Prof. Curtin Files Reply to Opposition to Petition for Certiorari in RAPUNZEL Consumer Standing Case

Petitioner/Opposer/Appellant Rebecca Curtin has filed her Reply [here] to UTH's Opposition to her Petition for Writ of Certiorari. The case has been distributed for conference on April 17, 2026.

The Court has long held that the standards applicable to administrative agencies and federal courts differ. Indeed, the Court eighty-five years ago instructed that the “vital differentiations between the functions of judicial and administrative tribunals” must be observed. FCC v. Pottsville Broad. Co., 309 U.S. 134, 144 (1940). The Federal Circuit has disregarded that admonishment by imposing doctrines restricting access to federal courts, such as the zone-of-interests test, on administrative trademark opposition proceedings. That not only conflicts with this Court’s decisions, but also with the decisions of the Third, Fifth, and D.C. Circuits, which hold that such restrictions do not apply to administrative agencies.

* * * * * * * *

The importance of the issue presented further reinforces the need for this Court’s review. And this case is the appropriate vehicle to address the question presented. UTH suggests the result would be the same under the test that existed before the Federal Circuit’s errant decision in this case. But that suggestion ignores the record in this case. The Trademark Trial & Appeal Board (“Board”) concluded that Curtin satisfied the long-standing test from Ritchie v. Simpson, 170 F.3d 1092 (Fed. Cir. 1999), that governed who may participate in opposition proceedings. Only after improperly importing the test from Lexmark—requiring the zone-of-interests and proximate-causation tests—did the Board change position. The resolution of the question presented is of consequence to this case.

Read comments and post your comment here.

Text Copyright John L. Welch 2026.

TTABlog Test: Is DUNDER MIFFLIN Confusable with MIFFLIN for Paper Products?

The Office [The USPTO, that is] refused to register the proposed mark DUNDER MIFFLIN for various goods in class 16, including gift wrapping paper, paper gift wrapping ribbons, printed greeting cards, and paper party supplies, finding confusion likely with the registered mark MIFFLIN for "paper labels and tags” and “plastic ornamental bows for decoration and gift wrapping and other paper products. The Board found the goods to be complementary and related, but what about the marks? How do you think this came out? In re NBCUniversal Media, LLC, Serial No. 97831933 (March 24, 2026)[not precedential] (Opinion by Judge Elizabeth A. Dunn).

The Examining Attorney argued that MIFFLIN (the name of Pennsylvia's first governor) is the dominant word in Applicant NBCUniversal's mark: "MIFFLIN could be seen as a shortened version or reference to DUNDER MIFFLIN. For example, DUNDER could be considered suggestive of dunderhead, which refers to an idiot in colloquial terms and thus act as a modifier to MIFFLIN, evoking humorous buffoonery."

The Board didn't buy it. There was no evidence that DUNDER is a dictionary term or has any descriptive significance vis-a-vis the involved goods. "The record provides no reason to find that the term DUNDER would be perceived as a form of 'dunderhead,' or that the term DUNDER would be perceived as a modifier of MIFFLIN."

Based on its fanciful nature and first position in the mark, we find the term DUNDER is slightly dominant in creating the commercial impression of Applicant’s DUNDER MIFFLIN mark. * * * In fact, we find that the mark DUNDER MIFFLIN creates a different commercial impression than the one created by the mark MIFFLIN alone.

Google search results for DUNDER MIFFLIN uniformly refer to the fictional paper supply company which is the setting for the television show "The Office." An article from Variety states that "The Office" was "by Far the Most-Streamed TV show in 2020," according to Nielsen ratings. Merchandise from Amazon, Peacock Shop, Etsy, and Spencer’s bear the DUNDER MIFFLIN mark and associate the mark with the show.

The Examining Attorney oddly argued that the comparative fame of the involved marks "is not significant” in an ex parte appeal. While that may be true in the abstract, "determining the connotation and overall commercial impression created by the two marks is part of the likelihood of confusion analysis." The Board found the evidence of how the purchasing public encounters the DUNDER MIFFLIN mark to be directly relevant to the assessment of the mark’s connotation and commercial impression. "That the same type of evidence may be considered in connection with fame does not bar its consideration."

