by Judge Jessica B. Bradley).

The Board found opposer's THOR mark to be arbitrary and conceptually strong, but the mark enjoyed only "average" commercial strength despite opposer's claim of fame. The Board found the marks to be similar in appearance, sound, connotation and overall commercial impression.

Turning to the relatedness of the involved goods, opposer submitted two relevant registrations covering both boats and recreational vehicles, but the Board found that this meager showing "provides little insight into whether the involved goods are related." More significantly, applicant offered 34 pairs of registrations in each of which the same mark, or a substantially similar mark. was registered by one owner for boats and a different owner (many Thor itself) for recreational vehicles.

[I]n at least 32 of the 34 instances . . . Opposer or a related company owns a registration covering travel trailers, motor homes, van campers and/or fifth-wheel trailers and there is a co-existing registration for the same, or substantially similar trademark, for boats. Opposer has not argued, let alone submitted evidence to show that, it contests the others’ registrations.

Applicant also submitted 15 examples of the same or similar names for boats and for recreational vehicles used by two unrelated entities. "This evidence may be viewed as 'akin to the opinion manifested by knowledgeable businessmen' that confusion is unlikely from such concurrent use.'"

The Board noted that opposer had previously argued to the USPTO that boats and recreational vehicles are not related. "Although not conclusive, we find these statements are relevant evidence supporting that Opposer’s recreational vehicles are dissimilar from and not related to Applicant’s boats."

The Board concluded that the second DuPont factor favored the applicant.

With respect to channels of trade and classes of consumers, the Board found an overlap in customers, but "[n]early all of the evidence demonstrates that the dealers that sell travel trailers, motor homes, van campers and fifth-wheel trailers do not sell boats, and vice versa." In fact, at least 2,400 independent recreational vehicle dealers that distribute opposer’s goods (as well as those of other manufacturers), do not distribute boats.

The purchaser care factor favored the applicant because the involved goods are "relatively expensive" and "are certainly not commonplace everyday purchases."

The Board concluded that opposer had failed to prove that confusion is likely, and so the opposition was dismissed.

Read comments and post your comment here.

TTABlogger comment: Opposer Thor Tech itself used the "paired registration" argument to overcome a refusal to register its mark TERRAIN for towable trailers in view of the identical mark registered for trucks. TTABlogged here.

Text Copyright John L. Welch 2025.

TTABlog Test: Is HEELS Generic for Medicated Skin Care Cream?

The USPTO refused to register the proposed mark HEELS on the Supplemental Register, finding the term to be generic for "medicated skin care cream." Applicant Blaine Laboratories argued that the USPTO's examples of website usage "do not demonstrate genericness because they "use the term 'heel(s)' as an adjective to modify one or more nouns to describe the product." How do you think this appeal came out? In re Blaine Laboratories, Inc., Serial No. 98054433 (April 24, 2025) [not precedential] (Opinion by Judge Jessica B. Bradley).

The Board applied the two-step Marvin Ginn test in finding that, as usual, the genus is set forth by the identification of goods in the application: “medicated skin care cream." The relevant public is comprised of "ordinary consumers who purchase medicated skin care cream."

The question, then, was how the public perceives the term "heels." Examining Attorney William Verhosek submitted evidence from 30 third -party websites offering products that use the term “heel” or “heels” to refer to a category of skin care cream for heels (e.g., Almond Beauty Foot & Heels Cream” and “Cooper Pharma Cracked Heels Cream”),

The evidence shows that the relevant public uses or understands the term “heels” or “heel” to refer to a subcategory of medicated skin care cream focused on the heels of the feet, the key aspect of these goods. See In re Cordua Rests., Inc., 823 F.3d 594, 605 (Fed. Cir. 2016) (“a term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole”)

Blaine claimed that not all the third-party evidence concerned medicated skin care cream, but it failed to point out which ones were not. In any case, the Board saw no evidence of a distinction between medicated and non-medicated creams with respect to the meaning of "heels."

Blaine's attempted to distinguish between nouns and adjectives was meaningless. See In re Serial Podcast, LLC, Ser. No. 86454420, 2018 TTAB LEXIS 94, at *15 (TTAB 2018); see also, TMEP § 1209.01(c)(ii) (2024) and cases cited therein (“The expression ‘generic name for the goods or services’ is not limited to noun forms but also includes ‘generic adjectives,’ that is, adjectives that refer to a genus, species, category, or class of goods or services.”). The Board observed that the use of "heel" to modify "cream" supported a finding of genericness "because while cream may name the broad category, heel cream or heels cream names the subcategory of cream used specifically on heels."

The Board noted that Blaine's specimen of use (shown above) states that HEELS is a “foot cream” “for dry cracked heels" and Blaine's website "confirms that 'heels' are the focus for its medicated skin care cream stating that its medicated skin care cream '[e]liminates: dry hardened heels' and depicting heels with the instructions for use of its product." (see picture below).

The Board concluded that "ordinary consumers who purchase medicated skin care cream understand the term 'heels' to refer to a subcategory of medicated skin care cream directed to the heels of feet." And so, it affirmed the refusal to register on the ground that the term HEELS "is a generic designation of the identified goods."

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2025.

TTABlog Test: Do You Recognize Trademark Mutilation When You See It?

It's been a while since we've looked at a trademark mutilation case. Let's roll up our sleeves and see what we've got here. The Board refused to register the mark shown on the right, for "Pharmaceutical products and preparations for the treatment of dermatological diseases" and for "Retail services through direct solicitation by distributors directed to end users featuring pharmaceuticals," on the ground that the drawing of the mark was not a "substantially exact representation of the mark as used on the specimens [as shown immediately below]." What do you think? Mutilation vel non? In re Verrica Pharmaceuticals Inc., Serial No. 90755123 (April 23, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

The “drawing depicts the mark sought to be registered.” Trademark Rule 2.52, 37 C.F.R. § 2.52. "The drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services." Trademark Rule 2.51(b), 37 C.F.R. § 2.51(b). 

