TTAB Grants HALFANIMAL Cancellation Petition on the Ground of Abandonment

The Board granted a petition for cancellation of Jesus "Half Animal" Villa's 2008 registration for the mark HALFANIMAL for "Beanies; Hats; Pants; Shorts; Sweat pants; Sweat shirts; Sweat shorts; Sweat suits; T-shirts; Wind resistant jackets" on the ground of abandonment. It declined to reach Petitioner Garan's Section 2(a) false association claim predicated on Garan's registered GARANIMALS mark for clothing. Garan Services Corp. v. Jesus Villa, Cancellation No. 92074777 (March 31, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

Respondent Villa sold HALFANIMAL hats and t-shirts on consignment in two Las Vegas stores from 2005 or 2006 to 2010, when the stores closed. He removed any website links to his products in 2012 and removed the product page in 2013. Villa was seriously injured in 2013, and his sales of products "went on pause." In 2019 he planned a “relaunch” of his website and online store, ordered sample hats, t-shirt, sweatshirt, and sweatpants with the HALFANIMAL mark, and in late 2021 or 2022 reactivated the merchant account on his website.

Villa submitted a declaration asserting that in 2003 he acquired the nickname HALFANIMAL as a Cirque De Soleil performer, began selling his product in 2007, and over the years sold the products online and via personal appearances. "However, with respect to specific dates of activities (other than the 2013 injury) occurring during the nonuse period of 2012 to 2019, the details are scant." He failed to provide documentation regarding sales or distribution of HALFANIMAL apparel at any time.

After reviewing all the evidence and arguments, the Board found that Petitioner Garan established a period of at least seven years on nonuse, and thus a prima facie case of abandonment. Villa attempted to overcome the prima facie case by establishing an excuse for his nonuse.

Respondent avers that he experienced a serious accident and spinal injury in 2013 that resulted in multiple surgeries, years of rehabilitation, physical ailments, and cognitive difficulties, including severe memory loss. While there appears to be no question that Respondent suffered a grievous injury in 2013, Respondent chose not to submit any medical records or statements from healthcare providers regarding his injuries. As explained above, the absence of such records is significant here because of the internal inconsistencies in Respondent’s testimony. * * * Respondent’s memory issues arising from his injury plainly are responsible for his inconsistent and unreliable testimony, and that is unfortunate. However, we have no choice but to make our determination on the record before us.

The Board noted that Villa had started to make guest appearances at an elementary school in 2005, allegedly to promote the brand. "Even if we were to excuse Respondent’s nonuse between 2013 and 2015 due to his accident, the record, at best, shows that Respondent didn’t take any action to resume use of HALFANIMAL for apparel until four years later in 2019."

The Board ruled that Villa had failed to rebut Garan’s prima facie case of abandonment through a showing of excusable nonuse.

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TTABlogger comment: Do you think the marks are confusingly similar? BTW, Villa owns a 2023 registration for HALF ANIMAL for entertainment services in the field of acrobatics.

Text Copyright John L. Welch 2025.

Trademark Reporter: Call for Submissions for Theme Issue on Third-Party Liability and Related IP and Product Disputes

The Trademark Reporter is seeking submissions for an upcoming theme issue on the topic of third-party liability in trademark and related IP and product disputes. Last year, the Reporter hit it big with a theme issue on artificial intelligence and its impact on trademark and related intellectual property law. [TTABlogged here]. We're expecting another home run with this next effort.

Call for Submissions: Theme Issue of The Trademark Reporter

Founded in 1911, The Trademark Reporter (TMR) delivers innovative and comprehensive scholarship on trademarks and related IP to practitioners, academics, and judges worldwide. The TMR is published bi-monthly and reaches more than 65,000 members of the IP community.

The TMR has been cited by the U.S. Supreme Court, including in its two landmark decisions on the intersection between trademarks and free speech under the First Amendment to the U.S. Constitution (Matal v. Tam (2017) and Iancu v. Brunetti (2019)). The TMR is also regularly cited by parties and/or amici to the Supreme Court, including in Jack Daniel’s Properties, Inc. v. VIP Products LLC, 143 S. Ct. 1578 (2023) and in Dewberry Group, Inc. v. Dewberry Engineers Inc., 604 U. S. ____ (2025).

