TTAB Posts June 2025 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled one oral hearing for the month of June 2025. It will be held virtually. Briefs and other papers for the case may be found at TTABVUE via the links provided.

June 24, 2025 - 11 AM [Virtual]: Al Ajamy Tobacco Factory LLC v. Prime Hookah Inc., Opposition No. 91266319 [Opposition to registration of the mark shown below for "Hookah parts, namely, hoses, bowls, mouthpieces, bases; Hookah tobacco; Hookahs" on the grounds of nonuse, non-ownership, and fraud].

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Text Copyright John L. Welch 2025.

TTABlog Test: Which of These 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In re Yolee’s Meal Prep LLC, Serial No. 97106121 (May 21, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark shown below for "Processed algae for human consumption in the nature of dried edible sea moss from Caribbean islands; Algae food beverages, namely, sea moss drinks; Processed algae for human consumption, namely, edible sea moss gel" [MOSS disclaimed], in view of the registered mark LADYBOSS for “Dietary supplements."

In re Random Life, Serial No. 98271953 (May 27, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of the mark REVALIA for “Jewelry; Jewelry brooches; Jewelry rings; Necklaces" in view of t he registered mark REVOLIA for, among other things, "Jewelry," "Jewelry brooches," "Rings being jewelry," and “Necklaces."]

In re Syracuse Label Company, Inc., Serial No. 97614824 (May 28, 2025) [not precedential] (Opinion by Judge George C. Pologeorgis). [Section 2(d) refusal to register the mark NEXTGEN LABEL GROUP for “labels printed on pressure-sensitive paper substrates,” “flexible packaging, namely pouches and containers, made from polymer films,” and “labels printed on pressure-sensitive polymer films" [LABEL GROUP disclaimed], in view of the registered marks (different owners) NEXT GENERATION PACKAGING for, among other things, “Packaging containers, all being made of plastic or a combination of plastics and other materials, the plastics predominating; Containers, primarily made of plastic, sold empty, namely, containers for commercial use; Containers, not of metal, for commercial or industrial use" and NEXGEN PACKAGING for “Paper identification tags” [PACKAGING disclaimed in both registrations].

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

Text Copyright John L. Welch 2025.

Yankees Win! TTAB Sustains Section 2(d) Opposition to NYC NEW YORK CANNABIS & Design for Clothing

I admit I'm no Yankee fan, and maybe my judgment is clouded by my long-standing dislike of the Bronx Bombers, but I think they should have lost this one. The Board sustained the Yankees' opposition to registration of the mark shown below, for baseball caps, uniforms, and other clothing items, finding the mark confusingly similar to the Yankees' registered (for baseball caps) and concededly famous interlocking NY logo (shown further below). New York Yankees Partnership v. Brian K. Reaux, Opposition No. 91271056 (May 22, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

In typically obnoxious fashion, the Yankees submitted more that 10,000 pages of evidence, most of it directed to the fame of its mark, although Applicant Reaux had conceded same. Instead, Reaux understandably argued that the marks are too different to be confusable and therefore the fame of the Yankees' logo doesn't matter.

The Board found that "the main point of similarity—the nested N and Y design—is the most striking element of Applicant’s mark." "In effect, Applicant has taken the entirety of Opposer’s mark, modified it slightly and added some additional elements, all of which are much less prominent in Applicant’s mark than the nested N and Y design that comprises the entirety of Opposer’s mark."

[T]he wide, block lettering style used in Opposer’s mark provides the space Applicant needed for all the smaller cannabis leaves shown within the letters N and Y. The wide, curving lettering is an important aspect of Opposer’s mark, as the nested letters N and Y refer to New York City .... *** Applicant uses the same wide lettering, the nested N and Y, and the exaggerated curvature of the vertical parts of the N. These are all key aspects of Opposer’s mark.

The Board deemed the words NEW YORK CANNABIS and the leaf design to be "descriptive of a business with some relation to cannabis, even if that relation is merely to promote cannabis in a general way. We find the elements Applicant added to the nested N and Y are descriptive matter and are unlikely to be viewed as source identifiers by consumers."

According to the Board, "the dominant element of Applicant’s mark is the nested N and Y design, which is the first and largest element in the mark."

The dominant element of Applicant’s mark is sufficiently similar to Opposer’s mark that a substantial number of consumers are likely to associate the marks. Some of those consumers may believe Opposer has expanded its business or has endorsed Applicant’s business, or has endorsed CBD goods, which are derived from the cannabis plant and have been endorsed by some Major League baseball teams. We find the marks visually similar.

Although the Board found that the marks differ in sound and meaning," the visual similarity is sufficient to increase the risk of consumer confusion."

Finally, the Board found that Reaux intended to trade on the goodwill of the Yankees' mark. "Even if Applicant subjectively believed his actions were allowable under trademark law, he created a mark that calls to mind the Yankees’ famous mark and he is selling identical goods.

It is clear that Applicant intended to use the fame of the Yankees’ mark to create a business opportunity for himself—one Applicant did nothing, other than altering the Yankees’ mark, to create. That is what it means to trade on the goodwill of another’s trademark. The thirteenth factor, therefore, weighs in favor of a finding of likelihood of confusion.

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TTABlogger comment: I just don't see how a consumer would think that goods bearing Brian Reaux's mark emanate from, or are licensed or approved by, the Yankees. Are consumers that dumb? The question is, what will consumers perceive, not what Mr. Reaux intended.

The Board declined to reach the Yankees' dilution-by-blurring claim. That claim requires that the challenged mark "trigger consumers to conjure up" opposer's mark. How can a mark "conjure up" another if they are not confusingly similar?

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB: Mere Consumer Curtin Lacked Statutory Standing to Oppose RAPUNZEL for Dolls

Although one purpose of the Lanham Act is to protect consumers, whether a particular consumer has statutory standing to oppose or petition to cancel depends on the specific bases under the Lanham Act that he or she invokes. Here, the CAFC affirmed the Board's holding that "only commercial actors affected by the mark’s registration fall within the zone of interests to oppose the registration as generic, descriptive, or [failing to function as a trademark]." (emphasis supplied). The court upheld the Board's dismissal of mere consumer Rebecca Curtin's opposition to registration of the mark RAPUNZEL for dolls and toy figures on the ground of lack of statutory standing. Curtin v. United Trademark Holdings, Inc., 2025 USPQ2d 784 (Fed. Cir. 2025) [precedential].

The Board had applied the Lexmark framework as set out by the Supreme Court and applied in Corcamore, ruling that "[a] plaintiff may oppose registration of a mark when doing so is within the zone of interests protected by the statute and she has a reasonable belief in damage that would be proximately caused by registration of the mark." The Board observed that "mere consumers such as [Ms. Curtin] are generally not statutorily entitled to oppose registration under 15 U.S.C. § 1063."

The Board found that the claims made by Curtin did not fall within the zone of interests protected by the Lanham Act, and that Curtin's evidence was too "limited" and her injury "too remote" to establish proximate causation.

