TTAB Posts August 2025 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled five oral hearings for the month of August 2025. Four will be held virtually. The August 26th hearing will be held in person at the Madison East Building in Alexandria, VA. Briefs and other papers for each case may be found at TTABVUE via the links provided.

August 6, 2025 - 11 AM [Virtual]: RLP Ventures, LLC v. Mosaic, Opposition No. 91273876 [Section 2(d) opposition to registration of the mark MOSAIC for "Charitable services, namely, providing vocational training in the field of job responsibilities and finding employment for disabled individuals; Providing personal services to developmentally disabled individuals in the nature of providing assisted living facilities and residential homes; and for Providing personal services to developmentally disabled individuals in the nature of providing case management services, namely, coordinating medical and social services in the nature of medical treatment, behavior management, community integration, and foster care for people under the age of 21, " in view of opposer's alleged prior use of the mark MOSAEC for, inter alia,  vocational training and charitable services.]

August 13, 2025 - 11 AM [Virtual]: In Smartling, Inc., Serial No. 88278777 [Refusal to register MOVE THE WORLD WITH WORDS for, inter alia, providing translation and translation consultation services; assessment of third-party websites for translation purposes in the nature of providing translation and translation consultation services, on the ground that the specimens of record fail to show proper use in commerce.]

August 19, 2025 - 2 PM [Virtual]: Michael R. Postar v. Gargoyle Management, Inc., Cancellation No. 92082894 [Petition for cancellation of a registration for the mark WHY PAY A LOT FOR STORAGE? for "Providing self-storage facilities for others" on the grounds of non-ownership and fraud.]

August 26, 2025 - 10 AM [In-Person]: In re Moises Systems, Inc., Serial No. 98142204 [Section 2(e)(1) mere descriptiveness refusal of MUSIC.AI for, inter alia, software modules for facilitating communication and data exchange between computer systems and software applications via application program interfaces API software for performing musical instrument separation.]

August 27, 2025 - 1 PM [Virtual]: Hangzhou Mengku Technology Co., Ltd. v. Shanghai Zhenglang Technology Co., Ltd., Serial No. [Opposition to registration of the five marks (two of which are shown below) for downloadable computer game software, on the ground of mere descriptiveness under Section 2(e)(1).]

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Text Copyright John L. Welch 2025.

On Remand, TTAB Sustains Cognac Institute's Section 2(d) Opposition to COLOGNE & COGNAC ENTERTAINMENT

On remand from the CAFC, the Board sustained this opposition to registration of the mark shown below, for musical recordings and production services, finding confusion likely with Opposer's common-law certification mark COGNAC for brandy. The Federal Circuit found error in the Board’s likelihood of confusion analysis as to the first, second, third and fifth DuPont factors, and so it vacated the Board's original decision and sent the case back to the Board. [TTABlogged here]. Following the CAFC's directives, the Board found the COGNAC mark to be well-known and strong, the marks more similar than dissimilar [a bit hard to swallow for me - ed.], and the channels of trade and classes of consumers related. Bureau National Interprofessionel du Cognac, Institute National de Appellations d'Origine v. Cologne & Cognac Entertainment, Opposition No. 91250532 (July 28, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

There was no dispute that COGNAC is a common law certification mark for "cognac," used in conjunction with distilled spirit products that meet prescribed standards of quality and content, produced in the Cognac region of France at locations, and under conditions, specified and regulated by French law.

Fame: Guided by the CAFC's decision, the Board changed its conclusion regarding the strength of the COGNAC certification mark: "We find that the evidence establishes that COGNAC is very well-known in connection with brandy throughout the United States and enjoys a strong reputation as a prestigious and quality brandy." The Board placed the mark "at the higher end of the fame or commercial strength spectrum, thus enjoying a wider than normal scope of protection." And so, the fifth DuPont factor "weighs strongly in favor of finding confusion likely."

The Marks: Again guided by the CAFC's decision, the Board found the phrase COLOGNE & COGNAC to be the dominant element in applicant's mark. It also found that that "the marks share a similarity in sound and appearance inasmuch as Opposers’ mark, COGNAC, is one of the more distinctive literal components of Applicant’s mark."

In addition, and in accordance with the Federal Circuit’s finding [does the CAFC make findings? - ed.] that the record shows that Applicant’s mark evokes an affluent or sophisticated lifestyle “precisely because” of its inclusion of the term “cognac,” that same meaning must be attributed to Opposers’ COGNAC mark. Accordingly, the parties’ marks share this connotation and consumers may perceive similar commercial impressions being conveyed by the marks.

The Board concluded that the parties’ marks are "overall more similar than not."

Goods/Services: Construing the evidence "in accordance with the Appellate Decision," and now taking into account "the evidence showing musicians, mainly rap and hip-hop artists, endorse various brands of Cognac and frequently use the term in song lyrics or titles" the Board found "a sufficient relationship between COGNAC brandy and Applicant’s music-related goods and services, as well as the trade channels and classes of consumers for these goods and services."

Section 2(d) Conclusion: Balancing the relevant DuPont factors, the Board concluded that "consumers are likely to mistakenly presume a connection, sponsorship, or affiliation between Applicant’s goods and services and Opposers’ previously-used COGNAC certification mark on brandy, as sold by Opposers’ authorized users." The Board declined to reach Opposers' dilution-by-blurring claim.

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TTABlogger comment: Do you think that confusion is likely in the real world? I don't. I would have found the first DuPont factor dispositive in favor of the applicant. Also, the relatedness of the goods and services seems dubious to me. 

Text Copyright John L. Welch 2025.

TTAB Allows Amendment of Admission Responses but Grants Motion for Summary Judgment for Lack of Bona Fide Intent

The Board granted Opposer Champion's motion for summary judgment, finding that Applicant Derek Buzak lacked a bona fide intent to use the proposed mark I FEEL LIKE A CHAMPION "Sports shirts" as of his filing date. Buzak provided no documentation showing "any concrete steps taken or plans made to actually use his mark contemporaneous with filing his involved application," and there was no explanation as to how he had the capacity to produce the identified goods. ABG-Champion LLC v. Derek Buzak, Opposition No. 91288945 (July 23, 2025) [not precedential].

Admissions: Champion based its summary judgment motion in part on Applicant Buzak’s failure to respond to requests for admission, resulting in automatic admission by operation of Fed. R. Civ. P. 36(a). Buzak asserted that his "counsel has no record of having received Opposer’s First Requests for Admissions” and that “Applicant had previously served an Answer to the Opposition, served Initial Disclosures, served Responses to Requests for Production, and served Answers to Interrogatories."

