Precedential No. 8: Tribal Sovereign Immunity Inapplicable in Board Proceedings, Says TTAB

In a case of first impression, the TTAB ruled that the defense of tribal sovereign immunity is not available in Board proceedings. The Board therefore denied Respondent Sycuan Tribal Development Corporation's motion to dismiss a petition for cancellation (on the grounds of nonuse and naked licensing) of four registrations for certain word-and-design marks (one of which is shown immediately below) for cigarettes and other tobacco products. Philip Morris USA Inc. v. IP Services International Inc. and Sycuan Tribal Development Corporation, Cancellation No. 92063134 (September 18, 2026) [Precedential].

Respondent Sycuan's motion was originally styled a motion for summary judgment, but because the issue of tribal sovereign immunity is jurisdictional, the Board construed the motion as one seeking dismissal for lack of subject matter jurisdiction. Although the time for filing an FRCP 12(b) motion had passed before Sycuan was added as a party (after the subject registrations were assigned to it), the Board considered the motion on the merits, noting that "the Board must dismiss a proceeding if it lacks subject matter jurisdiction." See FRCP 12(h)(3).

The Board began by considering the CAFC's ruling in St. Regis Mohawk Tribe v. Mylan Pharm. Inc., in which the court held that tribal sovereign immunity does not apply to inter partes review ("IPR") proceedings before the Patent Trial and Appeal Board ("PTAB"). The CAFC observed that immunity generally "does not apply where the federal government acting through an agency engages in an investigative action or pursues an adjudicatory agency action.”

The CAFC found that an IPR proceeding "is neither clearly a judicial proceeding instituted by a private party nor clearly an enforcement action brought by the federal government," but rather a ‘hybrid proceeding’ with ‘adjudicatory characteristics’ similar to court proceedings, but more like a specialized agency proceeding in other aspects.

Subsequently, the CAFC ruled in Regents of the Univ. of Minn. v. LSI Corp that state sovereign immunity does not apply in IPR proceedings. The Board later ruled that state sovereign immunity does not apply in opposition proceedings before the TTAB. Mountain Gateway Ord., Inc. v. Va. Cmty. Coll. Sys. What about tribal sovereign immunity at the Board?

The Board first observed that federally recognized tribes may apply for registration under the Trademark Act and are subject to the same provisions of the Act as any other applicant, including those "subjecting applications to opposition and registrations to cancellation proceedings." The Board saw no reason to depart from its reasoning in Mountain Gateway just because this case involved tribal rather than state sovereign immunity. Cf. U. Minn. v. LSI, 926 F.3d at 1341 (“We conclude that state and tribal sovereign immunity do not differ in a way that is material to the question of whether IPR proceedings are subject to state sovereign immunity.”).

In TTAB proceedings, a plaintiff may challenge only an applicant's right to obtain a registration or a registrant's right to maintain a registration. "Board proceedings do not involve the exercise of personal jurisdiction over the registrant, the assessment of liability for monetary damages, and the imposition of injunctive relief. * * * Consequently, '[t]raditional civil action-type remedies are unavailable in opposition [or cancellation] proceedings.'"

The Board acknowledged that TTAB proceeding "share more characteristics with district court litigation than do IPR proceedings," including a broader range of discovery tools. However, although TTAB proceedings have "adjudicatory characteristics," they also operate "like a specialized agency proceeding" (noting various powers of the Director of the USPTO with respect to Board proceedings).

But the Board cannot exercise personal jurisdiction or impose monetary or injunctive remedies, and so "the tribe’s sovereignty over its tribal members and territories remains undiminished by the Board’s administrative inter partes proceedings. Such proceedings do not implicate the tribe’s 'ability to regulate within its own domain.'" 

Inter partes proceedings before the Board fulfill the trademark regulatory scheme (of which Sycuan availed itself when it acquired the involved registrations) by ensuring that only eligible marks are registered and maintained on the federal trademark register.

