TTAB Denies Cancellation of "WHY PAY A LOT FOR STORAGE?" Registration, Rejecting Non-Ownership Claim

The Board denied a petition for cancellation of a registration for the mark WHY PAY A LOT FOR STORAGE? for "Providing self-storage facilities for others," rejecting the claim that Registrant Gargoyle Management was not the owner of the mark. The mark was jointly owned by Petitioner Michael R. Postar and his brother David until they split in 2017 and stopped rendering the services. In 2019, Respondent, now owned only by David, began using the mark and registered it. That was okay, says the Board. Michael R. Postar v. Gargoyle Management, Inc., Cancellation No. 92082894 [not precedential] (Opinion by Judge Martha B. Allard).

In reponse to discovery requests, petitioner admitted that he had not used the involved mark in 2018, 2019, 2020, 2021, 2022, 2023, or 2024. The Board noted that "[a]n admission in response to a request for admission “conclusively establishe[s]” the matter that is subject of that request."

In 2017, when the business relationship between the brothers ended, they were unable to reach an agreement regarding the division of their business holdings, and so they voluntarily participated in a mediation. The result was a Mediation Agreement addressing the disposition of assets and liabilities, including the intellectual property assets: which included “logos, marks, etc., as well as all of the websites, domain names, and marketing assets,” all of which were, according to Michael’s testimony, “to be divided equally between [Michael] and David.” They then listed the assets in a separate document; however, the mark at issue here was not mentioned.

The Board found that the issue of abandomnet, at the heart of the dispute, had been tried by implied consent. In considering when the mark may have been abandoned, the Board considered whether the mark was abandoned prior to February 4, 2019, the filing date of Respondent’s underlying application.

The parties agreed that the mark, as used by the brothers jointly, appeared in telephone book advertisements in 2013- 2017, while they shared ownership of their storage business. "Thus, at the point the business was split in August 2017, the mark was an asset of the business and the record does not show that it was subsequently assigned to either brother."

Use of the mark ceased at least as of the date of the Mediation Agreement, August 24, 2017. "Moreover, due to the fact that the business was terminated and the mark was not assigned to either brother, we reasonably infer that the brothers through their former business discontinued use of the mark with intent not to resume such use joint use."

[T]he Mediation Agreement provides that the brothers agree to negotiate “which brand each member will use … as well as an equitable division of any other intellectual property, training videos, and marketing assets.” Because the brothers reached a timely agreement as to the division of the intellectual properly assets, as evidenced by the executed “Store Names, Logos & Trademarks” document, the literal terms of the agreement were met. Because the involved mark was not listed, it at best remained an asset of the jointly-owned business, and, as we discussed above, was abandoned when the brothers’ former business stopped rendering services. While neither Michael nor David may have expressly or impliedly “surrendered ownership of the Mark as a result of the MSA,” the mark’s abandonment occurred by operation of law.

Because the brothers abandoned the mark as of August 24, 2017, it was free for Respondent to adopt and use in its business. See Azeka, 2017 TTAB LEXIS 123, at *22. Accordingly, the Board found that when Respondent filed its application on February 4, 2019 based on use in commerce, it was the rightful owner of the mark.

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TTABlogger comment: Oh, Brother!

Text Copyright John L. Welch 2025.

TTAB Denies Petition for Cancellation of FAT KATZ Registration for Failure to Prove Abandonment

Proving a negative is never easy, as this petitioner found out in its failed attempt to prove abandonment of the mark FAT KATZ (in standard character and design form) for "restaurant and bar services." Petitioner 1645 Restaurant Group alleged that Respondent Buell had allowed use of his marks (by restaurants of which Buell was part owner) without a proper license, resulting in abandonment. However, 1645 had no direct proof that a license did not exist, and its attempted inference regrding same from indirect evidence fell short. "We are at a loss to understand why Petitioner did not depose Respondent and representatives of the Fat Katz Restaurants ...." 1645 Restaurant Group, Inc. v. Gregg Alan Buell, Cancellations Nos. 92080535 and 92080536 (October 27, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

Initial Issues: The parties skirmished over evidentiary objections and pleading issues. Interestingly, the Board pointed out that "the document speaks for itself" or "the public records speak for themselves" is not a proper response to an allegation in a adversary's pleading: "A party 'must . . . admit or deny the allegations asserted against it by an opposing party,' Fed. R. Civ. P. 8(b)(1)(B), and a 'denial must fairly respond to the substance of the allegation.' Fed. R. Civ. P. 8(b)(2)." "An allegation--other than one relating to the amount of damages--is admitted if a responsive pleading is required and the allegation is not denied." Fed. R. Civ. P. 8(b)(6). "As a general matter, a response stating that a document 'speaks for itself' may be problematic because it often begs the question 'Exactly what does it say?'" The Board resolved the amiguities against Respondent Buell and considered his "speaks for itself" responses as admissions, and as a result Petitioner 1845 established its statutory standing.

Abandonment: 1645 Restaurant Group conceded that Buell's marks had been in use up to the time of trial by third parties in which Buell has an ownership and management interest. It described the issue before the Board as "[w]hether Registrant’s Marks have been abandoned due to nonuse by Registrant in his individual capacity and his failure to properly license the Registrant’s Marks." The Board observed that:

[I]f Respondent has never personally used the marks shown in the ’506 and ’507 Registrations, that fact alone does not prove nonuse of the marks under the first definition of abandonment if the marks were used by “related companies” under Section 5 of the Trademark Act, 15 U.S.C. § 1055. The Trademark Act creates a legal fiction that use of a registered mark under license from the registrant is the registrant’s use, and makes the registrant the de jure user of the mark even if the registrant is not the de facto user.

Since Buell's registrations enjoyed a presumption of validity, it was 1645's burden to establish abandonment by a preponderance of the evidence. "The most obvious potential source of evidence supporting Petitioner’s theories of abandonment would be deposition testimony from Respondent or the Fat Katz Restaurants regarding the circumstances surrounding the use of the involved marks."

However, 1645 offered no direct evidence regarding the "related companies" issue. Instead, it asked the Board to infer abandonment from indirect evidence, primarily in the form of Internet webpages and articles. However, its evidence did not establish "foundational facts regarding the management or operation of the Fat Katz Restaurants from which we can reasonably infer that there is no valid license between Respondent and the Fat Katz Restaurants, or that the Fat Katz Restaurants are not related companies of Respondent."

Parties that elect to try to carry their burden of proof on fact-intensive claims such as abandonment based solely on materials, such as Internet webpages, printed publications, and actual official records, that are made of record under notices of reliance run the risk that they will fail because of the limitations on the probative value of such evidence discussed above. We are at a loss to understand why Petitioner did not depose Respondent and representatives of the Fat Katz Restaurants, but whether their testimony might have yielded direct evidence enabling Petitioner to prove either of its theories of abandonment "is not a subject on which we can, should or do speculate. Rather, we must take the record as [Petitioner] made it."

Conclusion: The Board found that Petitioner 1645 "did not establish a prima facie case of abandonment on either of its theories of abandonment to overcome the presumption of validity of the ’506 and ’507 Registrations." And so, the Board denied the petition for cancellation.

