TTAB Affirms USPTO Rejection of I LOVE YOU THIS MUCH Specimens for Book Publishing Services

The Board upheld a refusal to register the mark I LOVE YOU THIS MUCH (in standard characters) for “Publication of books; publication of personalized story books; book publishing,” concluding that applicant's specimens of use failed to show a direct association between the mark and the recited services. Applicant sells customized story books (with the purchaser furnishing the name to be inserted on the book cover and also editing the text) but that did not qualify as publishing services. In re Lostmy.name Ltd, Serial No. 98342035 (February 17, 2026) [not precedential] (Opinion by Judge Martha B. Allard).

Trademark Rule 2.56(b) requires that the specimen of use show a "direct association between the mark and the services." "Essentially, the mark must be shown 'in a manner that would be perceived by potential purchasers as identifying the applicant’s services and indicating their source.'"

The description accompanying the display of applicant's mark (see above) is found on applicant's "Wonderbly" website, and states: "Create a book for up to four children, to show how enormously you love them in every moment of every day. A beautiful personalized picturebook to read together as a family."

The Board agreed with the examining attorney that "this description suggests Applicant’s services are more akin to 'customized printings of a pre-published template book to the order and specification of an individual customer.'" "Indeed, the text of the specimen (shown in the red box for easy reference) clearly indicates that the customized book is '[p]rinted and shipped in 48 hours.'"

As the specimen makes clear, Applicant does not publish, or issue books for sale or circulation, because the specific book ordered is not available to anyone but the consumer who ordered it. The production of the book is not professional, but personal: the book is not produced to be sold to others but because it was sold to one consumer who designed its content within a template.

Applicant argued that the consumer becomes the author of the book, which applicant then publishes. The Board, however, didn't buy it: publishing means sending out to the public, not sending the customized book back to the author/consumer. "Simply put, ordering a customized storybook for oneself, which Applicant merely prints and ships to the consumer (as denoted in its ordering details and discussed above), does not constitute 'publishing' or 'publication” services."

Concluding that the specimen fails to show a direct association between the I LOVE YOU THIS MUCH mark and the recited services, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Maybe this applicant will try again, with a better recitation of services.

Text Copyright John L. Welch 2026.

LOTE MAESTRO for Alcoholic Beverages Confusable with MAESTRO for Tequila, Says TTAB

In a 69-page decision, the Board granted a petition for cancellation of registrations for the mark LOTE MAESTRO in standard characters and the three-dimensial product configuration mark shown below, for "alcoholic beverages, except beer," concluding that confusion is likely with the registered mark MAESTRO for "tequila." The Board also denied a counterclaim to cancel the MAESTRO registration on the ground of abandonment. This blog post will attempt to hit the high points. Maestro Tequilero, S.A. de C.V. v. Gildardo Partida Hermosillo, Cancellation No. 92074808 (February 10, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The Board began with Respondent Hermosillo's counterclaim. He contended that the petitioner never used the mark MAESTRO except as part of a unitary phrase such as MAESTRO TEQUILERO or MAESTRO DOBEL. The Board, however, found that petitioner's manner of use of the MAESTRO mark was sufficient to avoid abandonment of its trademark rights.

It is well settled that a mark need not appear as the only mark—or even the most prominent mark—on the packaging for goods in order to constitute trademark use. A mark owner has some latitude in selecting the mark it wants to register and “may seek to register any portion of a composite mark if that portion presents a separate and distinct commercial impression” which indicates the source of the goods and distinguishes them from the goods of others.

The Board found petitioner uses of MAESTRO "on a separate line, in a different size font, and at times with its own trademark registration symbol create a separate and distinct commercial impression from the other words and matter on the label and bottle sufficient to constitute use of the MAESTRO mark."

Turning to the Section 2(d) petition for cancellation of Hermosillo's registrations, the Board unsurprisingly found that petitioner’s tequila and Hermosillo's "alcoholic beverages, except beer" are legally identical in part. The channels of trade and classes of consumers for the overlapping goods are presumed to be the same. These DuPont factors weighed "heavily" in favor of likelihood of confusion.

Because the identified goods are unrestricted as to quality or price, the Board "must consider the perspective of the least sophisticated potential purchaser, not just purchasers of Respondent’s higher priced offerings, with the fourth DuPont factor neutral in our analysis.

