Prof. Thomas A. Reichert: The Board Changes Its Mind Without Changing the Record: Factor Six After Apex Bank

Here is a guest blog post by Thomas A. Reichert, Assistant Professor of Law at Simmons Law School, Southern Illinois University, in Carbondale, Illinois. The Board's recent decision on remand in the Apex Bank case [TTABlogged here] led to Professor Reichert's observations on the changing role of the sixth DuPont factor in the Board's Section 2(d) analysis.

The Board Changes Its Mind Without Changing the Record: Factor Six After Apex Bank

by Professor Thomas A. Reichert

The Board has now decided the same opposition twice, on the same trial record, and reached opposite outcomes. Between the two decisions neither party filed a new brief, no witness testified, and the only additions to the record were a few judicially noticed housekeeping facts. One DuPont factor was re-scoped on appeal. Two factors flipped. The outcome inverted. 

Doctrine rarely runs a controlled experiment on itself, but in CC Serve Corp. v. Apex Bank, Opposition No. 91254295 (TTAB July 17, 2026), the Board was ordered to do just that. 

CC Serve has owned the standard-character mark ASPIRE for credit card services since 1998. It opposed Apex Bank’s three applications for ASPIRE BANK design marks (the word "aspire" over a disclaimed BANK, a mountain peak behind) for banking and financing services. In May 2023 the Board sustained the opposition: the services were legally identical in part under the second factor and the marks highly similar under the first. Every other factor favored confusion or sat neutral. On the sixth factor—the number and nature of similar marks in use on similar goods—the Board confined the relevant universe to marks used for credit card services. It counted nine ASPIRE-formative marks within this relevant universe and deemed the forty-odd others in the record “essentially irrelevant.” Nine, the Board held, fell short of the “considerable” or “ubiquitous” use that demonstrates weakness (according to Jack Wolfskin and Juice Generation), so CC Serve’s ASPIRE mark received the normal scope of protection of an inherently distinctive mark. 

On appeal, the Federal Circuit affirmed as to the second factor and vacated the sixth. Apex Bank v. CC Serve Corp., 156 F.4th 1230 (Fed. Cir. 2025) (Hughes, J.) (precedential). The Federal Circuit decreed that the Board could not find credit card services and banking/financing services “highly similar” for the factor that helps the opposer and then shrink the relevant universe to credit cards for the factor that helps the applicant. “That was an error.” “When the Board has already made a factual finding that the services are highly similar—in fact, partially legally identical—in its analysis of the second DuPont factor, . . . the Board should retain the same scope in its consideration of similarity under the other factors.” And because “reconsideration of the sixth DuPont factor may result in a different determination of the mark’s commercial strength or weakness and affect the overall commercial impression,” the first factor fell with it. 

Thus, on remand, the relevant universe grew from nine marks to twenty-three third-party users, covering credit, banking, and financing services, with some consideration given to eighteen more for retirement and wealth management. The same record now showed a mark “commercially and conceptually quite weak,” the word ASPIRE being highly suggestive of exactly what consumers of credit card services are doing: aspiring to reach their financial goals. The marks themselves had not changed, and the Board still found them similar in their entireties; but in a crowded field, consumers “are likely to notice and rely on the minor differences between the marks to distinguish them.” Thus, the generic word BANK and a mountain peak, which counted for little in 2023, apparently now were enough to distinguish the involved marks (and change the direction of factor one). The Board found “the heavy weight of the sixth factor is the dominant consideration,” held that factors one and six outweighed two and three, and dismissed the opposition. To its credit, the Board was precise about which marks in the field made the difference: a closing footnote states it would reach the same conclusion even without the eighteen retirement and wealth-management marks. The flip thus rested on the scope of the universe the Federal Circuit ordered. 

How often does factor six actually do this? 

Unsurprisingly, almost never. The evidence is a coded corpus of roughly 4,000 final Board decisions under Section 2(d), drawn from a pair of empirical studies of confusion doctrine at the Board (here) and in the federal courts (here). 

