TTABlog Test: Is HARD WATER Merely Descriptive of Canned Alcoholic Beverages?

The Board upheld the USPTO's refusal to register the mark BLUEBIRD HARDWATER, in standard character and logo form, for "Canned alcoholic beverages, except beer,” in view of the registered mark BLUEBIRD DISTILLING for "distilled spirits" [DISTILLING disclaimed]. The Office also required a disclaimer of HARD WATER (the proper spelling of HARDWATER) on the ground of mere descriptiveness under Section 2(e)(1). Applicant claimed that "HARDWATER" is a coined term and that the Office improperly dissected it into "HARD" and "WATER." How do you think the Board came out on the disclaimer issue? In re Bluebird Hardwater, Serial Nos. 90902279 and 97187261 (October 22, 2026 [not precedential] (Opinion by Judge Martha B. Allard).

Likelihood of Confusion: The Section 2(d) analysis was straightforward. The Board found the goods to be complementary and related and the channels of trade and classes of consumers the same. [In a concurrence, Judge Casagrande would have found the goods legally identical]. 

As to the strength of the cited mark, the Board plowed through applicant's voluminous evidence and painstakingly whittled it down for relevancy. It found the cited mark to be unweakened commercially by applicant's evidence of four third-party uses of BLUEBIRD-containing marks [too few], but somewhat weakened conceptually ["at worst suggestive"] by those four uses and by three third-party registrations. [Why would "BLUEBIRD" be suggestive of alcoholic products? - ed.]. And so, it deemed the sixth DuPont factor to be neutral.

As to the marks, the Board unsurprisingly found the term BLUEBIRD to be the dominant element in the marks, and then found them to be similar in sound and appearance to the extent that they all contain BLUEBIRD as the initial term. They have similar connotations and commercial impressions "due to their shared use of the literal element BLUEBIRD and their use on related goods." [They are dissimilar to the extent they contain other words - ed.]. And so, the first DuPont factor supported the refusal.

Finding that purchasers of the goods "cannot be considered to have any particular sophistication about these alcoholic beverages," the Board deemed the fourth DuPont factor to be neutral. "Because all of the DuPont factors either weigh in favor of a likelihood of confusion or are neutral, and none weigh against it, we conclude that confusion with Registrant’s mark is likely to occur."

Disclaimer Requirement: Examining Attorney Kieu-Nhi Le maintained that HARDWATER merely describes a characteristic or ingredient of applicant's goods. The evidence showed that the term “hard” is defined as “having a high concentration of alcohol." “Water” is listed as an ingredient in Applicant’s goods. Moreover, third-party website evidence established that "the phrase 'hard water' is commonly used by third parties to mean beverages composed of alcohol and water."

The record included third-party registrations for marks incorporating the term 'hard' or 'water' for alcoholic beverages containing alcohol or water, in which registrations these terms were disclaimed.

Applicant’s use of the term HARDWATER is consistent with the dictionary definition of the term HARD and with the third-party website and registration evidence . . . all of which shows that consumers will understand the compound word to mean a beverage composed of alcohol and water.

The Board brushed aside applicant's assertion that HARDWATER is a coined term. "Rather, it is a combination of two common, well-established terms that describe an alcoholic beverage containing both water and alcohol, which precisely describes the ingredients of Applicant’s identified “'Canned alcoholic beverages, except beer.'"

The dictionary definition of the term “hard” and third-party use and registration evidence of record confirm that these terms, when combined, have a common meaning in the relevant field and it requires no imagination to connect it to Applicant’s identified goods. Applicant’s combining the terms “hard” and “water,” and omitting the space between them, does not cause the combined terms to be something other than merely descriptive of the identified goods.

Furthermore, as to the "coined term" argument,"[t]he fact that Applicant may be the first or only user of a term does not render that term distinctive if . . . it has been shown to be merely descriptive of the goods identified in the application."

And so, the Board upheld the disclaimer requirement

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TTABlogger comment: BLUEBIRD is registered for wine, and BLUEBIRD DAY for beer. But there's room for only one BLUEBIRD in the canned alcoholic beverage space.

Text Copyright John L. Welch 2026.