Comparing the MAESTRO mark with Hermosillo's LOTE MAESTRO standard character mark, the found them to be "quite similar." Hermosillo conceded that the word LOTE, meaning "batch," has little source-identifying significance. The MAESTRO mark and Hermosillo's configuration mark are less similar, but when compared in their entireties, the Board "still [found] that they are similar because both feature the dominant verbal element MAESTRO, and the degree of similarity needed for confusion to be likely is lower where, as here, the goods are legally identical in part." And so, the first DuPont factor weighed in favor of likelihood of confusion with respect to both of Respondent’s marks.

Considering all of the evidence and arguments presented under the fifth and sixth DuPont factors, Petitioner’s MAESTRO mark has at most modest commercial strength and is somewhat conceptually weak, with these factors, on balance, not swaying our likelihood of confusion analysis. No factor weighs against a likelihood of confusion.

And so, the Board granted the petition to cancel Hermosillo's registrations.

Read comments and post your comment here.

TTABlogger comment: The entire opinion is worth reading, including the discussion of petitioner's survey evidence, the strength of petitioner's mark, and the lack of evidence of actual confusion. Do you agree with the conclusion regarding the product configuration mark?

Text Copyright John L. Welch 2026.

TTABlog Test: Is "ALASKA" Primarily Geographically Descriptive of Camouflage Nets?

The USPTO refused to register the proposed mark ALASKA TRACS for "Camouflage nets; Camouflage nets for radar use, Camouflage nets for visual use," absent a disclaimer of the word ALASKA, which the Office deemed to be primarily geographically descriptive of the goods under Section 2(e)(2). There was no doubt that ALASKA is the name of a place known generally to the public, but would the consuming public make a goods/place association? How do you think this came out? In re AKS Industries, Inc., Serial No. 98516980 (February 13, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

In order for a mark or a component of a mark to be considered primarily geographically descriptive under Section 2(e)(2), it must be shown that (1) the mark sought to be registered is the name of a place known generally to the public, and (2) the public would make a goods/place association, i.e., believe that the goods for which the mark is sought to be registered originate in that place; and (3) the source of the goods is the geographic region named in the mark. [If the goods emanate from the named location, a goods/place association if presumed, but here the applicant is located in Arizona.]

The Examining Attorney contended that, according to the evidence, "ALASKA is famous for hunting and fishing activities for which camouflage nets are often used" and that "“camouflage nets are commonly used by and marketed to hunters and fishers." Therefore, according to the Office, there is "a sufficient nexus to create the goods/place association between camouflage nets, 'an essential tool of hunters and fishers, and Alaska, which is famous for its hunting.'"

Applicant AKS argued that "Alaska is not known as a center for camouflage net manufacturing, retail, or distribution" and "[t]he examining attorney has presented no evidence that Alaska has any particular commercial reputation or specialization related to camouflage nets." The Board agreed with AKS.

[A]lthough the record does reflect that hunting is a popular activity in Alaska and that hunters use camouflage netting, nothing in the record indicates that camouflage nets are manufactured or produced in Alaska. On this record, we have doubt that purchasers would believe that the goods come from Alaska.

Because the Office did not satisfy the second prong of the Section 2(e)(2) test, the Board reversed, finding it unnecessary to consider the third prong.

Read comments and post your comment here.

TTABlogger comment: Would you call the refusal "half-baked ALASKA"?

Text Copyright John L. Welch 2026.

TTABlog Test: Is HELANDE (Swedish) Merely Descriptive of Skin Care Preparations?

While the stream of failure-to-function appeals has tailed off, the doctrine of foreign equivalents has recently grabbed the spotlight. Here, the USPTO refused to register the proposed mark HELANDE for skin care preparations, deeming the mark to be merely descriptive of the goods under Section 2(e)(1). The applicant mainly argued that the doctrine does not apply because Swedish is not understood by an "appreciable number" of American purchasers. How do you think this came out? In re Helande, LLC, Serial No. 98083515 (February 13, 2026) [not precedential] (Opinion by Judge Robert Lavache).

