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

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal about 95% of the time just by looking at the marks and the goods/services. Of course, if you just said "affirmed" you'd be right about 89.5% of the time. Anyway, here are three Board decisions issued early this year. No hints this time. How do you think they came out? [Answer in first comment].

In re Rockridge Enterprises LLC, Serial No. 97578343 (January 3, 2025) [not precedential] (Opinion by Judge Robert H. Coggins). [Section 2(d) refusal of the mark ROCKRIDGE ORCHARDS for "Non-alcoholic cider, namely apple ciders, raspberry apple cider, strawberry apple cider and asian pear cider; non-alcoholic sweet ciders, namely spiced apple cider" [ORCHARDS disclaimed] in view of the registered mark ROCKRIDGE CELLARS for "wine" [CELLARS disclaimed].]

In re Lofty Water LLC, Serial No. 97043120 (January 7, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin) [Section 2(d) refusal of the mark LOFTIWATER for "Water beverages" in view of the registered mark LOFTY for, inter alia, coffee, tea, fruit juices and fruit juice-based drinks.]

In re Wet Holdings (Global) Limited, Serial No. 79290215 (January 8, 2025) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of the mark WEECAN for "waters, namely, still water, carbonated mineral water and flavored mineral water; carbonated mineral water, and flavored mineral water; flavored waters; functional water-based beverages, namely, energy drinks, fruit juice beverages and beauty beverages, namely, fruit juices and energy drinks containing nutritional supplements; mineral waters" in view of the registered mark WECANVEGAN for "retail store services featuring vegan and nutritional fortified foods and beverages; online retail store services featuring vegan and nutritional fortified foods and beverages."]

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TTABlogger comment: See any WYHA?s? 

Text Copyright John L. Welch 2024.

Res Judicata Thwarts Applicant Seeking to End Run Prior Opposition by Limiting Services in Second Applications

Applying the age-old doctrine of res judicata (a/k/a claim preclusion), the Board sustained oppositions to registration of the marks MYSTIC PARKS and MYSTIC CITY for amusement park services, based on a final judgment in a prior proceeding that involved the same parties or their privy, and likelihood of confusion claims based on the same set of transactional facts as the claims in the this consolidated proceeding. Although the opposer did not plead res judicata, the Board decided that the issue had been tried by implied consent. Shakopee Mdewakanton Sioux Community v. Adrenalin Technologies, LLC, Oppositions Nos. 91285546 and 91285548 (January 7, 2025) [not precedential] (Opinion by Judge Robert Lavache).

Applicant Adrenalin Technologies, LLC argued that Adrenalin Attractions, LLC controlled the defense in the prior proceeding, but the Board found that "amounts to a distinction without a difference." Both entities are controlled by the same person, one Mr. D'Avanzo. He was the sole witness in both the earlier proceeding and this one, and he controlled the presentation of the prior litigation and the current one.

We therefore conclude that Adrenalin Attractions, LLC and Adrenalin Technologies, LLC are in privity for purposes of res judicata because they have the same owners and the same CEO: Mr. D’Avanzo, who controls and directs the actions and interests of both entities.

All of the proceedings involved opposer's mark MYSTIC (in slightly stylized form) for casino and entertainment services. The prior proceeding involved concerned the marks MYSTIC PARKS AND RESORTS and MYSTIC CITY, whereas the current proceeding involved MYSTIC PARKS and MYSTIC CITY. The Board agreed with the opposer that the marks MYSTIC PARKS AND RESORTS and MYSTIC PARKS are legally identical [PARKS and PARKS AND RESORTS were disclaimed] because they engender the same commercial impression, mainly because the word MYSTIC is the dominant element in both marks. "The fact that the descriptive/generic terms AND RESORTS do not appear in the subsequent version would not alter that perception or otherwise create a 'new mark' in consumers’ eyes."

And, importantly, allowing a party to avert claim preclusion by simply deleting a non-source-indicating element from a subsequent mark would too easily subvert the doctrine’s dual purposes of avoiding relitigation and promoting judicial economy.

The recited services in the prior proceedings were "“amusement park and theme park services" for the MYTIC PARKS AND RESORTS mark and "amusement park and theme park services; entertainment in the nature of an amusement park ride" for the MYSTIC CITY mark. Here, the MYTIC PARK application covers "Operating of amusement park attractions, namely amusement park rides; entertainment services, namely, ticket agency services for amusement park attractions, namely amusement park rides," while the MYTIC CITY application identified "Providing amusement park facilities including a fictional location featuring an amusement park attraction in the nature of a themed area and amusement park rides."

Applicant Adrenalin argued that the services in the current applications are different from those in the prior application and registration because they are "undoubtedly more focused than the broad description of amusement park and theme park services." The Board was unimpressed. "[T]he Board’s likelihood-of-confusion determination in the prior proceeding was based on a broader identification of services, and the judgment there necessarily extends to any and all identified services under the umbrella of that broader identification."

In other words, Applicant may not avoid the preclusive effect of this prior judgment by merely providing a narrower, or “more focused,” identification of services, if those services remain encompassed by the broader identification of services and are therefore essentially legally identical.

And so, the Board found that the evidence supporting the likelihood-of-confusion claim in this case would be identical to the that supporting the likelihood-of-confusion claim in the prior proceeding.

The Board therefore sustained the oppositions, invoking res judicata.

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TTABlogger comment: I think the evidence could be different in the two situations. When faced with a broad recitation of services, the attacker need show an overlap or relatedness as to only something falling within that broad scope. But that attacking evidence could be narrow as long as it fell within the broad scope. However, once the broad recitation is pared down, the attacker's narrow evidence might not overlap or be related. Am I making sense?