Curtin argued that Corcamore was a cancellation proceeding, not an opposition, but the CAFC saw no reason why the same test for statutory standing should not apply to each. Curtin pointed to the CAFC's Ritchie v. Simpson decision (finding that Mr. Ritchie had standing to oppose OJ Simpson's applications to register the marks O.J. SIMPSON, O.J., and THE JUICE under the immoral or scandalous provision of Section 2(a) because he had a "real interest" in the outcome of the opposition, and that his "belief of damage" (disparagement of his values as a "family man") had a reasonable basis in fact.

The court, however, observed that Curtin did not invoke the same provisions of the Lanham Act as did Ritchie. The provisions she relied upon require a commercial interest protected by the statute.

The interest protected by a particular provision of the Lanham Act should not be subject to a blanket rule that always assumes the intended protected interest is commercial. Instead, the protected interest should be evaluated based on the particular ground for the challenge, since there are clearly grounds against registration of a mark in the Lanham Act that are not intended to protect commercial interests. In the context of challenges to a trademark under the Lanham Act, both in the form of an opposition proceeding under § 1063 or a cancellation proceeding under § 1064, the zone-of-interests test should be tailored based on the specific bases cited for opposing registration or seeking cancellation of the registration for a mark.

The CAFC noted that Curtin did not contend that the subject mark was misleading or deceptive, and so the court need not consider "whether these provisions also protect commercial interests."

Turning to the second prong of Lexmark, Curtin alleged that, as a doll collector and mother to a young daughter, she is "a consumer who participates amongst other consumers in the marketplace for dolls and toy figures of fairytale characters, including Rapunzel." She maintained that injury would result from the registration of the RAPUNZEL mark because "[she] and other consumers will be denied access to healthy marketplace competition for products that represent Rapunzel if private companies are allowed "to trademark the name of a famous fairy tale character in the public domain." [NB: trademark is not a verb - ed.].

The court pointed out that Curtin did not provide "any arguments refuting the Board’s findings that her reliance on general economic theories without any case-specific data fails to establish a reasonable belief of proximate causation of injury." Curtin's alleged harms were insufficient to establish proximate causation because "they are downstream harms first suffered by a commercial actor" and "too remote to support a reasonable belief in injury."

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TTABlogger comment: Is the CAFC suggesting that UTM's trademark application should be re-examined? See this passage at page 4, quoting Heritage All. v. Am. Pol’y Roundtable, 133 F.4th 1063, 1071 (Fed. Cir. 2025): “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."

Is a likelihood of confusion claim a commercial one, or does a mere consumer have statutory standing to bring the claim? What about Section 2(a) deceptiveness? How about functionality based on an expired patent?

Is a consumer ever directly damaged merely by registration of the mark? Isn't it the use of a mark that may cause injury?

Note that the court in several instances refers to "functionality" instead of "failure-to-function." See pages 3 and 18.

BTW: what happened to Curtin's fraud claim?

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB's VETEMENTS Genericness Ruling

Holding that a party opposing translation of a term under the doctrine of foreign equivalents has the burden to show that it is unlikely that the ordinary American purchaser would stop and translate the word into its English equivalent, the CAFC upheld the Board's affirmance [TTABlogged here] of the USPTO's refusals to register the term VETEMENTS (in standard character and slightly stylized form) for various clothing items and for related retail store services, on the ground of genericness. There was no dispute that the English translation of the French word "vetements" is "clothing," and the court ruled that substantial evidence supported the Board's finding that the ordinary American purchaser would stop and translate the mark. In re Vetements Group AG, 2025 USPQ2d 775 (Fed. Cir. 2025) [precedential].

Whether the Board applied the proper test for genericness is a question of law, reviewed de novo, but whether a particular mark is generic is a question of fact reviewed for substantial evidence. In re PT Medisafe Techs., 134 F.4th 1368, 1373 (Fed. Cir. 2025) (quoting Cordua, 823 F.3d at 599).

The CAFC recounted the history of the doctrine of foreign equivalents as applied in various contexts. In Palm Bay, it considered an appeal from a likelihood-of-confusion refusal of the non-English mark VEUVE ROYALE for sparkling wine, holding that “[t]he doctrine should be applied only when it is likely that the ordinary American purchaser would 'stop and translate [the word] into its English equivalent.'" (alteration in original) (citation omitted). In Spirits the court observed that "[t]he 'ordinary American purchaser' is not limited to only those consumers unfamiliar with non-English languages; rather, the term includes all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” 563 F.3d at 1352.

Appellant relied on Palm Bay in arguing against translation, but the CAFC pointed out that Palm Bay "involved two circumstances that weighed against translation." First, "an 'appreciable' number of Americans are capable of translating the term VETEMENTS from French into English."

[T]he word in question is a simple and common word—the word for clothing. On the other hand, “widow” requires a more advanced vocabulary. This, therefore, distinguishes this case from the aspect of Palm Bay that was premised on “an appreciable number of purchasers [being] unlikely to be aware that VEUVE means ‘widow’” in French, and therefore “unlikely to translate the marks into English.” Palm Bay, 396 F.3d at 1377 (emphasis omitted) (citation omitted)."

Second, the word "vetements" is closely associated with clothing because it is the French word for clothing. whereas the term "veuve" has no association with the goods in Palm Bay. 

Appellant disputed the Board’s finding that the ordinary American purchaser would stop and translate the marks because there was no showing that a majority of Americans are capable of translating the word. 

We reject Appellant’s proposed test, which is tantamount to the threshold ordinary American purchaser under the doctrine of foreign equivalents requiring a headcount to determine the foreign language skills of the median American purchaser in every case. *** It is enough to demonstrate that an “appreciable” number of Americans are capable of translating the term VETEMENTS from French into English.

The CAFC deemed it "prudent to further distill the core principles relevant to analyzing the 'threshold limitation on the application of the doctrine of foreign equivalents' of whether the ordinary American purchaser would stop and translate the mark into English. Spirits, 563 F.3d at 1351–52 (quoting Palm Bay, 396 F.3d at 1377). The guiding principles we identify here are non-exclusive and do not preclude the application of other principles where demanded by the particular circumstances of future cases."

• First, the party opposing translation has the burden to show that it is unlikely the ordinary American purchaser would stop and translate the word into its English equivalent.
• Second, "as long as an appreciable number of Americans, from the U.S. population as a whole, are capable of translating the word, the word likely will be translated. " 
• Third, whether the mark would ordinarily be translated by a purchaser (from the U.S. population as a whole) with ordinary sensibilities must be considered. 

The court concluded that the appellant did not meet its burden to show that the marks are unlikely to be translated; therefore, the doctrine of foreign equivalents applies. Ruling that substantial evidence supported the Board’s finding that, as translated to “clothing,” the term VETEMENTS is generic for the involved goods and services, the CAFC affirmed the Board's decision.

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TTABlogger comment:  What evidence will show that a term is not likely to be translated into English? Does one need a survey to show that "an appreciable number of purchasers [are] unlikely to be aware" of the meaning of the foreign word, as in Palm Bay?

Text Copyright John L. Welch 2025.

TTABlog Test: Are Golf Simulator Services Related to Restaurant Services Under Section 2(d)?

