TTAB Sustains Mere Descriptiveness Opposition to REALITY ENGINE for Computer Software Design But Dismisses Lack of Bona Fide Intent Claim

The Board rendered a split decision in this opposition to registration of REALITY ENGINE for, inter alia, computer software design, computer programming, computer system design, and updating and rental of computer software [ENGINE disclaimed], finding the mark to be merely descriptive of the services under Section 2(e)(1). However, Opposer Novel's lack-of-bona-fide-intent claim bit the dust. Novel Brands USA LLC v. Zerodensity Yazilim Anonim Sirketi, Opposition No. 91254798 (July 27, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

Lack of Bona Fide Intent: Opposer Novel bore the burden of proof to demonstrate by a preponderance of the evidence that Applicant lacked a bona fide intent to use the mark at the time it filed its Section 66(a) request for extension of protection in September 2018. Novel argued that applicant failed to introduce any objective evidence that it intended to use the REALITY ENGINE mark for the identified services at the time that it filed the Application.

Applicant’s witness testified that applicant (a Turkish company) currently provides "complementary engineering, design, consultancy, software development, training, rental, and production services," and that applicant is "comprised of skilled video production and computer professionals" experienced in the relevant fields. He also testified that The Weather Channel (TWC) has been a customer "using the Reality Engine system in their daily shows" since 2019. And as early as "April 4, 2016, ZD formed Zero Density Inc., (ZDI) in the United States "as a distributor and authorized entity to enter into contracts with third party resellers for licensing the Reality Engine broadcast compositing system."

Taken together, these uncontroverted averments indicate that Applicant had the demonstrated capacity or experience to provide the Remaining Services at the time the application was filed. *** Accordingly, we find Opposer has not met its burden of demonstrating that Applicant lacked a bona fide intent to use its mark in commerce in connection with respect to the Remaining Services.

Mere Descriptiveness: Based on Opposer Novel's evidence (dictionary definitions, applicant's website and advertising, media articles), the Board found that "Applicant’s mark REALITY ENGINE describes a type of computer software that 'performs a fundamental function of a larger program' in connection with augmented reality or virtual reality applications."

While we are keenly aware that the involved application does not list goods, such as this type of software, the services listed in the application do include “computer software design … computer programming … computer system design … [and] updating and rental of computer software.” And these services are broad enough to include the use or design or involve augmented reality or virtual reality engine software as a primary feature or purpose of those services. In which case, REALITY ENGINE mark immediately conveys information about these services to those who know what they are.

Applicant contended that, upon hearing the mark as a whole, a multi-step thought process is necessary before a consumer realizes the descriptive significance of the mark. The Board disagreed.

Because the terms REALITY and ENGINE are merely descriptive of features or purposes of Applicant’s services, and these individual terms do not lose their descriptive significance when combined, consumers aware of Applicant’s services will immediately understand the mark REALITY ENGINE to convey information about the services.

The Board found that consumers encountering the mark REALITY ENGINE in connection with “computer software design … computer programming … computer system design … [and] updating and rental of computer software" services "will quickly understand that the mark imparts information about these services in that they involve the design, use or rental of virtual or augmented reality engine software."

And so, the Board sustained the mere descriptiveness claim.

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TTABlogger comment: Applicant accepted judgment as to some of its services, conceding that it had no evidence to prove an intent-to-use as to those items. However, under Wet Seal, that did not render the entire application void ab initio.

Text Copyright John L. Welch 2026.

KUL STOOL for Portable Coolers Confusable with KÜHL for Water Bottles, Says TTAB

The Board sustained an opposition to registration of the mark KUL STOOL and Design for "Portable coolers, non-electric" [COOL STOOL disclaimed], concluding the confusion is likely with the registered mark KÜHL for "Water bottles sold empty; Empty water bottles for bicycles; Plastic water bottles sold empty; Reusable plastic water bottles sold empty." The Board found that the marks to be similar and that the goods closely related and marketed through overlapping channels of trade to overlapping classes of consumers. None of the DuPont factors favored the applicant. Alfwear, Inc. v. Kul Products LLC, Opposition No. 91290865 [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Marks: Opposer's registration states that KÜHL translates to "cool" in English. The opposed application states that "KUL" also translates to "cool" in English. The Board not surprisingly found KUL to be the dominant element of applicant's mark since it is the first word in the literal portion of the mark.

