Despite Weakness of "GLORIA" as a Formative, TTAB Upholds 2(d) Refusal of GLORIA & Design for Italian Restaurant Services

The Board affirmed a refusal to register the mark GLORIA in the design form shown below, for "providing of food and drink featuring modern Italian cuisine," concluding that confusion is likely with the registered mark GLORIA'S (in standard character form), for "restaurant and bar services." The Board found the services to be legally identical (since Italian cuisine is encompassed by registrant's services) and therefore it presumed that they are offered in the same trade channels to the same classes of consumers. Applicant Big Mamma contended that GLORIA is a weak and commonly used term in connection with restaurants and that the additional elements (stylization and color scheme) differentiate the marks. The Board didn't buy it. In re Big Mamma SAS, Serial No. 98400652 (June 18, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

As to the weakness of the cited mark, the Board noted that it is registered on the Principal Register without a claim of acquired distinctiveness and is considered inherently distinctive. Big Mamma provided seven GLORIA composite third-party registrations (some include a design) for restaurant services or for the services of providing food and drink. It provided pages from the websites of these third-party registrants to show that the marks are in use.

Big Mamma also submitted evidence of 25 uses of GLORIA by third parties in connection with restaurant services, most (22) combined with descriptive or generic wording. "This third-party registration and use-based evidence is probative of the conceptual weakness of GLORIA/GLORIA’S in connection with restaurant services. [What concept does the word "Gloria" engender in connection with restaurant services? - ed.]

The above listed registrations and third-party uses of GLORIA/GLORIA’S in connection with restaurant services are probative of some commercial weakness of the term GLORIA. However, it is not clear whether multiple GLORIA/GLORIA’S restaurants exist in the same trading area such that consumers have been conditioned to distinguish among them.

In sum, the Board found that the term GLORIA/GLORIA’S, when used in connection with restaurant services, "is conceptually weak and has some commercial weakness."

Turning to the marks, the Board once again observed that when a mark comprises both word(s) and a design, the literal portion is normally accorded greater weight because it will be used by purchasers to request the services. Here, the dominant element in Big Mamma’s mark is (obviously) the literal portion, GLORIA. Also, because the cited mark GLORIA’S is registered in typed form, "it may be displayed in any manner, including in the same size, font, and color as GLORIA in Applicant’s mark, which includes the swash or terminal flourish on the end of the letter 'a'."

Of course, the addition of the apostrophe and letter “s” to the cited mark GLORIA has "little significance as a distinguishing element in the marks." "The rectangular design feature of Applicant’s mark that surrounds GLORIA and frames it forms a background or 'carrier”' and is not considered a distinctive element."

In sum, considering the marks in their entireties, the design and color elements in Applicant’s mark fail to sufficiently distinguish the marks and is outweighed by the identical presence of GLORIA/GLORIA’S in both marks. We find the marks similar in overall appearance, sound, connotation and commercial impression.

The sixth DuPont factor weighed against confusion. "But in weighing the impact of the sixth factor, "we keep in mind that 'even weak marks are entitled to protection against registration of similar marks' for identical services."

And so, the Board affirmed the refusal.

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TTABlogger comment: G-L-O-R-I-A !

Text Copyright John L. Welch 2026.

TTAB Reverses 2(d) Refusal of GHOST AGENCY & Design for Advertising Services due in part to a Crowded Field of "GHOST" Marks

The Board overturned a Section 2(d) refusal to register the mark GHOST AGENCY & Design for various advertising and marketing services [AGENCY disclaimed], concluding that confusion is unlikely with the registered mark shown second below, for "Advertising and marketing services." The involved services overlap, and to that extent are presumed to travel through the same trade channels to the same classes of consumers. But the differences in the marks and the weakness of GHOST as a formative led to success for the applicant. In re The Ghost Agency, Inc., Serial No. 98709623 (June 18, 2026) [not precedential] (Opinion by Judge Martha B. Allard).

Applicant argued that the cited mark is "relatively weak because it is highly suggestive of a characteristic of the underlying services[,]" and because it coexists with sixty-three registered GHOST-formative marks. The Board noted that the cited mark is registered on the Principal Register and is therefore presumably inherently distinctive, but nonetheless, distinctive marks may be conceptually and/or commercially weak.

