Second Circuit Vacates Peju Summary Judgment: Lower Court Misapplied Issue Preclusion and Misread B&B Hardware

A mere three weeks after hearing oral argument, the U.S. Court of Appeals for the Second Circuit vacated and remanded the July 12, 2024 judgment of the district court in Cesari S.R.L. v. Peju Province Winery L.P., Civil Action No. 17 Civ. 873 (NRB) (S.D.N.Y. Dec. 11, 2017) [pdf here], in which the court granted Plaintiff Cesari's motion for partial summary judgment on its trademark infringement claim, ruling that preclusion applied to the issue of likelihood of confusion based on a 2004 TTAB decision. The Second Circuit's non-precedential order may be downloaded here.

In the TTAB opposition, Cesari contended that Peju’s LIANA mark was likely to cause confusion with its LIANO mark. The TTAB conducted its Section 2(d) analysis exclusively “on the basis of the identification of goods set forth in [Peju’s] application,” without considering “the particular nature of [Peju’s] goods, the particular channels of trade[,] or the class of purchasers to which the sales of goods are directed.”

Ten years later, Cesari sued Peju for trademark infringement, and then moved for partial summary judgment on the issue of whether Peju was precluded from relitigating the “likelihood of confusion” element of the trademark-infringement claim. The district court granted the motion, ruling that Peju was “precluded from relitigating the likelihood of confusion between the parties’ marks” – an element of Cesari’s trademark infringement claim – because the TTAB’s 2004 trademark registration decision had settled the matter once and for all."

The Second Circuit, however, found that "the TTAB decision – on its face – did not consider the parties’ 'actual usage in the marketplace.'" "Importantly, the TTAB never considered the merits of Peju’s principal defense to Cesari’s infringement claim: “that its wine [wa]s distinguishable [from Cesari’s] because it is a dessert wine” and therefore not likely to confuse consumers.

Therefore, because the issues before the TTAB and the district court were not the same, the district court should not have given preclusive effect to the TTAB’s ruling on the likelihood of confusion.

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TTABlogger comment: TTABlog hat tip to Joel MacMull (who argued the case) and Marty Schwimmer. If you listened to the oral argument, you are not surprised by the swiftness of this ruling.

Text Copyright John L. Welch 2026.

TTAB Case Update: New York IP Law Assn - June 24th at Noon

The TTABlogger will present a TTAB Case Update at the New York Intellectual Property Law Association's Seminar entitled "Hot Topics in Trademark and Copyright Law," on June 24th. Details here.

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Text Copyright John L. Welch 2026.

TTABlog Test: Is THRESHER WORM for Fishing Lures Confusable with THRASHER RODS for Fishing Rods?

The USPTO refused to register the mark THRESHER WORM for “Artificial fishing bait; fishing lures” [WORM disclaimed], concluding that confusion is likely with the registered mark THRASHER RODS for “Fishing rod blanks; Fishing rod handles; Fishing rods; Rods for fishing; Fishing gaffs; Structural parts of fishing rods, namely, Grips, Rings, Reel seats” [RODS disclaimed]. Applicant Good Sportsman argued, unsurprisingly, that the marks differ in appearance, sound, connotation, and commercial impression, and also that the goods are completely unrelated. How do you think this appeal came out? In re Good Sportsman Marketing, L.L.C., Serial No. 98897724 (June 3, 2026) [not precedential] (Opinion by Judge Angela Lykos).

The Marks: In addition to the differences in appearance and sound, Good Sportsman contended that the marks differ in connotation and commercial impression because "thresher" is a species of shark or a type of agriculture machinery used to separate grains from stalk or husks, whereas "thrasher" is a bird species or a moniker for an avid skateboarder.

The Board noted that each mark is comprised of two words and ends with a single, monosyllabic word, making them similar in structure and cadence. They begin with THRESHER or THRASHER, which is the portion of the mark consumers are most likely to recall. The record showed the "thresher" and "thrasher" may be synonyms: "When used as an intransitive verb, the word 'thrash' is defined as 'to move or stir about violently: toss about' or 'thresh.'"

