Recommended Reading: The Trademark Reporter, July-August 2025 Issue

The July-August 2025 (Vol. 115 No.4) issue of The Trademark Reporter has arrived. [pdf here]. The issue is dedicated to past TMR Editor-in-Chief and long-time TMR Advisory Board Member, Miles J. Alexander.

Willard Knox, Staff Editor-in-Chief of TMR, summarizes the contents as follows (and below): "The issue offers readers an In Memoriam note from Daniel Bereskin, Mr. Alexander’s friend and colleague; a republication of Mr. Alexander’s and Mr. Bereskin's article on the TMR’s history; a reprint of a leading scholar’s article on Edward S. Rogers, progenitor of the Lanham Act; a commentary by a well-known survey expert on using aided awareness to assess fame for dilution claims; a review of a book on the intersection of marketing and the law; and a review of a book on licensing.."

Editor's Note, by Pamela Chestek, TMR Editor-in-Chief.

In Memoriam: Miles J. Alexander (1931–2025) by Daniel Bereskin, C.M., K.C. Daniel Bereskin memorializes his friend and colleague.

History of The Trademark Reporter®, by Miles J. Alexander and Daniel R. Bereskin. In honor of Miles J. Alexander, the TMR proudly republishes this article on the TMR’s history by Mr. Alexander and Daniel Bereskin, author of the In Memoriam note published in this issue.

Edward S. Rogers, the Lanham Act, and the Common Law, by Jessica Litman. In this in-depth article, a leading scholar details how Edward S. Rogers authored legislation that led to the Lanham Act of 1946.

Commentary: Why Aided Awareness Is the Proper Primary Method for Assessing Fame for Dilution Claims, by Hal Poret. In this incisive commentary, a well-known survey expert posits that the Trademark Trial and Appeal Board (and courts) should always consider and weigh properly designed and conducted aided awareness surveys when assessing fame for dilution claims.

Book Review: The Cambridge Handbook of Marketing and the Law. Jacob E. Gersen and Joel H. Steckel, eds.,  Reviewed by Leigha R. Santoro. The review of this book on the intersection of marketing and the law finds it of value to professionals in both disciplines.

Book Review: The Language of Licen$ing: The Licensing Industry’s Definitive Reference Guide, by Gregory J. Battersby and Danny Simon. Reviewed by Kathleen E. Brennan. The reviewer of this book on licensing finds it provides readers with insights and tools.

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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®.

CAFC Vacates and Remands TTAB's Affirmance of F**K Failure-to-Function Refusal Due to Lack of Clarity

A divided CAFC panel has vacated the TTAB's decision [TTABlogged here] affirming a failure-to-function refusal of the mark FUCK for phone cases, jewelry, bags, and retail store services (in four separate applications). The appellate court rejected many of Applicant Brunetti's arguments but concluded that "the decision of the Board lacks sufficient clarity," and so it remanded the case to the Board for further consideration. In re Erik Brunetti, 2025 USPQ2d 1105 (Fed. Cir. 2025) [precedential].

The Board found that the word FUCK "expresses well-recognized familiar sentiments and the relevant consumers are accustomed to seeing it in widespread use, by many different sources, on the kind of goods identified in the [applications at issue]." Therefore, the mark "does not create the commercial impression of a source indicator, and does not function as a trademark to distinguish Applicant’s goods and services in commerce and indicate their source."

The CAFC began by rejecting Brunetti's arguments that the USPTO violated the First Amendment by engaging in viewpoint discrimination since it has registered "positive terms" like LOVE, but refuses to register "negative terms" or "profanity." The Board, however, stated the failure-to-function refusal "applies evenhandedly regardless of the viewpoint expressed," and the CAFC saw no deviation from that principle.

Next, the court rejected Brunetti's accusation that the Office was retaliating against him because of the Supreme Court's ruling in Iancu v. Brunetti, deeming unconstitutional the Section 2(a) bar to registration of immoral or scandalous marks. Brunetti provided no evidence of any retaliation.

The CAFC then brushed aside Brunett's claim that Iancu v. Brunetti dictates the outcome here. That case addressed a different issue, and a fundamentally different mark (FUCT). It did not concern the issue of whether the mark FUCK fails to function as a trademark.

Turning to the substance of the refusals, the court observed that "[i]t is well-established that an applied-for mark that does not serve as a source identifier fails to function as a trademark and should be refused federal trademark registration." Brunetti argued that the Board had misconstrued the failure-to-function doctrine by holding that marks cannot be registered if they are "widely-used commonplace terms." However, the Board "appropriately acknowledged" that "commonality" cannot be the basis for refusing registration.

The Board focused on the use of FUCK as an "all-purpose word." The CAFC saw no error in the Board's factual determination regarding "the ubiquity of the term FUCK as an expression to convey a wide[] range of recognized concepts and sentiments."

But Mr. Brunetti argues that the Board erred by allowing the registration of some all-purpose word marks while inexplicably denying registration of others, including registrations for the word FUCK, without any explanation as to the difference. For example, Mr. Brunetti argues that the PTO has registered other marks consisting only of a ubiquitous word that has a variety of meanings, such as LOVE, and that “all of the 100 most common words in English are registered.”

Brunetti pointed to existing registrations for the mark FUCK for snow globes and gummy candies, but the CAFC agreed with the USPTO that "[e]ach application for registration must be considered on its own merits." However, the Board must take into account its 'own past practice' in developing a 'comprehensive rule,'" and it must "provide guidance that is sufficiently explained." "That guidance is missing here."

The Board had dismissed Brunetti's reliance on other registered marks due to lack of "contextual information," but it did not explain "what such contextual information might be." The Board also noted that Brunetti could "come forward with competent evidence that consumers would perceive the proposed mark as a source indicator," but again it did not indicate what that evidence would be.

The Board determined that Mr. Brunetti failed to meet a standard, but it did not articulate what that standard would be. In other words, the Board’s decision is unclear as to the circumstances under which all-purpose word marks can be registered and which are “inherently incapable of being regarded as [a] source indicator[].”

According to the CAFC majority, the Board's reasoning suggests that "it has concluded that it need not articulate a viable registration standard." The "apparent inconsistency" of USPTO determinations "with respect to the registration of all-purpose words is itself strong evidence of the failure to articulate coherent rules and engage in reasoned decisionmaking."

The Board’s reasoning sounds in fact very much as though it has taken an “I know it when I see it” approach to failure-to-function refusals. Such an approach is inconsistent with the Board’s mandate to engage in reasoned decisionmaking under the APA.

The Board appropriately relied on use of FUCK by third-parties on "commercial listing for goods within the claimed categories." However, that "does not create a coherent standard."

We conclude the Board failed to provide sufficient precision in its rationale for why some commonplace words can serve as a mark, but others, such as FUCK, cannot. The Board’s lack of clarity in this regard is especially troubling given the increasing number of fail-ure-to-function refusals in recent years. Without a clearer explanation, we are unable to determine whether substantial evidence supports the Board’s determination that the applied-for mark fails to function as a source identifier. Accordingly, remand is required. See, e.g., Princeton Vanguard, 786 F.3d at 970–71.