According to applicant, "It is very common for companies that provide white label services for others to use the word “ghost” to refer to the anonymous nature of their services. Clients hire “ghost” agencies like Applicant to work behind the scenes to build and promote their brands. *** When viewed in connection with the marketing, advertising, and entertainment services being offered under the cited marks, then, the registered marks inform consumers that the services offered are meant to be white label services for others."

The Board disregarded many of the third-party registrations, leaving 12 registrations "in the name of eleven different entities that identify services that are identical to or encompassed by the services identified in the cited mark," including GHOST CUBE, GHOST GIRL, and THE WRITING GHOST.

[T]he record shows that the term GHOST is highly suggestive because it brings to mind a feature or purpose of the services for which the marks are registered–to render advertising and marketing services for and in the name of another. As a result, the term GHOST is conceptually weak when used with advertising and marketing services and entitled only to a narrow scope of protection. See Juice Generation, 794 F.3d at 1339.

Turning to a comparison of the marks, the examining attorney maintained that the word GHOST is the dominant element in applicant's mark, since AGENCY has been disclaimed, and that dominant element is identical to the dominant element in the cited mark. Not so fast, said the Board.

[W]e disagree that the cited mark makes the commercial impression of the word GHOST with a line through it. While we acknowledge that this understanding is consistent with the description of the mark, the description of the mark is not binding upon our determination since “[a] mark’s meaning is based on the impression actually created by the mark in the minds of consumers, not on the impression that the applicant states the mark is intended to convey.”

The Board found that the initial letter appears to be a lowercase “q”, not a lowercase “g.” "Thus, the mark makes the commercial impression of “Q HOST,” which suggests some sort of hosting, possibly web hosting, for example, that is commonly associated with websites, which are a common form of digital advertising and marketing."

The Board also found that that this stylized G, with its clean, crisp lines and contrasting colors, causes Applicant’s mark to make a different commercial impression than that of the cited mark.

Even were we to find that the cited mark engenders the commercial impression of GHOST with a line through it, rather than Q HOST, we would still find confusion is unlikely. This is because the record demonstrates that the term GHOST is conceptually weak and this conceptual weakness, when combined with the dissimilarity of the stylizations of the marks discussed above, would also be sufficient to find that confusion is not likely.

And so, the Board reversed the refusal.

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TTABlogger comment: It did not occur to me that the cited mark could be read as "q host." But then, I already had the word "ghost" in my mind.

PS: why doesn't applicant's mark look like "c host?"

Text Copyright John L. Welch 2026.

TTAB Denies Petition for Cancellation of Giraffe Logo Registration: No Standing After Board Rejects Petitioner's Purported Testimony

The Board denied a Section 2(d) petition for cancellation of a registration for the design mark shown here, for a raft of clothing items, ruling that Petitioner Wenbo Zhou failed to submit any admissible evidence in support of his entitlement to petition to cancel the registration. Mr. Zhou submitted a document entitled "Petitioner’s Evidentiary Submission Zhou Wenbo Transcript of Deposition on Written Questions," but the Board, after a detailed analysis, refused to consider that document for "multiple reasons." Wenbo Zhou v. Hangzhou Ai Xun Trade Co., Ltd., Cancellation No. 92082150 (June 17, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

Petitioner Zhou's Evidentiary Submission "purports to be some sort of trial testimony." Zhou characterized the document as both a "testimonial declaration on behalf of Petitioner" and as the "Zhou Wenbo Transcript of Deposition on Written Questions." 

However, the Board found that it was not a proper declaration because it contained "no 'oath or affirmation to testify truthfully' acknowledged by the witness, Fed. R. Evid. 603, and no substitute declaration language referencing 18 U.S.C. § 1001 or 28 U.S.C. § 1746."

As to the characterization of the document as a deposition transcript, the Board noted the "absence of evidence that Mr. Zhou took an oath before participating in the “interview,” the lack of certification of the transcript by the person who recorded the "testimony," and the failure of the document to comply with any of the arrangement, indexing, and transcript form requirements.

Moreover, it was clear to the Board that the deposition on written questions was not conducted in English. "We are thus relying on the translation of the questions and answers from Chinese to English for the accuracy of Mr. Zhou’s testimony, but we have no information whatsoever regarding the translator, the process of translation, or the original Chinese-language questions and answers."