The Board also disagreed with the Examining Attorney’s argument that “[A]pplicant has not established the relevant consumer of the applied-for goods would readily recognize the reference of DUNDER MIFFLIN to a fictional paper company associated with The Office.” The Board noted that "[t]he paper labels and tags and paper gift wrap involved here are paper products available to the general consumer. The Office was a television show about a paper company, and originally available to the general consumer on a television network, and, as demonstrated by the article in Variety, subsequently viewed by many more consumers via streaming services."

We find that the fanciful prefatory term DUNDER alters the overall commercial impression created by the term MIFFLIN alone. In addition, we find significant evidence that the connotation of the term DUNDER MIFFLIN to the general consumer of Applicant’s goods is a reference to the setting for the television show “The Office.”

And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: I used to watch the original British version of "The Office," when I still liked Ricky Gervais.

Text Copyright John L. Welch 2026.

TTAB Reverses 2(d) Refusal of GOOD TIMES for Bourbon over Five "GOOD TIME(S)" Registrations for Alcoholic Beverages

The USPTO cited five registrations in refusing to register the mark GOOD TIMES for "bourbon," all of the registrations owned by different owners. Although the goods are legally identical or related, the Board found that the differences in the marks and the conceptual weakness of "good times" (the first and sixth DuPont factors) outweighed the second and third factors. In re Genuine Risk, Serial No. 90170906 (March 23, 2026) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Examining Attorney cited the following registered marks:

• GOODE TIMES GUARANTEED for “alcoholic beverages except beers” 
• LET THE GOOD TIMES ROLL for “distilled spirits” 
• WE GROW GOOD TIMES for “alcoholic beverages except beers; distilled spirits” 
• CERTIFIED GOOD TIME and Design for “distilled spirits; vodka" 
• GUARD THE GOOD TIMES for “whiskey”

The Goods/Trade Channels/Customers: Because the broad identifications in each of the five cited registrations encompass Applicant Genuine Risk's more narrowly defined goods, the second DuPont factor "strongly" favored a finding of likelihood of confusion. Furthermore, since the involved goods are legally identical and there are no restrictions as to trade channels or classes of purchasers in any of the cited registrations or the involved application, the Board presumed that the goods are provided in the same trade channels and are offered to the same classes of purchasers. And so, the third DuPont factor also weighed "heavily" in favor of finding a likelihood of confusion.

Strength of the Cited Marks: Genuine Risk argued that the term "GOOD TIMES" is suggestive and inherently weak and diluted when used in connection with the goods listed in the cited registrations because it is "suggestive of the merriment consumers anticipate enjoying when imbibing alcoholic beverages." The Board agreed.

We find that the cited GOOD TIMES-formative marks themselves, each of which is combined with other terms and each of which covers one or more pertinent alcoholic beverages, show that marks containing the term GOOD TIMES for alcoholic beverages can be distinguished by additional matter and/or the differing connotations conveyed in light of the conceptual weakness of the “GOOD TIMES” element.

Genuine Risk did not submit any evidence of third-party use of marks identical or similar to the cited marks, and third-party registrations alone do not establish weakness in the marketplace. However, the registration evidence did show that "use of the wording GOOD TIMES in marks used in connection with alcoholic beverages has a commonly understood suggestive meaning and, therefore, this component of the cited marks is conceptually weak."

In light of its conceptual weakness, the GOOD TIMES component of each of the cited marks is entitled to only a limited scope of protection. Accordingly, the sixth DuPont factor favored a finding that confusion is not likely.

Comparing the Marks: The Board found that the cited marks and the mark GOOD TIMES "are somewhat similar visually and aurally in light of the shared wording GOOD TIMES. However, the similarity of the marks ends there." Bearing in mind that the wording GOOD TIMES is conceptually weak, the Board found that the cited marks "have differing connotations and overall commercial impressions when compared to Applicant’s mark."