The story those numbers tell is short. Start with the two findings that decide most oppositions: the marks are similar, and the services are close. How often does an applicant lose on both factors and still win? In about 3,500 comparisons where the Board made both findings in favor of opposer, the answer is twenty-nine times. In those 29 cases, the fight is over the other DuPont factors: third-party use, fame, actual confusion, sophistication, and the rest. 

Factor six is the best of a bad lot. It accounts for applicant’s success in 17 of those 29 cases. But notice how often it is raised and still fails: the Board found the sixth factor favored the applicant in about 935 of those 3,500 comparisons, but the applicant won only 17 times, roughly one in fifty-five. That is what makes this remand worthy of attention. Apex Bank is the Federal Circuit giving applicants a little room to work with when the field is crowded. 

Two footnotes for the curious. The sixth factor is analyzed about half the time, and its share has been climbing, to roughly 62% in 2024 and 65% in 2025, so a practitioner’s sense that it now turns up in nearly every case is directionally right and a few years ahead of the record. And the corpus is entirely pre-Apex Bank. It shows the baseline that the scope correction now perturbs, decided under the narrower factor-six practice the Federal Circuit just rejected. Whether the remand is the first observation of a new regime or a one-off is the question worth watching, and given the volume of Board determinations each year, we should be able to answer it in about eighteen months. 

What Apex Bank changes at the Board 

The practice rule is fairly straightforward: scope the third-party-use record to the relevant services as the Board finds them under the second factor, not to the opposer’s identification as written. An opposer’s broad win on the second factor now hands the applicant a wide sixth-factor universe. The finding that hurt Apex Bank on factor two is the finding that saved it on factor six. 

For opposers, the remand is a catalog of rebuttals that failed: 

• CC Serve showed an active enforcement program. The Board credited it, quoted McCarthy’s observation that diligent policing enhances strength, and then found the field crowded anyway. 
• CC Serve objected that the third parties are largely regional credit unions and community banks. The Board itself counted thirteen of the twenty-three as regional, and answered that online and mobile banking can be done from anywhere. 
• CC Serve objected that the record did not show the extent of third-party use. The Board invoked the presumption that advertised services are rendered and the rule that voluminous third-party evidence can be “powerful on its face” (Jack Wolfskin). 

A factor, or a sub-factor? 

The vacatur of the first factor is the doctrinal news. The court’s logic is that third-party use bears on a mark’s commercial strength, and that commercial strength in turn colors the overall commercial impression the mark conveys. Re-scope the sixth factor and the first factor can move with it. The remand executed exactly that sequence. The historical record, though, shows the two factors moving nearly independently: where factor six favors the applicant, factor one still favors the opposer nearly three-quarters of the time. If third-party use does its work through commercial impression, factor six collapses into factor one as a sub-factor, and Apex Bank is the most explicit appellate statement of that sequence to date. On the data, that linkage is doctrine leading practice by a wide margin. 

The remand deserves a wider audience

The remand opinion carries the “This Opinion is Not a Precedent of the TTAB” banner, which is a strange fate for the decision that shows what the Federal Circuit’s scope rule does in practice. The Board changed its mind without changing the record; the least it can do is say so citably. If you agree, you may want to file a request for precedential designation, as I recently did. 

The Federal Circuit, for its part, is already citing Apex Bank downstream. See Fuente Marketing Ltd. v. Vaporous Technologies, LLC, No. 24-1460 (Fed. Cir. Apr. 8, 2026). [TTABlogged here].

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TTABlogger comment: Do you think that, in the real world, any consumer would encounter the APEX credit card mark and all 23 third-party marks?

Text Copyright John L. Welch and Thomas A. Reichert 2026.

TTABlog Test: Is "ROUNDS" Merely Descriptive of Cigars?

The USPTO refused to register the proposed mark ROUNDS, finding it to be merely descriptive of "cigars" under Section 2(e)(1). Applicant Kretek argued that the Board should ignore Kretek's registration for CUBAN ROUNDS, in which it relied on Section 2(f) with regard to the word ROUNDS, and further contended that ROUNDS is a double entendre. No cigar, said the Board. In re Kretek International, Inc., Serial No. 98478188 (August 11, 2026) [not precedential] (Opinion by Judge Angela Lykos).

