TTABlog Test: Are Legal Services Related to Brand Consultation Services Under Section 2(d)?

The USPTO refused to register the mark MIRICK & Design, below left, for "legal services," deeming confusion likely with the registered mark shown below right, for, inter alia, "Business consulting services; developing customized branding strategies for businesses and individuals." Applicant and Examining Attorney Kiara Rodríguez Fontánez sparred over which part of applicant's mark is dominant and whether the services are related. How do you think this came out? In re Mirick, O’Connell, DeMallie & Lougee, LLP, Serial No. 98278181 (January 27, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Marks: The Board found it unnecessary to determine whether there is a dominant element in applicant's mark. "[O]verall, it is enough that the design element is significant, because the design element is identical to the cited mark. This creates a visual similarity that increases the likelihood of confusion."

Furthermore, the similar commercial impressions engendered by the marks are likely to lead consumers to believe that "either the owner of the cited mark or the Applicant is now using a slightly different version of its mark (either by adding the MIRICK element or deleting it)."

The Services: The Board found the services to be related. It noted that because there is no limitation on the scope of the legal services identified in the application, they include legal services relating to brands. "Applicant’s counsel is, in fact, providing legal services relating to branding through its work on this appeal."

To put a finer point on it, a consumer might seek general consultation about branding as part of the process of selecting a trademark. Once that mark is selected, the same consumer may seek legal services concerning the protection of the mark. The services are complementary and may well be used by many of the same consumers. In such a context, it is likely that consumers will believe the two types of services, while technically distinct, are offered by a single source.

Customer Care: Applicant argued that consumers seeking legal services are careful, but it provided no evidence of same. The Board instead found that "not all actual and prospective consumers of Applicant’s services are careful."

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 Applicant’s legal services likely exercise ordinary care in making purchasing decisions, which does not alter the likelihood of confusion. The fourth DuPont factor is neutral.

Strength of the Cited Mark: Applicant submitted 11 third-party registrations in an attempt to show that the Cited Mark is weak and entitled to a narrowed scope of protection. None were probative: some involved unrelated services and none were for marks sufficiently similar to the Cited Mark to put a dent in its strength. "There are an infinite number of ways to stylize the letter M, and Applicant’s evidence shows substantial variation."

And so, the Board affirmed the refusal.

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TTABlogger comment: What do you think? Don't trademark lawyers do brand consulting in one form or other?

Text Copyright John L. Welch 2026.

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?

For the past decade, about 90% of Section 2(d) refusals have been affirmed. A TTAB Judge once said to me that one can predict the outcome of a Section 2(d) appeal 95% of the time just by considering the marks and the goods/services. Here are three recent Section 2(d) appeals. At least one of them was reversed. Let's see how you do. [Answer in first comment].

In re Culine Imports LLC, Serial No. 98480830 (January 16, 2026) [not precedential] (Opinion by Judge Jessica B. Bradley). [Section 2(d) refusal of the mark shown below, for "consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters" in view of the registered mark FUZZIX for lamps, lamp fixtures, and other lighting products.]

In re Free-Free(USA) Inc. and Free-Free Industrial Corp., Serial No. 98518085 (January 16, 2026) [not precedential] (Opinion by Judge Thomas L Casagrande). [Section 2(d) refusal of the mark VAC-TITE for, inter alia, "canister sets" and "acrylic insulation jars and all purpose household acrylic jars used to store dry food goods such as cereal, chips, pasta, sugar, cookies, flour, bagels," in view of the registered mark TIGHTVAC for "kitchen containers."]

In re Luxury Brands International LLC, Serial No. 98476728 (January 26, 2026) (Opinion by Judge Angela Lykos) [Section 2(d) refusal to register the mark shown below, for "bed sheets" and other bedding products [LUXURY BRANDS INTERNATIONAL disclaimed], in view of the registered mark LUXBRAND for "bed blankets" and "bed sheets."]

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Text Copyright John L. Welch 2026.

TTAB Affirms Genericness Refusal of FREE PHOTOS for . . . Guess What?