"Under the doctrine of foreign equivalents, if a proposed mark contains a foreign term from a common, modern language familiar to an appreciable number of American consumers, that term is translated into English to determine whether it is merely descriptive." Palm Bay. (Emphasis added). "[U]nless it is unlikely that the ordinary American purchaser would stop and translate the word into its English equivalent, the doctrine of foreign equivalents applies.” Vetements." [T]he “ordinary American purchaser” includes “all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English.” Spirits.

Under Vetements, the applicant has the burden to prove that the ordinary American purchaser would not translate the proposed mark into English. If an "appreciable number" of American are capable of translating the word, the word likely will be translated. "The analysis considers 'whether in context, the mark would ordinarily be translated by a purchaser (from the U.S. population as a whole) with ordinary sensibilities.'" Id. (emphasis in italics in original). 

Examining Attorney Hanno Rittner submitted excerpts from online dictionaries supporting the translation, along with the applicant's own translation statement ("English translation of HELANDE in the mark is healing"). See In re Tokutake Indus., No. 79018656, 2008 TTAB LEXIS 26, at *10-11 ("Once an applicant provides a translation of a foreign term that is a . . . descriptive term for the goods in English, it has a more difficult burden to then show that the term is not merely descriptive . . . ."). Website excerpts and third-party registrations established that the word "healing" is used to describe a purpose, characteristic, or function of skin care preparations.

In contending that the doctrine of foreign equivalents does not apply here, applicant argued that "healing" is not a direct translation of HELANDE and that there are other relevant meanings for the word, but the Board rebuffed those assertions. The main thrust of applicant's argument, however, concerned whether Swedish is "a common, modern language to U.S. citizens," such that the relevant American purchaser would stop and translate the term HELANDE.

The Board first observed that applicant's attempted limitation "to U.S. citizens" "recasts the relevant consideration in a significant and inaccurate way by suggesting that there must be proof that U.S. citizens view the relevant foreign language as common and modern. But there is no such requirement."

The Board saw "ample evidence" that Swedish "is a modern language of a principal nation of the world, namely, Sweden." The Board pooh-poohed two declarations submitted by applicant purporting to show that Swedish does not qualify as a common, modern language. That left the question of whether and "appreciable number" of American purchasers are capable of translating the Swedish term HELANDE.

Applicant and the Examining attorney appeared to agree that, according to U.S. Census data, there were slightly more than 76,000 Swedish speakers in the United States as of 2022, amounting to approximately .02% of the U.S. population. The Board observed, however, that in Vetements, the CAFC "rejected the idea that the 'appreciable number' determination should be decided on the basis of a mere 'headcount' of those American purchasers who understand the foreign language at issue."

The Board acknowledged that "the relative share of Swedish speakers in the U.S. is very small," but it found that "an appreciable number of American purchasers are capable of translating HELANDE."

[E]ven very small populations of speakers of a common and modern foreign language can give rise to an appreciable number of American purchasers who are capable of translating a term in the relevant language. *** And the Board has previously applied the doctrine of foreign equivalents to common, modern languages with relatively small U.S. populations of speakers. [e.g., Greek (304,000) and Japanese] (hundreds of thousands)].

Next, the Board found that "a purchaser with ordinary sensibilities would translate the word HELANDE because it is relevant in the context of medicated and non-medicated skin care preparations, which the evidence shows are commonly marketed for use in healing the skin." Moreover, there was no evidence that translation of HELANDE to "healing" would require an advanced Swedish vocabulary.

Thus, because the record fails to establish any meaning of HELANDE other than “healing” in the context of Applicant’s goods, that is undoubtedly how the term would be recognized and understood by the Swedish-speaking American public.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Note that, in the ARBATA tea case [TTABlogged here], the Board reversed a mere descriptiveness refusal because the panel majority found that Lithuanian (40,000 speakers), although a modern language, was not "common" in the USA for purposes of the doctrine of foreign equivalents.

Text Copyright John L. Welch 2026.

TTABlog Test: Is MICHAEL THE BULL Confusable with THE BULL ATTORNEYS! for Legal Services?