The Board observed that, if tribal sovereign immunity were recognized as a defense at the TTAB, "Nothing would prevent a tribe 'from lending its sovereign immunity to private parties, as the tribe attempted to do in St. Regis. Such manipulation would undo Congress’ central quality control mechanism in creating post-grant administrative proceedings.'"

If Respondents’ position were adopted, not only could Indian tribes shield their federal applications and registrations from challenge, but non-tribal entities could also use the doctrine to insulate invalid registrations from removal from the register by assigning them to a tribe or an arm of the tribe. The danger of such gamesmanship is plainly evidenced by Respondents’ conduct here, stretching so far as to attempt to blanket itself in immunity even prior to the assignment from IP Services to Sycuan.

In short, "Respondents’ attempt to invoke tribal immunity would contravene the very letter and purpose of the federal Trademark." And so, the Board denied the motion to dismiss.

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TTABlogger comment: This proceeding was commenced in 2016. The subject motion was filed in 2018. And it's still not over! In the face of the cited precedents, Respondent Sycuan was up the creek with not much of a paddle.

Text Copyright John L. Welch 2026.

TTABlog Test: Are Plastic Bags Related to Paper Labels Under Section 2(d)?

The USPTO refused to register the mark MAXXOUT for "General purpose plastic bags; Merchandise bags," deeming confusion likely with the registered mark MAXOUT! for "Multi-layer pressure sensitive paper labels." The marks are too close for comfort, but what about the goods? How do you think this came out? In re Sol NY Corp., Serial No. 98587411 (September 16, 2026) [not precedential] (Opinion by Judge Angela Lykos).

Applicant Sol NY feebly argued that the extra letter “X” and the exclamation point in the cited mark distinguish the marks in appearance and commercial impression. The Board was not convinced: "Both marks not only sound the same but also look virtually identical. Each mark is comprised of two words, beginning with the word “max” or its phonetic equivalent “maxx” and ending with the word “out.” This makes each mark the same in structure and cadence."

Overall, the marks are virtually identical in appearance and identical in sound, connotation and commercial impression. Consumers “have but dim recollections from having previously seen or heard one or the other of the involved marks.”

As to the goods, Sol maintained that they are unrelated because they serve different functions: mass-market bags "purchased by retail establishments and ultimately used by consumers for bought items," versus registrant’s "highly specialized labels with multiple layers or pages designed to provide more information than can fit on a standard single-layer label and often used to affix detailed regulatory or instructional information directly onto products or their packaging." The Board was unmoved: "applicant's general purpose bags are not limited to any particular use. Registrant's labels are "unrestricted as to industry or application meaning that while the labels themselves are specific in nature, they are not limited to any specialized or technical uses as Applicant contends."

Furthermore, the evidence showed that "it is not uncommon for third-parties to offer via their business-to-business websites 'general purpose plastic bags' or 'merchandise bags' on one hand, and pressure sensitive paper labels on the other."

Sol claimed that its goods are ordinarily sold through retail channels, including convenience stores, smoke shops, small retail outlets, and general-merchandise suppliers, and that the classes of consumers include retailers and wholesalers, with the general public serving as the ultimate end users. In contrast, the cited registration’s goods are “multi-layer pressure-sensitive paper labels" that are specialized industrial or commercial products rather than consumer goods. Irrelevant, said the Board.

Neither the registration nor the application contains any limitations on the channels of trade, or classes of purchasers. As such, Applicant’s and Registrant’s goods presumptively move in all normal trade channels and to all types of consumers that purchase such goods. * * * We must therefore assume that Registrant’s goods are available to ordinary consumers of such products at all price points. * * * While some of these consumers might be highly sophisticated and knowledgeable, others may not. * * * Basing our analysis “on the least sophisticated potential purchasers,” Stone Lion, 746 F.3d at 1325, this DuPont factor is neutral.

https://www.blogger.com/comment/fullpage/post/9072179/6629202388663149644

With no factors weighing against a likelihood of confusion, the Board concluded that confusion is likely, and so it affirmed the refusal.