[W]hen a proposed mark, as represented in the drawing, does not constitute the complete mark, it is sometimes referred to as a “mutilation” of the mark. This term indicates that essential and integral subject matter is missing from the drawing. See TMEP § 807.12(d).

An applicant may apply to register any element of a composite mark that creates a separate and distinct commercial impression - i.e., the element performs a trademark function in and of itself. See, e.g., In re Univ. of Miami, Ser. No. 86616382, 2017 TTAB LEXIS 171, at *10-11 (TTAB 2017)

Applicant maintained that "[t]he stylized V clearly stands out from the remainder of the ‘VERRICA’ name based on at least the different fonts, the different colors, the different shading in the V and the three circles having the same different color shading." Examining Attorney Ronald L. Fairbanks maintained that "the drawing shows only a nonseparable part of the mark appearing on the specimen" and "the stylized letter V is not separable from the remainder of the singular term VERRICA." 

The Board agreed with the examining attorney: "[T]he proposed mark is depicted in the specimens as part of a unitary word and cannot be regarded as a separable element creating a separate and distinct commercial impression."

While we acknowledge that the V appears in a slightly larger font and is highly stylized as compared to the remaining letters “ERRICA” in the word “VERRICA,” there is not sufficient space between the letter “V” and the remaining lettering such that consumers would perceive the V and Design as a separate and distinct mark. Rather, consumers will immediately understand the word to be “VERRICA” with a stylized V as the first letter. Only looking at the element in the word VERRICA would require that we cast a blind eye on the remainder of the word. The letters “ERRICA” are there and we cannot pretend that they are not.

Applicant’s use of a purple and blue color scheme for the V and Design element on its specimens of use was irrelevant, since color was not claimed as part of Applicant’s mark - which therefore could be displayed in any color or combination of colors.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I dissent.

Text Copyright John L. Welch 2025.

TTABlog Test: Is BLADE Merely Descriptive of Hammers for Hammer Mill Machines?

The USPTO refused to register the proposed mark BLADE for a "hammer sold as an integral component of hammer mill machines" on the ground of mere descriptiveness under Section 2(e)(1). Applicant Jacobs Corporation argued that that its hammers are employed in hammer mills "to crush and pulverize; they do not slice or cut as blades do." How do you think this came out? In re Jacobs Corporation, Serial No. 97513349 (April 22, 2025) [not precedential] Opinion by Judge George C. Pologeorgis).

In its brief, as an alternative to affirming the refusal, Jacobs requested "an indication from the Examining Attorney that the applied-for-mark can be registered on the Supplemental Register." Fuhgeddaboudit, said the Board. Construing this request as a proposed amendment to the Supplemental Register, the Board pointed out that Jacobs should have asked for suspension of the appeal and a remand to the USPTO for further examination pursuant to Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d).

Examining Attorney Jeri Fickes relied on two third-party utility patents - one for a "blade system for hammer mills" and the other for "hammer mill blade which will cut or pulverize a large quantity of material per hour with a minimum power expenditure" - on advertisements from online retailers for "hammer blades" used as a part for hammer mill machines, on third-party articles about hammer milling, and on Jacobs's own specimen of use (shown above).

In addition to its argument that its hammers do not slice or cut, applicant pointed to the language in the final office action stating that BLADE is "potentially" merely descriptive of a feature of Jacobs’s goods. "Applicant argues that the Examining Attorney has failed to meet her burden of establishing that the applied-for mark 'is' merely descriptive, rather than 'potentially' descriptive of the identified goods."

The Board rejected the "slice or cut" argument: "Such an interpretation . . . ignores the other meaning of 'blade' as used in the context of Applicant’s goods and as demonstrated by the evidence of record. The record reveals that it is not uncommon within the industry of hammer milling machinery for parts of the machinery to be referred to as a 'blade' or a 'hammer blade.'"

As to the "potentially descriptive" argument, the Board noted that Jacobs did not satisfactorily comply with the Examining Attorney’s request for information under Trademark Rule 2.61(b) until it filed its request for reconsideration.

It is not uncommon to indicate that a mark is potentially descriptive [or] misdescriptive [or]deceptive until such time that an applicant complies with an information request under Trademark Rule 2.61(b). Here, Applicant only responded satisfactorily to the information request in its request for reconsideration. In any event, not only does the evidence of the record clearly establish that Applicant’s BLADE mark is merely descriptive of the identified goods, but Applicant had adequate notice at all times as to the nature of the refusal.

The Board deemed the evidence "more than sufficient" to show that the term BLADE, when used in connection with Jacobs's goods, "would immediately convey to relevant consumers important information regarding the form or feature Applicant’s goods and is therefore merely descriptive of those goods."

And so, it affirmed the refusal to register.

Read comments and post your comment here.

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 Hawaiian Electric Industries, Inc., Serial No. 97629984 (April 14, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor). [Section 2(d) refusal of the mark shown below, for "providing banking information; providing investors with financial information," in view of the registered mark HEI HOTELS & RESORTS for services including "real estate investment trust services; investment management in the field of hotel and resort properties" [HOTELS & RESORTS disclaimed].

In re Dicorte Industries, Inc., Serial No. 98292162 (April 15, 2025) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of the mark GIULIA & Design for "Alcoholic beverages, namely, distilled blue agave liquor," in view of the registered mark GIULIA E FRANCESCO for "Alcoholic beverages, except beer; preparations for making alcoholic beverages in the nature of flavored liquors and essences; wine; sparkling wines; liqueurs."]