Recommended Reading: The Trademark Reporter, September - October 2026 Issue

The September-October 2026 (Vol. 116 No. 5) issue of The Trademark Reporter [pdf here] has arrived. Willard Knox, Staff Editor-in-Chief, summarizes the contents as follows (and below): "This issue of The Trademark Reporter (TMR) offers readers a novel theory of adapting patent law’s convoyed sales damages theory for trademark infringement cases, a roadmap for navigating the obstacle course that certification mark applicants routinely face, and a toolkit updating litigants on the key changes to an essential reference manual on evidence."

A Patently Obvious Remedy for Trademark Infringement: Convoyed Sales by Jonathan E. Moskin and Roma Lopes. The practitioner authors of this article argue that patent law’s convoyed sales remedy can be adapted (and adopted) by brand owners seeking damages for trademark infringement.

The Certification Mark Challenge: Successfully Navigating the Prosecution Obstacle Course by B. Brett Heavner and Caroline G. Segers. The practitioner authors of this article detail how brand owners can maneuver the obstacle course of prosecuting a certification mark from application to registration.

A Practitioner’s Précis of the 2025 "Reference Guide on Survey Research": Key Revisions in the Federal Judicial Center’s Reference Manual on Scientific Evidence, Fourth Edition by David T. Neal, Ph.D. The practitioner author of this article updates attorneys and survey experts who develop and critique consumer surveys in litigation on the key changes from the previous edition of this essential reference manual on evidence.

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TTABlog comment: This issue of the TMR is Copyright © 2026, the International Trademark Association, and is made available with the permission of the Trademark Reporter®.

TTAB Finds "THE JONES" for a Host of Services to be Primarily Merely a Surname

The Board affirmed a refusal to register the mark THE JONES for a laundry list of disparate services, including educational consulting, hotel accommodation, and beauty care [this is a Section 66(a) request for extension of protection filed by a UK company], finding the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that "[g]iven the overwhelming frequency with which consumers are accustomed to encountering marks comprised of THE and a surname, for hotel and hotel-related services, the public is most likely to perceive [THE JONES] as a source indicator for such services." The Board was not accommodating. In re Solomon & Silver Limited, Serial No. 79405252 (October 21, 2026) [not precedential] (Opinion by Judge Robert Lavache).

Examining Attorney Andrew Crowder-Schaefer relied on evidence from Ancestry.com and Wikipedia stating that JONES is the fifth most common surname in the United States. The 2010 U.S. Census data confirmed that point. "This evidence establishes that JONES is an extremely common surname in the U.S. and Applicant’s brief does not contend otherwise." Nor did applicant contest that JONES, alone, has the look and feel of a surname.

Applicant maintained, however, that the addition of the word THE to JONES makes a difference. It pointed to what it called "numerous registrations for, and widespread third-party use of, marks constructed in the form THE + [surname] in connection with the pertinent [hotel and hotel-related] services." The Board noted, however, that the file histories of those registrations were not in evidence, "and thus we do not know the examining attorneys’ reasons for approving the relevant marks for registration." In any case, the Board observed once again, each case must be decided on its own record. As to applicant's evidence:

Some of the names reflected in both the third-party registrations and the examples of use do appear to have primary significance as surnames. These include “Moore,” “Crawford,” “Pittman,” “Barnes,” “Williams,” and “Duniway.” But many of the others, including “Alexander,” “James,” “Tony,” “Thomas,” “Stanley,” and “Drake” could also be perceived as first names. Still other examples feature words that have other non-name significance, such as “Butler,” “Cooper,” and “Brown.” We therefore disagree with Applicant’s characterization of the evidence . . . ." 

The Board also noted that there was no evidence as to how the public "would view any proposed mark with a similar construction that is used in connection with hotel services as something other than just a surname."

Applicant pointed to In re IMH Columbia, LLC [TTABlogged here], where the Board reversed a Section 2(e)(4) refusal of the mark THE MERRIWEATHER for hotel services, but the Board distinguished that case:

[T]he decision explicitly states that the Board’s determination was also "based on ‘Merriweather’ being a relatively uncommon surname, having several possible non-surname meanings, including a very similar, known historical first name." Here, JONES is an extremely common surname and the record contains no evidence that it has any non-surname meanings. Thus, we agree with the Examining Attorney that Applicant’s evidence of hotel names prefaced by “the” does not compel us to reach the same conclusion here as in IMH Columbia.