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TTABlogger comment: Reminiscent of the TV Azteca case TTABlogged here (official records showing that an establishment had lost its liquor license did not prove that it had closed).

Text Copyright John L. Welch 2025.

Recommended Reading: The Trademark Reporter, September-October 2025 Issue

The September-October 2025 (Vol. 115 No.5) issue of The Trademark Reporterhas arrived. [pdf here].

Willard Knox, Staff Editor-in-Chief, summarizes the contents as follows (and below): "This issue of The Trademark Reporter (TMR) offers an exploration by two rising authors of honest concurrent use in India; another rising author’s examination of the doctrine of greater care in India; a roadmap for practitioners through the key challenges facing their clients’ certification marks; an in-depth survey of so-called weak trademarks in the European Union; and a call-to-action to major global economies to address the threats posed by abusive trademark registrations."

A Brief History of Honest Concurrent Use in Indian Trademark Law, by Lkesh Vyas and Praharsh Gour. This article by two rising authors (and bloggers at SpicyIP) explores honest concurrent use as a defense in trademark infringement cases.

The “Doctrine of Greater Care”: Pharmaceutical Trademarks in India, by Aparajita Lath. This article by a rising author (and blogger at SpicyIP) examines the developing area of the doctrine of greater care to assess likelihood of confusion between pharmaceutical trademarks.

Certification Mark Pitfalls: Managing Problems of Genericness, Descriptiveness, and Consumer Perception, by B. Brett Heavner and Caroline G. Segers. The authors of this article expertly guide practitioners through the challenges posed to certification marks by genericness, descriptiveness, and consumer perception.

Scope of Protection of Weak Marks in the European Union—Analysis of the Case Law of the European Union Courts, by Jeroen Muyldermans and Paul Maeyaert. This in-depth article by two European Union practitioners surveys the evolving case law on so-called weak trademarks.

Abusive Trademark Registrations: Threats to International Trade and Commerce, by Daniel Bereskin, C.M., K.C. This article by a seasoned practitioner addresses the threats posed to major global economies by various forms of abusive trademark registrations.

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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®.

TTAB Orders Cancellation of STORIES OF THE PROPHETS Registration, Finding it Merely Descriptive of Religious Books

Inter partes decisions involving mere descriptiveness are rather rare. Here the Board granted a petition for cancellation of a registration for the mark STORIES OF THE PROPHETS, finding it merely descriptive of "religious books." Applicant Noaha claimed acquired distinctiveness under Section 2(f), based only on its allegedly substantially exclusive use of the mark for more than five years (since 1980). However, the "overwhelming" evidence showed that its use was not substantially exclusive. Paramus Publishing, Inc. v. Noaha, Cancellation No. 92079706 (October 23, 2025) [not precedential] (Opinion by Judge David K. Heasley).

Statutory Standing: Although the petitioner did not claim proprietary rights in the phrase "stories of the prophets," its testimony established that it used the phrase in publications since 2009, including in a children's book entitled, "Stories of the Prophets in the Holy Qur’an.’" "Consequently, Petitioner’s interest in using 'Stories of the Prophets” is within the zone of interests protected by statute, and Petitioner has a reasonable belief in damage proximately caused by Respondent’s registration. Corcamore, 978 F.3d at 1303-05. It has established its entitlement to pursue cancellation."

The issue at hand was "whether Petitioner has disproven Respondent’s claim of acquired distinctiveness, thereby establishing that the registered mark is merely descriptive, and therefore unregistrable." In other words, since the registration is entitled to a presumption of validity, the petitioner has the initial burden to overcome that presumption. If it does so, the burden of production shifts to the registration, but the petitioner always bears the final burden of persuasion.

Petitioner’s vice president testified not only to petitioner’s “Stories of the Prophets” books, but declared that "I also personally know of various other publications that have used the phrase 'stories of the prophets' to publish similar books." He identified publications from 1927 and 2003. Two bookstore owners each testified that "[o]ur store carries a variety of publications, including many with the phrase ‘stories of the prophets."

Petitioner adds its Notice of Reliance, which contains, among other things, depictions of books published in 1963 and 1985 incorporating “Stories of the Prophets” in their titles; a Wikipedia article for “Qisas al-Anbiya,” translated to “stories of the prophets” to show how the public would understand the term; and YouTube playlists, one entitled “Stories of the Prophets” for 17 videos with a combined viewership of about 1.5 million, and the other, “Stories of the Prophets – Quran Stories”, consisting of over 250 videos with over 900,000 subscribers.

Petitioner also submitted the testimony of a scholar of Islamic history and thought, who attested that the term “Stories of the Prophets” (and its Arabic original 'Qisas al-Anbiya') "is a term that has a basis in the religion of Islam dating back to the origins of Islam in 6th Century Arabia and the revelation of the Qur’an."

The Board found that petitioner had made out a prima facie case of mere descriptiveness, shifting to respondent the burden of producing additional evidence or argument in defense of the registration.

Respondent, appearing pro se, offered no evidence, but raised several arguments in its Notice of Reliance, which the Board chose to consider anyway, even though the arguments "do not rise to the level of testimony." Respondent attempted to "tack its use to a centuries-old version of "Stories of the Prophets."[Why would tacking on an earlier use or proving first use matter anyway? -ed.]. The Board was unimpressed by respondent's argument.

In sum, the evidence adduced by Petitioner, coupled with Respondent’s admissions, overwhelmingly establish that Respondent’s use of STORIES OF THE PROPHETS on religious books has not been “substantially exclusive,” either at the time of registration [April 20, 2021] or thereafter. *** We find that Petitioner has met its ultimate burden of proving, by a preponderance of evidence, that Respondent’s designation STORIES OF THE PROPHETS has not acquired distinctiveness, and remains merely descriptive, as Respondent impliedly conceded during prosecution of its application.

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TTABlogger comment: Seems like a lot of time and effort was spent on Respondent's irrelevant claims regarding the original source of the stories. The issue was public perception at the time of registration or the time of trial.

Text Copyright John L. Welch 2025.

Judge Mary Beth Myles Has Resigned from the TTAB

Administrative Trademark Judge Mary Beth Myles has resigned from the Trademark Trial and Appeal Board. She was appointed to the Board in 2024. Ms. Myles has joined Greenberg Traurig in its Los Angeles office. A current roster of the TTAB judges may be found here.

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Text Copyright John L. Welch 2025.

TTABlog Test: Are T-Shirts and Hats Related to Toy Action Figures Under Section 2(d)?

The USPTO refused to register the mark I HAVE THE POWER for “T-shirts and hats,” finding confusion likely with the identical mark for "toy action figures and accessories therefor." Keeing in mind that a TTAB Judge once told me that you can predict the outcome of a Section 2(d) case 95% of the time just by looking at the marks and goods (at least for ex parte cases), how do you think this appeal came out? In re David Swan, Serial No. 98517490 (October 23, 2025) [not precedential] (Opinion by Judge Robert Lavache).

Applicant Swan argued that the mark has a different meaning when applied as a slogan on packaging for action figures as opposed to a trademark for t-shirts. However, the Board pointed out once again that it must consider the registered mark as it appears in the registration, regardless of how it appears on the product. Nor was there any explanation why the mark would inherently have a different meaning on a t-shirt. Since the marks are identical, the first DuPont factor weighed heavily in favor of a conclusion that confusion is likely.

