Three Recent TTAB Inter Partes Decisions: a Mixed Bag of Defeats for the Plaintiffs

Here for your consideration are three recent Board decisions. The plaintiff lost in each one: for lack of standing, failure to prove priority, and failure to prove lack of bona fide intent.

California Wheel Distributor Inc. v. Peregrine Automotive, LLC., Cancellation No. 92080626 (June 26, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington) [The Board denied this petition for cancellation of a registration of the mark REVENGE AUTO PARTS for “on-line wholesale and retail store services featuring auto parts,” because the petitioner failed to prove its statutory standing. Petitioner alleged nonuse and abandonment and claimed that it had standing to bring the petition because its application to register the mark REVENGE was blocked by the challenged registration. However, it failed to submit a copy of the file history of its application and there was no other supporting evidence.]

Schiebel Industries AG v. Camera Copters, Inc., Cancellation No. 92071596 (June 25, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.) [The Board denied this petition for cancellation of the mark CAMERA COPTERS, in word-and-design form, because Petitioner Schiebel failed to prove priority. Schiebel claimed prior common law rights in the mark CAMCOPTER and alleged use of the mark since 2009, but it failed to put its sales figures in competitive context, and its long use of the mark was by itself insufficient to establish acquired distinctiveness for its highly descriptive mark.]

Retrobrands USA LLC v. Data Access Sarl, Opposition No. 91283839 (June 24, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen) [The Board dismissed this six-year-old opposition to registration of the mark HELENE CURTIS for cosmetics and hair care products because Opposer Retrobrands failed to prove its claim that the applicant lacked a bona fide intent to use the mark. The Board found that applicant had shown "both the capacity to market and/or manufacture perfumes and cosmetic-type products, having produced them in the past under different marks." Although applicant did not have a detailed business plan, the Board found that applicant's assertion that it "believes such [a detailed plan] is unnecessary in view of Applicant’s prior experience" was reasonable.]

Read comments and post your comment here.

TTABlogger comment: Retrobrands has lost several other TTAB cases in its attempts to revive "zombie" marks, including CHICLETS and KINNEY SHOES.

Text Copyright John L. Welch 2025.

TTABlog Test: Is "USNA" Merely Descriptive of Cosmetics?

The USPTO refused to register the proposed mark KECA’S USNA for “Cosmetics" because the applicant failed to disclaim the word USNA. There was no dispute between the applicant and Examining Attorney Michael FitzSimons that USNA is a Croation word meaning "lips," but there was a dispute as to whether "Croatian is a common, modern language and whether other West Balkan languages in the standardized Serbian-Croatian language family . . . translate 'USNA' as 'lip,' broadening the number of people in the United States that understand USNA as 'lip' in English." Whether consumers would "stop and translate" the term, and whether the term is merely descriptive of the goods were the remaining issues. How do you think this came out? In re Monica Walls, Serial No. 98049431 (June 25 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board first found that Croatian is a modern language, since it is spoken in Croatia and elsewhere. As to whether the language is common, "it is enough to demonstrate that an 'appreciable' number of Americans are capable of translating the term USNA from Croatian into English."

“The doctrine should be applied only when it is likely that the ordinary American purchaser would ‘stop and translate [the word] into its English equivalent.’” For purposes of the doctrine, the “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English."

Given that Bosnian, Croatian, Montenegrin and Serbian are mutually intelligible among each other and are considered “nearly identical” in vocabulary and grammar, we consider the census and other website information relating to the “Serbo-Croatian” language family probative.

The Board observed that there is no "minimum threshold number of speakers of a foreign language that is required for the language to be considered a “common” one in the United States."

[T]he evidence in the record shows, among other things, there are sizeable global populations of Serbo-Croatian (BCMS) speakers, a significant number of people from Balkan Peninsula countries living in major cities in the United States, evidence that Serbo-Croatian (BCMS) languages are taught by well-known and major U.S. universities, and U.S. census evidence that speakers of the Serbo-Croatian language in the home is over 240,000. Given this evidence, we do not view Croatian as obscure.

The next question was whether the relevant consumer would stop and translate USNA. The Board concluded that USNA has a clear, descriptive meaning in the context of applicant's goods, consumers familiar with the Croatian word USNA likely will focus on that meaning.

The Board noted that under the CAFC's recent VETEMENTS decision, "the burden is on the party opposing translation to show that it is unlikely the ordinary American purchaser would stop and translate the foreign term into its English equivalent."

The Board found that applicant had not met her burden "to show that Croatian is an obscure language or that an American consumer would not stop and translate USNA into its English equivalent, “lip,” in the context of Applicant’s goods."

Finally, the Board found that since applicant's cosmetic products are lipstick or lip gloss, the term "lip" is merely descriptive of applicant's goods.

And so, the Board upheld the disclaimer requirement but gave the applicant thirty days to submit the required disclaimer.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2025.

WYHA? TTAB Finds VITAWHEY Confusable with VITAWAYS for Dietary and Nutritional Supplements

Keep moving! Not much to see here. The Board upheld a Section 2(d) refusal of the mark VITAWHEY in the form shown below, for dietary and nutritional supplements "principally comprised of whey protein," finding confusion likely with the registered mark VITAWAYS for, inter alia, "dietary and nutritional supplements." Among other losing arguments, applicant noted that the registrant does not sell whey-protein supplements, but no way was that helfpful to its cause. In re Evlution Nutrition, LLC, Serial No. 98502228 (June 23, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Applicant conceded that the marks are phonetically similar. "The Board has  . . . found that similarities in pronunciation can lead to confusion notwithstanding distinctions in spelling."

We find that the nonidentical WHEY/WAYS endings do not offset the cumulative effect of the marks’ other similarities. Overall, the marks are very similar, regardless of what meaning, if any, might be assigned to the identical VITA- prefixes.

Although applicant's identifation of goods has a qualifier (the "whey" limitation), the registration has no qualifiers. "That means it covers all dietary and nutritional supplements, including those, like Applicant’s, principally containing whey protein."

As to applicant's assertion that registrant does not sell whey-specific supplements, the Board pointed out that "what the owner of the cited registration might or might not currently sell is irrelevant."

In sum, the goods are identical in part, and the second DuPont factor supported the refusal. The identical goods presumably travel through the same trade channels to the same classes of consumers.

Applicant asserts that its customers are "bodybuilders/athletes/other protein powder consumers who are interested in a whey-based powder” and that the customers who purchase goods offered by the owner of the registered mark are general consumers of vitamins. To the extent Applicant implies that consumers of dietary and nutritional supplements bearing the registered mark are different from its own customers, we reject the implication. The lack of restrictions in the registered mark means that all consumers of dietary and nutritional supplements—even that subset who are bodybuilders, athletes, and other protein powder consumers—are included.