The USPTO refused to register the mark EVEN HOUSE for "Entertainment services in the nature of organizing entertainment events; organizing sporting events, namely, golf simulator competitions; providing recreational facilities for use of electronic golf simulator" [HOUSE disclaimed], finding confusion likely with the registered mark EVEN for "“Bar services; Cafe services; Hotel accommodation services; Restaurant services; Snack-bar services; Provision of conference, exhibition and meeting facilities." The Board found the marks to be "highly similar" in view of the common element EVEN. But are the services related? How do you think this came out? In re Tempo CC, Inc., Serial No. 98264392 (May 20, 2025) [not precedential] (Opinion by Judge Robert Lavache).

Applicant Tempo feebly argued that the cited mark EVEN is weak, but it submitted no evidence of third-party marketplace uses of similar or identical marks. Its citation of a single third-party registration did not establish that the relevant consuming public has been exposed to widespread use of similar marks.

Examining Attorney Christopher Hoffman submitted evidence of ten third-parties that provide electronic golf simulators and organize social entertainment events or golf simulator and may also offer bar services, cafe services, restaurant services, or snack-bar services, all under the same mark.

We agree with the Examining Attorney that Applicant’s services are related to some of Registrant’s services because the record shows consumers are accustomed to encountering the respective services being offered either separately or together by the same source under the same mark.

The Board found that the services are "closely related to at least some of Registrant’s services. Accordingly, the second DuPont factor weighs in favor of a finding likelihood of confusion."

And so, the Board affirmed the refusal.

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TTABlogger comment: I think the Board sliced this one into the rough and wound up with a triple bogey.

Text Copyright John L. Welch 2025.

CAFC Overturns TTAB Dismissal of SFERA Opposition, Remanding for Reconsideration of1st and 2nd DuPont Factors

The CAFC vacated and remanded the Board's decision [pdf here] dismissing an opposition to registration of the mark SFERA in the form shown below, for perfumery and cosmetics (Class 3), leather handbags and wallets (Class 18), and clothing (Class 25), in view of the registered mark SFERRA for table linen, bed sheets, lap robes, bath towels, and the like (Class 24). The appellate court concluded that the Board "erred in weighing the first Dupont factor and failed to address and evaluate relevant evidence concerning the second Dupont factor." Sferra Fine Linens, LLC v. Sfera Joven S.A., 2025 USPQ2d 766 (Fed. Cir. 2025) [not precedential].

The Board determined that “[a]lthough the marks are similar and Opposer’s pleaded mark[s] enjoy[] some commercial strength, Opposer has not shown that the goods are related, or that they travel in the same channels of trade to the same classes of consumers, and this failure is dispositive.” 

On appeal, Opposer challenged the Board’s weighing of the similarity of the marks (Dupont factor one) and the Board’s factual findings related to: similarity of the goods (DuPont factor two); similarity of trade channels (DuPont factor three); consumer sophistication (Dupont factor four); and strength of Opposer’s marks (Dupont factor five). 

First, in view of its Naterra decision, the CAFC agreed with Opposer that the first DuPont must be weighed heavily in favor of a likelihood of confusion.

Second, the Board erred by failing to consider that Opposer itself  “sells the goods . . . of both parties,” which “is relevant to a relatedness analysis.”

Third, The Board recognized the identified goods are presumed to travel in the normal channels of trade, but found that “Opposer [did] not provide[] any evidence regarding the ‘normal’ channels of trade for Applicant’s identified goods in the United States.”

As to the fourth factor, consumer sophistication, substantial evidence supported the finding that this factor was neutral.

As to the fifth factor, Opposer argued that the Board improperly discounted its sales and advertising figures based on a lack of comparative evidence to “other brands of linens and related products.” The CAFC concluded that the Board "appropriately considered Opposer’s sales and advertising figures, along with Opposer’s underwhelming media presence, and reasonably found that Opposer’s marks are "commercially somewhat strong.'"

Conclusion: "Because the Board erred in weighing the first Dupont factor and failed to address and evaluate relevant evidence concerning the second Dupont factor, [the CAFC] vacated the Board’s decision and remand for further proceedings consistent with this opinion."

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TTABlogger comment: Sfera nuff.

Text Copyright John L. Welch 2025.

Ted Davis: "Federal Court and Trademark Trial and Appeal Board Review"

Ted Davis has graciously consented to my posting a link here to his article, "Recent Developments in United States Trademark and Unfair Competition Law." This article is a companion to Ted's presentation at the 2025 Annual Meeting of INTA in San Diego.

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USPTO Fails to Prove Section 2(a) False Connection of ENAIRA with the Central Bank of Nigeria

Despite the applicant's "egregious conduct" during prosecution of its application and during this appeal, the Board was "duty-bound" to decide this case "solely on the record and the applicable law," and so it reversed the USPTO's Section 2(a) refusal to register the mark ENAIRA on the Supplemental Register, for “Financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network." The Office had maintained that the mark falsely suggests a connection with the Central Bank of Nigeria. In re Mefona LLC, Serial No. 97065669 (May 14, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

Applicant Mefona LLC, appearing pro se, "made numerous unfounded and offensive accusations of unethical and even illegal conduct by the Examining Attorney, officials of the United States Patent and Trademark Office," and the Board; "unnecessarily inflated the record, and complicated and prolonged the ultimate disposition of this case;" and "caused the Board and other offices in the USPTO to waste their limited resources on multiple matters not germane to the merits of this case." The Board needed 10 pages of this 24-page opinion to describe the contentious prosecution history of the subject application.

The Office initially refused registration on the ground that the mark is merely descriptive because the "Naira" is Nigeria’s currency and "eNaira" is the name given to Nigerian currency in electronic form. Mifona then amended the application to seek registration on the Supplemental Register. This Section 2(a) refusal ensued.

To establish a false suggestion of a connection between Applicant Mefona and the Central Bank of Nigeria, the Office had to prove that: 

• (1) The term ENAIRA in Applicant’s mark is the same as, or a close approximation of, the Central Bank of Nigeria’s name or identity, as previously used or identified with the Central Bank of Nigeria; 
• (2) The term ENAIRA in Applicant’s mark would be recognized as such because it points uniquely and unmistakably to the Central Bank of Nigeria; 
• (3) The Central Bank of Nigeria is not connected to or otherwise affiliated with Applicant; and 
• (4) The Central Bank of Nigeria is of sufficient fame or reputation that, when the term ENAIRA is used in connection with the “Financial services, namely, providing a virtual currency for use by members of an on-line community via a global computer network” identified in the application, a connection with the Central Bank of Nigeria would be presumed.

The examining attorney failed to establish any one of these elements, and so reversal of the refusal was required.

The examining attorney argued that "ENAIRA is a mark used by the Central Bank of Nigeria, that it would be recognized as such in that it points uniquely and unmistakably to that institution, that the institution is not connected with the applicant, and that the reputation of the institution is of such a nature that a connection would be presumed."

In its opinion, the Board focused on the fourth element as dispositive. The Board pointed out that in prior cases in which a false suggestion of a connection with a foreign person or institution has been found, the records have included evidence of "significant exposure of the person or entity to United States consumers."

The examining attorney did not provide any evidence regarding the extent, if any, of the exposure of any of the materials in the record to United States consumers. "Many of the webpages and articles in the record come from what appear to be foreign websites based either on their domain names or their contents."