As to the goods, Examining Attorney Andrea Cornwell submitted internet evidence showing “that the same entity commonly produces the relevant goods and markets the goods under the same mark;" e.g., SPONGE BOB, BATMAN, G.I.JOE. She also made of record copies of 34 active, used-based, third-party registrations showing a single mark registered for toy action figures and shirts and/or hats.

Applicant Swan contended that the evidence failed to establish “‘something more’ to show relatedness in a manner that indicates the relatedness is well known or generally recognized." However, as stated in In re Samsung Display Co., the "something more" requirement does not apply when only goods are involved. And so, the Board found that the second DuPont factor weighed in favor of affirmance.

Snow feebly argued that the goods are not competitive and have different customers and trade channels. However, there were no limitations in his application or the cited registration as to classes of consumers or channels of trade, and the evidence showed that the goods are available in the same channels for the same customers.

Lastly, Snow contended that the Office should have taken into account his ownership of three registrations for the mark I HAVE THE POWER: for decorative magnets; refrigerator magnets, animal leashes; pet collars; pet tags; various types of bags; and key chains. The Board was unmoved.

Applicant’s arguments regarding its prior registrations appear to be based on a misconception of the ninth DuPont factor’s significance and application. Under this factor, the issue is not whether Applicant uses its mark on a variety of goods, but whether Registrant does. That is, if the prior user, the plaintiff in an inter partes case or the registrant in an ex parte case, uses its mark on a variety of goods, then purchasers are more likely to view a newcomer’s related goods under a similar mark as an extension of the prior user’s line.

Nor were Snow's prior registrations relevant under the 11th DuPont factor, which assesses “the extent to which applicant has a right to exclude others from use of its mark on its goods.” The claimed registrations cover different goods, and there was "no showing that [his] use of [his] mark in connection with these different goods has affected marketplace conditions or consumer perception so as to establish a right to exclude others from use of [his] mark on t-shirts and hats."

And so, the Board affirmed the refusal.

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TTABlogger comment: What if Mr. Shaw had submitted evidence that, say, bags and t-shirts are related?

Text Copyright John L. Welch 2025.

TTABlog Test: Is TROOMY for Supplements Confusable with TROOP for Mushroom-Containing Supplements?

Troop Nutrition opposed an application to register the marks TROOMY, in standard character and slightly stylized form, and the mark TROOMY NOOTROPICS in the form shown immediately below [NOOTROPICS disclaimed], for dietary and nutritional supplements, alleging likelihood of confusion with the registered mark TROOP, for dietary and nutritional supplements containing mushroom extract. Since the goods overlap, the Board presumed that those goods travel in the same trade channels to the same classes of consumers. But what about the marks? How do you think this came out? Troop Nutrition, Inc. v. BW Essentials LLC, Opposition No. 91287431 (October 22, 2025) [not precedential] (Opinion by Judge Jennifer L. Elgin).

The Board first considered the strength of the TROOP mark. Applicant submitted several website printouts supporting the meaning of TROOP as a group of mushrooms. Opposer's own use of the mark established that it has "some conceptual weakness in that it refers to a name for a group of mushrooms, a key ingredient" in Opposer's supplements. "Given that Opposer is openly marketing and reinforcing this connotation of its mark TROOP, we conclude that consumers of its products would give the mark this suggestive connotation."

The Board was unable to assess the commercial strength of opposer's mark due to "scant data" provided by opposer. DuPont factors five and six "weigh slightly against a finding of likelihood of confusion." The Board therefore accorded opposer’s mark "slightly less than 'the normal scope of protection to which inherently distinctive marks are entitled.'"

Turning to the marks, the Board unsurprisingly found TROOMY to be the dominant element in applicant's two non-standard marks. It also found that "TROOP (likely pronounced in its normal way, rhyming with “sloop” and “group”) and TROOMY (likely pronounced as rhyming with “roomy” and “gloomy”) look and sound different overall."

As to connotation and commercial impression, Applicant BW Essentials provided uncontroverted testimony that "TROOMY is a coined term (intended to mean 'true me' to connote a positive and healthy lifestyle and encourage users to be their 'true self' or find their 'true me') in combination with the words 'shroom' or 'shroomy' to refer to the functional mushroom extracts in Applicant’s goods." Moreover, the parties' advertising and packaging "corroborates that the marks have different connotations and commercial impressions that may be conveyed to consumers."

Because the products at issue are directly competitive, the degree of similarity required to prove a likelihood of confusion is lessened. Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992). Nonetheless, comparison of the marks’ sight, sound, meaning sand overall commercial impressions shows that Opposer cannot meet even this lowered standard, especially given the slightly narrowed scope of protection of its pleaded TROOP mark.

And so, the Board found that the first DuPont factor weighed "strongly against a finding of likelihood of confusion."

As to the remaining DuPont factors, the purchaser care factor slightly favored opposer, since "relevant purchasers are likely to exercise some degree of care when it comes to buying and using” goods that are ingested into the human body. Troop's claims of bad faith and actual confusion failed for lack of probative evidence.

The Board concluded that Opposer Troop failed to prove likelihood of confusion, and so it dismissed the opposition.

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TTABlogger comment: How did you do? I think the Board was a bit loose with the evidence of how the marks are actually used. Should it be looking at just the marks themselves? Maybe the Board needed extrinsic evidence in order to bolster its conviction that the marks are not confusingly similar, despite both having the "TROO" prefix.

Text Copyright John L. Welch 2025.

Two Recent Section 2(d) Oppositions Sustained by the TTAB

For some reason we are in the doldrums as far as TTAB decsions go. Here are two recent Section 2(d) oppositions that I will briefly summarize, for lack of anything more interesting to discuss. In the first, the goods and services of the parties overlapped and the marks were nearly identical. In the second the goods were complementary and the marks identical. (I may have to take tomorrow off.)

Suyen Corporation v. Deichmann SE, Opposition Nos. 91251931 and 91256682 (October 21, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen). The Board sustained these two oppositions to registration of the marks BENCH. (Stylized) for footwear and BENCH. URBANWEAR (Stylized) for footwear and for retail store services and on-line retail store services featuring footwear [(URBANWEAR disclaimed], finding confusion likely with the registered mark BENCH for overlapping goods and services. The Board perceptively noted that "[t]he inclusion or absence of a period has a minimal effect on the appearance and no effect on the overall sound or commercial impression of the marks." Furthermore, "Opposer’s standard character BENCH mark can be depicted in any font, size, or color and could be displayed in a font similar to Applicant’s depiction of its marks, further increasing the similarity of the marks’ appearances." As to the BENCH. URBANWEAR mark, "consumers familiar with Opposer’s BENCH mark may believe that BENCH URBANWEAR is a line extension offered by Opposer."