Circuit Judge Lourie dissented:

The majority well points out shortcomings in the Board’s analysis of the failure to function issue. But anyone living in today’s society of degraded language can readily tell that the f-word does not indicate the source of the proposed trademarked goods and distinguish them from goods of another. If the Board’s overall analysis needs sharpening, this case, which has been pending for most of a decade, surely isn’t one in which we need more help from the Board to know the right answer under the law. There will be better cases in which we need more guidance from the Board in order to properly review its decisions.

Read comments and post your comment here.

TTABlogger comment: So how would you distinguish FUCK from LOVE, legally speaking?

Text Copyright John L. Welch 2025.

VETEMENTS Applicant Files Certiorari Petition Seeking Reversal of Genericness Refusal Under Doctrine of Foreign Equivalents

Applicant Vetements Group AG has filed a petition for writ of certiorari at the Supreme Court [pdf here], seeking to overturn the refusals to register the term VETEMENTS (in standard character and slightly stylized form) for various clothing items and for related retail store services, on the ground of genericness. The TTAB affirmed the refusals [TTABlogged here], and the CAFC upheld the Board's decision. In re Vetements Group AG, 2025 USPQ2d 775 (Fed. Cir. 2025) [precedential]. [TTABlogged here].

QUESTIONS PRESENTED

Under the Lanham Act, 15 U.S.C. § 1051 et seq., no mark shall be refused nationwide protection as a registered trademark on account of its nature unless, inter alia, a mark is: (i) descriptive and lacks acquired distinctiveness; or (ii) generic, regardless of whether the mark has acquired distinctiveness. Descriptiveness and genericness of a non-English mark is currently determined based on its English translation when applying a judicially created guideline referred to as “the doctrine of foreign equivalents.” When a court or the United States Patent and Trademark Office elects to invoke this doctrine, protectability of a non-English mark is dictated by its English translation, rather than the non-English mark on its face (without English translation).

1. Whether protection of a non-English mark is controlled by consumer perception of the mark taken at face value or controlled by its English translation.

2. What is the proper test for determining genericness or descriptiveness of a non-English mark?

At the CAFC Vetements disputed the Board's finding that the ordinary American purchaser would stop and translate the marks because there was no showing that a majority of Americans are capable of translating the word. The court rejected that proposed test, "which is tantamount to the threshold ordinary American purchaser under the doctrine of foreign equivalents requiring a headcount to determine the foreign language skills of the median American purchaser in every case." Instead, the court ruled that "[i]t is enough to demonstrate that an “appreciable” number of Americans are capable of translating the term VETEMENTS from French into English."

EXCERPT FROM PETITIONER'S STATEMENT

The doctrine of foreign equivalents, as applied in the decision below, departs from this Court’s determination in Menendez v. Holt, 128 U.S. 514, 520 (1888) (finding that a registration of a non-English mark was valid considering, in part, because it was “a fancy name, and in a foreign language”). This doctrine also departs from a bedrock principle of the Lanham Act, which requires that consumer perception of a mark controls whether the mark is registrable. United States Pat. & Trademark Off. v. Booking.com B. V., 591 U.S. 549, 560 (2020) (“[W]hether a term is generic depends on its meaning to consumers. That bedrock principle of the Lanham Act is incompatible with an unyielding legal rule that entirely disregards consumer perception.”).

Along with Petitioner’s case presenting an opportunity to reaffirm or clarify how this Court’s Menendez decision impacts the protectability of non-English marks, Petitioner’s case presents an opportunity to resolve a split in the circuits and the TTAB as to the treatment of foreign terms in non-English marks and the impact of consumer perception when determining protectability of non-English marks. In observance of this Court’s Menendez decision, the Fourth Circuit focuses on consumer perception of a non-English mark, while the Second and Fifth Circuits translate a non-English mark as a matter of course. The Federal Circuit has articulated another test but, as reflected in the decision below, translates any foreign term in a modern language even if substantially less than 1% of the United States population understands such language, absent a few limited exceptions.

Read comments and post your comment here.

TTABlogger comment: I would like to see the Supreme Court clarify the doctrine of foreign equivalents. I doubt that it will take up the case, but who knows. America first?

Text Copyright John L. Welch 2025.

TTABlog Test: Is WORLDWIDECRYPTO Merely Descriptive of Cryptocurrency Exchange Services?

The USPTO refused to register the proposed mark WORLDWIDECRYPTO under Section 2(e)(1), finding the mark to be merely descriptive of "cryptocurrency exchange services; cryptocurrency exchange services featuring blockchain technology; cryptocurrency payment processing; cryptocurrency trading services." Applicant VCDF argued that "worldwide" is not descriptive of its services because it is "prohibited by U.S. sanctions from providing such services worldwide."  How do you think this came out? In re VCDF, Serial No. 97795205 (August 21, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

Relying on dictionary definitions, third-party registrations that include a disclaimer of "CRYPTO" for identical or closely related services, additional registrations disclaiming "WORLDWIDE," and Internet references, Examining Attorney Gidette Cuello maintained that "each of the individual terms 'worldwide' and 'crypto' merely describes a feature or characteristic of the services and the composite term WORLDWIDECRYPTO does not result in a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning." The Board agreed.

The Board found unpersuasive Applicant VCDF's argument that “worldwide” is not merely descriptive in the context of its cryptocurrency services. "First, the Examining Attorney provided evidence that consumers are likely to perceive 'worldwide' as meaning 'extending throughout the world,' rather than literally 'extending through every part of the world, with no part left out.'" Also, because Applicant’s services "are performed on the Internet or the 'World Wide Web,' they necessarily 'occur throughout multiple locations around the globe.'" This is reflected in the Office of Foreign Assets Control's guidance, "which acknowledges that people in restricted countries may still be able to access the services, hence the need for vigilance by U.S. companies to monitor and block such persons from using the services."

Indeed, the evidence shows that the World Wide Web and Internet are considered to be worldwide, even if they are not accessible from every part of the world. Thus, consumers are accustomed to seeing “worldwide” used in connection with services that are offered in different parts of the world, even if the services cannot necessarily be offered in every single part of the world. This is supported by evidence of third parties using “worldwide” to denote the scope of their cryptocurrency services, even if that scope does not extend literally “through every part of the world, with no part left out” because of technological or other restrictions.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment:  The services may be "offered" worlwide, but isn't the question, where are they rendered? If only in this country, are they worldwide services? PS: If the mark is not merely descriptive, would it be misdesciptive? Deceptively misdescriptive?

Text Copyright John L. Welch 2025.

TTABlog Test: Are Clothing and Sunglasses Related Under Section 2(d)?

The USPTO refused to register the mark OGGO for: “Clothing, namely, tops, bottoms, sweaters, shirts, sweatshirts, pants, shorts, jackets, coats, vests, hats, scarves, gloves, belts, ties, underwear, socks, shoes, sneakers, boots, sleepwear, robes, suits," on the ground of likely confusion with the registered mark OGO for "sunglasses." The Board deemed the marks "highly similar," but what about the goods? [I expect everyone to get this right.] In re VIP Fashion, Inc., Serial No. 98276220 (August 22, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Examining Attorney Christine Nishigaya submitted evidence of four companies selling clothing and sunglasses under the same mark (GAP, MADEWELL, OAKLEY, and PRADA). She also submitted "plentiful evidence" of third-party registrations covering both clothing and sunglasses under a single mark.