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TTABlogger comment: Do you think that confusion is likely in the real world?

Text Copyright John L. Welch 2026.

TTABlog Test: Is CODEBOX Merely Descriptive of Electronic Lock Boxes?

The USPTO refused to register the word-plus-design mark shown immediately below, for "Lockboxes, namely, digital lockboxes; Digital deadbolts and digital door locks," absent a disclaimer of CODEBOX. Applicant argued that CODEBOX is not a common descriptive term in the industry, that the mark is unitary, that the commercial impression engendered by the mark is ambiguous, that the term CODEBOX is incongruous, and that "some imagination, thought, or multistage reasoning [is required] . . . to associate the mark with Applicant’s goods." How do you think this appeal came out? In re CodeBox, Inc., Serial No. 98597114 (September 18, 2026) [not precedential] (Opinion by Judge Robert Lavache).

Examining Attorney Valerie Kaplan submitted internet evidence showing that the word CODE is often used to describe a feature and/or characteristic of the goods: using a code to open the lock box. Applicant's specimen show that the goods include instructions to "Enter [the] Code" to open the lockbox. As to the word "box," some of the same evidence used wording such as "combination key lock box," "combination lock box," "key box," and "lock box" to refer to lockable storage devices for holding keys and other items for accessing a property.

The Board agreed with the applicant that "the record does not establish widespread, or even significant, use of 'CODEBOX' or 'CODE BOX,' in connection with digital lockboxes or any of the other identified goods." However, the fact that applicant may be the first or only user of a proposed mark does not prove that the mark is not descriptive.

[T]he evidence shows that CODE and BOX are commonly used to describe significant features or aspects of lockboxes. Simply combining CODE and BOX, and omitting the space between them, does not change the meaning of these terms or the overall impression they create.

Applicant asserted that CODEBOX is ambiguous and incongruous, but failed to identify "what the relevant incongruity is or explain[] the multistage reasoning that would be required to determine the significance of the term in connection with Applicant’s goods." The Board had "no doubt that 'someone who knows what the goods . . . are will understand the mark to convey information about them.'"

Having found that the term CODEBOX is merely descriptive of the goods, the Board considered applicant's argument that the proposed word-plus-design mark is "unitary," and therefore does not require disclaimer of the literal portion. According to applicant, "the coloring [in the mark] unifies the design by visually connecting the dark blue ‘E’ in the first syllable with the dark blue rectangular background surrounding the second syllable, ‘BOX,’ creating the overall impression of a lockbox with an open shackle." The Board was unmoved:

[W]e agree with the Examining Attorney that nothing about the meaning of the words or their relation to the other elements in the mark renders these elements so merged together, either physically or conceptually, that they would be perceived as inseparable. Nor does the mark otherwise present any obvious incongruity between the literal portion and design portion of the mark that would render the mark unitary.

And so, the Board upheld the disclaimer requirement.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2026.

Changes in Mark and Services Fail to Avoid Claim Preclusion in PET-AGREE GROOMING SUPPLIES Opposition

The Board sustained this opposition to registration of the mark PET-AGREE GROOMING SUPPLIES for certain wholesale supply store services for pet grooming supplies, finding that claim preclusion (a/k/a res judicata) applied, based on an earlier opposition between the same parties. Applicant PAGS had filed a second application for a mark that slightly differed from its first, successfully opposed mark, for narrowed services, but those changes were insufficient to avoid the prior judgment. Mars, Incorporated v. PAGS Inc., Opposition No. 91263504 (September 16, 2026) [not precedential] (Opinion by Judge Angela Lykos).

In 2019, the Board sustained Opposer Mars' opposition to registration of the mark PET AGREE for “wholesale and retail supply store services featuring pet grooming supplies; online wholesale and retail services featuring pet grooming supplies," concluding that confusion is likely with the registered mark PEDIGREE for pet food. [pdf here]. PAGS appealed to the CAFC but then dropped its appeal and instead filed this new application.

