TTABlog Test: Is LA PACHANGA MARGARITAS Y FIESTA Confusable with PACHANGA MEXICAN GRILL for Restaurant Services?

The USPTO refused to register the proposed mark LA PACHANGA MARGARITAS Y FIESTA in the word-and-design form shown below, for "providing of food and drink via a mobile truck; restaurant services" [MARGARITAS disclaimed], finding confusion likely with the registered mark PACHANGA MEXICAN GRILL (in standard characters with a disclaimer of MEXICAN GRILL) for “restaurant services." Applicant argued that the term PACHANGA, which means "a (lively) party" in Spanish, is a weak formative, further evidenced by third-party use of that word and of the English word PARTY in connection with restaurant services. How do you think this appeal came out? In re O&R Franchise Group LLC, Serial No. 98134084 (December 30, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Board first considered the strength of the cited mark. Applicant submitted four third-party registrations for marks containing the word PACHANGA, but none were for restaurant services. It also provided seven third-party websites showing use of PACHANGA in connection with restaurant services, but those were "not so plentiful to make a meaningful impact in terms of demonstrating commercial weakness."

Finally, Applicant pointed to 10 third-party registrations for marks incorporating the term PARTY in connection with food and restaurant services, arguing that these marks are relevant because, under the doctrine of foreign equivalents, PACHANGA is "the Spanish equivalent of PARTY and [thus is] similarly weak." The Board was unmoved: "Applicant does not cite to any authority to support the application of the doctrine of foreign equivalents in the manner it seeks, i.e., for purposes of using third-party registrations containing the English equivalent of an allegedly weak foreign term." Nonetheless, the third-party registrations and uses of PACHANGA-formative marks confirmed the suggestive connotation of the word.

The Board concluded that PACHANGA is "somewhat conceptually weak in that it is plainly suggestive in connection with restaurant services" [i.e., a "festive dining atmosphere."] "But the fact that it is suggestive does not mean its scope of protection shrinks substantially," and so this sixth DuPont factor weighed "somewhat" in applicant's favor.

Turning to the marks, the Board found them to be "quite similar in appearance and sound because the dominant element of each mark is the term PACHANGA," attributing no significance to the word "LA." Both marks "are suggestive of a festive Mexican-themed or cuisine establishment."

In sum, we conclude that the marks are overall very similar. Consumers are likely to call for the respective services by using the nearly identical terms LA PACHANGA or PACHANGA. The marks also have similar connotations and convey similar commercial impressions. Accordingly, the first DuPont factor weighs in favor of a conclusion that confusion is likely.

Since the involved services are identical, the Board must presume that they are offered in the same trade channels to the same classes of consumers, and so the second and third DuPont factors weighed "heavily" in favor of affirmance of the refusal.

Though the shared term, PACHANGA, is plainly suggestive and thus has some conceptual weakness and a minimal showing of third-party use, which tend to favor a finding that confusion is not likely, this is far outweighed by the other aforementioned factors. We thus conclude on this record that Applicant’s mark is likely to cause confusion with the registered mark.

Ands so, the Board affirmed the refusal.

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TTABlogger comment: How did you do? Would you dub this a WYHA? What do you think about the doctrine of equivalents issue?

Text Copyright John L. Welch 2025.

TTAB Reverses Two Section 2(d) Refusals: Cited Third-Party Websites Failed to Show Relatedness of Charitable Food Distribution and Fundraising Services

In a lengthy, detailed opinion, the Board reversed Section 2(d) refusals of the mark POTS in standard character and logo form (shown below) for food distribution and charitable services, in view of the mark POTS for fundraising software and services. Relying on the Board's OSF Healthcare decision [pdf here] in analyzing the relatedness issue, the Board found that the differences in the goods and services, channels of trade, and classes of consumers outweighed the identity and similarity of the marks, making confusion unlikely. In re Part of the Solution, Serial Nos. 97791804 and 97791806 (December 18, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

In seeking to prove the relatedness of the involved goods and services, the Examining Attorney relied  solely on extrinsic evidence in the form of eight third-party websites of charitable organizations. The Board found that evidence "insufficient in quantity and quality to establish relatedness." 

In view of the number of charitable organizations in United States that provide goods and render services to those in need, "eight websites strike us as too few in number to show that 'the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark,' 10 TTABVUE 5 (emphasis added), even if the websites were probative of that issue." Moreover, ....

The websites here are not probative of that issue, however, because they do not show that the same entities offer both the services actually identified in the ’804 and ’806 Applications and the goods or services actually identified in the ’860 Registration. As the Board explained in OSF Healthcare, under the second DuPont factor, examining attorneys must focus on the actual language in the identification of goods or services in an application, rather than on broadened or generalized descriptions of the identified goods or services. OSF Healthcare, 2023 WL 6140427, at *12. (emphasis supplied).

In OSF Healthcare, the Board explained that “[w]ith respect to Internet evidence, in determining exactly what services are offered through the respective websites, we acknowledge that services may not be explicitly described at all, or may be described in colloquial language that does not track the technical language of acceptable identifications of goods and services in applications and registrations, including those involved here.” OSF Healthcare, 2023 WL 6140427, at *10 (citation omitted). “In such instances, we must determine the nature of the services that are offered, and decide whether they fall within the full scope of the language in the involved identifications.”

The Examining Attorney did not follow OSF Healthcare because "she quotes only snippets of the Class 36 identification in the ’860 Registration, and otherwise paraphrases the involved identifications of goods and services."

We agree with the Examining Attorney that the evidence shows that charitable organizations such as Applicant engage in fundraising; indeed, money or in-kind donations raised through such efforts are the lifeblood of those organizations. But unlike the fundraising-related goods and services identified in the ’860 Registration, which are necessarily provided to, and for the benefit of, entities other than Registrant, the fundraising activities of Applicant and other charitable organizations are for the benefit of the organizations themselves and are not provided to, and for the benefit of, other entities. As a result, those fundraising activities are not “services” for purposes of the second DuPont factor.

The Board concluded that the goods and services identified in the cited registration and the services identified in the subject applications are not related, and "the second DuPont factor strongly supports a conclusion that confusion is not likely...."

Furthermore, the evidence "also does not establish that the channels of trade or classes of consumers for these [goods and] services overlap."

Read comments and post your comment here.

TTABlogger comment: Judge Larkin also wrote the opinion in OSF Healthcare.

Text Copyright John L. Welch 2025.