Applicant VIP Fashion lamely argued that the goods are not related becuase they are not identical, but the Board brushed that argument aside. "Where the evidence shows, as it does in this case, that others offer both types of goods under a single mark, that in turn shows that consumers will view those non-identical goods as related for trademark purposes, because they see them as types of goods that emanate from the same source."

VIP attempted to minimize the Office's evidence by asserting that the third parties who sell both kinds of goods are "large retailers." The Board acknowledged that "when the third-party relatedness evidence comes from 'big box retail stores or online retailers selling a wide variety of goods,' as opposed to smaller or 'specialty retailers,' the evidence can have somewhat less probative value." However, VIP povided no evidence to show that such discounting should apply to here.

Next, VIP claimed that Class 9 goods are unrelated to Class 25 goods. Again, the Board was unmoved. "[W]hich international class goods fall within is irrelevant. Those classes are there solely for administrative purposes related to international treaties and are 'wholly irrelevant' to the likelihood-of-confusion analysis."

With respect to channels of trade and classes of consumers, the third-party evidence showed that they overlap for the involved goods, "to some extent." VIP offered no contrary evidence, but it insisted (without supporting evidence) that it "does not sell its goods to the general public;" instead it sells "wholesale" only to retailers who "register with Applicant." The Board found at least two problems with this argument. First, there was no such limitations in VIP's application, and second, there were no restrictions on channels of trade or classes of consumers in the cited registration.

Finally, VIP argued that the cited OGO mark is conceptually weak, pointing to three third-party registrations (two for OGO and one for OGOGO). The Board, however, was unimpressed: "The existence of three registrations falls well short of making a dent as to this factor." Moreover, VIP failed to make these three registrations of record.

Finding that none of the DuPont factors favored VIP, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2025.

Differences in Goods/Services Yield Dismissal of MISS BUSINESS/MS. BUSINESS Section 2(d) Opposition

The Board dismissed this Section 2(d) opposition to registration of the mark MISS BUSINESS for books and stationery, denying Opposer's claim of likelihood of confusion with her registered mark MS. BUSINESS for a variety of business consulting and financial services. Unsurprisingly, the Board found the marks to be "highly similar," but Opposer failed to prove that the involved goods and services are related. Shaquanna Brooks v. Miss Business LLC, Opposition No. 91287370 (August 18, 2025) [not precedential] (Opinion by Judge David K. Heasley).

"There is a dearth of evidence in this record. That dearth, however, does not disadvantage the parties equally, as Opposer, not Applicant, bears the burden of proof." Opposer Brooks argued that Applicant's goods are with the natural zone of expansion for her services, that the goods are "naturally complementary to Opposer’s business consulting and financial services," and that "Opposer regularly uses branded print materials in the course of providing services, and consumers are likely to encounter educational or inspirational materials as an extension of a brand in the entrepreneurial and financial coaching space."

None of these assertions is proven with evidence. Evidence of relatedness could include such things as news articles showing that the relevant goods and services are used together; webpages showing that they are advertised or sold by the same source; or copies of prior use-based registrations of the same mark for Applicant’s goods and Opposer’s services. See, e.g., L’Oreal S.A. v. Marcon, 2012 WL 1267956, *7 (TTAB 2012). But in this case, the record contains no such evidence.

At most, the involved goods and services are both in the general field of business, but that is not enough to show that they are related under Section 2(d). "It is error to deny registration simply because 'applicant sells some of its goods in some of the same fields in which opposer provides its services ....'"

Opposer Brooks asserted that the goods and services travel through the same trade channels, but her arguments depended on a showing that they are related, a showing she failed to make. Her claim that the goods and services both are found in common online spaces such as Instagram "proves nothing." "Advertising on the Internet is ubiquitous and proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services."

Although the involved goods and service appeal to a broad class of potential customers in the general field of business, "the breadth of that field, and the ubiquitous nature of online marketing, do nothing to predispose those customers to perceive those goods and services as emanating from the same source."

Deeming the second DuPont factor to be dispositive, the Board dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: The parties' attempt to submit evidence were laughingly bad: unsigned declarations, a signed declaration without a verification under penalty of perjury, and their own discovery responses. Will opposer seek review by way of civil action, where additional evidence can be submitted?

Text Copyright John L. Welch 2025.

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

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

In re Little Mexico LLC, Serial No. 98111934 (August 14, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark LITTLE MEXICO for "Take-out restaurant services" [MEXICO disclaimed] in view of the registered mark shown below, for "Restaurant and bar services; Restaurant services" [MEXICO and ESTABLISHED 1955 disclaimed.]

In re Crystal Factor, LLC, Serial No. 98593860 (August 15, 2025) (Opinion by Judge Robert Lavache) [Section 2(d) refusal to register the mark IT'S THE BOMB for “Erotic non-medicated bath bombs, erotic non-medicated soaps, non-medicated bubble bath, and erotic non-medicated bath accessories being soap in the form of bath toys," in view of the registered mark DA BOMB for "bath and body products, namely, bath fizzer bombs; bath salts, not for medical purposes; bath preparations, not for medical purposes" [BOMB disclaimed].

In re The Breadfruit Company LLC, Serial No. 98271727 (August 18, 2025) [not precedential] (Opinion by Judge Jessica B. Bradley). [Section 2(d) refusal of the mark BIG MARBLE for "soft drinks, namely sodas" in view of the registered marks MARBLE POP for "carbonated soft drinks" [POP disclaimed] and RED MARBLE for, inter alia, soft drinks.]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2025.

Rejecting Strategic Partners Argument, TTAB Affirms 2d Refusal of IN HARMONY WITH NATURE for On-line Sale of Personal Care Products

The Board affirmed a Section 2(d) refusal to register the mark IN HARMONY WITH NATURE for "On-line retail store services featuring food supplements, nutritional supplements, household cleaning products, and personal care products," finding confusion likely with the registered mark CRAFTED WITH LOVE IN HARMONY WITH NATURE for various personal care products. Applicant Shaklee Corp. devoted most of its brief to its ownership of prior registrations of marks consisting of or containing the phrase IN HARMONY WITH NATURE and covering various goods and services, arguing that under Strategic Partners, registration should be allowed. The Board disagreed. In re Shaklee Corporation, Serial No. 98020872 (August 13, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

Goods and Services: The Board found it "self-evident" that the "personal care items" and "personal care product goods" of the '102 Registration are "intrinsically related" applicant's online retail store services featuring personal care products. That relatedness was corroborated by third-party use and registration evidence. The Board therefore found that the second DuPont factor supported a conclusion that confusion is likely.

That same evidence established that personal care products are sold in the same channels of trade in which the online retail store services featuring personal care products are rendered. Thus, the third DuPont factor also supported a conclusion that confusion is likely.

The Marks: Applicant argues that the phrase "CRAFTED IN LOVE" (sic) in the cited mark "is not only distinctive, but the most distinctive aspect of the Cited Mark" but "a highly distinguishing aspect of the Cited Mark in terms of commercial impression and connotation," particularly because it appears at the beginning of the cited mark. The Board was unmoved.