The Board observed that there was no evidence of the size or activities of the Nigerian diaspora in the United States, no evidence of the extent or nature of the trade or financial relations between the United States and Nigeria, no evidence regarding the number of visitors to the website of the Central Bank of Nigeria at cbn.gov.ng, including the number of United States consumers who have visited the site, and no evidence of the size of the United States readership or viewership of the articles and websites in the record.

The Board concluded that it could not, from this record, draw the inference that the Central Bank of Nigeria is so well-known to United States consumers that the use of the ENAIRA mark will cause consumers of the services identified in the application to presume a connection with the Central Bank of Nigeria. "At the very least, we have significant doubt that the Central Bank of Nigeria is sufficiently well-known in the United States, and we must resolve that doubt in favor of Applicant."

And so, the Board reversed the refusal to register.

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TTABlogger comment: What will happen if the applicant tries to enforce its rights, if any, in the mark? Will the adversary do the work to come up with better evidence? PS: see the Board's last footnote: "Our decision, of course, does not prevent the Central Bank of Nigeria, or any other interested party, from petitioning to cancel Applicant’s Supplemental Register registration based on Section 2(a), or other grounds for cancellation, and providing a better-developed record."

Text Copyright John L. Welch 2025.

Third-Party Registrations and Uses Yield TTAB Reversal of Section 2(d) Refusal

The Board reversed a Section 2(d) refusal to register the mark STADIUM SPORTS BAR & GRILL for “Bar and restaurant services inside of a casino" [SPORTS BAR & GRILL disclaimed], over the registered mark shown below for, inter alia, bar services [EAT • DRINK • SPORTS • GAMES disclaimed]. The services are legally identical (registrant's services encompassed applicant's services) and presumably are offered in the same channels of trade to the same classes of consumers. But in light of the weakness of the formative STADIUM, the Board found the marks sufficiently dissimilar to render confusion unlikely. In re Boyd Gaming Corporation, Serial No. 97838771 (May 14, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant Boyd Gaming submitted evidence of nine third-party uses of marks containing the word STADIUM for restaurant or bar services, including STADIUM GRILL (Mattoon, IL), STADIUM TAKEOUT (Madison, WI), and THE STADIUM RESTAURANT (New Port Richey, FL). "This third-party use evidences commercial weakness of the term STADIUM."

As for the conceptual strength of the cited mark, Boyd Gaming pointed to nine registrations for marks containing the word STADIUM for restaurant or bar services, including STADIUM PIZZA, STADIUM ON WHEELS, and STADIUM66. The Board found that "STADIUM carries a highly suggestive connotation in the restaurant and bar industry for restaurants or bars that feature sporting events or are located near or in a stadium." This evidence was sufficient to establish the conceptual weakness and highly suggestive nature of the term STADIUM in connection with bar and restaurant services.

In sum, the term STADIUM is conceptually and commercially weak when used in connection with bar and restaurant services, such that consumers are educated to look for minute distinctions in STADIUM-formative marks in the marketplace. “Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights.”

Turning to the marks, the Board observed that "[g]enerally, adding subordinate or descriptive matter to a term identical to one in a cited registration does little to obviate a finding of similarity." “However, an exception to the general rule is often found when, inter alia, the matter shared by the two marks is merely descriptive or commonly used or registered.”

The Board concluded that the marks at issue are "sufficiently dissimilar to avoid likelihood of confusion."

Considering the marks in their entireties and in view of the weakness of the cited mark, we find the addition of the terms SPORTS BAR & GRILL in Applicant’s mark and the design elements and additional terms EAT • DRINK • SPORTS • GAMES in Registrant’s mark are sufficient to render the marks distinguishable and dissimilar, even if used on legally identical services.

And so, the Board reversed the refusal to register.

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TTABlogger comment: Nine uses and nine registrations doesn't seem like a lot. Who ever heard of STADIUM GRILL in Mattoon, Illinois, which is in the middle of nowhere? And is STADIUM really descriptive of restaurant services?

Text Copyright John L. Welch 2025.

TTAB Affirms Another Section 2(e)(5) Functionality Refusal: Beach Canopy

In a thorough and instructive opinion, the Board upheld another Section 2(e)(5) functionality refusal, this time rejecting the proposed product configuration marks shown below for "Canopies of textile or synthetic materials." Once again, the applicant's utility patents and advertising established the functional benefits of its designs. In re Shibumi Shade, Inc., Serial Nos. 90785780 and 90785791 (May 13, 2025) [not precedential] (Opinion by Judge Jennifer L. Elgin).

The proposed marks consist of the configuration of a rectangular canopy (one with horizontal stripes) attached to a curved frame along one side. In real life, the canopies look like this:

As usual, the Board looked to the four factors set out in Morton-Norwich: utility patents, laudatory advertising, alternative designs, and lower cost of manufacturing.

Utility Patents:The specifications and drawings of Applicant Shibumi's utility patents "disclose a shading system where the segments are fitted together to form a single frame, which, in the preferred embodiment [shown below], are formed into a curved (i.e., arched) shape." Moreover, the curved configuration shown in the marks is specifically included in the patent claims in two of applicant's patents.

Here, there is no element of the applied-for marks as described in the applications, save the two-toned shading of the mark in the ’780 Application, which is not essential to the patented invention; and this shading is too incidental to transform the overall functionality of the applied-for mark into a nonfunctional mark.

The Board concluded that "the ’046 and ’904 utility patents are strong and explicit evidence that the applied-for marks have overall utilitarian benefits."

Advertising: Shibumi's advertising confirmed that the "arched frame and canopy design has at least the following utilitarian advantages: (1) ease of set-up; (2) maximization of shade; and (3) ease of repositioning to follow the movement of the sun or direction of the wind." And so, the second Morton-Norwich element "strongly supports a determination that the applied-for marks are functional."

Alternative Designs: The Board noted that competitors sell alternative beach shade designs that "work with the wind and not against it," but it could not determine from the evidence whether those designs work "equally well" as Shibumi's. In any event, "it is not necessary for a finding of functionality that there are a few other designs available; it is sufficient if the product design Applicant seeks to register is one of only a few superior designs." The Board deemed this factor to be neutral

Cost of Manufacture: Examining Attorney Kathryn Browning offered little evidence regarding this factor, and so the Board considered it neutral.

Design Patents: Shibumi argued that its six design patents presumptively indicate that its design is not de jure functional. In re OEP Enters., Ser. No. 87345596, 2019 TTAB LEXIS 278, *20-21 (TTAB 2019). However, the Board noted, this fact alone is not dispositive: the Board "must examine the totality of the evidence, including Applicant’s utility patents and advertising."

Conclusion: Ruling that Shibumi's design patents and other evidence "[do] not tip the balance in its favor," the Board affirmed the refusal to register.

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TTABlogger comment: Seems like if the wind shifts, you've got a problem

Text Copyright John L. Welch 2025.

TTAB Finds SLEEP HEADPHONES to be Generic for . . . . Guess What?