BOWENS for Guitars is Primarily Merely a Surname, Says TTAB

The Board affirmed a Section 2(e)(4) refusal to register the proposed mark BOWENS for guitar and audio equipment, finding the mark to be primarily merely a surname and therefore barred from registration (absent a showing of acquired distinctiveness). The Board observed that BOWENS is neither a rare surname nor a common one, but it is the surname of tens of thousands of individuals. There was "some evidence that this term has surname significance in some other established contexts," and no evidence of any other established meaning of BOWENS. In re The Hoist Group Inc., Serial No. 98444366 (December 22, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

In determining whether the mark BOWENS is primarily merely a surname, the Board considered the following four Benthin factors:

1. Whether the surname is rare; 
2. Whether anyone connected with the applicant has that surname; 
3. Whether the term has any recognized meaning other than as a surname e.g., an “ordinary language” meaning; and, 
4. Whether the term has the structure and pronunciation of a surname.

As to the first factor, the LEXIS/NEXIS surname database included more than 23,000 individuals with the Bowens surname, located across the United States. Examining Attorney Komal Vo provided evidence from ancestry.com showing more than 72,000 persons with the Bowens surname.

Applicant argues BOWENS is not a common surname, as it accounts for a tiny fraction of the individuals in the United States. Both the Trademark Examining Attorney and the Applicant are correct here, as BOWENS is not a rare or common surname. It rests somewhere between these two points on the range of surnames in the United States. The standard, however, asks whether the BOWENS surname is rare. We find it is not rare, though it is not particularly common either. The first factor supports the refusal, but is not conclusive of the primary significance of the applied-for mark.

The second factor was neutral: there was no evidence that the surname BOWENS is connected to anyone associated with Applicant Hoist Group.

As to the third, Hoist argued that BOWENS has other meanings - for example, BOWENS ISLAND, near San Antonio, Texas. However, the evidence showed that the area was named after John Bowen and thus this evidence supported the Section 2(e)(4) refusal. The same was true of other examples provided by Hoist, including a disease named for a person who identified it. "None of the evidence Applicant submitted shows an established non-surname meaning of Bowens."

Examining Attorney Komal Vo also submitted evidence showing that BOWENS does not have a dictionary definition, as well as evidence from ancestry.com about the family history of the Bowens surname - it originated in Dutch as the name Bouwens and later became Bowens in Welsh-Irish and English. The Board concluded that the third factor supported the refusal.

The fourth factor presented "something of a conundrum, because we have no clear guidance on what structure or pronunciation is typical of a surname. Indeed, surnames can be found with many different structures and pronunciations, making it difficult to apply this factor in a consistent and meaningful way."

The Examining Attorney pointed to three other surnames—BOWEN, BOUWENS and BAUWENS—and argued that BOWENS is similar in structure and pronunciation. But there was "no evidence of what it is about these names that would lead consumers to understand them as surnames." "This evidence doesn’t tell us much about whether consumers will understand BOWENS as primarily merely a surname."

Applicant Hoist referred to several registrations for Bowen-variant marks that were registered without a showing of acquired distinctiveness, but it also submitted evidence of Bowen-variant marks that were registered with a showing of acquired distinctiveness. This evidence "do[es]not help us determine whether BOWENS has the structure and pronunciation of a surname." Finding the evidence "equivocal as to the import of the structure and pronunciation of BOWENS," the Board deemed this factor neutral.

In conclusion, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: BOWENS certainly seems to have to structure and pronunciation of BOWEN.

Text Copyright John L. Welch 2025.

TTABlog Test: How Did These Three Mere Descriptiveness Appeals Turn Out?

Affirmances in Section 2(e)(1) mere descriptiveness cases 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 Asthetik Skin LLC, Serial No. 98004456 (December 19, 2025) [not precedential] (Opinion by Judge Jessica B. Bradley). [Mere descriptiveness refusal of ÄSTHETIK for "Eye gels; Lip balm; Non-medicated skin toners; Skin care products, namely, non-medicated skin serum; Skin cleansers; Skin masks; Skin moisturizer," and for "Cosmetic skin care services, namely, facials, chemical peels, microdermabrasion; Health spa services for health and wellness of the body and spirit, namely, providing massage, facial and body treatment services, cosmetic body care services; Permanent makeup services." Applicant argued that "[d]ue to the prominent use of an umlaut on the ‘A,’ even to non-German speakers, this term is recognizable as a German term, not an American English term," that "ÄSTHETIK" is not pronounced like the English word "AESTHETIC," and that "'ÄSTHETIK’ is a noun in German, which means '[the] study of beauty, especially in art'" which is "used in a purely philosophical context."]

In re Laundry CEO LLC, Serial No. 98382558 (December 18, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of LAUNDRY CEO (in standard character form) for "Downloadable non-fiction books on a variety of topics; Electronic publications, namely, books, magazines, manuals, e-books, newsletters, e-journals, and training videos featuring business, all recorded on computer media," for a "Series of printed non-fiction books in the field of business," and for "Education services, namely, providing classes, seminars, and workshops in the field of business; Educational and entertainment services, namely, providing motivational speaking services in the field of business; Providing online non-downloadable electronic publications in the nature of books, magazines, manuals, e-books, blogs, newsletters, e-journals, and training videos in the field of business." Applicant argued that LAUNDRY "has no immediate meaning in connection with entertainment and educational services, and books relating to business" and that CEO "does not immediately bring to mind a specific meaning in connection with its identified goods and services."]

In re LumaClean, LLC, Serial No. 98444087 (December 8, 2025) (Opinion by Judge David K. Heasley) [Mere descriptiveness refusal of STOMADISC for "wound dressings; wound dressings, namely, pledgets; sterile wound dressings." Applicant argued that the term is suggestive, unitary, and/or incongruous. It also argued that STOMADISC functions as a double entendre, "with one meaning possibly suggestive of a product related to stoma care and another as a coined brand name."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2025.

Recommended Reading: The Trademark Reporter, November-December 2025 Issue

The November-December 2025 (Vol. 115 No.5) issue of The Trademark Reporter has arrived. [pdf here].

Willard Knox, Staff Editor-in-Chief, summarizes the contents as follows (and below): The TMR devotes its November–December 2025 (Vol. 115, No. 6) issue to emerging intellectual property (“IP”) enforcement in online markets and digital spaces. The TMR’s first-ever Guest Editor, Michael P. Goodyear, has curated a collection of leading scholarship in this rapidly developing area impacting both trademarks and complementary IP. The issue’s high-profile thought leaders explore topics ranging from mass-defendant IP litigation targeting online sellers to the ongoing dialogue between non-fungible tokens and trademark law—and explore what may be next for brand owners and IP rights holders in an increasingly virtual world.

Editor’s Note: Theme Issue—Emerging IP Enforcement in Online Markets and Digital Spaces, by Michael P. Goodyear. The TMR’s first-ever Guest Editor, Michael P. Goodyear, has curated this comprehensive collection of leading scholarship on the enforcement of trademarks and complementary intellectual property rights in the ever-evolving digital world.