In the final analysis, although we are not certain exactly what the Evidentiary Submission is, we are quite certain about what it is not: sworn testimony in a proper deposition upon written questions, given by a witness testifying under oath before a qualified officer authorized to administer oaths, and translated from the witness’s native language into English by a qualified translator. Pursuant to Trademark Rule 2.123(k), we will not consider the Evidentiary Submission as evidence on behalf of Petitioner.

The Board observed once again that entitlement to a statutory cause of action (statutory standing) is a threshold requirement in every inter partes proceeding. Petitioner Zhou pointed to the allegations in his petition for cancellation regarding likelihood of confusion. The Board pointed out, however, that mere allegations are not enough:

Petitioner was required to “maintain [his] entitlement to the statutory cause of action throughout the proceeding and affirmatively prove its existence at the time of trial by introducing evidence to support the allegations in [his] pleading that relate to such entitlement as an element of [his] case-in-chief.” [Emphasis by the Board].

Since Mr. Zhou submitted no admissible evidence or testimony to prove his standing, the Board denied the petition for cancellation.

We are utterly mystified as to why Petitioner did not simply submit his sworn testimony declaration in appropriate Chinese-language and English-language versions, rather than going to the time and expense of taking a deposition on written questions in Indonesia, but “we must take the record as [Petitioner] made it.”

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TTABlogger comment: Can the petitioner seek review by way of civil action, wherein new evidence is allowed? How would he introduce his testimony in a civil action?

Text Copyright John L. Welch 2026.

TTAB Denies REVO Cancellation Petition for Failure to Prove Standing

The Board denied a petition for cancellation of a registration for the mark shown below for real estate brokerage services. Petitioner claimed that the mark had been abandoned. Neither party submitted evidence or testimony during the trial period and only petitioner filed a brief. The Board found that petitioner had failed to prove statutory standing, which alone was enough to justify denial of the petition. It also failed to provide any evidentiary support for its abandonment claim. Revo Holdings, LLC v. Revo Real Estate Inc. and RE Virtual Office Inc., Cancellation No. 92085621 (June 16, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Petitioner did attach to its trial brief a set of interrogatories and document requests to which respondent had not responded. However, materials attached to a brief are not properly submitted evidence. Since respondent did not respond, they proved nothing anyway.

Of course, a plaintiff must prove its standing (i.e., its entitlement to a statutory cause of action) as a threshold matter in every inter partes proceeding. Petitioner did not address the issue in its brief. In its petition for cancellation it alleged only that it "believes it will be damaged by the continued registration of US Registration No. 4,066,391." It did not allege facts "which, if ultimately proven, would establish that petitioner has a real interest in the cancellation proceeding."

In addition to petitioner's deficient pleading, the Board reviewed respondent's answer and the file of its registration (which is automatically of record). However, neither contained "anything bearing on whether Petitioner has a reasonable belief in damage by continued registration."

Petitioner's failure to prove standing, by itself, required denial of the petition. Furthermore, the Board noted that the only admissible evidence in the case was the registration file and the pleadings, in which respondent denied abandonment. "Thus, there is no evidence supporting Petitioner’s sole claim that the mark has been abandoned." "This independently requires denial of the petition."

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TTABlogger comment: This dog won't hunt.

Text Copyright John L. Welch 2026.

TTABlog Test: Is LIVIA JOLIE for Clothing Confusable with LIVIA & Design for Beachwear?

The USPTO refused to register the mark LIVIA JOLIE for "Dresses; Pants; Shirts; Shorts; Skirts; Tops as clothing; Clothing jackets" [JOLIE disclaimed], concluding that confusion is likely with the mark shown below, for "beachwear, bathing suits." Applicant argued, inter alia, that its mark conveys a different commercial impression due to the use of the French word JOLIE, which evokes associations with French fashion and design, and that the actual trade channels and customers do not overlap. How do you think this came out? In re Maya Brooke Inc., Serial No. 98758658 (June 4, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

The Board found the cited mark to be inherently distinctive, noting that, even if LIVIA is a given name, "such marks are not per se regarded as lacking conceptual or inherent strength." In an attempt to show commercial weakness, applicant cited nine third-party registrations, but the Board pointed out that without evidence of the extent of use of those marks, the registrations are of minimal probative value.