Buzak then requested leave to serve answers to the Requests for Admission pursuant to Fed. R. Civ. P. 36(b), stating that "Opposer will not be prejudiced by the granting of such a request, and that the granting of the request would be consistent with the preference to decide cases on the merits, as well as traditional notions of fairness." Moreover, it asserted that the admissions "are contradicted by the evidence, and should not be relied on for purposes of deciding whether entry of summary judgment is appropriate." The Board noted that the Federal Rules of Civil Procedure emphasize the importance of resolving actions on the merits whenever possible.

[T]here is a two-prong test for allowing withdrawal or amendment of admissions: the presentation of the merits of the action will be subserved thereby, and the party who obtained the admission fails to satisfy the court that withdrawal or amendment will prejudice that party in maintaining the action on the merits.

With respect to the first prong, the Board found that the merits of the action would be served by allowing amendment because, "if withdrawal of the deemed admissions is not allowed, Applicant will be held to have admitted dispositive facts that it otherwise disputes."

As to the second, the Board pointed out that "'prejudice' is not simply that the party who initially obtained the admission will now have to convince the fact finder of its truth, but rather, relates to the special difficulties a party may face caused by the sudden need to obtain evidence upon withdrawal or amendment of admission." Champion pointed to "no particular prejudice in the form of special difficulties it has faced in its need to obtain evidence."

And so, the Board granted Buzak's motion to withdraw or amend his admissions.

Turning to the substantive issue, Buzak failed to produce any documentary evidence showing an intent to use his mark in commerce. It was then incumbent upon Buzak to come forth with evidence to explain his lack of documentary evidence. He didn't.

Of course, the filing of the involved application did not itself establish a bona fide intent to use the mark. Buzak's statement, through counsel, of his intent to use his mark and his denial that he lacked a bona fide intent -- "both unsworn and entirely lacking in factual detail -- are insufficient to raise a genuine dispute of material fact regarding Applicant’s bona fide intent to use a mark."

In sum, Buzak "failed to establish that a genuine dispute of material fact exists as to whether Applicant had the requisite bona fide intent to use his mark on the identified goods as of that filing date." And so, the Board sustained the opposition.

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TTABlogger comment: The Board did not reach Champion's Section 2(d) claim, which was founded on its registrations for the marks CHAMPION, BE YOUR OWN CHAMPION, and IT TAKES A LITTLE MORE TO MAKE A CHAMPION. How do yo think that claim would have turned out?

Text Copyright John L. Welch 2025.

TTABlog Test: Is TENNISOS Merely Descriptive of Robotic Systems Software Platforms?

The USPTO refused to register the proposed mark TENNISOS for Computer software platforms for presentation of data and communicating with robotic systems, deeming the mark merely descriptive under Section 2(e)(1). Applicant Tennibot argued that, since “[t]he language of tennis and the language of computers have not traditionally been associated,” the combined term TENNISOS creates an "incongruity" that requires some thought and imagination to "understand the nature" of Applicant’s goods. How do you think this came out? In re Tennibot Inc., Serial No. 98243344 (July 25, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Examining Attorney Noopur Amin maintained that TENNISOS comprises two component terms: the first word TENNIS (the sport), to which is added the ending "OS," an abbreviation for "operating system." Applicant Tennebot appeared to agree, stating that "a consumer that encounters the Mark on Applicant’s website could understand TENNISOS to refer to the application that communicates with the Tennibot." the robotic product Applicant sells. Tennibot’s own specimens (see above) refer to TENNISOS that way.

Nonetheless, Tennibot argued that "OS" will be perceived as referring to "oversize" tennis rackets. The Board didn't buy it, since "Applicant's identified goods are software and Applicant uses the term in connection with describing the means by which users of its tennis robot communicate with and operate Applicant's robot."

With respect to Tennibot's "incongruity" argument, the Board saw "no inherent contradiction or incompatibility in using a computer term and a sports term together." Even if Tennibot were the first user of TENNISOS, the term is still merely descriptive if it describes a feature, characteristic, or function of the goods.

Moreover, the Board noted, "[t]he issue isn’t whether, seeing the mark, the consumer would thereby be able to 'understand the nature' of the product at issue." "This argument gets the issue backwards." "Rather, the question is whether someone who knows what the goods and services are will understand the mark to convey information about them."

And so, the Board affirmed the refusal to register.

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TTABlogger comment: WYHA? Mere descriptiveness as a guessing game is one of the "Top Ten Losing TTAB Arguments."

Text Copyright John L. Welch 2025.

TTABlog Test: Is SEXTO for Alcoholic Beverages Confusable with THE SEXTON for Whiskey?

Proximo Spirits opposed the application of West Road Spirits to register the mark SEXTO for "alcoholic beverages, except beer; alcoholic beverages, namely, distilled agave liquor," alleging likelihood of confusion with its registered mark THE SEXTON for whiskey. How do you think this came out? Proximo Spirits, Inc. v. West Road Spirits LLC, Cancellation No. 92080766 (July 17, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Goods: With respect to Respondent West Road's “alcoholic beverages, excluding beer,” the parties’ goods are legally identical, and so the Board must presume that those goods travel in the same trade channels to the same classes of purchasers. As to West Road's distilled agave liquor (i.e., tequila or mezcal), third-party use and registration evidence established that tequila and whiskey are "the types of alcoholic beverages that emanate from the same source."

Strength of Petitioner's Mark: The Board concluded that the mark THE SEXTON has "no demonstrated weakness, but is conceptually strong because the term is arbitrary in connection with whiskey." Moreover, the evidence showed that the mark "has enjoyed success in terms of sales in recent years as well as received considerable attention in terms of industry awards and exposure through promotions in conjunction with television programs." And so, the Board found that the fifth DuPont factor favored Petitioner Proximo Spirits.

The Marks: The Board found the marks to be dissimilar because THE SEXTON "has a specific meaning in English and may be distinguished from Respondent’s mark, SEXTO, that has no meaning in English," while in Spanish "sexto" means "sixth." Proximo acknowledged that a "sexton" is "a church officer or employee who takes care of the church property and performs related minor duties (such as ringing the bell for services and digging graves)."

As to the word THE, Proximo maintained that THE has no importance in distinguishing the marks. The Board observed that this is generally true, but, as the Federal Circuit has held, "not universally true."

Here, while consumers may not look to the word “the” in Petitioner’s mark for source-identification purposes, the word reinforces the connotation of the “sexton” occupation by conjuring a particular person holding this position. In other words, as a definite article, the “the” in Petitioner’s mark will be understood identifying a specific individual holding the occupation of sexton.

The Board recognized the "visual similarity between the marks inasmuch as Respondent’s mark SEXTO is merely one letter away from SEXTON." However, it found the omission of the letter N at the end of West Road’s mark to be "significant because consumers are unlikely to view the mark as a misspelling of SEXTON. Rather, as mentioned, consumers are likely to perceive SEXTO as an unknown term, possibly a combination of the words SEX and TO, or if consumers understand Spanish, they will understand it to mean 'sixth.'"