Indeed, the structure and distinctive sentiments expressed in each of the cited marks are absent from Applicant’s mark. For example, the cited mark GUARD THE GOOD TIMES connotes protecting the good times one is experiencing. Further, the cited mark LET THE GOOD TIMES ROLL suggests that one should keep on having a good time. These connotations and commercial impressions are not present in Applicant’s mark. Moreover, given that the cited marks use “GOOD TIMES” as part of an overall distinctive phrase, we find it unlikely that consumers will view Applicant’s mark as a shortened form of any of the cited marks.

In sum, the Board found that the involved marks are "sufficiently dissimilar in structure, meaning and overall commercial impression, notwithstanding any similarities in sound and appearance due to the shared wording GOOD TIMES." Therefore, the first DuPont factor favored a finding that confusion is not likely.

Conclusion: The Board deemed the first and sixth DuPont factors to be "pivotal" and to outweigh the legal identity of the goods under the second DuPont factor, as well as the presumed identical trade channels and classes of purchasers under the third DuPont factor.

Read comments and post your comment here.

TTABlogger comment: Good times for Genuine Risk! Would consumers think that one or two of the registered marks are slogans used by Genuine Risk: for example, LET THE GOOD TIME ROLL?

Text Copyright John L. Welch 2026.

United TM Holdings Files Opposition to Petition for Certiorari in RAPUNZEL Consumer Standing Case.

Applicant/Appellee/Respondent United Trademark Holdings, Inc. has filed a Brief in Opposition [pdf here] to Professor Rebecca Curtin's Petition for a Writ of Certiorari [here], now pending before the Supreme Court in the RAPUNZEL trademark opposition.

You will recall that the CAFC affirmed the Board's holding that "only commercial actors affected by the mark’s registration fall within the zone of interests to oppose the registration as generic, descriptive, or [failing to function as a trademark]," and it upheld the Board's dismissal of mere consumer Curtin's opposition to registration of the mark RAPUNZEL for dolls and toy figures on the ground of lack of statutory standing. Curtin v. United Trademark Holdings, Inc., 2025 USPQ2d 784 (Fed. Cir. 2025) [precedential]. Two excerpts from the Preliminary Statement in UTH's Brief in Opposition are set out below:

The Petition for a Writ of Certiorari (“Petition”) should be denied. The Federal Circuit’s unanimous decision faithfully applies the analytical framework this Court established in Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), to determine whether Petitioner, a self-described consumer and not a competitor, falls within the class of persons Congress authorized to bring an opposition proceeding under the Lanham Act (the “Act”). The decision below creates no circuit split, conflicts with no precedent of this Court, and raises no question of national importance warranting the exercise of this Court’s certiorari jurisdiction. As noted, Petitioner is not a competitor of Respondent, but a law professor who has publicly promoted her role in this dispute, suggesting that her interest in appearing before this Court is principally academic rather than grounded in the vindication of a cognizable legal injury.

* * * * * * * *

Petitioner’s attempt to recast this case as presenting the question whether Article III standing requirements apply to administrative proceedings fundamentally mischaracterizes the decision below. The Federal Circuit did not impose constitutional standing requirements on the Board. It engaged in precisely the exercise this Court prescribed in Lexmark: interpreting the statutory text of 15 U.S.C. § 1063 to determine the class of persons Congress authorized to bring an opposition. That exercise in statutory construction is not only appropriate but required, regardless of the forum.

Read comments and post your comment here.

TTABlogger comment: Do you think the Court will grant the petition? BTW: that doll looks like Paige Bueckers to me.

Text Copyright John L. Welch 2026.

TTAB Requires Disclaimer of "MADE BY DENTISTS" in Five Word-and-Design Marks for Toothbrushes and the Like

The Board affirmed the USPTO's refusal of the mark shown immediately below, along with four other similar word-plus-design marks (same font and wording, different cartoon designs) for mouthwash, teeth-whitening products, dental cleaning tools, toothbrushes, and the like, absent a disclaimer of the phrase MADE BY DENTISTS. Spotlight argued that the products are not made by dentists, and therefore "imagination, thought, and perception" is required "to reach a conclusion as to the nature of the goods recited in the Application." In other words, according to Spotlight, the phrase is merely suggestive. Not so, said the Board. In re Spotlight Oral Care Limited, Serial Nos. 79380381 et al. (March 19, 2026) [not precedential] (Opinion by Judge David K. Heasley).

