Precedential No. 4: TTAB Affirms Refusal of WEMBY for Athletic Apparel - False Connection with and Lack of Consent from the real Wemby

The Board upheld a refusal to register the proposed mark WEMBY for "athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms," finding that the mark falsely suggests a connection with NBA star Victor Wembanyama under Section 2(a), and that applicant lacked a consent from Mr. Wembanyama under Section 2(c). Applicant mainly argued that, based on the constructive first use date of its application (January 12, 2023), it should be deemed the prior user of WEMBY, since Wembanyama was little known before being drafted by the San Antonio Spurs in the summer of 2023. In re Wemby Corporation, Serial No. 97752244 (June 24, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

Section 2(a) - False Connection: Section 2(a), in pertinent part, bars registration of a mark that "consists of or comprises . . . matter which may . . . falsely suggest a connection with persons . . . ." To establish that a proposed mark falsely suggests a connection with a person or institution, it must be shown that:

• (1) The mark is the same as, or a close approximation of, the name or identity previously used by another person or institution; 
• (2) The mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution; 
• (3) The person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and 
• (4) The fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.

In re Foster, 136 F.4th 1090, 1094 (Fed. Cir. 2025) [Emphasis added].

There was no dispute as to the third element of the test: Victor Wembanyama is not connected with the applicant. As to the first element, the evidence established that "Wemby" is Victor Wembanyama's nickname. The Board found that "the record is clear that WEMBY was previously used to identify Mr. Wembanyama," including articles reflecting "the public attention accorded to Mr. Wembanyama at that time and indicate an excitement for the upcoming 2023 NBA season and potential sensation he would make as a top draft pick."

As to the second element, the Board considered all the evidence submitted "during the examination process," as approved by the CAFC in Foster, and found that WEMBY "is a well-recognized nickname that points uniquely and unmistakably to Mr. Wembanyama."

As to the fourth element, the Board concluded that "[g]iven Mr. Wembanyama’s demonstrated fame as an NBA player and his inherent and demonstrated relationship with athletic apparel like that described in the application, . . . consumers would presume a connection with Mr. Wembanyama upon encountering use of WEMBY on these goods."

And so, the Board found that applicant’s mark WEMBY falsely suggests a connection with Mr. Wembanyama, as prohibited under Section 2(a) of the Act.

Section 2(c) Consent Section 2(c) of the Act prohibits registration of a mark that "[c]onsists of or comprises a name … identifying a particular living individual except by his written consent . . . ." “[T]he Board has set forth two ways to show that a ‘name’ identifies a particular living individual for purposes of Section 2(c): 1) if the person is so well known that the public would reasonably assume the connection, or 2) if the person is publicly connected with the business in which the mark is being used." The Board found that both elements of the test were met here.

First, "Mr. Wembanyama’s fame as the 2023 NBA first draft pick, and reference to him as 'Wemby' is such that the public would reasonably assume a connection between Applicant’s WEMBY mark and Mr. Wembanyama." Second, "he has also been publicly associated with goods identified in the application, including his debut of a new Nike shoe and the sale of sports apparel bearing his name." Moreover, it is common knowledge that the NBA is well-known for marketing athletic apparel. "Thus, as an NBA basketball player, Mr. Wembanyama is “publicly connected” with the business of Applicant’s identified athletic apparel and footwear."

And so, the Board found that applicant’s proposed mark, WEMBY, identifies a particular living individual, Victor Wembanyama, whose written consent is not of record. Therefore, the Board affirmed the Section 2(c) refusal.

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TTABlogger comment: The discussion about prior use is of questionable relevance. The TTAB in its (non-precedential) Foster decision stated: "[P]rior use in the context of a false suggestion of a connection is not a question of priority as contemplated in a likelihood of confusion context. Indeed, prior use 'may be found when one’s right to control the use of its identity is violated, even if the name claimed to be appropriated was never commercially exploited as a trademark or in a manner analogous to trademark use.'" The CAFC in Foster did not consider this point but instead ruled on whether evidence after the filing of the application could be considered for purposes of the Section 2(a) refusal. The CAFC said yes.