LabWorks, LLC v. Gerstel, Inc., Opposition No. 91285631 (October 17, 2025) [not precedential] (Opinion by Judge George C. Pologeorgis). The Board concluded that the mark LABWORKS for "Scientific apparatus, namely, hand-operated and automated laboratory tools for laboratory use for manipulating laboratory samples for sample preparation and introduction for use with gas chromatography equipment, liquid chromatography equipment, and mass spectrometers" is likely to cause confusion with the identical mark registered for "Computer software for laboratory information management, namely, software for maintaining and managing a database of information pertaining to laboratory procedures, for planning, scheduling, tracking and evaluating laboratory events and procedures, for maintaining records of laboratory procedure data, for reporting information about the status and results of laboratory procedures, and for the transfer of data to and from laboratory instruments, in the fields of the environment, water and waste water, utilities, process control, forensics, foods and beverages, and agriculture." The evidence demonstrated that Opposer’s software and Applicant’s apparatus are goods that "have been used in tandem in a laboratory setting." The Board found that the goods are complementary and therefore related.

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TTABlogger comment: Keep moving. Not much to see here. The Board rejected the "something more" requirement in the LABWORKS case becuase only goods were involved. "Something more" is required when considering goods versus services.

Text Copyright John L. Welch 2025.

TTAB Dismisses Section 2(d) Opposition to HABANA BRISA: not Confusable with HAVANA TAN! for Sun Care Preparations

In this contentious opposition proceeding, two pro se parties ultimately resorted to the Board's Accelerated Case Resolution regime. Opposer Robert W. Beissel alleged that the mark HABANA BRISA was likely to cause confusion with his registered mark HAVANA TAN!, both for sun care preparations (including "sun blocks"). The Board found it unnecessary to decide whether the doctrine of foreign equivalents applied here because "either way, the result under this DuPont factor would be the same -- overall the marks differ in sound, appearance, connotation and commercial impression." Robert W. Beissel v. Ron Rice Quality Suncare Products LLC and HB Suncare LLC, Opposition No. 91276355 (October 14, 2025) [not precedential] (Opinion by Judge Angela Lykos).

The Board found Opposer Beissel's mark HAVANA TAN! (with TAN! disclaimed) to be "highly suggestive" of his products. It therefore concluded that the mark "has some conceptual weakness because suggestive marks, and particularly highly suggestive marks like Opposer’s, fall on lower end of the distinctiveness spectrum than arbitrary or fanciful marks."

As to the marks, "[a]ssuming that U.S. consumers (including those familiar with Spanish) would not translate Applicants’ mark HAVANA BRISA into English but instead 'take it as it is,' see In re Tia Maria, Inc., 1975 TTAB LEXIS 130, at *4, such consumers will immediately notice the significant differences in sound and appearance with Opposer’s mark HAVANA TAN!." "Alternatively, if we assume that that U.S. consumers familiar with Spanish are likely to translate Applicants’ mark as HAVANA BREEZE, we find that the connotation and commercial impression is quite different than that of HAVANA TAN!."

Opposer’s mark consisting of the exclamatory phrase HAVANA TAN! “evokes the beaches of Cuba” near Havana and the glowing tan that can be achieved after vacationing there. On the other hand, the word “breeze” when used as a noun has an entirely different meaning than the word “tan” of “a light gentle wind.”28 Taken together, HAVANA BREEZE conjures images of a soft wind on the beaches near Havana, Cuba.

The Board concluded that the dissimilarity of the marks in sound, appearance, meaning and commercial impression, coupled with the conceptual weakness of the HAVANA TAN! mark (i.e. the first and sixth DuPont factors) outweighed the second and third." We draw this conclusion fully cognizant of the principle that where the goods are partially identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines."

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TTABlogger comment: The Board admonished the opposer for his ad hominem attacks against Board personnel. That probably didn't help his cause.

Text Copyright John L. Welch 2025.

TTAB Reverses VERSAMAX Section 2(d) Refusal: Applicant's Specific Tractors not Related to Trailers, Purchasers Careful

Once in a while (one out of ten), the Board reverses a Section 2(d) refusal. Here, the Board overturned a refusal of VERSAMAX for “Tractors, namely, industrial, multifunction hydraulic prime movers for vegetation management, snow removal, street sweeping and asphalt repair,” concluding that the mark is not likely to cause confusion with the registered mark VERSAMAXX for "Trailers; Cargo trailers; Flatbed trailers; Lowbed trailers; Dump trailers; Tractor trailers; Equipment trailers; Bulk hauling trailers; Gooseneck trailers; Heavy haul transport carrier vehicles in the nature of trailers for transporting land vehicles, namely, lowboys, drop decks, double drop decks, flat decks and tag trailers." The "high degree of purchaser care," coupled with the lack of proof that applicant's specific type of tractors are related to the “trailers” identified in the cited registration, led to the result. In re ATMAX Equipment Co., Serial No. 98192874 (October 16, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

The "central point" in this appeal concerned this question: "What constitutes a relevant relationship between the goods?" The Board's decision in Thor Tech [TTABlogged here] "makes it clear that complementary goods are not always related in a way that increases the likelihood of confusion. What matters is whether the relevant consumers of the goods are accustomed to seeing both types of goods sold under a single mark."

When the evidence shows that most producers of the goods do not sell both types of goods under a single mark, relevant consumers will have no reason to assume a connection, even when identical marks are used. This teaching was a central point of our Thor Tech decision.

Following Thor Tech, the Board must focus on the goods as identified in the application. Here, the Examining Attorney "relied on evidence of tractors, that is, of any kind of tractor. That was error, given that Thor Tech teaches the evidence must match the specific goods identified in the Application."

The Board noted that there was evidence of only three manufacturers offering both a tractor arguably within the scope of applicant's identification and a trailer sold under the same mark. "In view of the uncertainty whether these tractors even fall within the scope of the identification, we find that these three examples are insufficient to prove that “industrial, multifunction hydraulic prime movers” are related to trailers."

We cannot sufficiently determine, therefore, which of the tractors in the record are actually of the same type of those identified in the Application, a key requirement as our Thor Tech precedent makes clear. The burden of supporting the refusal falls on the Trademark Examining Attorney, and without evidence of relevant goods, we cannot make a reasoned determination of what relevant consumers are accustomed to seeing in the market. 

In sum, the Office failed to show that the goods are related. "Most of the evidence is not sufficiently tailored to the actual goods identified in the Application. Other evidence tends to show that differently branded tractors and trailers are common."

Given this record, we reach a similar conclusion to that reached in Thor Tech. The specific type of tractors identified by Applicant have not been shown to be related to the “trailers” identified in the cited Registration. The second DuPont factor weighs against a finding that confusion is likely.

Turning to the fourth DuPont factor, the Board acknowledged that it must consider “the least sophisticated potential purchasers,” In re FCA US LLC, (Ser. No. 85650654) 2018 TTAB LEXIS 116, *29. Nonetheless, it found that the relevant consumers "are likely to exercise great care when making purchasing decisions, thus significantly reducing the risk of confusion."

And so, the Board reversed the refusal to register.

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TTABlogger comment: You can't always connect your tractors with your trailers.

Text Copyright John L. Welch 2025.

