Rejecting Extrinsic Evidence, TTAB Finds FUNTASYA Confusable with FUNTASIA ADULT SHOP for Clothing and Retail Store Services

The Board sustained a Section 2(d) opposition to registration of the mark FUNTASYA for various clothing items and online retail services featuring clothing, concluding that confusion is likely with the registered mark FUNTASIA ADULT SHOP in the logo form shown below, for "Retail store and online retail store and wholesale store services featuring adult products, videos, DVDs, magazines, toys, novelties, lingerie and leather clothing" [ADULT SHOP disclaimed]. The Board found the marks to be "overall similar," and the goods/services overlapping, rejecting applicant's attempt to import restrictions into the identification of goods "based on alleged real world conditions." In re Stefan Thaler, Serial No. 79395386 (July 7, 2026) [not precedential] (Opinion by Judge Christen M. English).

The Marks: The Board unsurprisingly found FUNTASIA to be the dominant part of the cited mark "because it is the first literal element in the mark and it is displayed in a much larger font than THE ADULT SHOP, which has been disclaimed." As to the words FUNTASYA and FUNTASIA, "[a]verage consumers with a general recollection are unlikely to notice or remember the one letter difference in the last syllable of the words." Since applicant’s mark is in "block letter" form, it "may be displayed in a font style similar to the font style used for the term FUNTASIA in the Cited Mark, which would increase the visual similarity between the marks." The two words are likely to be pronounced the same way.

This similarity in sound is significant because FUNTASIA is the dominant element in the Cited Mark. Indeed, consumers may drop the non-distinctive phrase THE ADULT SHOP when referring to Registrant’s services.

FUNTASYA and FUNTASIA both call to mind the words “fantasia” and “fantasy,” with the registered mark carrying "a connotation and commercial impression of a fantasia or fantasy of a fun, sexual nature." Nonetheless, "the marks still share a similar general connotation and commercial impression related to a fun fantasia or fantasy."

To the extent that for some consumers the marks do not call to mind the words “fantasia” or “fantasy,” the marks will be perceived as coined terms with no particular meaning. Because the dominant term FUNTASIA in the Cited Mark is nearly identical to Applicant’s coined mark FUNTASYA, the marks would likely be perceived the same, albeit with the Cited Mark conveying an added sexual connotation

The Board concluded that consumers are likely to perceive applicant's mark "as a variation of the Cited Mark identifying a line extension or to otherwise mistakenly believe that Applicant’s goods and services are associated with or sponsored by Registrant."

The Goods/Services: Applicant argued that registrant’s services, trade channels are limited to sexual products sold through adult sex shops and to consumers seeking intimate products that are purchased only after age verification. The Board, however, pointed out that there are no such restrictions in the cited registration.

Registrant’s identification does not include any limitations on the nature of these services, the trade channels through which they are sold or the relevant consumers. Nor may we consider extrinsic evidence on how Registrant uses its mark to narrow these services.

The Board focused its analysis on registrant’s “retail store and online retail store and wholesale store services featuring … leather clothing.” Applicant's goods are "clothing, namely, shirts, pants, hats, shorts, jerseys, hoodies," an identification broad enough to encompass leather shirts and pants. Because services featuring leather clothing encompass a subset of applicant’s goods, namely, leather pants and shirts, "here is overlap on the face of Applicant’s Class 25 and Registrant’s Class 35 identifications."

Applicant’s Class 35 services include “retail online store services featuring clothing; retail and wholesale online store services featuring clothing.” These services are broad enough to encompass Registrant’s “retail and online retail store and wholesale store services featuring … leather clothing.”

As to applicant's clothing items, where “one party uses its mark on goods that are sold in retail [and wholesale] stores that customarily vend those goods, it is clear that the trade channels and customers overlap.” With respect to the services, because they are in-part legally identical and there are no restrictions as to trade channels or consumers in the identifications, the Board presumed that the identical services travel through the same channels of trade to the same purchasers.

As to purchaser care, applicant asserted that "it is self-evident that the respective purchasers of Applicant’s and Registrant’s goods and services exercise entirely different levels of discernment." "Again, this argument relies on a restriction (goods sold through an adult sex shop) that is not identified in Registrant’s identification. 