The USPTO refused to register the marks MICHAELTHEBULL.COM, MICHAEL “THE BULL” LAMONSOFF and MICHAEL THE BULL, in view of ten registered marks - CALL IN THE BULL, ABOGADO EL TORO, WE’RE THE BULL ATTORNEYS HIRE THE BIG GUNS, and THE BULL ATTORNEYS!, and six logo marks, including the two shown below - all for legal services. As the Board observed, "[s]ome attorneys are known for slinging the bull. These three appeals involve an attorney who wants to be known for being the bull." "Standing in his way is not a matador with a red cape, but rather another attorney," who owns a "bull pen" of registrations. Take a guess as to how these three appeals came out. In re Law Offices of Michael S. Lamonsoff, PLLC, Serial Nos. 98316445, 98317034, and 98317055 (February 11, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

Since five of the marks include the Spanish word "toro," the Board considered whether the doctrine of foreign equivalents is applicable. Noting that, "[l]ike many Spanish words, the word 'toro' appears to be a 'loan word' that has become part of the American English vernacular," and taking judicial notice that the Merriam-Webster Dictionary defines "toro" as "bull," the Board concluded that the doctrine applies because "it is likely that ordinary purchaser of legal services would understand at least that the words 'toro' and 'toros' in those marks mean 'bull' and 'bulls.'"

TTABlogger comment: If "toro" is part of the American English vernacular, why is it necessary to apply the doctrine? Why would a consumer have to "stop and translate" the term? Just last week in the FLAT EARTH SURF CLUB case [TTABlogged here], a different Board panel found that consumers would not "stop and translate" the Portuguese word "terra" because it appears in English language dictionaries. Let's face it, the doctrine of foreign equivalents is a mess.

The Board devoted 15 pages to its discussion of the first DuPont factor, the similarity or dissimilarity of the marks, setting out in some detail the arguments of the applicant and those of the examining attorney. It deemed the word "MICHAEL" to be the dominant elements in the applicant's first and third marks, while "MICHAEL LAMONSOFF" dominates the second mark. It then found that all three marks differ from the ten cited marks "in all means of comparison."

The Board concluded that, although the identify of the services strongly supports affirmance of the refusal, the differences in the marks weighs heavily against affirmance, and it reversed the refusals to register.

Read comments and post your comment here.

TTABlogger comment: How did you do? I think I might have found MICHAEL THE BULL and CALL IN THE BULL confusingly similar.

Text Copyright John L. Welch 2026.

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

For the past decade, about 90% of Section 2(d) refusals have been affirmed on appeal. A TTAB Judge (now retired) 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. Let's see how you do. [Answer in first comment].

In re Bump Health, Inc., Serial No. 98294493 (February 4, 2026) [not precedential] (Opinion by Judge Angela Lykos). [Section 2(d) refusal of the mark AINS & LJ for “Wall sticker murals; Wall stickers; Children’s wall stickers” in International Class 16 and "furniture" in International class 20, in view of the registered mark LJ for “furniture” in International Class 20 and “Wallpaper, non-textile wall coverings, namely, wall coverings made of paper, grass cloth, vinyl, polymers or fabric” in International Class 27.]

Sumitomo Rubber Industries, Ltd., Serial No. 97684418 (February 6, 2026) (Opinion by Judge Jennifer L. Elgin) [Section 2(d) refusal to register the mark HB SOFT, in standard characters, for "Golf club heads; Golf clubs; Golf putters" in view of the registered mark HB & Design (shown below) for "golf balls."]

In re Rene Sebastian Friessen Froese, Serial No. 98217661 (February 10, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of the mark FORTEX MFG, in standard characters [MFG” disclaimed], for “Custom manufacture of vehicles, vehicle parts, and metallic structures in the nature of power trains, dollies, and storage containers” and “Engineering of vehicles, vehicle parts, and metallic structures in the nature of power trains, dollies, and storage containers; Industrial design of vehicles, vehicle arts, and metallic structures in the nature of power trains, dollies, and storage containers," in view of the registered mark FORTEC, in standard characters, for “Automobile customization, modification, and accessory installation services."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

TTABlog Test: Are Industrial Heat Exchangers Related to Vacuum Cleaners Under Section 2(d)?