A SAD Scheme of Abusive Intellectual Property Litigation, by Eric Goldman. This article examines the rise in mass-defendant intellectual property litigation and argues that plaintiffs in these cases are abusing the U.S. judicial system to the detriment of online merchants, marketplaces, and consumers.

The Counterfeit Sham, by Sarah Fackrell. This article examines the use of mass-defendant design patent litigation and argues that plaintiffs in these cases are intentionally conflating design patent infringement with counterfeiting (which the Lanham Act limits to registered trademarks) to secure benefits and relief not otherwise available to design patent holders.

The Structure of Secondary Copyright Liability, by Felix T. Wu. This article argues that secondary copyright liability would benefit from being viewed by judges and legislators through the lens of online platform liability principles.

The Role, Responsibility, and Liability of Online Intermediaries Under EU IP Law, by Eleonora Rosati. This article offers fashion brand owners a comprehensive analysis of the law in the European Union and the United Kingdom (with reference to U.S. law as well) on potential liability of information society service providers or online intermediaries.

Rising Above Liability: The Digital Services Act as a Blueprint for the Second Generation of Global Internet Rules, by Martin Husovec. This article provides an in-depth overview of the European Union’s Digital Services Act (the “DSA”) (and its origin in the United States’ Digital Millennium Copyright Act) and how the principles underlying the DSA could open a dialogue between the world’s liberal democracies on how to best regulate user-generated content going forward.

Confusion in Trademarked NFTs, by Andrew C. Michaels. This article provides critical updates on the ongoing dialogue between the blockchain-based technology of non-fungible tokens and trademark law (and the free speech clause of the First Amendment to the U.S. Constitution).

Read comments and post your comment here.

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

TTABlog Test: Is NYCU Confusable with NYU for Educational Services?

New York University opposed an application to register the mark NYCU for "organization of exhibitions for cultural or educational purposes; providing information about education," claiming a likelihood of confusion with its registered mark NYU for educational services, and its identical common law mark for the provision of information in the field of education. Applicant National Yang Ming Chiao Tung University argued that the fame of the NYU mark weighed against likelihood of confusion, that consumers of the services are sophisticated and will distinguish the marks, and that the existence of universities operating under the marks SUNY and CUNY weakened the scope of opposer's rights. I suspect that you can guess how this came out. New York University v. National Yang Ming Chiao Tung University, Opposition No. 91284793 (December 19, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

Applicant National University attacked New York University's priority with regard to the common law NYU mark, based on a purported failure by opposer to show continuous use for informational services. The Board pointed out, however, that continuous use is not required to establish opposer’s priority. Kemi Organics, LLC v. Gupta, No. 92065613, 2018 TTAB LEXIS 149, at *22 (quoting W. Fla. Seafood, 31 F.3d at 1128 (“Section 2(d) does not speak of ‘continuous use,’ but rather of whether the mark or trade name has been ‘previously used in the United States by another and not abandoned.’”)) (cleaned up). "To the extent that Applicant is arguing Opposer abandoned any common law rights in its NYU mark in connection with the information services, it did not plead such a defense."

National University argued that "the fame of NYU Mark[ ] weighs against likelihood of confusion." However, the CAFC made it "very clear" in Kenner Parker Toys Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 354 (Fed. Cir. 1992), that "[f]amous or strong marks enjoy a wide latitude of legal protection" and therefore "the fifth DuPont factor 'plays a dominant role' in cases where such a mark is present. Id. at 352. Thus, Applicant’s attempt to use the renown of Opposer’s mark as a liability fails."

National University also argued that, because opposer is renowned as a university with a primary campus in New York City, "the public is highly unlikely to be confused with services provided by Applicant based in Taiwan." The Board pointed out that the opposed application and opposer’s registrations are unrestricted geographically and involve rights nationwide in scope. "It is thus irrelevant that the parties may have their main campuses or are based in different cities or countries. We must assume that Applicant will offer and advertise its services in the same geographic region as Opposer, including New York."

National University pointed to two other higher education institutions in New York using the initials NY—the State University of New York (SUNY) and the City University of New York (CUNY). The Board observed that those third-party uses "are not only few in number, but the university initialisms, SUNY and CUNY, do not approximate Opposer’s NYU mark in the same manner as does Applicant’s mark, NYCU."

[T]he record shows that Opposer’s NYU mark is extremely strong and broadly so in connection undergraduate and post-graduate educational services. While Opposer’s mark, NYU, is admittedly an abbreviation for “New York University,” it retains this strength and has no demonstrated weakness.

National University then contended that, because opposer did not identify any instances of actual confusion, this factor weighs against likelihood of confusion. It also made the "curious" argument that the lack of instances of actual confusion "is not surprising in that a customer would be unlikely to confuse the two source provider institutions, one in New York, and one in Taiwan." Again, the Board was unimpressed.

[T]he involved application is based on Applicant’s allegation of an intent to use the NYCU mark in commerce in the U.S., and there is scant evidence that U.S. consumers have been exposed to use of this mark in the marketplace. Given this void of evidence, we cannot conclude that the “circumstances have been such that [actual confusion] could be expected to have happened."

Finally, National University tried the sophisticated consumer argument, maintaining that, because opposer "provides an expensive service that students compete to attend, it is highly unlikely they will be confused with another service provider." Applicant pointed to opposer’s acceptance rate and asserted that "Opposer’s customers are undoubtedly sophisticated, they are admitted at a rate of only 12%." The Board was unmoved. Referring to applicant's informational services, the Board replied: "we cannot assume that consumers of these services will necessarily exercise more care in registering for these exhibitions or educational information services."

There are no factors that weigh against finding a likelihood of confusion and, as to the other factors argued, we find them neutral in our analysis. On balance, we have no difficulty concluding on this record that there is a likelihood of confusion between Applicant’s mark, NYCU, and Opposer’s mark, NYU, as registered and for which it has common law rights.

Read comments and post your comment here.

TTABlogger comment: Applicant's initials are NYMCTU. Why did it drop the letters "M" and "T"?

Text Copyright John L. Welch 2025.

TTAB Upholds Three Refusals Because Applicant Provided its Counsel's Address, not its Domicile Address

The Board affirmed refusals to register the mark shown below, along with two similar marks, for film production and streaming services, on the ground that Applicant Solace Cine LLC failed to provide its domicile address as required by Section 1(a)(2) of the Lanham Act and by Rule 2.189. Solace provided the address of its counsel’s law firm, but with no statement that the law firm address was Solace’s principal place of business. That was unacceptable. In re Solace Cine LLC, Serial Nos. 98558485, 98558583, and 98558650 (December 18, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

In an office action response, Solace stated its address as 10261 4th Street North, Saint Petersburg, Florida 33716. The response was signed by Cameron W. Brumbelow, its counsel of record, at the mailing address of Brumbelow Morales, P.A., 10261 4th Street North, Saint Petersburg, Florida 33716.