Merriweather Clark

Even if we were convinced that the purchasing public would view the primary significance of THE JONES as something other than a surname when used in connection with hotel services, Applicant seeks registration of more than just hotel services. Indeed, the application identifies other services in International Class 43, as well as various services in International Classes 41 and 44.24 And, as the Examining Attorney points out, there is no evidence of record to support a finding that the addition of “THE” lends the proposed mark non-surname significance when used in connection with any of the identified non-hotel services in Classes 41, 43, and 44.

And so, the Board affirmed the refusal.

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TTABlogger comment: What if the applicant files a new application for THE JONES for hotel services?

Text Copyright John L. Welch 2026.

TTAB Refuses to Vacate Prior Decision Despite Stipulated Dismissal of Section 1071(b) Civil Action for Review

The Board denied a joint motion to vacate its July 25, 2025 decision in M Halyard, Inc. v. Guidepoint Global, LLC [pdf here] under FRCP 60(b). Observing that relief from judgment is "an extraordinary remedy to be granted in the court’s discretion only in exceptional circumstances," the Board concluded that "the public interest is substantial in protecting the integrity of the federal trademark register and cancelling Petitioner’s invalid trademark registrations." O&M Halyard, Inc. v. Guidepoint Global, LLC, Cancellation Nos. 92077680 (parent) and 92078922 (October 20, 2026) [not precedential].

The Board had ordered cancellation of two registrations owned by Petitioner Halyard on the ground of nonownership, after full trial, briefing, and an oral hearing. Halyard sought review by way of civil action under Section 1071(b) [in the E.D. Va.], and then entered into a joint stipulation with Respondent Guidepoint, leading to a dismissal with prejudice of all claims and counterclaims asserted in the civil action

The parties claimed that "[t]he district court’s dismissal with prejudice of the de novo review of this case renders the underlying TTAB proceeding moot" and so "the Board’s Final Decision is properly vacated pursuant to Rule 60(b)." However, the Supreme Court held in U.S. Bancorp, in the context of a review under 28 U.S.C. § 2106, that “mootness by reason of settlement does not justify vacatur of a judgment under review” absent “exceptional circumstances." "To allow a party who steps off the statutory path to employ the secondary remedy of vacatur as a refined form of collateral attack on the judgment would -- quite apart from any considerations of fairness to the parties -- disturb the orderly operation of the federal judicial system." Id. The Board concluded that "[t]he same reasoning holds true for Board proceedings, and the prescribed routes of appeal for final decisions."

Based on Petitioner’s own documents and testimony, the Board found that "on the filing date of the applications underlying Petitioner’s Registration Nos. 5739878 and 6357539, Petitioner did not own the mark QSIGHT, and as such Petitioner’s underlying applications are void ab initio and the resulting registrations are invalid. Respondent’s agreement otherwise does not alter this evidence, no new evidence has been identified or adjudged that changes this determination, and accordingly there is no basis to vacate this holding."

[T]he Joint Stipulation entered by the district court does not reference any new evidence, make any findings based on the district court’s de novo review of any evidence, and also does not “adjudge” anything regarding either of the party’s registrations, or the issues decided in the Final Decision. * * * In entering the Joint Stipulation, the district court also did not remand the case to the Board to consider vacatur, it only dismissed all claims with prejudice.

The Board ruled, in accord with U.S. Bancorp, that "settlement alone does not justify vacatur and the parties do not identify any 'exceptional circumstances' that would warrant vacating the Final Decision."

Even accepting the parties’ representation that “[a]s part of th[e] resolution [of the civil action], [Respondent] agreed that Petitioner is the owner of Registration Nos. 5739878 and 6357539,” does not provide a basis to vacate the Final Decision. As discussed in the Final Decision, the Federal Circuit recognizes, “registration by one who did not own the mark at the time of filing renders the underlying application void ab initio.”

The parties argued that vacating the decision would not harm the public interest because the decision was not precedential, and the dismissal with prejudice of the civil action “support[s] the public’s interest in preclusion and putting an end to years-long litigation between these parties.” They also claimed that “neither party will suffer hardship from the vacatur of the Final Decision, as the parties will co-exist in the market, cover their own costs of the litigation, and abstain from further litigation.” The Board was unmoved.

[T]he parties’ arguments overlook a key public interest. Cancellations, like “[o]ppositions[,] protect the public interest in the integrity of the federal trademark register by providing a means to consider and decide the right to registration, a matter of public interest.”

Concluding that "[N]one of the interests articulated by the parties outweigh this substantial public interest," the Board denied the motion to vacate.