In the new application, the mark was changed to PET-AGREE GROOMING SUPPLIES and the services were narrowed to the following: "wholesale supply store services for pet grooming supplies in the business to business market directed to pet professionals and commercial pet groomers, expressly excluding pet food, pet treats and products fed to pets and animals and excluding bowls, cups and containers for pet food, pet treats and products fed to pets and animals." Mars opposed the new application on the same grounds (likelihood of confusion and dilution) as in the prior opposition but added claim of claim preclusion (res judicata) and issue preclusion (collateral estoppel) based on its prior successful opposition.

The Board observed that "[a] second suit is barred by res judicata or claim preclusion if (1) the parties (or their privies) are identical;(2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the claim in the first proceeding." PAGS conceded that the first two prongs were met.

Thus, Opposer’s res judicata claim hinges on whether the current Section 2(d) claim is based on the same set of transactional facts as in the Prior Opposition; in other words, whether Opposer’s claims comprise the same “core [or nucleus] of operative facts” or are “based on the same, or nearly the same, factual allegations” as those asserted in the Prior Opposition.

In order to make that determination, the Board considers (1) whether the marks involved in the prior proceeding are the same marks, in terms of commercial impression, as the marks involved in this proceeding; and (2) whether the evidence of likelihood of confusion between the marks in the prior proceeding would be identical to the evidence of likelihood of confusion in this proceeding. The Board answered both of those inquires in the affirmative.

As to the marks, the Board found that PAGS' current mark, PET-AGREE GROOMING SUPPLIES, creates the same, continuing commercial impression as its earlier mark PET-AGREE, noting that the only source-indicating element in its current mark is PET-AGREE since the newly added wording GROOMING SUPPLIES is generic.

As to the services, the Board found that PAGS' current identification of services does not present a new set of transactional facts for res judicata purposes. "The services identified in the Prior Opposition and those in the present application are in part legally identical. This is because the amended identification merely narrows, rather than changes, the prior services by removing the retail services and by adding language directed to the business-to-business market, pet professionals and commercial pet groomers."

Furthermore, "the additional language expressly excluding Opposer’s goods of 'pet food, pet treats and products fed to pets and animals and excluding bowls, cups and containers for pet food, pet treats and products fed to pets and animals,' does nothing to change the core nucleus of facts." And although there are not limitations on channels of trade and classes of purchasers, "none of Opposer’s registrations have now been restricted. We therefore continue to apply the well-established principle that Opposer’s goods presumptively move in all normal trade channels and to consumers that purchase such goods."

In addition, while PAGS' limited its purchasers to "presumably those who are more knowledgeable and sophisticated, Mars' registrations remain unrestricted as to purchasers and price. "While some 'pet professionals and commercial pet groomers' might be highly sophisticated, knowledgeable and discriminating about purchases, others may not. Where the purchasers consist of both professionals and the public, the standard of care that applies is that of “the least sophisticated potential purchasers."

Finally, we emphasize the point made earlier that the substantial duplication of the testimonial and documentary evidence in the two proceedings further confirms that Opposer’s likelihood of confusion claims rest on the same operative facts.

And so, the Board sustained the opposition on the ground of claim preclusion.

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TTABlogger comment: It's not that easy to end-run a prior adverse judgment after a full trial on the merits.

Text Copyright John L. Welch 2026.

TTABlog Test: Are these UPSTREAM-Formative Marks Confusable for Insurance Agencies?

The USPTO refused to register the marks UPSTREAM LIFE in standard characters and in the logo form shown first below [LIFE and EST 1912 disclaimed], concluding that confusion is likely with the registered mark shown second below [INVESTMENT PARTNERS disclaimed], both marks for, inter alia, "insurance agencies." Applicant was swimming upstream from the git-go, since the services overlap and those overlapping services are presumed to be offered in the same trade channels to the same classes of consumers. What about the marks? Will applicant sink or swim? In re Upstream Life Holdings, Inc., Serial Nos. 98778253 and 98778258 (September 15, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

The Board noted that "when evaluating a mark that consists of words and a design, 'the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.'" Applicant did not dispute that UPSTEAM is the dominant term in each mark.