Text Copyright John L. Welch 2025.

TTAB Affirms 2e5 Functionality Refusal of Fire Extinguisher Pressure Gauge Configuration, Despite Applicant's Design Patent

The Board affirmed a Section 2(e)(5) functionality refusal to register the product configuration shown below, for "fire extinguishing preparations," finding that applicant's advertising and its utility patents "establish the functional benefits of Applicant's proposed mark." "The mark consists of a three-dimensional configuration of a pressure gauge placed in the center of a recess on the bottom of product packaging." In re Kronebusch Industries, LLC, Serial No. 87621232 (December 30, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Applying the ever-popular Morton-Norwich factors, the Board found that applicant's advertising "confirms that one of the main utilitarian advantages of a recessed (concave) bottom to Applicant’s fire extinguisher is to protect the gauge in rough conditions." A second advantage touted by applicant is that the recessed placement of the gauge makes it easy for an inspector to quickly determine that the extinguisher is properly pressurized.

Applicant Kronebusch's patents, which claimed the "recessed bottom portion," explain that "the design allows the fire extinguisher to sit on a flat surface such that it protects the gauge from abuse and debris and promotes ease of inspection." It also "enables storage of the apparatus on a flat surface, in a variety of vehicles, cabinets, or other storage areas where storing traditional fire extinguishers is difficult." Of course, these utility patents constituted "strong evidence" that the design is de jure functional.

The Board found the third and fourth Morton-Norwich factors to be neutral, noting as to the third that once functionality is found based on other considerations, there is no need to consider available alternative designs.

Kronebusch conceded that the pressure gauge on a fire extinguishing apparatus is functional, but it contended that here the pressure gauge configuration is not functional vis-a-vis chemical preparations. The Board was not moved, pointing out that this argument was "effectively and squarely rejected in In re Creative Edge Design Grp., 2019 TTAB LEXIS 127." There, to avoid a functionality refusal, "the applicant also argued it had applied for a packing design in connection with milk,' and not for the jug itself." The Board observed in that case:

The fact that the configuration is for packaging for milk does not remove its utilitarian aspect from the applied-for goods. The stackability feature is a utilitarian advantage whether the applied-for goods are containers for milk or milk. This advantage begins when the containers are filled with milk, and continues as the milk is distributed to and then sold at the store. In In re Mars, Inc., [Ser. No. 77545810, 2013 TTAB LEXIS 4, at *22] (TTAB 2013), the applicant applied for registration of the three-dimensional configuration of packaging for “pet food.” The Board found it to be generic, in part, because the attributes “permit[ed] stacking of containers.”

For completeness, the Board noted that applicant owns a design patent, which "appears to cover" the proposed mark. The case law says that the existence of a design patent "'presumptively . . . indicates that the design is not de jure functional.’” In re OEP Enters., Ser. No. 87345596, 2019 TTAB LEXIS 278, *20-21 (TTAB 2019) (quoting Becton, Dickinson, 675 F.3d at 1375). However, the existence of a design patent is not dispositive of non-functionality. The "'fact that a device is or was the subject of a design patent does not, without more, bestow upon said device the aura of distinctiveness or recognition as a trademark.'" Id. (quoting Becton, Dickinson, 675 F.3d at 1375)."

The Board, however, looked at the totality of the evidence, including the utility patents and applicant’s advertising, finding that "the strong and explicit evidence that the applied-for mark has utilitarian benefits rebuts any presumption of non-functionality resulting from the existence of ’673 Design Patent."

And so, the Board affirmed the refusal.

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TTABlogger comment: It continues to be my view that the existence of a design patent should have no bearing on the issue of whether the proposed mark is functional in a trademark sense (i.e., de jure functional) because the respective standards for functionality are different. See Sarah Fackrell (Burstein), Faux Amis in Design Law, 105 TMR 1455 (2015). [pdf here].

Suppose applicant's pressure gauge was in some unique shape, like an octagon, rather than circular. Would the octagonal shape be de jure functional?

P.S. I like to use the Latin terms de jure functionality (i.e., Section 2(e)(5) and de facto functionality (mere utility), despite the USPTO's current rejection of those terms, because I think they are clear and concise.

Text Copyright John L. Welch 2025.

In 2024, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals?

By my count, in 2024 the Board issued final decisions in 66 appeals from Section 2(e)(1) mere descriptiveness refusals or from disclaimer requirements based on mere descriptiveness. The Board affirmed 58 of the refusals and reversed eight. That's an affirmance rate of about 87.9%.

Three of the opinions were deemed precedential. The Board upheld a refusal of ZPILE for metal sheet piles [TTABlogged here]. It reversed a requirement for disclaimer of the word ARCHITECT in the mark KORN FERRY ARCHITECT for human resources software and services [TTABlogged here]. And the Board affirmed a refusal of an illustration of a block puzzle game (shown below) for computer game software. [TTABlogged here]

Set out below is a bar chart showing the recent history of Section 2(e)(1) mere descriptiveness appeals. They continue to hover around 90%. Why so many failures? I suspect some or many of these doomed applications are driven by marketing types looking for an edge.

Click on image for larger picture

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Text Copyright John L. Welch 2025.

In 2024, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?

The TTABlogger has once again taken a stab at estimating the percentage of Section 2(d) likelihood-of-confusion refusals that were affirmed by the Board in the past calendar year. I counted 228 decisions, of which 204 were affirmances and 24 were reversals. That's an affirmance rate of about 89.5%.