The Board upheld refusals to register, on the Supplemental Register, the proposed marks FREE PHOTOS and FREEPHOTOS (in standard form), finding the terms to be generic for “printing services for printing photos and personalized items, namely, photo albums, photo posters, photo tiles, canvas prints, photo cards, photo blankets, photo mouse pads, photo magnets, and photo cups." Applicant Inmate Photos argued that neither “free photos” nor “freephotos” are defined dictionary terms, but other evidence developed by the Office proved to be decisive. In re Inmate Photos, LLC, Serial Nos. 97513508 and 97513513 (January 15, 2026) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

The determination of genericness employs a two-part test: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986)." Because the identification of services in an application defines the scope of rights conferred by Section 7(b) of the Trademark Act, the genericness inquiry ordinarily “focuses on the description of services set forth in the [application or] certificate of registration.”

[T]he ultimate question is whether consumers who buy or use printing services for printing photos and personalized items understand FREE PHOTOS and FREEPHOTOS primarily to refer to a class or category of those services.

Examining Attorney Taylor Barrese submitted website excerpts showing numerous third parties using “free photos” to describe a perk or reward offered to consumers. Additional third-party uses of the phrase “free photos” appear in blogs and articles that recommend photo‑printing services offering free photos. And applicant "uses 'free photos' in a non‑source‑identifying manner to describe a perk of its services − printing photographs at no charge to the consumer."

Based on dictionary definitions [of "free" and "photo"], third‑party uses, and Applicant’s own materials, we find that “free photos” is commonly used to identify a perk or reward in connection with printing services for printing photos and personalized items, and that both Applicant and other market participants offer such services. Ordinary consumers of these services would therefore understand FREE PHOTOS and FREEPHOTOS to refer primarily to a key aspect of the services − namely, that the provider supplies free photo prints as a reward or promotional benefit.

And so, the Board affirmed the refusal.

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TTABlogger comment: Seems to be merely descriptive to me.

Text Copyright John L. Welch 2026.

TTAB Denies KINETIC SPORTS Cancellation Petition for Failure to Prove Abandonment and Fraud

Petitioner Perfect Arm was armed with imperfect evidence in its attempt to cancel a registration for the mark KINETIC ENERGY for elbow guards, compression wraps, and a host of other such devices. Respondent, appearing pro se, fended off claims of abandonment and fraud, aided by Petitioner's failure to cross-examine Respondent. The Perfect Arm, LLC v. Muhammed Tanveer Memon, Cancellation No. 92083488 (January 23, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon).

Abandonment: To prove abandonment, Petitioner relied upon the Section 45 statutory presumption triggered by proof of at least three years of nonuse, arguing that “Respondent] keeps business records and proof of sales in a haphazard and cursory manner and is unable to show proof of sales in the three-year period starting October 20, 2020 and ending October 20, 2023.” The Board, however, pointed out that "it is not Respondent’s burden to prove use of its mark. Petitioner has the burden of proving nonuse of the mark, and yet, the evidence Petitioner submitted proves the opposite."

Petitioner argued that Respondent’s evidence should not be trusted, and that his declaration is "self-serving." [Isn't it supposed to be? - ed.]. The Board found Respondent’s testimony "credible and consistent with the documentary evidence."

We further note that Petitioner did not exercise its right to cross-examine Respondent and that Petitioner’s own evidence shows ongoing sales of the KINETIC SPORTS goods during the alleged period of nonuse. Petitioner has failed to show any cessation of use of the mark by Respondent. Because a break in use is an element of Petitioner’s abandonment claim, this failure of proof is fatal to the claim.

Although intent not to resume use was not alleged by Petitioner, the Board also found that Respondent "never intended to discontinue use" of his mark. And so, Petitioner failed to prove the second element of an abandonment claim.

Fraud: Respondent admitted that its underlying, used-based application included goods that he had not yet sold at the time of filing. The Board found that Respondent's false statement was material because "the identification of goods plays a key role in defining the rights obtained through a federal trademark registration." However, Petitioner failed to prove that Respondent had an intent to deceive the Office.