Section 1(a)(2) of the Lanham Act provides that "[t]he application shall include specification of the applicant’s domicile ...." Trademark Rule 2.189 requires that "[a]n applicant or registrant must provide and keep current the address of its domicile, as defined in Rule 2.2(o)," which states that "[t]he term domicile as used in this part means the permanent legal place of residence of a natural person or the principal place of business of a juristic entity." Rule 2.2(p) states: "[t]he term principal place of business as used in this part means the location of a juristic entity’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled."

During prosecution of its application, Solace was asked to provide its domicile address, i.e., the principal place of business for its video streaming and film production services. "Despite being given ample opportunity to do so, or to petition for a waiver of the requirement, Applicant did not provide its domicile address or seek such a waiver. Counsel’s law firm address, with no statement that the law firm address was Applicant’s principal place of business, was insufficient."

Furthermore, Solace did not state that it lacks a fixed physical address. If that were the case, Solace had various response options. TMEP § 601.01(c)(iv)(a). "However, none of these options include listing a law firm."

Applicant’s contention in its brief that “attorney Cameron Brumbelow is an executive with the applicant LLC and works in a separate non-legal capacity for the company,” even if timely raised would not satisfy the domicile address requirement. The requirement is for the address for Applicant’s principal place of business, not the address for another business where Applicant’s executive works.

Solace asked for a remand to the USPTO so it could file a petition to the Director asking for a waiver. However, Solace failed to show good cause for the remand, and in any case, it was too late to seek a waiver because such a petition would be untimely under Rule 2.146(d)(1), which requires filing of the petition within two months of the office action.

The Board concluded that the three applications were properly refused for failure to provide the required domicile address. "Because this is a sufficient basis for affirming the refusal to register each of Applicant’s marks, we do not reach the refusal based on Applicant’s failure to provide the mark description and color statement."

Read comments and post your comment here.

TTABlogger comment: These applications were based on intent-to-use. So, it seems that the law firm address could also be the principal place of a business that was still in the ITU phase. Solace should have said that.

Text Copyright John L. Welch 2025.

USPTO Publishes November 2025 Revision of the Trademark Manual of Examining Procedure

The USPTO has published a November 2025 revision of the Trademark Manual of Examining Procedure (TMEP), here. It has also provided a summary of several of the "highlights" [here].

The longest section in the summary of highlights concerns the doctrine of foreign equivalents, a revision triggered by the CAFC's decision in the VETEMENTS case [TTABlogged here], currently under consideration by the Supreme Court in connection with the applicant's petition for a writ of certiorari. That section includes this passage:

The burden is on the party opposing translation to show that it is unlikely the ordinary American purchaser would stop and translate the wording into its English equivalent. Vetements at 1331. As to this inquiry, the “ordinary American purchaser” encompasses “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” Id. at 1324 (quoting In re Spirits Int’l, N.V., 563 F.3d at 1352).

Factors to consider in determining whether the ordinary American purchaser will stop and translate non-English wording include whether: (1) the relevant English translation is literal and direct; (2) the non-English wording is from a common, modern language such that an appreciable number of Americans are capable of translating the wording; and (3) whether the context in which the wording appears, such as the specific goods, services, or marketplace circumstances, would cause an ordinary American purchaser with ordinary sensibilities to translate the wording or instead to take the wording at face value and not translate.

The revisions also include this caveat derived from the PRINCETON EQUITY GROUP case [TTABlogged here]: "[I]f an applicant's brief attempts to incorporate by reference an argument made during prosecution, such argument may be deemed to have been forfeited. In re Princeton Equity Grp. LLC, Ser. No. 97397212, 2025 TTAB LEXIS 242, at *9 (2025).

Read comments and post your comment here.

TTABlogger comment: As stated in the Forward to the TMEP: "The guidelines set forth in this Manual do not have the force and effect of law."

Text Copyright John L. Welch 2025.

CAFC Upholds TTAB: BASIN BEVERAGE CO. Confusable With TAHOE BASIN, GREAT BASIN COFFEE, and NEW BASIN DISTILLING COMPANY

In a non-precedential ruling, the CAFC upheld the Board's decision [here] affirming the Section 2(d) refusal of the mark BASIN BEVERAGE CO. for "Tea-based beverages; Coffee based beverages; Kombucha tea," in International Class 30; "Beverages, namely, beer, sparkling water, non-alcoholic water-based beverages," in International Class 32; and "Beverages, namely, wine, hard seltzer; Hard kombucha tea," in International Class 33 [BEVERAGE CO. disclaimed]. As to the class 30 goods, the Board found confusion likely with the registered mark TAHOE BASIN for coffee and chai tea, and GREAT BASIN COFFEE, registered on the Supplemental Register for "coffee, tea, and coffee based beverages," and as to the remaining goods, with the mark NEW BASIN DISTILLING COMPANY for liquor [DISTILLING COMPANY disclaimed). In re Matthew Amoss, Appeal No. 2024-1617 (Fed. Cir. December 16, 2025) [not precedential].

The court set forth in some detail the Board's straightforward reasoning and concluded that the Board's findings were supported by substantial evidence. Applicant/Appellant Amoss contended that the Board erred by according the “GREAT BASIN COFFEE COMPANY” mark a greater scope of protection than it deserved as a mark on the Supplemental Register. The CAFC was unmoved.

[W]e see no basis in our law to restrict the scope of protection afforded to such a mark merely because it appears on the Supplemental Register, particularly where, as here, the mark still functions as a source identifier and the relevant DuPont factors otherwise support a likelihood of confusion.

Further, placement on the Supplemental Register reflects only a lack of inherent distinctiveness, not an inability to identify source or cause confusion. See id. (explaining that placement on the Supplemental Register does not render a mark incapable of causing confusion because (1) such marks must still be capable of distinguishing goods and (2) a lack of inherent distinctiveness does not necessarily equate to generic or common descriptive wording; thus, such non-generic descriptiveness may still support a § 2(d) refusal). Put simply, nothing in § 2(d) indicates that such registration limits a mark’s capacity to serve as a basis for a likelihood of confusion refusal. Cf. 15 U.S.C. § 1052(d).

Read comments and post your comment here.

TTABlogger comment: "Non-generic descriptiveness" is a phrase I haven't heard before.

Text Copyright John L. Welch 2025.

Recent Supreme Court Developments in TTAB cases

There has been a bit of action in the two petitions for writ of certiorari pending before the U.S. Supreme Court in cases arising out of the TTAB and CAFC.

In the RAPUNZEL consumer standing case, the Court on December 4th requested (by January 5, 2026) Opposer UTH's response to Rebecca Curtin's petition for writ of certiorari. (Docket No. 25-435)

On December 10th, the VETEMENTS genericness/doctrine-of-foreign-equivalents case was scheduled for consideration at the Court's January 9, 2026 conference. (Docket No. 25-215).[cert. denied, January 12, 2026].