Only one of the opinions was designated precedential: an affirmance regarding the mark UPC for computer display panels, where the Board found confusion likely with the identical mark registered for charging cables and power connectors. [TTABlogged here]. Applicant Samsung argued that "something more" is necessary to prove relatedness than evidence that some monitor and television manufacturers also sell power cables. The Board, however, pointed out that the "something more" doctrine is limited to cases "where goods are used in the rendering of services and the relatedness of the goods and services is not evident, well known, or generally recognized."

Set out immediately below is a bar chart showing the somewhat sinusoidal history of Section 2(d) appeals. Given the way the cards are stacked against the applicant, it's not surprising that the percentage tends to stay near 90%. The "heavy weight" given the first DuPont factor when the involved marks are identical or nearly so, the lowering of the standard for the first factor when the goods or services are identical, the presumptions regarding channels of trade and classes of consumers, the frequent discarding of third-party registration and use evidence, the "least sophisticated purchaser" test, and the registrant's benefit-of-the-doubt often frustrate these appeals.

Click on image for larger picture

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Text Copyright John L. Welch 2025.

The Top Ten TTAB Decisions of 2024 (Part II)

The TTABlogger has once again gone out on a limb to chose the ten (10) TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (2024). This is the second of two posts; the first five (5) selections are posted here. Additional commentary on each case may be found at the linked TTABlog post.

Laverne John Andrusiek v. Cosmic Crusaders LLC and Lewis J. Davidson, 2024 USPQ2d 21 (TTAB 2024) [redesignated as precedential January 3, 2024] (Opinion by Judge Frances Wolfson) [TTABlogged here]. The Board granted a petition for cancellation of a registration for the mark CAPTAIN CANNABIS for comic books, on the ground of likelihood of confusion with Petitioner Andrusiek’s identical mark, for which he claimed prior use for comic books. Andrusiek’s “actual” trademark use on comic books did not begin until 2017, but from 2006 he used the term as the name of a character, which the Board accepted as use analogous to trademark use. The question, then, was whether Andrusiek made technical trademark use (or “actual use,” as the Board put it) of the CAPTAIN CANNABIS mark within a reasonable time after his analogous use. Andrusiek submitted evidence of such technical trademark use from 2016 and 2017, including displays of comic book covers on Amazon.com, on YouTube, and in other media. The Board found that “Petitioner’s actual trademark use in 2017 was within a commercially reasonable period of time following his analogous use in 2013-14 so as to create a ‘continuing association of the mark’ with Petitioner’s goods.” Viewing the evidence as a whole, “as if each piece of evidence were part of a puzzle,” the Board found that “when fitted together,” the puzzle pieces established prior use by Andrusiek.]

In re Samsung Display Co., Ltd., 2024 USPQ2d 1279 (TTAB 2024) [precedential] (Opinion by Judge Robert H. Coggins) [TTABlogged here]. The Board affirmed a refusal to register the mark UPC for, inter alia, display panels as components of computers and smart phones, finding confusion likely with the identical mark registered for charging cables and power connectors. Applicant Samsung argued that, to show relatedness of the goods, “something more” is required than the mere fact that some third-party manufacturers sell both types of goods. The Board was not impressed. The Board found that “the goods are related because they are each incorporated and used in the same finished electronic products.” As to Samsung’s “something more” argument, the Board pointed out that the two cases relied on by Samsung – Coors Brewing and St. Helena Hospital – involved the relatedness of goods and services, thus “limiting the requirement for ‘something more’ to circumstances where goods are used in the rendering of services and the relatedness of the goods and services is not evident, well known, or generally recognized.” Coors Brewing involved beer and restaurant services, while St. Helena Hospital concerned hospital-based lifestyle programs and printed materials dealing with fitness. Although some purchasers of the involved goods here may be sophisticated, others are not – such as hobbyists and gamers who build or repair their own electronic devices – and there was no evidence that these ordinary consumers would exercise more than ordinary care.

State Permits, Inc. v. Fieldvine, Inc., 2024 USPQ2d 1458 (TTAB 2024) [precedential] (Opinion by Judge Thomas W. Wellington) [TTABlogged here]. In a “somewhat unusual” Section 2(d) cancellation proceeding targeting a Supplemental Register registration and involving “dueling claims of acquired distinctiveness,” the Board granted a petition for cancellation of Fieldvine, Inc.’s registration for the mark PERMITS.COM for construction permit services. Although Petitioner State Permits, Inc. could not prove acquired distinctiveness for its mark PERMIT.COM, it did prove first use for identical services, and that was enough. Unlike in a challenge to a registration on the Principal Register, where the challenger must prove prior proprietary rights in its mark, if the challenged registration resides on the Supplemental Register and covers a descriptive term that lacks acquired distinctiveness, a prior user of a confusingly similar term may succeed in cancelling that registration even without establishing acquired distinctiveness for its own mark. As the CAFC observed in Books on Tape, it would be an "anomalous result" if, "in view of our finding of a likelihood of confusion, Respondent is permitted to keep its Supplemental Register registration for PERMITS.COM, in the absence of a showing of acquired distinctiveness and in the face of Petitioner’s prior use of PERMIT.COM.”