The second words in each mark, WORM and RODS, are different in sound and appearance, but each is associated with fishing. "Considered within that context, THRESHER WORM and THRASHER RODS convey the same imagery of a fish splashing in the water or resisting being reeled in by a rod after being lured by bait."

Overall, the marks are similar in appearance and sound, and project a similar connotation and commercial impression. Consumers “have but dim recollections from having previously seen or heard one or the other of the involved marks.” Neutrogena Corp. v. Bristol-Myers Co., 410 F.2d 1391, 1393 (CCPA 1969).

The Goods: Examining Attorney Heather Kennedy established that the goods are related via three third-party registrations covering both lures and rods and three third-party websites offering these goods under the same mark. The Board also observed that lures and rods "are complementary goods since they are used together for fishing."

Other factors: The evidence demonstrated that the normal trade channels for the involved goods are the same, namely, online retail websites specializing in fishing equipment, and that the consumer classes overlap. Although some rods may be expensive and some purchasers sophisticated, there were no restrictions in the cited registration as to classes of purchasers and price.

We must therefore assume that Applicant’s and Registrant’s fishing equipment products are available to all members of the general public, including ordinary consumers of such products at all price points. This would include not only avid fishing enthusiasts and expert professionals, but also the novice hobbyist. While some of these consumers might be highly sophisticated and knowledgeable about fishing, others may be new to the activity. Basing our analysis “on the least sophisticated potential purchasers,” Stone Lion, 746 F.3d at 1325, this DuPont factor is neutral.

Conclusion: Weighing the relevant DuPont factors and finding that none favored the applicant, the Board affirmed the refusal.

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TTABlogger comment: I think the connotation discussion is a stretch. In the real world, do you think confusion is likely?

Text Copyright John L. Welch 2026.

TTAB Upholds Refusal of LACONIA MOTORCYCLE WEEK for Clothing and Patches - Merely Ornamental and not a Source Indicator

The Board affirmed a refusal to register the mark LACONIA MOTORCYCLE WEEK for various clothing items and for cloth and fabric patches for clothing, finding that, as used on the specimens of use [shown below], the phrase would be perceived by consumers as merely ornamental and not as a source indicator. Applicant City of Laconia claimed acquired distinctiveness based on more than 100 years of use but it failed to provide any probative evidence in support of that claim. In re City of Laconia, New Hampshire, Serial No. 98201363 (May 28, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

The "critical question" for the Board was how consumers perceive the proposed mark as displayed on the specimens of use: will they perceive LACONIA MOTORCYCLE WEEK as source indicator or as merely ornamental wording on the shirt and patch? Examining Attorney Bianca Allen argued that:

the applicant’s submitted specimen shows the applied-for mark, “LACONIA MOTORCYCLE WEEK”, located directly on the upper-center area of the front of the shirt and the middle of the cloth patch, where ornamental elements often appear. … Furthermore, the design element that contains the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods. Lastly, the applied-for mark appears to be a design and slogan that is used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance.

Applicant City of Laconia contended that its use of the phrase serves as an identifier of secondary source because "[t]he consuming public recognizes LACONIA MOTORCYCLE WEEK as the name of a specific, municipally controlled event" and that the City" exercises quality control" such that "[m]erchandise bearing the wording is widely understood to be officially licensed goods." That argument failed, however, because there was no evidence to support it. "[W]e are left only with the unverified statements of Applicant’s counsel, which are not evidence."

The Board agreed with the Examining Attorney: "the proposed mark appears among other wording and designs and, in this context, the overall commercial impression is that the proposed mark is merely part of a larger ornamental design containing information about a motorcycle rally, e.g., held in 'June 2023' in 'New Hampshire.' Put simply, the consumers will not pull out the proposed mark as a source identifier."

And so, the Board affirmed the refusal.

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TTABlogger comment: Well, what would you do next? File a new application? Seek review by way of civil action, which would allow the submission of the missing evidence, e.g., a declaration by somenone with knowledge of the facts?