Only five of the registrations were potentially probative as to conceptual weakness of the cited mark – ALIVIA FORD, ALIVIA, ELIVIA & CO., ALIVIA SIMONE, and OWLIVIA (Stylized). "Although these registrations have some probative value to show that LIVIA is a given name, they do not show any connection between the mark and the registered clothing goods – that is, the mark is arbitrary and conceptually strong as applied to these goods."

As to the involved marks, the Board observed that "LIVIA is the leading term in Applicant’s mark and the only term in the cited mark, a factor which "makes 'the marks similar.'" Moreover, applicant’s mark incorporates the cited mark in its entirety, a fact that often leads to a finding of similarity. And even if it's true that the term JOLIE evokes French fashion, "some consumers – particularly those familiar with the cited mark – are likely to believe the marks are related" - for example that applicant’s goods under the mark LIVIA JOLIE are a product line extension of registrant’s goods.

Discounting the impact of the stylization in the cited mark and the box around the literal portion, the Board found that the marks, "considered in their entireties, are similar in sight, sound, meaning, and overall commercial impression."

As to the goods, Examining Attorney Marianne Strassle submitted third-party evidence showing that same entity commonly provides applicant’s and registrant’s clothing items under the same mark. Moreover, it found that the goods overlap:

We take judicial notice that “beachwear” in the cited registration means “clothing for wear at a beach.” This broad identification, therefore, overlaps with the narrower identification in Applicant’s application, including “Shirts; Shorts; … Tops as clothing….” We find that the goods are legally identical in part.

The overlapping goods are presumed to travel in the same trade channels to the same classes of consumers. As to the merely related goods, the third-party internet evidence demonstrated that "the trade channels include stores or websites that sell clothing, and supported a finding that the trade channels and consumers of the relevant goods overlap." Applicant's argument about actual channels of trade was unsupported by evidence and, in any case, "actual channels are not material to the [Board's] analysis because [it] must presume all possible, not just actual, channels of trade."

Since all the relevant DuPont factors weighed in favor of likely confusion, the Board affirmed the refusal.

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TTABlogger comment: I don't think a person should be able to register a given name and then preclude others from registering their full name.

Text Copyright John L. Welch 2026.

TTABlog Test: Is CELEBRITY PITCH TANK Confusable with SHARK TANK for Business-Themed Entertainment Services?

Sony Pictures opposed an application to register the mark CELEBRITY PITCH TANK for "Entertainment, namely, a continuing reality show broadcast over the internet during which participants give away cash for scholarships and startup businesses" [CELEBRITY PITCH disclaimed], claiming likely confusion with the registered mark SHARK TANK for "entertainment services in the nature of an ongoing reality television series, involving presentation of business concepts." What to you think? Did David conquer Goliath? Sony Pictures Television Inc. v. Tim Lynch, Opposition No. 91289684 (June 9, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Board found the involved services to be closely related because both involve business-themed entertainment services. It found some overlap between channels of trade and classes of consumers because television shows may be offered via the internet through streaming services and YouTube.

As to the conditions of purchase, "[o]rdinary consumers who watch Applicant’s and Opposer’s reality programs are likely to exercise only ordinary care, especially given that Applicant’s internet shows may be available for free and at least the first run shows of Opposer’s television program are broadcast on the ABC network and 'free.'"

Turning to the strength of Opposer Sony's mark, based on a raft of evidence and on pro se Applicant Lynch's own admissions, the Board found that the SHARK TANK mark "falls on the higher end of the fame spectrum, and is entitled to broad protection." As to conceptual strength, the Board concluded that "SHARK TANK (i.e., a natural or artificial pool, pond or lake or liquid receptacle containing elongate elasmobranch mostly marine fishes) is arbitrary when used in connection with reality shows."

As to the marks, the Board acknowledged that the first words in a mark can make the biggest impact, but here "this impact is blunted in Applicant’s mark because the disclaimed terms CELEBRITY PITCH are at least descriptive, in that they identify a feature of the reality program Applicant offers." The Board concluded that "consumers are likely to focus on the TANK portion of Applicant’s mark."

The Board found that the "overall commercial impression conveyed by the marks is similar and likely to be the same for many consumers." It concluded that the marks are "sufficiently similar in their entireties such that persons who encounter the marks would be likely to assume a connection between the parties."