Conclusion: The Board found that THE SEXTON, has "such a different meaning" from the mark SEXTO, and the marks are "so different" that first DuPont factor outweighs the other relevant factors. And so, the Board dismissed the opposition.

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TTABlogger comment: A good "THE" case to remember. How did you do?

Text Copyright John L. Welch 2025.

CAFC Reverses TTAB: KIST is Confusable with SUNKIST for Soft Drinks

The CAFC overturned the Board's decision [TTABlogged here] dismissing Sunkist Growers' opposition to registration of the mark KIST for soft drinks. Sunkist claimed likelihood of confusion with, and dilution-by-blurring of, its mark SUNKIST for fresh fruits and various beverages and concentrates, but it appealed only the Section 2(d) issue. The appellate court ruled that the Board had botched the analysis of the first DuPont factor, the similarity or dissimilarity of the marks. Sunkist Growers, Inc. v. Intrastate Distributors, Inc., 2025 U.S.P.Q.2d 989 (Fed. Cir. 2025) [precedential].

The Board found that the similarity of the goods ("closely related"), the similarity of the trade channels, the conditions of sale, and the strength of Sunkist's mark all favored a finding of likelihood of confusion. However, it found that the first DuPont factor, the similarity of the marks, weighed in the other direction, as did the lack of evidence of actual confusion.

In sum, although the Board found that, among the DuPont factors it deemed relevant, a majority favor likelihood of confusion, the Board ultimately concluded that the similarity of the marks and actual confusion factors outweigh the other four factors.

The CAFC reviewed the Board's factual finding under the first DuPont factor for substantial evidence, noting that this was "the only factor really in dispute . . . because [lack of] actual confusion is not a dispositive factor on its own and the Board found four other factors favor likelihood of confusion."

The Board found that the SUNKIST mark and the KIST mark engender different commercial impressions: "IDI markets KIST to reference a kiss but Sunkist markets SUNKIST to reference a sun." Therefore, according to the Board, "a person who encounters the marks would not "be likely to assume a connection between the parties." The CAFC disagreed.

First, the lips image is not part of the KIST mark. * * * Second, not all the marketing materials with the KIST mark include a lips image. * * * Third, there is no indication of the degree of consumer exposure to the marketing materials containing the lips image. * * * Fourth, the cropped image that the Board relied on is taken from a page of the marketing presentation that emphasizes different sparkling water flavors, not lips or a kiss.

With respect to the Board’s finding that Sunkist markets SUNKIST as a reference the sun, the court observed that only two of Sunkist's pleaded registrations include a sun design. Most are standard character marks. The Board stated that its focus was on the SUNKIST standard character mark because a finding of no likelihood of confusion with standard character marks would mean the same finding for the other forms. "Importantly, the record also contains Sunkist products with the SUNKIST standard character mark without the sun design."

In short "substantial evidence does not support the Board’s finding that similarity of the marks favors no likelihood of confusion."

Weighing the DuPont factors, the Board found four that favored Sunkist. Since the CAFC rejected the Board’s finding regarding similarity of the marks, that left only the lack of actual confusion in Applicant Intrastate's favor. However, the court observed, the "failure to prove instances of actual confusion is not dispositive against a trademark plaintiff, because actual confusion is hard to prove."

The CAFC concluded that confusion is likely and so it reversed the Board’s decision.

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TTABlogger comment: Actual confusion may be hard to prove, but on the other side of the coin, there was a long period of co-existence without any. Anyway, I have no complaint about the CAFC's ruling. BTW: what if Intrastate has filed for the mark in design form, with the "kiss" depicted? 

PS: not sure why this is precedential. Doesn't seem to say anything new.

Text Copyright John L. Welch 2025.

STROLL TO THE POLLS Fails to Function as a Trademark for Clothing, Says TTAB

The Board sustained this opposition on the ground that the proposed mark STROLL TO THE POLLS fails to function as a source indicator for “Aprons; Bibs, not of paper; Bodysuits; Dresses; Footwear; Hats; Jackets and socks; Pants; Shirts; Skirts; Swimwear.” Applicant pointed to the display of the phrase "in a manner to indicate source identification, insomuch as the mark appears on the inside collar of the article of clothing." Not good enough, said the Board. Alpha Kappa Alpha Sorority v. Stroll to the Polls, Inc., Opposition No. 91267937 (July 17, 2025) [not precedential] (Opinion by Judge Martha B. Allard).

Of course, the key question was whether consumers would perceive the phrase STROLL TO THE POLLS as an indicator of source for applicant's goods. Neither party submitted direct evidence, such as a survey or consumer testimony, on that point. The only consumer perception evidence in the record consisted of declarations from two third-party witnesses, both stating that they believe the phrase “Stroll to the Polls” is a commonplace slogan and not an indicator that the goods come from a single source. "Notably, Applicant does not offer counter testimony on this point."

The record evidence demonstrated use of the phrase on third-party clothing, print material, websites, and on social media in connection with voter-turnout related events. The Board concluded that the proposed mark "is a widely-used phrase that merely conveys a well-recognized and commonly expressed sentiment, i.e., walking or strolling to the voting location together to encourage voter turnout."

Moreover, the evidence showed that various clothing items display the slogan in large, stylized font on the front of the shirt or hat in an ornamental fashion. "This supports the notion that consumers are buying the clothing because of the message emblazoned across the front." "When purchasers buy goods based on the common message they display, that message fails to function as a trademark, even if it is displayed in a conventional trademark manner."

We find that, considering the record evidence as a whole, the phrase “Stroll to the Polls” is merely informational in nature and conveys the sentiment of walking, stepping or dancing to the polls together in an effort to encourage voter turnout. Consumers understand such a widely used, commonplace phrase as conveying the ordinary concept or sentiment normally associated with it, rather than serving any source-indicating function.

Use of the phrase by Opposer AKA

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TTABlogger comment: I think we should be running to the polls now, not strolling.

Text Copyright John L. Welch 2025.

TTABlog Test: Are Mugs and Drinking Straw Cleaning Brushes Related Under Section 2(d)?

The USPTO refused to register the mark VENTURI for, inter alia, "cleaning brushes, pull-through cleaning members and push-through cleaning members for cleaning internal surfaces of drinking straws," finding confusion likely with the registered mark shown below, for "housewares namely, mugs." Applicant GI Scientific argued that the involved goods are “fundamentally different” and “there is no commercial or technological relationship” between them, and it further contended that the marks have "distinct meanings." How do you think this appeal came out? In re GI Scientific, LLC, Serial No. 97790646 (July 17, 2025) [not precedential] (Opinion by Judge Robert Lavache).