Applicant claimed that the consumers of supplements are "sophisticated," but provided no supporting evidence. Nor was there evidence that the purchase of supplements may be an "impulse purchase. And so, the Board considered this factor to be neutral.

Finally, applicant argued that "vita" is a weak formative due to third-party use but again provided no supporting evidence. It feebly suggested that the USPTO’s “own database could confirm” its assertion, but the Board does not take judicial notice of registrations.

Since the relevant DuPont factors favored affirmance or were neutral, the Board sustained the refusal.

Read comments and post your comment here.

TTABlogger comment: Well, would you have?

Text Copyright John L. Welch 2025.

Recommended Reading: The Trademark Reporter, May-June 2025 Issue

The May-June 2025 (Vol. 115 No. 3) issue of the Trademark Reporter has arrived. [pdf here]. The issue is dedicated to past TMR Editor-in-Chief and prolific TMR contributor, Jerre B. Swann. 

Willard Knox, Editor-in-Chief, summarizes the contents as follows (and below): "This issue offers readers an article examining single-color trademarks through the lens of the author’s own quantitative empirical investigation, an article exploring the intersection of trademarks and minority languages, an article supplying a toolkit for protecting certification marks under U.S. law, a commentary giving an insider’s perspective on successful genericness surveys, and a review of a comprehensive book on vitiviniculture and trademarks."

In Memoriam: Jerre B. Swann (1939–2025), by William H. Brewster, Theodore H. Davis Jr. and R. Charles Henn.

Should We Worry About Color Depletion? An Empirical Study of USPTO Single-Color Trademark Registrations, by Dr. Xiaoren Wang. In this cutting-edge article, returning TMR author Dr. Xiaoren Wang examines single-color trademarks—and the potential for color concentration and depletion—through the lens of her own quantitative empirical study of data from the United States Patent and Trademark Office.

Multiculturalism, Minority Language Rights, and Trademark Law: Protecting the Less-than-Average Consumer, by Ilanah Fhima. In this timely article, returning TMR author Ilanah Fhima argues that the approach to which trademarks are registered, and the scope of protection afforded them once registered, play an important role in recognizing minority interests—in particular, minority languages—in a multicultural society.

Keeping Promises: Enforcement Strategies for Certification Marks in the United States, by B. Brett Heavner and Caroline Segers. In this practitioner-focused article, returning TMR author B. Brett Heavner and first-time TMR author Caroline Segers offer brand owners an enforcement toolkit to proactively protect their certification marks under U.S. law.

Commentary: Oh, Snap! A Shift in Consumer Perception Surveys in Genericness Litigations After Snap Inc. v. Vidal, by David H. Bernstein, Jared I. Kagan, and Daniel N. Cohen. In this incisive commentary, returning TMR author David H. Bernstein and first-time TMR authors Jared I. Kagan and Daniel N. Cohen give an insider’s perspective on the genericness surveys conducted in the Snap Inc. v. Vidal case and offer practical guidance for future genericness litigations.

Book Review: Les grands arrets du droit vitivinicole Sous la direction de Théodore Georgopoulos. Reviewed by Mathilde P. Florenson. First-time TMR author Mathilde P. Florenson offers readers her English-language review of this French-language book concerning viti-viniculture—from grapevine growth and cultivation (viticulture) to the art and science of making wine (viniculture) and its trade—and trademarks.

Read comments and post your comment here.

TTABlog comment: This issue of the TMR is Copyright © 2025, the International Trademark Association, and is made available with the permission of the Trademark Reporter®.

Christina Hieber Named TTAB Acting Chief Administrative Trademark Judge

The USPTO announced last week that Christina Hieber has been named Acting Chief Administrative Trademark Judge at the Trademark Trial and Appeal Board.

Christina Hieber is the Acting Chief Administrative Trademark Judge of the Trademark Trial and Appeal Board (TTAB). In this role, she leads the TTAB as it hears and decides appeals by trademark applicants—including final refusals of registration, oppositions brought by outside parties to challenge approved trademark applications, and petitions filed by outside parties to cancel trademark registrations—and determines geographic division of territories for marks involved in concurrent use proceedings.

Previously, Ms. Hieber served as the Senior Counsel for Trademark Policy and Litigation in the Office of the Solicitor at the USPTO. In that role, she defended decisions of the USPTO Director and the TTAB in cases before the Federal Circuit and district courts. She also provided advice and guidance to the USPTO Director, Commissioner for Trademarks, the TTAB, and other agency officials on trademark-related matters.

Before joining the Solicitor’s Office in 2006, Ms. Hieber was in private practice at a large intellectual property law firm in Washington, D.C., where her practice focused on trademark and unfair competition matters.

Ms. Hieber received her JD from the George Washington University Law School and her undergraduate degree from Dartmouth College.

Read comments and post your comment here.

Text Copyright John L. Welch 2025.

POWER CAPSULE and POWER TUNNEL Merely Descriptive of Energy Storage Containers, Says TTAB

The Board affirmed Section 2(e)(1) refusals of the proposed marks POWER CAPSULE and POWER TUNNEL, finding the terms merely descriptive of the identified goods: Compressed air containers made of metal for energy storage; water and gas containers made of metal for energy storage; Electricity generators, Compressed air, water, and gas containers for energy storage being an integral component of alternative energy generation power plants. In re Power8 Tech Inc., Serial Nos. 97455448 and 97455459 (June 13, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

POWER and CAPSULE: Examining Attorney Gisele Agosto Hincapie submitted dictionary definitions of the word POWER as well as copies of 17 third-party registrations with disclaimers or Section 2(f) claims for the word "power" used with energy generation or storage. As to CAPSULE, in addition to a dictionary definition, the Examining Attorney pointed to applicant's statement the goods consist of "sealed containers," as well third-party pages describing patents indicating that “capsule” is a shape used in the energy industry.

POWER and TUNNEL: The record included a webpage describing how tunnels are used in pumped storage hydro plants, together with applicant's concession that "the goods do and will consist of tunnels that allow for the generation of power."

The terms CAPSULE and TUNNEL are merely descriptive of a main feature of Applicant’s goods – the containers and/or tube-shaped structures which combine water and air so as to create the pressure necessary to create and store power.

The Board rejected Applicant’s argument and evidence that each term also has alternate non-descriptive definitions, pointing out that descriptiveness is not viewed in a vacuum but “is considered in relation to the particular goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use."