The Board here found it unnecessary to consider the issue of intent, but for this observer it is difficult to imagine that the applicant came up with his mark out of the blue.

Text Copyright John L. Welch 2026.

Precedential No. 3: Ownership of Lapsed Registration No Justification for New Application for Same Mark and Goods/Services

Foreign owners of registrations based on Section 44 or 66 should pay close attention to this decision. The Board affirmed a Section 2(d) refusal of the mark TOUCH MOBILE for telecommunications equipment and telecommunications services  [MOBILE disclaimed], concluding that confusion is likely with the registered mark MOBILE TOUCH for "Text and numeric wireless digital messaging services; Broadcast communication services, namely, transmitting text messages to designated recipients for others." Applicant TextNow owned a registration for TOUCH MOBILE for the same goods and services, but while the new application was pending TextNow failed to file its Section 8 Declaration. The cited registration had issued prior to the lapsed registration, but the Board ruled that their coexistence was irrelevant to the examination of the new application. In re TextNow Inc., Serial No. 98231457 (June 23, 2026) [precedential] (Opinion by Judge Jessica B. Bradley).

TextNow's prior registration issued on October 17, 2017 under Section 44(e) of the Trademark Act. That registration was cancelled by operation of law as of the end of the sixth anniversary of the registration date, October 17, 2023, for failure to file a Declaration of Use and/or Excusable Nonuse Under Section 8 of the Act. TextNow filed its new application on October 19, 2023, during the prior registration's grace period.

TextNow contended that ownership of its cancelled registration, which (it claimed) remained in force at the time its new application was filed, was relevant to the registrability of its identical mark of the new application, specifically under the doctrine of res judicata and pursuant to the Board's Strategic Partners decision. The Board disagreed.

The Board distinguished this case from Strategic Partners because there, the prior registration was still in force when the new application was filed, and the prior registration was more than five years old and could not be challenged on the ground of likelihood of confusion. Moreover, in Strategic Partnersthe mark of the prior registration had been in actual use, whereas here it appeared that TextNow's mark had never been used. Thus, TextNow's mark and the cited mark had never co-existed in the marketplace.

Simply put, co-existence of marks on the trademark register does not equate to co-existence in the marketplace, and the notion of “co-existence” of these marks specifically in the marketplace is illusory where the Prior Registration and current application are both based on Section 44(e), not use in commerce.

The Board concluded that the six years of co-existence between TextNow's lapsed registration and the cite registration "holds less weight than that in Strategic Partners."

TextNow asserted that the examining attorney "would presumably have determined that the mark TOUCH MOBILE is registrable if the Examining Attorney had had a shorter backlog of applications to review and had therefore considered [Applicant’s] application just five (5) months after its filing date rather than about 7-1/2 months after its filing date [i.e., before Applicant’s Prior Registration was cancelled]." The Board was unmoved.

Applicant had already missed the October 17, 2023 deadline to file a Section 8 Declaration to maintain its Prior Registration, and subsequently failed to file a Section 8 Declaration by the April 17, 2024 grace period deadline. As a result, the current application did not overlap with the term of the Prior Registration. While the timing is unfortunate for Applicant, the maintenance of its Prior Registration was entirely within its control.

As for TextNow's res judicata argument, the Board pointed out that re judicata does not apply in the prosecution context, and "there is no rule that a prior registration entitles [an applicant] to another registration." In re Country Oven, Inc., 2019 TTAB LEXIS 381, at *23 (TTAB 2019).

Turning to the Section 2(d) refusal, the Board found the involved marks to be "highly similar and this weighs heavily in our analysis." The goods and services are in-part identical or closely related, and the trade channels and classes of consumers are presumed identical or overlapping. The factors regarding the strength or weakness of the cited registration and TextNow's prior registration (factor 13) were deemed neutral

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Foreign owners of non-use based U.S. registrations may want to file new applications earlier than later when they know their marks have not been used in the U.S., so that examination of the new application will occur before the prior registration lapses.