Alfred Sarmento v. Maria Manuela Pinho DE Carvalho, 2024 USPQ2d 1683 (TTAB 2024) [precedential]. [TTABlogged here]. In this opposition to registration of the mark VICE REI for “Wine; Spirits; Liqueurs; Anise liqueur,” the Board denied opposer’s motion for partial summary judgment grounded on non-ownership of the mark on which applicant’s international registration was based. The World Intellectual Property Organization (WIPO) had cancelled the international registration after the Portuguese Trademark Office ruled that the applicant did not own the mark. Nevertheless, the Board gave its blessing to the transformation of the United States request for extension of protection into a national application with a Section 1(b) intent-to-use basis. The Board observed that applicant properly followed the procedures for transformation under Section 70(c) of the Trademark Act, and it then held that Sarmento’s contention that the mark was improperly transformed “cannot form the basis of an inter partes challenge to the registrability of the mark.” “Processing a request for transformation is a ministerial act, and there is no substantive examination of the document(s) or the permissibility of the circumstances that prompted the request for transformation.” Furthermore, opposer’s non-ownership claim was meritless because the challenged application is based on intent-to-use, and there is no statutory requirement that a Section 1(b) applicant be the owner of the mark at the time of filing.

Iron Balls International Ltd. v. Bull Creek Brewing, LLC, 2024 USPQ2d 1004 (TTAB 2024) [precedential] (Opinion by Judge David K. Heasley). [TTABlogged here].Attempting to side-step a Section 2(d) refusal of the mark shown below, for “gin,” Iron Balls petitioned to restrict Respondent Bull Creek’s registration for the mark IRON BALLS for “beer” to “micro-brewed craft beer.” The Board found that the proposed restriction would not avoid a likelihood of confusion, and so it denied the petition. Under Section 18 of the Trademark Act, “[a] party seeking to restrict a registrant’s broadly worded identification of goods under Section 18 must plead and prove ‘(1) that the registrant is not using its mark on goods or services that would be excluded by the limitation, and (2) that the limitation would result in the avoidance of a finding of a likelihood of confusion.’” As to the first requirement, the Board found it significant that Bull Creek represented itself as a “craft brewery” and displayed the “Independent Craft Brewer Seal” on its labels, and so it concluded that relevant purchasers would see respondent as a “brewer with a limited, small batch output” and would consider it to be a “craft microbrewery” and its goods “micro-brewed craft beer.” However, as to the second requirement, “even if Respondent’s goods could be characterized as ‘micro-brewed craft beer,’ and even if its identification of goods were so restricted, the restriction would not avoid a likelihood of confusion.”

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Text Copyright John L. Welch 2025.

The Top Ten TTAB Decisions of 2024 (Part I)

The TTABlogger has once again gone out on a limb to chose the ten (10) TTAB (Tee-Tee-Ā-Bee) decisions that he considers to be the most important and/or interesting from the previous calendar year (2024). This is the first of two (2) posts; the first five (5) selections are set out below. Additional commentary on each case may be found at the linked TTABlog post. The cases are not necessarily listed in order of importance (whatever that means).

Look Cycle International v. Kunshan Qiyue Outdoor Sports Goods Co., Ltd., 2024 USPQ2d 1424 (TTAB 2024) [precedential] (Opinion by Judge Karen S. Kuhlke). [TTABlogged here]. Findings of fraud are few and far between, but here the Board ruled that, in the underlying application for the mark BLOOKE for bicycles, parts, and accessories, respondent’s false statements regarding use of the mark were made either with the intention to deceive the USPTO or with reckless disregard for the truth, and therefore constituted fraud. Respondent’s specimen of use included purported invoices from three transactions but the addresses for the three purchasers were non-existent. It also produced documents during discovery supposedly disclosing an event held prior to April 2021 in the United States but shown to be referencing a 2023 event in Shanghai China. The Board found that the evidence demonstrated “knowing intentional deception,” but “even if the evidence were not sufficient to reveal such intention directly, at a minimum, the facts of this case demonstrate reckless disregard for the truth from which we infer the requisite intent.”

DoorDash, Inc. v. Greenerside Holdings, LLC, 2024 USPQ2d 935 (TTAB 2024) [precedential]. [TTABlogged here]. Trademark bullies breathed a sigh of relief when, in this opposition to registration of the mark shown below for delivery of medical cannabis via car service, the Board rejected Applicant Greenerside’s affirmative defense of unclean hands. Opposer DoorDash alleged likelihood of confusion with eight registered DOORDASH marks for various goods and services, including food delivery. Greenerside asserted that DoorDash has misused its trademarks in a “longstanding and habitual practice of trademark bullying” by opposing a “significant number of applications” on “dubious, weak or exaggerated” grounds. The Board granted DoorDash’s motion to strike that defense. “The Trademark Act does not refer to ‘trademark bullying’ explicitly or even implicitly.” The Board has previously considered assertions of “unclean hands” based on “overzealous enforcement” but found that this defense does not apply to a registrant “seek[ing] to protect its rights in its registered marks, and preclud[ing] the registration of what it believes to be a confusingly similar mark.” Here, the Board found that DoorDash was “merely exercising its right to protect its marks.”

In re Gail Weiss, 2024 USPQ2d 1376 (TTAB 2024) [precedential] (Opinion by Judge Peter W. Cataldo). [TTABlogged here]. The Board upheld a refusal to register the mark GABBY’S TABLE for “Computerized on-line retail store services in the field of food, cooking utensils, cookware, culinary arts cookbooks, magazines and videos, and lifestyle books, magazines and videos” because the specimen of use showed that Applicant Weiss (an online influencer) “provides referrals of products for sale by third parties on their websites” and not the services recited in the application. Weiss’s specimen comprised a webpage displaying a list of items that “Gabby’s Table Recommends” for purchase. A picture of each item is displayed, along with a product description and a “buy now” button that re-directs the consumer to a third-party website where the item may be purchased (e.g., Amazon). The recommended items cannot be purchased directly via Weiss’s website: “Applicant’s specimen does not display, for instance, a virtual ‘shopping cart’ pricing, shipping information, or any other indicia of online retail store services.” Weiss provided no evidence that “consumers clicking the ‘BUY NOW’ buttons on her website, upon being re-directed to a product description on a third-party vendor website where they may then purchase the product from that vendor, will perceive that Applicant herself is providing online retail store services.”