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TTABlogger comment: The Board noted that "[i]f Petitioner is the current owner of the marks, then Petitioner has the right, of course, to file new applications identifying itself as the owner."

Text Copyright John L. Welch 2026.

TTAB Enters Summary Judgment Dismissing EMPOWER Monogram Opposition: First DuPont Factor Dispositive

Opposer Inmode alleged that the "monogram" mark shown below is confusingly similar to its registered, standard character marks EMPOWERRF and EMPOWERRF BY INMODE, all for skin care treatment services. The Board granted Applicant Empower Aesthetics' motion for summary judgment and dismissed Inmode's Section 2(d) claim, finding the first DuPont factor to be dispositive. Inmode Ltd. v. Empower Aesthetics LLC, Opposition No. 91299827 (October 26, 2026) [not precedential].

In its application, Empower Aesthetics described its mark as consisting of “a monogram of the word ‘EMPOWER’ such that, in the monogram, a first letter ‘E’ is shown on the left side facing inward, a second letter ‘E’ is shown on the right side facing inward, a letter ‘R’ is shown inside of the first letter ‘E’, a letter ‘P’ is shown inside of the second letter ‘E’ facing inward and the letters ‘O’, ‘W’ and ‘M’ are shown on top of one other and in the center of the monogram.”

Opposer Inmode maintained that applicant’s characterization of the mark as “a monogram of the word ‘EMPOWER’” was an admission that the mark is a “stylized version of the word 'EMPOWER'" and therefore the “literal element of Applicant’s EMPOWER & Design Mark is identical to the dominant portion of" Opposer’s marks.

Empower Aesthetics responded that focusing on the description of the mark, instead of the drawing of the mark, is improper. The Board agreed: “A drawing depicts the mark sought to be registered.”

Here, while Applicant may have intended that its mark be made up of an arrangement or “monogram” of the constituent letters of the word “EMPOWER,” the arrangement of geometric shapes that make up the mark is so highly stylized and arranged so as to form what appears to be a portal-like configuration devoid of any literal component. Our determination of a mark’s likely connotation and commercial impression are based on the perspective of the consuming public, not an applicant’s intention.

The Board observed that "consumers will be unaware of Applicant’s description of its mark when encountering it in the marketplace."

[C]onsumers are highly unlikely to perceive Applicant’s mark as stylized wording, but instead may only perceive a stylized design with somewhat symmetrical arrangement of geometric shapes, some of which may resemble letters. Even if an average consumer recognized one or more letters in this drawing, it is highly unlikely that the average consumer could reorient and rearrange those letters to form the word “EMPOWER.” * * * Indeed, even knowing that the design is intended to contain the letters “E-M-P-O-W-E-R,” it is very difficult to parse the design and identify those letters, let alone place them in the order Applicant describes in the application.

In short, the Board found the marks to be "strikingly different in all aspects," and so it granted the motion for summary judgment.

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TTABlogger comment: WYHO?

Text Copyright John L. Welch 2026.

TTABlog Test: Is this Word+Design Mark, with BLOCKOUT Disclaimed, Inherently Distinctive?

The USPTO refused to register the proposed composite mark shown below, for light-blocking plastic films and labels [BLOCKOUT disclaimed], finding the mark to be merely descriptive of the goods under Section 2(e)(1). With the literal portion disclaimed, the question "revolves around the other elements in the proposed mark and whether they render the mark inherently distinctive as a whole." The Examining Attorney argued that the background is a "basic design." Applicant argued that "[t]he interplay between the inner filled rectangle containing BLOCK, the absence of any rectangle around OUT, and the contrasting use of positive and negative space creates a cohesive design that communicates meaning beyond the literal wording." How do you think this appeal came out? In re Brook & Whittle Limited, Serial No. 98590492 [not precedential] (Opinion by Judge Jennifer L. Elgin).

The Board noted that Applicant did not make a claim of acquired distinctiveness, and therefore the stylization of BLOCKOUT and the design must create a separate and inherently distinctive impression. The Examining Attorney acknowledged that if descriptive or generic wording is presented in a distinctive display or design, the mark as a whole may be registered with a disclaimer of the unregistrable component. See In re Sadoru Grp., Ltd. [TTABlogged here].

The Board found that the proposed mark "can be seen as more than mere non-stylized text superimposed on a geometric background design."