Applicant’s mark IN HARMONY WITH NATURE for use in connection with online retail store services featuring personal care products could readily be viewed as a shortened version of the cited mark CRAFTED WITH LOVE IN HARMONY WITH NATURE used for personal care products themselves.

Strategic Partners: Under the 13th DuPont factor, applicant invoked Strategic Partners [TTABlogged here], which involved the reversal of a Section 2(d) refusal in the "unique situation" presented by the coexistence of the applicant’s existing registration [for the mark ANYWEARS in standard form] with the cited registration [ANYWEAR BY JOSIE NATORI] for over five years, and applicant’s challenged mark [ANYWEARS in stylized form] was substantially similar to its existing registered mark, both for identical goods [footwear]."

The applicant here made of record its four registrations for marks “that were live when the Cited Registration was filed as an application on July 20, 2017, and when registered on July 23, 2019." However, only one covered the identical mark IN HARMONY WITH NATURE, and it was for educational services, not retail store services. The three other prior registrations covered marks - PRODUCTS IN HARMONY WITH NATURE AND GOOD HEALTH (two registrations) and PRODUCTS IN HARMONY WITH NATURE - that had "meaningful differences" from the mark IN HARMONY WITH NATURE alone. And so, Strategic Partners was inapplicable.

The exacting standard set forth in Strategic Partners has been applied in six subsequent precedential decisions, Embiid; In re Info. Builders Inc., Ser. No. 87753964, 2020 WL 2094122 (TTAB 2020); Country Oven; In re Inn at St. John’s, LLC, Ser. No. 87075988, 2018 WL 2734893 (TTAB 2018); In re USA Warriors Ice Hockey Program, Inc., Ser. No. 86489116, 2017 WL 2572815 (TTAB 2017); and Allegiance Staffing [Ser. No. 85663950, 2015 WL 4658961 (TTAB 2015)], and the Board found that it was satisfied only in Allegiance Staffing, in which the applicant “owned a prior registration for the same mark and services for which it currently seeks registration” ... and which had inadvertently been allowed to expire.

Applicant also cited the Board's non-precedential decision in In re Semillas Fito, S.A., Ser. No. 79311562, 2025 WL 439975 (TTAB Jan. 21, 2025). [TTABlogged here], but there applicant's prior registrations covered goods that were identical to those identified in its application, and the marks shown in the prior registrations were very similar to the mark in the application. "The 'unique circumstances' presented in Semillas Fito ... do not exist here."

Conclusion: And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: In Semilas Fito, the Board gave the Strategic Partners doctrine a somewhat liberal interpretation.

Text Copyright John L. Welch 2025.

TTAB Overturns 2d Refusal of "SIDECAR SLIDER BAR" for Restaurant and Bar Services Due to Extensive Third-Party Use of "SIDECAR"

The Board reversed the USPTO's refusal to register the mark SIDECAR SLIDER BAR, in standard character and logo form restaurant services and bar services [SLIDER BAR disclaimed], finding confusion unlikely with three registered marks: SIDECAR for restaurant services; and SIDECAR SOCIAL, in standard character and logo form, for "bar services ancillary to entertainment services," the latter two registrations having the same owner. The Board found that, in light of the "highly suggestive nature of the common SIDECAR element, and the existence of extensive third-party marketplace use, the differences between the marks is sufficient that consumers would be able to distinguish Applicant’s marks from each of the cited marks." In re Restaurant Concept Management, LLC, Serial Nos. 98051196 and 98051234 (August 15, 2025) [not precedential] (Opinion by Judge Mary Beth Myles).

The Services: Since the services overlap (Applicant's "bar services" encompass "bar services ancillary to entertainment services"), the Board presumed that these services travel in the same trade channels to the same classes of consumers. Therefore, the second and third DuPont factors "weigh heavily" in favor of a finding of likely confusion.

Strength of the Cited Marks: Based on a dictionary definition, the Board found that "sidecar" has a "highly suggestive connotation when used in connection with bar and restaurant services, because it suggests a type of cocktail served by a restaurant or bar." Applicant submitted Internet excerpts showing the term SIDECAR in use by 33 entities in connection with restaurant, bar, or related services: including THE SIDECAR BAR & GRILL, SIDECAR PATIO OYSTER BAR, and SIDE CAR SPEAKEASY.

This third-party evidence is “powerful on its face,” and shows a strong degree of marketplace weakness for SIDECAR in connection with bar and restaurant services, and that SIDECAR is accordingly entitled to a narrower scope of protection under the sixth DuPont factor. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1374 (Fed. Cir. 2015); Juice Generation, 794 F.3d at 1336.

The Board concluded that the sixth DuPont factor weighed "heavily" against a finding of a likelihood of confusion. [Why does every factor weigh "heavily" one way or the other? - ed.]

The Marks: As to the cited SIDECAR mark, the Board found that, in light of the extensive evidence of third-party use of SIDECAR, the addition by Applicant of SLIDER BAR in both of its marks and the design element in its composite mark "is sufficient to render the marks distinguishable and dissimilar, even if used in connection with the identical services." As to the cited SIDECAR SOCIAL marks, the Board reached the same conclusion.

No Actual Confusion: Finally, applicant pointed to the lack of actual confusion evidence despite co-existence of applicant's marks with the cited marks for five and nine years, respectively. The Board, however, pointed out once again that "[i]n the context of an ex parte appeal, where there has been no opportunity for evidence of actual confusion to be presented by the registrants, the probative value of evidence purporting to show the absence of actual confusion is limited."

Conclusion: Deeming the first DuPont factor (coupled with the sixth factor) dispositive, the Board reversed the refusal.

Read comments and post your comment here.

TTABlogger comment: Once in a while the "crowded field" argument works. 

Text Copyright John L. Welch 2025.

Precedential No. 7: Opposer Fails to Prove Distinctiveness of its Common Law Mark, Loses 2d Opposition on Priority

In a fact-intensive, yet precedential ruling, the Board rendered a split decision in this opposition to registration of the mark PCS for woodworking stations that included table saws and other components. Opposer SawStop alleged lack of bona fide intent and likelihood of confusion with its identical common law mark for table saws. The Board dismissed the Section 2(d) claim for failure to prove priority and sustained in part the lack-of-bona-fide-intent claim. SawStop, LLC v. Felder KG, 2025 U.S.P.Q.2d 1063 (TTAB 2025) [precedential] (Opinion by Judge Robert Lavache).

Priority: Applicant Felder AG relied on the foreign filing date of its European Union application - December 13, 2018 - as the priority date for the opposed application, a request for extension of protection under the Madrid Protocol. See Lanham Act Section 67, 15 U.S.C. § 1141g. In order to prevail on its Section 2(d) claim, Opposer SawStop had to prove that it used the term PCS as a distinctive source identifier in commerce prior to Felder AG's priority date. See Otto Roth, 640 F.2d at 1320; DowntownDC Bus. Improvement Dist. v. Clarke, Opp. No. 91275100, 2024 TTAB LEXIS 412, at *38 (TTAB 2024) (citing Araujo v. Framboise Holdings Inc., 99 F.4th 1377, 1380 (Fed. Cir. 2024)). 