Keystone Consolidated Industries, Inc. v. The Franklin Investment Corp. DBA Franklin Industries, 2024 USPQ2d 2025 (TTAB 2024) [precedential] (Opinion by Judge Cheryl S. Goodman). [TTABlogged here]. Inter partes proceedings involving two color marks are as rare as a traffic cop in Boston. The Board denied this petition for cancellation of a supplemental registration for the color mark (red-white-and-blue) shown on the left below, finding confusion unlikely with the registered color mark (red top) shown on the right, both for metal fence posts. In a 69-page decision, the Board found the first DuPont factor — the similarity or dissimilarity of the marks — to be dispositive. The Board pointed out that the issue must be decided “primarily on the basis of visual similarity, which has been described as a ‘subjective eyeball test.’” The Board deemed the marks dissimilar: “[t]he commercial impression of Petitioner’s Red Top Fence Post Mark, is a ‘red top,’ and the color red.” On the other hand, consumers would perceive respondent’s Red, White, and Blue Fence Post Mark as referring to “the national colors of the United States of America, or the flag of the United States of America.”

Blizzard Entertainment, Inc. v. Ava Labs, Inc. , 2024 USPQ2d 1299 (TTAB 2024) [precedential]. [TTABlogged here]. In this opposition to registration of the mark BLIZZARD for various business services, Applicant Ava Labs, Inc., counterclaimed to cancel two pleaded registrations owned by Opposer Blizzard Entertainment for online retail store and mail order services. Ava asserted that the registered marks BLIZZARD and BLIZZARD ENTERTAINMENT had never been used or had been abandoned because the offering of one’s own goods does not constitute a service done primarily for the benefit of others and therefore does not qualify as service mark use. The Board disagreed. The question was “whether, as a matter of law, online retail store or mail order activities featuring only a party’s own goods are ‘services’ as contemplated in the Trademark Act.” The Board observed that “it has long been recognized that gathering various products together, making a place available for purchasers to select goods, and providing any other necessary means for consummating purchases constitute the performance of a service.” Furthermore, the Board has implicitly recognized that retail store activities featuring one’s own goods are services, acknowledging that “if a retail store also uses the name of the store on the goods themselves, the same mark can serve both a trademark and service mark function.” The Board concluded that Blizzard’s activities under the marks constitute use of the marks that satisfies the requirement of the Trademark Act.

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Text Copyright John L. Welch 2024.

The TTAB Issued 30 Precedential Opinions in 2024

The Board issued 30 precedential opinions in calendar year 2024, a total slightly lower than in recent years. A number of trademark practitioners believe that the TTAB should be issuing more precedential decisions. The Board has made available a form for nominating a Board decision as precedential. (link here). [Good luck with that.]

Section 2(a) - False Suggestion of a Connection:

• Precedential No. 11: TTAB Upholds 2(a) False Connection Refusal of LEATHERNECKS for Motorcycle Club Membership

Section 2(d) - Likelihood of Confusion:

• Precedential No. 28: TRIPLEYE Not Confusable With 3RD EYE for Optical Monitoring Software and Services, Says TTAB
• Precedential No. 25: TTAB Awards Priority to Opposer over Its Employee, Sustains Opposition to DISTRICT OF FASHION Mark
• Precedential No. 20: Supplemental Registration for PERMITS.COM Cancelled by Prior User of PERMIT.COM Despite No Acquired Distinctiveness
• Precedential No. 19: Red-White-and-Blue Mark Not Confusable with Red-Top Mark for Fence Posts, Says TTAB
• Precedential No. 18 (Part II): TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles
• Precedential No. 15: TTAB Affirms Section 2(d) Refusal of UPC for Computer Components, Rejecting "Something More" Requirement When Only Goods are Involved
• Precedential No. 5: TTAB Finds SAGEFORTH Confusable With SAGE CENTRAL for Medical Information Services, Dismisses Section 18 Counterclaim Without Prejudice
• Precedential No. 1: TTAB Orders Cancellation of CAPTAIN CANNABIS Registration for Comic Books: Petitioner Proved Priority By Use Analogous to Trademark Use

Section 2(e)(1) - Mere Descriptiveness:

• Precedential No. 30: Illustration of Block Puzzle Merely Descriptive of Computer Game Software, Says TTAB
• Precedential No. 13: TTAB Reverses Requirement to Disclaim "ARCHITECT" in KORN FERRY ARCHITECT for HR Services
• Precedential No. 4: TTAB Finds "ZPILE" Merely Descriptive of Metal Sheet Piles

Section 2(f) - Acquired Distinctivenss:

• Precedential No. 2: TTAB Affirms Refusal to Register Proposed Multi-Color Mark for Breakfast Cereals

Failure-to-Function/Specimen of Use:

• Precedential No. 2: TTAB Affirms Refusal to Register Proposed Multi-Color Mark for Breakfast Cereals

Fraud:

• Precedential No. 18 (Part I): Fraud! TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles

Use/Nonuse:

• Precedential No. 18 (Part II): TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles - Nonuse
• Precedential No. 17: TTAB Rules that Retail Offering of One's Own Goods Qualifies as a "Service" Under the Trademark Act
• Precedential No. 16: "GABBY'S TABLE" Specimen Fails to Show Use of Mark for Recited On-Line Store Services
• Precedential No. 14: TTAB Affirms Two Expungement Decisions Based on Nonuse of SMARTLOCK for Evaporative Air Coolers