Finally, Applicant Lynch admitted that he “selected [his Mark] in order to make reference to, or call to mind, Opposer’s SHARK TANK Television Program." Based on this admission, the Board found "sufficient evidence in the record to support a finding of bad faith intent to confuse."

And so, the Board sustained the opposition.

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TTABlogger comment: The Board struggled a bit to find the marks confusingly similar. Do you agree with the result?

BTW: Should intent be a factor in the DuPont calculus? How does the applicant's intent have anything to do with consumer perception? Thomas L. Casagrande (now a TTAB judge) said it didn't in this article: "A Verdict for Your Thoughts? Why an Accused Trademark Infringer’s Intent Has No Place in Likelihood of Confusion Analysis." [pdf here].

Text Copyright John L. Welch 2026.

TTAB Upholds Section 2(b) Refusal: PROSCIUTTO DI CARPEGNA Mark Includes Italian Flag or Simulation Thereof

The Board affirmed a refusal to register the mark PROSCIUTTO DI CARPEGNA & Design (shown below) for "Prosciutto from the Carpegna region of Italy made in accordance with specific standards," finding that the mark comprises the Italian flag, in violation of Section 2(b). In re Consorzio Prosciutto di Carpegna, Serial No. 87811048 (June 12, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Section 2(b) requires refusal of any mark that "[c]onsists of or comprises the flag … of any foreign nation, or any simulation thereof." "[T]he word 'comprises' in the clause '[c]onsists of or comprises' means 'includes.'" "Whether matter included in a mark is, or includes, a flag 'is determined by a visual comparison of the matter and the actual flag.' (citation omitted). As with most things trademark (except, notably, functionality), our comparison focuses on the perception of the relevant consumers."

The Italian flag (shown immediately above) is rectangular, wider than it is tall, with equal vertical parallel stripes of green, white, and red. The relevant matter in applicant's mark includes green, white, and red parallel stripes arrayed almost vertically. "It is not depicted as a rectangle, but, depending on one's perspective, looks either like a tilted rectangle (i.e., parallelogram) or, more likely, like a rectangle as seen from an angle, rather than head-on."

The Board found that "consumers will perceive the matter as the Italian flag or a close simulation—i.e., something that gives the appearance or effect of the Italian flag."

Applicant originally described this feature as the Italian flag, but then insisted that consumers would not recognize it as the flag because the mark "merely includes only stylized flag elements, red and green vertical stripes, and is incomplete. There is no border around it and the middle section is merely a gap." Moreover, according to applicant, the mark is dominated by the words PROSCIUTTO and CARPEGNA.

The Board, however, observed that whether other elements of the mark are dominant is irrelevant. "We’re determining whether the mark includes a flag, or a simulation of a flag. Period. Unless the matter is so small or obscured that consumers wouldn’t even notice that it was included—which is not the case here—size does not matter."

The Board noted that the mark has a white background, thus explaining the "gap" in the middle. Furthermore, the relevant consumers "are consumers of 'Prosciutto from the Carpegna region of Italy,' which predisposes them to viewing the mark through an Italian lens."

Applicant pointed to the TMEP, which states that "if the flag design is used to form a letter, number, or design,” examining attorneys will not refuse registration. The Board noted, however, that the TMEP does not state "as part of a design." Reviewing the examples in the TMEP, the Board found most relevant this mark that the TMEP advised should be refused registration under Section 2(b):

In sum, the Board found that Examining Attorney Lisa Papale "correctly found that the mark includes an Italian flag, or simulation of an Italian flag, and correctly determined that the application must be refused under Section 2(b)."

Read comments and post your comment here.

TTABlogger comment: Looking through an Irish lens, it still looks like the flag of Italy.

Text Copyright John L. Welch 2026.

TTABlog Test: Is FOODANALYZER Generic for Food Sensitivity Testing Services?