The USPTO refused to register the mark SPINFLOW & Design for "heat exchangers, other than parts of machines, for industrial use," finding confusion likely with the registered mark SPINFLOW (standard characters) for "vacuum cleaners, robotic vacuum cleaners and parts thereof; robotic appliances for household purposes and maintenance and parts thereof, namely, robotic vacuum cleaners and parts thereof." The Board found the marks to be "very similar," but what about the goods? In re Zhenhai Petrochemical Jianan Engineering Co., Ltd., Serial No. 79381020 (February 5, 2026) [not precedential] (Opinion by Judge David K. Heasley).

Applicant Zhenhai stumbled out of the gate by devoting its main brief to an argument that its mark was not merely descriptive under 15 U.S.C. § 1052(e)(1). However, the issue was likelihood of confusion, not mere descriptiveness. The examining attorney's brief did discuss the DuPont factors, and Zhenhai's reply brief addressed the Examining Attorney’s Section 2(d) arguments. The Board, noting that a non-conforming will not cause dismissal of an appeal, exercised its discretion to consider Zhenhai's reply brief, along with its responses to the Office Actions.

Since the involved goods are not identical on the face of the identifications of goods, and since the goods are not complementary, the examining attorney relied on seven third-party websites purporting to offer both kinds of goods (including Home Depot and Lowe's). Zhenhai argued that “mere retailer overlap does not establish relatedness; probative evidence would include examples of a single entity offering both goods under a single mark. None exists here.” The Board agreed with Zhenhai.

This third-party evidence does not show manufacturers, producers or dealers selling the items under their own marks, but large retailers primarily selling others’ goods bearing the manufacturers’ and producers’ trademarks. Not one third-party use example shows heat exchangers and vacuums bearing the same trademark. Naterra, 92 F.4th at 1117. None of this third-party evidence shows how consumers would be educated to perceive the respective goods as emanating from a common source.

The Board cited several analogous cases involving large brick-and-mortar retailers. “The evidence provided … is not sufficient to show that consumers would believe that the same company that sells [vacuum cleaners] would also sell [industrial heat exchangers], even when they see the goods offered in the same store.” North Face Apparel Corp. v. Sanyang Indus. Co., No. 77375588, 2015 WL 6467820, *16 (TTAB 2015).

As to trade channels, the third-party evidence indicated that vacuum cleaners and heat exchangers "are available through a very broad channel of trade, in the sense of being offered by large distributors and retailers." However, vacuum cleaners and heat exchangers are offered under different categories online, and would presumably be displayed in different aisles of brick-and-mortar stores, since they serve distinctly different purposes. The Board concluded that the goods are offered in overlapping broad channels of trade, but "would not tend to be displayed in proximity to one another."

As to classes of consumers, the Board observed that, "given the disparity in the goods, we cannot presume that their classes of purchasers would be the same." "The purchasers responsible for buying Registrant’s vacuum cleaners would not be expected to exercise as great a degree of care, but as noted, there is no reason to presume that they would be involved in purchasing Applicant’s products."

Given the inherent technical nature of Zhenhai’s goods and each purchaser’s need to conform those goods to its own industrial needs, the purchasing process would be “so attenuated and lengthy … that there is time for all involved to understand clearly and completely the vendors with whom they are dealing."

The Board concluded that the goods are "so different in kind that purchasers are unlikely to believe they emanate from a single source. The third-party use evidence does nothing to bridge this gap, and in fact widens it, as it shows vacuums and heat exchangers offered under different brands."

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHRR? Would you have refused registration?

Text Copyright John L. Welch 2026.

TTABlog Test: Is FLAT EARTH SURF CLUB Confusable with TERRA PLANA for Clothing?

The USPTO refused to register the mark FLAT EARTH SURF CLUB, in standard character form, for “hats; shirts” [SURF disclaimed], concluding that confusion is likely with the registered mark TERRA PLANA for "“footwear, namely, boots, shoes, sandals and slipper." The Board unsurprisingly found the goods to be related, but what about the marks? Would consumers stop and translate "terra plana" (Portuguese) to "flat earth"? In re Dean Severson, Serial No. 98118905 (February 6, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The Examining Attorney argued that the dominant part of Applicant’s mark, FLAT EARTH, is the foreign equivalent of the Cited Mark TERRA PLANA, contending that "terra plana" means "flat earth' in Portuguese, a common modern language. Applicant Severson maintained that the doctrine of foreign equivalents does not apply in this case. The Board agreed with Severson, concluding that the ordinary American purchaser would not translate the cited mark.