In re APEXO Inc., Serial No. 79321232 (April 17, 2025) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) refusal of the mark AFS & Design for "Pre-installed integrated recorded computer and mobile phone software for precision ballistics and firearm targeting; portable electronics apparatus composed of a mobile computer, digital weather station instruments, a telemeter and a global positioning system (GPS) used for precision ballistics and firearm targeting; all of the foregoing for military or law enforcement purposes." in view of the registered mark AFS for "Gun cases, gun and rifle cases and ammunition cans; gun cleaning kits comprised of gun-cleaning brushes; range cord, namely barrel bore-cleaning rope for rifles, handguns, shotguns and muzzleloaders; shooting equipment, namely, mounts for attaching gun sights to a firearms [sic]; shooting accessories, namely, gun rests."]

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB: CHICKEN SCRATCH for Beer is Confusable with CHICKEN SCRATCH for Restaurant Services

In an opinion of a mere nine pages, the CAFC upheld the Board's decision [TTABlogged here] affirming a Section 2(d) refusal of the mark CHICKEN SCRATCH for "beer" in view of the identical mark registered for "restaurant services." The Board found that the cited mark is not weak and that the examining attorney's evidence established the relatedness of beer and restaurant services. The CAFC ruled that the Board's factual findings were supported by substantial evidence, and its conclusion that confusion is likely was not erroneous. In re R.S. Lipman Brewing Company, LLC, 2025 USPQ2d 614 (Fed. Cir. 2025) [not precedential].

Appellant Lipman argued that the cited mark is weak because it describes registrant's services, which provide "chicken dishes made from scratch." The Board, however, cited dictionary definitions of "chicken scratch" as meaning "bad handwriting." Those definitions constituted "substantial evidence in support of the Board’s finding that the cited mark is not conceptually weak."

Lipman next argued that substantial evidence did not support the Board’s finding that the proposed mark and the cited mark impart similar commercial impressions. Lipman contended that since registrant’s restaurant menu "overwhelmingly features” chicken dishes, the mark CHICKEN SCRATCH suggests chicken dishes made from scratch. In contrast, Lipman's specimens of use show "chicken pecking at the ground," thereby "purposefully play[ing] on the ingredients used to brew Lipman’s pilsner beer—corn, barley, and grains—all commonly consumed by chickens . . . ." The CAFC was not impressed, again ruling that substantial evidence supported that Board's finding.

First and foremost, Lipman does not cite on appeal, nor did it provide to the Board, any evidence showing that the mark CHICKEN SCRATCH for beer brings chicken feed ingredients to the minds of consumers. *** Instead, Lipman provides only attorney argument and a photograph of the ’633 application’s specimen, which includes a chicken graphic not included in the proposed mark. *** Second, Lipman’s evidence that the cited mark’s registrant’s restaurant menu “overwhelmingly features” chicken dishes does not establish that CHICKEN SCRATCH in this context brings chicken dishes made from scratch to the mind of a consumer

In any event, both marks "convey some relation to 'chicken,' and thus have similar, or at least related, commercial impressions." The court concluded that substantial evidence underpinned the Board’s finding that the first DuPont factor "weighs strongly" in favor of a likelihood of confusion.

Turning to the involved goods and services, the CAFC rejected Lipman's argument that the Board failed to properly apply the 'something more' standard "because it affirmed the rejection of the proposed mark based on the same evidence that [the CAFC] found did not satisfy the 'something more' standard in Coors, a case that also involved beer and restaurants."

In Coors, the applicant had introduced evidence illustrating that only 1,450 out of 815,000 total restaurants in the United States were brewpubs or microbreweries (less than 0.18%). The examining attorney submitted a "very small number" of registrations identifying both beer and restaurant services. The CAFC there concluded that the evidence before the Board indicated that "the degree of overlap between the sources of restaurant services and the sources of beer [wa]s de minimus." [sic! The court actually said de minimis.]

Lipman neglects that the record in the ’633 application, unlike the record in Coors, does not include any evidence comparing the number of breweries providing restaurant services to the total number of United States restaurants. *** Here, the Board had before it 21 active registrations identifying both beer and restaurant services, 18 websites of third party restaurants that serve their own beer under the same mark as their restaurant, and nine articles and a book discussing “brewpubs” as a subclass of breweries that both sell their own beer and render restaurant services.

The CAFC concluded that substantial evidence supported the Board’s finding of "something more" than the fact that identical marks are used for beer and restaurant services, and it saw no legal error in the Board's application of that requirement.

Read comments and post your comment here.

TTABlogger comment: Perhaps Lipman should have sought review by way of civil action, wherein it could add evidence to the record (i.e., comparative evidence like that in Coors.)

Text Copyright John L. Welch 2025.

TTABlog Test: Is MONSTER STRAW for Drinking Straws Confusable with MONSTER for Energy Drinks?

Frequent TTAB litigant Monster Energy opposed an application to register the mark MONSTER STRAW (in standard character form) for "drinking straws" [STRAW disclaimed], alleging likelihood of confusion with its registered mark MONSTER for "energy drinks; fruit drinks; soft drinks; sports drinks." The dispute boiled down to a question of the relatedness of the goods. How do you think this came out? Monster Energy Company v. Monster Straw Company, LLC, Opposition No. 91250784 (April 14, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Monster Energy relied on seventeen registrations for MONSTER, MONSTER ENERGY, MONSTER-formative marks, and MONSTER ENERGY-formative marks in connection with various goods and services, including beverages, beverageware, nutritional supplements in liquid form, and restaurant and bar services. It claimed to own a family of MONSTER marks but the Board was unimpressed, finding opposer's testimony to be vague, ambiguous, and conclusory, and insufficient to demonstrate such use and promotion of the "MONSTER family feature" that would show that the public "recognizes a MONSTER family of marks."

The Board focused on opposer's registration for the mark MONSTER for "energy drinks; fruit drinks; soft drinks; sports drinks," because that registration had the "most points in common with Applicant's mark." The Board found applicant's mark to be "highly similar in sound, appearance, connotation and commercial impression." The first DuPont factor therefore weighed "heavily" in opposer's favor.