On Remand, TTAB Reverses Course, Sustains Section 2(d) Opposition to ECHO D'ANGELUS for Alcoholic Beverages and Wine

On remand from the CAFC, the Board reversed course, sustaining this opposition to registration of the mark ECHO D’ANGÉLUS for "alcoholic beverages except beers" and "wines." The Board had originally found the mark not confusingly similar with opposer's mark ECHO DE LYNCH BAGES, for wine, placing "great weight" on its finding that the marks "incorporate[d] different-appearing house marks as part of unitary expressions." [pdf here]. The CAFC concluded that that finding was not supported by substantial evidence and, "since the Board gave 'predominant' weight to the similarity factor in its DuPont analysis, it is not clear whether the Board would have arrived at the same conclusion . . .." [TTABlogged here]. Chateau Lynch-Bages v. Chateau Angelus S.A., Opposition No. 91268431 (On Remand October 15, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Board was tasked with the following: "(1) re-assess our finding on the first likelihood-of-confusion factor, stripped of the finding that the last terms of the parties’ respective marks are their house marks; and then (2) re-weigh the relevant factors in light of our reassessed finding on the first likelihood-of-confusion factor."

As to the marks, even putting aside whether "house marks" are involved, the Board found that "[s]till, the visual and aural dissimilarity in the marks’ respective last words is a significant counterbalance to the identity of the first terms," and that "the marks’ dissimilarities slightly outweigh the marks’ similarities in presenting the marks’ overall commercial impressions."

Turning to the re-weighing of the DuPont factors, the Board reiterated its undisturbed findings that several factors weighed in favor of a conclusion of likelihood of confusion: "the goods are identical in part; the channels of trade are not limited and so are presumed identical; and the classes of customers are presumed identical as well. Purchaser care and sophistication was neutral." The Board also noted that "the fact that the goods are identical in part is a significant consideration in the likelihood-of-confusion calculus."

On the other hand "[w]eighing against a conclusion that confusion is likely is our revised finding . . . that the marks have both similarities and differences, with the dissimilarities slightly outweighing the similarities." Even so, this slight degree of difference "does not tilt enough in Applicant’s favor to outweigh the other relevant factors, including the overlap in the goods, that indicate that confusion is likely."

Overall, it is our conclusion that the re-weighing of the relevant factors presents a very close question. In inter partes decisions spanning the past eight decades, the Federal Circuit and its predecessor court have consistently noted that, where the evidence presented results in a close or doubtful case as to whether confusion is likely, any doubt must be resolved in favor of a prior registrant against a newcomer.

Resolving its doubt in Opposer’s favor, the Board sustained the Section 2(d) claim.

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TTABlogger comment: This came as a bit of a surprise to me.

Text Copyright John L. Welch 2025.

TTAB Deems Bottle Trade Dress a Mere Refinement of Existing Designs and so Not Inherently Distinctive

Although the USPTO had accepted its claim of acquired distinctiveness under Section 2(f) for its bottle trade dress for "bitters," Applicant Fee Brothers, Inc. appealed from the rejection of its claim of inherent distinctiveness. The Board applied the Seabrook test in finding that the proposed mark was "a mere refinement of or variation on existing trade dress within the relevant field of use." In re Fee Brothers, Inc., Serial No. 90666517 (October 14, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Fee Brothers described its mark as "a three-dimensional configuration of product packaging for a glass bottle consisting of multiple renditions of a paper label that wraps around and covers substantially all of the glass portion of the bottle and is twisted at the bottom of the bottle and at the top near the neck of the bottle, with a sticker affixed around the circumference of the bottle neck at the top of the twisted label, the two ends of the sticker criss-crossed at the back of the bottle. The shape of the bottle is not a claimed feature of the mark, and therefore, the bottle cap and top of the bottle neck are depicted in dotted lines for the purpose of showing the position of the mark on the goods." [Emphasis added].

In determining whether product packaging is inherently distinctive, the Board considers the following factors set forth by the CCPA in Seabrook Foods, Inc. v. Bar-Well Foods, Ltd., 568 F.2d 1342, 1344 (CCPA 1977):

1. whether it was a ‘common’ basic shape or design, 
2. whether it was [not] unique or unusual in the particular field, 
3. whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or 
4. whether it was capable of creating a commercial impression distinct from the accompanying words. 

“If a mark satisfies any of the first three tests, it is not inherently distinctive.” Chippendales, 622 F.3d at 1351.

The first Seabrook factor "essentially asks whether the trade dress is common generally: for example, does it employ a basic shape or design such as a letter or geometric shape?" The Board noted that the proposed mark does not include the shape of the bottle, but rather comprises "a specific placement of the paper label wrapped around the bottle and a specific placement of the sticker around the bottle neck." "The configuration of the paper label and sticker is not a common basic shape or design."

The second factor asks "whether the trade dress “is common in the particular field of use.” The Board found that it was not. "Although there is evidence that some bitters bottles share certain features of Applicant’s product packaging, there is no evidence showing use of the same exact configuration as used by Applicant, and multiple industry experts have attested to the uniqueness of Applicant’s product packaging."

Turning to the third factor, the Board agreed with Examining Attorney Jessica Gearhart that applicant’s proposed mark "is a mere refinement of existing trade dress within the relevant field of use." She identified multiple products of relevance that utilize a paper wrapping similar to Applicant’s paper wrapping:

The Examining Attorney also identified multiple bottles within the relevant field of use that utilize a sticker (or something that resembles a sticker) in the same area of the bottle where Applicant’s sticker appears:

Here, the packaging of other products within the relevant field of use share many of the same features as Applicant’s Mark, including the use of a paper wrapper around the bottle and the use of a label around the neck of the bottle. Applicant’s specific placement of its paper wrapper (i.e., extending it further above and/or below the bottle than third-party configurations and twisting the wrapper at the top and bottom) and its specific placement of its neck sticker (i.e., over the paper wrapper with a criss-crossed pattern on the backside of the bottle as opposed to directly on the glass of the bottle and not in a criss-crossed pattern) are mere refinements of existing designs rather than significant differences from them.

And so, the Board affirmed the refusal on the ground that the mark is not inherently distinctive. However, because Applicant Fee Brothers asserted in the alternative that its mark had acquired distinctiveness, and because the Examining Attorney found Applicant’s evidence of acquired distinctiveness sufficient, the Board ordered the application to be amended to reflect the Section 2(f) claim.

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TTABlogger comment: For a discussion of why a registrant would prefer a registration based on inherent distinctiveness rather than Section 2(f), see Stephen W. Feingold's guest TTABlog post: "Why You Should Think Twice Before Accepting a 2(f) Registration" [here]. By the way, the CAFC affirmed the TTAB in Chippendales [TTABlogged here].

Text Copyright John L. Welch 2025.

Precedential No. 9: Affirming GASPARILLA Section 2(d) Refusal, TTAB Rejects Flimsy Consent Agreement

Consent agreements may carry great weight in the Section 2(d) analysis, but not this time. The Board affirmed a refusal to register the mark GASPARILLA on the Supplemental Register, for various goods, including glassware and shirts, finding confusion likely with the registered mark GASPARILLA TREASURES for, inter alia, beverageware and shirts. Applicant Ye Mystic Crewe did not contest the Board's findings regarding all but one of the DuPont factors, maintaining that, under the 10th factor, its Consent Agreement with the cited registrant sufficed to fend off the refusal. Not so, said the Board. In re Ye Mystic Krewe of Gasparilla, 2025 USPQ2d 1291 (TTAB 2025) [precedential] (Opinion by Judge Elizabeth K. Brock).