The USPTO refused to register the proposed mark FOODANALYZER (on the Supplemental Register) for “Diagnostic testing and analysis services for medical diagnostic and treatment purposes, namely, for food sensitivity testing" on the ground of genericness under Sections 23(c) and 45 of the Trademark Act. Applicant Access Medical contended that because food itself is not analyzed, FOODANALYZER cannot be generic. The Board gave that argument limited weight: "Our analysis must focus on the broader record of how the relevant public actually perceives the term FOODANALYZER as a whole." How do you think this appeal came out? In re Access Medical Laboratories, Inc., Serial No. 97708719 (June 9, 2026) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

There was no dispute that the relevant genus was co-extensive with applicant's recitation of services, and the Board found the relevant consumers to be ordinary purchasers, users, or providers of such services. The question, then, was whether the relevant public understands FOODANALYZER "as the name of the category of services."

Applicant argued that the Office must prove genericness by "clear evidence," but the CAFC in PT Medisafe, clarified that it has “never held that the examining attorney must find genericness by clear and convincing evidence.” The court explained that “[a] potentially confusing reference to ‘clear evidence’ in the TMEP . . . has recently been clarified and no longer suggests a clear and convincing evidence burden. . . .” The correct standard is a preponderance of the evidence.

The Board found the record evidence to be "mixed." FOODANALYZER is not a dictionary term, nor is it found in in industry glossaries, trade publications, or media articles. There were some third-party references to applicant's branded services, and several third-party uses that appeared to be source-identifying. Applicant itself used the term in a trademark manner.

On the other hand, there was evidence of use of FOODANALYZER appearing in service lists alongside other apparently generic terms. But the "total volume of third-party evidence − approximately fifteen references, some of which describe a test with specifications identical to Applicant's own offering and using the same formatting ('foodAnalyzer') − does not establish that the relevant consuming public understands FOODANALYZER as the generic name for a class of food sensitivity testing services."

We acknowledge that FOODANALYZER bears a close descriptive relationship to the identified services and that “food” and “analyzer” individually have descriptive significance for those services. But descriptiveness, even high descriptiveness, is not tantamount to genericness. Applicant has conceded descriptiveness by seeking a registration on the Supplemental Register. The Examining Attorney must establish something beyond that, namely that the relevant public perceives FOODANALYZER primarily as a category name rather than as a source identifier, even a weak one. On this record, that additional showing has not been made.

The Board found that the limited record evidence "create[s] doubt about whether consumers would perceive [FOODANALYZER] as generic, or rather as capable of indicating source and thus eligible for registration on the Supplemental Register." Resolving that doubt in applicant's favor, the Board reversed the refusal.

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TTABlogger comment: The "mixed record" approach is probably the best get-out-of-jail-free card for genericness refusals.

Text Copyright John L. Welch 2026.

TTAB Affirms Bifusal of THE OHIO IPA for Beer: Geographically Descriptive and Confusable with OHIO PALE ALE for Beer

The Board affirmed two refusals to register the mark THE OHIO IPA for beer [OHIO disclaimed], finding the mark to be primarily geographically descriptive of the goods and likely to cause confusion with the registered mark OHIO PALE ALE, also for beer [ALE disclaimed]. Applicant TBK argued, among other things, that young people perceive an alternate meaning of “Ohio:” a slang for “weird, bizarre, or foolish.” The Board didn't buy it. In re TBK Operating Company, LLC, Serial No. 98551577 (June 9, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Geographical Descriptiveness:  Section 2(e)(2) prohibits registration of a “mark which … when used on or in connection with the goods of the applicant is primarily geographically descriptive of them . . . .” The test for determining whether a mark is primarily geographically descriptive is whether: 1. the mark sought to be registered (or a portion thereof) is the name of a place generally known to the public; 2. the source of the goods or services is the geographic region named in the mark; and 3. the public would make an association between the goods or services and the place named in the mark, that is, believe that the goods or services for which the mark is sought to be registered originate in that place.

Applicant TBK did not argue that Ohio is not a well-known geographic location. It asserted that “[c]onsumers will see the wording ‘THE’ as a source identifying term that changes the primary significance of the mark from the word ‘OHIO.’” However, there was no evidence to support that argument. As to the purported slang meaning of OHIO, again there was no evidence to support the attorney's argument.

Likewise, the inclusion of the term IPA did not overcome the refusal. "Generally, 'the presence of generic or highly descriptive terms in a mark which also contains a primarily geographically descriptive term does not serve to detract from the primary geographical significance of the mark as a whole.'" The Board found that the primary significance of THE OHIO IPA is geographic.