Text Copyright John L. Welch 2026.

TTAB Sustains Nike's Opposition to BLUE RIBBON TEAM for Sports Stores Due to Lack of Bona Fide Intent

Finding that the applicant lacked the requisite bona fide intent at the time it filed the subject Section 1(b) application, the Board sustained Nike's opposition to registration of the mark BLUE RIBBON TEAM & Design for "[o]n-line retail store services” featuring dozens of categories of goods, including sporting equipment and accessories. The Board declined to reach Nike's likelihood of confusion claim based on alleged common law rights in the mark BLUE RIBBON SPORTS for retail store services offering sporting goods and equipment. Nike, Inc. v. Blue Ribbon Team, Opposition No. 91269520 (May 29, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Opposer Nike had the burden to prove, by a preponderance of the evidence, that applicant lacked a bona fide intention to use the mark in commerce on the goods identified in the involved application when the application was filed. "Because this sort of claim requires a plaintiff to prove a negative, we permit an opposer to make out a facie case by showing the absence of any documentary evidence regarding Applicant’s intent to use the mark." If Opposer satisfies its initial burden, applicant must bring forth rebuttal evidence showing its bona fide intent.

Nike pointed to applicant’s lack of documentary evidence and to the discovery deposition testimony of applicant, and specifically to applicant's failure to produce any documents or things responsive to Nike's FRCP 34 productions requests, including business plans, sales and advertising figures, and store locations. See, e.g., Honda Motor Co. v. Winkelmann, No. 91170552, 2009 WL 962810, at *2 (TTAB 2009) (“The Board has held … that the absence of any documentary evidence regarding an applicant’s bona fide intention to use a mark in commerce is sufficient to prove that an applicant lacks such intention . . . .").

Nike also relied on the deposition testimony of applicant's' founder about his plans to “implement[ ] his business in three, sequenced phases: establishment of the business entity, clearance of the trademarks at the national level, and institution of use of those trademarks in publicly launching the business." Nike noted that not only did applicant have no documents reflecting that it had ever taken any such steps, but also that Applicant had done nothing to accomplish, or even plan, any of those steps. Moreover, all of the prior business experience of applicant's founder was unrelated to the online retail services identified in the application.

Applicant’s failure to produce any documentation concerning the proposed online retail store venture, its admitted failure to take any steps to set up the business, and Mr. Kraus’s nearly-total lack of experience in that field establishes a prima facie case—at minimum—that Applicant lacked a bona fide intent to use its mark in commerce at the time it filed its application.

Applicant's only argument regarding the bona fide intent issue appeared to be that he was waiting to take any steps toward setting up its business, or even develop a written plan, until after this opposition proceeding was over. The Board, however, saw this as an attempt “to reserve a right in the mark” first, see M.Z. Berger, 787 F.3d at 1376, and then plan its business. As Opposer aptly puts it, this is 'the sort of cart-before-the-horse approach to trademark registration that Section 1(b) forbids.'"

Thus, applicant failed to rebut Nike's prima facie case, and so the Board sustained the opposition.

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TTABlogger comment: This opposition lasted five years from start to finish. BTW: According to Wikipedia, Nike was first known as "Blue Ribbon Sports."

Text Copyright John L. Welch 2026.

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

So far this year, the frequencey of TTAB affirmances of Section 2(d) refusals has dropped to the 84% range. Here are decisions in three recent appeals. How do you think they came out? [Answer in first comment].

In re Dillon M. Fink, Serial No. 98418182 (May 27, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon) [Section 2(d) refusal of the mark WHIRL PONG for "Equipment sold as a unit for playing drinking games featuring a rotating turntable that holds cups" [PONG disclaimed] in view of the registered mark WHIRLBALL for "portable action skill games; portable target games; the aforementioned goods specifically excluding amusement park equipment."]