Felder acknowledged that SawStop began using the PCS designation in connection with professional cabinet saws in 2009, but contended that SawStop's use prior to December 13, 2018, was not trademark use and thus did not establish its priority.

Under the rule of Otto Roth, a party opposing registration of a trademark due to a likelihood of confusion with his own unregistered term cannot prevail unless he shows that his term is distinctive of his goods, whether inherently or through the acquisition of secondary meaning or through “whatever other type of use may have developed a trade identity.

Felder maintained that, at least up until Felder's priority date, SawStop's use of PCS "was almost purely as part of an alphanumeric model designation or side by side with the generic indicator, i.e., professional cabinet saw," and that any "consumer-facing" use of PCS was "de minimis usage of descriptive matter that could not and did not yield secondary meaning within the consumer consciousness.”

The Board observed that “[i]t is well settled that terms used merely as model, style, or grade designations . . . do not serve to identify and distinguish one party’s goods from similar goods manufactured and/or sold by others.” In re Dana Corp., Ser. No. 73655454, 1989 TTAB LEXIS 34, at *2 (TTAB 1989) (emphasis added).

The Board first found that that the designation PCS was not inherently distinctive. Examining SawStop's evidence in detail, the Board concluded that, even when used in a manner other than as a part of a model designation, PCS "would be viewed merely as an abbreviation of the descriptive phrase 'professional cabinet saw' and not as a trademark."

Opposer’s evidence of use of PCS prior to Applicant’s December 13, 2018, constructive date of first use, considered as a whole, shows PCS being used solely as a model designation or otherwise in a nondistinctive manner. That is, it does not establish use of PCS that consumers would perceive as an inherently distinctive source identifier in connection with table saws and table saws with active injury mitigation technology.

As to acquired distinctiveness, the Board observed that SawStop bore a "relatively heavy burden, because model designations generally serve a descriptive or informational purpose," and because PCS, "as used by Opposer, is shorthand for the merely descriptive phrase 'professional cabinet saw,' is frequently paired with other informational matter (e.g., horsepower designations, part names), and would be perceived as indicating a type or model of saw."

Sales and advertising figures submitted by SawStop did not distinguish between pre- and post-2018 data and therefore were not probative. In any case, the mark "SawStop" consistently appeared along with the PCS designation, and so "it is just as likely that Opposer’s promotional and marketing expenditures induced and increased the recognition of the 'SawStop' mark, rather than the PCS designation." In media references, PCS appeared "either as an abbreviation for 'professional cabinet saw' or to identify the particular model of SawStop saw being discussed." Similarly, communications from consumers "by and large ... show PCS being used ... to designate a particular model of SawStop saw (i.e., the professional cabinet saw) or otherwise to differentiate between Opposer’s saw types (i.e., 'ICS' vs. 'PCS')."

In sum, while the evidence of record shows that Opposer has used the PCS designation in some fashion since at least 2008 and appears to have had some success in selling saws associated with the PCS designation and in garnering unsolicited media coverage of its saws, Opposer has not satisfied its burden to show that consumers of Opposer’s saws came to view PCS as an identifier of source for the saws prior to Applicant’s constructive date of first use

Lack of Bona Fide Intent: A request for extension of protection under Section 66(a) of the Lanham Act includes "a declaration of bona fide intention to use the mark in commerce." The case law regarding lack of bona fide intent, developed largely in the Section 1(b) context, is applicable to determinations of bona fide intent under Section 66(a). See Nestle, 2020 TTAB LEXIS 267, at *28.

SawStop had the initial burden to present a prima facie case of lack of bona fide intent. The absence of any documentary evidence regarding such intent on Felder's part was sufficient to shift the burden to Felder to come forward with evidence to overcome SawStop's prima facie case. See Nestle, 2020 TTAB LEXIS 267, at *29; Rsch. in Motion Ltd. v. NBOR Corp., Opp. No. 91179284, 2009 TTAB LEXIS 673, at *12 (TTAB 2009) (citing Commodore Elecs., 1993 TTAB LEXIS 6, at *13).

Felder failed to provide the required evidence as to many of the items within its identification of goods. However, a lack of bona fide intent as to some but not all of the goods does not render the application void in its entirety, but rather results in deletion of those goods for which a bona fide intent was not established. Monster Energy Co. v. Tom & Martha LLC, Opp. No. 91250710, 2021 TTAB LEXIS 458, at *16 (TTAB 2021)."

As to the remaining goods, Felder's witness testified that its saws were shown at a trade show in 2019 under the mark PCS, that it took sales deposits, and it produced a Facebook video showing of a person operating a table saw with the caption "Don’t cut yourself – PCS system from Felder Group." Orders for some of its systems were taken in 2021.

The Board noted that "[t]he bar for showing a bona fide intent is not high." M.Z. Berger, 787 F.3d at 1378. Actions taken after the filing of an application may corroborate the applicant's bona fide intent as of its filing date. See, e.g., Lane Ltd. v. Jackson Int’l Trading Co., Opp. No. 91092025, 1994 TTAB LEXIS 41, at *19 (TTAB 1994).

Here, the record establishes that Applicant began marketing its PCS table saw systems shortly after filing its application, promoted its PCS mark at a trade show later that same year, began to take sales deposits for saws with PCS technology, and ultimately sold those saws to consumers in the U.S. This evidence corroborates that Applicant had the requisite bona fide intent, at least as to table saws, at the time Applicant filed its application.

And so, the Board sustained in part and dismissed in part SawStop's lack of bona fide intent claim.

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TTABlogger comment: Now what? Felder has priority. Will it try to stop SawStop's use of the PCS mark? 

PS: the opinion would be much easier to read if the Board referred to the parties by their names, rather than "Opposer" and "Applicant."

Text Copyright John L. Welch 2025.

TTAB Upholds Mere Descriptiveness Refusal of "THE TRAVELING PAWTOGRAPHERS" for Pet Portrait Photography Services

The Board affirmed a Section 2(e)(1) refusal of the proposed mark THE TRAVELING PAWTOGRAPHERS for "pet portrait photography services," deeming the mark to be merely descriptive of said services. Examining Attorney Patty Evanko relied on applicant’s own statements during prosecution of the involved application, as well as Internet evidence submitted by both applicant and the Examining Attorney. In re Joan H Walker Photography LLC, Serial No. 97743111 (August 13, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Applicant shot itself in the paw when, in order to overcome a Section 2(d) refusal, it argued that "[t]he cited mark [PAWTOGRAPHY] describes the field generally of pet photography services," and it submitted evidence of "extensive usage in connection with pet photography services,” including Internet screenshots of third parties "incorporating the wording 'pawtography' or 'pawtographer.'" The examining attorney withdrew the Section 2(d) refusal but then nissued the subject 2(e)(1) refusal.

The Examining Attorney also submitted Internet evidence showing use of the term "traveling" in connection with pet photography services.