Arguably, the differently colored rectangle and contrasting superimposed text create a commercial impression separate and apart from the disclaimed wording. The concept of positive and negative space is apparent in the mark and would remain so even when rendered in colors other than black and white. The placement of the word BLOCK within the rectangle (i.e., a block) can evoke the act of blocking light. The rectangular design is more than a mere background carrier for the contrasting superimposed block text.

The Examining Attorney's evidence showed that both the wording BLOCKOUT and the light-blocking function of the goods are described in the trade. "But that evidence bears on the descriptiveness of the wording, which Applicant has conceded through its disclaimer; it does not establish that the design and stylization immediately convey the light-blocking characteristic of the goods."

To the contrary, discerning the interplay of positive and negative space, and connecting that visual treatment of the design and text to the light-blocking nature of the films and labels, arguably requires imagination, thought, and perception on the part of someone who knows what the goods are to reach a conclusion about their nature, even when combined with the disclaimed matter. * * * Reasonable minds can differ on the distinctiveness of the design and the question of whether the mark as a whole is merely descriptive of the goods in the application. We have doubt about that question and resolve that doubt in favor of Applicant.

And so, the Board reversed the refusal to register.

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TTABlogger comment: I don't get it. Compare this decision to the SERIAL decision [TTABlogged here], in which the Board found that the two composite marks shown below [with SERIAL disclaimed] were not inherently distinctive.

Text Copyright John L. Welch 2026.

TTAB Deems TALKIE Confusable with TALKIE.AI & Design for Chatbot Software, Rejecting Crowded Field Argument

The Board affirmed a refusal to register the mark TALKIE for, inter alia, "downloadable computer chatbot software for simulating conversations in the field of entertainment, education, creative writing, role-playing, and personal companionship," concluding that confusion is likely with the registered mark shown below, for, inter alia, "downloadable computer chatbot and bot software for simulating conversation." Applicant Subsup pointed to the four other registrations cited in the final refusal, but the Board found them insufficient to show a "crowded field" of TALKIE-formative marks. In re Subsup Pte. Ltd., Serial No. 98680779 (October 19, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

Subsup argued that the entire identification of goods in the cited registration, "read as a whole, is lengthy and heavily oriented toward specialized AI and communications-processing functionalities, including extensive interaction and healthcare-focused features alongside other technical components," and is distinguishable from Subsup's "non-medical, AI chatbot software and related software offerings under TALKIE versus the registrant’s broad, specialized, and differently framed suite of goods under TALKIE.AI."

Examining Attorney Mitchell Knief maintained that the particular goods identified in the cited registration as "downloadable computer chatbot and bot software for simulating conversation" are broad enough to encompass applicant's more limited software. The Board agreed: "These goods are legally identical, and the second DuPont factor strongly supports a conclusion that confusion is likely." Furthermore, the Board must presume that these identical goods travel in the same channels of trade to the same classes of consumers.

Turning to a comparison of the marks, the Board noted that "[w]hen a mark comprises both words and a design, the words are normally accorded greater weight because they are more likely to be impressed upon a purchaser’s memory and would typically be used by purchasers to request the goods or services." And so, the Board gave greater weight to the literal element than the design element of the mark. Furthermore, the Board observed that since the mark at issue is in standard character form, it could be depicted in the same font style and size as the word TALKIE in the cited mark

The marks are similar in sound because the TALKIE element of each mark will sound identical. The marks are "quite similar" in connotation and commercial impression because TALKIE suggests “‘talking’ or ‘chatting,’ a commonplace concept in software used for conversation, messaging, and chatbot interaction.” The design element reinforces the idea of “talking” or “chatting,” and the .AI suffix in the cited mark "identifies one party to the conversation."

And so, the first DuPont factor "strongly supports" a conclusion that confusion is likely.

As to customer care, there was "nothing in the record to show that the least sophisticated potential purchaser of Applicant’s downloadable software is likely to exercise anything more than ordinary care," and so the fourth DuPont factor was neutral.

Subsup argued that TALKIE is conceptually weak, pointing to the TALKIE-related registrations cited by the Examining Attorney in the final refusal, and asserting that “the shared TALKIE/TALK element should be afforded a narrower scope in the overall Section 2(d) analysis ....” The Board pointed out that the cited registration issued on the Principal Register without a requirement of a showing of acquired distinctiveness, and so "we presume that it is inherently distinctive, i.e., that it is at worst suggestive of the goods." Nonetheless, common use of a term may indicate that the mark or common element has some conceptual weakness.