In re Octavio J. Ramirez Bartolomei, Serial No. 98798291 (May 27, 2026) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal of HAPPY MAMITA for "Shirts; Tee shirts" in view of the registered mark MAMITA for "Clothing, namely, T-shirts, jackets, pants, sweaters for children."]

In re Naturel Goods LLC, Serial No. 98702670 (May 28, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin). [Section 2(d) refusal of the mark B NATUREL and design, shown below left, for "Body and beauty care cosmetics; Hair care creams; Hair care lotions; Hair care preparations; Beauty creams for body care; Cosmetic preparations for body care; Cosmetics sold as an integral component of non-medicated skincare preparations" [NATUREL disclaimed] in view of the registered mark B NATURAL and design, shown below right, for "Non-medicated cosmetics and toiletry preparations; perfumery, essential oils; cleaning and abrasive preparations for human skin" [NATURAL disclaimed].

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

Text Copyright John L. Welch 2026.

TTAB Denies Petition to Disqualify Attorney Who Submitted Testimony Declaration

The Board, acting under authority delegated by the Director of the USPTO, denied a petition seeking disqualification of cancellation petitioner Cove Surf's attorney, Mr. Omid E. Khalifeh, who submitted a testimony declaration in this proceeding, ruling that Mr. Khalifeh was not a necessary witness. The testimony declaration supported certain exhibits accompanying Cove Surf's notice of reliance. Cove Surf Company Inc. v. Columbia Insurance Company, Cancellation No. 92085620 (May 27, 2026) [not precedential] (Decision by Cheryl Butler, Appointed TTAB Petitions Attorney).

Cove Surf alleged abandonment and fraud vis-a-vis Respondent's registration for the mark COVE SHOE COMPANY for "footwear." Cove Surf maintained that "the footwear allegedly sold under the 'COVE' mark was not genuinely offered to or purchased by third-party retailers, and that the [Respondent's] alleged purchase orders may reflect internal transactions or fictitious sales."

Cove Surf's notice of reliance included as exhibits copies of the purchase orders in question (from "The Shoe Factory"), a picture of a boot (shown above), and copies of email exchanges between Mr. Khalifeh and the email address shoefactoryoutlet@hhbrown.com. The Exhibits were introduced by the declaration of Mr. Khalifeh.

Mr. Khalifeh recites that 1) he called the Shoe Factory Outlet to confirm the purchases identified in the purchase orders produced by Respondent; 2) he spoke with “Dan” who informed him that the store did not carry footwear under the COVE brand and referred Mr. Khalifeh to “Denise, who has been with the company for over 30 years.”; 3) that subsequently he spoke with Denise who also informed him that COVE branded shoes were not available at the store; 4) that he inquired about a photo of a COVE branded boot and was asked to send the image by email, and did so; 4) that Denise indicated she could not recall the store selling such boot or any footwear under the COVE brand; 6) and that Dan explained the store was locally referred to as COVE but “the store carries only H & H, Caroline, Cochran, and Matterhorn branded footwear, and not any product bearing the COVE mark.”

The Board observed that disqualification of counsel "is a drastic measure which courts should hesitate to impose except when absolutely necessary." “[S]uch motions should be viewed with extreme caution for they can be misused as techniques of harassment.” 

Section 11.307(a) of THE USPTO RULES OF PROFESSIONAL CONDUCT, 37 C.F.R. § 11.307(a), states:

A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless: (1) The testimony relates to an uncontested issue; (2) The testimony relates to the nature and value of legal services rendered in the case; or (3) Disqualification of the practitioner would work substantial hardship on the client. [Emphasis supplied].

Respondent Columbia Insurance contended that because the declaration included Mr. Khalifeh’s opinion as to the authenticity and credibility of Columbia’s evidence by suggesting that the produced purchase orders appear “facially irregular,” Mr. Khalifeh has made himself a necessary witness and must be disqualified from representing Cove Surf. 

Cove Surf maintained that the evidence submitted with the declaration was offered to highlight the absence of corroboration, internal inconsistencies and lack of ordinary indicia of Columbia's documents. Furthermore, it argued, the information contained in the declaration is obtainable from other sources: from Respondent Columbia itself and from the customer identified in the purchase orders.