Since applicant's mark UPSTREAM is in standard character form, the Board must consider the possibility that the word UPSTEAM could be displayed more prominently than the word LIFE. In fact, that's how applicant uses the mark, as shown in the composite drawing above. As to sound, the Board observed that consumers have a tendency to shorten marks, and are likely to emphasize the word UPSTREAM, and not LIFE or INVESTMENT PARTNERS.

There was no evidence that UPSTREAM has any conceptual significance with respect to insurance agency services or insurance services generally. "Thus, [t]o the extent [UPSTREAM] has a meaning in connection with [insurance agency services], it would have the same connotation in Applicant’s mark as in Registrant’s mark.'"

The Board concluded that these marks are similar in appearance, sound, meaning, and commercial impression, and so the first DuPont factor supported the conclusion that confusion is likely.

As to applicant's composite mark, applicant contended that "the overall appearance of the respective marks are sufficiently distinct such that consumer confusion between the marks is highly unlikely." The Board disagreed.

In the context of Applicant’s composite mark, the chevron design just as easily merely reinforces the meaning of, and directs attention to, the term UPSTREAM – as does the triangle river design in the cited mark. The disclaimed phrase EST 1912, to the extent consumers notice it due to its diminutive size and placement, merely describes when Applicant or its predecessor began operating. Likewise, the disclaimed term LIFE is almost imperceptible.

Again, the Board found the marks to be similar in appearance, sound, meaning, and commercial impression, and so, the first DuPont factor supported this refusal.

There was no evidence "that ordinary consumers exercise any greater than normal care in selecting an insurance agency, as opposed to an insurance underwriter or policy." "Board precedent requires the decision to be based on the least sophisticated potential purchasers.” Stone Lion, 746 F.3d at 1325."

Conclusion: the Board affirmed the refusal

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TTABlogger comment: Applicant was sunk. Are both appeals WYHA?s?

Text Copyright John L. Welch 2026.

TTABlog Test: Is SNOWY THE MOUSE for Plush Toys Confusable with SNOWY for Stuffed Toys?

Hey kids, here's one for you! The USPTO refused to register the mark SNOWY THE MOUSE for "plush toys; jigsaw puzzles" [MOUSE disclaimed], concluding that confusion is likely with the registered mark SNOWY for "stuffed toys." Applicant Farm to Fun argued that SNOWY is descriptive of an owl and, based on registrant’s specimen of use, SNOWY is used as the name of an “Animated Snowy Owl,” not a stuffed toy. Now, even a child can tell an owl from a mouse! How do you think this appeal came out? In re Farm to Fun LLC, Serial No. 98753836 (September 14, 2026) [not precedential] (Opinion by Judge Wendy B. Cohen).

Since "stuffed toys" are also known as "plush toys," the involved goods are in-part identical. The Board presumed that these identical goods travel through the same channels of trade to the same classes of consumers. These factors "not only weigh heavily in favor of finding a likelihood of confusion but also reduce the degree of similarity between the marks necessary to find a likelihood of confusion."

Farm to Fun seemed to claim that the proposed mark is famous, based on "industry recognition," but proof was lacking. However, "[e]ven if Applicant had established that its own mark is famous, that alone would not support registration of the mark." That is, 'fame of either mark increases the likelihood of confusion by making it more likely that purchasers will remember the famous mark and think of it when encountering similar goods sold under a similar mark. Of course, such likelihood of confusion is only a reason to refuse a new registration, not grant one."

As to Farm to Fun's arguments regarding the descriptiveness of SNOWY, the Board must presume that the cited mark is at most suggestive of the goods. "[A]n attack on the validity of registrant’s registration . . . is not permitted in an ex parte appeal proceeding." And even if the cited mark is "inherently weak, that is not fatal to a finding of likelihood of confusion because even weak marks are entitled to protection against confusion."