The Board then deemed the mark MONSTER to be arbitrary and conceptually strong, but opposer's evidence fell short of showing that MONSTER by itself is commercially strong. Because opposer uses its marks on a variety of goods, the Board found that the ninth DuPont factor favored opposer. [What about the mark MONSTER by itself? was it used on a variety of goods? - ed.].

The channels of trade for drinking straws and energy drinks overlap, as do the classes of consumers (the general public). These low-priced items are purchased with no more than ordinary care.

Turning to the second DuPont factor, the relatedness of the goods, opposer submitted photographs of “how Monster’s beverages are served and consumed, including through straws.” One photo showed a licensed "“flavored ice” MONSTER ('Slurpee') product sold by 7-Eleven in 2008 and 2009 that was offered with straws." [Isn't that item of evidence a bit stale (assuming a Slurpee could go stale)? - ed.]

The Board concluded that "Opposer’s beverages and Applicant’s straws are often used together when consuming beverages, are complementary goods, and thus related." [How about sugar and coffee? Bread and butter? Shouldn't the question be whether the goods are sold under the same mark by third parties? - ed.]

Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks.

The Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: The applicant appeared pro se, submitted no testimony or evidence, and did not file a brief. That worked well! In the real world, would someone who bought a 7-11 MONSTER Slurpy with a straw in it think that Monster Energy was the source of the straw. Or that packs of straws sold in the same store were offered or licensed by Monster Energy? 

Text Copyright John L. Welch 2025.

Return of MEET THE BLOGGERS: Monday, May 19th, 8-10 PM

Recognized by many (?) as the best non-INTA event at the INTA annual meeting, MEET THE BLOGGERS returns for its 18th edition on Monday night, May 19th, from 8-10 PM at Coin-Op Game Room (Gaslamp), 789 Sixth Ave, San Diego, CA 92101.

All thanks to our sponsor, Wolf, Greenfield & Sacks, P.C. Stop by and meet some of the world's best trademark attorneys, and also say hello to Marty Schwimmer and me. [Register here]

BTW: The first MTB was an intimate gathering in 2005, held in San Diego at Henry’s Pub. We returned to Henry's in 2015, with an overflow crowd in attendance.

MEET THE BLOGGERS - San Diego 2005(Click on photo for larger picture)

Read comments and post your comment here.

Text Copyright John L. Welch 2025.

Professor J. Thomas McCarthy: "What is the 'Zone of Natural Expansion' Doctrine?"

Professor McCarty, renowned author of McCarthy on Trademarks and Unfair Competition, cast a critical eye on two recent decisions (one from the CAFC, one from the TTAB) discussing the zone-of-natural-expansion "doctrine." He asks, "what is it?" "How does it fit with the familiar 'related goods and services' rule and the test of likelihood of confusion?" The professor concludes that it is not a "doctrine" at all. "Neither the Federal Circuit nor the T.T.A.B. has the authority to replace the statutory likelihood of confusion test with a 'doctrine' of 'zone of natural expansion' to decide issues of priority and entitlement to registration."

What is It? The "zone of natural expansion" argument has sometimes been discussed in both court litigation and U.S.P.T.O. inter partes cases. But unlike infringement litigation in court, the issue in T.T.A.B. cases is not enjoining an intervening user. The issues are priority, ownership and registration rights. Recently both the Federal Circuit and the Trademark Trial and Appeal Board applied and discussed at length the “zone of natural expansion." But what is it? How does it fit with the familiar “related goods and services” rule and the test of likelihood of confusion?

The basic theory seems to be that use of a mark on goods or services in the A market (for a hypothetical, assume it’s ALPHA auto tires) has an exclusive “zone of natural expansion” that extends to goods and services in the B market (for example, bicycle tires) that are encompassed within a zone that buyers would usually expect a mark in the A market to expand into. It is usually used in a situation where a junior intervening user starts use of a similar mark in the B market (hypothetically, assume it’s ALFAH bicycle tires). Then the senior user later expands into that market (ALPHA bicycle tires). In this hypothetical example, the senior user of ALPHA argues that there is a conflict because buyers would think that bicycle tires are in a "natural expansion zone" for ALPHA auto tires.

But if we change the facts of the hypothetical and have the intervening use be ALFAH for use on vehicle collision avoidance software, it is likely a judge would find that ALPHA’s later expansion from auto tires to use on vehicle collision avoidance software is not a “natural expansion.” If the decision rests solely on using the “zone of natural expansion,” then the senior user’s later expansion to ALPHA vehicle collision avoidance software is likely an infringement of the intervening use by ALFAH on the same kind of software. In the U.S.P.T.O. ALFAH would be deemed “senior user” and entitled to a registration for vehicle collision avoidance software.

Federal Circuit and Trademark Board Use of “Zone of Natural Expansion.” In March 2025 the Federal Circuit in the Dollar Financial case [TTABlogged here] held that: “We decline to expand the scope of the zone of natural expansion doctrine and affirm that the doctrine may only be used defensively to prevent junior users from registering similar marks on goods in a senior user’s zone of natural expansion.” But the meaning of the court’s “defensive” versus “offensive” distinction is both unclear and unhelpful. It needs explanation. On April 11, 2025 the T.T.A.B. in Streeter v. GuideOn Education [TTABlogged here] applied the Dollar Financial approach, referring to the petitioner’s “fallback position” of natural expansion. In both cases, the judges held that the senior user had not proven that it was entitled to prevail.

It is not clear what the court meant by a forbidden “offensive” use of the natural expansion concept. Apparently it means that once it has been proven that the intervening use is on unrelated goods or services, then the senior user cannot use the natural expansion argument to change that situation. Although the court did not say so, this necessarily implies that the intervening use on unrelated goods or services was not likely to cause customer confusion with the senior user.