The Board sustained an opposition to registration of the proposed mark SLEEP HEADPHONES for "Audio speakers; Calculators; Camera flashes; Cases for smartphones; Contact lens cases; Dust masks; Earphones; Protective glasses" [HEADPHONES disclaimed] on the grounds of genericness and, in the alternative, mere descriptiveness. Applicant moved to delete "earphones" from its identification of goods, but the Board denied the motion as "too little, too late." Shenzhen Tianjian Business Co. Limited v. Shenzhen Ruiquansheng Technology Co., Ltd., Opposition No. 91273631 (May 7, 2025) [not precedential] (Opinion by Judge David K. Heasley).

"Standing": The Board found that opposer, who uses the term "sleep earphones" to sell its product on Amazon, was entitled to commence an opposition based on genericness or mere descriptiveness even if it does not own proprietary rights in the subject mark. "To put [Applicant] in possession of a right it does not have, which it might at any time decide to assert..., would, in our opinion, be damaging... since it could at least be used to harass [Opposer] into ceasing use of [the term] on pain of defending a lawsuit."

Motion to Amend: The Board denied applicant's motion to delete "earphones" from the identification of goods for several reasons. First, earphones are a type of "audio speaker" and so the identification of goods would still encompass earphones, and the proposed deletion of “earphones” would be "an exercise in futility." Second, "if Applicant’s proposed mark, SLEEP HEADPHONES, is generic or merely descriptive of any of its identified goods, whether they are earphones or audio speakers, then registration is properly refused as to the entire Class of goods." 

Applicant cannot circumvent a finding of genericness or mere descriptiveness by arguing that the term is not generic or descriptive of its other Class 9 goods. Applicant’s motion to amend is, in sum, too little, too late, and it is denied.

Genericness: The Board agreed with opposer that "Sleep Headphones" is "a compound of generic terms that does not create any additional meaning distinguishing the goods. ‘Sleep’ and ‘Headphones’ together simply describe headphones for sleeping, which is the product’s primary purpose."

Dictionary definitions, use of the term "sleep headphones" by applicant's competitors, applicant's own website and advertising materials describing the function of its headphones (for sleeping), generic use by commentators (e.g., N.Y Times Wirecutter) led the Board to find by a preponderance of the evidence that SLEEP HEADPHONES "denotes a category or class of goods, not a single source. As such, it is generic, and may not be monopolized by Applicant in the form of a registered trademark."

Mere Descriptiveness: Observing that "the generic name of a thing is in fact "the ultimate in descriptiveness," Marvin Ginn v. Fire Chiefs, 782 F.2d at 989, the Board pointed out that its finding of genericness "also implies that it is at least merely descriptive of Applicant’s goods." "The term SLEEP HEADPHONES immediately conveys the function, purpose, and use of Applicant’s earphones and audio speakers, as demonstrated by the above dictionary definitions, by Applicant’s advertising, by competitors’ use, and by commentators’ use."

We therefore find by a preponderance of the evidence that Applicant’s proposed mark is merely descriptive—indeed, highly descriptive, if not generic—of its identified goods, within the meaning of Section 2(e)(1). 15 U.S.C. § 1052(e)(1). “‘Our society is better served if ... highly descriptive or generic terms remain available for use among competitors.’ In re Water Gremlin Co., 635 F.2d 841, [844] (CCPA 1980) (footnote omitted).” Spiritline Cruises LLC v. Tour Mgmt. Servs., Inc., 2020 WL 636467, *15 (TTAB 2020).

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TTABlogger comment:The applicant should have seen this problem from the git-go when it filed the application.

Text Copyright John L. Welch 2025.

Two Dilution Claims: TTAB Finds "IVY LEAGUE" to be Famous, But Not "ASUS"

On May 8th, the Board decided two oppositions involving claims of dilution-by-blurring under Secction 43(c) of the Lanham Act. In one, it found the marks THE IVY LEAGUE and IVY LEAGUE to be "household names." Council of Ivy Group Presidents v. IV League Nurse Concierge, Inc., Opposition No. 91285794 (May 8, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.). In the other, the Board found that the mark ASUS had achieved at most "niche" fame for computers and related products as of the critical date. ASUSTeK Computer Incorporation v. ASOS plc, Opposition No. 91264402 (May 8, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

IVY LEAGUE: The Board sustained this opposition to registration of the mark shown above, for "intravenous (IV) hydration therapy services" [NURSE CONCIERGE, INC. disclaimed], on the ground of dilution-by-blurring under Section 43(c) of the Lanham Act. The Board declined to reach opposer's Section 2(d) likelihood of confusion claim.

The term “Ivy League” was coined in the 1930s by a sportswriter to collectively refer to Brown University, Columbia University, Cornell University, Dartmouth College, Harvard University, the University of Pennsylvania, Princeton University, and Yale University. Continuous and extensive promotion and use of the marks, unsolicited media coverage, social media engagements, licensing and policing of the marks, and dictionary listings of the term "Ivy League" led the Board to conclude that THE IVY LEAGUE and IVY LEAGUE are "household names, and for the purposes of dilution, famous marks." The Board also found that the IVY LEAGUE marks were famous before applicant's constructive first use date in 2022.

Next, the Board deemed Applicant’s mark and Opposer’s THE IVY LEAGUE and IVY LEAGUE marks to be "similar because they share the same phonetically identical dominant terms, 'IV LEAGUE' in Applicant’s mark and 'IVY LEAGUE' in opposer’s marks." Opposer's marks are inherently distinctive and there was no evidence that their use was not substantially exclusive. Although there was no direct evidence (e.g., a survey) of the degree of recognition of opposer's marks, the indirect evidence proved that the marks "have attained a significant level of recognition."

We find that THE IVY LEAGUE and IVY LEAGUE marks are publicly associated with Opposer’s educational services such that these marks are “now primarily associated with the owner of the mark[s] even when [they are] considered outside of the context of the owner’s goods and services.” Toro, 2001 TTAB LEXIS 823, at *59-60

There was no evidence that applicant intended to create an association with opposer, nor any evidence of any actual association of applicant's mark with those of opposer.

Concluding that all of the dilution factors favored opposer or were neutral, the Board sustained the dilution-by-blurring claim.

ASUS v. ASOS: ASUSTeK opposed registration of the mark ASOS for downloadable application software and downloadable publications for mobile devices for the purpose of the retail of goods in relation to fashion, clothing, footwear, activewear, headwear, cosmetics, toiletries, grooming, homeware and gifts, in view of the registered ASUS for a variety of products, including gaming hardware, desktop computers, laptop computers, monitors, graphics cards, keyboards, mice, headsets and microphones, mobile phones, other computer and communication devices. The Board dismissed ASUSTeK's likelihood of confusion claim primarily because of a failure to prove that the involved goods are related, supported by the eighth DuPont factor: the lack of evidence of actual confusion despite 20 years of concurrent use.

With respect to its dilution claim, ASUSTeK had to show that its mark became famous before applicant's constructive first use date in November 2016. Its proofs fell short. Although it has used ASUS mark for 35 years, ASUSTeK's sales figures were post-2016 and its evidence of advertising prior to 2016 was "spotty" and not limited to the United States. And it provided no evidence of social media followers or customers in the United States as of the critical date.

Opposer’s evidence shows, at most, that as of November 16, 2016 the ASUS mark was recognized for computers and similar products. This is not sufficient for a dilution claim. Coach Servs., 668 F.3d at 1372 (“By using the ‘general consuming public’ as the benchmark, the TDRA eliminated the possibility of ‘niche fame,’ which some courts had recognized under the previous version of the statute.”).