Kretek did not claim acquired distinctiveness but instead took the position that ROUNDS is an inherently distinctive mark. It asserted that its prior reliance on Section 2(f) "is not dispositive here and is of minimal persuasive value to a determination of whether ROUNDS is merely descriptive of a quality, feature, or characteristic of cigars at this time and on the record before the Board." The Board disagreed, pointing to In re Am. Furniture Warehouse Co., No. 86407531, 2018 TTAB LEXIS 122, at *6-7 [TTAB 2018].

Applicant Kretek’s claim of acquired distinctiveness in part as to the word ROUNDS reflected in its prior registration for CUBAN ROUNDS constitutes a concession that its applied-for mark ROUNDS is not inherently distinctive. On this basis alone, we affirm the Examining Attorney’s mere descriptiveness refusal under Section 2(e)(1).

In addition, Examining Attorney Dannean Hetzel submitted evidence demonstrating that ROUNDS is merely descriptive of “cigars.” The Board observed that "[i]t is well established that a term describing the shape or form of the identified goods is merely descriptive." It noted that the online platform WordReference.com defines "round" as "something circular in cross section, as a rung of a ladder or chair."

Applicant counters that “information about a cigar’s cylindrical nature does not meet the required vitalness, immediacy, and particularity elements of a merely-descriptive term.” Applicant’s argument is unpersuasive. Within the context of the goods, consumers will immediately understand the plural noun ROUNDS as describing cigars round in shape or circular in cross-section. It is common for cigars to be sold in a round shape and not uncommon for the advertising and packaging to highlight the shape.

The evidence showed that consumers may specifically shop for cigars designated as “round” for their unique qualities. "'Cigar aficionados often praise round cigars for 'their smooth, even draw' and 'cylindrical shape' allowing 'for consistent airflow, making it easier to smoke.'"

Alternatively, Kreteck contended that ROUNDS is a double entendre referring to "the types of activities commonly performed or played in 'rounds,' such as rounds of golf, rounds of drinks, or rounds of shooting or ammunition." In support, it submitted advertisements and social media posts from Instagram showing that each of these activities is commonly associated with smoking cigars. The Board was not impressed: "The multiple interpretations that make a proposed mark a double entendre must be 'readily apparent from the mark itself' and not 'other indicia.'"

Consumers are far more likely to understand ROUNDS as referring to a characteristic of the goods, such as their shape and cross-sectional diameter, rather than as an allusion to a round of golf, round of ammunition or round of drinks. Here, the alternate meanings are too attenuated based on the mark itself. The record summarized above shows that “rounds” in relation to cigars is not a unique, clever play on words but is instead part of the cigar industry’s lexicon.

Concluding that the proposed mark ROUNDS "immediately conveys, without conjecture or speculation, a key attribute of Applicant’s goods," the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2026.

TTAB Deems PULSE DECOMPOSITION ANALYSIS Generic for . . . . Guess What?

The Board affirmed a refusal to register, on the Supplemental Register, the proposed mark PULSE DECOMPOSITION ANALYSIS, finding it to be generic for patient monitors and patient sensors for monitoring and measuring physiological parameters. Applicant CareTaker Medical argued that the proposed mark identifies a method or function by which the sensors and monitors measure blood pressure, not the device itself. The Board was unmoved. In re CareTaker Medical, LLC, Serial No. 90881906 (August 7, 2026) [not precedential] (Opinion by Judge Robert Lavache).

The Board stated the issue as this: "the ultimate inquiry here is whether healthcare and medical professionals understand PULSE DECOMPOSITION ANALYSIS to refer to a class or category of 'patient monitors and patient sensors,' or to a key aspect or subcategory of those goods."