As the second and third elements of the Section 2(e)(2) test, the evidence from TBK’s website showed that its "production facility" for its beers and ales is in Middleburg Heights, Ohio. Therefore, the Board applied the presumption that consumers will make a goods/place association when the goods come from the place named. It concluded that the mark is primarily geographically descriptive, and affirmed the refusal to register on that ground.

Likelihood of Confusion: The goods are identical and therefore presumably travel through the same trade channels to the same classes of consumers. As to the marks, THE OHIO IPA and OHIO PALE ALE "look and sound alike only to the extent they contain the term OHIO. But, . . . in the beer context, there is evidence that 'IPA' signifies a sub-type of pale ale: India pale ale. So the respective marks have very similar meanings."

TBK argued that the Board gave too much weight to the word OHIO and not enough to THE. According to TBK, the word THE signifies that its “Ohio IPA” is "unique and the most outstanding or prominent choice for beer." The Board was unconvinced:

We fail to see how this essentially laudatory use of “THE” in Applicant’s mark, which points to the words that follow (Applicant’s “OHIO IPA” beer) distinguishes source from the seller of “OHIO PALE ALE” beer, which is essentially the same thing (an Ohio beer or pale ale). * * * In short, we find the marks, overall, to be similar, especially in meaning.

With all the relevant DuPont factors pointing one way, the Board had "no difficulty, on the record here, concluding that confusion is likely." And so it affirmed the Section 2(d) refusal.

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TTABlogger comment: Is this a WYHA? a half-WYHA?

Text Copyright John L. Welch 2026.

TTAB Affirms Reexamination Decision Ordering Cancellation of BAIA Registration for Non-use, Rejects Residual Goodwill Argument

The Board affirmed the USPTO's decision on reexamination, ordering cancellation of a registration for the mark BAIA & Design (shown below) for " Boats; Ships; Yachts" because Registrant Hanako failed to demonstrate use of the mark in commerce by the critical date (the date of filing its statement of use, or the last date for filing same). The petition for reexamination presented a prima facie case, shifting the burden to Hanako to show use of the mark. In re Hanako design SA, Reexamination No. 2024-101552R for Registration No. 7220244 (June 5, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Registrant Hanako failed to submit a "verified statement signed by someone with firsthand knowledge of the facts to be proved, setting forth … factual information … about the use of the mark in commerce … and how the evidence demonstrates use of the mark in commerce as of any relevant date” as required by Rule 2.93(b)(7). That failure alone justified affirmance of the reexamination decision.

Nonetheless, in the interest of completeness, the Board addressed Hanako's arguments. Hanako did not contend that it ever sold any goods under the mark. Instead, it argued that it succeeded to rights in the mark tracing back to the owner of a prior BAIA registration that was cancelled in 2012. However, the Board found four missing links in the chain-of-title.

Hanako also argued that, although it lacked evidence that it or its purported predecessors-in-interest used the registered mark, there were "multiple active U.S. listings for BAIA yachts" that "advertise the yachts for purchase." According to Hanako, this "secondary market" preserved "trademark significance" and "demonstrates that the … Mark remains visible to consumers and retains its goodwill." The Board rejected that argument.

While evidence of residual goodwill can serve to negate a charge of abandonment based on a mark having become the generic name for the goods, see Adamson Sys. Eng’g, Inc. v. Peavey Elecs. Corp., No. 92076586, 2023 TTAB LEXIS 454, at *18, the problem here is different: Registrant’s nonuse (and the lack of evidence that Registrant’s alleged predecessor-in-interest, Italproperties, ever used the mark). Alleged residual goodwill does not defeat nonuse. See, e.g., id. at *43-44; see also Azeka Bldg. Corp. v. Azeka, No. 91218679, 2017 TTAB LEXIS 123, at *29-32; Gen. Motors Corp. v. Aristide & Co., No. 91167007, 2008 TTAB LEXIS 18, at *14-15 (TTAB 2008). Nonuse remains nonuse.

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TTABlogger comment: For a discussion of the significance of residual goodwill, see Jerome Gilson and Anne Gilson LaLonde, The Zombie Trademark: A Windfall and A Pitfall, 98 TMR 1280 (November - December 2008).

Text Copyright John L. Welch 2026.