Finding that none of the DuPont factors favored applicant, it sustained the opposition.

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TTABlogger comment: Do you think there is any likelihood of confusion in the real world?Should applicant seek restriction of the registration under Section 18?

Text Copyright John L. Welch 2026.

TTAB Finds BALLETCOLLECTIVE to be Generic for . . . . . Guess What?

The Board upheld a refusal to register the proposed mark BALLETCOLLECTIVE for entertainment services in the nature of dance and ballet performances, finding the term to be generic for the services. The applicant argued that the lack of a space between the words was significant, but that argument fell flat. In re BalletCollective Inc., Serial No. 97567146 (July 7, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

There was no disagreement that the genus at issue was defined by the recitation of services in the application, which the Board summarized as "entertainment services in the nature of dance and ballet performances." The relevant consumers are "ordinary purchasers, or attendees, of entertainment services in the nature of dance and ballet performances." The question then was "whether these consumers understand BALLETCOLLECTIVE as primarily referring to a class or category of entertainment services in the nature of dance and ballet performances."

Relying on dictionary definitions of the constituent terms, evidence of third-party use of "ballet collective(s)" in connection with ballet performances and entertainment, and use of that term as part of third-party trademarks and trade names, Examining Attorney Amy E. Thomas contended that "the relevant consuming public would understand the term BALLETCOLLECTIVE to refer primarily to a group providing ballet performances and related ballet services including the other services listed in the application."

Applicant argued that the evidence showed use of the component terms only with a space between them, not in a compound form. The Board pooh-poohed that argument, noting the Supreme Court's statement in Booking.com that "[a] compound of generic elements is generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services."

The words “ballet” and “collective” retain their same defined meanings despite being joined—and consumers will not discern any additional non-generic meaning as a result of their joinder. Rather, the relevant consumers will easily and readily understand BALLETCOLLECTIVE as merely an expression of a “ballet collective,” without the space, and a reference to the genus of services. Simply put, the proposed compound mark, BALLETCOLLECTIVE, conveys the same generic meaning to consumers as the sum its generic component terms—”the entire formulation does not add any meaning to the otherwise generic mark.” See Steelbuilding, 415 F.3d at 1297.

Applicant also pointed to its actual use of the mark in the form "BalletCollective," with the first letter in each component term capitalized. The Board took a different view: "[t]o the contrary, capitalizing the first letter of each word further assists consumers to more quickly identify each generic term. In any event, applicant sought registration of a mark in standard character form, not in the form used by applicant.

[T]he evidence of use of the term BALLET COLLECTIVE in third-party marks or trade names, along with source-identifying matter, e.g., “Ignite Ballet Collective” and “Deep South Ballet Collective,” further establishes that this is a term readily used by others in connection with ballet performances. In other words, the evidence proves that the relevant public perceives BALLETCOLLECTIVE primarily as the genus of services rather than as a source identifier.

The Board agreed with the examining attorney that applicant’s own description of its services on its website was probative and corroborated the genericness of the proposed mark: Applicant describes itself as a "non-profit art collective, "consist[ing] of a rotating group of artists and collaborators" and "with each new collective," it offers entertainment services in the nature of "ballet-based works."

And so, the Board affirmed the refusal.

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TTABlogger comment: If you looked in a telephone directory, would you find a heading "ballet collectives?"

Text Copyright John L. Welch 2026.

TTABlog Test: How did These Three Recent Section 2(d) Appeals turn out?

TTAB affirmances of Section 2(d) refusals are running at about 84% so far this year. Here are three recent decisions. How do you think they came out? [Answer in first comment].

In re AM Hospitality, LLC, Serial No. 98891881 (June 30, 2026) [not precedential] (Opinion by Judge Elizabeth K. Brock). [Section 2(d) refusal of the mark SIDE PIECE PIZZA for "restaurant featuring pizza" [PIZZA disclaimed] in view of the registered mark SIDE PIECE, in standard character form, for "Food and drink catering; Preparation of food and beverages; Providing of food and drink; Restaurant services, namely, providing of food and beverages for consumption on and off the premises; all of the foregoing excluding services involving pizza, private labeled beer, and/or breweries."]