Discovery/Evidence/Procedure:

• Precedential No. 29: USPTO Has Inherent Authority to Correct its Error by Cancelling Inadvertently Issued Registration
• Precedential No. 26: TTAB Denies Motion to Compel: Responding without Objection to First Set of Discovery Requests does not Preclude Excessiveness Objection to Second Set
• Precedential No. 24: TTAB Rejects Law School Amicus Brief, Denies Partial Summary Judgment, and Tosses Out Six Affirmative Defenses
• Precedential No. 23: TTAB Refuses to Grant Partial Summary Judgment Against Applicant Who Doesn't Own the Mark
• Precedential No. 22: Failure to Respond to Requests for Admissions Leads to Cancelled Registration
• Precedential No. 21: TTAB Grants Motion to Bifurcate VELCRO Cancellation into two Phases
• Precedential No. 12: TTAB Rejects Sovereign Immunity Claim in Opposition to Virginia College System Marks
• Precedential No. 10: TTAB Denies Section 18 Petition to Restrict Beer Registration to Micro-Brewed Craft Beer

• Precedential No. 9: TTAB Denies HOLLYWOOD HOTEL Summary Judgment Motion, Finding No Claim Preclusion
• Precedential No. 8: TTAB Strikes "Trademark Bullying" Affirmative Defense in DOOR DABZ Opposition
• Precedential No. 7: TTAB Dismisses Cancellation Proceeding as Moot After Registrant Fails to File Section 8 Declaration
• Precedential No. 6: TTAB Denies Meta Platforms' Motion to Dismiss META Opposition on Timing and Standing Grounds
• Precedential No. 3: TTAB Rules that a Cancellation Petition Filed During Grace Period is Mooted If Section 8 Declaration Is Not Filed

Pan-American Convention:

• Precedential No. 27: TTAB Dismisses Empresa Cubana's Pan-Am Article 8 Claim, But With Leave To Re-Plead

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB: Pink Color De Jure Functional for Hip Joint Implants

The CAFC upheld the TTAB's decision [TTABlogged here] granting petitions for cancellation of two registrations on the Supplemental Register for the color pink applied to the entire surface of hip joint implants, on the ground of Section 2(e)(5) functionality. CeramTec GmbH v. CoorsTek Bioceramics LLC, Appeal No. 2023-1502 (Fed. Cir., January 3, 2025) [precedential].

Appellant CeramTec raised two principal arguments on appeal: (1) that the Board’s finding of functionality was infected by legal error and unsupported by substantial evidence, and (2) that the Board erred by categorically precluding the defense of unclean hands in cancellation proceedings involving functionality.

Functionality: The CAFC concluded that the Board correctly applied the Morton-Norwich factors in finding the color pink to be de jure functional for ceramic hip implant components. It observed that CeramTec's expired '816 patent, as well others of its patents, disclose the utilitarian advantages of adding Cr3+ ions to ZTA ceramic hip replacement component materials in order to increase levels of hardness. Ceramtek conceded that the addition of chromia causes a ZTA ceramic to become pink, and (2) that CeramTec practices at least one claim of its ’816 patent. Under the first Morton-Norwich factor, the Board correctly applied the Supreme Court's directive in TrafFix that "utility patents can be 'strong evidence' that the features therein claimed are functional, thus precluding trademark protection."

The Board's finding under the second Morton-Norwich factor was unchallenged: that CeramTec's advertising touted the utilitarian advantages of adding chromium oxide to ZTA ceramic compounds; this evidence also “constitute[s] strong evidence of functionality.” As to the third factor—the availability of functionally equivalent designs—the Board correctly deemed it to be neutral due to the lack of evidence of actual or potential alternative designs. The fourth factor—whether the designs result in a comparatively simple or cheap method of manufacture—was also correctly deemed neutral due to conflicting evidence.

Because substantial evidence supported the Board’s factual findings, the CAFC affirmed the Board’s conclusion that CeramTec’s proposed trademarks are functional under Section 2(e)(5).

Unclean Hands: The CAFC agreed with CeramTec that the Board was incorrect in stating that the defense of unclean hands is unavailable in Board functionality proceedings. CeramTec had contended that CoorsTek should be precluded from asserting that the proposed trademarks are functional because CoorsTek had long maintained that chromia provides no material benefits for ZTA ceramics.

The CAFC pointed out that Rule 2.114(b)(2) expressly provides that the defendant in a cancellation proceeding may "includ[e] the affirmative defense[] of unclean hands." However, any error by the Board in its broad pronouncement was harmless "because the Board adequately considered whether the unclean hands defense was available in this case, as illustrated by its statement that it was 'exercis[ing its] discretion' in view of the 'strong public policy interest in' cancelling ineligible marks."(citing Loglan Inst., Inc. v. Logical Language Grp., Inc., 962 F.2d 1038, 1042 (Fed. Cir. 1992) (“The Board did not err in declining to apply [equitable] defenses [in a cancellation proceeding], as the public interest . . . to rid the register of [an ineligible mark] transcends them.”)).

Conclusion: And so, the CAFC affirmed the Board's decision.

Read comments and post your comment here.

TTABlogger comment: Although the court repeatedly speaks of "cancelling" CeramTec's marks, it is the registrations that are cancelled, not the marks. Maybe one could say the marks were "invalidated." Note also the court's use of "trademark" as a verb. All lawyers should know better.

Text Copyright John L. Welch 2025.