Applicant argued that the umlaut over the “U” in KÜHL creates a visual and aural difference. The Board agreed that it creates a minor visual difference, but as to the sound of the mark, the Board noted that "there is no correct pronunciation of a trademark, and [a]bsent evidence in the record indicating that U.S. consumers pronounce KÜHL differently than they would pronounce KUL, we are not persuaded that these words sound different from one another."

The word STOOL in applicant's mark is generic or highly descriptive, since one of the functions of applicant's product, besides being a cooler, is to provide "a sturdy stool for seating."

The Board acknowledged the "minor" differences in the marks, but found the marks, overall, to be similar.

The Goods: Opposer submitted evidence that more than two dozen entities offer both applicant's and opposer's goods. "This amply shows substantial consumer exposure to nonelectric coolers and water bottles coming from the same source." Applicant feebly argued that the involved goods are different and can be told apart, and furthermore that its product doubles as a seat. Irrelevant, said the Board.

Based on the plentiful third-party use evidence, we find that the respective goods in the application and the goods in Registration No. 5931177 are closely related. In our final weighing of the relevant factors, this factor will count in favor of a conclusion that confusion is likely.

Trade Channels/Consumers: Opposer pointed to evidence that several online retail outlets offer both nonelectric portable coolers and water bottles. Furthermore, several third-parties offer their own-branded coolers and water bottles on their own websites. The Board found that the involved goods are offered in overlapping trade channels to overlapping classes of customers.

Purchaser Care: There were no limitations as to price in the registration or challenged application. The Board noted that some water bottles sell for more that some coolers. On the other hand, there was no evidence that these products are the type of goods generally subject to impulse-purchasing. The Board found this factor to be neutral.

Strength of Opposer's Mark: Due to lack of pertinent evidence from opposer, the Board found the fifth DuPont factor to be neutral. As to the sixth factor, applicant argued that there are numerous ‘COOL/KOOL/KUL’ marks on coolers/water bottles/clothing, but it provided no evidence in support.

The Board briefly discussed the eighth (lack of evidence of actual confusion), ninth (the variety of goods on which a senior user’s mark is used), tenth (the market interface between the parties), and eleventh (the extent to which applicant has a right to exclude others from use of its mark on its goods) DuPont factors and found them all to be neutral. As to the twelfth factor (the extent of potential confusion, i.e., whether de minimis or substantial), it found that "[w]here, as here, both parties’ products 'are the type of goods that would be marketed to and purchased by significant numbers of purchasers,' this factor will count a bit in favor of a conclusion that confusion is likely."

Conclusion: All of the non-neutral factors favored Opposer, and so the Board concluded that confusion is likely and it sustained the opposition.

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TTABlogger comment: Judge Casagrande's discussion of the import/purpose of several of the DuPont factors is worth reading.

Text Copyright John L. Welch 2026.

TTABlog Test: Is MUSEUM OF NAMES Merely Descriptive of Entertainment and Educational Services in the Field of Names?

The USPTO refused to register the mark MUSEUM OF NAMES (in standard character form), deeming it to be merely descriptive of "entertainment and educational services, namely, the presentation of seminars, workshops and panel discussions, and ongoing television and radio shows all in the field of names" [MUSEUM disclaimed]. So far this year, the Board has affirmed all 11 Section 2(e)(1) mere descriptiveness refusals that have been appealed. How do you think this one came out?  In re Taymitch & Associates, Serial No. 99033907 (July 27, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Examining Attorney provided dictionary definitions of “museum” (an institution devoted to the procurement, care, study, and display of objects of lasting interest or value or a place where objects are exhibited), “of” (relating to: about), and “name” (a word or combination of words by which a person, place or thing, a body or class or any object of thought is designated, called, or known), an entry from Encyclopaedia Britannica related to “virtual museum” ([A] collection of digitally recorded images, sound files, text documents, and other data of historical, scientific, or cultural interest that are accessed through electronic media), and webpages from physical museums that offer virtual access to their collections.

The Examining Attorney contended that the proposed mark describes the provider of the services, whether physical or virtual.

Applicant Taymitch argued that the Examining Attorney’s evidence was insufficient since its services do not involve collections or access to collections in virtual form and "[n]othing in the identified services involves collections, study, display, or museum operation." [See Applicant's website here]. The Board agreed with Taymitch.

Applicant’s recited services are not identified as museum services, virtual museum services, museum-based educational or entertainment programming, or retail gift shop services provided in or by a museum. The record also contains no evidence that Applicant’s identified services involve the study or display of collections, otherwise constitute a museum-like institution, or are virtual museum services.