In re GE Precision Healthcare LLC, Serial No. 98098739 (July 6, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin) [Section 2(d) refusal of the mark OMNI for "Medical apparatus and instruments for use in positron emission tomography/computed tomography (PET-CT) imaging" in view of the registered mark OMNITOM for "computed tomography (CT) imaging machines."]

In re Nawkaw, Inc., Serial No. 98499982 (July 6, 2026) [not precedential] (Opinion by Judge David K. Heasley). [[Section 2(d) refusal of the mark ECOTONE for "Coating compositions in the nature of paint, namely, clear and pigmented coatings specifically formulated for application to concrete and masonry surfaces by professionals, not for retail sale or consumer use, and not for use on wood surfaces" in view of the registered mark ECO-TONES for "interior and exterior stains, sealers and coatings for roofs, siding and timber; wood preservatives; restorative preparations in the nature of stains for wood; and coatings for wood, namely, stains, coatings, sealers, preservatives and restoratives in the nature of stains."]

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

Text Copyright John L. Welch 2026.

Precedential No. 5: Blue-and-White Stripes Trade Dress Lacks Inherent and Acquired Distinctiveness, Says TTAB

The Board upheld a refusal to register a design comprising parallel blue and white stripes (shown below) for frozen confections and confections, fruit drinks, alcoholic beverages, franchising services, and restaurant services (in six classes), finding that the proposed mark is not inherently distinctive and lacks acquired distinctiveness. The Board observed that Applicant Ralph's "blue & white stripes are simply a refinement or variation of the common practice of using alternating colored stripes." As to acquired distinctiveness, "the plethora of third-party uses of blue & white or similar stripes in connection with the same goods and services presents a nearly insurmountable hurdle for any such effort to succeed because they show that such use has not been ‘substantially exclusive.’” In short, “Applicant has not come anywhere close to proving its alternative claim that the proposed trade dress has acquired distinctiveness." In re Ralph’s Famous Italian Ices Franchise Corp., 2026 U.S.P.Q.2d 553 (TTAB 2026) [precedential] (Opinion by Judge Thomas L. Casagrande).

"The mark consists of a repeating pattern of alternating blue and white vertical stripes, which are of equal width and proportion. The repeating pattern appears on a portion of the surface of the goods, on a portion of the packaging for the goods, on a portion of the building facades in which the services are offered, and on displays, marketing and advertising materials associated with the services."

Inherent Distinctiveness: Product packaging trade dress may qualify as inherently distinctive, depending on the evidence. See, e.g., Two Pesos, 505 U.S. at 773-74 (restaurant décor); In re Chippendales USA, Inc., 622 F.3d 1346, 1351 (Fed. Cir. 2010) (design of a costume worn by a service provider, i.e., “trade dress” constituting the “packaging” of the service). Whether such trade dress is inherently distinctive requires an assessment of:

1. whether it was a ‘common’ basic shape or design, 
2. whether it was [not] unique or unusual in the particular field, 
3. whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods [or services] viewed by the public as a dress or ornamentation for the goods [or services], or 
4. whether it was capable of creating a commercial impression distinct from the accompanying words. 

Chippendales, 622 F.3d at 1351 (quoting Seabrook Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342, 1344 (CCPA 1977)). If the answer to any of the first three Seabrook inquiries is “yes,” the design is not inherently distinctive.

In In re Fantasia Distrib., Inc., No. 86185623, 2016 WL 5866950 (TTAB 2016), the Board adapted and applied this test to a design constituting a repeating ornamental pattern on goods, as follows: 

• the nature of Applicant’s goods and whether there is an industry practice of ornamenting such goods;
• the nature of the pattern, including whether any element of the pattern might be perceived as source indicating if it were standing alone; 
• how common the pattern is, whether it is composed of common or unusual repeating shapes, whether such shapes repeat in a common or unusual manner, and whether the overall pattern is similar to, or a mere refinement or variation of, a common and well-known form of ornamentation;
• the manner in which the repeating pattern appears on the product, including the size and location of the pattern on the product and how much of the product is covered by the pattern; and
• whether the pattern creates a distinct commercial impression apart from any accompanying wording and design elements.