First, American consumers, even non-Portuguese speakers, would be familiar with the word “terra,” which appears in English language dictionaries. These dictionaries show that “terra” has meaning in English both as a standalone word and as part of phrases like “terra cotta” and “terra firma.” This supports a finding that consumers would take the phrase “terra plana” as it is and not stop and translate it. *** Second, contrary to the Examining Attorney’s contention, the evidence does not show that the translation of TERRA PLANA in Portuguese to FLAT EARTH in English is direct and literal. [The Office's evidence showed "terra plana" as being translated as "flat earth" and "flat land."]

Comparing the marks, the Board observed that they have different connotations and commercial impressions (noting the incongruity and nonsensical connotation of applicant's mark) and "are not at all similar in appearance or sound because they do not share any of the same words or any words that have similar letters or sounds."

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: In the DANKE/MERCI case, the Board applied the doctrine of equivalents, even though the two words are found in English dictionaries. Arguably, consumers would not translate the two recognized terms, but take them "as is."

Text Copyright John L. Welch 2026.

BARBEE for Social Networking App Not Confusable with, nor Dilutive of, Famous BARBIE mark for Dolls, Says TTAB

In a 70-page opinion, the Board dismissed this opposition to registration of the mark BARBEE, in the logo form shown below, for "Online social networking services accessible by means of downloadable mobile applications." The Board concluded that the mark is neither likely to cause confusion with, nor likely to dilute, Mattel's mark BARBIE, registered for, inter alia, dolls, doll accessories, and online entertainment services. Although the Board deemed the BARBIE mark to be famous for dolls, it found the involved goods and services to be unrelated and the marks dissimilar. This blog post will attempt to hit the highlights. Mattel, Inc. v. BarBee Inc., Opposition No. 91281982 (February 6, 2026) [not precedential] (Opinion by Judge Martha B. Allard).

Opposer Mattel got off on the wrong foot when the Board denied its motion to amend the notice of opposition to include a claim of lack of bona fide intent. The Board ruled that the issue was not tried by implied consent, noting Applicant Barbee's objections to evidence on that issue and finding that Barbee was not "was fairly apprised that the evidence was being offered in support of the unpleaded issue."

Likelihood of Confusion: Barbee failed to provide any probative evidence diminishing the conceptual strength of the BARBIE mark. As to commercial strength, the Board found that "for purposes of the likelihood of confusion analysis, the BARBIE mark is very commercially strong (indeed 'famous' for purposes of likelihood of confusion) for 'dolls,' 'clothing for dolls,' and 'doll houses.'"

With respect to relatedness, Mattel "simply does not point to (nor did we locate) any evidence in the record that might establish relatedness, such as evidence of third-party uses or registrations of Applicant’s identified services and Opposer’s identified goods and services under the same mark. On this record, Opposer has not met its burden of proof and has failed to establish that the parties’ goods and services are related." Nor did Mattel establish that the channels of trade overlap.

Even assuming that the parties’ goods and services are both offered on, for example, Facebook and Instagram, Applicant likens these platforms to departments stores and supermarkets, arguing that advertising on these platforms alone is not enough to establish that the channels of trade overlap. We agree and consider this far too general of an overlap to have any meaningful impact on the likelihood of confusion.

As to the marks, "consumers who encounter Applicant’s mark would readily recognize its dominant element to consist of the terms, 'bar' and 'bee.'" The Board found that the marks "are not sufficiently similar to weigh in favor of a likelihood of confusion."

We agree with Applicant that its mark conveys a different meaning when the compound word BARBEE is considered as a whole, i.e., in combination with the logo consisting of a bee inside a martini glass, i.e., that of a worker bee at a bar. The record shows that BARBIE, on the other hand, is a nickname for the doll, whose full name is Barbara Millicent Roberts, and, as a result, it conveys the impression of a doll named BARBIE.

Balancing the relevant DuPont factors, the Board concluded that confusion is not likely.