The Combined Terms: Applicant’s promotional material described POWER CAPSULE as technology incorporated in Applicant’s compressed air pumped-storage hydroelectricity energy storage system, which combines energy generation and energy storage, leading the Board to conclude that the combined term POWER CAPSULE is merely descriptive of Applicant’s goods.

Applicant argued, without success, that the term POWER CAPSULE is not merely descriptive because it does not have a well-defined meaning in the energy industry; because the combination creates a double entendre; and because similar marks combining POWER and a term for a container (POWERBOX and POWER PUCK) have been registered. First, the Board pointed out that "the fact that an applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive.” Second, although POWER CAPSULE in the abstract has more than one meaning (e.g., health supplements) the relevant consumer of applicant’s goods will perceive POWER CAPSULE as connoting both generators and containers for power and health supplements. And third, each case must be decided on its own record.

As to POWER TUNNEL, the Board was unmoved by the argument that POWER TUNNEL is not merely descriptive because a “consumer would not be able to guess what the mark is used for,” and “similarly situated third party registrations demonstrate that marks containing the terms ‘POWER’ and a generally descriptive structure are registrable on the Principal Register." As to the first argument, as discussed above, mere descriptiveness is not a guessing game; the proposed mark must be considered in the context of the identified goods. As to the second, the Board pointed out again that each case must be decided on its own record.

In sum, we find that prospective purchasers of the identified goods in Class 6, 7, and 11 who encounter the terms POWER CAPSULE and POWER TUNNEL will be immediately informed that Applicant’s goods involve generating and storing energy. The terms are merely descriptive of the goods.

Read comments and post your comment here.

TTABlogger comment: The double entendre argument is rarely successful. Here's a case where it worked: In re LedgerDomain LLC

Text Copyright John L. Welch 2025.

WYHA? TTAB Finds DOCRETENTION Merely Descriptive of Document Retention Software

The Board sustained the USPTO's refusal to register the proposed mark DOCRETENTION for downloadable software and SAAS for generating, editing, managing, accessing, merging, distributing, protecting and securing documents, files and data, on the ground of mere descriptiveness under Section 2(e)(1). Would you have appealed? In re Inkit Inc., Serial No. 97915050 (June 17, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Examining Attorney Ian Krussman relied on evidence that “doc” is a known abbreviation for “document” and that “retention” means the act of retaining or the state of being retained. He also submitted evidence of third parties using the term “document retention” when describing their software or services for retention of documents and data. Screenshots from applicant's website discuss its tools for “retention and deletion of sensitive documents,” and tout its products and services as “allow[ing] businesses to completely automate the end-to-end creation, sending, signing, and retention of documents.”

All this evidence makes clear that many companies offer software and related services for retention of digital documents and data, Applicant among them. DOCRETENTION is descriptive of such services, putting together a known abbreviation for the term “document” with the term “retention.”

Applicant feebly argued that “doc” could mean “doctor,” and so consumers could think that DOCRETENTION refers to a state or medical institution keeping its doctors. The Board pointed out, however, that the mark must be considered in the context of the identified goods and services; "[w]e are required to assume that the consumer knows what the goods and services in the application are and determine whether the proposed mark conveys information about those known goods or services."

Next, applicant contended that no one else uses the exact term DOCRETENTON, but again it missed the mark. "That an applicant is the first to use a term and others have not yet done so does not mean the term is not merely descriptive of the applicable goods or services if the evidence otherwise shows that is how consumers will perceive it."

Then, applicant contended that the Examining Attorney improperly dissected the mark. Wrong again. "T]here’s nothing wrong with assessing the descriptiveness of the component terms so long as the ultimate determination rests on perception of the mark as a whole."

Finally, applicant pointed to other several decision involving other marks, and to several registrations for marks including the terms "DOC" or "DOCU," but the Board pointed out for the umpteenth time that each application to register must be consider on its own record.

Applicant urged the Board to resolve any doubt in its favor, but the Board had no doubt, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: A collection of losing arguments for a mere descriptiveness refusal.

Text Copyright John L. Welch 2025.

TTABlog Test: Are Jewelry and Underwear Related Under Section 2(d)?

The USPTO refused to register the mark BRIGHT STAR for jewelry, finding confusion likely with the identical mark registered for "Athletic footwear; Caps; Men’s dress socks; Socks; T-shirts; Thermal socks; Underwear." The first DuPont factor weighed "heavily" in favor of affirmance, but what about the goods? How do you think this came out? [Don't be cynical and say that clothing is related to everything.] In re H.K. Designs Inc., Serial No. 90283406 (June 16, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Applicant asked the Board to take judicial notice that “registered marks that commence with BRIGHT are extremely common, numbering in the hundreds, and there are a few in Class 14 as well.” The Board, however, does not take judicial notice of third-party registrations.

Applicant argued that its goods and Registrant’s goods are non-competitive, do not overlap, and are unrelated. The Board observed that goods need not be identical or even competitive in order to find a likelihood of confusion. They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” Moreover, the Board noted, when the marks are identical, a lesser degree of relatedness is necessary to support a finding of likelihood of confusion.

Examining Attorney Christopher McMillan submitted internet website excerpts showing that some retailers who offer socks, underwear, t-shirts and hats also offer jewelry: for example, Forever 21, Banana Republic, Brooks Brothers, Ralph Lauren, Old Navy, Asos, Guess, and Calvin Klein offer jewelry, socks, underwear, hats and t-shirts.

Applicant criticized the Examining Attorney’s internet evidence, arguing that large online retailers sell “literally EVERYTHING,” leading to “the erroneous conclusion in the modern marketing place that almost all goods are ‘related’ to each other.” "[C]lothing and jewelry are sold in large department stores alongside, or in proximity to each other. HOWEVER, so are jewelry and perfumes, skincare products, kitchen utensils, and many food items, being sold alongside each other.”

The Board was unmoved. The website evidence submitted by the Examining Attorney "appears to be limited to retailers selling clothing and fashion items including accessories (such as hats and belts and jewelry), as opposed to a broad range of goods." Therefore, it found the website evidence to be probative of relatedness.

The Board found the relevant class of consumers for the involved goods to be the same––members of the general public. As to trade channels, the internet website evidence showing the offering of the various clothing and accessories by the same retailers demonstrates that the identified goods in the application and cited registration travel in the same trade channels.

And so, the second and third DuPont factors weigh in favor of likelihood of confusion.

Applicant submitted two third-party registrations for marks that connote either BRIGHT STAR, or contain the term BRIGHT, falling far short of the amount of evidence needed to show conceptual weakness of BRIGHT STAR or the component BRIGHT in connection with the identified goods.