The TMR will be publishing a special theme issue and is pleased to invite article and commentary submissions on the topic of third-party liability in trademark and related IP and product disputes. The issue is not limited to legal issues in the United States, and we welcome articles from the different perspectives of rightsholders, online platforms, sellers, and others.

Some potential thematic topics include without limitation the following:

• Third-party liability for counterfeit or infringing goods:

• online marketplace liability for the sale of counterfeit or infringing goods

• liability of brick-and-mortar establishments for the sale or storage of counterfeit or infringing goods

• Section 230 of the Communications Decency Act:

• liability of online platforms for content posted by third-party users, such as content concerning (defective) products 

• Schedule A litigation involving online marketplaces based on the actions of third-party sellers

• The use of technology (including artificial intelligence) to detect and counter trademark infringements.

In addition to original articles, we may also include previously published articles on these topics. If you have such an article, please submit it and indicate when and where it was published.

The deadline for all submissions is 5 p.m. Eastern Time (USA) on Monday, June 16, 2025, but we strongly encourage authors to submit their manuscripts as soon as possible. Please review the TMR’s Submission Guidelines. Please submit via Scholastica or to Willard Knox at wknox@inta.org.

Read comments and post your comment here.

Introductory text Copyright John L. Welch 2025.

Recommended Reading: Dustin Marlan, "Servicing Trade Dress: Demystifying the Tertium Quid"

In his article, "Servicing Trade Dress: Demystifying the Tertium Quid," 58 U.C. Davis Law Rev. 1513 (February 2025), Dustin Marlan, Assistant Professor of Law at the University of North Carolina School of Law, tackles the elusive term tertium quid that Justice Scalia injected into trademark law in Wal-Mart v. Samara. Justice Scalia posited that this third category of potentially protectable "trade dress" - neither product design nor product packaging - should be treated as "akin" to product packaging and therefore capable of being inherently distinctive. Professor Marlan thinks otherwise. [pdf here]. 

Courts and scholars have long struggled with how to determine whether trade dress is distinctive enough to function as a legally protectable trademark. In attempting to clarify this murky area, Justice Scalia articulated three types of trade dress in Wal-Mart Stores, Inc. v. Samara Brothers, Inc. These include (i) product packaging (e.g., a candy wrapper) and (ii) product design (e.g., an iPhone’s unique shape). The trouble lies in understanding the third category — what Scalia referred to as (iii) “some tertium quid” (e.g., a restaurant’s décor). Under the Supreme Court’s framework, product packaging is eligible for instant protection based on inherent distinctiveness because its “very purpose” is to identify a brand. Product design, though, must first acquire market recognition (i.e., secondary meaning) to be protectable since it usually serves goals unrelated to brand identification. However, the undefined tertium quid is considered capable of instant protection because it is thought to be, as Scalia believed, “akin to product packaging.”

In challenging this prevailing perspective, this Article seeks to demystify tertium quid trade dress. Seldom used in a legal context, tertium quid is an obscure Latin term meaning “third thing” that is associated with the arcane practice of alchemy, where alchemists would mix two inputs to try and produce gold (the third thing). The esoteric tertium quid label conceals this category’s true nature as consisting of what this Article labels “service dress” — trade dress for intangible services rather than tangible products. In recognizing the product/service distinction, this Article looks to the field of service design for legal insights. The service design literature casts serious doubt on whether service dress should be eligible for trademark protection absent secondary meaning. This is because service design, like product design, is usually intended to serve purposes other than brand identification. Moreover, requiring secondary meaning for service dress protection would support fair competition, providing for reasonable limits on the commercial appropriation of both physical and digital environments.

Read comments and post your comment here.

TTABlogger comment: Quid cogitas?

Introductory text Copyright John L. Welch 2025.

TTAB Quarterly Index: January - March 2025

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield.com.