The Goods: Examining Attorney Jaime Batt submitted third-party website evidence showing that retailers who offer mugs "commonly also offer brushes for cleaning drinking straws." Thus, "consumers are thus accustomed to encountering both types of goods offered by a single source together in the same place and that they may therefore view the goods as related." The Board noted that this evidence also indicates that mugs and brushes for cleaning straws are complementary goods, since one may be used in connection with the other.

GI Scientific pointed out that its goods "are specifically designed to clean and disinfect the internal surfaces of drinking straws, including the removal of harmful bacteria," and so these goods are “fundamentally different” from Registrant’s and “there is no commercial or technological relationship” between them." The Board was unmoved.

The Board agreed that the involved goods here are not the same, but the question is whether they are related in the minds of relevant consumers. Moreover, the antimicrobial and disinfecting functions of GI Scientific's goods are not reflected in its identification of its goods. The Board, of course looks only at the goods as identified in the subject application, without reading in any limitations.

The Board found that goods are "closely related," and so the second DuPont factor weighed in favor of a finding of likelihood of confusion.

The Marks: The Examining Attorney maintained that the marks are “highly similar in sound, appearance and overall commercial connotation” because “[t]he marks contain the identical dominant term ‘VENTURI.’” The Board did not go quite that far. 

The Board observed that, in a word-and-design mark, the literal portion of the mark - VENTURI SCOTT BROWN - is likely to make a greater impression on consumers. Moreover, consumers are generally inclined to focus on, and remember, the first word in the literal portion of a mark.

Indeed, because Applicant’s mark, in its entirety, is identical to the first word that appears by itself in the first line of the cited mark, we find that the marks are more similar than dissimilar in terms of sound and appearance.

GI Scientific insisted that the marks have "distinct meanings” because its mark “pays tribute to Italian physicist, Giovanni Battista Venturi," whereas the cited mark "appears to be the combination of Robert Venturi and Denise Scott Brown’s surnames, the married couple who started the brand.” However, the Board noted, there was no evidence establishing that consumers encountering the marks would perceive the marks that way. Therefore, the Board presumed that "whatever connotation VENTURI has, whether as a surname or something else, it would be the same or at least highly similar for both marks, especially when applied to closely related goods."

The Board concluded that GI Scientific's mark and the cited mark "create similar commercial impressions in that VENTURI could be perceived as a shortened form of the cited mark, which displays VENTURI separately on its own line above the other wording in the mark."

To summarize, considering the marks in their entireties, we find that they are more similar than dissimilar in appearance, sound, connotation, and overall commercial impression, because the entirety of Applicant’s mark, VENTURI, is incorporated into the cited mark.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Well, what do you think about this one? Seems to me like a dubious mechanical and formulaic application of TTAB doctrine.

Text Copyright John L. Welch 2025.

DESPACITO Registrant Defeats Section 14(6) Claim by Proving Excusable Nonuse

In what appears to be the Board's first decision regarding a Section 14(6) nonuse cancellation claim, the Board denied this petition for cancellation of a registration for the mark DESPACITO for “Alcoholic beverages, except beer; Alcoholic beverages, namely, distilled blue agave liquor; Distilled spirits.” The registration was more than four years old when the petition for cancellation was filed, and Respondent Global Brands had never used the mark in commerce for any of the identified goods. However, Global established that its nonuse was excusable. JT Spirits, LLC v. Global Brands Manufacturing, S.A. de C.V., Cancellation No. 92079052 (July 18, 2025) [not precedential] (Opinion by Judge Robert Lavache).

Section 1046(6) of the Lanham Act, 15 U.S.C. § 1046(6), states that “A petition to cancel a registration of a mark … may … be filed … [a]t any time after the 3-year period following the date of registration, if the registered mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration."

Section 14(6) was added to the Trademark Act via the Trademark Modernization Act of 2020. The Board noted that it lacked Board precedent and any other binding case law addressing this relatively new Section. However, "the concept of excusable nonuse is not, as it frequently arises in the context of both inter partes abandonment claims and ex parte registration maintenance determinations under Trademark Act Sections 8 and 71, 15 U.S.C. §§ 1058, 1141k."

The Board then looked for guidance from the ex parte expungement procedure established by the TMA in Section 16A, which also provides for cancellation of a registration for nonuse. Section 16 A states that if the registrant establishes "excusable nonuse," the USPTO "shall not find that the registration should be cancelled under subsection (g) for any good or service for which excusable nonuse is demonstrated."

The legislative history for the ex parte nonuse exception indicates that the “circumstances that satisfy excusable nonuse are limited and must be due to special circumstances beyond the registrant’s control (e.g., trade embargo, fire or other catastrophe).” H.R. REP. NO. 116-645 (2020) (emphasis by the Board).

Global Brands argued that the COVID-19 pandemic disrupted its plans to begin exporting DESPACITO-branded products from Mexico to the U.S. and that this disruption qualifies under for an exception under Section 14(6). JT Spirits maintained that "Respondent’s nonuse was not due to COVID-19 at all, but instead resulted from Respondent’s own inaction."

[The Board found] that the COVID-19 pandemic is exactly the type of “catastrophe” that qualifies as special circumstances beyond the owner’s control that could excuse nonuse of a registered mark. However, as Petitioner aptly puts it, “the inquiry here is not whether the Covid-19 pandemic was an unforeseeable catastrophe[;] [t]he inquiry . . . is whether Registrant’s ‘nonuse is due to special circumstances that excuse such nonuse.'"

The Board plowed through the evidentiary record and found that "Respondent had plans to export its DESPACITO-branded products to the U.S., and thus commence use of its registered mark well within the three years following the mark’s registration, but ultimately could not do so because of special, temporary circumstances beyond its control."

Although Global Brands did not submit documentary evidence in support of its testimony, the Board pointed out that "a lack of documentary evidence in an inter partes matter before the TTAB is not fatal if the testimony evidence is otherwise sufficient." It concluded that Global had established that its nonuse of the DESPACITO mark on the identified goods was excusable and therefore cancellation of the registration was not warranted under Section 14(6).

JT Spirits also claimed that Global Brands had abandoned its mark, but the evidence that Global's nonuse was excusable "also serves to rebut [the] presumption of abandonment."

That is, Respondent has established that it attempted to commence use of the mark in 2020 (two years after the registration issued) but was prevented from doing so because of the COVID-19 pandemic. And the record indicates that, under these circumstances, Respondent’s activities are those that a reasonable business person with a bona fide intent to use the mark in U.S. commerce would have undertaken.

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TTABlogger comment: I'm a bit surprised that this opinion was not deemed precedential. Note that for Section 14(6) nonuse, unlike abandonment, an intent to commence use is not sufficient. One must show special circumstances to excuse the nonuse. So the applicant may be lining up suppliers or trying to find licensees, but that doesn't help under 14(6). Foreign owners of a US registrationsnot based on use should be aware of this heightened risk of losing the US registration, and may want to file a new application before three years expire.

