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 In re David Swan, Serial No. 98517490 (October 23, 2025) [not precedential] (Opinion by Judge Robert Lavache).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.