The Board observed that, although a proposed mark is considered merely descriptive if it describes the source of the services (see, e.g., Omaha Nat’l Bank, 819 F.2d at 1119; Major League Umpires, 2001 TTAB LEXIS 515, at *5; see generally TMEP § 1209.03(q) (listing cases)), there was no evidence that Applicant Taymitch is a museum.

And so, the Board reversed the refusal.

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TTABlogger comment: Compare this decision with yesterdays' decision deeming NATRUAL BRIDGE CAVERNS to be merely descriptive even though the recited services were not identified as involving cave systems or cave. Is the mark MUSEUM OF NAMES misdescriptive? PS: What is the "field of names"?

Text Copyright John L. Welch 2026.

TTABlog Test: Is NATURAL BRIDGE CAVERNS Merely Descriptive of Theme Park-Related Services?

The USPTO refused to register NATURAL BRIDGE CAVERNS as a service mark for cabin rentals, provision of parking spaces, theme park services, and provision of campground facilities (in four classes), on the ground of mere descriptiveness under Section 2(e)(1). Applicant argued that the mark cannot be merely descriptive of the identified services because it is not seeking to register the proposed mark for cave systems or cave tours. How do you think this appeal came out? In re Natural Bridge Caverns, Inc., Serial Nos. 97438479, 97438507, 97546721 & 97546743 (July 24, 2026) [not precedential] (Opinion by Judge Robert Lavache).

Examining Attorney Danielle Anderson submitted dictionary definitions of NATURAL BRIDGE (“a rock formation in which the central bottom part has been completely eroded away, leaving a structure that looks like a bridge”) and CAVERN ("cave"), as well as excerpts from third-party websites using the term "natural bridge" to refer to a type of natural rock formation, and other websites using "cave" interchangeably with "cavern."

The Board found that the combination NATURAL BRIDGE CAVERNS "connotes a cave system featuring a naturally occurring rock formation with a bridge-like structure." But, the Board asked, what is the relevant consumers’ understanding of the term as used in connection with Applicant’s services?

The Examining Attorney asserted that NATURAL BRIDGE CAVERNS is merely descriptive of these services because the phrase describes a key aspect or characteristic of them, namely, that they are provided in connection with an attraction consisting of a cave system featuring a naturally occurring bridge-like rock formation. The Board agreed.

In view of the evidence of record, we agree with the Examining Attorney that “a consumer knowing that applicant’s services are being offered for the purposes of viewing a cavern with a natural bridge will immediately understand the wording NATURAL BRIDGE CAVERNS as conveying information about the services, namely that applicant’s rental cabins[,] [parking facilities, temporary accommodations, campgrounds, social function facilities, and theme-park special event services] are for the purpose of accessing” a cave system featuring a naturally occurring bridge-like rock formation.

The Board rejected applicant's assertion that it was applying a "per se" rule that would find the mark descriptive of any goods or services offered at or near a natural cavern: e.g., snack foods. Not so, said the Board.

In this case, our determination does not rest on such a per se rule, but on the specific relationship between the proposed mark and the particular services identified in each application, as established by this record. *** The third-party evidence of record likewise shows that accommodations, campgrounds, parking facilities, event facilities, and similar services are routinely offered specifically to provide access or proximity to cavern and natural-bridge attractions. This record thus establishes a direct nexus between the proposed mark and a feature, characteristic, or fundamental purpose of these services—not a categorical rule that everything offered on Applicant’s premises is descriptive

With respect to the argument that applicant's recitations of services do not include cave systems or tours, the Board pointed out that the wording of the proposed mark need not actually appear in the identification of services. It is sufficient that the proposed mark merely describes a feature, characteristic, or purpose of the identified services. "Here, the wording used to identify Applicant’s various services is broad enough to include such services offered in connection with an attraction consisting of a cave system featuring a naturally occurring bridge-like rock formation."

And so, the Board affirmed the refusal to register.

Two significant reasons for not registering merely descriptive marks are: “(1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods [or services]; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.” *** [W]e agree with the Examining Attorney that other entities in the marketplace who offer the same services in connection with an attraction consisting of, or including, a cave system featuring a naturally occurring bridge-like rock formation, should be free to use NATURAL BRIDGE CAVERNS in advertising such services.

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TTABlogger comment: Rock-solid decision?

Text Copyright John L. Welch 2026.