Examining Attorney Jesse Nelman maintained that "MADE BY DENTISTS" immediately conveys to consumers a feature or characteristic of the goods - that they are designed by dentists, since Spotlight is owned by dentists. Spotlight, pointing to dictionary definitions, asserted that "MADE" means "artificially produced" or "put together of various ingredients," and "BY" means "through or through the medium of" or "through the agency or instrumentality of." In other words, the goods are not made by dentists - "they are not put together, manufactured, constructed, shaped, or formed by dentists."

The Board rejected Spotlight's narrow definition of "made," pointing out that "made" can also mean "more generally, '[p]roduced or created artificially' or '[h]aving been invented,' or '[t]o cause to exist or happen; bring about; create.'" Moreover, the word should be understood "in relation to the goods or services for which registration is sought, the context in which the mark is used, and the possible significance that the mark is likely to have to the average purchaser encountering the goods or services in the marketplace."

Here, if “MADE” means “[t]o cause to exist or happen; bring about; create,” then “MADE BY DENTISTS,” considered in its entirety and in the context of dental goods such as toothpaste, mouthwash and toothbrushes, comprehends the contributions made by the dentists who founded Applicant, provided the designs, specified the ingredients, and directed how the ingredients were to be put together into the dental goods. *** In that sense, the dentists “MADE” the dental goods in the same sense that Henry Ford “made” the Model T, even if he didn’t assemble the cars by hand.

The evidence showed that others in the dental field use the phrase "made by dentists" to describe their products. Furthermore, "[i]t is well-established that a term which describes the provider of goods or services is also merely descriptive of those goods and services.” In re Major League Umpires, No. 75154506, 2001 WL 777067, *2 (TTAB 2001) (protective vest was invented by one of the owner/umpires).

Spotlight submitted some two hundred registrations and allowed applications containing “MADE BY _____” without disclaimers: e.g., MADE BY TWO HAIRY GUYS for wax for removing hair; MADE BY FIREMEN FOR FIREMEN for fire-fighting equipment [FIREMEN disclaimed]. The Board, however, found that evidence of little probative value. Most of the marks did not refer to any purveyor or designer of the goods and others did not identify a type of professional or entity. "Thus, most of Applicant’s registered third-party marks do not indicate the provenance and characteristics of their identified goods."

The remaining registrations were "too few in number and result from the decisions of other examining attorneys, not the Board." "[P]rior decisions and actions of other examining attorneys in registering other marks have little evidentiary value and are not binding on the USPTO or the Board."

[W]e have no doubt that consumers who see the term MADE BY DENTISTS in Applicant’s marks, used on the identified goods, would immediately understand a significant characteristic is that the goods are designed and provided by dentists. The definitions of the words MADE and BY show their descriptiveness in this context, and as the above evidence makes clear, the combination of MADE BY and DENTISTS indicates skilled professional providers of the goods.

And so, the Board upheld the disclaimer requirement, allowing Spotlight thirty-days within which to submit the required disclaimer, in which case the applications will be passed to publication.

Read comments and post your comment here.

TTABlogger comment: Looks like the Board brushed off Spotlight's oral argument.

Text Copyright John L. Welch 2026.

TTABlog Test: Are Cat Food and Cat Food Supplements Related to Cat Litter Under Section 2(d)?

The USPTO refused to register the mark ZENCAT in the word-and-design form shown below, for cat food and nutritional supplements for cats, concluding that confusion is likely with the registered mark ZEN KITTY for cat litter [KITTY disclaimed]. The Board found that the similarity of the marks weighed "strongly" in favor of affirmance, but what about the goods? How do you think this came out? In re Phoenix Niesley-Lindgren Watt, Serial No. 98009242 (March 18, 2026) [not precedential] (Opinion by Judge Angela Lykos).

Applicant Watt got off on the wrong paw when she attempted to submit additional evidence with her appeal brief and her reply brief. The Board pointed out once again that "the record should be complete prior to the filing of an appeal” and “[e]vidence should not be filed with the Board after the filing of an appeal.” See Rule 2.142(d).