Applicant has pointed to no TALKIE-formative registrations in the record beyond the three cited registrations owned by the same entity and the fourth cited registration owned by a different entity. Even if we consider the four other cited registrations, reflecting only two additional source entities, to be “third-party registrations” vis-à-vis the mark shown in the ’449 Registration, “two sources are not enough to show dilution of a mark, nor [do] they show that there is a ‘crowded field’ of sources utilizing these similar terms.”

Finding that the first, second, and third DuPont factors supported the refusal and none weighed against it, the Board affirmed.

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TTABlogger comment: There were three third-party owners in the supposed "crowded field" (including the registrant). If applicant had added a word to TALKIE, would that have avoided the refual?

Text Copyright John L. Welch 2026.

TTAB Finds "PERMANENT JEWELRY WELDER" Merely Descriptive of . . . Guess What?

The Board upheld a Section 2(e)(1) refusal to register the proposed mark PERMANENT JEWELRY WELDER, finding it to be merely descriptive of electric welding machines and welding education services. Applicant Sunstone argued that the mark is at most suggestive since permanent jewelry is a relatively new product, and unsophisticated consumers will not understand how welding, commonly understood as “a dangerous industrial process, involving high heat, bright flashes of light, and providing significant personal risk of bu[rn] injuries,” relates to formation of jewelry." The Board was unimpressed. In re Sunstone Engineering LLC, Serial No. 98088456 (October 16, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The Board pointed out that the proposed mark must be considered in the context of the goods and services, not in the abstract. "Here, the relevant consumers include prospective purchasers of electric welding machines, including machines used to affix permanent jewelry, and persons seeking instruction about the operation and maintenance of those machines, such as people who already have or would like to start a permanent jewelry business."

Sunstone conceded that its goods and services relate to "welders." Examining Attorney Kim Teresa Moninghoff submitted evidence that "permanent jewelry" refers to a "piece [of jewelry] (usually a necklace or bracelet) that’s welded together instead of secured with a clasp." She also provided third-party use-based registrations for goods or services relating to “jewelry” or “permanent jewelry” in which the term PERMANENT JEWELRY was disclaimed. Notably, the USPTO’s Acceptable Identification of Goods and Services Manual (2025) contains entries for repair or welding services for “permanent jewelry."

As to the proposed mark in its entirety, the evidence showed descriptive use of the wording PERMANENT JEWELRY WELDER in the marketplace: including articles, product listings, and websites. Applicant's own advertising used “Permanent Jewelry Welder” in a descriptive, if not generic, manner: "The World's Bestselling Permanent Jewelry Welder" and "“Professional permanent jewelry welder, built by Sunstone."

The Board therefore found that "the proposed mark PERMANENT JEWELRY WELDER describes a function, purpose or use of Applicant’s goods, that they are used to weld permanent jewelry."

To the average consumer familiar with the goods and services, which include “electric welding machines” and “education services, namely, providing educational seminars, lectures, presentations, workshops, and non-downloadable videos in the field of the operation and maintenance of an electric welder,” PERMANENT JEWELRY WELDER immediately conveys information about the goods and services, that they are or relate to welders for affixing permanent jewelry. Indeed, as noted by the Examining Attorney, the combination of “PERMANENT JEWELRY” and “WELDER” communicates to potential consumers that, as opposed to industrial welders, Applicant’s goods are appropriate for affixing jewelry, and its services relate to using welders for this purpose.

The Board did not find the proposed mark to be incongruous or to require imagination or a mental pause to convey information about the goods and services. "When the words PERMANENT JEWELRY and WELDER are combined to form the composite PERMANENT JEWELRY WELDER, they retain their original meanings as referring to features of the goods and services, which are or relate to welders for affixing permanent jewelry."

Applicant’s other arguments are also unavailing. It is of no moment that PERMANENT JEWELRY WELDER “does not appear in any pre-application dictionary, trade publication, or industry glossary as a recognized category name.” See In re Dahlquist, Inc., 1976 TTAB LEXIS 79, at *6. 

Applicant asserted that the cited third-party uses are “knock offs” of Applicant’s product, but even if true, "this does not change the fact that the proposed mark is merely descriptive of a function, characteristic or purpose of the goods and services."