Indeed, Petitioner never obtained testimony from Respondent concerning the reason for the overly broad list of goods in the Application. Proving a misstatement, without more, is not proof of fraud. Because there is no evidence of an intent to deceive in the record, Petitioner’s fraud claim fails.

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TTABlogger comment: Actually, it appears that cross-examination may not have done much good.

Text Copyright John L. Welch 2026.

Experienced Trademark Paralegal Seeks Position with East Coast Firm or Corporation

Experienced Trademark Paralegal seeks position with a corporation or law firm, preferably in New York, New Jersey, Delaware, or other areas on the East Coast, but will consider other locations as well. With more than 25 years of focused trademark and brand-protection experience at top law firms and global companies across fashion, technology, finance, and consumer goods, this person brings the institutional knowledge, tactical skill, and proven results necessary that would add immediate value to any organization. Ready to step into a role that requires both deep technical knowledge and pragmatic execution. Send inquiries to jwelch at wolfgreenfield.com to arrange for an introduction.

Throughout this person’s career, they have led and executed end-to-end trademark programs that delivered measurable business value, comprehensive clearance and prosecution strategies, disciplined portfolio management, coordinated enforcement and litigation support, thorough due diligence for merger, acquisitions and divestitures, and contract work. They have supported cross-functional teams to align IP strategy with marketing and product initiatives, reducing clearance risk and accelerating time-to-market while protecting brand equity.

Key qualifications:

• Extensive trademark expertise: clearance, prosecution, maintenance, and portfolio optimization across domestic and international jurisdictions. 
• Litigation and enforcement experience: prepared pleadings, motions, discovery requests and responses, manage evidence, and coordinated with international counsel to support successful outcomes. 
• Transactional and agreement work: drafted and negotiated trademark provisions in licenses and coexistence agreements. 
• Operational leadership: created tracking systems and SOPs that improved docketing accuracy, reduced missed deadlines, increased departmental efficiency and provide analytics for making strategic and informed decisions. 
• Clear, persuasive legal writing.

Text Copyright John L. Welch 2026.

"NO LAW DEGREE REQUIRED" Fails to Function as a Source Indicator for Business Consulting and Legal Information Services

The Board affirmed a failure-to-function refusal of the proposed mark NO LAW DEGREE REQUIRED for business consulting, educational, and legal information services, finding that applicant uses the phrase to convey information about its services, and that third-parties use the phrase "for the same purpose for closely related goods and services also offering business and legal information." In re Protect for Success, LLC, Serial No. 98051678 (January 21, 2026) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

The Board observed that "'failure to function' is an umbrella term because there are many reasons why a proposed mark may not function as an indicator of source."

In addition to the proposed mark being merely informational, the proposed mark may be, for example, the title of a single creative work, a trade name, or a model number. The informational failure to function refusal itself has sub-categories, for example, the informational message is a widely used or commonplace message, or merely conveys general information about the goods or services.

The Board agreed with Examining Attorney Amit Shoor that "the placement of NO LAW DEGREE REQUIRED amidst other information about Applicant’s services supports the finding that Applicant’s use of NO LAW DEGREE REQUIRED would be perceived as merely conveying information about the level of education required for consumers of Applicant’s three classes of services."

Evidence of third-party use of NO LAW DEGREE REQUIRED demonstrated that the phrase "has an ordinary meaning that conveys that prospective customers do not require legal training to understand legal concepts in an article or publication ..., or to perform certain jobs in the legal field ...." The Board noted that applicant’s services are unrestricted as to the services performed, and so may include the use of written materials; the services are also unrestricted as to purpose, and so may include the purpose of aiding job performance in the legal field.

We agree [with the applicant] that NO LAW DEGREE REQUIRED may not be informational in all contexts, without finding the point particularly relevant. Whether, for example, the consumer of canned peas would see NO LAW DEGREE REQUIRED on the can and perceive it as a mark is not the issue before us. Instead, we assess the evidence that the term as used by Applicant will be perceived as a mark by the relevant consumers of Applicant’s business and legal information services.