Applicant argued that the term "pawtographer" is not a recognized English word, that it blends two words in a "whimsical manner to create somewhat of a portmanteau," that the word "traveling" does not describe an aspect of photography, that "imagination and interpretation" is required to derive the Examining Attorney's meaning from the mark, that consumers will appreciate the mark as "clever wordplay," and that the third-party evidence demonstrates use of "pawtographer" in trademarks or trade names. The Board was not persuaded.

First, the fact that the terms “pawtographer” and “pawtography” are not found in the dictionary is not controlling on the question of registrability. *** Second, that the term “pawtographer” is creative or whimsical or a portmanteau does not mean “pawtographer” is not also descriptive. *** Third, that other descriptive terms exist for a pet photographer does not mean “pawtographer” is not also descriptive. *** Fourth, that third parties use the terms “pawtographer” or “pawtography” in their respective trade names or in connection with possible trademarks does not mean that the term cannot be descriptive.

Furthermore, the word TRAVELING "describes a feature or characteristic of the services because it immediately informs purchasers that the PAWTOGRAPHERS will travel to different locations to photograph the customer’s pets."

And so, the Board affirmed the refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2025. Photograph of "Maggie" Copyright John W. "Jack" Welch 2025.

BOSTON STRONG Fails to Function as a Service Mark for Volley Ball Entertainment, Says TTAB

The Board upheld a failure-to-function refusal of the proposed mark BOSTON STRONG for, inter alia, "Entertainment services in the nature of professional athletes competing in volleyball," deeming it to be a commonplace term rather than a source indicator. The Board found that BOSTON STRONG "conveys a common message of support for the city of Boston and ... is incapable of functioning as a mark." In re Franklin Sports, Inc., Serial No. 98326109 (August 12, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

On April 15, 2013, at the finish line of the Boston Marathon, explosives killed three and injured 264 people and resulted in a four-day manhunt for the bombers. A May 12, 2013, a Boston Globe article titled “Boston Strong, the phrase that rallied a city” described the speed with which the term BOSTON STRONG spread as a response to the bombing. Within hours of the bombing, the term BOSTON STRONG appeared all over the city. Moreover, even in recent years "uses of BOSTON STRONG" remain in the public eye."

[The] evidence demonstrates that the term BOSTON STRONG remains a common message of support for the city of Boston. In addition, the evidence shows the association of BOSTON STRONG with sporting events, which initiated with the bombing occurring at and during a famous Boston sporting event [opening day for the Red Sox], and continues with annual remembrance by the Red Sox baseball team, Marathon competitors, basketball and lacrosse tournaments, and special Olympic events.

The evidence also showed use of BOSTON STRONG on a variety of products from multiple sources: jewelry, stickers, keychains, masks, mugs, and clothing items including hats, t-shirts, jackets, and hoodies. These items "'reflect use of the phrase in a manner that will only be perceived by consumers as conveying ‘support for, or affiliation or affinity with the [city of Boston],’ a well-recognized sentiment."

Applicant Franklin Sports (located in Stoughton, Massachusetts) argued that the failure-to-function refusal was premature, since this was an intent-to-use application and a specimen of use had not been submitted. The Board was unmoved, quoting TMEP Section 1202.04 (See Vox Populi, 2020 TTAB LEXIS 465, *23 (affirming failure-to-function refusal against application class with an intent-to-use filing basis on the basis of third-party use evidence), aff’d, 25 F.4th 1348 (Fed. Cir. 2022)):

Although the failure-to-function refusal is typically a specimen-based refusal, a refusal must be issued, regardless of the filing basis, if the evidence supports a determination that a proposed mark is merely informational and thus would not be perceived as an indicator of source.

Franklin also argued that common messages may serve a dual function as a source indicator, noting a third-party registration for the mark CHICAGO FIRE for soccer team services. The Board pointed out that, although the Chicago Fire was an historical event, there was no evidence that “Chicago Fire” is a common message.

Finally, Franklin asserted that media coverage of its volleyball team would transform BOSTON STRONG into a registrable team name "just as they would refer to the BOSTON CELTICS or the BOSTON BRUINS." The Board disagreed, finding that the argument was "entirely speculative" and failed to recognize that the Board "must determine the current public perception of the term BOSTON STRONG."

And so, the Board affirmed the refusal.

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TTABlogger comment: I think the Board got this one wrong. Why would consumers see BOSTON STRONG as a trademark/name for a volleyball team? Expect an appeal to the CAFC.

PS: I lived a few blocks from the Marathon finish line, but I was at the airport when the bombing occurred. It was one of those moments, like learning of the JFK, RFK, and MLK assassinations, that is seared in my memory.

Text Copyright John L. Welch 2025.

US SPACE FORCE Applicant Files Certiorari Petition Seeking Reversal of Section 2(a) False Connection Refusal

Applicant Thomas D. Foster, APC has filed a petition for writ of certiorari at the Supreme Court [pdf here], seeking to overturn the refusal to register US SPACE FORCE for a variety of goods in ten classes, including license plate frames, umbrellas, pillows, and toy spacecraft. The Board found that the mark falsely suggests a connection with the U.S. Space Force, a branch of the U.S. Armed Forces and a U.S. governmental institution. [TTABlogged here]. The CAFC affirmed, ruling that the mark falsely suggested a connection with the United States (not just the Space Force), since the U.S. Space Force is an instrumentality of the United States. In re Thomas D. Foster, APC, 2025 USPQ2d 727 (Fed. Cir. 2025) [precedential] (Petition denied on October 6, 2025).

QUESTIONS PRESENTED

1. Whether the Federal Circuit improperly considered government developments that postdate a trademark applicant’s filing to support a refusal under Section 2(a) of the Lanham Act, despite the applicant's statutory right to constructive use based on the application’s filing date.

2. Whether the Federal Circuit improperly deferred to the USPTO’s statutory interpretation of Section 2(a) after this Court’s ruling in Loper Bright Enterprises v. Raimondo, which reaffirmed the judiciary’s duty to independently interpret the law under the Administrative Procedure Act.

3. Whether Section 2(a)’s prohibition against marks that “falsely suggest a connection” is unconstitutionally vague as applied to an intent‑to‑use trademark application which which the USPTO claims references a fictionalized entity that did not exist at the time of filing.

Applicant filed its application to register in 2018 after hearing President Trump speak, "perhaps jokingly," about creating a new military branch called the U.S. Space Force, but that branch wasn't created until a year later. Applicant objected to the reliance on evidence dated after his filing date, but the CAFC held, in what appears to be an issue of first impression, that "[t]he false connection inquiry can . . . include evidence that comes into existence during the examination process."

SUMMARY OF ARGUMENT

The decision below permits the government to deny trademark registration based on post hoc determinations of association with political figures and institutions, despite Petitioner’s earlier filing date and no actual connection. This undermines the constitutional limits on viewpoint discrimination and grants impermissible deference to administrative interpretations in violation of Loper Bright. The refusal also creates tension within the Lanham Act itself, specifically between § 1052(a) and § 1057(c). Review is necessary to protect constitutional rights and clarify the bounds of trademark law.

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TTABlogger comment: I think the chances of the Court granting this petition are slim to none. How about you?

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, decided on the same day. No hints this time. How do you think they came out? [Answer in first comment].