As to the relatedness of the goods, Examining Attorney Javier Jaramillo relied (as usual) on third-party registrations and uses: sixteen websites offering “nutritional supplements for cats” or “cat food” and "cat litter" under the same mark (three of the websites - for ONLY NATURAL PET, PURINA, and WERUVA - offered all three); and fifteen third-party registrations covering all three. That did the trick:

[T]he Examining Attorney’s third-party evidence demonstrates that consumers are accustomed to seeing a single mark associated with a single source that offers all the relevant goods.

Because neither identification of goods includes a restriction on channels of trade or classes of consumers, the Board presumed that the respective goods travel through all usual trade channels therefor and are offered and sold to the usual customers for those goods. The third-party use evidence showed that the channels of trade overlap.

Our finding are confirmed by the Examining Attorney’s evidence of third-party websites referenced above which demonstrate that the goods are sold together. See In re Ox Paperboard, LLC, No. 87847482, 2020 WL 4530517, at *7 (TTAB 2020). Moreover, in addition to this evidence of third-party websites that offer the relevant goods, we can also presume based on common knowledge that brick-and-mortar stores and veterinarian offices also offer the relevant goods, namely, Applicant’s cat supplements and food and Registrant’s cat litter.

Applicant Watt pointed out that she owns a registration (issued in May 2018) for the same ZENCAT word-and-design mark for use in "similar trade channels prior to the granting of Registrant’s mark," and she wondered "why the mark ZEN KITTY was allowed to be registered (in April 2018) in the first place," since "ZEN KITTY is the newcomer in the cat space, not ZenCat."

The Board observed that Watt appeared to be "attempting to rely on" Strategic Partners, Inc., No. 77903451, 2012 WL 1267930 (TTAB 2012). However, that case requires, inter alia, that the goods or services in the prior registration be "identical" to those in the later application. Here, as the Examining Attorney pointed out, the goods and services in Watt's prior registration are not the same as in the instant application. 

Finally, Watt argued that because her prior registration and the cited registration are allowed to co-exist, the Board should be consistent by allowing registration based on the instant application. The Board clawed back with its usual response:

The USPTO is required to apply the applicable statutory requirement to the unique facts and evidence of each case. The “Board has ‘recognize[d] that ‘consistency is highly desirable,’ [but] consistency in examination is not itself a substantive rule of trademark law, and a desire for consistency with the decisions of prior examining attorneys must yield to proper determinations under the Trademark Act and rules.” In re Korn Ferry, No. 90890949, 2024 WL 3219482, at *5 n.13 (TTAB 2024) (cleaned up).

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: Are cat toys related to cat litter under Section 2(d)?

Text Copyright John L. Welch 2026.

Unsurprisingly, TTAB Deems JAPANESE COWBOY Confusable with TOKYO COWBOY for Restaurant and Bar Services

The Board affirmed a Section 2(d) refusal to register the mark JAPANESE COWBOY for "Restaurant and bar services" [JAPANESE disclaimed], concluding that confusion is likely with the registered mark TOKYO COWBOY for "bar services; restaurant services." Applicant Catch & Shoot mainly contended that COWBOY is a weak formative in the restaurant field, pointing to 15 third-party registrations og marks containing the word COWBOY. The Board was not roped in by that argument. In re Catch & Shoot, LLC, Serial No. 98888426 (March 17, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Because the cited mark is registered on the Principal Register without a claim of acquired distinctiveness under Section 2(f), the Board observed that "it is inherently distinctive, i.e., that it is at worst suggestive of the [services]." Nonetheless, an applicant may show that "the existence of third-party registrations on similar services diminish[es] the cited mark’s conceptual strength."

The Board found that 15 of the registrations submitted by the applicant were probative, including registrations for the marks COCKTAIL COWBOYS, ITALIAN COWBOY, NORTHERN COWBOY, and THE CAJUN COWBOY.