Therefore, the Board dismissed the dilution-by-blurring claim.

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TTABlogger comment: Cast yourself back to 2016. Was ASUS a household name in your house? Maybe if you had a cat named ASUS.

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 Sycamore Growth Group, LLC, Serial No. 98125231 (May 8, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen). [Section 2(d) refusal of the mark SYCAMORE GROWTH GROUP for "tax consulting services in connection with identifying tax credits" [GROUP disclaimed] in view of the registered mark SYCAMORE CAPITAL in word and logo form for "financial services, namely, financial management, investment advice, mutual fund investment, financial planning services, and investment management services” [CAPITAL disclaimed].

In re All Strong Industry (USA) Inc., Serial No. 98293359 (May 8, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark GREEN LIVING for "Indoor window blinds" [GREEN disclaimed] in view of the registered mark LIVINGREEN for "Furniture; furniture, namely, mirrors, tables, desks, chairs; picture frames."]

In re Mae Daly’s Events LLC, Serial No. 98126095 (May 5, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal to register the mark MAE DALY’S for "Restaurant services; bar services; catering services" in view of the registered mark DALY for "Restaurant services."]

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2025.

E.D. Va. Affirms TTAB Decision Ordering Cancellation of two General Cigar Registrations for "COHIBA" Under Pan-Am Convention

The U.S. District Court for the Eastern District of Virginia has affirmed the TTAB's decision [TTABlogged here] ordering cancellation of two registrations for the mark COHIBA, under 8 of the Pan-American Convention. General Cigar Co. v. Empresa Cubana Del Tabaco d/b/a Cubatobaco, Civil Action No. l:23-cv-227 (LMBAVEF) (E.D. Va. May 7, 2025).

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TTABlogger comment: Prof. Christine Haight Farley explains the Pan American Convention and Board's COHIBA decision here.

Text Copyright John L. Welch 2025.

Precedential No. 4: TTAB Sustains Opposition to CUADRA for Alcoholic Beverage Due to Lack of Bona Fide Intent

In a dubiously precedential ruling, the Board sustained this opposition to registration of the mark CUADRA for "alcoholic beverages, except beer; distilled spirits produced in Mexico in accordance with specific standards," finding that applicant "fail[ed] to show a bona fide intention to use the mark in a real and legitimate commercial sense on the identified goods in United States commerce at the time it filed [its] application." Tequila Cuadra S. de RL de CV v. Manufacturera de Botas Cuadra, S.A. de C.V., 2025 USPQ2d 729 (TTAB 2025) [precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Opposer had the initial burden to establish a prima facie case that applicant lacked a bona fide intent to use the mark on the identified goods on the filing date of its application. "The absence of any documentary evidence on the part of an applicant regarding such intent constitutes objective proof sufficient to prove that the applicant lacks a bona fide intention to its use its mark in commerce." "If an opposer establishes a prima facie case, the burden shifts to the applicant to rebut that prima facie case by producing evidence which would establish that it had the requisite bona fide intent . . . ."

Tequila Cuadra relied on Botas’s discovery responses, wherein Botas acknowledged that it had no communications with the necessary regulatory authority in the United States concerning the production and sale of any CUADRA-branded alcoholic beverage, and it provided no invoices, no contracts, no labels, no formulas, no applications for regulatory approval, no purchase orders, no business plans, and no meeting minutes. Botas conceded that the only documents it relied upon were “documents showing Applicant’s ownership and/or control of the land, facilities, equipment and personnel necessary to produce and market the Identified Goods in U.S. commerce under the CUADRA mark.” Those documents related, however, to Botas’s foreign capacity (i.e., its part-ownership of various wineries outside the United States).

This prima facie showing by the opposer shifted the burden of production onto applicant. (Of course, the ultimate burden of persuasion remained on opposer.) Applicant submitted documentary evidence - including advertising, social media posts, and Internet web pages showing bottles labeled CUADRA -  and testimony regarding its part ownership of several wineries in Mexico. However, its evidence fell short of rebutting opposer's prima facie case.

The Board noted that applicant's labels for the CUADRA-branded bottles of alcoholic beverages had Spanish-language text and did not appear to be targeted to U.S. consumers. The social media posts came from the account of Vinedo San Miguel (e.g., Facebook and Instagram), not applicant’s account. Nothing in the social media posts indicated an intention to specifically target U.S. alcoholic beverage consumers. "[E]ven if United States consumers engaged with these ads, that would not prove Applicant’s intent to offer alcoholic beverages under the CUADRA mark in the United States on March 20, 2020 when the application was filed."

Applicant relied heavily on the principle that "an applicant’s capacity to market and/or manufacture the identified goods is evidence that weighs against a finding that an applicant lacked bona fide intent to use." Swatch AG v. M. Z. Berger & Co., Opp. No. 91187092, 2013 TTAB LEXIS 515, at *45 (TTAB 2013), aff’d, 787 F.3d 1368 (Fed. Cir. 2015). However, there was no evidence of applicant's capacity to produce alcoholic beverages. Instead, it relied on the capacity of its commonly owned winegrowers based in Mexico. The Board was not impressed.

Even considering the capacity of the commonly-owned winegrowers, such as Vinedo San Miguel, Applicant failed to produce any communications between it and those commonly-owned winegrowers discussing even a plan to produce a CUADRA-branded alcoholic beverage, let alone any documents or testimony demonstrating that concrete steps have been taken towards bringing such a product to the U.S. market (or any other market)

Finally, the Board observed that, even applicant’s testimony and documentary evidence were taken as supporting "a bona fide intent to use the CUADRA mark in connection with alcoholic beverages generally (e.g., in Mexico), the record as a whole does not support a finding of a bona fide intent to use the mark in United States commerce." (Emphasis by the Board).

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TTABlogger comment: Opposer also claimed a likelihood of confusion with its identical mark for tequila, but the Board found it unnecessary to consider that claim. 

Text Copyright John L. Welch 2025.

TTABlog Test: Are Leather Bags Related to Cosmetics Under Section 2(d)?

The USPTO refused to register the mark HUELLA for leather bags, leather wallets, and similar leather goods, finding confusion likely with the identical mark registered for cosmetics and make-up. The first DuPont factor weighed "heavily" in favor of affirmance, putting the applicant behind (or under) the 8-ball. But what about the goods? How do you think this appeal came out? In re Huella Studio LLC, Serial No. 97751731 (May 7, 2025) [not precedential] (Opinion by Judge Christen M. English).

The Board found "an inherent relationship" between leather bags and cosmetics. "Applicant’s leather bags are broad enough to encompass leather makeup bags for storing cosmetics." "Complementary or companion use has long been recognized as a relevant consideration in determining a likelihood of confusion. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567 (Fed. Cir. 1984)."

Moreover, Examining Attorney Ashton Copeland submitted 15 third-party use-based registrations, along with website screenshots showing 11 third parties using a particular mark for both cosmetics and leather bags.