The cited mark is registered on the Principal Register without a claim of acquired distinctiveness and is treated as inherently distinctive. The marks are identical, the goods are related, and the trade channels overlap. Applicant has not shown conceptual weakness of the cited mark, and the sixth DuPont factor is neutral. The first, second, and third factors weigh in favor of likelihood of confusion. We find confusion likely.

Read comments and post your comment here.

TTABlogger comment:  The Section 2(d) deck is stacked against the applicant. Clothing is related to everything.

Text Copyright John L. Welch 2025.

Prior Registration Under 13th DuPont Factor Fails to Save RAIN DANCER From Section 2(d) Refusal

The Board affirmed a refusal to register the mark RAIN DANCER for hard cider, finding confusion likely with the registered mark RAIN DANCE for wine. The marks are "very similar," the goods "closely related," and the trade channels and classes of customers overlapping. Applicant invoked the Strategic Partners decision, arguing that its ownership of a registration for RAIN DANCER for identical goods (hard cider) gave it a free pass, but the Board found that the weight to be accorded this factor was diminished because the prior registration expired almost three years ago. In re Aaron Carson, Serial No. 97763992 (June 11, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

In Strategic Partners [TTABlogged here], the applicant owned a registration for a nearly identical ANYWEARS mark for footwear (the same goods), and the registration had co-existed with the cited registration for more than 5 years, which meant that the applicant’s prior registration was no longer “subject to attack by the owner of the cited registration on a claim of priority and likelihood of confusion." The Board found that, under the 13th DuPont factor, “these facts tip the scale in favor of applicant and a finding of no likelihood of confusion.”

Judge Casagrande provides a helpful explanation of the theory behind the Strategic Partners decision, noting that "a Strategic Partners co-existence circumstance is factual in nature: it’s a piece of evidence that bears on likelihood of consumer confusion."

[I]t’s a bit like another circumstance where we value the view of a prior registrant on the issue of likelihood of confusion. Specifically, when a prior registrant—who is a marketplace participant—expressly and in writing agrees that registration of another’s mark is unlikely to cause confusion (and the agreement provides a factual basis for that conclusion), we generally give such an express written agreement from the owner of a cited registration great weight in determining whether confusion is likely.

However, a Strategic Partners situation does not involve the registrant’s express consent but merely an inference from the registrant’s inaction, and so that inference "may warrant less weight in the confusion calculus than the registrant’s express written agreement would have been given."

The Board noted that the five-year period after the applicant’s first registration "is a significant circumstance because, once that milestone is reached, the first registration is statutorily exempted from the possibility of being cancelled for causing a likelihood of confusion under Section 2(d). See 15 U.S.C. § 1064. When the owner of the cited registration lets that deadline come and go, that has a significance beyond the mere incremental passage of time." [Thankfully, Judge Casagrande did not refer to the prior registration as having been "incontestable" - ed.].

Here, applicant's prior registration co-existed with the cited registration for more than six years, but lapsed due to failure to file the required Section 8 declaration. The Examining Attorney argued that, because the prior registration had expired, applicant could not invoke Strategic Partners because the statutory presumption of validity of the registered mark disappears, making the registration of “no probative value.” The Board disagreed.

But the expiration of the prior registration is not irrelevant. Specifically, where an applicant’s prior registration has expired, how long ago it expired is a relevant circumstance to consider in determining the force of any inference we might draw in a Strategic Partners scenario.

Applicant’s prior registration expired a little less than three years ago. "Three years isn’t that long ago, but neither is it an insubstantial period. So while we still have confidence, absent evidence to the contrary, that the co-existence period is relevant to registrability now, we do not think it warrants as much weight—all other things being equal—as it would have if it still existed."

The fact that the period of co-existence ended nearly three years ago lessens the weight we might otherwise attribute to that factor. In the specific circumstances presented here, given how strongly we think the first four factors favor a conclusion that confusion is likely, we think those four factors collectively outweigh the thirteenth factor. On balance, we conclude that confusion is likely.

Read comments and post your comment here.

TTABlogger comment: Had the prior registration expired only two years ago, would that have changed the outcome? one year?

Text Copyright John L. Welch 2025.

CAFC Reverses TTAB - Remands ECHO D’ANGÉLUS Opposition Due to Lack of Substantial Evidence Supporting Dismissal

The CAFC reversed the Board's decision [here] dismissing in part an opposition to registration of the mark ECHO D’ANGÉLUS for wine, and remanded the case to the Board. The TTAB had found the mark not confusingly similar to opposer's mark ECHO DE LYNCH BAGES, also for wine, placing "great weight" on its finding that the marks "incorporate[d] different-appearing house marks as part of unitary expressions." The appellate court concluded that that finding was not supported by substantial evidence. Chateau Lynch-Bages v. Chateau Angelus S.A., 2025 USPQ2d 861 (Fed. Cir. 2025) [not precedential].

Although neither party "appeared to argue" that the marks included house marks, the Boad "opined" that “[i]t appears that ANGÉLUS and LYNCH BAGES are the parties’ ‘house marks.’” IN support of this finding, the Board observed that applicant owns four registrations that included the term “ANGELUS,” and that opposer’s name and its letterhead contained the phrase “LYNCH BAGES.”

Ultimately, the Board found that “ECHO” had “some conceptual weakness in connection with the goods at issue,” and that “the use of ECHO with D’ and DE followed by the parties’ house marks contributes significantly to the overall commercial impressions of the marks as invoking the respective house marks.”

The Board concluded that the similarities in the marks were outweighed by the dissimilarities and it deemed this the "predominant factor" in its Section 2(d) analysis. The CAFC, however, ruled that this analysis was "flawed" because it was not supported by substantial evidence.

In considering the similarity of the marks, the Board declined to place an emphasis on the common term “ECHO” because it believed that the marks were unitary expressions not dominated by this term. Appx. 21–22. Therefore, the Board’s analysis primarily revolved around comparing the terms “ANGÉLUS” and “LYNCH BAGES.” Here, rather than simply concluding that the substantial differences in the sound, appearance, and commercial impression of these terms rendered the marks dissimilar, see In re i.am.symbolic, llc, 866 F.3d 1315, 1323 (Fed. Cir. 2017), the Board opted to find that the terms “appear” to be the parties’ house marks. Appx. 22.

The Board made the "observation" regarding house marks "based on its own investigation." It did not cite any authority for the proposition that applicant's ownership of multiple registrations with a common term renders that term a house mark, nor did the Board find that those marks had broad use in commerce. Moreover, the evidence that “LYNCH BAGES” was opposer’s house mark was even more sparse.