These registrations are probative to demonstrate that COWBOY is a common element in marks for restaurant and bar services. Apex Bank v. CC Serve Corp., 156 F.4th 1230, 1235 (Fed. Cir. 2025) (“The sixth DuPont factor requires the Board to consider similar marks for similar goods and services.”). This shows that the COWBOY term is relatively weak as applied to the restaurant and bar services in the cited mark. Juice Generation, 794 F.3d at 1339 (“Third party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.”).

There was no evidence of third-party use of COWBOY-formative marks in the restaurant/bar field that might affect the commercial strength of the TOKYO COWBOY mark.

The Board observed once again that "where (as here) the parties services are identical, a 'lesser degree of similarity between the marks may be sufficient to give rise to a likelihood of confusion.' Coach Servs., 668 F.3d at 1368." Applicant Catch & Shoot argued that the differences between TOKYO and JAPANESE are sufficient to distinguish the marks in sight and sound. Examining Attorney Jonah R. Berthelsen maintained that the shared term COWBOY is the dominant element in both marks, and that their overall meanings are similar (since Tokyo is a city in Japan), resulting in similar commercial impressions.

The Board noted applicant's argument that consumers often focus on the first term in marks, but here, according to the Board, consumers would focus on the marks as a whole due to their incongruous nature. Moreover, "simply replacing the word TOKYO in the cited mark with JAPANESE is unlikely to obviate confusion because consumers may mistakenly believe that the mark denotes a new line of restaurants and bars from the same owner." The Board concluded that, "[d]espite the weakness of the shared COWBOY term, . . . the marks, considered in their entireties, are similar in sight and sound, and more importantly very similar in meaning and overall commercial impression.

In this case, the second, and third DuPont factors weigh heavily in favor of likelihood of confusion given the identical nature of the services provided in overlapping trade channels to the same classes of consumers. The first factor weighs strongly in favor of a likelihood of confusion due to the shared connotation and commercial impression. These factors outweigh the sixth factor, which weighs only slightly against a likelihood of confusion.

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA? Based on the third-party registration evidence, what meaning is to be ascribed to the term "cowboy" in the restaurant and bar field? Since there was no evidence that these registered marks were in use, they should have no effect on the commercial strength of the cited mark.

Text Copyright John L. Welch 2026.

TTABlog Test: Are Perfumes Related to Cosmetics for Make-Up Artist Work, Under Section 2(d)?

The USPTO refused to register the marks OUD NEBULA (OUD disclaimed) and FLORAE NEBULA (FLORAE disclaimed) for “perfumes; fragrances and perfumery," finding confusion likely with the registered mark NEBULA for "Cosmetics, in particular airbrush make-up, and powders, make-up and make-up removing preparations for stage, film and television in the nature of theatre cosmetics, and cosmetics for other make-up artist work." The Board found the marks similar in appearance, sound, connotation and commercial impression. But what about the goods? How do you think this appeal came out? In re Harmonist Inc., Serial No. 98456042 (here) and 98456022 (here) (March 12, 2026) [not precedential] (Opinion by Judge Christen M. English).

The Goods: Applicant Harmonist Inc. argued that “the Examining Attorney has treated the cited registration as if it covers cosmetics in general rather than cosmetics limited to theatre cosmetics and cosmetics for other make-up artist work." The Board, however, observed that the phrase "for other make-up artist work" is a limitation on the consumers for the goods but not on the types of cosmetics that registrant offers. "'Make-up artist work' includes more than make-up artists working in stage, film and television; it encompasses all types of make-up artist work, including for events like weddings, parties and photo shoots, as well as make-up artists providing their services at cosmetic counters in retail stores."

Furthermore, the Board pointed out that "cosmetics" is a broad identification that includes perfumes. See USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) (listing “cosmetics in general, including perfumes” as an acceptable identification of goods in Class 3). "Because perfume is a type of 'cosmetic,' and 'cosmetics' are covered by Registrant’s identification, there is overlap in Applicant’s and Registrant’s goods; the goods are in-part legally identical." 

The Board also found that cosmetics and perfumes are complementary products that are marketed together, sold together in sets, and often applied at the same time to enhance beauty. Third-party registration and use evidence confirmed the complementary nature of the goods.