The Board concluded that Applicant uses NO LAW DEGREE REQUIRED to convey the information that prospective customers for its business consultation services, educational courses, and legal information services do not need legal training. Third-party uses show the term used for the same purpose for closely related goods and services also offering business and legal information.

And so, the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA? 

Text Copyright John L. Welch 2026.

TTABlog Test: Is YOGUT for Freeze-Dried Yogurt-Based Snacks Confusable with YOURGUT for Yogurt?

The USPTO refused to register the mark YOGUT for "Freeze-dried yogurt-based snack," on the ground of likelihood of confusion with the registered mark YOURGUT for "yogurt." Applicant Mira International Foods argued that the “YO” portion of its mark will be seen as the Spanish word for “I” or “me,” and thus consumers will read its mark as “I am stomach.” Examining Attorney Amanda Miller contended that consumers will likely read the mark as a misspelled version of “your gut." How do you think this came out? In re Mira International Foods, Inc., Serial No. 98465558 (January 12, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Board agreed with the Examining Attorney: "We see nothing in the record, nor is there anything about Applicant’s identified goods (freeze-dried yogurt-based snacks), that would prompt consumers to read the first portion of Applicant’s single-term mark as a Spanish word and the second half as an English word." 

Because the marks have identical suggestive meanings and connotations and are similar in visual appearance and sound, we find that, overall, they create very similar commercial impressions. Thus, in our final weighing we will count the first duPont factor as favoring a conclusion that confusion is likely.

The Board observed that "[t]he more consumers see companies selling certain non-identical goods under one mark, the more they tend to see those goods as related in the sense that matters for potential source confusion." The Examining Attorney submitted evidence that several companies "do just that" at their websites.

Based on the descriptions of the respective goods in the application and registration and on the evidence of third-parties selling both types of goods under one brand, we find the goods to be related. This important factor will also count in favor of a conclusion that confusion is likely when we conduct our final factor-weighing.

That same evidence also showed that the trade channels overlap.

Here, the marks are very similar and the goods are related. As we mentioned earlier, these both are important factors. The trade channels overlap, too, though this is not as weighty a consideration in this case. With all three factors addressed on appeal pointing towards a conclusion that confusion is likely, we have no difficulty on this record so concluding.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2026.

EASY BEE-ZY KNOCK OUT Not Confusable with OSO EASY and OSO EASY PEASY for Live Plants, Says TTAB

In a "modern-day War of the Roses," the Board dismissed an opposition to registration of the mark EASY BEE-ZY KNOCK OUT for “live plants,” concluding that confusion is not likely with the registered marks OSO EASY and OSO EASY PEASY for live plants. The Board found that "the dissimilarity of the marks and the slight weakness of Opposer’s marks" outweighed the other DuPont factors. Spring Meadow Nursery, Inc. v. The Conard-Pyle Company, Opposition No. 91291336 (January 12, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Opposer pleaded seven registrations but the Board focused on only two of them: OSO EASY for “live plants” and OSO EASY PEASY for “live plants excluding barley and peas in any form,” because they are "most similar to Applicant’s mark and goods." "If we find a likelihood of confusion as to either of these marks and the associated goods, we need not find it as to Opposer’s other marks. Conversely, if we do not find a likelihood of confusion as to either of these marks, we would not find it as to Opposer’s other marks."

Opposer attempted to prove that its marks are commercially strong under the fifth DuPont factor, but it failed to provide sufficient context for its sales and advertising figures to allow the Board to make that finding. The Board concluded that the marks are of "average commercial strength." Under the sixth factor, the Board found Opposer’s marks OSO EASY and OSO EASY PEASY, to be inherently distinctive, "although their conceptual strength is somewhat limited by the conceptual weakness of the term EASY as it pertains to the ease of growing and maintaining the shrubs."