Read comments and post your comment here.

TTABlogger comment: The Supreme Court docket search site is here, where one may sign up for email updates for any case.

Text Copyright John L. Welch 2025.

TTABlog Test: Is BLACKTHORN for Construction Management SAAS Confusable with BLACKTHORNE for Computer-Based Information Systems Consulting?

The USPTO refused to register the mark BLACKTHORN SOFTWARE, in standard character and design form, for on-line software services (SAAS) in the field of construction or project management, employee and contractor tracking and management, and time tracking and management [SOFTWARE disclaimed] in view of the registered mark BLACKTHORNE for "Consulting services in the design and implementation of computer-based information systems for businesses; Technological planning and consulting services in the field of computer and cyber security." Not surprisingly, the Board found the marks to be similar, but what about the goods and services? How do you think this came out? In re Blackthorn IP, LLC, Serial Nos. 97714024, 97714033 (December 12, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Marks: The Board observed that "consumers’ tendency to focus on and recall the first part of a trademark means the added generic word 'software' in Applicant’s mark provides little distinction from the cited mark BLACKTHORNE. *** And when a descriptive term, like 'software for Applicant’s software-based services," is added to a mark, consumers will understand the term as describing the services, not as identifying the source of the services. For this reason, descriptive terms, like the disclaimed 'software' in the applied-for mark, receive less emphasis in the likelihood of confusion analysis."

There was no evidence that the word "Blackthorn(e)" has different meanings in the marks. The Board concluded that "Applicant’s word mark and the cited mark are similar in every respect and this fact increases the likelihood of confusion."

As to applicant's word-and-design mark, the design element "does not create a new and different meaning for that created by the literal elements of this mark." The Bord found that "Applicant’s word + design mark is likely to create a commercial impression similar to that created by the cited BLACKTHORNE mark."

The Goods and Services: The Board acknowledged that the cited registration does not identify software services; instead, it refers to "computer-based information systems." However, applicant conceded that this phrase involves "software or computing," as does the listing of services in the application. Moreover, the registration "identifies a broad range of consulting services relating to software of any kind, and for that reason, the narrower software services identified by Applicant may be effectively subsumed within the scope of the services identified in the cited Registration."

We find that Applicant’s software services include at least some amount of consulting or planning with prospective customers of the services. To provide the sort of specialized software solutions identified in the Application without any consultation or planning would make no sense. Applicant concedes this point when it acknowledges “a market trend whereby companies that offer particular software products also offer consultations on use and implementation of those particular software products sold by the same company.”

The Board concluded that the services "are closely related and this increases the likelihood of confusion."

Other Factors: As to trade channels, applicant maintained that the involved services are offered through each party's respective website. The Board noted that this argument "is based on actual market uses (or likely uses). Our analysis, on the other hand, must be limited to the normal trade channels based on the services identified in the Application and cited Registration."

As to purchaser care, the cited registration "identifies a broad range of services and there is no evidence that consumers of such services consistently exercise care when making purchasing decisions."

We find this is a mixed market, with some consumers likely making careful purchasing decisions and some making less careful decisions, and we are required to base our decision “on the least sophisticated potential purchasers.” Stone Lion Capital Partners, 746 F.3d at 1325. We find that the “least sophisticated potential purchasers” of Registrant’s consultation and planning services likely exercise ordinary care in making purchasing decisions, which does not materially alter the likelihood of confusion. The fourth DuPont factor is neutral.

Conclusion: The Board concluded that the first and second DuPont factors weighed "most heavily" in this appeal, and so it affirmed the refusal.

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TTABlogger comment: Prunus spinosa, called blackthorn or sloe, is a species of flowering plant in the rose family,

Text Copyright John L. Welch 2025.

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

The rate of section 2(d) affirmances so far this year is about 92% (a bit higher than usual). Here are three recent appeals. No hints this time. How do you think they came out? [Answer in first comment].

In re Innocent Health LTD, Serial No. 97528277 (December 8, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of the mark NOVOMINS NUTRITION for “Food supplements in the form of gummies for general health and well-being; Gummy vitamins" [NUTRITION disclaimed] in view of the registered mark NOVOMIN for “Food supplements; Nutritional supplements.”]

In re The Toasted Yolk Cafe, LLC, Serial No. 97579560 (December 8, 2025) (Opinion by Judge Thomas L. Casagrande) [Section 2(d) refusal to register the mark shown below, for “Restaurant and café services” [BRUNCH disclaimed] in view of the registered mark TOAST A BRUNCH LIFE for “Café services; Restaurant services."]

In re Find Salt Owned By Independent Restaurants Management One Person Company LLC, Serial Nos. 98492526 and 98492654 (December 10, 2025) [not precedential] (Opinion by Judge Elizabeth K. Brock). [Section 2(d) refusal of the two marks shown first below, for, inter alia, cafe services and restaurant services, in view of the registered marks shown second below, for "Restaurant and café services."]

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

Text Copyright John L. Welch 2025.

CAFC Upholds TTAB's Grant of Counterclaim for Cancellation: Applicant Proved Priority Through Assignment of Common Law Mark After Proceeding Commenced

The CAFC affirmed the Board's December 2023 decision [TTABlogged here] granting a counterclaim petition for cancellation of a registration for the mark I AM MORE THAN AN ATHLETE. GP GAME PLAN & Design (shown below) for "charitable fundraising services by means of selling t-shirts to raise funds for educational and entertainment programs." Game Plan, Inc. opposed six applications to register the marks I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE for clothing and entertainment services, claiming likelihood of confusion with its registered mark. The sole issue for the Board was priority, and Applicant UNIP came in first. UNIP based its priority claim on a 2019 assignment of common law rights of the mark MORE THAN AN ATHLETE, rights that UNIP acquired after the opposition was commenced. Neither the Board nor the CAFC saw a problem with that. Game Plan, Inc. v. Uninterrupted IP, LLC, 2025 USPQ2d 1451 (Fed. Cir. 2025) [precedential].

Game Plan relied on the filing date of its underlying application (December 28, 2016) as its constructive first use date. It did not challenge the establishment of common law rights by UNIP's assignor in 2013, nor that UNIP continued to use the mark, but it did dispute the validity of the 2019 assignment. Game Plan claimed that the assignment violated the trademark antitrafficking rule of Section 1060(a)(1) of the Trademark Act for two reasons: first, it was an assignment in gross; and second, it constituted an improper assignment of an intent-to-use application. The CAFC disagreed.

Substantial evidence supported the Board finding that the 2019 assignment satisfied the requirement that goodwill be transferred. The assignment expressly defined the purchased assets as trademarks "together with the goodwill of the business associated therewith." Furthermore, UNIP's use of the mark was substantially similar to the assignor's use, sharing a common purpose and audience. And UNIP retained the individual assignor as a consultant. Thus there was a "continuity of goodwill." And so, the 2019 Assignment was not an assignment in gross.