The fact that Applicant may be the first or only user of a term does not render the term distinctive if, as here, it has been shown to be merely descriptive of the goods identified in the application.” KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first” and thereby “depriv[ing] commercial speakers of the ordinary utility of descriptive words”)

Read comments and post your comment here.

TTABlogger comment: WYHA? The final office action included a "genericness advisory," but mere descriptiveness was the only issue on appeal.

Text Copyright John L. Welch 2026.

TTABlog Test: Is HIGHROAD PAVEMENT SERVICES Confusable with BUILDING THE HIGH ROAD for Road Construction Services?

The USPTO refused to register the mark HIGHROAD PAVEMENT SERVICES, in the word-and-design form shown below, for "road paving" and other construction services, such as "concrete paving, site clearing, excavation, … grading, and asphalt paving" [PACEMENT SERVICES disclaimed], deeming confusion likely with the registered mark BUILDING THE HIGH ROAD for, inter alia, "road construction” services. The services are "identical," but what about the marks? How do you think this came out? In re HighRoad Services, LLC., Serial No. 98586837 (October 16, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

Applicant argued that “Registrant is a general contractor for land developers, and a private landscape designer serving private homeowners” and that “Applicant, on the other hand, is not a general contractor, and does not specialize in landscape design." Irrelevant, said the Board (unsurprisingly): "Applicant may not restrict the scope of the services covered in the application or the cited registration by argument or extrinsic evidence." The Board must presume that the identical services are offered in the same trade channels to the same classes of consumers. And so, the second and third DuPont factors "strongly" supported the refusal.

As to the marks, applicant's mark is dominated by the word HIGHROAD. The stylized H design at the top of the mark "helps emphasize the term HIGHROAD; this portion of the mark is stylized such that the parallel side lines of the 'H' converge much like a highway that runs to the horizon and, as a result, reinforce the road construction nature of the services offered."

We also keep in mind that when marks have clearly dominant elements, such is the case here with HIGHROAD in Applicant’s mark, there is a “penchant of consumers to shorten marks” and, when calling for the services, “it is reasonable that such a practice would lead many consumers to drop the highly descriptive/generic term[s]” in marks.

The cited mark is "strongly suggestive of Registrant’s 'road construction' services, and is a possible double entendre, "based on the multiple meanings of the term 'high road,' which include: 'highway' or 'the easiest course' or 'an ethical course.'" In any case, "the wording HIGH ROAD plays a strong role in the mark’s overall commercial impression and meaning."

The Board found the marks to be "very similar visually and aurally based on the shared term HIGHROAD or HIGH ROAD." [Visually? - ed.]. Moreover, "the possible figurative meaning that consumers may perceive in the registered mark is also present in Applicant’s mark. That is, consumers encountering Applicant’s mark, may also understand the highly visible and dominant term HIGHROAD as alluding to an easier or ethical course, or literally as suggesting a highway that may be in need of Applicant’s pavement services." And so the Board found that "the marks are overall very similar and this DuPont factor weighs in favor of a conclusion that confusion is likely."

Applicant argued that the cited mark is weak because it evokes the idiom of ‘taking the high road,’ suggesting an honorable or correct course of action. The Board disagreed: "We find no weakness here based on use of the idiom as there is no evidence of third-party use of marks projecting the same double entendre in connection with road construction or road pavement services." Moreover, "this suggestive connotation actually brings the marks closer in terms of similarity."

Applicant also pointed to two third-party registrations (HIGH ROAD HOMES for “custom construction of homes” and WE DON’T JUST TAKE THE HIGH ROAD, WE BUILD THEM for “consulting services in the field of soil erosion control") and five third-party websites. The Board pooh-poohed that evidence because the registrations and websites concerned unrelated services, such as home construction, home repair, or soil erosion services.

However, the Board found that, "based on the plain or literal meaning of the cited mark, BUILDING THE HIGH ROAD, it is suggestive of Registrant’s road construction services and thus bears some inherent weakness." The Board  concluded that the sixth DuPont factor "weighs slightly against a finding that confusion is likely in our analysis."

As to consumer sophistication, the Board agreed with applicant that road construction and road paving services will generally be offered to larger companies or involve government contracts, but these services may also be offered to smaller entities, "including individuals interested in having private roads built, such as driveways."

[I]n the absence of restrictions in the identifications or evidence to the contrary, we must conclude that the least sophisticated purchasers here will not exercise anything other than ordinary care in selecting the services. Moreover, even sophisticated purchasers are not immune from source confusion, especially where, as here, the services are legally identical in part and would be offered under similar marks. * * * Accordingly, we find the fourth DuPont factor to be neutral in our analysis.