[T]he Board’s analysis was unclear, as its survey of the case law resulted in a conclusion that “none of [its] precedents” governed the situation that it concocted itself: where the competing marks supposedly contained both a shared word and each party’s house mark.

The Board’s determination that the competing marks contained house marks was erroneous, and because this finding was critical in the Board’s similarity analysis, the conclusion of dissimilarity lacked substantial evidence. Moreover, since the Board gave “predominant” weight to the similarity factor in its DuPont analysis, it is not clear whether the Board would have arrived at the same conclusion of no likelihood of confusion absent this error.

The court therefore remanded the case for additional proceedings consistent with its opinion.

Read comments and post your comment here.

TTABlogger comment: So will the Board allow additional evidence and briefing? Or will it re-do its analysis without the "house mark" wrinkle? How do you think this will come out?

Text Copyright John L. Welch 2025.

TTABlog Test: Are These Two Word-And-Design Marks Confusable for Keys and Key Blanks?

The USPTO refused to register the mark shown below left, for "pre-fabricated metal ignition keys for starting heavy equipment, namely construction and agricultural equipment" [disclaimer of EQUIP KEY CO required], finding confusion likely with the registered mark shown below right, for "metal, brass and aluminum key blanks; metal and aluminum key chains; metal and brass locks, lock cylinders, pad locks and door locks" [representation of a key disclaimed]. The Board affirmed the refusal based on the applicant's failure to comply with the disclaimer requirement. But what about the Section 2(d) refusal? In re EquipKeyCo, LLC, Serial No. 97344289 (June 10, 2025) [not precedential] (Opinion by Judge Albert J. Zervas).

Disclaimer: Dictionary definitions of "equip," "key," and "co" submitted by Examining Attorney Michael Kazazian, convinced the Board that disclaimer of EQUIPKEY CO is required. Applicant's failure to disclaim that term was itself sufficient to support refusal of the application.

The Goods: Internet evidence consisting of webpages from a number of sources established that the same entity commonly provides prefabricated metal ignition keys and key blanks under the same mark. Furthermore, applicant's specimen of use states, “32 of our most popular heavy construction equipment keys on 1 ring …. These are not basic machine key copies. They are designed and manufactured to meet or exceed the quality of most other keys used on heavy construction equipment." Thus, applicant’s goods "are related to key rings – or key chains – because they are used together, with the ring holding the keys."

Trade Channels: The Board found that the internet "is a trade channels for such goods and the DuPont factor involving trade channels favors a finding of likelihood of confusion." [The internet is a trade channel for everything, I suppose - ed.].

Purchaser Care: Because of a lack of evidence, the Board was unable to find that those who operate or own heavy equipment are sophisticated, or take anything but ordinary care, in purchasing low-cost goods. Moreover, applicant did not argue that purchasers of key chains - goods within Respondent’s identification of goods - are sophisticated. The Board therefore found the third DuPont factor to be neutral.

The Marks: The Board observed that "KEYCO" has conceptual weakness and is not a particularly distinctive term for Registrant’s goods. It found this term to be "distinctive, but highly suggestive of Registrant’s identified goods, and an extremely weak source indicator."

Looking at the marks in their entireties, the design portions are very different overall. The literal portions are different as well due to the addition of the term EQUIP. Given the conceptual weakness of the element “KEYCO,” we find that consumers will look to other aspects of these marks to distinguish source, and that the addition of EQUIP and the design elements of Applicant’s mark are sufficient to distinguish it from the cited mark.

Conclusion: The Board found the first DuPont factor to be dispositive, and so it reversed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlogger comment: I'll bet you got it right! BTW: the Board allowed applicant thirty days to submit the required disclaimer.

Text Copyright John L. Welch 2025.

TTAB Finds VORSPRUNG for Electric Vehicle Charging Stations Confusable with VORSPRUNG DURCH TEKNIK for Land Vehicles

The Board affirmed another Section 2(d) refusal, finding the mark VORSPRUNG for various electrical goods for vehicles, including charging stations, confusable with the registered mark VORSPRUNG DURCH TEKNIK (owned by Audi AG) for "Land vehicles and structural parts thereof." Applicant feebly argued that the word VORSPRUNG in its mark has a different meaning than the same word in the cited mark. The Board was unmoved. In re DropNet Ltd, Serial No. 97660649 (June 10, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Marks: Noting that consumers are more likely to recall the first part of multi-part marks and tend to shorten marks, the Board found the marks to be "highly similar" in appearance and sound.

As to meaning, both marks must be translated into English. Applicant translated “Vorsprung” to “Lead” in English. Registrant, during prosecution, translated its mark as "Progress by Technology." This was the basis for applicant's argument that the marks have different meanings. The Board didn't buy it.

Despite the different translations in the records, we find these words mean the same thing in German, as they are identical words used in similar contexts. The cited mark, therefore, could have been translated as “Lead by Technology,” and the applied-for mark could be translated as “Progress.” There is no difference in the words used, and we find, there is no difference in the translated meaning of the word “Vorsprung” for the purposes of this appeal.

The inclusion of the words "by technology" in the cited mark does not create a difference in meaning because "Applicant identifies technical goods for vehicles, and thus, also offers goods that include technology." The Board found the meanings of the two marks to be "effectively identical."

Finally, the Board found no difference in the commercial impressions of the marks. "Both marks suggest forward movement, possibly leadership of that movement, within a technical field (vehicles and their parts). To 'lead' or 'progress' within a technical field suggests these parties provide technically advanced goods of high quality."

In conclusion, the marks are similar in sight, sound, meaning and commercial impression. This fact increases the likelihood of confusion and this factor weighs heavily in our analysis. [Why increases? Why heavily? - ed.]

The Goods: Registrant's "land vehicles" include electric vehicles. Examining Attorney Christine Martin submitted evidence showing that vehicle makers [e.g., Tesla, Ford, GM, VW] often use their marks on both electric vehicles and the chargers and charging stations for electric vehicles. Consumers are "accustomed to seeing electric vehicles (a subset of the “land vehicles” identified in the cited registration), vehicle chargers and charging stations for electric vehicles under a single mark. Therefore, the involved goods are related and the second DuPont factor favors an affirmance of the refusal.

Consumer Care: Applicant insisted that the relevant consumers are "sophisticated" because land vehicles are expensive, but it did not submit any evidence on either point. There was a lack of evidence regarding the price range of land vehicles nor of the pricing of applicant's various electric goods. "Given the limited evidence in the record, we cannot determine the level of customer care for all the goods."