Examining Attorney Candace W. Hays maintained that a key aspect or feature of CareTaker's goods is the measurement of blood pressure through a particular method of analyzing a patient’s pulse. In support, she pointed to various articles referring to Pulse Decomposition Analysis (PDA) as a "non-invasive method of measuring blood pressure without a cuff," and to CareTaker's own patent and its website discussing measurement of breathing rate by pulse decomposition analysis. the Board concluded that the phrase "refers to a method for analyzing a patient’s pulse waves to measure, inter alia, blood pressure and other vascular characteristics."

CareTaker argued that the proposed mark cannot be deemed generic because “[t]here is no evidence of record that shows ‘pulse decomposition analysis’ being used as the name of a patient sensor or medical device, and thus “[t]he record does not show that one could go to a medical supply store and ask to purchase a ‘pulse decomposition analysis’ or go to a hospital and ask that a ‘pulse decomposition analysis’ be brought into the room." The Board was not persuaded.

Nor was the Board persuaded by the argument that PULSE DECOMPOSITION ANALYSIS can't be generic because it refers only to “the method applied by Applicant” or “a function that can be applied to data collected by a sensor.”

The Board found that CareTaker's arguments rely "on an unduly narrow application of the genericness standard." "As the Examining Attorney points out, '[a]ny term that the relevant public understands to refer to a particular genus of goods and/or services is generic.' * * * [T]hat would include a term that identifies a key aspect or subcategory of the relevant genus."

Finally, the Board shrugged off CareTaker's assertion that PULSE DECOMPOSITION ANALYSIS can't be generic because it is used only by Applicant, or only in connection with Applicant’s goods. "[W]hile evidence that a term is used by competitors, if it exists, may be relevant to a genericness analysis, it is not required where, as here, other evidence shows that consumers will understand the term to refer to the genus."

And so, the Board affirmed the refusal under Sections 23(c) and 45 of the Trademark Act.

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TTABlogger comment: I think this is one of those "key aspect" cases that goes too far. Remember BLUEBERRY MUFFIN for beer?

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 84% so far this year, appreciably below the usual 90%. Here are three appeals decided last week. How do you think they came out? [Answer in first comment].

In re Happy Ears Hearing Center, LLC, Serial No. 97036010 (August 6, 2026) [not precedential] (Opinion by Judge George C. Pologeorgis) [Section 2(d) refusal of the mark HAPPY EARS HEARING (In standard character form) for “Medical diagnosis, treatment, and evaluation of hearing and balance disorders; hearing aid services" [EARS HEARING disclaimed] in view of the registered mark HAPPY EARS for “ear plugs for noise reduction or soundproofing” and for “ear plugs for noise reduction or soundproofing” [EARS disclaimed].]

In re Oxford Healthspan LLC, Serial No. 97096288 (August 6, 2026) [not precedential] (Opinion by Judge Mark Lebow). [Section 2(d) refusal of the mark PUREMIDINE for “Nutritional supplements for pets” in view of the identical mark registered for spermidine and various spermidine mixtures, derivatives, and isomers, all used as raw ingredients in the manufacture of foods and nutritional and dietary supplements.]

In re Scrap-It, LLC, Serial Nos. 98080185 (August 6, 2026) [not precedential] (Opinion by Thomas L. Casagrande). [Section 2(d) refusal of the mark shown below, for "downloadable software application for mobile phones for scheduling debris removal services" in view of the registered mark SCRAP-IT! for "Software as a service (SAAS) services featuring software for connecting customers wanting items removed from a location with companies and people that can haul away the items."]

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

Text Copyright John L. Welch 2026.

Professor McCarthy: The Trademark Trial and Appeal Board’s (Mis)Treatment of the Anti-Dilution Act

Professor J. Thomas Mc Carthy has given me permission to post the following comments on the TTAB's treatment of the issue of dilution. His comments stem from the Ninth Circuit's recent decision in the BAD SPANIELS case [TTABlogged here], in which the appellate court vacated the permanent injunction issued by the Arizona district court, based on dilution by tarnishment, and remanded the case for entry of judment in favor of VIP Products.