Since applicant's goods and those of the two registrations are identical or overlap, the Board presumed that the overlapping goods travel in the same trade channels to the same classes of consumers. Moreover, a lesser degree of similarity between the marks is therefore needed to conclude that confusion is likely.

Turning to the marks, the Board found that OSO EASY and OSO EASY PEASY are "inseparable unitary phrases with an unusual spelling of 'oh so,' both imparting to the consumer that growing and caring for the plants is very easy." "Applicant’s mark begins with the phrase EASY BEE-ZY, which, despite some phonetic similarity to a portion of Opposer’s unitary marks, ends with the incongruous phrase KNOCK OUT." "[It] includes a hyphen setting off BEE and ZY, and so the mark specifically directs consumers to understand that the shrubs attract bees as pollinators."

Applicant argued that consumers will likely focus on the KNOCK OUT portion of its mark because it is part of a “family” of KNOCK OUT marks. Although it is "well-established that the family of marks doctrine is not available to overcome a Section 2(d) refusal in an ex parte proceeding," the Board ruled [without citing any legal support] that "evidence of a family of marks also supports the distinctiveness of a defendant’s mark, or a portion thereof (such as KNOCK OUT), in a Section 2(d) analysis." Other evidence of applicant's use of the term KNOCK OUT with other rose plants also supported the argument that the KNOCK OUT portion of applicant's mark is distinctive.

We conclude that the inclusion of the term KNOCK OUT in Applicant’s mark significantly contributes to the other differences we have identified in the marks. In sum, we find that the similarities in appearance, sound, meaning, and overall commercial impression are outweighed by the marks’ significant dissimilarities, particularly considering the limited scope of protection of Opposer’s OSO EASY marks, and in spite of the similarities in goods and channels of trade. The first DuPont factor weighs against a finding of likelihood of confusion.

The Board then determined that the dissimilarity of the marks and the slight weakness of Opposer’s marks outweighed the other DuPont factors. Because opposer failed to prove by a preponderance of the evidence that confusion is likely, the Board dismissed the opposition.

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TTABlogger comment: I have no problem with the result, but question the Board's resort to external evidence to show the distinctiveness of the phrase KNOCK OUT. Moreover, isn't KNOCK OUT inherently distinctive anyway?

Text Copyright John L. Welch 2026.

CAFC Affirms TTAB: SAZERAC STITCHES Confusable With SAZERAC for Houseware Store Services

In a nonprecedential ruling, the CAFC upheld the TTAB's decision [pdf here] affirming a Section 2(d) refusal of the mark SAZERAC STITCHES for retail store services featuring an array of household items, including furniture, lighting fixtures, and candle holders, in view of the registered mark SAZERAC for, among other things, “Online retail store services featuring distilled spirits, beverage glassware, cocktail accessories, T-shirts, caps, postcards, and cocktail recipe books." The Board had focused on the first three DuPont factors in its analysis; the CAFC ruled that substantial evidence supported the Board's findings of fact, and it affirmed the Board's ultimate conclusion. In re Laurel Designs, Inc. Appeal No. 2024-1203 (Fed. Cir. January 13, 2026) [not precedential].

The CAFC reviews the Board’s weighing of the DuPont factors de novo but reviews the Board’s factual findings on each DuPont factor for substantial evidence. In re Charger Ventures LLC, 64 F.4th 1375, 1381 (Fed. Cir. 2023). 

In evaluating the second and third factors, the Board acknowledged that the products offered by the parties were not identical. However, "the services in the application versus 'the Cited Registration do not have to be identical or directly competitive to support a finding of a likelihood of confusion.'" The evidence showed that "at least ten third-party providers of online retail store services" feature applicant's goods and registrant's goods "all under the same mark."

In light of that evidence, the Board that "consumers are used to seeing the types of goods featured by [Laurel Designs] and the cited registrant offered under a single mark via online retail store services,” and therefore, “the similarity or dissimilarity of established, likely-to-continue trade channels . . . favor[ed] a finding of likelihood of confusion.”