Nor did the assignment improperly transfer UNKP's intent-to-use applications. Section 1060 restricts the assignment of intent-to-use applications before an amendment to allege use or a verified statement of use is filed. However, here "UNIP did not assign its pending intent-to-use applications. Rather, it received an assignment of pr-existing common law rights to an already-used mark." (emphasis in original).

Game Plan also argued that the timing of the 2019 Assignment violated 37 C.F.R. § 2.133(a). The CAFC again disagreed. Section 2.133(a) governs amendments to trademark applications or registrations during a TTAB proceeding. Game Plan contended that the 2019 Assignment should be treated as a substantive amendment to UNIP's intent-to-use applications and therefore it was prohibited because the assignment occurred after Game Plan filed its Notice of Opposition. However, Game Plan cited no authority supporting its claim that the acquisition of common law trademark rights constitutes an "amend[ment] in substance” within the meaning of § 2.133(a)."

In any case, the Board's ruling on priority was not based on UNIP's intent-to-use applications, but on its ownership of common law rights pre-dating Game Plan's priority date.

Finally, Game Plan feebly argued that the Board had failed to consider certain evidence relevant to the assignment issue. Game Plan conceded that it did not submit any evidence during its trial period. Instead, it attempted to rely on documents submitted with a motion of summary judgment that it had filed. That was improper, and the Board did not abuse its discretion by declining to consider that summary judgment evidence.

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TTABlogger comment: Hat Tip to Howard Shire, the LeBron James of trademark law.

Text Copyright John L. Welch 2025.

CAFC Reverses TTAB: KAHWA not Generic for, or Descriptive of, Cafés and Coffee Shops - Substantial Evidence Lacking

In a precedential ruling, the CAFC reversed the TTAB's August 2023 decision [here] affirming a refusal to register the mark KAHWA for "Cafés; Coffee shops" on the ground of genericness, or alternatively, mere descriptiveness. The Board had based its findings on the English-language meaning of KAHWA as a traditional type of green tea from Central Asia. But the CAFC saw no evidence of any café or coffee shop in the United States ever selling kahwa tea and so kahwa tea could not be considered a "key aspect" of Applicant Bayou Grande's services. In re Bayou Grande Coffee Roasting Co., 160 F.4th 1370 (Fed. Cir. 2025). [precedential].

Genericness: In reaching its finding of genericness, the Board relied on the CAFC's decision in In re Cordua Rests., Inc., 823 F.3d 594, 603 (Fed. Cir. 2016) (CHURRASCOS, a type of grilled meat, found to be generic for restaurant services), which held that a term "can be generic ... if the relevant public ... understands the term to refer to a key aspect of [the] genus - e.g., a key good that characterizes a particular genus of retail services." Finding that cafés and coffee shops serve a variety of tea beverages, the Board deemed KAHWA to be generic for Bayou Grande's services because it refers to a key aspect thereof.

Bayou Grande argued that the Board's genericness finding was not supported by substantial evidence. The CAFC agreed.

There is no record evidence of any café or coffee shop in the United States ever selling kahwa, a specific type of Kashmiri green tea. This is undisputed. *** KAHWA therefore cannot be generic for cafés and coffee shops because there is no evidence selling kahwa is a key aspect of café and coffee shop services, let alone any aspect of these services. *** In other words, the fact that relevant customers understand KAHWA to refer to a specific type of Kashmiri green tea is insufficient to establish genericness for cafés and coffee shops selling coffee and other kinds of tea.

Mere Descriptiveness: Based on the evidence that KAHWA is a type of green tea, and the fact that cafés and coffee shops serve tea, the Board deemed KAHWA to be merely descriptive of the services because "KAHWA immediately informs prospective customers that the establishment serves this particular type of green tea drink" and "no imagination or thought is required by prospective customers to discern the nature of Applicant's services." Again, the CAFC saw a lack of substantial evidence in support of that finding.

As we already established, it is undisputed that there is no record evidence showing any café or coffee shop in the United States has ever sold kahwa. *** This necessarily means there is no evidence selling kahwa is a “characteristic of the goods or services” of cafés or coffee shops, let alone evidence showing relevant customers would immediately know selling kahwa is a characteristic of cafés and coffee shops. Bayer, 488 F.3d at 963.

Foreign Equivalents: The examining attorney had also refused registration via the doctrine of foreign equivalents on the ground that KAHWA means coffee in Arabic. On appeal, Bayou Grande argued that the doctrine did not apply because KAHWA has a well-established alternative English meaning as referring to Kashmiri green tea. The Board had declined to address that issue, but Bayou contended that the USPTO should be precluded from relying on that doctrine in any future proceeding since the Board's decision conceded that KAHWA has a well-established alternative meaning. The USPTO argued that the CAFC should not consider the issue because the Board did not do so. The CAFC again sided with Bayou Grande.

Given the parties do not dispute KAHWA has a well-established alternative English meaning, as the Board decision admits, no translation is necessary since the doctrine of foreign equivalents does not apply as a matter of law. In re Spirits, 563 F.3d at 1352; see also Cont’l Nut Co. v. Le Cordon Bleu, 494 F.2d 1395, 1396–97 (C.C.P.A. 1974). Under these circumstances, the Board’s failure to address this issue, which was fully developed and briefed to the Board, does not preclude us from deciding a legal question. N. Am. Philips Corp. v. Am. Vending Sales, Inc., 35 F.3d 1576, 1579 (Fed. Cir. 1994) (“We thus address the legal question, which the district court did not reach ....”).

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TTABlogger comment: I guess you could say that the TTAB was roasted in this one.

Text Copyright John L. Welch 2025.

VETEMENTS AG Files Reply to USPTO's Certiorari Opposition: TTABlog Asks, What About the Perception of 99 Percent of American Purchasers as to Genericness?

Vetements AG has filed its Reply Brief [pdf here] on its petition for writ of certiorari in the VETEMENTS genericness case. In upholding the TTAB's decision affirming the genericness refusal, the CAFC ruled that Vetements AG had the burden to prove it unlikely that the ordinary American purchaser (including those familiar with the French language) would not stop and translate the French word "vetements" into the English word "clothing." [The petition for certiorari may be found here, and the USPTO's opposition here.] [Distributed for conference of January 9, 2026].

Vetements AG points out that French is spoken by fewer than 1% of Americans, yet the Board and the CAFC found that 1% is enough, under the doctrine of foreign equivalents, to justify the finding that the mark VETEMENTS is generic for clothing. My question is, should the remaining 99% of American purchasers be ignored? In the likelihood-of-confusion context, if a survey showed that less than 1% - or even less than 15% - of consumers would be confused as to source with respect to a particular mark or marks, a Section 2(d) refusal (or an infringement claim) would not stand. Why is 1% enough when the issue is genericness?