Precedential No. 1: TTAB Upholds USPTO Objections to Over-Inclusive Drawings for Watch Configuration Marks

The Board affirmed the USPTO's refusals to register the product configuration marks shown below, for "watches, wristwatches," on the ground that the drawings were unacceptable for two reasons: (1) they include functional elements, and (2) they include elements that have not acquired distinctiveness. In other words, certain of the elements shown in solid lines should have been depicted in dotted or broken lines because they lack trademark significance. In re Audemars Piguet Holding SA, Serial Nos. 90045780 and 90045814 (January 2, 2025) [precedential] (Opinion by Judge Thomas L. Casagrande).

Applicant Audemars Piguet described the marks as consisting of 12 specific elements as to the first design, but only nine of the 12 as to the second design. The Board noted that "[n]either refusal is based on lack of acquired distinctiveness of the entire designs or on the functionality of the entire designs." Instead, they are based on the applicant’s refusal to comply with Examining Attorney Taryn Smith's requirement that the drawings be revised.

Applicant argued that requiring the application drawing "to depict less than the entirety of a design in dotted lines is legally unsupportable." The Board disagreed. Rule 2.52(b)(4), for example, specifically provides for use of dotted or broken lines in a drawing to depict any matter that is not claimed as part of a mark. In Water Gremlin, the CCPA affirmed a drawing requirement that the functional elements of a proposed mark be shown in dotted lines (combination of a design of a compartmented container with a handle with the words SINKER SELECTOR depicted upon a transparent lid).

The USPTO may register only marks that satisfy the statutory criteria, not marks that partially do and partially don’t satisfy them. And one criterion for registration on the Principal Register is that the proposed mark is distinctive. Drawing requirements plainly advance that obligation by providing a means to exclude unregistrable matter from a mark or design that combines matter that is registrable with matter that is not.

The functionality-based drawing requirement: The Examining Attorney maintained that all of the elements except the octagonal bezel with eight hexagonal screwheads and the pattern covering the back of the watch face are functional. The Board agreed only as to the circular watch face element: "[w]here . . . the evidence overwhelmingly demonstrates widespread use of a design feature an applicant claims is a part of its trade dress, that feature is functional." As to the other elements, although each may have a function, the Office's proof of de jure functionality fell short.

In short, as to these other features, the evidence fails to show that the particular shape or design in the applications before us works better because of their configuration. E.g., In re R.M. Smith, Inc., 734 F.2d 1482, 1484 (Fed. Cir. 1984) (that a design element performs a function does not mean that the element is legally functional unless the degree of utility is such that the public needs to be able to use that element to compete effectively); see also In re Deister Concentrator Co., 289 F.2d 496, 502 (CCPA 1961) (“A feature dictated solely by ‘functional’ (utilitarian) considerations may not be protected as a trademark; but mere possession of a function (utility) is not sufficient reason to deny protection.”).

The acquired distinctiveness-based drawing requirement: Applicant did not provide sales figures but pointed to its extensive advertising and promotional efforts. However, the advertisements depicted many different combinations of elements, and there was no "look for" advertising that directed consumers to the specific elements claimed in the drawings here. Importantly, most of the watches also displayed one of Applicant’s word marks (e.g., AUDEMARS PIGUET and/or AP) on the watch faces, which "detracts from the potential for Applicant’s advertising to educate consumers to look to the design elements alone to identify source."

The common thread among the watches depicted in these ads appears to be the octagonal bezel and eight evenly-spaced screwheads within the bezel. Indeed, Applicant’s website has expressly touted that “[t]he octagonal bezel with its 8 hexagonal screws have become the collection’s trademark.”

The Board concluded that applicant proved acquired distinctiveness only as to the octagonal-shaped bezel and the eight hexagonal screw heads. It found the other claimed elements to be nondistinctive and incapable of indicating source, necessitating the drawing requirement that they appear in dotted lines.

Conclusion: The Board pointed out that the applications may not be re-opened to allow amendment of the drawings. See Trademark Rule 2.142(g), 37 C.F.R. 2.141(g) (permitting re-opening of an application after a decision on appeal only as to disclaimers under Section 6, 15 U.S.C. § 1056). [FOB Pam Chestek points out in her comment that such an amendment to the original drawing would be an material alteration of the mark and thus not allowed].

The Board therefore affirmed the Board affirmed the refusals to register.

Read comments and post your comment here.

TTABlog comment:  So, applicant should have shown only the 8-sided bezel and 8-sided screw heads in solid lines. The other solid lines must be 86'd.

Text Copyright John L. Welch 2025.

TTABlog Quarterly Index: October - December 2024

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield.com.

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Three Recent Section 2(d) Appeals - How Did They Turn Out?
• Heck Freezes Over: USPTO Fails to Prove Gin Related to Beer Under Section 2(d)
• TTABlog Test: Three Section 2(d) Appeals - Affirmed or Reversed?
• TTABlog Test: Is SWAG GOLF for Clothing Confusable with SWAG for Belt Buckles? [Yes]
• TTABlog Test: Three Recent Section 2(d) Oppositions - Which Was/Were Dismissed?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• JERSEY GIRL WHISKEY for Distilled Spirits Confusable with JERSEY GIRL for Beer and Wine, Says TTAB

• Another Strategic Partners Argument Fails: TTAB Affirms Refusal of "REACH & Design" for Vehicle Parts
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• Precedential No. 28: TRIPLEYE Not Confusable With 3RD EYE for Optical Monitoring Software and Services, Says TTAB
• TTAB Affirms Refusal of ENDURELITE in view of ENDUROLETE for Supplements, Rejecting Strategic Partners Argument
• TTABlog Test: Three Section 2(d) Appeals - Affirmed or Reversed?
• PICKWELL FARMS Confusable with PICTSWEET FARMS for Frozen Vegetables, Says TTAB
• TTABlog Test: Is AGAVE BLACK Confusable with BLACK AGAVE ESPECIAL for Skin Care Preparations? [Yes]