"Gasparilla" is the name of a barrier island in Southwest Florida, and it also refers to the "Gasparilla Pirate Festival" held annually in Tampa to commemorate a friendly invasion by the mythical pirate José Gaspar.

The tenth DuPont factor considers the market interface between the applicant and the owner of the prior mark, which here requires a review of the consent agreement proffered by Applicant Ye Mystic Crewe. Consent agreements "“may ... carry great weight” in the DuPont analysis, since the parties to the agreement are in a “better position to know the real life situation than bureaucrats or judges.” Bongrain Int’l (Am.) Corp. v. Delice de France Inc., 811 F.2d 1479, 1485 (Fed. Cir. 1987). However, there is no per se rule that a consent agreement will always "tip the balance to finding no likelihood of confusion." Bay State Brewing Co., 2016 TTAB LEXIS 46, at *16.

In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1567 (Fed. Cir. 1993), the CAFC provided a list of non-exclusive factors that may be considered in assessing the import of a consent agreement: 

1. Whether the consent shows an agreement between both parties; 
2. Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels; 
3. Whether the parties agree to restrict their fields of use; 
4. Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and 
5. Whether the marks have been used for a period of time without evidence of actual confusion.

The subject Consent Agreement was quite brief. The parties agreed that "there has not been, currently is no, and will likely be no, likelihood of consumer confusion," and they promised to take "commercially reasonable steps to address [any] confusion and prevent its future occurrence." 

Here the involved marks are "highly similar" and the goods identical or legally identical in part. The Board pointed out that there was "no indication that the goods will travel in separate trade channels, nor any agreement that the parties will sell in separate trade channels or otherwise restrict their fields of use." Furthermore, the Consent Agreement contains no provision regarding display of the marks. 

The Board also considered the period of time in which the marks have been in use without confusion. Even accepting the parties' alleged first use dates, the marks would have been in concurrent use for only about one year at the time the Consent Agreement was executed. "When considered in the context of the other deficiencies of this Consent Agreement, we find this slight amount of simultaneous use without evidence of actual confusion too limited to support a conclusion that confusion is unlikely." Cf. Top Tobacco, L.P. v. N. Atl. Operating Co., Consol. Opp. Nos. 91157248 et. al., 2011 TTAB LEXIS 367, at *37 (TTAB 2011) (lack of evidence of actual confusion over ten years in same trade channels “slightly” weighs in favor of a finding that confusion is unlikely).

The Board concluded that "the Consent Agreement simply does not rise to the level of one of the “more detailed agreements” to be given “substantial” weight, DuPont, 476 F.2d at 1362." It therefore found that the tenth DuPont factor weighed " only slightly against a conclusion of likely confusion" and did not outweigh the other factors.

And so, the Board affirmed the refusal.

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TTABlogger comment: Would you call this a half-naked consent?

Text Copyright John L. Welch 2025.

SHIPPERCOPILOT Merely Descriptive of AI Software Services for Facilitating Shipping, Says TTAB

The Board upheld a Section 2(e)(1) refusal to register the proposed mark SHIPPERCOPILOT (in standard character form), finding it to be merely descriptive of "artificial intelligence as a service (AIAAS) services featuring software using artificial intelligence (AI) for facilitating radio frequency identification (RFID), warehouse management, shipping, picking, packing, transfer of stock, storing of goods, planning, workflow optimization, tracking, alerts, inventory monitoring, outbound and inbound delivery, parcel tracking, and parcel tracing in the logistics industry." As usual, Applicant Eshipjet Software argued that the mark is at most suggestive, but the Board didn't buy it. In re Eshipjet Software Inc., Serial No. 98708838 (October 7, 2025) [not precedential] (Opinion by Judge Mark Lebow).

Examining Attorney James Sensor submitted a dictionary definition of "shipper" (“one that sends goods by any form of conveyance") and several articles showing use of "copilot" as "a term of art for an artificial intelligence (AI)-powered assistant designed to help users with various tasks." From that evidence, the Board found that SHIPPERCOPILOT "immediately conveys to consumers a feature, function, or characteristic" of applicant's services."

Eshipjet maintained that the combination of the terms evokes a new and unique commercial impression: it "suggests an assistant shipping pilot that steers a ship through a difficult stretch of water." However, the Board pointed out once again that a term must be considered in the context of the identified goods and/or services, not in the abstract.

[T]he wording “SHIPPERSCOPILOT,” when used in connection with Applicant’s computer AI software services, immediately conveys information about Applicant’s services, namely, an AI computer assistant (otherwise known as a “copilot”) that assists shippers with their shipping logistics.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2025.

Professor Curtin Files Petition for Certiorari in RAPUNZEL Consumer Standing Case

Professor Rebecca Curtin had filed a petition for writ of certiorari, seeking Supreme Court review of the Federal Circuit's ruling in Curtin v. United Trademark Holdings, Inc., 2025 USPQ2d 784 (Fed. Cir. 2025) [precedential]. [TTABlogged here]. The CAFC affirmed the Board's holding that "only commercial actors affected by the mark’s registration fall within the zone of interests to oppose the registration as generic, descriptive, or [failing to function as a trademark]," and it upheld the Board's dismissal of mere consumer Curtin's opposition to registration of the mark RAPUNZEL for dolls and toy figures on the ground of lack of statutory standing. [Petition for certiorari here: Curtin v. United Trademark Holdings, Inc., No. 25-435 (October 3, 2025)].

QUESTION PRESENTED

Whether a party desiring to participate in an administrative agency proceeding, including a trademark opposition proceeding at the United States Patent and Trademark Office, must satisfy the zone-of-interests and proximate-causation tests set forth in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), for causes of action in federal court.

INTRODUCTION

In the decision below, the Federal Circuit held that to participate in an opposition to the registration of a trademark before the United States Patent and Trademark Office (“PTO”), the petitioner must satisfy the framework for statutory causes of action set forth in Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014)—namely, the petitioner must satisfy the zone-of-interests and proximate-causation tests. The Federal Circuit’s holding directly conflicts with the decisions of the Third, Fifth, and D.C. Circuits, which hold that the zone-of-interests and similar tests do not apply to administrative agencies. It also conflicts with decisions of this Court. The Court has long held that there are wide differences between administrative agencies and courts and that the standards applicable to one should not necessarily be applied to the other. In Lexmark, the Court addressed only the standards applicable to a plaintiff bringing a cause of action in federal court. The notion that an agency proceeding could be a “cause of action” conflicts with this Court’s explanation that “[t]he concept of a ‘cause of action’ is employed specifically to determine who may judicially enforce the statutory rights or obligations.” Davis v. Passman, 442 U.S. 228, 239 (1979) (emphasis added). The Federal Circuit’s imposition of the standards applicable to plaintiffs in federal court on agency petitioners flies in the face of the basic fact that agencies are not courts, and the standards for participating in agency proceedings differ from those for participating in district court litigation.