“Zone of Natural Expansion” is Not a “Doctrine.” Both the Trademark Board and the Federal Circuit have continually referred to the concept of zone of natural expansion as a “doctrine.” This creates the incorrect impression that it is a freestanding rule to determine if there is a trademark conflict and priority independent of the statutory test of likelihood of confusion of sponsorship, affiliation or connection. But "zone of natural expansion" is not a “doctrine.” It is an argument that the goods or services are related and confusion is likely. The “doctrine” is the statutory test of likelihood of confusion.

As discussed in my treatise at §24:20, the “natural expansion” argument is just a way to argue that there is a likelihood of confusion of source or sponsorship in a particular factual situation. If the “intervening” junior use was likely to cause confusion when commenced, it was an infringement. In that case, the senior user has the right to enjoin such use, whether the senior user had in fact already expanded itself or not. Conversely, if the “intervening” use was not likely to cause confusion when it began, then the intervening user is not an infringer. If the senior user later expands to that unrelated line, then it is an infringer in that line of goods or services.

Conclusion. The “zone of natural expansion” is not an independent rule to resolve a conflict between trademark uses. The “doctrine” that is required to decide these cases of an intervening use is the §2(d) statutory test of likelihood of confusion. The focus should be on consumer perception, not on a judge’s decision as to whether an expansion is “natural” or not. Neither the Federal Circuit nor the T.T.A.B. has the authority to replace the statutory likelihood of confusion test with a “doctrine” of “zone of natural expansion” to decide issues of priority and entitlement to registration.

Read comments and post your comment here.

TTABlogger comment: What he said!

Introductory Text Copyright John L. Welch 2025.

CAFC Upholds TTAB Dismissal of "fleur-de-lis" Cancellation Petition Due to Lack of Standing

Michel J. Messier of Rutland, Vermont, petitioned to cancel a registration for the mark shown below, owned by the New Orleans Saints football team, for "entertainment services in the form of professional football games and exhibitions." Mr. Messier alleged that he is a "direct descendant of the Kings of France (Scotland, Aragon, and Castille)” and that he and his family own “intellectual property rights to the Fleur de Lys, Orleans and Saints marks." Not good enough, said the CAFC. Michel J. Messier v. New Orleans Louisiana Saints, LLC, Appeal No. 2024-2271 (April 14, 2025) [not precedential].

Petitioner Messier made no claim that he or his family currently use any fleur-de-lis marks in commerce or receive any revenues (e.g., from licensing) in connection with any mark. The Board concluded that the petition for cancellation (as amended) failed to "allege any commercial interests in the mark, or that [Mr. Messier] owns or conducts any business under the mark."

[A]lthough Article III standing is not necessarily a requirement to appear before an administrative agency, once a party seeks review in a federal court, the constitutional requirement that it have standing kicks in.” * * * Mr. Messier, as the party seeking appellate review, has the burden to show he has Article III standing. *** In particular, Mr. Messier must demonstrate "(1) an actual or imminent injury-in-fact that is concrete and particularized; (2) a causal connection between the injury and the conduct complained of; and (3) likely redressability by a favorable decision." (citations omitted).

Petitioner Messier did not allege that he or his family make, offer for sale, or sell any products or services using a fleur-de-lis design, nor that he is involved in "football entertainment services." Thus he failed to "identify any alleged injury aside from the Board denying . . . the particular outcome . . . desired,” the cancellation of the Saints Mark, which “is insufficient to confer standing."

His references to the Saints Mark being confusingly similar to his family’s private use of fleur-de-lis designs, now and for several centuries, or the "SAINT Louis Cathedral’s home [in] New Orleans, Louisiana” and its gift shop that “sells fleur de Lis adorned goods to preserve the Cathedral,” and his speculation that in the future he may license fleur-de-lis marks, are, at best, allegations of “hypothetical” or “future possible injury,” which are insufficient to confer Article III standing.

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TTABlogger comment: If a party is appealing from a TTAB decision holding that the party lacks "entitlement to a statutory cause of action," why does the CAFC apply the Article III test for standing? Why does the party have to prove some commercial damage? BTW: what does this decision portend for the RAPUNZEL appeal currently awaiting the CAFC's decision on standing?

Text Copyright John L. Welch 2025.

TTAB Partially Grants GUIDEON Cancellation Petition but Rejects Zone-of-Natural-Expansion Claim

The Board granted in part this petition for cancellation of a registration for the mark GUIDEON for, inter alia, providing online employment information (class 35) and educational services (class 41) to veterans and military families, finding confusion likely as to the class 35 services with the identical mark registered for "Computer application software for smartphone operating systems, namely, software for a directory of listings with corresponding location primarily on military installations." Registrant's class 41 services, however, were deemed not related to Petitioner Streeter's services, nor did the zone-of-natural-expansion apply. Katharine Lee Streeter v. GuideOn Education Consulting LLC, Cancellation No. 92077751 (April 11, 2025) [not precedential] (Opinion by Judge David K. Heasley).

Class 35 services: The Board found that the Streeter registration's broad language, "a directory of listings with corresponding location primarily on military installations,” encompassed Registrant's provision of online employment information. The Board agreed with Streeter that her software is more than a "map app," because it provides not only location information but also links "to online/website locations," including links to employment-related information and websites.

Class 41 services: Because Streeter does not offer the services that may be found at the links provided, nor control the nature of quality of those services, Streeter's identification of goods does not "encompass" Registrant's educational services. Her evidence of relatedness consisted of three third-party registrations - "too few in number to carry much probative value" and covering unrelated services - and a few websites that were relevant to Registrant's class 35 services, but not to educational services.

As a "fallback" position, Streeter contended that Respondent’s services are within the natural zone of expansion of her software. No way, said the Board.

Under the doctrine of natural expansion, "the first user of a mark in connection with particular goods or services possesses superior rights in the mark as against subsequent users of the same or similar mark for any goods or services which purchasers might reasonably expect to emanate from it in the normal expansion of its business under the mark." Dollar Fin. Grp., Inc. v. Brittex Fin., Inc., __ F.4th __, 2025 WL 850653, at *3.