Here is Vetement AG's introduction to the Reply Brief:

The categorical application by the court of appeals of a judicially generated concept to overcome an Act of Congress warrants this Court’s review. The Trademark Act provides that no trademark by which the goods of an applicant may be distinguished from those of others shall be refused registration unless an exclusion applies. It is therefore the burden of Respondent to establish the basis for refusal, which determination is to be predicated on the perception of the trademark by the American consuming public. Whether to attempt translation of a term is part of that burden, rather than first translating and then fitting the translation to the particular situation in order to arrive at an unwarranted conclusion that the consuming public would likely undertake such a translation. Further, this case presents an outcome-determinative circuit conflict that this Court should resolve.

The questions presented are recurring and important and the Court should grant the petition in order to clarify the statutory mandate for registration of a trademark.

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TTABlogger comment: Let's hope that the Supreme Court takes up this case and clarifies the doctrine of foreign equivalents.

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 a 90% clip 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 TST Biomedical Electronics Co., ltd., Serial No. 98033208 (December 3, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) refusal of the mark IPRO-LAB for, inter alia, diagnostic preparations for medical purposes and reagent paper for medical purposes, in view of the mark PRO-LAB, registered on the Supplemental Register for overlapping goods.]

In re Night Owl Concrete, LLC, Serial No. 98341508 (December 4, 2025) (Opinion by Judge Martha B. Allard) [Section 2(d) refusal to register the mark shown below left, for software and services for scheduling and delivery of concrete by mixer trucks [CONCRETE disclaimed] in view of the registered mark shown below right, for "delivery services for construction tools and construction supplies" [CONSTRUCTION SUPPLY, INC. and FREE NIGHT DELIVERIES disclaimed.]

In re Callie Renae McMorran, Serial No. 98502058 (December 5, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.). [Section 2(d) refusal of the mark HUSTLE SOLD SEPARATELY for "hats; hoodies; shirts" in view of the registered mark THE DREAM IS FREE...THE HUSTLE IS SOLD SEPARATELY for "clothing, namely, hats, shirts, sweatpants, hoodies and jackets."]

Click on photo for larger picture

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

Text Copyright John L. Welch 2025.

USPTO Seeks Applicants for Chief Administrative Trademark Judge at the TTAB

The USPTO is seeking applicants for the position of Chief Adminstrative Trademark Judge at the TTAB. The job announcement and details may be found here. Currently, the closing date for applications is December 10, 2025.

As the Chief Administrative Trademark Judge for the Trademark Trial and Appeal Board (TTAB), you will: 

• Serve as a full voting member of the TTAB exercising full administrative, legal and technical authority over the Board.
• Develop and implement the USPTO rules associated with trademark appeals and trademark opposition, cancellation, concurrent use, and interference proceedings.
• Ensure the predictability, reliability, and consistency of the thousands of decisions issued annually by Board judges he or she will oversee.
• Be responsible for the comprehensive executive management, strategic planning, and financial functions essential to effective Board operations.
• Develop and maintain quality, timeliness, and productivity performance standards for the Board's legal staff and administrative support staff trademark judges and administrative support staff.
• Interact with the legal community, including the Court of Appeals for the Federal Circuit, bar associations, participate in public conferences and meetings, and create presentations for foreign dignitaries regarding the Board.

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Text Copyright John L. Welch 2025.

On Remand, TTAB Again Denies Petition to Cancel BABIE'S MAGIC TEA Registration: Confusion Unlikely with BABY MAGIC for Skincare Products

Back in February 2024, the CAFC vacated the Board's decision denying a petition for cancellation of a registration for the mark BABIES' MAGIC TEA for "medicated tea for babies that treats colic and gas and helps babies sleep better." [TTABlogged here]. The Board had found no likelihood of confusion with the registered mark BABY MAGIC for various toiletry goods (including baby lotion). The CAFC ruled that the basis for the Board's finding as to the second DuPont factor was unclear, that the Board had ignored certain evidence bearing on the third factor, and that it erred in failing to weigh the first factor heavily in favor of Petitioner Naterra. On remand, the Board has again concluded that confusion is not likely, and so it denied the cancellation petition. Naterra International, Inc. v. Samah Bensalem, Cancellation No. 92074494 (December 3, 2025) [not precedential] (Opinion by Judge Mark Lebow).

Second Dupont factor: With respect to the relatedness of the goods, Petitioner Naterra relied entirely on its expert witness, who testified generally about the marketing concept known as "umbrella branding" (in a global sense and not focused on the U.S. market) and what he characterized as "BABY MAGIC’S Natural Zone of Expansion." But his testimony did not include any information about whether the umbrella brands and products he mentioned are sold in the U.S., or that U.S. consumers have been exposed to them.

The Board noted the lack of evidence that consumers would be likely to encounter the specific goods identified in the registrations offered under the same marks in a manner that would lead them to believe they emanate from a common source. And so the Board again found that Naterra failed to show that the goods are related.

Third factor: The Board acknowledged Respondent Bensalem's admission that the channels of trade for the involved goods are similar, and that she sells her BABIES’ MAGIC TEA to “parents of babies and caregivers of babies” - the same customers of Petitioner’s BABY MAGIC products.

First factor: The Board noted that in its prior Decision, it found that “the marks BABY MAGIC and BABIES’ MAGIC TEA are more similar than dissimilar in appearance, sound, connotation and commercial impression.” Here, it "stand[s] by that finding." "While the marks share common elements (“BABY/BABIES” and “MAGIC”), they are not identical or highly similar, as the addition of “TEA” and the possessive form create distinctions in appearance, sound, and overall commercial impression that moderate their similarity."

Balancing the Factors: Mindful of the CAFC's directive that the first factor should weigh heavily in favor of the petitioner, the Board found the marks to be "more similar than dissimilar," but it did not find the marks to be "highly similar or identical." "We thus weigh the first factor of similar marks heavily in our analysis and in favor of concluding confusion is likely, but it does not deserve dispositive weight." [emphasis added). It also weighed the third factor of similar trade channels in favor of likelihood of confusion.

However, the Board weighed the lack of relatedness of the goods under the second factor "heavily" "against concluding that confusion is likely." It found Naterra’s BABY MAGIC mark to be somewhat conceptually weak and lacking in demonstrated commercial strength, and so the fifth factor weighed against a likelihood of confusion. The fourth, sixth, eighth, tenth, and twelfth DuPont factors were deemed neutral.

On balance, the differences in the goods, coupled with the conceptual weakness of the marks, outweigh the similarity of the marks and trade channels. As the Federal Circuit has recognized, even where marks share similarities, the absence of a demonstrated relationship between the specific goods can preclude a finding of confusion.