Section 2(a) Deceptiveness:

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

Section 2(c) - Consent of Living Individual:

• TTAB Upholds Four Section 2(c) Refusals of Anti-Trump Marks Due to Lack of Consent

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is KINGS ARMOR Confusable with UNDER ARMOUR for Clothing?
• TTABlog Test: Are Sexual Arousal Supplements Related to Hair Care Products Under Section 2(d)? [Yes]
• TTABlog Test: Is STEED COMPANY Confusable with CORCEL for Clothing? [Yes]
• TTAB Upholds 2(d) and 2(e)(4) Bifusal of WYSE LONDON for Clothing
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTAB Denies Section 2(d) Cancellation Petition due to Unconvincing Testimony Regarding Priority
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• Finding Restaurant Services Related to Paper Food Containers, TTAB Sustains DON'T MESS WITH TEX-MEX Opposition
• TTABlog Test: Is CLEANFACE Confusable with DR.BELMEUR CLEAN FACE for Beauty Products? [No]
• TTABlog Test: Are Educational Services for Incarcerated Individuals Related to Legal Services Under Section 2(d)? [Yes]
• TTABlog Test: Are Cosmetics Related to Bottled Water for Section 2(d) Purposes?
• TTABlog Test: Are Pizza Parlors and Baked Goods Related Under Section 2(d)? [Yes]

• RTC RICH TRAPPERS CLUB Logo Not Confusable with RTC for Clothing, Says TTAB
• Eleven Third-Party Uses of "Cowbell" Not Enough to Overcome Cited COWBELL CREAM ALE Registration
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• TTAB Reverses Section 2(d) Refusal of "12 & Design" for Cosmetics Due to Third-Party Registration Evidence
• TTAB Reverses USPTO's Section 2(d) Refusal of PBE AWARDS & Design for Marketing Award Services
• E.D. Va. Reverses TTAB's Precedential Decision in HME Opposition, Orders USPTO to Issue Registration
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out
• TTAB Reverses Section 2(d) Refusal of FITO for Seeds Due to Dissimilarity of Marks and 13th DuPont Factor (Strategic Partners)
• Opposer Proves Prior Use of Common Law REVOLUTION JEWELRY WORKS Marks, Wins Opposition Battle
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• In 2024, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?

Section 2(e)(1) - Mere Descriptiveness:

• TTABlog Test: How Did These Recent Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• In 2024, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals?
• Precedential No. 30: Illustration of Block Puzzle Merely Descriptive of Computer Game Software, Says TTAB

Section 2(e)(4) - Primarily Merely a Surname:

• TTAB Upholds 2(d) and 2(e)(4) Bifusal of WYSE LONDON for Clothing
• TTABlog Test: Is SELECT BY LANDRY'S Primarily Merely a Surname for a Customer Reward Program?

Section 2(e)(5) - Functionality:

• TTAB Lets Stand Bifusal of Leveling Leg Configuration: De Jure Functional and Non-Distinctive
• TTAB Affirms 2e5 Functionality Refusal of Fire Extinguisher Pressure Gauge Configuration, Despite Applicant's Design Patent
• CAFC Affirms TTAB: Pink Color De Jure Functional for Hip Joint Implants
• Precedential No. 1: TTAB Upholds USPTO Objections to Over-Inclusive Drawings for Watch Configuration Marks

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 1: TTAB Upholds USPTO Objections to Over-Inclusive Drawings for Watch Configuration Marks

Section 14(3) - Misrepresentation of Source:

• Precedential No. 2: TTAB Sustains Section 14(3) Opposition to LA MONTSERRATINA for Meat Products Based on Reputation in USA Without Use

Abandonment/Nonuse/Specimen of Use:

• TTAB Finds "RUFFAREE" T-Shirt Specimen Acceptable for Dog Park Services
• TTAB Denies "DISORDERLY FASHION" Nonuse Cancellation Petition: It's Hard to Prove a Negative

Dilution:

• PANERA Fails to Prove Fame Before Applicant's First Use Date, TTAB Dismisses Opposition to PANERALUX for Unrelated Products
• Porn Star Name GIGI DIOR Dilutes-by-Blurring Famous DIOR Mark

Failure-to-Function:

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

Fraud:

• On Remand, Great Concepts Escapes With TTAB Wrist Slap for its Fraudulent Section 15 Declaration

Genericness:

• TTABlog Test: Is MUSH Generic for Oat-Based Cereals? [Yes]
• TTAB Finds "BRILLIANT ROSE" Generic for . . . Guess What?
• TTAB Finds MENTCHEES Generic for .... Guess What?