Defensive use of the doctrine "allow[s] the senior user to prevent the junior user's registration of a similar mark on logically related goods." Here, Streeter attempted to use the doctrine offensively to defeat Respondent's intervening rights. That is not allowed.

To determine whether the doctrine is applicable in a particular case, the Board considers a number of nonexclusive factors:

1. Whether the second area of business (that is, the subsequent user’s area of business into which the first user has or potentially may expand) is a distinct departure from the first area of business (of the prior user), thereby requiring a new technology or know-how, or whether it is merely an extension of the technology involved in the first area of business; 
2. The nature and purpose of the goods or services in each area;
3. Whether the channels of trade and classes of customers for the two areas of business are the same, so that the goodwill established by the prior user in its first area of business would carry over into the second area; and 
4. Whether other companies have expanded from one area to the other.

Under the first factor, the Board found that Respondent’s educational services "are not merely an extension of the technology involved in Petitioner’s registered, identified goods," but are "a distinct departure from simply providing an app that leads users to various service providers." Under the second factor, "[t]he nature and purpose of the goods or services in each area are quite distinct."

Under the third factor, there is some "broad overlap" in trade channels and classes of consumers. Under the fourth factor, there was a dearth of evidence showing that other companies have expanded from one area to the other.

Overall, Petitioner cannot rely on the doctrine to expand into Respondent’s Class 41 services. To expand Petitioner’s rights beyond those specified in her identification of goods would, in effect, accord her trademark rights in gross, covering all of the same or similarly named websites, businesses and service providers to which her app may lead her customers.

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TTABlogger comment: The distinction between "offensive" and "defensive" use of the zone-of-natural-expansion doctrine doctrine seems rather murky to me. Would it be better to just drop those two terms? If this was a prohibited "offensive" use of the zone doctrine, why go through the four factors? Moreover, if the DuPont factors say the services are not related, as here, shouldn't that be the end of the story? Why do we even need this doctrine?

Text Copyright John L. Welch 2025.

TTAB Dismisses LIVE RESIN Oppositions Under Rule 2.132(a) for Failure to Prosecute

The Board tossed out two oppositions to registration of the mark RAW GARDEN REFINED LIVE RESIN for CBD-containing herbs for smoking, for failure to prosecute. Opposer Adapted Energy claimed likely confusion with its registered mark LIVE RESIN for supplements. However, it introduced no evidence or testimony during its assigned testimony periods, nor did it timely submit a copy of its registration, and Applicant Central Coast made no admissions in its Answer. The Board granted Central Coast's motion to dismiss under Rule 2.132(a). Adaptive Energy LLC v. Central Coast Agriculture, Inc., Oppositions Nos. 91275644 and 91280840 (April 11, 2025) [not precedential].

Trademark Rule 2.132(a), provides, in relevant part, as follows: If the time for taking testimony by any party in the position of plaintiff has expired and it is clear to the Board from the proceeding record that such party has not taken testimony or offered any other evidence, the Board may grant judgment for the defendant.  * * * The party in the position of plaintiff shall have twenty days from the date of service of the motion to show cause why judgment should not be rendered dismissing the case. In the absence of a showing of excusable neglect, judgment may be rendered against the party in the position of plaintiff.

In response to the motion to dismiss, Adaptive Energy asserted that it "has been very clear from the inception of this Proceeding on the evidence and testimony that it is going to rely on" [sic]; that "[w]ith its Opening Brief Opposer will submit its Argument with Affidavits and evidence it is relying on in this case."

Of course, submitting evidence and testimony along with a party's opening brief is too late. "The Board will not consider evidence … attached to the briefs unless . . . properly made of record during the time assigned for taking testimony."

Adaptive Energy made no showing of excusable neglect, and so the Board deemed dismissal with prejudice to be appropriate.

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TTABlogger comment: TTABlog tip: Read the rules. 

Text Copyright John L. Welch 2025.

TTABlog Test: Which of These Three Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals Was/Were Reversed?

Last year the Board affirmed about 88% of the mere descriptiveness/disclaimer refusals reviewed on appeal. So far this year, the rate is about 95% - but it's early. Here are three recent appeals. At least one resulted in a reversal. How do you think they came out? You might respond by asking, what was the evidence? Well, give it a try anyway. [Answer in first comment].

In re Saint George Atelier LLC, Serial Nos. 98160447 and 98160447 (April 9, 2025) [not precedential] (Opinion by Judge Angela Lykos). [Section 6(a) disclaimer requirement of the word ATELIER in the mark SAINT GEORGE ATELIER for backpacks, clothing, and retail clothing store services. The Merriam-Webster definition of "atelier" is “an artist’s or designer’s studio or workroom” or “workshop." Applicant submitted 10 third-party registrations for marks containing the word ATELIER, all without disclaimers, for goods such as citrus squeezers, carpets, salad dressings, kitchen towels and disinfecting wipes.]

In re Rashbi LLC, Serial No. 97767502 (April 9, 2025) [not precedential] (Opinion by Judge Mark Lebow). [Mere descriptiveness refusal of RAIZ DE TEJOCOTE for “Dietary supplements; Nutritional supplements; Vitamin supplements." The Board found that the mark to be accurately translated as "root of tejocote." Applicant did not deny that its goods contain “root of tejocote” (or “tejocote root”), but only that they “do not primarily contain tejocote root.”]

In re ThreatLocker, Inc., Serial Nos. 97156251 and 97214203(April 7, 2025) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Mere descriptiveness refusal of RINGFENCING for, inter alia, downloadable anti-piracy software, software for controlling application access to data, and computer hardware, namely, firewalls. Applicant argued that the mark "has one universally accepted definition" in the finance context – to put aside and protect a particular sum of money for a specific purpose." According to Applicant, in the cybersecurity setting, the term is suggestive, requiring consumers “to engage in a multi-step attenuated analysis to deduce the potential nature of the software and its purposes."]