Accordingly, there is substantial evidence in the record to support the Board’s fact finding that ten online retailers carrying goods found in both the Application and the Cited Registration supported a finding of likelihood of confusion, and we see no legal error in its analysis.

As to the marks, applicant argued that the Board did not consider its mark as a whole, but the CAFC observed that "[i]t is not improper for the Board to determine that, for rational reasons, it should give more or less weight to a particular feature” of a mark."

[W]e determine that the Board weighed SAZERAC STITCHES in its entirety and did not legally err by making a reasonable factual determination that SAZERAC is “dominant in [SAZERAC STITCHES] because it is the first term and the element most likely to be remembered.”

Finally, in weighing the DuPont factors, the Board ruled that "[s]ince the Board’s factual findings for each DuPont factor considered are supported by substantial evidence, and all factors favored a likelihood of confusion, we affirm the Board’s ultimate conclusion.

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TTABlogger comment: The cited registration is owned by Sazerac Brands, an alcoholic beverage company.

Text Copyright John L. Welch 2025.

TTABlog Test: Is BLACK SWAN for Vodka Confusable with BLACK SWAN for Wine?

[This is a guest blog post authored by Karen Gover, an associate in the litigation department at Wolf Greenfield]. The USPTO refused to register the proposed mark BLACK SWAN in standard characters and in the word-and-design form shown below [VODKA disclaimed], both for “vodka.” It found confusion likely with the registered mark BLACK SWAN (in standard characters), for “wines” because the word marks are identical, and vodka and wine are closely related, being commonly sold in the same trade channels under the same mark. Examining Attorney Linda Lavache also noted that vodka is sometimes made from wine grapes, and that vodka and wine are mixed in some cocktails. Applicant Robert Sulic pointed out that just because tomato juice and celery are essential ingredients in a Bloody Mary, and vodka and milk are mixed in a White Russian, does not make those ingredients intrinsically related. Applicant argued that the Board’s precedential decision in In re White Rock Distilleries Inc., 92 USPQ2d 1282 (TTAB 2009) [TTABlogged here], in which it found that vodka and wine were unrelated, should govern. How do you think this came out? In re Robert Sulic, Serial Nos. 79375327 & 79375609 (January 7, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Board first compared the marks in their entireties. As to the standard character marks, because they are identical and both are arbitrary, “the first Dupont factor weighs heavily against the applicant.” The Board disagreed with Applicant’s argument that the commercial impression of the word-and-design mark is dominated by the design, and pointed out that the image of a black swan simply strengthened the impact of the literal terms BLACK SWAN, and that the remaining elements (the castle and landscape) do little, “serving simply as a backdrop to the swan.”

Next, the Board conducted an analysis of the similarity or dissimilarity of the goods: vodka and wine. While it noted that both are alcoholic beverages, that is not itself dispositive because the category “alcoholic beverages” is a broad one. However, the Board pointed to the evidence that the Examining Attorney placed into the record that wines and vodka are used in several mixed drinks. It batted away Applicant’s reductio ad absurdum argument regarding the non-related ingredients of Bloody Marys and White Russians as merely “rhetorical.”

The Board also considered the Examining Attorney’s evidence that over a dozen companies sell both wine and vodka under one mark, and the eighteen third-party registrations to use the same mark for both types of goods, as indicative that consumers are likely to perceive vodka and wine as related. The Board found that the third-party evidence alone “is more than sufficient to show that vodka and wine are related in a manner that bears on source identification.” Third-party evidence showing that consumers can buy vodka and wine via the websites of companies that make both also contributed to the Board’s finding that “the trade channels overlap at least to that extent.”

The Applicant urged the Board to follow its prior decision in White Rock Distilleries, but to no avail. The Board agreed with the Examining Attorney that its prior finding as to the unrelatedness of vodka and wine does not control:

Market circumstances are not static. They change and evolve over time. In addition, the USPTO “is required to examine all trademark applications for compliance with each and every eligibility requirement ….” In re Cordua Rests., Inc., 823 F.3d 594, 600 (Fed. Cir. 2016). Together these two principles mean that no prior decision’s factfinding controls a case with different facts and evidence.