With regard to argument that registrant's specimen of use was improper (showing an animated owl, not a stuffed toy), "Applicant did not submit a copy of the specimen during prosecution and we do not take judicial notice of a registration file in an ex parte appeal." Moreover, "a claim that a . . . specimen of use does not demonstrate trademark usage would be an impermissible collateral attack on the cited registration."

Turning to the marks, the Board observed that "[g]enerally, first terms in marks tend to contribute more than terms that follow in creating a mark’s commercial impression, especially when the following terms are disclaimed, descriptive terms, as in the case of the term MOUSE in Applicant’s mark." "Although Applicant’s mark contains additional terms, the dominant portions of the marks are identical in appearance, sound, connotation and commercial impression."

Applicant’s and Registrant’s broadly identified goods encompass legally identical stuffed or plush toys and the general impression conveyed by both Applicant’s mark SNOWY THE MOUSE and the cited mark SNOWY is likely to be that of a stuffed toy—possibly a stuffed mouse—named “Snowy.”

Farm to Fun's reliance on its intended use of SNOWY THE MOUSE as a character name "used across books, animation, toys, puzzles and digital media" and on registrant’s purported actual use as a descriptive term for “a single toy product” missed the mark. "The relevant comparison is between the marks as they appear in the application and registration, not on extrinsic marketplace uses."

The Board concluded that, "when comparing the marks overall, they are similar in sound, appearance, connotation and commercial impression." None of the DuPont factors supported Farm to Fun's position, and so the Board affirmed the refusal.

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TTABlogger comment: Well, kids, how did you do? Would you have appealed?

Text Copyright John L. Welch 2026.

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

Here are three Section 2(d) appeal decided on the same day. Keep in mind the assertion by a now-retired TTAB judge that one can predict the outcome of a Section 2(d) appeal 95% of the time by looking at just the marks and the goods/services. How do you think these appeals came out? [Answers in first comment].

In re Rivers IP Holdings, LLC, Serial No. 97811850 (September 11, 2026) [not precedential] (Opinion by Judge Elizabeth K. Brock). [Section 2(d) refusal of the mark shown below [TACO disclaimed] for "Fast casual take away restaurant services featuring Mexican food served to patrons in a casino," in view of the registered mark SUERTE for "Restaurant services; Bar services; Catering services."]

In re MAP Elite & MAP Prospects LLC, Serial No. 98651023 (September 11, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor). [Section 2(d) refusal of the mark shown below [ADVANCED PLAYER disclaimed] for “sports training services in the field of hockey training programs; sports training services in the field of competitive hockey player development and training programs," in view of the registered mark APX for "Consulting services in the fields of fitness and exercise; physical fitness and exercise studio services, namely, providing group and individual exercise, pilates and aerial pilates instruction, classes, equipment, and facilities; providing physical fitness and exercise studio services, namely, pilates and aerial pilates instruction, classes, training techniques, pilates and aerial pilates apparatuses, equipment and facilities; health club services, namely, providing instruction and equipment in the fields of fitness and exercise."]

In re Silver & Silver, P.A., Serial No. 97772966 (September 11, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin). [Section 2(d) refusal of the mark shown below [INJURY LAW WWW.SILVERINJURYLAW.COM disclaimed] for "Providing legal services in the field of personal injury, car accidents, motorcycle accidents, truck accidents, wrongful death, bicycle accidents, boating accidents, criminal defense, DUI, injuries to children, dog bites, premises liability, slip and fall, workplace accidents, medical malpractice, catastrophic injuries, product liability," in view of the registered mark SILVER LAW GROUP for "legal services" [LAW GROUP disclaimed].]

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

Text Copyright John L. Welch 2026.