As to each class of goods and services, the Board considered the substantial third-party evidence submitted by Examining Attorney Hai-Ly Lam. With respect to the goods in classes 29 and 30 and the restaurant services in class 43, the evidence "overwhelmingly " showed that Ralph's blue-and-white stripes "are simply a refinement or variation of the common practice of using alternating colored stripes." As to the beverages in classes 32 and 33 and the franchising services in class 35, the evidence was not as voluminous but nonetheless showed that "stripes generally are a rudimentary form of ornamentation and Applicant uses them in an unremarkable way."

Acquired Distinctiveness: Because the evidence showed that stripe trade dress is a commonly-used form of ornamentation, Ralph's faced a "nearly insurmountable hurdle" to prove acquired distinctiveness. Its evidence fell far short.

Ralph's claimed 20 years of sales and $100 million in revenues under the proposed mark, and expenditures of $2 million in advertising, but the evidence was neither segregated by product or service nor placed in context vis-a-vis its competitors. There was no "look-for" advertising, no "direct attempt to educate consumers that the stripes trade dress indicates a unique source for the relevant goods and services," and no evidence as to the effectiveness or success of its alleged efforts to create the required unique association.

But even if Applicant had made concerted efforts to educate consumers to regard the stripe pattern as uniquely indicating Applicant’s goods and services, the plethora of third-party uses of blue & white or similar stripes in connection with the same goods and services presents a nearly insurmountable hurdle for any such effort to succeed because they show that such use has not been “substantially exclusive.” See, e.g., Levi Strauss, 742 F.2d at 1403; Ayoub, 2016 WL 4474509, at *13. We find that Applicant has not come anywhere close to proving its alternative claim that the proposed trade dress has acquired distinctiveness.

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TTABlogger comment: Judge Casagrande's opinions are always down-to-earth and easy reading, albeit this one is a bit long (66 pages).

Text Copyright John L. Welch 2026.

TTABlog Quarterly Index: April - June 2026

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield.com.

Section 2(a) - False Suggestion of a Connection:

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

Section 2(b) - Flag/Coat of Arms/Insignia:

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

Section 2(c) - Consent to Register:

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

Section 2(d) - Likelihood of Confusion:

• Precedential No. 3: Ownership of Lapsed Registration No Justification for New Application for Same Mark and Goods/Services
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• Despite Weakness of "GLORIA" as a Formative, TTAB Upholds 2(d) Refusal of GLORIA & Design for Italian Restaurant Services
• TTAB Reverses 2(d) Refusal of GHOST AGENCY & Design for Advertising Services due in part to a Crowded Field of "GHOST" Marks
• TTABlog Test: Is LIVIA JOLIE for Clothing Confusable with LIVIA & Design for Beachwear? [Yes]
• TTABlog Test: Is CELEBRITY PITCH TANK Confusable with SHARK TANK for Business-Themed Entertainment Services? [Yes]
• TTAB Affirms Bifusal of THE OHIO IPA for Beer: Geographically Descriptive and Confusable with OHIO PALE ALE for Beer
• TTABlog Test: Is THRESHER WORM for Fishing Lures Confusable with THRASHER RODS for Fishing Rods? [Yes]
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• TTABlog Test: Is PRO-GO for Bendable Lotion Containers Confusable with HANDY PRO-GO for Plastic Pails? [No]
• No Evidence of Priority, So TTAB Dismisses NEAU Coffee Opposition
• TTAB Test: Are these two "NWA" Marks Confusable for Clothing? [No]
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• TTABlog Test: Is GRUPPO VAVA for Clothing Excluding Lingerie Confusable with VAVA for Lingerie? [Yes]
• TTABlog Test: Is HORSETHIEF CANYON VINEYARDS for Wine Confusable with HORSE THIEF HOLLOW for Beer? [Yes]
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?
• Are These Two Logo Marks Confusable for Candy? [No]
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• TTABlog Test: Are T-Shirts Related to Entertainment Services Under Section 2(d)? [Yes]
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?