Applicant argued that the cited marks "are famous designer brands that are often associated with 'the practice of designers to licensing their names for a wide variety of goods.'" Because "[t]he Examiner has not cited any evidence that either the owner of the cited mark or Applicant" are designers, Applicant asserted this evidence does not support a conclusion that the goods are similar or commercially related.

The Board agreed that in some cases "the marks of well-known or famous designers may have more limited probative value in demonstrating relatedness because consumers are more cognizant that such designers tend to use their marks on a wide variety of goods. Cf. In re Donnay Int’l, Societe Anonyme, Ser. No. 74160268, 1994 WL 515456, at *1, n.3 (TTAB 1994)."

Here, however, the third-party use evidence corroborates the evidence of inherent relatedness and supports that consumers encounter these inherently related goods in the marketplace in a manner that would lead consumers to believe they emanate from a common source. * * * The third-party use also corroborates the numerous third-party registrations showing that it is common for third-parties to register a single mark for both cosmetics and leather bags.

And so, the Board found that the second DuPont factor supported the refusal to registar.

As to channels of trade and classes of consumers, the application and cited registration contain no pertinent limitations, and so the Board must presume that the goods travel in all normal channels of trade to the usual classes of consumers (the general public).

In this case, the presumption regarding the channels of trade and classes of customers is confirmed by additional evidence, such as the excerpt from the HERMÈS website showing cosmetics sold side-by-side cosmetic bags, as well as six websites showing designer retailers selling both cosmetics and leather bags. Collectively, this evidence supports a finding that the goods are offered in at least one common channel of trade, namely, websites operated by third-party designer retailers.

Concluding that all the relevant DuPont factors supported the refusal, the Board affirmed.

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TTABlogger comment: Are handbags, cosmetics, jewelry, and clothing all related for Section 2(d) purposes? 

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB: US SPACE FORCE Falsely Suggests a Connection with the United States

The CAFC upheld the Board's decision [TTABlogged here] affirming a Section 2(a) refusal to register the proposed mark US SPACE FORCE for a variety of goods in ten classes, including license plate frames, umbrellas, pillows, and toy spacecraft. The Board found that the mark falsely suggests a connection with the U.S. Space Force, a branch of the U.S. Armed Forces and a U.S. governmental institution. The CAFC ruled that the mark falsely suggested a connection with the United States (not just the Space Force), since the U.S. Space Force is an instrumentality of the United States. In re Thomas D. Foster, APC, 2025 USPQ2d 727 (Fed. Cir. 2025) [precedential]

Section 2(a) of the Lanham Act bars registration of a trademark that may “falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols." The Act defines "person" as including "the United States [and] any agency or instrumentality thereof." See Section 45.

Applicant Foster argued that (1) the Board improperly considered facts that post-date the application’s filing date and (2) the Board’s findings of fact under the first two parts of the four-part false connection test were not supported by substantial evidence. The CAFC disagreed.

Timeliness of the Evidence: In what appears to be an issue of first impression, the court held that "[t]he false connection inquiry can . . . include evidence that comes into existence during the examination process." It concluded that examination continued through the Board's December 12, 2022 denial of Foster's request for reconsideration of the Board's original decision of September 19, 2022. [Is the Board's reconsideration of its own decision really part of the "examination process"? - ed.] Foster failed to show that the Board relied on evidence that post-dated the decision on reconsideration, and so the court concluded that the Board did not err with regard to its assessment of the evidence.

False Connection: To establish that a proposed mark falsely suggests a connection with a person or an institution under Section 2(a), it must be shown that: 

•  (1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; 
•  (2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; 
•  (3) the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and 
•  (4) the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

The Board found that all four elements of the test were satisfied, but Foster contended that the Board’s findings as to the first two were not supported by substantial evidence. The CAFC noted: 

As an initial matter, the mark need not be identical to the name or identity. It would suffice if the US SPACE FORCE mark falsely suggests a connection to the United States, even if the U.S. Space Force entity had not come into existence. The issue is whether the US SPACE FORCE mark falsely suggests a connection to the U.S., which undeniably has been used. [sic!]. In this case, however, the United States was using the entirety of the mark, U.S. Space Force, during the relevant time.

The CAFC concluded that substantial evidence supported the Board's finding that Foster's mark "is the same as or a close approximation." [of the United States? of the U.S. Space Force? -ed.].  President Trump announced the creation of the U.S. Space Force in 2018, and it was established in September 2019 amidst continuing news coverage.

Likewise, substantial evidence supported the Board finding that Foster's mark "points uniquely and unmistakably to the United States, particularly a military branch called the U.S. Space Force:" The court again pointed to President Trump’s announcement and subsequent coverage in major news publications. In fact, the court noted, the mark and name are identical.

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TTABlogger comment: Applicant Foster is an IP attorney. He handled the appeal. WYHA? In my view, the court's discussion and analysis of the evidence was neither clear nor helpful. Why didn't it just stick with the Board's conclusion that Foster's mark falsely suggested a connection with the U.S. Space Force?

P.S.: Examination by the Examining Attorney ended on January 28, 2022. Maybe the CAFC picked the wrong date for the cut-off of evidence. However, it seemingly didn't make any difference anyway.

Text Copyright John L. Welch 2025.

Petitioner Failed to Prove "Standing" for Cancellation of KINNEY SHOES Registration

In this clash of pro se parties, both of whom appear to be in the business of disinterring defunct  trademarks (a/k/a "zombie" marks), Petitioner Superior Brands, LLC sought to cancel a Supplemental Registration owned by Retrobrands America LLC for the word mark KINNEY SHOES for "On-line retail store services featuring high-end designer shoes, orthopedic shoes, sailing shoes, and metal tipped work boots not including dancing shoes or any dancing related apparel." Superior claimed priority and likelihood of confusion with the mark shown below, for footwear, the subject of Superior's pending i-t-u application. Unfortunately for Superior, it failed to prove its entitlement to a statutory cause of action. Superior Brands, LLC v. Retrobrands America LLC, Cancellation No. 92081356 (April 29, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

The original "Kinney Shoes" was a large shoe retailer that ceased operation in the 1960s. The two combatants in this case applied to register their respective marks early in the current decade. Superior appears to have the earlier constructive use date for priority purposes

However, before reaching the substantive issue of priority and likelihood of confusion, Superior had to establish its "standing" - i.e., its entitlement to a statutory cause of action.

To satisfy its entitlement to the cause of action, the plaintiff must demonstrate: (i) an interest falling within the zone of interests protected by the statute; and (ii) proximate causation. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 120-37 (2014)); id. at 1305 (applying Lexmark to inter partes TTAB cases).

The zone-of-interests requirement may be satisfied by proving a real interest in cancelling the registration, and proximate causation is shown by demonstrating a reasonable belief in damage by the continued registration of the challenged mark. Id. at 1305-06.

Superior pleaded ownership of a pending intent-to-use application for its mark, which was refused registration based on a likelihood of confusion with Respondent’s registered mark. These allegations, if proven, will generally suffice to establish a plaintiff’s "standing." Superior made the appropriate allegations, but it didn't prove them.

The Board observed that a plaintiff’s pleaded pending application is not automatically of record, but may be introduced as evidence at trial by filing under notice of reliance a copy thereof showing current status and title, or through witness testimony about its ownership and status. Petitioner attached a copy of its pleaded application with its original Petition to Cancel, as well as a copy of the Office Action refusing registration of its mark. Not good enough, said the Board.