"The normal classes of consumers for perfume thus include make-up artists – in both their professional and personal capacity – the same consumers who purchase Registrant’s goods. There is consumer overlap." The evidence also showed an overlap in trade channels, since cosmetics, including perfumes, are sold through retail beauty stores

The Board acknowledged that "make-up artists generally are likely to exercise care in purchasing cosmetics for use in their jobs. It is foreseeable that they may also exercise some degree of care in purchasing cosmetics, including perfume, for their personal use." However, since not all perfumes are expensive, the least sophisticated purchaser of perfume "would not be likely to exercise a heightened degree of care."

[B]ecause make-up and perfume are sold by the same entities under the same mark, sometimes packaged together as a set, make-up artists familiar with Registrant’s NEBULA cosmetics who encounter Applicant’s [marks] perfume and fragrances may mistakenly believe that Registrant is expanding from make-up into a line of perfumes, and expanding from cosmetics for make-up artist work to cosmetics for the general public.

The Marks: The Board accepted Harmonist's argument that "one meaning and commercial impression of the Cited Mark NEBULA for Registrant’s goods may 'suggest[] the shimmery, luminescent makeup colors associated with nebula' as 'many nebulae are visible due to fluorescence caused by embedded hot stars….'" The Board noted, however, that another meaning and commercial impression of the cited mark is of a "spray cosmetic that produces a cloud similar to a nebula." "Applicant’s mark has a similar meaning and commercial impression as it is likely to suggest a perfume spray that produces a scented nebula-like cloud."

The Board concluded that "[g]iven the similarities between the marks . . . consumers may perceive Applicant’s mark OUD NEBULA [and FLORAE NEBULA] as a variation of Registrant’s NEBULA mark identifying a companion line of products or may otherwise mistakenly believe that Applicant’s goods are associated with or sponsored by Registrant."

And so, the refusals were affirmed.

Read comments and post your comment here.

TTABlogger comment: How did you do?

Text Copyright John L. Welch 2026.

TTABlog Test: Is VEGGIES IN EVERY BITE Merely Descriptive of Pasta?

In November 2024, the Board suspended the appeal from a failure-to-function refusal of VEGGIES IN EVERY BITE for "pasta, macaroni and cheese, pasta sauce, pizza, pizza crust, croutons, frozen meals consisting primarily of pasta or rice" and remanded the application to the USPTO for consideration of additional grounds for refusal, including mere descriptiveness under Section 2(e)(1). [TTABlogged here]. The Office then added a mere descriptiveness refusal. Applicant Litehouse on appeal argued that the mark is only suggestive because "it does NOT directly tell the viewer what the goods are, but instead requires the viewer to exercise imagination, thought or perceptions." How do you think this appeal came out? In re Litehouse, Inc., Serial No. 97501419 (March 11, 2026) [not precedential] (Opinion by Judge Angela Lykos).

Litehouse's argument is high on the "Top Ten Losing TTAB Arguments" list: mere descriptiveness is not a guessing game. "The determination of whether a proposed mark is merely descriptive must be made in relation to the goods for which registration is sought, not in the abstract." Bayer, 488 F.3d at 964.

In other words, the question is not whether someone presented only with the proposed mark could guess the goods listed in the identification. Rather, the question is whether someone who knows what the goods are will understand the proposed mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254 (Fed. Cir. 2012) (internal citation omitted).

The Board observed that "a proposed mark that refers to an ingredient is merely descriptive." TriVita, Inc., 783 F.3d at 874. The record shows that Applicant’s processed food items are made from vegetables. Litehouse's own website uses the mark descriptively: "Say hello to your new favorite pasta! Our 3-ingredient pasta is filled with veggies in every bite, and takes everything that you love about pasta and levels it up a notch." The Board pointed out that "An applicant’s own 'marketing materials may be … 'the most damaging'' evidence of mere descriptiveness." In re Berkeley Lights, Inc., No. 88895703, 2022 TTAB LEXIS 382, at *17-18. Moreover, competitors commonly use the phrase in advertising their pasta, mac & cheese, and pizza.