Precedential No. 7: Law Firm owns BIRTH JUSTICE logo, not the Associate who Conceived the Brand

In a dubiously precedential ruling, the Board sustained a law firm's opposition to registration of the composite mark shown below, for "legal services, namely, providing legal consultation and research services, and litigation assistance and strategy services relating to birth injury," ruling that Applicant Emily Grace Thomas, who conceived the mark before employment by the firm, was not the owner of the mark. Olsman, MacKenzie, Peacock & Wallace, P.C. v. Emily Grace Thomas, Opposition No. 91272167 (September 10, 2026) [precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

It took the Board 15 pages to set out the factual background for its decision. The ruling broke no new legal ground, and so its precedential value seems to be minimal, at best.

The Board began by refusing to consider Applicant Thomas's implied license defense because it was neither pleaded nor tried by consent. [Will Ms. Thomas seek review by way of civil action, where she can raise this additional issue? -ed.].

The Board began by observing that "[o]nly the owner of a mark may file an application to register it under Section 1(a) of the Trademark Act. 15 U.S.C. § 1051(a)(1)." The question for the Board was "whether Applicant, in her individual capacity, owned the Birth Justice Logo for the identified services as of the December 16, 2020 application filing date."

Thomas conceived the "brand" in January 2018 and registered the birthjustice.com domain, prior to her employment by opposer in February 2019. "It is well settled that merely designing or inventing a symbol does not create trademark rights. See Hole In 1 Drinks, 2020 WL 859853, at *10; see also J. Thomas McCarthy, 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 16:11 (5th ed. June 2026 Update). "Nor does registering a domain name, standing alone, confer trademark rights. See Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1052 (9th Cir. 1999). 

Thomas did not dispute that she was an employee, an "associate attorney," of opposer. "Generally, 'the mere suggestion by … an employee during or before entering employment that the employer market its product under a particular designation cannot bestow any proprietary right in said trademark upon the employee.' Scranton Plastic Laminating, Inc. v. Mason, No. 91053914, 1975 WL 21259, at *9 (TTAB 1975)." There was no written or oral agreement between the parties regarding ownership of the mark.

Relying on the RESTATEMENT (THIRD) OF AGENCY, the Board had "no doubt" that Thomas was acting within the scope of her employment "when she participated in the development of the Birth Justice Logo and subsequently used the logo."

Opposer is a law firm, and promotional work for a law firm is squarely within the scope of an attorney’s employment. The development of a mark to promote the firm’s legal services in the birth-injury field is exactly that—promotional work for the firm, and Applicant was hired for her birth‑injury expertise. She arrived at the firm with a concept for a logo, but the logo had not been finalized, let alone ever used in connection with any goods or services. Applicant and others at the Olsman firm, in conjunction with a graphic design firm retained and paid-for by Opposer, took Applicant’s idea for a logo and developed that idea into a final logo design that Applicant and the firm used to promote Applicant’s practice-area specialty at the Olsman firm. It was natural and appropriate for Applicant to provide design input. Indeed, this is consistent with the input the Olsman firm sought from Applicant on birth-injury marketing matters generally.

Because the Birth Justice Logo was created and used within the scope of Thomas’s employment, "there is a presumption that any use of the Birth Justice Logo “‘during [the relevant] period .... was done so [by Applicant] as [an employee of] opposer, on behalf of opposer, and in furtherance of opposer’s business; and any goodwill created by such use inured to opposer’s benefit.’” DowntownDC Bus. Improvement Dist., 2024 WL 4449409, at *15 (quoting Scranton Plastic Laminating, 1975 WL 21259, at *9).

The Board concluded that Thoms failed to rebut opposer’s prima facie case, and so it sustained the opposition.

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TTABlogger comment: The Board noted that "Applicant appears to have performed exceptionally well as an attorney at the Olsman firm, including obtaining 'two of the biggest settlements in the history of the Olsman firm[,]' which resulted in Opposer 'receiv[ing] compensation from these two cases far in excess of any of the funds they may have fronted Applicant for her cases.'"

Text Copyright John L. Welch 2026.