In determining whether or not disqualification is required, the first consideration is whether the attorney is a necessary witness, and the second is, if necessary, does that attorney meet a listed exception. An attorney will be considered a necessary witness where no other person is available to testify in his place. * * * Without a showing by the petitioning party that the attorney has information only he may attest to, that person will not be deemed a necessary witness.

The Board found that Mr. Khalifeh was not a necessary witness:

Clearly there are other persons available to testify on the potential matters brought up by NOR 5. The Shoe Factory Outlet is available to address its relationship with Respondent and products purchased. More specifically to NOR 5, the Shoe Factory Outlet’s employees are available to address the inquiry made, the information they purported provided, the request for a photo that originated from one of the employees, and contents of the telephone and email exchanges. Respondent is the primary source to address its relationship with the Shoe Factory Outlet, including the sales made and the products sold.

And so, the Board denied the petition for disqualification

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TTABlogger comment: Does Columbia Insurance Company sell footwear? Anyway, it got the boot.

In 2015, the Board denied a petition to disqualify an opposer's counsel who had signed and verified certain prosecution and maintenance documents because he was not the sole source for information regarding those documents and therefore was not a "necessary witness." [TTABlogged here].

Text Copyright John L. Welch 2026.

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

So far this calendar year, the Board has affirmed all 12 mere descriptiveness/disclaimer refusals that it has reviewed on appeal. Here are three recent appeals, decided on the same day. How do you think they came out? [Answer in first comment].

In re Brainlab SE, Serial No. 98004456 (May 26, 2026) [not precedential] (Opinion by Judge Martha B. Allard). [Requirement to disclaim the merely descriptive term DYNAMIC SURFACE in the mark EXACTRAC DYNAMIC SURFACE for, inter alia, "computer hardware and recorded software for image guided patient positioning and monitoring, particularly based on optical and thermal imaging modalities" and for "image-processing and image-presenting instruments and apparatus for medical and surgical purposes and for image guided patient positioning and monitoring, particularly based on optical and thermal imaging modalities for use in radiotherapeutic procedures." [SURFACE disclaimed]. Applicant argued that the term DYNAMIC must be considered on its own and that, on its own, it is a suggestive term.]

In re P&P Imports LLC, Serial No. 98559658 (May 26, 2026) [not precedential] (Opinion by Judge Thomas W. Wellington). [Mere descriptiveness refusal of WOVN for "recreational furniture." Applicant argued that its specimen of use shows that its chairs do not match any of the definitions provided by the Examining Attorney: "the back and seat are not textiles formed by weaving, or interlaced threads, or made of yarn, and do not stretch diagonally, as required by the Wikipedia reference, nor do they constitute a woven fabric."]

Applicant's specimen of use

In re Fast Slow Motion, LLC, Serial No. 98631466 (May 26, 2026) (Opinion by Judge Thomas W. Wellington) [Mere descriptiveness refusal of SCALABLE BUSINESS FRAMEWORK (in standard form) for "Computer software consulting; Consultation services relating to computer software; Consulting services for others in the field of design, planning, and implementation project management of computer software; Consulting services in the design and implementation of computer-based information systems for businesses; Consulting services in the field of software as a service (SAAS); Consulting in the field of IT project management" [FRAMEWORK disclaimed].  Applicant argued that consumers must make "mental leaps" before understanding the descriptive significance of Applicant’s mark.]

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

Text Copyright John L. Welch 2026.

TTABlog Test: Is PRO-GO for Bendable Lotion Containers Confusable with HANDY PRO-GO for Plastic Pails?

The USPTO refused to register the mark PRO-GO for "lotion containers sold empty for domestic use, namely bendable tubing for personal transport of such lotions," concluding that confusion is likely with the registered mark HANDY PRO-GO for "portable plastic containers, namely, pails." Applicant Sun Tube argued that the goods are different and the cited mark is dominated by the word HANDY. How do you think this came out? In re Sun Tube, LLC, Serial No. 97365902 (May 22, 2026) [not precedential] (Opinion by Judge Elizabeth K. Brock).