Trademark Rule 2.122(c) provides that, except for pleaded registrations, “an exhibit attached to a pleading is not evidence on behalf of the party to whose pleading the exhibit is attached, and must be identified and introduced in evidence as an exhibit during the period for the taking of testimony.” 37 C.F.R. § 2.122(c).

Superior never submitted these documents into evidence, either by way of notice of reliance or witness testimony. "Without such evidence, Petitioner has failed to prove the underpinning allegations in the amended Petition to Cancel that would establish its entitlement to a statutory cause of action. This failure, alone, is a sufficient basis to dismiss this proceeding."

The Board gave Superior another kick in the shins: Because Superior's priority was based on its ownership of the pending trademark application, its failure to put that document into evidence meant that it couldn't prove priority. "Accordingly, Petitioner’s Section 2(d) claim fails on this basis."

And so, the Board denied the petition for cancellation.

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TTABlogger comment: Harsh. What can Superior do? In a civil action under Section 1071 for review of a Board decision, a plaintiff is entitled to introduce new evidence. Would Superior be able to overcome the Board's ruling by submitting the missing documents?

Text Copyright John L. Welch 2025.

The Trademark Reporter's 2025 "Annual Review of European Trademark Law"

The Trademark Reporter has published its "Annual Review of European Trademark Law," with contributions from an impressive roster of authors from across Europe. The volume may be downloaded here. Willard Knox, Staff Editor-in-Chief, comments as follows:

In this annual compendium, TMR authors Tom Scourfield, Jordi Güell, Martin Viefhues, and Alicja Zalewska-Orabona (plus contributors from around the globe) share their analysis of (and insights into) key European trademark cases rendered by courts in 2024 in the European Union (at both the EU and national levels), the United Kingdom, and other European jurisdictions.

Be sure to catch Tom, Jordi, and Alicja in San Diego at their session “Annual Review of Leading Case Law in Europe” on Tuesday, May 20, 2:30 pm–3:30 pm.

And on Wednesday, May 21, 2:30 pm–3:30 pm, you'll want to catch Ted Davis and John L. Welch at their "Annual Review of U.S. Federal and State Case Law and TTAB Developments" session.

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. 2 (March-April 2025).

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Text Copyright John L. Welch 2025.

SWIPE LEFT Merely Descriptive of, and Fails-to-Function as a Source Indicator for, Matchmaking Software, Says TTAB

The Board upheld refusals to register the mark SWIPE LEFT for (1) "Downloadable software in the nature of a mobile application for internet-based dating and matchmaking" on the grounds of mere descriptiveness and failure-to-function, and (2) internet-based dating services on the ground of failure-to-function. Two expert surveys submitted by Applicant Tinder were of limited probative value and failed to demonstrate "that potential consumers understand the phrase 'swipe left' as a source [indicator] for Applicant’s goods or services." In re Tinder LLC, Serial Nos. 86608903 and 86680923 (May 2, 2025) [not precedential] (Opinion by Judge Mary Beth Myles).

Mere descriptiveness/the mobile app: The Board found the record "replete with evidence establishing that 'swipe left' has a clear meaning in the context of mobile applications, touchscreens or computers: it describes an action a user takes to navigate software." The evidence also supported Examining Attorney Kristen Z. Wu’s determination that "swipe left" is used "to describe the action taken in a mobile dating application such as Applicant’s to reject or express disinterest in a potential match."

Tinder argued that its two surveys (McDonald and Butler) show that "SWIPE LEFT already functions as a mark, in the sense that the majority of consumers currently associate the phrase and its use with Applicant and/or the TINDER® dating application rather than viewing the phrase as merely descriptive." The Board pointed out, however, that the subject application was based on intent-to-use, and there was no evidence in the record of any use of the mark with mobile apps. In its reply brief, Tinder switched gears, claiming that the McDonald survey was designed "to test the Examining Attorney’s factual conclusion" that "swipe left" is commonly used in everyday speech to convey rejection or disagreement. The Board noted that the McDonald Survey "is therefore more appropriately considered in connection with the failure to function."

In any event, the probative value of each of the surveys was limited. The McDonald Survey failed, for example, to include “any sort of ‘mini-course’ that would include a test of the understanding of the survey participants as to whether something functions as a mark."

While Applicant acknowledges that it has not yet used the term as a source identifier in connection with the applied-for goods, many respondents nevertheless “associated” the phrases “Swipe Right/Swipe Left” with a dating application such as TINDER®. If anything, this suggests that, while consumers have not been exposed to the phrase “swipe left” as a source indicator for a mobile dating application, they “associated” the phrase with mobile dating applications, because it describes a well-known action taken by consumers while using software such as Applicant’s TINDER® application.

The Butler survey was conducted in 2019, and so "[t]he probative value of the survey is therefore somewhat diminished by the passage of time." Moreover, the survey was designed to test acquired distinctiveness, not mere descriptiveness. Again, respondents were not provided with a mini-course regarding the concepts of distinctiveness or descriptiveness. Moreover, the fact that respondents "identify" the phrase "swipe left" with Tinder "does not suggest that respondents view the phrase as inherently distinctive." "Instead, it is at least equally likely that respondents 'identify' the phrase 'swipe left' with Applicant's dating service offerings, because it describes a gesture used to interact with Applicant’s application."

In conclusion, the Board had "no doubt" that SWIPE LEFT is merely descriptive of Tinder's mobile matchmaking app.

Failure-to-Function/mobile app and services: The Board observed that "mere descriptiveness" is one form of failure-to-function. The examining attorney also contended that the phrase “swipe left” has become a commonly used expression “to refer to rejection and conveys being disinterested” both in the field of dating and “colloquially … in other contexts." This latter form of failure-to-function applies "regardless of how it is actually used by Applicant."

The key issue was consumer perception of the proposed mark. The examining attorney provided five separate sources, including the MacMillan Dictionary, "all identifying swipe left' as having a similar meaning, i.e., to find unattractive or to reject." Numerous examples of third-party websites showed use of "swipe left" to mean rejecting someone as a potential romantic partner, and in "its more general sense in a variety of contexts, signifying use of the phrase to convey rejection." The phrase also appears ornamentally on various product unrelated to dating or matchmaking software or services.

The record here supports a finding that, notwithstanding Applicant’s claim to have coined the term, “swipe left” now conveys a widely-understood meaning of rejection both inside and outside the context of dating.

Relying again on its two surveys, Tinder argued that consumers “associate" the phrase with the Tinder app. The Board was unmoved: "the fact that respondents 'associate' the phrase with Applicant is not an indication that consumers view it as potentially source identifying." The Board found that "neither survey demonstrates that potential consumers understand the phrase 'swipe left' as a source of origin [source indicator? - ed.] for Applicant’s goods or services."

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TTABlogger comment: Tinder owns registrations for the mark SWIPE for mobile app software and for dating services. Its applications to register SWIPE RIGHT are on appeal to the Board but are suspended pending the outcome of this SWIPE LEFT appeal.

Text Copyright John L. Welch 2025.