Taking all of the relevant factors together—identity of the word marks; the word-and-design mark being “very similar”; the consumer view of vodka and wine as related; and the overlapping trade channels, the Board had “no difficulty” concluding that confusion was likely, and affirmed both refusals.

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TTABlogger comment: Is this a WYHA?

Text Copyright Karen Gover 2026.

TTAB Finds TURNKEY STORAGE Merely Descriptive of Self-Storage Facilities, Noting that "Trademarking" is not a Verb

The Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the proposed mark TURNKEY STORAGE for the service of providing self-storage facilities [STORAGE disclaimed], rejecting applicant's claim of acquired distinctiveness. The testimony of applicant's expert witness was given little weight, partly because he committed the cardinal sin [at least in my book] of using the term "trademarking" as a verb. In re Turnkey Storage, LLC, Serial No. 97796315 (December 8, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

The Board first noted that '[i[t is the Examining Attorney’s burden to show, prima facie, that a mark is merely descriptive of an applicant’s goods or services.” Fat Boys, 2016 TTAB LEXIS 150, at *5.

“The major reasons for not protecting [merely descriptive] marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods [or services]; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products [or services].” Abcor Dev. Corp., 588 F.2d at 813 (citation omitted).

Examining Attorney Wade Speake relied on dictionary definitions of "turnkey" (ready for immediate use) and on numerous third‑party uses of "turnkey" and "turnkey storage" to describe ready‑to‑use storage services. Applicant's own website stated that it wants the customer’s "storage experience to be a valuable, turnkey experience."

As mentioned, the Board gave little weight to the testimony of applicant's expert witness "on factual or legal grounds beyond general statements about marketing or branding."

While Professor Bond may be an expert in marketing and branding, it is apparent from a review of his testimonial declaration that he is not an expert in trademark matters much less on the registrability of trademarks under the Trademark Act and the problems and considerations related thereto. This is readily apparent from his inability to appreciate the difference between the Examining Attorney’s refusal based on mere descriptiveness and his genericness advisory, and his reference to “trademarking” as a verb. [emphasis supplied].

Having no doubt as to the mere descriptiveness of the proposed mark, the Board next addressed applicant's Section 2(f) claim of acquired distinctiveness.

Deeming TURNKEY STORAGE to be "highly descriptive" of applicant's services, the Board observed that "[a]ccordingly, while secondary meaning is not impossible to prove, Applicant bears a heightened burden to establish acquired distinctiveness."

Reviewing the CAFC's Converse factors, the Board began by finding applicant's ten years' of use insufficient.

[T]he passage of time alone may not suffice to bestow on the applied-for mark the mantle of distinctiveness. See, e.g., In re Ennco Display Sys., Inc., No. 74439206, 2000 TTAB LEXIS 235, at *23 (“Applicant’s length of use ranging from approximately seven to seventeen years is simply insufficient, in itself, to bestow acquired distinctiveness.”). This is especially true for highly descriptive matter, for which even lengthy use may be inadequate.

Furthermore, the evidence of third-party use of “TURNKEY STORAGE” or variations thereof indicated that applicant's use of the mark had not been "substantially exclusive," as required by Section 2(f).

Applicant's evidence of $1.2 million spent in advertising and promoting the TURNKEY STORAGE mark, and its sales revenue of $38 million was not placed in industry context, diminishing its impact. "Without benchmarks − such as market share, relative ranking, or comparative spend − it is unclear whether the cited numbers are substantial, modest, or otherwise impactful within the industry."

The testimony of applicant's expert on this issue did not provide the basis for his opinion that applicant’s advertising and sales are "sufficient to prove acquired distinctiveness for a highly descriptive mark." Finally, a single media article from nine years ago had minimal probative value.

And so, the Board affirmed the refusal.

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TTABlogger comment: WYHA? Understandable why the examining attorney issued a genericness advisory.

Text Copyright John L. Welch 2025.