• TTABlog Test: Three Section 2(d) Appeals - Affirmed or Reversed?
• TTAB Reverses 2(d) Refusals of "SUN CHLORELLA" for Noodles Due to Crowded Field
• TTAB Finds Energy Drinks Related to Nutritional Supplements and Pickles
• TTABlog Test: Is This Word-and-Design Mark Confusable with PASION, Both for Cigars?
• TTABlog Test: Is FIJIAN SPICE COMPANY for Spices Confusable with FIJI for Drinking Water?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed on Appeal?
• TTABlog Test: Three Recent Section 2(d) Oppositions - How Do You Think They Came Out?
• Precedential No. 25: TTAB Awards Priority to Opposer over Its Employee, Sustains Opposition to DISTRICT OF FASHION Mark
• TTABlog Test: Three Section 2(d) Appeals - Affirmed or Reversed?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• Consent Agreement Trumps Other DuPont Factors in Reversal of Section 2(d) Refusal
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?

Section 2(e)(1) - Mere Descriptiveness:

• TTABlog Test: Is CERTIFIED SUGAR DADDY Merely Descriptive of Dating Software and Services? [Yes]
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Is PHYSICIANCARE Merely Descriptive of Software and Services Enabling Manufacturers to Deliver Information to Healthcare Providers?

• TTABlog Test: Must "CATTLE COMPANY" Be Disclaimed in "ROCK CREEK CATTLE COMPANY" for Real Estate Development Services?
• TTABlog Test: Must "Pop! Popcorn" Be Disclaimed in "Harry & David Pop! Popcorn" for Popcorn?

Section 2(f) - Acquired Distinctiveness:

• "Sunflower in Lapel" for Legal Services Lacks Acquired Distinctiveness, Says TTAB

Abandonment:

• In Second Stage of Cancellation Proceeding, TTAB Deems RASCAL HOUSE Abandoned for Restaurant Services

Failure to Function/Specimen of Use:

• "PROMATCH" for Drum Sticks Identifies a Process, Fails to Function as a Trademark
• TTAB Dubiously Finds that Vertical Light Beams atop Guitar-Shaped Building Fail to Function as a Source Indicator

• Does "FIRST LOOK" Fail to Function as a Source Indicator for Retail Membership Club Services?
• TTAB Dismisses FIRST YEAR DOWN Opposition: Failure-to-Function and Fraud Claims Fail
• TTAB Remands Failure-to-Function Refusal to USPTO for Consideration of Descriptiveness and Deceptiveness
• "SURVIVAL + Greek Cross Design" Fails to Function as a Trademark for First Aid Kits, Says TTAB
• Faulty Specimen Sinks YACHTLY Application for Yacht Chartering Services
• TTAB Wrestles with Applicant over Specimen Refusal: Guess Who Won?
• TTAB Affirms Refusal Because Specimens Show Use of Mark with Mobile App but not SAAS
• Ornamental Design on Jewelry and Clothing Fails to Function as a Trademark, Says TTAB

Fraud:

• TTAB Dismisses FIRST YEAR DOWN Opposition: Failure-to-Function and Fraud Claims Fail

Genericness:

• District Court Overturns USPTO's Genericness Refusal of SPECTACLES for "Smart Glasses"

Discovery/Evidence/Procedure:

• TTAB Dismisses 2d Opposition to VSS GLOBAL for Vedic Educational Services, But Remands Application for Consideration of Non-Distinctiveness
• Precedential No. 26: TTAB Denies Motion to Compel: Responding without Objection to First Set of Discovery Requests does not Preclude Excessiveness Objection to Second Set
• TTAB Denies Motion For Relief from Judgment After Applicant Failed to Appoint U.S. Counsel
• Precedential No. 24: TTAB Rejects Law School Amicus Brief, Denies Partial Summary Judgment, and Tosses Out Six Affirmative Defenses

Pan-American Convention:

• Precedential No. 27: TTAB Dismisses Empresa Cubana's Pan-Am Article 8 Claim, But With Leave To Re-Plead

Recommended Reading:

• Recommended Reading: The Trademark Reporter's Theme Issue on Artificial Intelligence
• Recommended Reading: The Trademark Reporter, September-October 2024 Issue
• Recommended Reading: Farmer and Bosnic: "2023-24 Trademarks Developments"

Other:

• TTAB Posts January 2025 Hearing Schedule
• Precedential No. 29: USPTO Has Inherent Authority to Correct its Error by Cancelling Inadvertently Issued Registration
• Three Recent Inter Partes "Disasters" - Don't let this Happen to You
• INTA Files Proposed Amicus Brief in Peju's Appeal: SDNY Erred in Applying Issue Preclusion Based on TTAB Decision
• Peju Pursues Appeal of SDNY Decision Misapplying B&B Hardware On Issue Preclusion

• TTAB Posts December 2024 Hearing Schedule
• November 2024 Update of TMEP Now Available
• TTABlog Celebrates 20th Anniversary !
• TTAB Posts November 2024 Hearing Schedule
• Replay of and Slides from Michael Keyes Webinar on "Avoiding Consumer Survey Pitfalls at the TTAB"
• TTABlog Webinar: Michael Keyes on "Avoiding Consumer Survey Pitfalls at the TTAB"

Text © John L. Welch 2024.