TTABlog Test: Is BRECKIN ANKLES Confusable with BREKENS B & Design for Overlapping Clothing Items?

The USPTO refused to register the mark BRECKIN ANKLES for various clothing items "used in relation to basketball," including tops and bottoms [ANKLES disclaimed], concluding that confusion is likely with the mark shown below, for clothing items, including tops and pants. The Board found the goods to be overlapping, but what about the marks? How do you think this came out? In re Andrew Riess, Serial No. 98436600 (July 23, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Goods: The Board found that the "tops" of the cited registration encompass Applicant Riess's "tops . . . to be used in relation to basketball," and Riess's "bottoms . . . to be used in relation to basketball" quivalent to registrant's "pants." Because the involved goods are identical in-part, the Board presumed that these goods travel in the same trade channels to the same classes of consumers.

The Board therefore found that the second and third DuPont factors "strongly" support a conclusion that confusion is likely.

The Marks: The Board agreed with the Examining Attorney that BREKENS is the dominant portion of the cited mark. It noted that Applicant's mark is in standard character form, and could be displayed in the same font, style, and style as the word BREKENS in the cited mark.

Even assuming such a depiction of the mark BRECKIN ANKLES, however, we find that the dissimilarities of the marks in appearance outweigh their similarities. Although the dominant word BRECKIN in Applicant’s mark may resemble the word BREKENS in the cited mark, the presence of the word ANKLES in Applicant’s mark makes the marks, in their entireties, slightly dissimilar in appearance.

With respect to sound, the Board agreed with the Examining Attorney that the word BRECKIN, standing alone, likely "is not pronounced 'BREAKING'." However, it observed that "[t]here is no correct pronunciation of a trademark that is not a recognizable word. *** BRECKIN, standing alone, is not a 'recognizable word' in the sense that it does not appear in any of the English-language dictionaries in the record other than as a name of Irish origin, but '[a]bsent evidence to the contrary, we must consider all reasonable possibilities' for the pronunciation of BRECKIN as part of Applicant’s mark BRECKIN ANKLES when it is verbalized in its entirety."

On the other hand, the record showed that consumers of clothing items "to be used in relation to basketball" and 'basketball accessories" are likely to be familiar with the phrase "breaking ankles": "[A] point guard in basketball breaks ankles when they are dribbling and cross over a defender, causing them to trip up on their feet and fall over." The OXFORD ENGLISH DICTIONARY defines the "ankle-breaking" in the same way, albeit more formally. And Google search results provide links to videos captioned “NBA - The Art of Breaking Ankles” and “NBA ‘Broken Ankles Moments.”

We find that for consumers of clothing items “to be used in relation to basketball” and “basketball accessories” sold under Applicant’s mark BRECKIN ANKLES, the pronunciation of the mark as a whole as a slang variant of “breaking ankles,” through the dropping of the “g” in the gerund “breaking,” which involves a common practice in colloquial American English speech, is a reasonable possibility.

And so, the Board found BREKENS and BRECKIN ANKLES to be "slightly dissimilar in sound due to the presence in Applicant’s mark of the word ANKLES, which causes the mark as a whole to be likely to be spoken and heard as something akin to “Breakin’ Ankles.'"

Finally, and most importantly, with respect to meaning, the cited mark would likely be understood to be a name, particularly given the presence of the initial “B” in close proximity to BREKENS in the mark, while Applicant’s mark would likely be understood as a slang variant of the phrase “Breaking Ankles” when used in connection with clothing items “to be used in relation to basketball” and “basketball accessories."

And so, the Board found the marks "somewhat dissimilar" in appearance and sound, and "quite dissimilar" in connotation and commercial impression. "The first DuPont factor strongly supports a conclusion that confusion is not likely."

Ruling that the first DuPont factor was dispositive, the Board reversed the refusal.

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TTABlogger comment: Not quite a slam dunk, but maybe a reverse lay-up?

Text Copyright John L. Welch 2026.