Dilution by Blurring: The Board found the mark BARBIE to be famous, for dilution purposes, in connection with dolls. "The duration, extent, and geographic reach of the advertising and publicity of Opposer’s BARBIE mark is exceptional . . . and has resulted in the BARBIE mark remaining in the eye of the general public for decades." However, "Applicant’s BARBEE and Design mark is dissimilar from Opposer’s BARBIE mark in appearance, meaning and commercial impression such that the former does not readily conjure up the latter." Furthermore, there was no evidence that Applicant intended to create an association with Mattel's BARBIE mark.

And so, Mattel failed to prove dilution by blurring.

Dilution by Tarnishment: "Inasmuch as we have determined that the marks are dissimilar, Opposer has not established that its mark will suffer any negative association by Applicant’s mark. In view of the foregoing, Opposer has failed to prove its claim of dilution by tarnishment under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c), by a preponderance of the evidence."

Read comments and post your comment here.

TTABlogger comment: I think it's fair to say that "BARBIE" is a household word. But fame only gets one so far. The marks still have to be “sufficiently similar” while applying "the same test as for determining the similarity or dissimilarity of the marks in the likelihood of confusion analysis,” so that the required association exits. See, for example Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011) [TTABlogged here].

Text Copyright John L. Welch 2026.

Finding the Issue of Lack of Bona Fide Intent Tried by Implied Consent, TTAB Sustains Opposition to FIREBURN 1878 for Alcoholic Beverages

The Board sustained this opposition to registration of the mark FIREBURN 1878, in standard character and logo form, for "alcoholic beverages, except beer; liquor." concluding that Applicant Wadada Spirits lacked a bona fide intent to use the marks when it filed the opposed applications. Opposer Sazerac, owner of the mark FIREBALL for the same goods, did not include a claim of lack of bona fide intent in its notice of opposition, but the Board found that the issue had been tried by implied consent. Sazerac Brands, LLC v. Wadada Spirits, LLC, Opposition No. 91283727 (February 4, 2026) [not precedential] (Opinion by Judge Jessica B. Bradley).

Implied Consent: Wadada did not file a brief or submit any evidence, so it never expressly consented to trial of the bona fide intent claim. So, the first question was whether the issue was tried "by implied consent under Fed. R. Civ. P. 15(b), made applicable to Board proceedings by Trademark Rule 2.116(a)." "The Board may find implied consent to the trial of an unpleaded issue “only where the non-offering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue."

Sazerac served numerous discovery requests regarding Wadada’s intent to use its marks. In its responses, Wadada did not object to these discovery requests, nor did it object to Sazerac's notice of reliance citing Wadada's responses. And Sazerac listed in its brief, without objection, lack of bona fide intent as one of the issues in this proceeding. "Accordingly, Opposer’s claim of Applicant’s lack of bona fide intent to use was tried by implied consent and 'the pleadings are deemed amended under Fed. R. Civ. P. 15(b)' to include this claim."

Lack of Bona Fide Intent: A party may demonstrate that an applicant lacks the requisite bona fide intent to use by showing that the applicant lacked documentary evidence regarding its intent. Boston Red Sox Baseball Club Ltd. P’ship v. Sherman, No. 91172268, 2008 TTAB LEXIS 67, at *16 (TTAB 2008). In its responses, Wadada stated that it was “not aware of any responsive documents” regarding its strategy for promoting and selling its goods, steps taken to manufacture the goods, licenses or regulatory approvals, distribution agreements, price of the goods, target customers, market research, or media promotion.

Wadada pointed to the prosecution histories of the opposed applications as evidence of its intent. The Board, as usual, rejected this contention: "the mere act of filing intent-to-use applications is insufficient to establish Applicant’s bona fide intention to use its FIREBURN 1878 Marks in commerce for the identified goods."

In its interrogatory answers, Wadada stated that it had no information regarding its intended first use dates, its sales strategy, steps taken to sell the goods, regulatory approvals, channels of trade, price, promotional channels, or target consumers.

The Board concluded that Sazerac had made a prima facie case of lack of bona fide intent, which Wadada failed to rebut. And so, the Board sustained the opposition on that basis, declining to reach Sazerac's likelihood of confusion claim.

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TTABlogger comment: This decision reminded me of the Bears' 46-10 win over the Patriots in the 1986 Super Bowl, only worse. BTW: the orange and blue color scheme of the TTABlog is borrowed from the colors of the University of Illinois. George Halas, and Illinois alum, took those colors for his Chicago Bears.

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