Text Copyright John L. Welch 2025.

TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?

Section 2(d) affirmances are running at about 90% this year (as usual). Here are three recent appeals. No hint this time. How do you think they came out? [Answer in first comment].

In re XOXO LOUNGE LLC, Serial No. 98196452 (July 8, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) refusal of the mark shown first below, for "Hookah lounge services; Shisha lounge services; Smoking lounge services" [LOUNGE disclaimed] in view of the registered mark shown second below, for "Cocktail lounges; Restaurant and bar services; Providing banquet and social function facilities for special occasions" [DINING ROOM disclaimed].]

In re Giulio Bertelli, Serial No. 79376970 (July 11, 2025) (Opinion by Judge Cheryl S. Goodman) [Section 2(d) refusal to register the mark shown below, for various clothing items, including "shirts," in view of the registered mark DSU for "Clothing, namely, T-shirts, sweatshirts, shorts, hats, cloth bibs, hooded sweatshirts, polo shirts."]

In re Unanimous Media LLC, Serial No. 97529328 (July 16, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Section 2(d) refusal of the mark shown below, for "Entertainment services, namely, providing podcasts in the fields of current events, pop culture, sports, art, politics, comedy, societal issues and topics of general interest" [PODCAST disclaimed], in view of the registered mark UNANIMOUS GAMES for, inter alia, "Arranging and conducting e-sports competitions; entertainment in the nature of e-sports competitions; entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content" [GAMES disclaimed].

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

Text Copyright John L. Welch 2025.

Proof of One Incident of Actual Confusion Factors Into TTAB's Granting of Petition to Cancel ZEROLIQUID Registration for Water Filters

The Board granted this petition for cancellation of a registration for the mark ZEROLIQUID for filters for drinking water and related goods, finding confusion likely with the registered mark ZEROWATER for “water filtering units for household use" [WATER disclaimed]. Although deeming the petitioner's mark to be "highly suggestive" of the goods and therefore "entitled to a narrower scope of protection under the sixth DuPont factor," the Board found the involved marks to be "very similar, with the first DuPont factor weighing heavily in favor of likelihood of confusion." Petitioner’s evidence of a single instance of actual confusion lent some support under the seventh DuPont factor. Zero Technologies, LLC v. Hangzhou Yilin Technology Research Co., Ltd., Cancellation No. 92081980 (July 14, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

Actual Confusion: Respondent Hangzhou objected to petitioner's submission of an email petitioner received regarding an item purchased on Amazon, but it was Hangzhou's ZEROLIQUID product. Hangzhou argued that the email was hearsay, but the Board disagreed: "those statements are either not offered for their truth, and thus are not hearsay, or fall within the state of mind exception to the hearsay rule under Fed. R. Evid. 803(3). The Board, however, did sustain Hangzhou's objection to the attachments to the email (the label and Amazon.com receipt) because they were offered "for the truth of the matter asserted therein, that is, to show that the customer actually purchased and received ZEROLIQUID-branded replacement water filters." [Why aren't the documents corroborative of the customer's state of mind? - ed.]. "While a single instance is insufficient as evidence from which to conclude that applicant’s mark has consistently caused confusion, the single instance of confusion is at least ‘illustrative of a situation/"

Priority: In a cancellation proceeding in which both parties own registrations, priority of use is an issue. The filing date of the application underlying petitioner’s pleaded registration, February 25, 1999, preceded both the September 9, 2021 filing date of the application underlying Hangzhou's registration and its asserted first use dates of June 11, 2021.

Strength of Petitioner's Mark: Petitioner's evidence fell short of proving that its mark was commercially strong. As to inherent strength, "the nature of the mark itself and the third-party registrations lead us to conclude that the mark as a whole is highly suggestive of Petitioner’s “water filtering units for household use” and is conceptually weak."

The Marks: The Board observed that, on their face(s), "ZEROWATER and ZEROLIQUID bear certain similarities in appearance and sound. Both marks begin with the word ZERO as the prefix. The first word of a mark is often considered dominant as it is more likely to be noticed and remembered by consumers." Moreover, "[c]onsumers encountering the marks in the context of the goods—which are identified for use in filtering water—would perceive the marks as having a similar connotation, relating to the removal of contaminants from water."

Conclusion: "Balancing the factors, we find that Petitioner has shown, by a preponderance of the evidence, that confusion is likely when Petitioner’s and Respondent’s marks are used with their respectively identified goods, notwithstanding any conceptual weakness of Petitioner’s ZEROWATER mark."

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TTABlogger comment: This decision leaves a bad taste in my mouth. One incident of confusion? Gimmeabreak!

Text Copyright John L. Welch 2025.

TTABlog Test: Is GHOSTWRITTEN INC. Merely Descriptive of Publication of E-books and Blog Posts

The USPTO refused to register the mark GHOSTWRITTEN INC. for various services, including publication of e-books, blogs, and on-line journals, on the ground that the mark is merely descriptive of the services. The Examining Attorney contended that "it is common for blog posts, website content, e-books and written information to be ghostwritten." How do you think this came out? In re Ghostwritten LLC, Serial No. 98199104 (July 11, 2025) [not precedential] (Opinion by Judge David K. Heasley).

The Board agreed with the Examining Attorney that “GHOSTWRITTEN” is the past participle of “ghostwrite,” meaning “to write a book or article, etc. for another person to publish under his or her own name,” and that “INC.” usually does not add trademark significance to an applied-for mark, taken as a whole. However, the Board agreed with the applicant that the Examining Attorney did not carry her burden of proving that GHOSTWRITTEN INC. would be perceived by relevant consumers as merely descriptive of Applicant’s recited services.

Here, the term GHOSTWRITTEN INC. is too amorphous, nebulous and vague for consumers to immediately understand it as describing a significant feature of Applicant’s recited services. “If the mental leap between the word and the product’s [or services’] attributes is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness.”

The Board noted that the online articles in the record "may show that ghostwriting occurs in these broad creative fields, but they do not show that it is so prevalent and so publicized that the consuming public, encountering Applicant’s mark, would almost instantaneously take it as describing a key attribute of Applicant’s services."

The Board pointed to the applicant statement that it does not offer ghostwriting services and that “none of the services listed in the identification of services are intended to be created for another who is the presumed or credited creator or author. The Board concluded that "the remote, speculative contingency that some works might be ghostwritten is not a key feature of Applicant’s services, but only a bare possibility, incidental to those services."