TTAB Finds SAAS Services Related to Consulting Services, Rejecting Thor Tech Third-Party Paired Registration Argument

In a lengthy opinion, the Board upheld a refusal to register the mark GREENVIEW for “Software as a service (SAAS) services featuring software for deploying and reviewing reports, dashboards and analytics in a customizable interface that can be white labeled for external use," concluding that confusion is likely with the registered mark shown below, for business consulting services. There was no doubt about the similarity of the marks. Applicant argued that the services are unrelated, but the Boad took a dim view of that contention. Applicant pointed to 18 pairs of third-party registrations for identical or substantially similar marks, where one entity’s registration covers software and the other’s covers business consulting. The Board found that evidence of little probative value. In re Green Leaf Consulting Group, Inc., Serial No. 98620760 (July 21, 2026) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

The Board observed that "[w]here a technology service automates or facilitates the same function that a professional service performs, the two may be found intrinsically related. Examining Attorney Jaime Batt's evidence confirmed that "the same entity commonly provides both business consulting services of the type identified in the cited registration and SaaS analytics platforms of the type identified in Applicant’s application." And the Board noted that applicant itself offers both consulting and SaaS analytics under the mark GREEN LEAF CONSULTING GROUP.

Applicant countered the Examining Attorney’s evidence by submitting eighteen pairs of use-based registrations owned by different entities, for identical or substantially similar marks, where one entity’s registration covered software and the other’s covers business consulting. According to applicant, these paired registrations demonstrate the Office’s repeated recognition that business consulting services on the one hand and software or SaaS on the other are not related for likelihood of confusion purposes. See In re Thor Tech, Inc., No. 85667188, 2015 WL 496133, at *4 (TTAB 2015) (reversing a Section 2(d) refusal based in part on approximately 50 pairs of registrations for similar marks owned by different entities for automobiles versus recreational vehicles). [TTABlogged here]

The Board distinguished Thor Tech on its facts: "the examining attorney there relied on only two third-party registrations, the goods were expensive (respectively ranging between about $8,000-23,000 and $17,000-40,000), and the record did not establish overlapping trade channels." It found applicant's registration evidence of "little weight for several reasons." 

First, three of the registrations had been cancelled. Second, there was no evidence "whether the listed marks are currently in use, whether the public is familiar with them, or whether consumers have formed any expectations based on their coexistence."

Third, there was no evidence as to "whether the paired registrants entered into coexistence agreements, whether their marks actually coexisted in the marketplace without confusion, or whether they operate in a crowded field that has conditioned consumers to distinguish among similar marks."

Fourth, these paired registrations "almost certainly present an incomplete picture of USPTO practice. There is no comparative evidence of how many applications covering the relevant services were refused registration based on similar marks." "Moreover, the fact that these types of services may sometimes emanate from different sources does not negate the affirmative evidence that they may also emanate from a common source."

Fifth, each case must be decided on its own merits, and prior decisions of other examining attorneys carry little evidentiary weight and are not binding on the Board.

The paired registrations demonstrate that the USPTO has sometimes permitted coexistence, but they do not establish that confusion never occurs or that the services are categorically unrelated. The Examining Attorney’s affirmative marketplace evidence, particularly Applicant’s own website, demonstrates that these services do in fact emanate from the same source in the actual marketplace − a showing that paired registrations, without more, cannot overcome.

The Board concluded that the second DuPont factor weighed in favor of likelihood of confusion.

The Board next found that the channels of trade overlap. It then considered the consumers for these services and found that they are the same: namely, business professionals and organizations seeking data analytics, reporting, and advisory solutions. Applicant argued that the consumers are sophisticated and exercise a heightened degree of care, but it submitted no supporting evidence. The Board "must consider the full range of potential purchasers and base our analysis on 'the least sophisticated potential purchasers.'" See Stone Lion Cap. Partners, 746 F.3d at 1325.

However, the Board acknowledged that "even the least sophisticated purchaser of SaaS analytics services or business consulting would likely exercise at least some degree of care beyond a casual impulse purchase. These are not inexpensive consumer goods purchased off a shelf; by their nature, they involve a threshold level of evaluation." It concluded that the fourth DuPont factor slightly weighed against finding a likelihood of confusion.

On balance, the factors favoring a likelihood of confusion − the virtual identity of the marks, the relatedness of the services, and the overlapping trade channels − outweigh the modest counterweight of the fourth factor.

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TTABlogger comment: xxx

Text Copyright John L. Welch 2026.

Law Firm Fails to Win Big in its Opposition to "844-I-WIN-BIG" for Legal Services, TTAB Tosses Out Non-Use and Section 2(d) Claims

Sigal Law sought to register the mark 844-I-WIN-BIG for legal services, but Newton, Udinson, & Hill PLLC opposed, claiming non-use and likelihood of confusion with its common law mark WIN BIG LAW, also for legal services. The Board, however, found that applicant was using its mark as a source indicator as of the filing date of its application, and further found that opposer failed to prove that its alleged mark was distinctive. Newton, Udinson, & Hill PLLC v. Sigal Law Firm, PLLC, Opposition No. 91289155 (July 13, 2026) [not precedential] (Opinion by Judge Mark Lebow).