The Court’s immediate review is warranted to correct the Federal Circuit’s recent break from well established principles enshrined in numerous decisions of the Circuit Courts and this Court. The Court should also grant review to prevent the Federal Circuit’s decisions from affecting numerous other agencies. This case arises from a trademark opposition proceeding before the PTO. However, the Federal Circuit has jurisdiction to review decisions from numerous other federal agencies. If left unchecked, the Federal Circuit’s decisions could have far reaching consequences for various administrative schemes. As it stands, the Federal Circuit’s decisions cut off administrative participation by consumers in trademark registration and cancellation proceedings. Consumers are now wholly dependent on marketplace sellers to challenge deficient trademarks before the PTO. This is so even though a core purpose of the Lanham Act is “to protect the ability of consumers to distinguish among competing producers.” Park’n Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985) (emphasis added) (citing S. Rep. No. 1333, at 3, 5), and even though Congress permits “[a]ny person who believes that he would be damaged” to participate in a proceeding. 15 U.S.C. § 1063; see id., § 1064.

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TTABlogger comment: I think the Court might take this one up. BTW: I also think the USPTO should have pulled back this application for further examination on the ground of mere descriptiveness or (dare I say it?), genericness.

Text Copyright John L. Welch 2025.

TTABlog Test: Is "1849 BOURBON" for Distilled Spirits Confusable With "1849" for Wine?

The USPTO refused to register the mark 1849 BOURBON for “distilled spirits" [BOURBON disclaimed], finding confusion likely with the registered mark 1849 for "alcoholic beverages, namely, wine and sparkling wine." Applicant Trinity River Distillery pointed to statements made by the registrant during prosecution of the application that yielded the cited registration: that marks incorporating 1849 can co-exist for "different forms of adult beverages," and that confusion was unlikely with 1849 for "beer." How do you think this appeal came out? In re Trinity River Distillery, LLC, Serial No. 98170756 (October 10, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen).

The Board began by addressing the impact of the prior statement by the registrant. "Applicant is essentially asserting that Registrant’s statements are file wrapper estoppel; however, file wrapper estoppel is not applicable in trademark cases nor are the statements about a third-party registration not at issue here an admission against interest." See, e.g., Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 929 (CCPA 1978).

The Goods: There is no per se rule that all alcoholic beverages are related. [It just turns out that way - ed.]. Examining Attorney Christian Martin submitted evidence of ten third-party websites that offer both distilled spirits and wine under the same or very similar marks, as well as more than 35 third-party use-based registrations for both distilled spirits and wine under the same mark. "The third-party websites and registrations demonstrate that distilled spirits and wines are . . . related."

Trinity attempted to distinguish its trade channels and consumers by arguing that "while both distilled spirits and wine may end up in the same store, the trade channels are distinct as the manufacture and sale of alcoholic beverages are regulated by law" and "based on the intrinsic nature of alcoholic beverages wherein products are always delineated by sections and not sold side-by-side (e.g., wine sections are separate from distilled spirit sections)." The Board was unimpressed. "Because the identifications of goods contain no limitations, Applicant’s and Registrant’s goods are presumed to move in all ordinary channels of trade and would be available to all classes of purchasers." The evidence showed that distilled spirits and registrant’s wines are advertised on the same third-party websites to the same consumers, and furthermore they may be available in other channels of trade such as bars and restaurants.

Strength of the Cited Mark: Trinity provided no evidence of third-party use of "1849" for the relevant goods, and offered a mere two registrations, for vastly different marks: OLD FITZGERALD’S 1849 and COINTREAU NOIR A BLEND OF ORANGE LIQUEUR & COGNAC IMPORTER LIQUEUR PRODUCT OF FRANCE ANGERS-FRANCE E. COINTREAU 1849. Trinity thus failed to prove that the cited mark is conceptually or commercial weak, and the Board concluded that the sixth DuPont factor was neutral.

The Marks: Trinity primarily contended that its mark is distinct from the 1849 mark because its use of "'1849' is [in] reference to the year of Texas independence and the establishment of Fort Worth, Texas (Applicant’s home location); the owner of the 1849 Registration is based in California 'and is inspired by the ‘Gold Rush’ of 1849 which was pervasive in California.'" Further, it argued that use of the involved marks is distinct as evidenced by their bottle labels: "every use of ‘1849’ by [Registrant] is accompanied by ‘Wine’ which connotes a single product and no cross-use for different products." The Board was unmoved.

The Board noted that it is "equally as likely that consumers would consider 1849 as the date when the goods were first offered or when the company was founded or that if consumers attribute Applicant’s suggested meaning of 1849 to its goods that consumers would attribute the same meaning to Registrant’s goods." As to the product labels, that argument was simply irrelevant, since the Board considers only the marks and goods as presented in the involved application and registration, regardless of real-world usage.

Not surprisingly, the Board found that "1849" is the dominant element of Trinity's mark: "lead words are their dominant portion and are likely to make the greatest impression on consumers." "The non-source identifying nature of BOURBON and the disclaimer thereof constitutes a rational reason for giving the term less weight in our analysis." The Board observed that "[c]onsumers familiar with Registrant’s mark, 1849, who encounter Applicant’s mark, 1849 BOURBON, could perceive it as indicating that the makers of 1849 have added a distilled spirit or bourbon to their product line."

Other Factors: The Board rejected Trinity's "sophisticated consumers" argument, both for lack of evidentiary support and because the subject application and cited registration contain no limitations as to price or classes of consumers. As to lack of evidence of actual confusion, the Board noted that such an argument carries little weight in an ex parte context since the registrant has no opportunity to be heard. Moreover, there was no evidence that a reasonable opportunity for confusion had occurred.

Conclusion: The Board affirmed the refusal.

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TTABlogger comment: This seems like a good case for applying file wrapper estoppel. Why not?

Text Copyright John L. Welch 2025.

TTABlog Test: Which One of These Four Section 2(d) Appeals Was Successful?

Section 2(d) affirmances continue to run at about 90% this year (as usual). Here are three recent appeals involving four refusals. One of the refusals was reversed. How do you think they came out? [Answer in first comment].

In re Cygan Law Offices PC, Serial No. 97748442 (September 30, 2025) [not precedential] (Opinion by Judge David K. Heasley). [Section 2(d) refusal of the mark PATENT INSANITY for "Providing online non-downloadable educational videos and audio recordings regarding patent law, patent applications and patent strategy, for inventors, entrepreneurs, small business owners, paralegals, patent administrators and other legal professionals" [PATENT disclaimed], in view of the registered mark INSANITY for, inter alia, “legal agency services in the form of providing legal counsel and legal services in the fields of intellectual property law,” “legal advocacy services, namely, providing legal and paralegal services for intellectual property owners,” and “provision of information, advisory and consultancy services in the fields of internet-based social networking and intellectual property legal services."]

In re Dream Home Construction, LLC, Serial No. 98273894 (October 7, 2025) (Opinion by Judge Robert Lavache) [Section 2(d) refusal to register the mark DREAM HOME CONSTRUCTION (in standard characters) for “Custom construction of homes; Residential building construction; Construction of residential buildings; Consulting services in the field of home construction; custom building renovation; renovations of residential buildings" [HOME CONSTRUCTION disclaimed], in view of the registered mark shown immediately below, for "Housing services, namely, repair, improvement, and construction of residential real property"[HOME disclaimed].