Lack of Confusion: Applicant pointed to the lack of evidence of actual confusion, but the Board pointed out that the application at issue was filed on an intent-to-use basis, and there was no evidence that applicant's mark had been put into use.

Finding the first and second DuPont factors dispositive, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2025.

TTAB Affirms Failure-to-Function Refusal of YOUR BEST CHOICE for Educational Services

The Board upheld another failure-to function refusal, this time of the proposed mark YOUR BEST CHOICE for, inter alia, computer education training services, on the ground that the phrase fails to function as a source indicator under Sections 1, 2, 3, and 45 of the Trademark Act. Applicant's submission of numerous registrations for marks containing the phrases “your best” and “best choice” failed to move the needle in its favor. In re The School Board of Palm Beach County, Florida, Serial No. 98321285 (June 9, 2025) [not precedential] (Opinion by Judge Mary Beth Myles).

Examining Attorney R. Austin Blakeslee submitted numerous examples of third-party use of the phrase YOUR BEST CHOICE in connection with schools and educational services, conveying an informational or laudatory message touting the educational services or schools as the consumers’ “best choice.”

The Examining Attorney also submitted numerous examples of YOUR BEST CHOICE in use across a variety of other industries, conveying the same informational or laudatory message.

Applicant argued that “in almost every case, the words YOUR BEST CHOICE is [sic] used in a full sentence…as part of promotional or descriptive language tailored to specific entities or offerings” and demonstrates that the phrase "is regular English with a regular English meaning." The Board agreed. In fact, that's the point!

Applicant's third-party registration evidence was, of course, irrelevant since each case has to be decided on its own record.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2025.

TTABlog Test: Is PIZZACCIA Merely Descriptive of Pizza and Cheese?

The USPTO refused to register the mark shown below for various food products in classes 29 and 30, including cheese and pizzas, because Applicant Panificio Villa refused to disclaim the word PIZZACCIA under Section 6(a) of the Trademark Act. Examining Attorney Kristin Dahling maintained that the term is merely descriptive of applicant's goods. How do you think this appeal came out? In re Panificio Villa S.r.l., Serial No. 79351998 (June 5, 2025) [not precedential] (Opinion by Judge Robert Lavache).

The Examining Attorney submitted website excerpts from various third-parties referring to restaurants offering "pizzaccia" as a pizza-like food item, a hybrid of pizza and focaccia bread. Applicant argued that the evidence showed that “pizzaccia” could refer to "a type of pizza type meal thrown together [and] containing elements of a pizza and focaccia," and therefore the term is suggestive, not merely descriptive.

The Board agreed that PIZZACCIA refers to a type of pizza with a focaccia base or crust, and that relevant purchasers would perceive the term accordingly. It acknowledged that pizzaccia is described differently in the various website references, "[b]ut the common thread in these examples, and almost all of the other evidence of record, is that PIZZACCIA is being used to identify a food that contains elements of both pizza and focaccia (i.e., dough/bread topped with sauce, cheese, and other toppings)." Applicant's own advertising refers to "THE MOST FOCACCIA PIZZA THERE IS!"

Applicant argued that, because some of the evidence suggests that there may be other names for focaccia-based pizza, including “focizza,” “focaccia pizza,” and “Pizzaccia Romana,” the evidence did not establish descriptive use of PIZZACCIA. The Board was not impressed. "Simply put, the fact that other terms may also be used to refer to a focaccia-based pizza does not preclude a finding that PIZZACCIA is descriptive."

Having concluded that pizzaccia describes a type of focaccia-based pizza, the Board turned to the question of whether the term is merely descriptive of any of Applicant’s identified goods in each class. If so, then the Section 6(a) refusal may be affirmed as to the entire class. See In re UST Global (Sing.) Pte. Ltd., Serial No. 87657822, 2020 TTAB LEXIS 19, at *26 (TTAB 2020)

The Class 30 goods include “pizzas,” “dough,” “pizza dough,” and “bread.” Moreover, the terms “dough,” “pizza dough” and “bread” could include dough and bread for making focaccia-based pizzas and thus PIZZACCIA merely describes a purpose, characteristic, or use of those goods as well.

Likewise, International Class 29 includes, among various other food items, “cheese.” Because the term “cheese” encompasses cheeses intended for use in making focaccia-based pizzas, the term PIZZACCIA directly conveys information to relevant purchasers about the purpose or use of the cheese and thus is merely descriptive.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2025.

Precedential No. 5: TTAB Will Not Accept Incorporation-By-Reference of An Appellant's Prosecution Arguments

The Board wasted little time in affirming a Section 2(e)(2) refusal to register the mark PRINCETON EQUITY GROUP, agreeing with Examining Attorney Marc Leipzig that the mark is primarily geographically descriptive of Applicant's financial services. The Board was more concerned about applicant's arguments on appeal, or lack thereof, and particularly with applicant's attempt to incorporate its prosecution arguments by reference. In re Princeton Equity Group LLC, 2025 USPQ2d 829 (TTAB 2025) [precedential] (Opinion by Judge Thomas L. Casagrande).

In its brief, applicant's only remark specifically directed to the refusal was to state that it "repeats and reiterates the arguments and evidence set forth" during prosecution of the application. The Board was not happy: "this is an insufficient presentation of whatever arguments Applicant may have contemplated."

[T]he Court in SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006) approvingly quoted Tolbert v. Queens Coll., 242 F.3d 58, 75 (2d Cir. 2001), for the proposition that arguments “adverted to in a perfunctory manner, unaccompanied by some effort at developed argumentation, are deemed waived.” 439 F.3d at 1320. More recently, in In re Killian, 45 F.4th 1373 (Fed. Cir. 2022), the court said that “failing to present anything more than a conclusory, skeletal argument” on an issue of patentability will result in forfeiture. Id. at 1385-86.

Here, applicant failed to present even "a 'conclusory, skeletal' substantive argument, nor does it advert to any particular issue 'in a perfunctory manner,' let alone display 'some effort at developed argumentation.'" Its statement leaves it to the Board to ferret out what applicant's argument might be, and acceptance of such an incorporation-by-reference might encourage circumvention of the 25-page limit on appeal briefs.

The Board noted that it could rule that applicant had forfeited any objection to the refusal. But because the Board has not previously held, in a precedential decision, that incorporation-by-reference statements are inadequate to present an applicant's argument, the Board made an attempt to identify what arguments applicant had in mind. But the Board made it clear that, in futuro:

Parties whose briefs purport to incorporate by reference arguments made during prosecution will be held to have failed thereby to present whatever arguments the incorporation statement purports to cover to the Board and will be deemed to have forfeited them.