Looking to third-party registrations for variations of “GHOSTWRITE,” the Board observed that "each identification of goods and services recites creative works; yet none was refused registration, and none was required to show acquired distinctiveness." “While superficially it may be easy to dismiss these [similar third-party] registrations, as we often do, on the basis that the records of these registrations are not before us and that each case must be decided on its own merits, it certainly does appear that the Office has in the past taken a different position with respect to marks of the nature of applicant’s.” In re Waverly Inc., 1993 WL 311934, *5 (TTAB 1993)

"The Examining Attorney’s interpretation that consumers would take the mark that way is speculative, at best." "While our decision is not entirely without doubt, we consider it appropriate to resolve this doubt in favor of Applicant." And so, the Board reversed the refusal to register.

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TTABlogger comment: Mental leap? I don't see it. Would you think applicant's services include ghostwriting?

Text Copyright John L. Welch 2025.

Despite 18 years of Sales, LED Configuration Lacks Acquired Distinctiveness, Says TTAB

The Board upheld a refusal to register the configuration shown below as a trademark for a "light emitting diode (LED) apparatus for lighting, incorporated into medical instruments," on the ground that Applicant Translite failed to prove that the design had achieved acquired distinctiveness. Trasnlite pointed to its 18 years of use of sales of the product but that alone was not enough, and its other evidence fell short of convincing the Board that the design merited registration. In re Translite, LLC, Serial No. 97925710 (July 10, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

"The mark consists of a three-dimensional configuration of a device consisting of a rectangular base that extends up to a curved top, resembling a sideways letter “C”. Below the “C” is a design of an eye with a line through it, and on the side of the device is a button. The features rendered in dotted lines are not claimed as part of the mark."

The Board observed that, "[u]nlike product packaging trade dress, which can be inherently distinctive, product configuration trade dress is not inherently distinctive because consumers are not predisposed to equate such configurations with particular sources: 'even the most unusual of product designs − such as a cocktail shaker shaped like a penguin − is intended not to identify the source, but to render the product itself more useful or more appealing.' Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 213 (2000)."

Considering Translite's Section 2(f) claim, the Board looked to the factors set forth in Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 1120 (Fed. Cir. 2018)): "(1) association of the trade[mark] with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.

Translite submitted marketing materials for its "Veinlite EMS Pro"” product, a printout from its website, a declaration of its president, and declarations from four consumers, along with a purported “report” from the Society of Nuclear Medicine & Molecular Imaging. It averred that the subject product has been sold since 2006, but the Board observed that "[t]e length of time needed to acquire distinctiveness in the mind of the consuming public is proportional to the non-distinctiveness of the applied-for mark." It found 18 years of use to be insufficient, by itself, to establish acquired distinctiveness.

Translite has sold some 3,055 units per year for $1.61 million in annual revenue. It did not submit its advertising expenditures, nor did it indicate how many individuals accessed its website or attended its trade shows. The Board pointed out that sales figures for a product "are not probative of purchaser recognition of a configuration as an indication of source." Moreover, there was nothing that showed promotion of the subject configuration as an indicator of source. In fact, each image of the product includes the “VeinLite” mark in connection with the product.

"It is well-settled that, where, as here, a party’s advertising and sales data is based on materials and packaging in which the mark at issue is almost always displayed with another mark [e.g., 'Veinlite'], such data does not prove that the mark at issue possesses the requisite degree of consumer recognition.” ProMark Brands Inc. v. GFA Brands, Inc., Opp. No. 91194974, 2015 TTAB LEXIS 67, at *43 (TTAB 2015).

Translite did not submit survey evidence regarding consumer recognition. The declarations, identically worded, stated that the declarant had been a customer of Translite's product and "instantly" recognized the product as emanating from Translite. "It is my understanding that product configuration comes solely from Translite and has high quality and performance."

The Board found the declarations "of minimal probative value." for several easons. First, "the testimony of four consumers out of an alleged 55,000-plus customers over an eighteen-year period is not convincing to prove widespread recognition of Applicant’s applied-for mark." Second, "the consumer declarations are fill-in-the blank forms that were clearly drafted by someone other than the declarants." And third, "it is unclear whether the declarants considered the functional elements of the product configuration (i.e., the vein holder and LED elements) in rendering their testimony that they recognize Applicant as the source of the product configuration." [The dashed lines in the drawing represent functional, unclaimed features - ed.].

Finally, the "report” that Translite submitted "is largely dedicated to identifying and praising Mr. Mullani for his professional accomplishments. While the “report” does identify Mr. Mullani as the “Inventor of Veinlite,” there is no reference to Applicant’s applied-for product configuration mark or how the public views the configuration."

At bottom, the critical question is not the length of Applicant’s use, the dollar amount of its sales, or the extent of its advertising; it is the effectiveness of these efforts in “creating a consumer association between the product configuration and the producer.” Ennco Display Sys., 2000 TTAB LEXIS 235, at *19. Based on consideration of all of the evidence of record, and having considered the relevant factors, we find that Applicant has failed to satisfy its burden of proving acquired distinctiveness under Section 2(f) of the Trademark Act. We find that the applied-for mark is a nondistinctive product configuration that has not acquired distinctiveness.

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TTABlogger comment: Product configuration marks nearly always trip over one (or both) of the two hurdles to registration: Section 2(e)(5) functionality and/or Section 2(f) acquired distinctiveness.

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB: YUCATAN SHRIMP is Merely Descriptive of Prepared Shrimp Dish

The CAFC upheld the Board's decision [here] affirming the USPTO's Section 2(e)(1) refusal to register the proposed mark YUCATAN SHRIMP for "prepared food, namely, shrimp, not live." The court ruled that substantial evidence supported the Board's finding that YUCATAN SHRIMP is recognized as a dish using shrimp and particular ingredients associated with Mexican cuisine. In re Randy Wayne White, 2025 USPQ2d 929 (Fed. Cir. July 10, 2025) [not precedential].

Examining Attorney Charles Miller provided "a legion of recipes and descriptions of 'Yucatan Shrimp' dishes from third-party cooking and restaurant webpages, showing that the public understands 'Yucatan Shrimp' to refer to a dish that features shrimp prepared with a set of common ingredients associated with Mexican cuisine, such as hot peppers or sauce, citrus juice, and cilantro."

The Board also relied on Mr. White’s own usage of the mark on his restaurant’s menu. The menu describes the dish as originating in Quintana Roo, Mexico, which encompasses a portion of the Yucatan Peninsula. And the menu explains that the dish is prepared using the same ingredients as the third-party dishes described above, further supporting the Board’s finding that the public would recognize the YUCATAN SHRIMP mark as describing a shrimp dish with common ingredients.

The CAFC pooh-poohed all of Applicant White feeble arguments: that that there is no particular style of cooking originating, or understood to originate, in the Yucatan region of Mexico, that the Board relied on a ground of refusal not raised by the Office, and that the Examining Attorney failed to consider certain evidence (which evidence the Board did consider).