The Board spent about half of its opinion dealing with various evidentiary and procedural objections, overruling nearly all of them. It found opposer's reply brief was too long, and so it refused to consider the brief.

Likelihood of Confusion: Opposer claimed common law rights dating back to May 2021, but opposer failed to address the issue of whether WIN BIG LAW mark is distinctive "even though Applicant made it an issue." [Emphasis by the Board].

Applicant also made of record approximately 46 third-party registrations for marks containing the words BIG and/or WIN” for legal services “to show the descriptiveness and/or suggestiveness of Opposer’s Mark and its related weakness.” In addition, Opposer itself highlights, in its main brief, that “in a directly related opposition involving the same parties and services, [it] alleges that the phrase ‘WIN BIG’ is merely descriptive or laudatory and so commonly used that it lacks distinctiveness.

Opposer admitted in its pending application for WIN BIG LAW that "the meaning of the phrase is a law practice that 'wins big' on behalf of its clients, and the commercial impression is that the mark describes the service provider." The Board observed that "[t]his is precisely the type of laudatory, outcome-oriented message that has been held merely descriptive in analogous contexts."

The Board found the claimed mark WIN BIG LAW to be merely descriptive. Consequently, opposer was required to prove that the mark had acquired distinctiveness through secondary meaning.

Here, Opposer’s evidence consists primarily of its length of use of the term WIN BIG LAW for around five years, or since May 6, 2021, substantial advertising expenditures, social media activity, and billboards. While this evidence demonstrates commercial promotion of the claimed mark, it consists largely of testimony from an interested party and lacks objective evidence such as consumer surveys or third-party declarations showing that the relevant consumers perceive WIN BIG LAW as identifying Opposer as the source of the services, rather than as a promotional slogan touting successful results.

The Board concluded that, given the highly descriptive nature of the mark WIN BIG LAW, Opposer’s evidence fell short of the "substantial showing" required to establish acquired distinctiveness.

Because Opposer failed to establish that it owns a protectable mark, it failed to prove priority, and so its Section 2(d) claim was dismissed.

Nonuse: In its brief, Opposer argued that applicant’s use did not qualify as bona fide trademark use because (1) applicant’s services are provided only in Michigan, and (2) applicant uses 844-I-WIN-BIG solely as a telephone number and point of contact, rather than as a source identifier for its legal services. The Board was not impressed.

Use of a mark in connection with services that affect interstate commerce satisfies the “use in commerce” requirement of Section 1(a), even if the services themselves are rendered in only one state. * * * Applicant’s website is accessible to potential clients throughout the United States, and its services affect interstate commerce.

As to the question of non-use, the Board offered little discussion: "[t]he evidence shows that Applicant was actively providing personal injury legal services to clients as of the filing date of the application and was displaying 844-I-WIN-BIG on its website in connection with those services and alongside its firm name."

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TTABlogger comment: Opposer, on the last day of its rebuttal period, tried to add a failure-to-function claim, but the Board refused, finding that the claim was not tried by implied consent. 

Text Copyright John L. Welch 2026.

SERVICE WEST is Primarily Geographically Descriptive of Furniture Repair, Maintenance, and Transportation Services, Says TTAB

In a rare Section 2(e)(2) inter partes proceeding, the Board sustained an opposition to registration of the mark SERVICE WEST (in standard character form), finding it to be primarily geographically descriptive of applicant's services of "Installation, maintenance and repair of furniture, architectural walls and portable trade show booths,” in International Class 37, and “Transportation and storage of goods; transportation of furniture, musical instruments, stage scenery, stage props, costumes, sound equipment, stage machinery, industrial equipment, laboratory equipment and computer equipment; furniture moving; warehouse storage” in International Class 39 [SERVICE disclaimed]. Applicant claimed acquired distinctiveness under Section 2(f), but its proofs fell short. Service West, Inc. v. Service West, Inc., Opposition No. 91293505 [not precedential] (Opinion by Judge Mark A. Thurmon).

In determining whether a mark is primarily geographically descriptive under Section 2(e)(2), the Board considers three questions (quoting In re Newbridge Cutlery Co., 776 F.3d 854, 860-61 (Fed. Cir. 2015): 

1. Is the applied-for mark “the name of a place known generally to the public?” 
2. Would relevant consumers make a services/place association, that is would they “believe that the [services] for which the mark is sought to be registered originate in that place?” and, 
3. Do the services originate from “the geographic region named in the mark?” 