Reviewing the prosecution history of the subject application, the Board did not find anything that "even purports to challenge that the proposed mark is primarily geographically descriptive." Applicant did assert, as it did in its appeal brief, that it is "common" for the USPTO to allow businesses in the financial field "to use geographic terms" in their marks, citing three registrations form marks containing the word ASPEN. The Board observed once again that each case must be decided on its own record, and that "[p]ointing to a few other registrations does nothing to show that the Section 2(e)(2) refusal in this case was improper."

And so, the Board affirmed the refusal.

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 Content Partners LLC, Serial No. 98416280 (June 3, 2025) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal of the mark shown below left in view of the registered mark shown below right, both for investment services.]

In re Natrol LLC, Serial Nos. 98027771, 98027798, 98027815, 98029191, and 98029200 (June 3, 2025) (Opinion by Judge Jennifer L. Elgin) [Section 2(d) refusal to register the word-plus-design marks SLEEP +, SLEEP + RECOVERY, SLEEP + BEAUTY, SLEEP + CALM, and SLEEP + IMMUNE HEALTH for "Vitamins; Dietary and nutritional supplement" in view of the registered mark SLEEP PLUS for "fragrances; room fragrances; household fragrances; aromatics for fragrances, namely, pillow sprays, linen sprays and room sprays; bath oils; massage preparations, namely, massage oils, and lotions; essential oils; nonmedicated skin care preparations; skin lotions, skin creams, skin moisturisers."]

In re Bison Designs, LLC, Serial No. 97786484 (May 30, 2025) [not precedential] (Opinion by Judge Jessica B. Bradley). [Section 2(d) refusal of the mark LAST CHANCE "Belts for clothing" in view of the identical mark registered for "retail discount stores featuring footwear; apparel; apparel accessories."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2025.

TTAB Affirms Failure-to-Function Refusal of Certification Badges for Completion of Skills Evaluation Courses

The Board affirmed refusals to register four proposed marks shown below, for "Evaluation of specific fields of employment for others to identify specific skills and specific content and level of knowledge required for probable success in such specific fields of employment, vocational assessments services in the field of job placement and job-related skills, namely, testing, analysis, and evaluation of the knowledge, skills, and abilities of others for career placement purposes," on the ground that the symbols fail to function as source indicators. Examining Attorney Robert Struck maintained that these badges operate as a credential or certification that indicates completion of Applicant’s courses, not as service marks. The Board agreed. In re ACT Education Corp., Serial Nos. 98020747, 98020760, 98020772, and 98020795 (June 3, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). 

The marks consist of a circular badges of various colors, and include a ribbon across the middle, the word "CERTIFIED" above the ribbon, the words "WORKKEYS NCRC" on the ribbon, and the word ACT appearing below the ribbon.

The Board looked to applicant's specimens of use to determine consumer perception of the badges: applicant's promotional brochures, webpages and advertising material. Example:

Applicant argued that the presence of four of its registered marks - ACT, ACT WORKKEYS NCRC and design, NCRC, and WORKKEYS - within the badges provide source-indicating significance to the badges. The Board disagreed: "the question before us is not whether the individual previously registered marks incorporated into the designations function as service marks."

Applicant also contended that that the specimens show dual use - use in connection with the services and use as a credential – analogizing this case to Board cases in which a term is used as the name of a process and also functions as a service mark. The Board didn't buy it.

Even though the specimens reference Applicant’s skill assessment (and evaluation) services, the explanations that follow make clear that the applied-for marks are not in reference to the assessment services but rather are the credential that is earned and can be displayed or shown after taking the skill assessments. Therefore, the initial or substitute specimens do not show dual use of the designations as a reference to both Applicant’s evaluation and vocational assessments services as well as the credential or certification earned.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2025.

Updated Roster of TTAB Administrative Trademark Judges

With the recent departures of Judges Michael B. Adlin, Robert H. Coggins, and Cynthia C. Lynch from the TTAB, the Board’s membership now stands at twenty-four (24) Administrative Trademark Judges. The current roster is set forth below, beginning with Acting Chief Judge Thomas V. Shaw and Acting Deputy Chief Judge Melanye K. Johnson, and then proceeding alphabetically.

Shaw, Thomas V. (Acting Chief Judge): Appointed to TTAB in 2011. Prior Professional Experience: Associate Solicitor at the USPTO; Managing Attorney; Senior Attorney; Trademark Examining Attorney; Education: B.A., George Washington University; J.D., University of Miami School of Law.

Johnson, Melanye K. (Acting Deputy Chief Judge): Appointed to TTAB in 2020. Prior Professional Experience: Private Practice (Detroit, MI; Washington, DC); Corporate Counsel; Senior Counsel, Office of General Counsel at the U.S. Department of Health and Human Services (HHS); Education: B.A., University of Michigan; J.D., Ohio State University Moritz College of Law.

Allard, Martha B.: Appointed to TTAB in 2021. Prior Professional Experience: Private Practice (Nashville, TN); Education: B.S. University of Kentucky; J.D. cum laude,, Western New England University School of Law.

Bradley, Jessica D.: Appointed to TTAB in 2024. Prior Professional Experience: Private Practice; LexisNexis; Education: B.A. summa cum laude, George Washington University; J.D. cum laude, Catholic University of America Columbus School of Law.

Brock, Elizabeth K.: Appointed to TTAB in 2024. Prior Professional Experience: Private Practice (Michigan); Education: B.A., University of Michigan; J.D., Wayne State University Law School.

Casagrande, Thomas L.: Appointed to TTAB in 2023. Prior Professional Experience: Law Clerk to Hon. B. Avant Edenfield, Chief U.S. District Judge (S.D. Ga.); Private Practice (Houston, TX; New Haven, CT); Associate Solicitor USPTO; Education: B.A., University of Pennsylvania; J.D. with Honors, University of Connecticut School of Law.

Cohen, Wendy B.: Appointed to TTAB in 2023. Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A, University of Missouri - Columbia; J.D., University of Missouri School of Law.

Dunn, Elizabeth A.: Appointed to TTAB in 2019. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., Boston University; J.D., American University Washington College of Law.

Elgin, Jennifer L.: Appointed to TTAB in 2023. Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.S., Cornell University; J.D., Emory University School of Law.

English, Christen M.: Appointed to TTAB in 2019. Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Boston College; J.D. Catholic University Columbus School of Law.

Goodman, Cheryl S.: Appointed to TTAB in 2014. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Education: B.A., University of Illinois; J.D., Florida State University College of Law.