Finally, White contended that any doubt as to descriptiveness should have been resolved in his favor, but the court found "no basis on this record to conclude that the examiner or the Board doubted the descriptiveness of the mark or that they improperly resolved any doubts against Mr. White."

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TTABlogger comment: Randy Wayne White is the author of a series of "Doc Ford" novels set in Florida.

Text Copyright John L. Welch 2025.

Oops! Opposer Fails to Prove Statutory Standing: Submitting Ordinary Copy of Registration Not Enough

Waldencast UK Limited filed an opposition to registration of the mark COATER for various skin care products, alleging likelihood of confusion with its registered mark COATS for non-medicated cosmetics. Neither party submitted testimony or other evidence and only Opposer Waldencast filed a brief. Looks like a slam dunk, right? Not so fast there, Charlie. Waldencast UK Limited v. Oretia LLC, Opposition No. 91286541 (July 1, 2025) [not precedential] (Opinion by Judge Mary Beth Myles).

Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), provides that an opposer may make a pleaded registration of record by attaching to the notice of opposition “an original or photocopy of the registration prepared and issued by the Office showing both the current status of and current title to the registration, or by a current copy of information from the electronic database records of the Office showing current status and title of the registration." Waldencast did not comply with that rule. It attached a "plain copy" of its pleaded registration to its notice of opposition.

A plain copy of the registration is not sufficient to establish that the registration is currently in force and owned by Opposer because it does not indicate the current status and title of the registration. See Indus. Adhesive Co. v. Borden, Inc., 1983 WL 51985, at *4 (TTAB 1983).

However, "[i]f a pleaded registration issued 'substantially' or 'reasonably' contemporaneous with the filing of the notice of opposition, the undated, plain copy of the registration will be sufficient to establish current status and title of the registration. Shenzhen IVPS Tech. Co. v. Fancy Pants Products, LLC, Opp. No. 91263919, 2022 WL 16646840, at *3-4 (TTAB 2022)." Waldencast’s registration issued on November 9, 2021, more than one year and nine months prior to the filing of the notice of opposition on August 14, 2023. The Board found that the issue date of the registration was not "substantially contemporaneous" with the filing of the notice of opposition, and consequently the registration was not of record.

Inasmuch as Opposer’s pleaded registration is not of record and Opposer presented no admissible testimony or other evidence, and Applicant did not admit Opposer’s entitlement or any facts that might establish it in its answer, there is no record evidence to support Opposer’s real interest in this proceeding or any reasonable basis for its belief of damage. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1372 (Fed. Cir. 2020) (entitlement to a statutory cause of action must be proven by the plaintiff in every inter partes case) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 128 n.4 (2014)).

The Board concluded that Waldencast failed to establish its entitlement to a statutory cause of action by a preponderance of the evidence, and so, the Board dismissed the opposition.

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TTABlogger comment: TTABlog tip: read the Rules. BTW: What is the res judicata effect of this dismissal?

PS: For further explanation of how to get a pleaded registration into the record, see Opposition No. 91241442 at 70 TTABVUE.

Text Copyright John L. Welch 2025.

TTABlog Test: Is NATIVE NATIONS CANNABIS Merely Descriptive of Hemp-Containing Cosmetics?

The USPTO refused to register the mark NATIVE NATIONS CANNABIS , finding it to be merely descriptive of "Cosmetic bath salts; massage oils; cosmetic mud masks; body butter; anti-aging cream; moisturizing creams; bath bombs; and hand lotions; all of the foregoing containing ingredients solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis" [CANNABIS disclaimed]. Applicant is "from" the native nation Flandreau Santee Sioux Tribe in South Dakota. How do you think this appeal came out? In re FSST Pharms, LLC, Serial No. 97419333 (July 8, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Examining Attorney maintained that NATIVE NATIONS CANNABIS "would immediately convey to consumers not just the information that the goods contain cannabis, but that the goods and/or their cannabis ingredient are produced and/or offered for sale from one of the Native Nations.” She argued that there is a connection between Native Nations and cannabis products, pointing to evidence of a “growing movement of tribes to become involved in the cannabis products industry,” and noting that Applicant has a tribe-based dispensary.

The Board rejected the Examining Attorney’s argument that NATIVE NATIONS describes a particular location of the goods or reflects goods that are grown on a tribal reservation, because the evidence indicated that the term NATIVE NATIONS describes 574 nations within nations in the United States, and not a specific geographic unit or location.

As to the Examining Attorney’s argument that NATIVE NATIONS identifies the grower of a main ingredient of Applicant’s goods (hemp), the record did not establish that average consumers are aware that tribes of native nations are growing cannabis or hemp. As to the argument that NATIVE NATIONS identifies Applicant as a provider or source of the goods, the Board observed that there is no per se rule that a term that identifies the provider or source of the goods is merely descriptive. "Absent evidence, a specific finding standing alone that a term describes the provider or source is insufficient to support a Section 2(e)(1) refusal."

The evidence shows that some consumers may be aware that Applicant is a Native nation, and may be aware that Applicant operates a medical marijuana dispensary, but the record does not support a finding that NATIVE NATIONS immediately conveys to average consumers information about a quality, feature, or characteristic of the identified goods. We find NATIVE NATIONS is not merely descriptive of the identified goods.

And so, the Board reversed the refusal.

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TTABlogger comment: I don't find this opinion to be convincing, do you? To me, NATIVE NATIONS tells me that the goods come from a native tribe. Shouldn't every tribe be able to use the phrase?

Text Copyright John L. Welch 2025.

TTAB Affirms Five Refusals of SHYFT Marks for Beer and Flavored Malt Beverages: Confusable with SHIFT for Wine

In these five consolidated appeals, the Board upheld the USPTO's Section 2(d) refusals to regsiter the mark SHYFT - in standard character form, in stylized form, and in the form shown immediately below - for beer and flavored malt-based beverages, excluding beer, finding confusion likely with the registered mark SHIFT for wine. There was little dispute over the relatedness of the goods, and the applicant did not address the channels of trade or classes of consumers. Applicant focused the bulk of its argument on the sixth DuPont factor, relying on third-party use and registration of marks containing the word SHIFT. In re Star Catcher LLC, Serial Nos. 97759143, 98032414, 98032430, 98032440, and 98032445 (July 1, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Marks: Applicant argued that SHIFT and SHYFT have different connotations because SHYFT, due to the fact that its misspelled with a “Y,” connotes “flavor-shifting qualities,” but the registered (correctly-spelled) SHIFT mark evokes the shifting of a car’s transmission. The Board didn't buy it. First, because there was no evidence to support that argument, and second, because "SHYFT is an easily-recognized misspelling of SHIFT."  The additional, disclaimed language “flavor shifting cocktail” is a descriptive phrase, displayed in a much smaller typeface, and "plays little role in the overall commercial impression of this version of Applicant’s mark."