The Trademark Trial and Appeal Board’s (Mis)Treatment of the Anti-Dilution Act

Ever since enactment of the Trademark Dilution Revision Act of 2006, the Trademark Trial and Appeal, in my view, has been much more willing than the courts to find a violation of Section 43(c) of the Trademark Act because the Board’s requirement for proof of a violation is much less demanding than that applied by the courts.

The Lanham Act defines dilution by blurring as resulting from an “association arising from the similarity between [an accused] mark or trade name and a famous mark that impairs the distinctiveness of the famous mark.” Similarly, the Act defines dilution by tarnishment as an “association arising from the similarity between [an accused] mark or trade name and a famous mark that harms the reputation of the famous mark.” In both situations, an essential element of a violation is proof of the likelihood of some form of detriment to the mark: either impairment of the strength of the famous mark or harm to its reputation.

European Union law explicitly prohibits both dilution and free-riding. But unlike European Union law, federal U.S. anti-dilution law solely prohibits the likelihood of dilutive injury. The 2006 Trademark Dilution Revision Act is not an “anti-free-riding” law.

“Association” (the accused mark calls to mind the famous mark) and harm to the famous mark are two separate elements of a claim of dilution. But the Trademark Trial and Appeal Board has consistently made the assumption that if the accused mark is so similar to the famous mark that there is “association” (it calls to mind the famous mark), then it can be assumed without proof that there is a likelihood of harm or impairment to the famous mark. As discussed in the McCarthy treatise at §24:100, the Board does not require any evidence to conclude that there is a likelihood of detriment to the mark. The Board simply assumes that if the accused mark calls to mind the famous mark, then there must be harm to the famous mark.

The fallacy of the Board’s reasoning is shown by the recent Ninth Circuit decision in the Jack Daniel’s case. VIP Products, LLC v. Jack Daniel's' Properties, Inc., 2026 WL 2237625 (9th Cir. 2026). The Ninth Circuit said that evidence of harm is required and here, the evidence did not support a conclusion of harm to the famous Jack Daniel’s whiskey mark and trade dress. Jack Daniel's claimed that VIP’s parody dog toy constituted both trademark infringement and dilution by tarnishment. After remand from the Supreme Court, the district court found no trademark infringement but did find dilution by tarnishment. It reasoned that a parody dog toy with a label featuring jokes about dog poop constituted dilution by tarnishment and it enjoined the accused dog toy.

The Ninth Circuit reversed. “Association” was not in issue because as a parody, the point of the dog toy joke was to bring to mind the Jack Daniel’s marks. The court emphasized that both association and harm must be proven. “The plaintiff … bears the burden of both establishing association and showing that the association dilutes the famous mark. [Jack Daniel’s] did not do so here.“ The plaintiff’s survey expert only provided evidence of the broad impact of a message of defecation with regard to the consumption of food and drink. “There is no evidence in the record from which a court could reasonably infer that scatological references made on a dog toy have the same likelihood of generating disgust as identical references on a consumable product meant for humans might. “ Thus, there was no evidence of harm to the famous Jack Daniel’s marks.

The Ninth Circuit decision is consistent with the Second Circuit’s 2009 decision holding that proof of association is not itself proof of detriment to the famous mark. The Second Circuit held that a small, family-owned coffee roaster’s MISTER CHARBUCKS for a dark-roasted blend was not proven to be likely to “tarnish” plaintiff's famous STARBUCKS mark for coffee: “[A] mere association between ‘Charbucks’ and ‘Starbucks,’ coupled with a negative impression of the name ‘Charbucks,’ is insufficient to establish a likelihood of dilution by tarnishment. “ Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 110 (2d Cir. 2009) (“We will not assume that a purportedly negative-sounding junior mark will likely harm the reputation of the famous mark by mere association….”).

These Second and Ninth Circuit cases are both consistent with the Supreme Court’s 2003 Victoria’s Secret case. While the high court was dealing with the 1996 Act, this part of the ruling is equally applicable to the 2006 version: “[T]he mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution. …. [S]uch mental association will not necessarily reduce the capacity of the famous mark to identify the goods of its owner….” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 434 (2003).