As to the first question, the Board found that the word “WEST” as used in SERVICE WEST is primarily geographically descriptive. On its website, applicant states, “Service West is the West Coast leader in commercial furniture installation, warehousing and logistics.” The Board deemed this statement to be "strong evidence that the word 'west,' at least as used in West Coast, is a place generally known to the public. If that were not the case, Applicant would not use such a label, in a geographic manner, on its own website."

Considering the mark as a whole, the Board found that SERVICE WEST "connotes a business providing furniture installation and related services to customers from its 'West Coast' location." "The mark conveys nothing more than the fact that Applicant’s services, or a substantial part of the services, originate from the 'West,' and in particular here, from the West Coast region."

As to the third question, applicant submitted testimony that 70% of its business comes from California, or from its West Coast locations.

Because the West Cost is a location generally known to the public and applicant's services emanate from there, it is presumed that relevant consumers would make an association between the services and the geographic location. "That is exactly what consumers will do upon hearing or seeing the applied-for mark. Consumers will understand, indeed will be told by Applicant, that furniture-related services may be obtained from this West Coast business. The services/location association is established by the record."

All three prongs of the Section 2(e)(2) test having been satisfied, the Board found that SERVICE WEST is primarily geographically descriptive of applicant's services.

Turning to the Section 2(f) claim, applicant submitted "very little evidence *** perhaps believing that showing a long period of use is sufficient evidence to show distinctiveness." Applicant provided testimony that it has used the SERVICE WEST mark for more than forty years, but the record "raises as many questions as it answers about Applicant’s use through the years."

Applicant relied on a single witness who was employed by applicant since 2019. However, there was no explanation "for how the witness would know what happened years before he joined Applicant’s business."

We find this witness’ testimony as to events before 2019 lacks a proper foundation and cannot be relied upon to prove whether consumers understood the Service West name as a service mark. It is equally plausible that consumers understand Service West as a tradename and not as a distinctive service mark.

In sum, applicant's evidence fell short of supporting its Section 2(f) claim. And so, the Board sustained the opposition.

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TTABlogger comment: Opposer also claimed genericness but submitted no probative evidence on that claim. The Board declined to reach opposer's mere descriptiveness claim.

Text Copyright John L. Welch 2026.

TTAB Affirms Reexamination Decision Cancelling DISCUSS.IO Registration: Mere Offering of Services is not Use of the Mark

The Board upheld a reexamination decision cancelling a registration for the mark DISCUSS.IO for streaming services and SAAS market research services, on the ground that the registrant had failed to use the mark prior to the filing date of its underlying use-based application. The Board tossed aside registrant's claim that it was "unclear" that rendering of the services was required, rather than mere offering of the services, to constitute use of the mark. In re Discuss.io Inc., Reexamination No. 2023-100526R for Registration No. 6729238 (July 17, 2026) [not precedential] (Opinion by Judge Christen M. English).

Not only did Examining Attorney Renee Servance put the registrant on notice that evidence of the rendering of the services was required to show use, but Section 45 of the Trademark Act sets forth two requirements for establishing that a service mark is in use in commerce: (1) the mark must be used or displayed in the sale or advertising of services; and (2) the services must be rendered in commerce. See Coutoure v. Playdom, Inc., 779 F.3d 1379, 1381 (Fed. Cir. 2015).

And so, the issue on appeal was whether registrant was rendering the services – not just promoting them – as of the use-based application date.

Registrant submitted promotional materials, consumer reference guides, several articles, and a Wayback Machine screenshot dated March 16, 2016 (more than five years before the application filing date of May 12, 2021). As to the first two, they plainly did not demonstrate use of the mark in the rendering of the services.

Turning to the articles, even if the statements therein were true, this evidence was "at best, indirect evidence requiring us to infer that Registrant was rendering its services as of the Application Date." The Board observed that this type of indirect evidence "is insufficient to overcome the Director’s finding of a prima facie case of nonuse."

Finally, the Wayback Machine screenshot, even if accepted as accurate, was "not reasonably contemporaneous with the filing date of the application."

It is notable that Registrant did not introduce any direct evidence consisting of a declaration from someone with firsthand knowledge attesting to when Registrant began rendering its services and other pertinent information such as its number of customers or user agreements.