Text Copyright John L. Welch 2026.

TTAB Reverses Specimen Refusal: User Manual and Calibration Kit Suffice for Agricultural Machinery

The Board overturned a refusal to register the mark ONETOUCH for "Agricultural machines, namely, aerators, seeders, spreaders," finding that Applicant Stinger's specimens of use were acceptable. The examining attorney maintained that the specimens did not show use of the mark in connection with the identified agricultural equipment, but rather with a separately “downloadable software application." Stinger pointed to the user manual and calibration kit that accompanied each machine. In re Stinger Equipment, Inc., Serial No. 97662066 (June 24, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Rule 2.56(b)(1), requires that the specimen “show use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods Stinger did not disagree that ONETOUCH is used in connection with the app, downloadable from an “app store” on Stinger’s website, which enables users to remotely operate and/or control aspects of the agricultural machines. In other words, the app is needed to operate the machine.

In assessing specimens, the Board considers not only the information discernible on the specimen itself, but also “any explanations offered by Applicant clarifying the nature, content, or context of use of the specimen that are consistent with what the specimen itself shows.”

The specimens, which bear the ONETOUCH mark and comprise a user manual for the machine’s calibration system and a ONETOUCH calibration kit, together with Applicant’s explanation, make it clear that ONETOUCH identifies not just an “app” that has software, but also an integral aspect of Applicant’s agricultural machines, without which the machines cannot be operated as designed. The fact the specimens suggest that ONETOUCH hypothetically also could serve as a mark for downloadable software as well does not detract from the fact that ONETOUCH is being used as a mark for an operating system integral to Applicant’s agricultural machines.

The Board was satisfied that "the asserted mark has been used as a trademark with respect to the goods named in the application." and so it reversed the refusal.

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TTABlogger comment: So are these two items "display[s] associated with the goods?"

Text Copyright John L. Welch 2026.

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

TTAB affirmances of Section 2(d) refusals are running at about 85% so far this year, a bit below the usual 90%. Here are three recent decisions. How do you think they came out? [Answer in first comment].

In re ASP Global, LLC, Serial No. 98391245 (June 11, 2026) [not precedential] (Opinion by Judge Angelo Lykos) [Section 2(d) refusal of the mark shown below left, for, inter alia, "Hospital patient amenity kits comprised of non-medicated personal care items in the nature of hair shampoos and conditioners, body lotions, body washes, non-medicated mouth washes, lip balms, personal deodorants, toothpastes," in view of the registered mark shown below right for cosmetics and hair care products.]

In re ParanoidLab Inc., Serial No. 98391360 (June 22, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington). [Section 2(d) refusal of the mark PARANOIDLAB for, inter alia, "Software as a service (SAAS) services featuring software for scanning and monitoring the Internet to detect private information that has been compromised or disseminated … scanning and monitoring the Internet to detect the use of specific keywords … [and] for detecting identity theft," in view of the registered mark PARANOID for "providing temporary use of online non-downloadable security software."]

In re Ryan Morar, Serial Nos. 98088555 (June 23, 2026) [not precedential] (Opinion by Thomas L. Casagrande). [Section 2(d) refusal to register the mark JETPACK HOM(M)E for “Shirts, pants, sweaters, dresses, skirts, shoes; Outerwear, namely, coats, jackets, anoraks, parkas, blazers, hooded sweatshirts, windbreakers, rain jackets [HOMME” disclaimed] in view of the registered mark JETPACK for "Backpacks; All-purpose carrying bags."]

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

Text Copyright John L. Welch 2026.

Today! TTAB Case Update: New York IP Law Assn - June 24th at Noon

The TTABlogger will present a TTAB Case Update at the New York Intellectual Property Law Association's Seminar entitled "Hot Topics in Trademark and Copyright Law," on June 24th. Details here.

Read comments and post your comment here.

Text Copyright John L. Welch 2026.

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.