In re Scrap-It, LLC, Serial Nos. 98080167 and 98080224 (October 8, 2025) [not precedential] (Opinion by Judge Thomas L Casagrande). [Section 2(d) refusals of the mark shown immediately below, for "Business consulting, management, and planning services in the field of field of debris removal from sites of building construction, renovation, restoration and demolition” (Class 35) and for "Providing temporary use of a non-downloadable web application for scheduling debris removal services" (Class 42) [WASTE MANAGEMENT disclaimed], in view of the registered mark SCRAP-IT! (in standard characters) for “Software as a service (SAAS) services featuring software for connecting customers wanting items removed from a location with companies and people that can haul away the items.”]

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

Text Copyright John L. Welch 2025.

PT Medisafe Files Certiorari Petition Seeking to Overturn CAFC Green Medical Glove Genericness Ruling

PT Medisafe Technologies has filed a petition for writ of certiorari with the Supreme Court, seeking to overturn the CAFC's affirmance [here] of the TTAB's decision that upheld a refusal to register a particular shade of green as a trademark for "chloroprene medical examination gloves" on the ground of genericness. The appellate court concluded that the Board applied the correct test for determining whether a color mark is generic, and that substantial evidence supported the Board's factual finding that Medisafe’s proposed mark is generic. PT Medisafe Technologies v. USPTO, Petition No. 25-400 (filed October 1, 2025) (denied November 24, 2025).

The TTAB found that Medisafe’s color mark is generic because it is "so common in the chloroprene medical examination glove industry that it cannot identify a single source." The Board pointed to screenshots of websites selling, under third-party marks, "chloroprene/neoprene medical examination gloves in the same or nearly the same dark green color as in [the] proposed mark." The CAFC, applying the Milwaukee test (color red generic for saw blades), concluded that "substantial evidence supported the Board’s determination that Medisafe’s proposed color mark is generic." The court rejected Medisafe’s claim that the Milwaukee test improperly ignores the statutory language (Section 14(3)) that allows for cancellation of a registration only if the registered mark is a "generic name."

Petitioner's "STATEMENT" (in part)

This case presents a critical question for the owners of color trademarks and the consumers who rely on them to identify the source of the products on which they are used. Namely, what is the legal test for determining whether color trademarks are “generic” under the Trademark Statute?

In particular, Petitioner Medisafe argued that, based on the plain language of 15 U.S.C. § 1064(3), a mark becomes generic only when it “becomes the generic name for the goods or services, or a portion thereof, for which it is registered.” The Federal Circuit rejected this argument and held that the “generic name” requirement of 15 U.S.C. § 1064(3) does not “apply equally to all types of marks.” The Federal Circuit adopted a test for genericness that does not ask if the mark in question “names” or “refers” to the goods and asks instead: whether the color sought to be registered or retained on the register is understood by the relevant public primarily as a category or type of trade dress for that genus of goods or services.

But in so doing, the Federal Circuit crafted a test for genericness that runs afoul of the Trademark Statute, the precedent of this Court, and every other court of appeals. And it presents a risk of grave harm to the owners of legitimate product design trade dress who may lose protection of the trademark law.

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TTABlogger comment: What are the odds that the Supreme Court takes this case?

Text Copyright John L. Welch 2025.

TTAB Denies Petition to Cancel Registration of President XI Likeness Due to Lack of Statutory Standing

Jinchun Ma, appearing pro se, fended off a petition for cancellation of his registration for the mark shown immediately below, for "pet accessories," including "canvas pouches for holding disposable bags to place pet waste in." Petitioner Zhejiang Import, allegedly a Chinese “trade organization for various pet food and pet products that are manufactured in China and sold internationally, including to the United States," asserted six claims:false suggestion of a connection with Chinese President Xi (claiming that the Chinese characters for “Xi Da Da” are a nickname for President Xi), abandonment, nonuse, lack of consent (2)(c), failure-to-function, and fraud. Zhejiang Import & Export Pet Food and Product Industry Association v. Jinchun Ma, Cancellation No. 92076309 (October 6, 2025) [not precedential] (Opinion by Judge Jennifer L. Elgin). (Reconsideration denied [here], December 22, 2025).

To establish entitlement to petition to cancel Respondent Ma’s registration, Zhejiang Import had to demonstrate: (1) its claims fall within the zone of interests protected by the statute (i.e., it has a “real interest” in the outcome of the proceeding); and (2) damage proximately caused by the registration (i.e., a reasonable basis for its belief in damage). See Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359, 1367 (Fed. Cir. 2025). For purposes of its analysis, the Board assumed (without deciding) that the image and likeness in fact referred to President Xi.

The Board first noted that neither Petitioner Zhejiang Import nor its members are President Xi, nor do they have any direct connection to President Xi. "Mere Chinese citizenship is not sufficient to demonstrate a connection." [Compare Jewelers Vigilance, 823 F.2d at 483, in which a trade association of suppliers, wholesalers, distributors and retailers of DeBeers diamonds and diamond jewelry was found entitled to assert a Section 2(a) claim against registration of a mark incorporating the name DEBEERS.]

Thus, the interests of Petitioner and its members do not fall within the zone of interests protected by any of the asserted claims. The asserted harms are “purely derivative of misfortunes visited upon a third person by the defendant’s acts” and insufficient to demonstrate proximate harm to Petitioner or its members. Luca McDermott, 102 F.4th at 1327 (citing Lexmark, 572 U.S. at 133).

The Board then found that the alleged harm to Zhejiang Import and its members resulting from Ma's mark incorporating the purported image of President Xi and Chinese characters also was "speculative and highly attenuated." "Petitioner has failed to prove that its fear of retribution from the Chinese government based on the registration of Respondent’s mark is reasonable." "Moreover, it is not enough for Petitioner to prove merely that it or its members are in the same business as Respondent. *** It also must establish that it has a present or prospective interest in using a similar mark or term."

The only proof of Zhejiang Import's purported bona fide intent to use a similar mark consisted of vague testimony and a partial TSDR printout of its application to register the mark shown below.

There was no documentary evidence corroborating the development of the mark or of Zhejiang Import’s intent to use it in the United States.

Moreover, despite similarities in structure (namely, non-English characters above and below a male face, with English text underneath, and designs framing the bottom of the face), Petitioner’s proposed mark and Respondent’s mark are not at all similar. Thus, Petitioner’s assertion that the challenged registration poses a “potential obstacle” to its application or use of the mark is not reasonable under the circumstances. 

The Board acknowledged that "a plaintiff’s entitlement to a statutory cause of action is 'a low threshold,'" but Zhejiang Import failed to clear that hurdle.

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TTABlogger comment: The literal portion of the challenged mark reads: "OPPOSITION TO TYRANNY BEGINS WITH CONTEMPT FOR DICTATORS" at the top, and "BUNS WILL CERTAINLY REVEAL THEIR FILLINGS" on the bottom.

Text Copyright John L. Welch 2025.