In re Lemon Inc., Serial No. 98247563 (August 8, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Section 2(d) refusal of the mark CRYSTAL OF ATLAN in view of the registered mark HEROES OF ATLAN, both for computer game software.]

In re Clinical Support Systems Inc., Serial No. 90136803 (August 8, 2025) (Opinion by Judge David K. Heasley) [Section 2(d) refusal to register the mark shown first below, for "“computer software services, namely, providing online, nondownloadable computer software used to allow care providers to access, enter and view patient health information at the point of care," in view of the registered mark shown second below, for, inter alia, "messaging, video conferencing, file sharing, data collection and database management in the field of professional-client interaction and case management."]

In re Coventya, Serial No. 79319649 (August 8, 2025) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of the mark FINIGARD for, inter alia, "Products for the treatment of metal surfaces in order to make them resistant to rust as well as tarnishing, namely, rust preservatives in the nature of a coating for metal surfaces, excluding metal surfaces related to HVAC equipment, for use on electroplated and passivated components" and "Protective products for metals, namely, protective preservatives used in electroplating metals to protect against rust," in view of the registered mark INFINIGUARD for "Anti-corrosion coating for HVAC equipment and other metal surfaces."]

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

Text Copyright John L. Welch 2025.

TTABlog Test: Is MAYELA Confusable with MAYA for Wine?

Oakville Hill Cellar opposed an application to register the mark MAYELA for wines, claiming likely confusion with its registered mark MAYA for wine. Applicant Peninsula started behind the 8-ball because the goods are identical, there are no limitations as to price, and the Board must presume that the goods travel in the same, normal channels of trade to the same classes of consumers. But what about the marks? Oakville Hills Cellar, Inc. dba Dalla Valle Vineyards v. Peninsula Vinicultores, S.L., Opposition No. 91287178 (August 4, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The Board found that MAYA is an arbitrary term when applied to wine, and so it is a conceptually strong mark. As to commercial strength, the evidence indicated that MAYA brand wine "has been well-received by and is known among a few wine critics and commentators, as stated in publications and product listings available to the public." However, there was no testimony or evidence as to the length of time the wine has been sold, or as to the extent of its marketing, advertising, distribution or sales of such goods.

Despite the accolades Opposer’s MAYA-branded wine has received for its quality, Opposer’s evidence falls short of establishing that MAYA has significant commercial strength as a trademark for wine. Based on the record before us, we find that the MAYA mark falls slightly above the middle of the spectrum of commercial strength.

Applicant Peninsula relied on several third-party uses of marks for wine (TAMAYA, MAIA, MAYU, and MAYACAMAS) and third-party registrations for wine and other alcoholic beverages (e.g., DIVA MAYA, MAYARI, MAYAZUL) in attempting to show that the MAYA mark is a weak source indicator. The Board was not impressed.

Having considered Applicant’s evidence of third-party use and registrations, based on this record we do not find that consumers encounter so many MAYA-formative marks for wine, or that so many similar marks are registered for similar goods, that consumers have become conditioned to distinguish the marks based on minute distinctions or that the word MAYA has a normally understood and well- recognized descriptive or suggestive meaning for the goods.

Peninsula also submitted a number of sets of coexisting third-party marks registered for wine, arguing that "it is common to use personal names as trademarks for wine and consumers have become accustomed to distinguishing such marks based on minor differences." (e.g., MIA, CARA MIA, MIA BEA, MIA BELLA, MIA ROSA, MIA NIPOTE, and MIASANGRIA). The Board found these pairs of registrations to be of "little probative value." 

Applicant’s evidence shows on its face that these sets of marks have registered, but we have no insight into the circumstances of their registration or the context of their use, such as the extent of registration of similar marks for similar goods or any coexistence arrangements that may exist between their owners. The coexistence of these marks on the register “does not prove that they coexisted during that time without confusion in the marketplace.”

Turning to the marks, the Board observed that, "[i[n both MAYA and MAYELA the 'A' and 'ELA' sounds are likely to be perceived as trailing softly from the “MAY-” portion and do little to distinguish the marks visually or phonetically." This is" especially true for goods like wine that can be ordered by spoken request in bars or restaurants where a bottle with the words may not be available."

It is true that MAYA does not appear as such within Applicant’s mark, and the marks do not have the same number of letters or syllables or identical pronunciations. But such arguments encourage a prohibited side-by-side comparison of the marks.

As to the meanings of the marks, the Board found it unnecessary to consider the "precise derivation and meaning of either mark because evidence submitted by both sides amply supports a finding that MAYELA is likely to be perceived as a female given name that, like some connotations of MAYA, has Spanish or Latin American ties." 

Furthermore, "[t]o the extent consumers understand the names “Maya” and “Mayela” to be derived from or otherwise related to one another, they may believe that wines sold under the MAYELA mark are an extension of the MAYA brand. *** [I]n view of [Applicant's] statement that 'Mayela (from Maya) is the goddess of spring and crops' the connotation of a female name related to the Maya language or culture is all but inescapable."

The Board found that none of the relevant DuPont factors weighed against a finding of likely confusions, and so it sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: How did you do? Did the Board undervalue the third-party evidence? Do you think confusion is likely in the real world?

Text Copyright John L. Welch 2025.

TTABlog Test: Is "LEFT RIGHT MIDDLE" Confusable with "LEFT CENTER RIGHT & Design" for Dice Games?

George & Co. petitioned for cancellation of a registration for the mark LEFT RIGHT MIDDLE for "dice games," in view its registered marks LEFT, CENTER, OR RIGHT - DON'T LOSE YOUR CHIPS! in standard character form, and the mark shown below, for, inter alia, dice games. With the goods identical, the Board presumes that they travel through the same channels of trade to the same classes of consumers. But what about the marks? How do you think this came out? George & Company LLC v. P & P Imports LLC, Cancellation No. 92082259 (August 4, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

"Petitioner’s mark LEFT, CENTER, OR RIGHT - DON’T LOSE YOUR CHIPS! describes how the dice game is played (LEFT, CENTER, OR RIGHT) and is highly suggestive of its object (DON’T LOSE YOUR CHIPS!)." "Similarly, Petitioner’s composite mark . . . describes how the dice game is played (LEFT, CENTER, RIGHT), includes depictions of the dice marked L, R, and C, and suggestive visual instructions, namely arrows showing the left, center, or right direction of the chips."

The record included evidence of dice games with dice marked L, R, and C or M, and the instructions: "Game play is easy to follow and can be played with 3-8 players of all ages, players will roll the dice and follow the commands to pass coins to the left, right, or center pile. The last player to have any coins remaining wins!" and "Players roll the dice to determine where they pass their chips. The last player with chips is the winner and wins the center pot."

Petitioner’s registered marks are not strong because they largely comprise descriptive matter combined with highly suggestive matter. In addition, the record has a dearth of evidence of commercial strength. We find Petitioner entitled to no more than the protection accorded a registered mark, and DuPont factor five is neutral. In contrast, Respondent’s evidence of significant third-party use under DuPont factor six weighs against a likelihood of confusion.

Turning to the marks, the Board found that, "[d]espite the presence of two shared terms in both parties’ marks, the commercial impressions are not the same." "Here, the differences between the words and position of CENTER and MIDDLE, and the presence in Petitioner’s marks of the additional words in one mark, and the additional letters and design elements in the other are sufficient to differentiate the marks."