Failure to Prove Standing Leads to Denial of ZOCY Cancellation Petition

Shanghai Y&A Garment petitioned for cancellation of a registration for the mark ZOCY for "jump ropes" on the ground of nonuse, but it failed to prove its entitlement to a statutory cause of action (i.e., its "standing"). Shanghai alleged certain facts in the petition for cancellation but submitted no evidence to support its claim of standing. Shanghai Y&A Garment Co., Ltd. v. Mango Republic LLC, Cancellation No. 92086279 [not precedential] (Opinion by Judge Robert Lavache).

In the petition for cancellation, Shanghai alleged that it has a "real interest" in this proceeding and a reasonable belief that it is being and will be damaged by the registration because it sells various products, including jump ropes, in e-commerce under the mark ZOCY. It also alleged that it plans to file an application to register the ZOCY mark for jump ropes. Shanghai repeated those allegations in its brief on appeal. However, it failed to properly submit any evidence in support of those allegations, and, as the Board noted, "[a]ttorney argument is no substitute for evidence.")

Again, the record here consists only of Respondent’s involved registration file and the parties’ pleadings. And Respondent’s answer does not contain any admissions that would establish Petitioner’s entitlement to a statutory cause of action. On the contrary, Respondent specifically denies Petitioner’s allegations concerning entitlement.

The requirement to establish an entitlement to a statutory cause of action is "a low threshold, intended only to ensure that the plaintiff has a real interest in the matter, and is not a mere intermeddler." "Nonetheless, given Petitioner’s failure to provide any evidence of its entitlement to a statutory cause of action, let alone establish a preponderance of the evidence, we find Petitioner unsuccessful in crossing even that low threshold."

And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: Could opposer cure the lack of evidence problem by instituting a civil action for review under Section 1071, wherein additional evidence may be introduced into the record?

Text Copyright John L. Welch 2026.

TTABlog Test: Is KARDASHIAN-JENNER for Online News Services Confusable with KARDASHIAN JENNER PRODUCTIONS for Entertainment Services?

The USPTO refused to register the mark KARDASHIAN-JENNER for "Providing information, news, and commentary in the field of current events via the Internet; Providing current event news via a global computer network," concluding that confusion is likely with the registered mark KARDASHIAN JENNER PRODUCTIONS for "Entertainment services, namely, multimedia production services; production of audio and video recordings; creation, development and production of entertainment and pop culture content" [PRODUCTIONS disclaimed]. The marks are "very similar,' but Applicant Brenda Core contended that her services are "specific and limited," "distinctive from those of the cited registration," and "cannot be mistaken with providing current event news information and content." How do you think this came out? In re Brenda Core, Serial No. 97608134 (September 8, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Examining Attorney Robert Clark relied on use-based third-party registrations to show the relatedness of the involved services. He also provided internet evidence from Buzzfeed and Vice Media, which offer both information on current events and information relating to culture. Consequently, the Board found the services to be related under the second DuPont factor.

Since there were no limitations in the application and cited registration as to channels of trade, the Board presumed that the respective services travel in the normal trade channels for those services, to the all the usual prospective consumers. "The consumer[s] of Applicant’s and Registrant’s services are those consumers who consume news and pop culture information and media and are interested in news and entertainment." [Is the Board saying that the consumers overlap? -ed.] The Board noted that, because the services are not legally identical, "there is no presumption of trade channel overlap." Due to lack of evidence as to channels of trade, the Board found the second DuPont factor to be neutral. [If the USPTO fails to prove that the services travel in the same channels, should that be dispositive in favor of applicant? -ed.].

Considering the marks in their entireties, the Board found applicant’s mark to be "very similar" to registrant’s mark in sound, appearance and meaning. Moreover, "[b]ecause of these similarities, Applicant’s and Registrant’s marks engender similar overall commercial impressions."

And so, the Board affirmed the refusal.

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TTABlogger comment: What do you think? The USPTO also refused registration under the false suggestion of a connection portion of Section 2(a), but the Board declined to reach that issue. In light of the channels of trade issue, maybe the Board should have affirmed the 2(a) refusal and skipped the 2(d) refusal.

Text Copyright John L. Welch 2026.