Greenbaum, Cindy B.: Appointed to TTAB in 2012. Prior Professional Experience: Private Practice (New York and Washington, D.C.); Trademark Examining Attorney; TTAB Interlocutory Attorney; TTAB Managing Interlocutory Attorney; Education: Wharton School, University of Pennsylvania; J.D., New York University School of Law.

Heasley, David K.: Appointed to TTAB in 2015. Prior Professional Experience: Private Practice (Washington, D.C.); Education: B.A., Johns Hopkins University; J.D., University of Maryland School of Law.

Larkin, Christopher C.: Appointed to TTAB in 2016. Prior Professional Experience: Private Practice (Los Angeles, CA; New York, N.Y.); Education: B.A., Stanford University; J.D., Columbia Law School.

Lavache, Robert: Appointed to TTAB in 2024. Prior Professional Experience: Trademark Legal and Examination Policy Specialist; various other USPTO positions; Education: B.A., University of Miami; J.D., Cornell Law School.

Lebow, Mark: Appointed to TTAB in 2020. Prior Professional Experience: Private Practice (Alexandria, Virginia); Education: B.A., Florida Atlantic University; J.D., Hofstra University School of Law; L.L.M. with High Honors, John Marshall Law School.

Lykos, Angela: Appointed to TTAB in 2010. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice; Education: B.A., M.A., Johns Hopkins University; J.D., Duke University Law School.

Myles, Mary Beth: Appointed to TTAB in 2024. Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Bethany College; J.D., Columbia University School of Law.

O'Connor, Catherine Dugan: Appointed to TTAB in 2024. Prior Professional Experience: Law Clerk to Hon. Denny Chen (SDNY); private practice; Education: B.A. cum laude, University of Connecticut; J.D. summa cum laude, St. John's University School of Law.

Pologeorgis, George C.: Appointed to TTAB in 2015. Prior Professional Experience: TTAB Interlocutory Attorney; TTAB Attorney in the Office of Trademark Quality Review and Training; Trademark Examining Attorney; Private Practice; Education: B.A., University of Pennsylvania; J.D., George Washington University National Law Center.

Stanley, Lawrence T., Jr.: Appointed to TTAB in 2024. Prior Professional Experience: Private Practice; TTAB Interlocutory Attorney; Education: B.A., Indiana University; J.D. summa cum laude, New England School of Law.

Thurmon, Mark A.: Appointed to TTAB in 2019. Prior Professional Experience: Private Practice; Adjunct Professor of Law, University of Texas School of Law; Assistant Professor of Law, Levin College of Law, University of Florida; Professor of Law, Southern University Law Center, formed Deputy Chief Administrative Trademark Judge; Education: B.S, Louisiana State University; J.D. with High Honors, Duke University School of Law.

Wellington, Thomas W.: Appointed to TTAB in 2007. Prior Professional Experience: TTAB Interlocutory Attorney; Trademark Examining Attorney; Private Practice; Education: B.A., University of Maryland at College Park; J.D., American University Washington College of Law.

Zervas, Albert J.: Appointed to TTAB in 2005. Prior Professional Experience: Trademark Examining Attorney; TTAB Interlocutory Attorney; Private Practice (New York, NY; Washington, DC); Education: B.A. and J.D., University of Virginia.

Read comments and post your comment here.

Text Copyright John L. Welch 2025.

Providing Warranty Services With One's Own Goods is not a Recognizable Service Under the Trademark Act

The Board upheld Examining Attorney Barbara Kim's refusal to register the mark EVERYDAY PROMISE for “Providing extended warranty services by the manufacturer for the lifetime of kitchen and bath fixtures and accessories, namely, sinks, and faucets," on the ground that the recited services do not constitute services that fall within the Trademark Act. In re Thompson Traders, Inc., Serial No. 97852613 (May 30, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

In determining what constitutes a recognizable service under the Act, the following criteria apply: "(1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant’s goods or the performance of another service." The third element was at issue here.

The Board found that applicant’s warranty "is standard with its goods. It is not a separate service." That, according to the Board "is the key to this inquiry."

The Board distinguished the current situation from that in Otis Engineering., where the applicant provided certification service to some of its elevator customers, but with a separate charge for those services.

In essence, the applicant in the Otis Engineering case was providing ongoing services separate and apart from selling elevators. Some customers obtained such services from the applicant, but others did not. These services were billed and paid entirely separately from the cost of the original elevator. *** The services, therefore, were separate from the goods.

Here, there was no separate cost or fee for the warranty services: they are available to every buyer. No third-party goods are covered by the services. The Board found "absolutely nothing about Applicant’s warranty that is separate from the goods themselves."

We find Applicant’s warranty services are part of what Applicant provides to customers of its goods. Whether the warranty provided is limited to what is required by law is not the key issue. The real question is whether the warranty services are sufficiently separate from the purchase of the goods to constitute a separate and distinct service. They are not. The refusal must be affirmed.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2025.

TTABlog Test: Is this Trademark Mutilation?

The USPTO refused to register the mark C SHARPE, in standard character form, for building construction and repair services, finding that the mark in the application drawing was not a "substantially exact representation of the mark as used on or in connection with the . . . services," as required by Trademark Rule 2.51(a). The mark as shown on applicant's specimen of use is depicted immediately below. What do you think? Mutilation or not? In re C-Sharpe Co., LLC, Serial No. 98269432 (May 29, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Board pointed out that the applicable standards are "strict." However, although the mark shown on the application drawing must be a “substantially exact representation” of the mark in the specimen, "minor alterations" that do not create a new and different mark with a different commercial impression are acceptable. In re MN Apparel LLC, Serial No. 87876633, 2021 TTAB LEXIS 162, at *10 (TTAB 2021)

The Examining Attorney maintained that because the specimen showed a forward slash between the literal components of the mark, the drawing failed to "match" the use of the mark. The Board, finding it a "close question," disagreed:

The only difference is a forward slash in place of a blank space. We see nothing distinctive about the added forward slash. It is akin to a punctuation mark that does not alter the meaning or commercial impression of the mark as a whole.

The Board agreed with applicant that the drawing and the mark shown in the specimen create substantially the same commercial impression. "'Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.' TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 807.14(c) (Oct. 2018).” Peterson v. Awshucks SC, LLC, 2020 TTAB LEXIS 520, at *51 (TTAB 2020).

The Board acknowledged that adding punctuation can alter the meaning of a mark: for example, in the Guitar Straps Online case, the Board found that adding a question mark to GOT STRAPS changed the meaning of the words from a positive statement to a question. But here, the mark "creates substantially the same commercial impression with either a blank space or a forward slash between the two literal elements of the mark."

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Well, were you sharpe enough to get this right?

Text Copyright John L. Welch 2025.