• TTABlog Test: Is "READY, FETCH, GO!" for Dog Toys Confusable with "READY SET FETCH" for Balls and Flying Discs?
• TTABlog Test: Are Perfume and Clothing Related Under Section 2(d)? [Yes]
• TTABlog Test: Which of These Three Recent Section 2(d) Oppositions Was/Were Dismissed?
• TTABlog Test: Is PLAYER EXCLUSIVE for Distilled Spirits Confusable with PLAYERS VODKA for Vodka? [Yes]
• TTABlog Test: Is Costume Jewelry Related to Clothing Under Section 2(d)? [Yes]
• TTABlog Test: Are Dental Implants Related to Syringes Under Section 2(d)? [No]
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• Affirming Section 2(d) Refusal, TTAB Rejects Consent Agreement and Finds Strategic Partners Inapplicable
• TTAB Reverses Section 2(d) Refusal of DAILY HARVEST CAFE Logo for Cafe Services: USPTO Fails to Prove Relatedness to Food Items and On-Line Services

Section 2(e)(1) - Mere Descriptiveness:

• TTABlog Test: How Did These Three Mere Descriptiveness Appeals Turn Out?
• TTAB Affirms Requirement to Disclaim DATA STREAMS for Database Management and Storage Services
• TABlog Test: Is SEAFISH Merely Descriptive of Seafood? [Yes]

Section 2(e)(2) - Primarily Merely Geographically Descriptive:

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

Section 2(e)(4) - Primarily Merely a Surname:

• TTAB Upholds Surname Refusal of GOLIA for Candy

Section 23(c) - Functionality:

• Precedential No. 1: TTAB Finds 8-Slice Pancake Configuration Mark De Jure Functional

Abandonment/Nonuse/Specimen of Use:

• TTAB Reverses Specimen Refusal: User Manual and Calibration Kit Suffice for Agricultural Machinery
• TTAB Affirms Reexamination Decision Ordering Cancellation of BAIA Registration for Non-use, Rejects Residual Goodwill Argument
• TTAB Grants Two Cancellation Petitions Based on Registrant's Deemed Admissions of Non-use
• TAB Upholds Refusal of LACONIA MOTORCYCLE WEEK for Clothing and Patches - Merely Ornamental and not a Source Indicator
• Precedential No. 2: TTAB Upholds USPTO Reexamination Ruling: EVERWISE CREDIT UNION Registration to be Cancelled for Nonuse
• TTAB Affirms Refusal of THEE EARTH logo due to "Mismatch" Between the Identified Goods and Specimens of Use
• Trade Name Use is not Trademark Use, Says TTAB

Non-distinctiveness:

• TTAB Affirms Refusals to Register Restaurant Interior Designs: Distinctiveness Neither Inherent Nor Acquired

Genericness:

• TTABlog Test: Is FOODANALYZER Generic for Food Sensitivity Testing Services? [No]
• TTAB Affirms Genericness Refusal of THE SKIN COACH for . . . . Guess What?
• TTAB Upholds Genericness Refusal of SOCIAL SECURITY LAW GROUP for . . . . Guess What?

Lack of Bona Fide Intent:

• TTAB Sustains Nike's Opposition to BLUE RIBBON TEAM for Sports Stores Due to Lack of Bona Fide Intent

Reexamination:

• TTAB Affirms Reexamination Decision Ordering Cancellation of BAIA Registration for Non-use, Rejects Residual Goodwill Argument
• Precedential No. 2: TTAB Upholds USPTO Reexamination Ruling: EVERWISE CREDIT UNION Registration to be Cancelled for Nonuse

Discovery/Evidence/Procedure:

• TTAB Denies Petition for Cancellation of Giraffe Logo Registration: No Standing After Board Rejects Petitioner's Purported Testimony
• TTAB Denies REVO Cancellation Petition for Failure to Prove Standing
• TTAB Denies Petition to Disqualify Attorney Who Submitted Testimony Declaration
• Supreme Court Denies Petition for Certiorari in RAPUNZEL Consumer Standing Case

CAFC Decisions:

• CAFC Affirms TTAB: Stick Figure for Vapes Not Confusable with "X" for Cigars

Supreme Court Decisions:

• Supreme Court Denies Petition for Certiorari in RAPUNZEL Consumer Standing Case

Recommended Reading:

• Recommended Reading: Prof. Lisa P. Ramsey: Trademarks and Free Speech - Conflicts and Resolutions
• The Trademark Reporter's "Annual Review of European Trademark Law"

Other:

• Second Circuit Vacates Peju Summary Judgment: Lower Court Misapplied Issue Preclusion and Misread B&B Hardware
• 24th at Noon
• TTAB Judge Elizabeth A. Dunn Has Retired
• TTAB Posts May 2026 Hearing Schedule
• TTAB Posts April 2026 Hearing Schedule

Text Copyright John L. Welch 2026.

TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?

TTAB affirmances of Section 2(d) refusals are running at about 84% so far this year. Here are three recent decisions. At least one of them resulted in a reversal. What say you? [Answer in first comment].

In re Connecting Forward, LLC, Serial No. 97565017 (June 26, 2026) [not precedential] (Opinion by Judge Robert Lavache). [Section 2(d) refusal of the mark MISTER JUNETEENTH, for “Organizing events in the field of pageants for cultural or educational purposes; Entertainment in the nature of pageant competitions" [JUNETEENTH disclaimed], in view of the registered marks JUNIOR MISS JUNETEENTH [JUNIOR and JUNETEENTH disclaimed], TEEN MISS JUNETEENTH [TEEN and JUNETEENTH disclaimed], and MISS JUNETEENTH SCHOLARSHIP PAGEANTRY PROGRAM [JUNETEENTH SCHOLARSHIP PAGEANTRY PROGRAM disclaimed] for “Entertainment in the nature of pageant competitions; organization of events for cultural purposes; organization of events in the field of pageants for educational purposes."]

In re Kayed Lafi, Serial No. 98191310 (June 30, 2026) [not precedential] (Opinion by Judge David K. Heasley) [Section 2(d) refusal of the mark GALLO'S ELITE PERFORM LIKE A PRO & design, shown below left [PRO disclaimed], in view of the registered mark GALLO GLOBAL NUTRITION & design, shown below right [GLOBAL NUTRITION disclaimed], both for nutritional supplements.]

In re NowOne Ventures, LLC, Serial No. 98757552 (June 30, 2026) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.). [[Section 2(d) refusal of the mark OMMI for "Vitamins; Dietary supplements; Herbal supplements; Nutritional supplements; Gummy vitamins; Mineral supplements" in view of the registered mark OMMIE for "Grain-based food bars also containing dried fruits and seeds."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

Recommended Reading: The Trademark Reporter, May-June 2026 Issue

Here's some holiday reading material for your enjoyment: the May-June 2026 (Vol. 116 No. 3) issue of The Trademark Reporter. [pdf here]. Willard Knox, Staff Editor-in-Chief, summarizes the contents as follows (and below): "This issue of The Trademark Reporter (TMR) offers readers an article exploring the ever-evolving interplay between trademarks and free speech; an article detailing how the Digital Services Act and recent European case law may expose online platforms to liability in the age of artificial intelligence; a commentary on potential copyright infringement arising from online content feeds; and three book reviews covering international patent law, advertising and trademarks in nineteenth-century America, and the history of trademark law, respectively."

Brands As Speech, Speech as Brands: Mapping the Two-Way Street Between Trademark Law and Freedom of Expression, by Alvaro Fernandez-Mora. This article explores how a trademark today can serve both as a source identifier and a source of self-expression and tracks this ongoing transformation under U.S. and European law.

Cast from the Safe Harbor into Open Waters of Active Duties: The Digital Services Act Alters the Course of Intermediary Liability in the EU, by Anthonia Ghalamkarizadeh, Florian Richter, Janis Beckedorf, and Marvin Jäschke. This article provides an in-depth analysis of the how the 2024 Digital Services Act and recent European case law could expose online platforms to primary liability, particularly in the age of artificial intelligence.

Commentary: Zombies Online: U.S. Copyright Infringement Claims That Never Die, and What We Should Do About Them, by Rodrick J. Enns. The author of this commentary trains a spotlight on the potential for copyright infringement under U.S. law in the de facto data storage caused by online platform feeds of third-party content.

Book Review: Advanced Introduction to International Patent Law. By Margo A. Bagley and Rochelle C. Dreyfuss. Reviewed by Tom Rammer. The reviewer of this book on international patent law—a first for the TMR—finds it provides readers with both a foundational understanding and thoughtful critique of the global patent system.

Book Review: Branding Trust: Advertising and Trademarks in Nineteenth-Century America., By Jennifer M. Black. Reviewed by Zvi Rosen. The reviewer of this book finds it an important contribution to the understanding of how trademark law became what it is today.