The Board found Applicant’s SHYFT and Stylized SHYFT marks to be nearly identical to the standard character SHIFT mark in the cited registration. As to the other marks, "[w]ith only a small additional difference, Applicant’s marks fare little better and still are highly similar to the mark in the cited registration."

Sixth DuPont Factor As to applicant's third-party uses, there was no evidence of use of SHIFT marks for "flavored malt-based alcoholic beverages, excluding beers." With respect to beer (e.g., DOWNSHIFT, SPIRIT SHIFT, and SHIFT TRADE) and wine (THE SHIFT, REDSHIFT, SHIFTING LENS), "the differences from Applicant’s mark and the mark in the cited registration detract from the weight we assign the third-party evidence within the wine-and-beer space."

The Board found applicant's third-party registration evidence (SHIFT HAPPENS, NIGHT SHIFT) to be just as "underwhelming." "[N]one of these marks [is] as close to the mark in the cited registration as Applicant’s marks. Second, several of them are unitary marks where the meaning of 'shift' has a specific connotation."

In sum, while we do not find any degree of conceptual weakness in the registered mark, the slight level of commercial weakness shown by Applicant’s third-party use evidence will go on Applicant’s side of the ledger, to be weighed with the other factors in the final weighing.

Balancing the relevant DuPont factors, the Board concluded that confusions is likely, and so it affirmed the refusal to register.

If the first four factors did not so clearly support a conclusion that confusion is likely, a marginal showing of weakness like the one here hypothetically could tip the balance. But this is not such a case. The similarity of the marks here is just too great, and consumers perceive these goods as related. These are usually the most critical factors, and we see nothing indicating that they should not warrant their usual weight here. The classes of customers and trade channels overlap as well. In these circumstances and on this record, the slight weakness Applicant has shown in the term “shift” is nowhere near able to carry the day.

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TTABlogger comment: SHYFT for beer confusable with SHIFT for wine? In the real world, I doubt it.

Text Copyright John L. Welch 2025.

TTABlog Test: Three Recent Section 2(e)(1) Mere Descriptiveness Appeals - How Did They Turn Out?

Last year the Board affirmed about 88% of the Section 2(e)(1) mere descriptiveness refusals reviewed on appeal. So far this year, the rate is well over 90%. Here are three recent appeals. How do you think they came out? You might respond by asking, what was the evidence? Well, give it a try anyway. [Answer in first comment].

In re Lifetime Brands, Inc., Serial No. 98012956 (June 30, 2025) [Opinion by Judge Angela Lykos]. [Section 2(e)(1) mere descriptiveness refusal of SNACKLEBOX for "cutting boards and attached serverware, namely, serving platter with compartments sold together as a unit." Applicant argued that the term is suggestive because it is “a play on the words, ‘snack’ and ‘tackle box’, and does not immediately convey that applicant’s goods feature a cutting board and a serving platter with compartments.”]

In re Lewitt, Hackman, Shapiro, Marshall & Harlan, Serial No. 98115823(July 2, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington). [Mere descriptiveness refusal of JUSTICENTER for “Attorney services; Attorney services, namely, representation of clients in personal injury matters; Legal services." Applicant contended that JUSTICENTER, “as a telescoped mark, has no meaning in and of itself.”]

US Ghost Adventures Llc, Serial No. 98186224 (July 3, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Mere descriptiveness refusal of MURDER HOUSE for "Museum services, namely, exhibiting to the public a historical site” and “Hotel accommodation services.” Applicant argued that MURDER HOUSE could indicate something other than a house where a murder took place, such as a restaurant with food so good diners want to “murder” their meals or a house where crows gather.]

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

Text Copyright John L. Welch 2025.

Precedential No. 6: TTAB Refuses to Add Affirmative Defense of Abandonment but Allows Addition as Counterclaims

In this opposition to registration of the mark JOKER SMOKER, in the form shown below, for smoker's articles and related retail services, the applicant moved for leave to amend its answer to add an affirmative defense of abandonment regarding the opposer's pleaded JOKER registrations. The Board deemed the proposed addition improper, since an abandonment claim is an attack against the validity of the registrations that can be raised only by way of a counterclaim or separate petition for cancellation, not by an affirmative defense. However, the Board allowed applicant 15 days within which to add counterclaims for cancellation of the registrations. Republic Technologies (NA), LLC v. Joker Smoker Shop, Inc. dba Joker Smoker, 2025 USPQ2d 830 (TTAB 2025) [precedential] (Order by Interlocutory Attorney Michael Webster).

Applicant's proposed affirmative defense alleged that "Opposer has discontinued use of its marks, Registration Nos. 1,087,438, and 2,661,926, for a period of more than three (3) years, with intent not to resume use, and has thereby abandoned use of such marks pursuant to Section 45 of the Lanham Act.” The Board found those allegations to be legally sufficient to support counterclaims for abandonment. Lewis Silkin LLP v. Firebrand LLC, Can. No. 92067378, 2018 WL 6923002, at *4-6 (TTAB 2018) (“The petition to cancel pleads that Respondent is not using the mark with its goods and services, and has no intent to resume use. The Board finds that no more is necessary for a legally sufficient abandonment claim in the context of the Board’s narrow jurisdiction limited to trademark registrability.”).

Further, the Board observed, applicant did not unduly delay in seeking to amend its answer (within two months after receiving amended discovery responses from the opposer). See Black & Decker Corp. v. Emerson Elec. Co., Opp. No. 91158891, 2007 WL 894416, at *3 (TTAB 2007); Karsten Mfg. Corp. v. Editoy AG, Opp. No. 91101408, 2006 WL 1258869, at *2 (TTAB 2006) (motion for leave to amend pleading granted because grounds for new claim learned during discovery); see also TBMP § 507.02(a). Opposer did not argue that it would be prejudiced by allowing the amendment (six weeks remained in the discovery period). See, e.g., Topco Holdings, Inc. v. Hand 2 Hand Indus., LLC, Opp. No. 91267988, 2022 WL 157880, at *4 (TTAB 2022) (no undue prejudice when three months remain in discovery). Nor was there any evidence applicant acted in bad faith or had a dilatory motive in seeking leave to amend, and it had not previously amended its pleading.

If Applicant files an amended answer with counterclaims, the Board will construe Applicant’s motion for leave to amend as asking to add properly pleaded counterclaims for abandonment. Accordingly, a decision on the motion for leave to amend is deferred and proceedings remain suspended.

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TTABlogger comment: Does this ruling merit the "precedential" tag? If the Board had denied the motion, would applicant simply have filed a new motion to add the counterclaims?

Text Copyright John L. Welch 2025.