The Board found that the different connotations or commercial impressions of the marks and the dissimilarities outweighed the similarities, and so the first DuPont factor weighed against a finding of likelihood of confusion.

Balancing the relevant DuPont factors, the Board concluded that confusion is unlikely, and so it denied the petition for cancellation.

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TTABlogger comment: If you were George, would you have rolled the dice?

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 hints this time. How do you think they came out? [Answer in first comment].

In re The Gallen Group, Serial No. 98335808 (July 24, 2025) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal of the mark THE BATHING BEAUTIES for "Headwear, namely, headscarfs, headwraps, headbands," in view of the registered mark BATHING BEAUTY for, inter alia, "Women’s clothing, namely, shirts, dresses, skirts, blouses."]

In re Broadstreet Impact Services, LLC, Serial Nos. 97920876 & 98216202 (July 31, 2025) (Opinion by Judge Thomas L. Casagrande) [Section 2(d) refusal to register the mark BROADSTREET, in standard character form and in the design form shown below, for, inter alia, "Fund administrative services, namely, preparation of accounting and financial statements for others," in view of the registered mark BROAD STREET PLANNING for "Financial planning; Financial planning consultation; Investment advisory services" [PLANNING disclaimed].]

In re Ironside Realty, Serial No. 98410651 (August 4, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.). [Section 2(d) refusal of the mark shown below, for “real estate management” and “real estate development” [REALTY disclaimed], in view of the registered mark IRONSIDE NEWARK for "real estate services, namely, rental, leasing and management of commercial properties, offices and office space," and "real estate development and construction of commercial properties, offices and office space" [NEWARK disclaimed].

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

Text Copyright John L. Welch 2025.

Federal Court (E.D. Va.) Reverses TTAB Decision: Apple's REALITY COMPOSER and REALITY CONVERTER Not Merely Descriptive of Developer Software

On cross-motions for summary judgment, the U.S. District Court for the Eastern District of Virginia reversed the Board's decision [TTABlogged here] sustaining an opposition to registration of the marks REALITY COMPOSER and REALITY CONVERTER for downloadable software used by developers working on other software applications to produce and/or edit three-dimensional effects in augmented reality (“AR”). The Board found the marks to be merely descriptive of the goods, but new evidence submitted by Apple, including four expert reports, convinced the district court that that the marks "are both suggestive and have acquired secondary meaning." Apple, Inc. v. Zerodensity Yazilim Anonim Sirketi, 2025 U.S.P.Q.2d 1024 (E.D. Va. 2025).

Suggestiveness: Apple's linguistics experts opined that "ordinary speakers of American English - including those with backgrounds in science and technology - will not readily understand how these terms relate to Apple's product[s] ..." and that there is "no semantic link" between "reality" and "composer" or "converter" such that consumers would consider the marks descriptive. There was no third-party use of these marks. "Particularly compelling" was the expert evidence of a survey of 561 software developers, in which no one described the tested products using the phrases at issue.

[P]laintiff's experts describe how Apple’s marks are used in ways that are not descriptive (e.g., as a brand name), and no competitor uses these phrases or variations of them to describe their competing products. In sum, the evidence in this record establishes that Apple’s marks are suggestive and therefore registrable.

Secondary Meaning: According to the court, a "stronger reason" to rule in favor of Apple was the evidence establishing secondary meaning. Apple did not claim acquired distinctiveness under Section 2(f) in the TTAB proceeding, but here it pointed to more than five years of continuous and substantially exclusive use as prima facie evidence of secondary meaning. In addition, Apple provided media, consumer, and other internet user data, as well as search results showing that the terms at issue are "nearly always used as branded terms in association with Apple by the media."

And so, the court reversed the Board's decision and directed the USPTO to register the two marks.

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TTABlogger comment: If you've got the dough, review by way of civil action is the way to go.

Text Copyright John L. Welch 2025.

DANKEES Confusable with YANKEES for Clothing, Says TTAB

The Bronx Bombers stumbled out of the batter's box but still managed to win this opposition to registration of the mark DANKEES for "Beanies; T-shirts; Hats; Hoodies; Socks; Sweatpants; Sweatshirts." The Yankees failed to get their pleaded registrations into evidence, but common law rights in the mark YANKEES saved the day. New York Yankees Partnership v. Matthew Kirschbaum, Opposition No. 91284783 (August 1, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Yankees submitted plain copies of their pleaded registrations, but plain copies aren't good enough. Syngenta Crop. Prot. Inc. v. Bio-Chek LLC, 2009 TTAB LEXIS 70, at *9-10 (TTAB 2009) (copy of the certificate of registration issued by the USPTO is not competent evidence to show the “current status of and current title to the registration”). Applicant Kirchbaum admitted that the Yankees own the registrations, but he did not admit that they are "valid and subsisting."

There was no dispute as to priority. Kirchbaum admitted he was aware of the use of the YANKEES mark on clothing at the time he filed his intent-to-use application. The Yankees' testimony and evidence also established prior use of the YANKEES marks on t-shirts, hats, beanies, socks, sweatshirts, sweatpants, and hoodies.

The Board found that the trade channels for the goods overlap, noting that the opposed application contains no limitation on channels of trade or classes of consumers. "Because of the lack of price restrictions in Applicant’s identification, which could include inexpensive clothing items, there is the potential for 'impulse purchasing' of products at a relatively low price point by ordinary consumers."

The Yankees' evidence of fame centered on the baseball team. The Board found that the YANKEES mark "is commercially strong, falling on the higher end of the spectrum." "Considering the volume and nature of the fame evidence, we further find that the fame of the YANKEES mark extends beyond just baseball and transfers to the apparel goods we find most relevant to this proceeding." There was no evidence of any third-party use of YANKEES or similar marks for similar goods and services that lessened the strength of the YANKEES marks.

Turning to the marks, "[g}iven the commercial strength of Opposer’s YANKEES mark, the Trademark Act’s tolerance for similarity between the marks is low." [Strike one]. Moreover, since the goods are identical, a lesser degree of similarity between the marks is necessary to support a conclusion of likely confusion. [Stike two].

The Board found the marks be similar in sound and appearance: 

Both marks share the same the six letters “ANKEES,” differing only by the first letter in each mark (“Y” and “D”) and appear similar. As to similarity of sound, it is reasonable to conclude that the marks may be pronounced similarly because they share a similar structure and could well be accorded a similar sound and cadence. Regardless of the pronunciation of the first letter in each mark, the remainder of the marks will be pronounced the same; Applicant admits the marks rhyme.

As to meaning, "even assuming the marks convey completely different meanings, we find that given the commercial strength of Opposer’s YANKEES marks, the similarities in appearance and sound outweigh any differences in meaning."

And so, the Board sustained the opposition [Strike three].

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TTABlogger comment: Predictable TTAB result. But in the real world? BTW, the mark DANKEES brought to mind the 1950s Broadway musical "DAMN YANKEES." You may recall that the Yankees consistently won the American League pennant in the '50s.

Text Copyright John L. Welch 2025.