Book Review: Research Handbook on the History of Trademark Law., by Lionel Bently and Robert G. Bone, eds. Reviewed by Lesley McCall Grossberg and Gavin Canzanese. The reviewers of this book find it offers a rich and nuanced exploration of how historical developments have shaped trademark law as it is known today.

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

TTAB Posts July 2026 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (6) oral hearings for the month of July 2026. In the first and third cases listed below, the hearings will held in-person at the Madison East Building 600 Dulany Street, 9th Floor (Hearing Room C), Alexandria, VA. The rest will be held virtually. Briefs and other papers for each case may be found at TTABVUE via the links provided.

July 8, 2026 - 10:00 AM [In-Person]: Constellation Brands U.S. Operations Inc. v. The Vineyard House LLC, Opposition No. 91245800 et al. [Consolidated oppositions against twelve applications for registration of marks comprising variations of the name Henry Walker Crabb, for wine, on the grounds that (1) Applicant lacked a bona-fide intent to use nine of its marks at the time the opposed applications were filed; (2) the CRABB’S BLACK BURGUNDY trademark violates the wine and spirits provision of Section 2(a); (3) applicant’s marks misdescribe qualities and characteristics of applicant’s Goods in a way that would deceive consumers; (4) applicant’s marks are likely to cause confusion as the source of goods because they are confusingly similar to opposer’s marks; and (5) applicant’s marks create a false association with opposer and opposer’s TO KALON Vineyard.]

July 16, 2026 - 11:00 AM [Virtual]: Airbnb, Inc. v. AirEase,LLC, Opposition No. 91287634 [Opposition to registration of the mark AIREASE for "Downloadable mobile applications for the connection of short-term rental seekers and hosts offering last-minute and overflow lodging and transportation opportunities" on the grounds of likelihood of confusion with, and likely dilution of, the registered mark AIRBNB for arranging temporary housing accommodations, and related software and services.]

July 16, 2026 - 2:00 PM [In-Person]: In re Sozosei Foundation, Serial No. 97351330 [Refusal to register the mark MENTAL ILLNESS IS NOT A CRIME on the ground of failure-to-function as a source indicator for publications and services in the field of mental health and mental illness.]

July 22, 2026 - 12:00 PM [Virtual]: In re ALLCITY Network, Inc., Serial No. 98209334 [Section 2(d) refusal of the mark KNUX for "Clothing, namely, t shirts, polos, tanks, sweatshirts, hoodies, jackets; headwear, namely, sports caps and hats," in view of the registered mark NUX for, inter alia, sport shirts, t-shirts, sweatshirts, shirts, tank tops, and caps.]

July 22, 2026 - 2:00 PM [Virtual]: Matos Insurance Agency, Inc. and Armando J. Matos v. Mattos Insurance, Inc., Cancellation No. 92082310 [Petition for cancellation of a registration for the mark MATTOS INSURANCE for "Insurance agency and brokerage" [INSURANCE disclaimed] on the ground that the mark is primarily merely a surname and lacks acquired distinctiveness.]

July 29, 2026 - 2:00 PM [Virtual]: In re Joshua James Waldrop, Serial No. 97691670 [Section 2(d) refusal to register the mark ULTIMA PRO WRESTLING UPW for " Entertainment services in the nature of creation, development, and production of television programming; Entertainment, namely, a continuing professional wrestling show broadcast over television, satellite, and internet.; Entertainment services, namely, wrestling exhibits and performances by a professional wrestler and entertainer" [PRO WRESTLING disclaimed] in view of the registered mark ULTIMA LUCHA for "Entertainment services, namely, an ongoing television series featuring sports entertainment broadcast over television, satellite, audio and video media and via a global computer network; entertainment services, namely, live events featuring wrestling contests and exhibitions; entertainment services, namely, performances by a professional wrestler and entertainer; providing wrestling news, information and non-downloadable video via a global computer network" [LUCHA disclaimed].]

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TTABlogger comment: What say you? See any WYHA?s?

Text Copyright John L. Welch 2025.

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, 2026 U.S.P.Q.2d 548 (TTAB 2026) [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., 2026 U.S.P.Q.2d 545 (TTAB 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 the prior registration, which (it unsuccessfully 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.

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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.