Non-ownership:

• Applicant Contractually Barred from Using Mark in 11 Metro Areas Still Entitled to Registration
• On Summary Judgment TTAB Sustains Opposition: Applicant Merely Re-packaged Branded Goods and so Does Not Own the Mark
• TTAB Grants Petition to Cancel VIVACE Registration for Microneedling Device: Manufacturer Owns the Mark, Not Distributor

Prosecution Issues:

• Precedential No. 1: TTAB Upholds USPTO Objections to Over-Inclusive Drawings for Watch Configuration Marks

Discovery/Evidence/Procedure:

• Precedential No. 3: Dismissal with Prejudice but Without Judgment Suffices for Claim Preclusion Defense
• Res Judicata Thwarts Applicant Seeking to End Run Prior Opposition by Limiting Services in Second Applications

CAFC Decisions:

• CAFC Affirms TTAB's MONEY MART Decision, Confirming that Zone of Natural Expansion Doctrine Applies Only Defensively
• CAFC Affirms TTAB's Dismissal of BULLSHINE FIREBULL Opposition Despite Commercial Strength of FIREBALL for Whisky
• CAFC Hears Oral Arguments in FUCK and RAPUNZEL Appeals
• CAFC Affirms TTAB: Pink Color De Jure Functional for Hip Joint Implants

Other:

• Current Roster of TTAB Judges
• The Trademark Reporter's 2025 "Annual Review" of U.S. Trademark Cases
• TTAB Posts March 2025 Hearing Schedule
• Three Recent Inter Partes Proceedings: The Bigger They Are ....
• TTAB Posts February 2025 Hearing Schedule
• TTAB Chief Judge Gerard F. Rogers Retires; Thomas V. Shaw Appointed Acting Chief Judge
• The Top Ten TTAB Decisions of 2024 (Part II)
• The Top Ten TTAB Decisions of 2024 (Part I)

Text © John L. Welch 2025.

TTAB Posts April 2025 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled four (4) oral hearings for the month of April 2025. All will be held virtually. Briefs and other papers for each case may be found at TTABVUE via the links provided.

April 3, 2025 - 11 AM [Virtual]: In re MoKappa, LLC, Serial No. 97858923 [Refusal to register the mark RAINY for "Streaming of audio, visual and audiovisual material via a global computer network; Communications services, namely, transmitting streamed sound and audiovisual recordings via the Internet; Electronic transmission and streaming of digital media content for others via global and local computer networks," on the ground that the specimens of use did not evidence an association between the mark and the recited services.]

April 8, 2025 - 10:30 AM [Virtual]: In re Atlas Supplies Inc., Serial No. 90115814 [Section 2(d) refusal of the mark SWAN & Design for various food products in classes 29 and 30 in view of the registered marks ALWAZAH TEA (SWAN BRAND) and design for "tea"; ALWAZAH in standard characters for "tea"; and KYKNOS in standard characters for " compotes; preserved, dried and cooked fruit and vegetables; tomato paste" and "ketchup, tomato sauce" and "fruit drinks and juices, preparations for making beverages, namely, fruit drinks and fruit juices; syrups for making soft drinks."]

April 17, 2025 - 11 AM [Virtual]: In re Shibumi Shade, Inc., Serial Nos. 90785780 and 90785791 [Section 2(e)(5) refusals to register the product configuration marks shown below for "Canopies of textile or synthetic materials," on the ground of functionality.]

April 22, 2025 - 1 PM [Virtual]: In re Lost Boy Entertainment LLC, Serial Nos. 98054896 and 98136618 [Bifusal of KANGAROO TOSS in standard character and slightly stylized form for "sporting equipment sold as a unit for playing action type target games in which players throw or fling bags at targets, excluding toys for children and boardgames" on the grounds of likelihood of confusion with the registered mark KANGAROO, in standard character and stylized form, for various toys and sports balls, and applicant's failure to comply with a requirement that it disclaim the word TOSS.]

Read comments and post your comment here

TTABlog comment:  Any predictions? 

Text Copyright John L. Welch 2025.