The Goods: Of course, even if the goods are not identical, they can be related under Section 2(d). The examining attorney submitted excerpts from nine websites, contending that each showed the involved goods being sold under a single mark. The Board reviewed each website and found that the first three did not show bendable tubing for personal transport of lotions, and another one was a foreign website that had no probative value. Only four were probative.

In sum, we find that four websites . . . show that the broader category of lotion containers may be sold under the same website house mark as plastic pails, but also sometimes not, and of these four websites that offer both types of goods, only the latter three include tube containers that might be considered “bendable” like Applicant’s. Given the potential differences in the lotion container products and Applicant’s own identification (and the lack of evidence that such differences are not consequential), as well as the limited number of entities offering both types of goods, we are not persuaded that the goods are sufficiently related such that confusion is likely.

The s:The Board found the marks to be "similar in appearance and sound, to an extent, and the entirety of Applicant’s PRO-GO mark is identical to the PRO-GO component of Registrant’s mark." However, it was "not convinced that HANDY PRO-GO and PRO-GO have similar meanings and create similar commercial impressions."

When viewed in connection with the goods in the Cited Registration, i.e., plastic pails, we agree with Applicant’s assessment that this might suggest professional painters’ buckets, however, some of these meanings may change. Here, PRO-GO for travel lotion containers certainly leans on the “go” aspect of travel and portability, but the other meanings of PRO do not carryover as well; travel lotion containers for personal use do not so clearly suggest a professional use in the same manner as a plastic pail.

The Board concluded that the marks create different commercial impressions. "Overall, we do not find the find the marks sufficiently similar, which weighs against a conclusion that confusion is likely."

With the first and second DuPont factors weighing in applicant's favor, the Board reversed the refusal.

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TTABlogger comment: How did you do?

Text Copyright John L. Welch 2026.

No Evidence of Priority, So TTAB Dismisses NEAU Coffee Opposition

In this train wreck of an opposition, the Board dismissed Opposer's Section 2(d) claim based on alleged likelihood of confusion between applicant's mark NEAU COFFEE and opposer's common law marks NEAUX and NEAUX COFFEE COMPANY, both for coffee. Opposer failed to introduce any evidence to show its entitlement to bring the opposition, but applicant's evidence established that Opposer is in the business of selling coffee under the pleaded marks "and is more than a mere interloper." Opposer then tripped over the requirement to prove priority. Neaux Coffee LLC v. NEAU Brands, Inc., Opposition No. 91284466 (May 21, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

Under Section 7(c) of the Act, applicant may rely upon the filing date of its application (March 14, 2022) as a constructive use date for purposes of priority. "Put plainly, it was Opposer’s burden to prove by a preponderance of the evidence that it acquired common law rights in its pleaded marks based on use of those marks prior to March 14, 2022."

Although opposer introduced no evidence, applicant submitted Internet materials regarding opposer’s use of its marks. The Board, however, found that those materials, sufficient to prove opposer's standing, were insufficient to prove opposer's priority.

We cannot rely on any purported dates within those materials inasmuch as they are merely screenshots from websites and, without supporting testimony, any statements made in these materials or the websites are hearsay and not reliable for their truth. “Internet evidence is only admissible for what it shows on its face, and because it does not fall within an exception to the hearsay rule, will not be considered to prove the truth of any matter stated therein. * * * Indeed, Opposer, objected to Applicant’s evidence on this very basis, namely, that statements made within the materials constitute hearsay

Because opposer failed to submitted evidence that it owns “a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States,” the Board dismissed its Section 2(d) claim.

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TTABlogger comment: By submitting the Internet evidence, did applicant make an admission against interest regarding the contents thereof? Will the opposer seek review by way of civil action under Section 1071, during which it can submit (additional) evidence?

Text Copyright John L. Welch 2026.