In sum, the first, second, and third DuPont factors "strongly" supported the conclusion that confusion is likely, and outweighed the finding that the cited mark bears some inherent weakness under the sixth DuPont factor. The remaining factors for which there was evidence were neutral. And so, the Board affirmed the refusal.

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TTABlogger comment: What do you think?

Text Copyright John L. Welch 2026.

TTAB Remands RAPUNZEL Application to the Examining Attorney for Re-Consideration of the Registrability of RAPUNZEL for Dolls

On April 14, 2026, the Supreme Court denied Professor Rebecca Curtin's petition for a writ of certiorari seeking review of the CAFC's decision that, as a mere consumer, she lacked entitlement to bring an opposition to registration of the mark RAPUNZEL for dolls. [TTABlogged here]. The TTAB has just issued an order stating that it would terminate the opposition "in due course;" but meanwhile it ordered that the application be "remanded to the Trademark Examining Attorney for further examination to consider the registrability of RAPUNZEL." Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (October 14, 2026) [not precedential].

The Board observed that "the registrability (or not) of the mark at issue remains before the USPTO." [How so? It's been examined and published. How does the issue remain before the USPTO? - ed.]. Moreover, "[e]ven if an opposition is dismissed, an application must be 'entitled to registration' in order to register. Trademark Act Section 13(b), 15 U.S.C. § 1063(b)."

The CAFC, in its May 22, 2025 decision denying standing [TTABlogged here], explained:

“Unless registration is successfully opposed,” the USPTO shall register the trademark if it is “entitled to registration,” issue a certificate of registration, and publish a notice of registration in the Official Gazette. 15 U.S.C. § 1063(b); see Heritage All. v. Am. Pol'y Roundtable, 133 F.4th 1063, 1071 (Fed. Cir. 2025) (“The opposition provision of the Lanham Act says that registration generally follows when an opposition, if any, fails, but the stated precondition is that the mark at issue be a ‘mark entitled to registration,’ 15 U.S.C. § 1063(b), which might allow the PTO, after an opposition fails, to reconsider the examiner’s pre-opposition allowance.”). Curtin, 137 F.4th 1359, 1362 (emphasis supplied); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 706.01 (May 2026) (explaining that the Office may “issue a new refusal” to the registration of the mark if “it is necessary to do so to prevent the issuance of a registration that would violate the Trademark Act.”).

The Board looked to Trademark Rule 2.131, which provides that the Board may remand an application if, “during an inter partes proceeding involving an application under section 1 or 44 of the Act, facts are disclosed which appear to render the mark unregistrable, but such matter has not been tried under the pleadings as filed by the parties.” 37 C.F.R. § 2.131. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 515 (June 2026) and cases cited therein." The Board found that Rule 2.131 applies here:

First, the facts disclosed during these proceedings, including in connection with the parties’ summary judgment briefing and the evidence presented at trial, see 27-28 TTABVUE; 43-44 TTABVUE; 53 TTABVUE, appear to render the mark unregistrable. Second, the claims asserted in Opposer’s operative pleading were not tried in view of the Board’s determination on entitlement to a statutory cause of action. See 14 TTABVUE ¶¶ 8, 14 (asserting claims under Section 2(e)(1) for mere descriptiveness and under Sections 1, 2, and 45 for genericness); see also In re United Trademark Holdings, Inc., 2017 WL 2876825 (TTAB 2017) (denying the registration of LITTLE MERMAID as merely descriptive for use with dolls) (precedential) [TTABlogged here]. (emphasis supplied)

And so, the application was remanded to the Trademark Examining Attorney for further examination to consider the registrability of RAPUNZEL. See Trademark Rule 2.131, 37 C.F.R. § 2.131. 

The Board noted that, if the Examining Attorney finally refuses registration, an appeal may be taken as provided by Trademark Rules 2.141 and 2.142, 37 C.F.R. §§ 2.141 and 2.142.

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TTABlogger comment: What happens if the examining attorney does not refuse registration? Will the application be published for opposition for the second time, even though the same application was already published once? BTW: Hat tip to Professor Curtin: although she lacked statutory standing, the evidence she submitted during the proceeding may yield the result she wanted anyway.

Text Copyright John L. Welch 2026.