The Trademark Trial and Appeal Board is clearly out of step with these decisions.

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TTABlogger comment: If you put the word "spaniels" in the TTABlog search engine, you'll get a whole string of posts regarding the VIP case.

Text Copyright John L. Welch and J. Thomas McCarthy 2026.

TTABlog Test: Is THE SKIN MIXOLOGY for Skin Care Preparations Confusable with MIXOLOGY for Custom-Blended Body Products?

The USPTO refused to register the mark THE SKIN MIXOLOGY for various non-medicated skin care preparations, not including "custom-blended aromatherapy creams, lotions, oils, massage oils, or exfoliating body scrubs" [SKIN disclaimed], deeming confusion likely with the registered mark MIXOLOGY for "Custom-blended aromatherapy bath and body products, namely, creams, lotions, oils, massage oil, exfoliating body scrubs” What do you think were the chances of a reversal? In re SHM Ventures, LLC, Serial No. 99019667 (August 5, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Applicant SHM Ventures, appearing pro se, got off on the wrong foot, arguing that the term “mixology” is “a conceptually weak and diluted term” in the “beauty field” or “skincare industry.” However, the evidence in support of that argument was attached to its appeal brief and was therefore untimely. The Board ignored it.

As to the marks, the Board found that the term MIXOLOGY dominates applicant's mark, since SKIN is disclaimed. "So while SKIN creates a visual and sound difference, we find it plays a relatively small role in the overall commercial impression of the mark THE SKIN MIXOLOGY." Applicant claimed that MIXOLOGY has a different connotation in the two marks and that its mark is anchored in the field of skin care. However, registrant's products are also in the skin care field, "[s]o adding SKIN to the term MIXOLOGY wouldn’t make the connotation of the registered mark different from that of the same term in Applicant’s mark."

Thus, while the marks are not identical, we find them to be very similar overall in that the term MIXOLOGY, which is the entirety of the registered mark, is the dominant element in creating the overall commercial impression of Applicant’s mark.

During prosecution, SMH Ventures tried to distinguish the goods by limiting its non-medicated skin care preparations to “facial and body moisturizers, serums, and toners” and adding the exclusionary language “none of the foregoing being custom-blended aromatherapy creams, lotions, oils, massage oils, or exfoliating body scrubs." However, the Board found that the goods still overlapped.

That’s because, while the application might exclude “custom-blended aromatherapy” versions of skin-care moisturizers, the product category “moisturizers” in the amended application covers moisturizers in any physical form, including cream form, lotion form, and oil form, so long as they are not “custom-blended aromatherapy” versions of those products. And the evidence of record shows that other skin care companies offer moisturizers (as in the application) in the form of creams, lotions, and oils (as in the registration).

The Board found that the goods are legally identical in part [I'm not sure how - ed]. "At minimum, they are closely related." The legally identical goods presumably travel in the same trade channels to the same classes of consumers.

In sum, none of the factors weighed in favor of applicant, and so the Board affirmed the refusal.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2026.

Ninth Circuit Vacates BAD SPANIELS Injunction Based on Dilution by Tarnishment, Orders Judgment for VIP

In the latest chapter of the long-running BAD SPANIELS case, the U.S. Court of Appeals for the Ninth Circuit has vacated the permanent injunction issued by the Arizona district court, based on dilution by tarnishment, and has remanded the case for entry of judment in favor of VIP Products. The appellate court ruled that "[t]he district court erred in concluding that JDPI met that burden and that [expert] Dr. Simonson’s testimony was sufficient to prove a likelihood of dilution beyond speculation." VIP Products, LLC v. Jack Daniel's' Properties, Inc., Appeal No. No. 25-2027 (9th Cir., August 4, 2026).

"To prove dilution of its mark by tarnishment, the plaintiff must establish that its mark is famous, the allegedly diluting mark is similar to the famous one, and the diluting mark creates a mental association with the famous mark likely to damage the famous mark’s reputation." The Ninth Circuit held that JDPI failed to carry its burden of proof.