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

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB Dismissal of IVOTERS Opposition Due to Failure to Prove Acquired Distinctiveness (Priority) of Pleaded Marks

The CAFC affirmed the TTAB's dismissal of an opposition to registration of the marks IVOTERS and IVOTERS.COM for a website providing information on political issues, on the ground that Opposer Heritage failed to prove acquired distinctiveness of its pleaded marks IVOTERGUIDE and IVOTERGUIDE.COM for voters guides prior to Applicant APR’s constructive use date, and thus failed to prove priority. Heritage Alliance and AFA Action, Inc. v. The American Policy Roundtable, 2025 USPQ2d 613 (TTAB 2025) [precedential].

Heritage began using its marks well before APR's constructive first use date, i.e., its filing date of January 22, 2019. The Board, however, ruled that Heritage’s marks "could not support its challenge because the marks were not themselves protectable as trademarks (before APR’s first use date), so they lacked cognizable priority." Opposition No. 91249712, 2023 WL 6442587, at *13 (Sept. 29, 2023).

In assessing the distinctiveness of Heritage's marks, the Board proceeded in two steps: first it found that the marks were not just descriptive but "highly descriptive" because the marks "clearly described the entire service offered: providing a voter guide on the Internet." See id. at *7–9. Second, it found that Heritage's evidence failed to establish acquired distinctiveness. See id. at *10–12.

Heritage argued that the Board  relied on insufficient evidence in the analysis of the prefix “i,” and erred infocusing on the individual components of the asserted marks instead of the marks as a whole. The CAFC disagreed.

The CAFC concluded that substantial evidence supported the Board’s finding that Heritage's marks are not just descriptive but highly descriptive. As to the components of the marks, the Board cited substantial evidentiary to support its conclusion that the prefix “i” generally refers to something Internet-based. Heritage did not challenge the "facially reasonable findings" that “VoterGuide” and “.com” were not distinctive. Moreover, the Board did consider the marks as a whole in its descriptiveness analysis.

It determined that the proposed marks “on their face refer to online voter guides” and no evidence demonstrated that the combination of the individual components of the asserted marks conveyed “any distinctive source identifying impression contrary to the descriptiveness of the individual parts.” (quoting In re Fat Boy Water Sports LLC, 2016 WL 3915986, at *6 (T.T.A.B. 2016) (quoting Oppedahl & Larson, 373 F.3d at 1175)).

The appellate court saw "no reason to disturb the Board’s finding that the iVoterGuide marks are highly descriptive."

Beyond conveying a characteristic of the product or service, the “iVoterGuide” marks are such that the whole of the marks directly and immediately conveys the whole of the product—provision of a voter guide on the Internet. That property suffices for the marks to be highly descriptive.

With respect to its claim of acquired distinctiveness, Heritage pointed to two aspects of the record: (a) the undisputed evidence that it continuously used the iVoterGuide marks for more than five years before APR’s first use date, and (b) declarations from three of Heritage’s panelists (i.e., volunteers who helped make Heritage’s voter guides) from 2008 that they associated the marks with Heritage. The CAFC was unmoved.

Heritage argued that the Board should have accepted its five-plus years of prior continuous use as “prima facie evidence” that the marks had acquired distinctiveness” under 15 U.S.C. § 1052(f). The court pointed out that Section 1052(f) says that the USPTO “may accept” such proof “as prima facie evidence that the mark has become distinctive."

That language indicates that the Board has discretion not to accept such evidence as prima facie evidence, much less as ultimately persuasive evidence, on a case-by case basis. Our case law similarly recognizes the Board’s discretion to weigh the evidence, especially for a highly descriptive mark. In the circumstances of this case, we see no unreasonableness in the Board’s declining to rely on Heritage’s five-year-prior-use evidence given the highly descriptive nature of Heritage’s marks and the limited additional evidence of acquired distinctiveness.

As to the three panelist declarations, the court saw "no error in the Board’s giving little weight to that evidence." The declarations were identical in form and came from individuals who were not random customers, but were "volunteers used by [Heritage] to 'help evaluate candidates so they could be graded regarding their positions on the issues.'" And the declarations did not explain the basis for their asserted belief that the marks were distinctive. Finally, there was no evidence regarding "the size and nature of the customer base that would allow an inference that the declarations that would allow an inference that the declarations meaningfully reflect consumer perception of [Heritage’s] purported marks in the marketplace."

In sum, the Board's rejection of Heritage's Section 2(f) claim was supported by substantial evidence.

The CAFC noted that the Board's decision and the court's affirmance "raise an obvious issue:" Do those rulings provide a reason for the PTO now to reconsider whether it should refuse registration to APR’s iVoters marks—as to which the Board found APR “effectively concede[d] likelihood of confusion” with Heritage’s marks?"

The opposition provision of the Lanham Act says that registration generally follows when an opposition, if any, fails, but the stated precondition is that the mark at issue be a “mark entitled to registration,” 15 U.S.C. § 1063(b), which might allow the PTO, after an opposition fails, to reconsider the examiner’s pre-opposition allowance. Also, if a person believes it “will be damaged . . . by the registration of a mark,” it may seek cancellation of the registration. 15 U.S.C. § 1064. Neither a PTO reconsideration nor a cancellation is before us, so we do not decide any issues concerning such processes.

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TTABlogger comment: Heritage would presumably be barred by claim preclusion from seeking to cancel APR's registration once it issues. Mere descriptiveness is an issue that Heritage could have raised (in the alternative) in the opposition, and so it can't be raised in a new proceeding. Could the USPTO cancel the registration and return it to the examining attorney for re-examination? The Board's NURSECON decision suggests that the answer is yes: "[T]he USPTO possesses inherent authority to correct its errors." [TTABlogged here].