The evidence not only shows the phrase “Veggies in Every Bite” as a descriptive phrase used by third-parties but also demonstrates that consumers specifically look for pasta, pizza and rice composed of vegetables in lieu of semolina flour or wheat for nutritional value or other health reasons. Competitors in the food industry should be free to use this merely descriptive language when describing their own items to the public in advertising and marketing materials.

And so, the Board affirmed the Section 2(e)(1) mere descriptiveness refusal, declining to reach the failure to function refusal.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2026.

TTAB Finds UX ACADEMY Generic for . . . . Guess What?

The Board affirmed a genericness refusal of the proposed mark UX ACADEMY for "Education services, namely, providing live and on-line classes, seminars, workshops in the field of user interface and user experience design" [ACADEMY disclaimed]. Alternatively, the Board considered Applicant Designlab's claim that the term is at most descriptive and has acquired distinctiveness, but the Board rejected that claim as well. In re Designlab Learning, Inc., Serial No. 98192682 (September 13, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

"Whether a term is generic 'turns on whether that term, taken as a whole, signifies to consumers the class of ... services.'" Booking.com, 591 U.S. at 557. The Board found, as usual, that the recitation of services in the application defined the genus. The relevant consumers comprise "all potential purchasers of these services, given that the identification of services contains no limitations as to channels of trade or classes of consumers."

The Board first considered each term in the proposed mark "as a step on the way to an ultimate determination of whether the proposed mark, as a whole, is generic." The evidence submitted by Examining Attorney Drew Sander showed that "UX has a well-recognized meaning and is substantially synonymous with 'user experience.'" Designlab's specimen of use (shown above) offered courses in UX design.

The Board found that "UX" is generic because consumers "would immediately understand UX as referring to the subject matter of the courses." [Note: Professor McCarthy has repeatedly pointed out that "referring to" is not the test for genericness -- ed.]. Based on dictionary definitions, the Board found that ACADEMY is also generic, a point that Designlab appeared to concede.

As to the combined term, the evidence showed that third parties use UX and ACADEMY together "to refer to services that are effectively identical to Applicant’s, namely, educational services in the field of user experience design." [refer to? - ed.].

Designlab argued that UX "suggests or describes the training services offered by Applicant,” and when combined with ACADEMY creates a non-generic term. It pointed to a number of registrations for ACADEMY-formative marks (such as ALARM ACADEMY and GRILL ACADEMY) that include a disclaimer of “academy” and a claim of acquired distinctiveness under Section 2(f). The Board brushed them off: "Marks that are merely descriptive or generic do not become registrable simply because other seemingly similar marks appear on the register.” Also, for the umpteenth time the Board stated that it is "not bound by prior decisions made in connection with different marks, and each case must be decided on the proceeding record before us and on its own merits."

And so, the Board found "the meaning of the compound term UX ACADEMY to be no more than the sum of its individual generic parts, and thus it is generic and not registrable as a whole."

Assuming arguendo that UX ACADEMY is not generic but only highly descriptive, the Board considered Designlab's Section 2(f) claim and found the evidence wanting. "Despite Applicant’s arguably substantial gross sales and length of use, there is no evidence of the extent to which the public perceives the term UX ACADEMY as indicating source in Applicant." Its evidence of sales and advertising were imprecise, its own use of the term UX ACADEMY was preceded by the word Designlab, diluting the impact of UX ACADEMY. Moreover, there was evidence of third parties using names "highly similar to or including UX ACADEMY for related services."

[Designlab's] evidence, much of which is vague, is outweighed by other evidence showing that the phrase UX ACADEMY is – at best – highly descriptive, coupled with the absence of any direct evidence from relevant consumers showing recognition of the wording by consumers as a source indicator for Applicant’s services.

The Board concluded that "given the highly descriptive nature of the term, much more evidence (especially in the form of direct evidence from customers) than what Applicant has submitted would be necessary to show that the designation has become distinctive as an identifier of the source of Applicant’s services."

Read comments and post your comment here.

TTABlogger comment: Is UX ACADEMY the "generic name for the . . . services" (See Section 14(3))? I think not. 

Text Copyright John L. Welch 2026.