Concluding that confusion is not likely, the Board denied the petition for cancellation.

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TTABlogger comment: Seems to me that the Board got it right. FWIW: I don't think the first factor should weigh heavily in Naterra's favor.

Text Copyright John L. Welch 2025.

TTABlog Test: Is WISHBONES for a Casino Bar Confusable with WISHBONE FARMS for Restaurant Services?

The USPTO refused to register the mark WISHBONES for "bar services provided in a casino,” finding confusion likely with the registered mark WISHBONE FARMS (standard characters) for "“restaurant, catering and restaurant carryout" [FARMS disclaimed]. Applicant Caesars did not dispute the relatedness of the services but argued that the marks have "clearly different" connotations because the word FARMS suggests that registrant’s services are associated with a farm at a specific location where registrant provides its services or sources food. How do you think this appeal came out? In re Caesars License Company, LLC, Serial No. 98083981 (November 24, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

Examining Attorney Juna Bell submitted evidence that farm-to-table restaurants are desirable for sustainable or cleaner dining, with consumers now accustomed to farms being associated with restaurants, such that the “presence of FARMS in the registrant’s mark does not change the commercial impression of the marks because consumers may perceive WISHBONE FARMS as being related to WISHBONES but provided on a farm or featuring food from farms." She also provided evidence that casinos have embraced “eatertainment,” in which guests seek unique and elevated dining experiences; even casino buffets “have really increased in quality, and food has gone upscale exponentially,” with food cooked fresh several times a day.

Applicant Caesars insisted that the term WISHBONE in the cited mark would be perceived as either the name of the farm or as referring to farm animals such as turkeys or chickens, which have a bone called a wishbone. In contrast, its mark WISHBONES has a very different connotation when used with casino bar services, either being arbitrary, suggesting the name of a person (such as the bar’s owner), or conveying the concept of good luck while gambling “just as getting the bigger half of the Thanksgiving turkey wishbone is reputed to bring good luck."

The Board, however, did not believe "that consumers familiar with the general connotation of FARMS relating to farm-to-table food are likely to perceive WISHBONE in the cited mark as referring to an anatomical feature of poultry rather than the common tradition.

Moreover, there was no evidence that consumers would perceive WISHBONES as the name of the bar’s founder or any other person. “WISHBONE” is not a common personal nickname and Applicant’s mark does not contain an apostrophe indicating that it is possessive.

Finally, Caesars urged that the USPTO’s registration of marks that are nearly identical except for the word “FARM” or “FARMS” for restaurant services warrants a similar outcome here. In support, Applicant referred to ten pairs of such of registrations. The Board conceded that some of the pairs (e.g., JUNE/JUNE FARMS and ROSEWOOD/ROSEWOOD FARMS) appeared on their face to contradict the refusal, but it shook them off.

We acknowledge the importance of consistency in examination actions, but we are not bound by the prior registrability determinations of examining attorneys made at different times on different records. Instead, we must assess the registrability of Applicant’s mark based on the record before us.

And so, the Board affirmed the refusal.

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TTABlogger comment: Was this appeal merely wishful thinking? Should Caesars have conceded the relatedness of the services?

Text Copyright John L. Welch 2025.

TTAB Denies SMARTLING/EASYLING Cancellation Petition for Translation Software Due to Differences in Marks, Purchaser Sophistication, and Lack of Actual Confusion

In this nine-year-old proceeding, the Board denied Smartling, Inc.'s petition for cancellation of a registration for the mark EASYLING (standard characters) for translation software, finding confusion unlikely with the registered and common law mark SMARTLING for overlapping goods. In an earlier skirmish, Respondent Skawa moved for summary judgment on the grounds of claim preclusion and issue preclusion based on its successful defeat of a unfair competition lawsuit brought by Smartling. [TTABlogged here]. The Board there agreed that claim preclusion applied to Smartling's claims of abandonment and lack of bona fide intent, which claims could have been brought in the civil action, but denied any preclusion vis-a-vis its likelihood of confusion claim due to the differences in transactional facts and the lack of any specific finding in the jury's conclusion regarding likelihood of confusion. Smartling, Inc. v. Skawa Innovation Kft., Cancellation No. 92063654 (December 1, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

Large companies and others who rely heavily on the Internet are the target customers of the parties' services: translating versions of a website into many different languages so that a visitor to the website may see the content in her or his preferred language almost instantaneously. However, the end user is not the relevant consumer; but rather highly specialized professionals with a background in translation services.

We are dealing with a case of highly sophisticated purchasers and a careful, protracted purchasing process. Such circumstances greatly reduce the risk of confusion, as this Board and the courts have consistently held. The fourth DuPont factor, therefore, weighs very heavily against a finding that confusion is likely.

As to the strength of Smartling's mark, the Board found that the term “ling” is a reference to linguistics or language. "The term, therefore, is descriptive of the parties’ services, and many related services within the broader translation services market." "To the highly sophisticated translation professionals within this market, who knows Petitioner’s services, Petitioner’s mark will suggest a translation management system that is smart."

[T]he “ling” segment of this mark is weak and will not be viewed as a distinctive source-identifying element of the mark. It is only the mark as a whole that has some conceptual strength. Given this marginal conceptual strength, we find the sixth DuPont factor is neutral, but we do so with the express reservation that the “ling” segment of Petitioner’s mark is not distinctive.

The Board found the marks to be "not similar." "Given that the only shared element of the marks is descriptive of the parties’ services, that element will have minimal source-identifying impact on the relevant purchasers."

The SMARTLING mark likely suggests a smart translation management system, one that performs complex functions for its users. The EASYLING mark, on the other hand, suggests an easier-to-use translation management system. The words “smart” and “easy” have wholly distinct meanings, and when used in these marks, lead to different meanings and commercial impressions for each mark. This is particularly true in this case, where the purchasers are highly sophisticated.

Therefore, the first DuPont factor "weighed heavily" against a finding that confusion is likely.

Finally, the Board noted that the parties have been in direct competition for more than 15 years. "Given such a long period of direct competition, one would have expected some actual confusion to have occurred if confusion is likely." "The absence of probative actual confusion evidence, therefore, suggests that the relevant purchasers were never confused by these two marks. The seventh and eighth DuPont factors, taken together, weigh somewhat against a finding that confusion is likely."

We place great weight on the dissimilarity of the marks (DuPont Factor One) and the purchasing conditions (DuPont Factor Four), which together easily outweigh the fact that the parties compete. Petitioner may have lost business to Respondent, but the record shows that is a result of competition, not because of confusion in the market.

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TTABlogger comment: Hat-tip to Bostonian Tom O'Connell, a fellow patent/trademark attorney.

Text Copyright John L. Welch 2025.