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 PixelGood, Serial No. 98163828 (March 31, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.). [Section 2(d) refusal of the mark DESIGN IS IN THE DETAILS. for "visual design services in the nature of designing visual elements for on-line, broadcast, print, outdoor and other communication media," in view of the registered mark DESIGN IS IN THE DETAILS [no period at the end] for wall plaques, bowls, vases, and works of art in various media.]

In re BeBella Inc., Serial No. 97887864 (March 31, 2025) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 2(d) refusal of the mark GLITTERALLY PERFECT for "Eye-shadow; Eye liner," in view of the registered mark GLITTERALLY OBSESSED for "Glitter for cosmetic purposes; Body glitter; Body glitters; Face glitter; Face and body glitter; Hair glitter; Nail glitter; Nail grooming products, namely, tips, glue, lacquer and glitter."]

In re Cantina Imperfecto, LLC, Serial No. 97625773 (March 28, 2025) [not precedential] (Opinion by Judge Cynthia C. Lynch). [Section 2(d) refusal of the mark CANTINA IMPERFECTO for restaurant, bar, and catering services [CANTINA disclaimed], in view of the registered mark IMPERFECT in standard character and design form, for "food and drink catering; bar services; restaurant services."]

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2025.

TTABlog Test: Is UNITED STATES COAST GUARD Merely Descriptive of Employment Counseling and Recruiting Services?

The USPTO refused to register the word-and-design mark shown below, for "Employment counseling and recruiting; providing career information," absent a disclaimer of the words UNITED STATES COAST GUARD under Section 6(a) of the Trademark Act. Applicant DHS argued that the phrase UNITED STATES COAST GUARD should be considered in the abstract, outside of the context of Applicant's employment and recruiting services, because consumers would "immediately think of the Coast Guard’s well-known law enforcement services." How do you think this appeal came out? In re United States Department of Homeland Security AKA DHS, Serial No. 97824026 (March 31, 2025) [not precedential] (Opinion by Judge Elizabeth K. Brock).

DHS acknowledged that the phrase UNITED STATES COAST GUARD is understood by the public to refer to the military organization of that name, one of the country’s armed forces operating under the Department of Homeland Security. DHS also acknowledged that the USCG "offers employment counseling and recruiting and provides career information as a public service."

Examining Attorney Andrea Saunders maintained that UNITED STATES COAST GUARD is descriptive of the recited services in three ways: (1) it describes the provider of the services; (2) it describes at least some of the intended users of the services, e.g., members of USCG; and (3) consumers who know the employment and recruiting services offered under the mark will immediately understand that those services pertain to the UNITED STATES COAST GUARD, i.e., that the employment and recruitment services are, in part, for USCG or its USCG members.

Applicant agreed that the mark must be considered in the context of the services, not in the abstract. The Board found that "the average purchaser of Applicant’s services, which includes members of the general public as well as the USGC, would understand the wording UNITED STATES COAST GUARD to refer to the USCG as part of the United States’ armed forces, as well as UNITED STATES COAST GUARD members."

Because recruiting activity is "an important function to USCG, and the average purchaser who may be a member of the general public or USCG is likely aware of this recruiting activity," the Board found for DHS’s “recruiting” services," the average purchaser encountering the wording UNITED STATES COAST GUARD in the mark would understand it to refer to USCG’s, or UNITED STATES COAST GUARD’s, recruiting services."

The Board also found that prospective and current members of USCG are some of the intended users of the recited services, and so the wording UNITED STATES COAST GUARD is descriptive of a significant population of the users.

And finally, the phrase UNITED STATES COAST GUARD describes DHS as the provider of the services. The Board noted that "there is no per se rule of law that wording descriptive of the provider or source of services is also necessarily descriptive of those services." Distinguishing the ORLANDO MIRACLE case (involving publications under the inherently distinctive name of the now defunct WNBA team):

In contrast with WNBA, the Examining Attorney’s evidence showed and Applicant conceded that the “phrase (‘UNITED STATES COAST GUARD’) accurately describes a portion of the organization’s primary responsibilities, namely, maritime security, search, rescue, and law enforcement.” We need not and do not decide whether UNITED STATES COAST GUARD is, in fact, the actual “name of applicant’s … [armed] services” as well as “a term which merely describes them.” And Applicant’s offering of employment and recruiting services “in the same manner that it is the mark under which applicant renders” its armed forces services does not elevate the UNITED STATES COAST GUARD wording from its descriptive function when it operates in the same manner, i.e., to describe the recruiting services of that armed force.

And so, the Board upheld the disclaimer requirement. However, because DHS had requested entry of the disclaimer should the Board find that same be required, the application was allowed to proceed with the proposed disclaimer.

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TTABlogger comment: The Board's discussion of the ORLANDO MIRACLE case was not the clearest. 

Text Copyright John L. Welch 2025.

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?

The TTAB affirmance rate for Section 2(d) appeals last year fell just under 90%. So far this year it's back to 90%. Here are three recent Board decisions, at least one of which reversed the refusal. How do you think they came out? [Answer in first comment].

In re Castro Diana Mariel, Serial No. 98059004 (April 2, 2025) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of MOBBIES for various clothing items "for UTV and dirt bike enthusiasts . . . all the forgoing excluding wetsuits, drysuits, boots, and gloves" in view of the registered mark MOBBY'S for "for “wetsuits, drysuits, boots, and gloves."]

In re MB1 Enterprises, LLC, Serial Nos. 97268667 and 97422929 (April 3, 2025) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusals to register the two marks shown below, for clothing and jewelry, in view of the registered mark ONE OF ONE (in standard character form) for "Clothing, namely, shirts, shorts, sweatshirts, hooded sweatshirts, sweatpants, jackets, beanies, hats, jerseys, socks, gloves."]

In re New Rubber Technologies Holdings, Inc, Serial No. 97577543 (April 4, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark shown below, for rubber flooring and floor mats, in view of the registered mark REVIVE for "Vinyl floor coverings; Decorative slip resistant floor covering in sheet form."]

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2025.