The Board concluded that Registrant’s evidence failed to demonstrate use of the mark in commerce as of the application filing date, and so it affirmed the reexamination decision. "Registrant’s Registration No. 6729238 for the Registered Mark DISCUSS.IO will be cancelled in its entirety in due course under Section 16B(g) of the Trademark Act, 15 U.S.C. § 1066b(g)."

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TTABlogger comment: One might say that registrant's evidence was "use-less."

Text Copyright John L. Welch 2026.

On Remand, TTAB Dismisses ASPIRE BANK Opposition After Re-Assessing First and Sixth DuPont Factors

On remand from the CAFC, the Board dismissed this opposition to registration of ASPIRE BANK & Design (in three similar forms) for "banking and financing services" (BANK disclaimed), concluding that confusion is unlikely with the registered mark ASPIRE for "credit card services." In May 2023, the Board had sustained the opposition [pdf here], but in September 2025 the CAFC vacated and remanded the case for further consideration of the Board's findings regarding the first (similarity of the marks) and the sixth (third-party marks) DuPont factors. [TTABlogged here]. CC Serve Corporation v. Apex Bank, Opposition No. 91254295 (July 17, 2026) [not precedential] (Opinion by Judge Christen M. English).

As to the sixth factor, the CAFC ordered reconsideration of "the appropriate scope of third-party marks eligible for consideration in view of the Board’s factual finding that the parties’ services are highly similar.” As to reconsideration of the first DuPont factor, the court explained that “[b]ecause commercial impression informs the analysis under the first DuPont factor … reconsideration of the sixth DuPont factor may result in a different determination of the mark’s commercial strength or weakness and affect the overall commercial impression.”

The Board had concluded that because "the parties’ services are legally identical to the extent Applicant’s ‘banking and financing services’ encompass Opposer’s ‘credit card services,’ … for purposes of the sixth DuPont factor, the properly defined relevant public are consumers of ‘credit card services.'" The Court held that this “analysis was legally flawed.” According to the CAFC:

The sixth DuPont factor requires the Board to consider similar marks for similar goods and services. In the Board’s analysis of the second DuPont factor, the Board determined that the parties’ services are highly similar, which led the Board to conclude that the second factor weighed heavily in favor of finding likelihood of confusion. When analyzing the sixth Dupont factor, however, the Board restricted the universe of marks it considered to only those relating to credit card services and excluded marks related to other banking and financing services. That was an error.

The appellate court explained that “[w]hen the Board has already made a factual finding that the services are highly similar – in fact, partially legally identical—in its analysis of the second DuPont factor, the Board should retain the same scope in its consideration of similarity under the other factors."

And so, the Board reviewed some 30 third-party marks in use for credit card services, banking services, and financing services, as well as registrations for some of those marks [including, e.g., THE ASPIRE CARD, ASPIRE CHECKING, and ASPIRE FINANCIAL COUNSELING]. Opposer argued that there was no evidence regarding the scope of the third-party use or advertising, but the Board pointed out that "even where the record does not include particulars about the extent of third-party uses in the marketplace, evidence of widespread third-party use may be powerful on its face to demonstrate 'that consumers have been educated to distinguish between different marks on the bases of minute distinctions.'" [See Juice Generation and Jack Wolfskin].

In sum, the Board found that, under the sixth DuPont factor, Opposer’s ASPIRE mark "is commercially and conceptually quite weak as the evidence shows it is common for third parties to adopt and use marks comprised of the first term ASPIRE coupled with a generic word, e.g. ASPIRE CHECKING, ASPIRE SAVINGS, ASPIRE LENDING." See Juice Generation, 794 F.3d at 1338-39 (explaining that “evidence of third-party use bears on the strength or weakness of an opposer’s mark” and that “highly suggestive [marks] are entitled to a narrower scope of protection, i.e., are less likely to generate confusion over source identification, than their more fanciful counterparts.”).

Overall, we find the parties’ marks in their entireties are similar in appearance, sound, connotation and commercial impression. However, taking into account the significant weakness of the shared term ASPIRE, we find that consumers are likely to notice and rely on the minor differences between the marks to distinguish them. * * * The sixth DuPont factor thus weighs heavily against finding a likelihood of confusion. Indeed, we find that the heavy weight of the sixth factor is the dominant consideration in this case.

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TTABlogger comment: Ouch! Three years later, victory is turned into defeat.

Text Copyright John L. Welch 2026.