Because VIP conceded similarity, the Ninth Circuit focused on the question of whether JDPI established a likelihood that “Bad Spaniels” and the toy’s trade dress harm the reputation of “Jack Daniel’s” and its registered trade dress (the only two marks that JDPI proved to be famous).

In evaluating whether the Bad Spaniels toy tarnishes “Jack Daniel’s,” the district court relied on the testimony of JDPI’s expert, Dr. Itamar Simonson. It concluded that “[b]ecause Jack Daniel’s produces a product intended for human consumption, association of Jack Daniel’s marks with something like dog feces is” not only tarnishing, but “particularly detrimental.”

The Ninth Circuit, however, concluded that Dr. Simonson’s analysis "ignored the effect of a 'humorous difference' on whether Bad Spaniels harms the reputation of JDPI’s famous marks."

To be sure, the district court credited Dr. Simonson’s conclusion that the first step of his dilution analysis was satisfied “because the point of VIP’s product was to bring Jack Daniel’s whiskey to mind”; that conclusion was based on VIP’s transparently parodic use. * * * Parody, however, is inherent in the Bad Spaniels product—indeed, as Dr. Simonson recognized, it was the “whole point.” Failing to consider the effect of VIP’s obvious parody on the likelihood of tarnishment was a critical misstep, and the district court erred in adopting the conclusions that followed.

The Ninth Circuit obvserved that, "to the extent Dr. Simonson’s testimony established any negative association, it was between some broad concept of defecation and consumption of food and drink products. Dr. Simonson acknowledged that he did not conduct a study on whether the Bad Spaniels dog toy itself creates harmful associations."

There is no evidence in the record from which a court could reasonably infer that scatological references made on a dog toy have the same likelihood of generating disgust as identical references on a consumable product meant for humans might. Dr. Simonson’s opinion to the contrary is pure conjecture.

Notably, the Ninth Circuit observed that "even where 'parody is not automatically a complete defense to a claim of dilution' because 'the defendant uses the parody as its own designation of source,' the TDRA “does not require a court to ignore the existence of a parody that is used as a trademark, and it does not preclude a court from considering parody as part of the circumstances to be considered for determining whether the plaintiff has made out a claim for dilution."

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TTABlogger comment: Long live parody! PS: If you put the word "spaniels" in the TTABlog search engine, you'll get a whole string of posts regarding this case. Will Jack Daniel's petition for certiorari? If it does, I think that dog won't hunt.

Text Copyright John L. Welch 2026.

TTAB Reverses Specimen Refusal, Finding Webpage Sufficient for Pet Food Products

The Board overturned a specimen refusal of the mark RAISED RIGHT RR VETERINARY SUPPORT (in standard characters) for "Cat food; Dog food; Pet food; Edible cat treats; Edible chews for dogs; Edible dog treats; Edible pet treats," finding that applicant's website constituted an acceptable "display associated with the goods." In re Raised Right Pets, L.P., Serial No. 98709772 (August 3, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Under Section 45 of the Trademark Act, a mark is deemed to be in use in commerce on goods when, among other things, “it is placed in any manner on the goods or their containers or the displays associated therewith ....”

To establish that a webpage constitutes a “display associated with the goods,” the following criteria must be met: (1) the website contains a picture or textual description of the identified goods; (2) the website shows the mark in association with the goods; and (3) the website provides a means for ordering the identified goods. MN Apparel, 2021 TTAB LEXIS 162, at *19 (citing TMEP § 904.03(i)).

The Managing Attorney maintained that this specimen is split across five different pages, requiring multiple “clicks” to purchase the pet foods products; but only the first page displays the proposed mark.  Applicant argued that, considered together, the website is an acceptable display associated with the goods: the mark appears at the top of the page; the "corresponding contiguous webpages display and describe the goods identified in the application”"; and 'the adjoining webpages provide a direct purchasing mechanism."

The Board sided with the applicant. It noted that "the top of the webpage shows the mark RAISED RIGHT RR VETERINARY SUPPORT in a stylized format along with the menu for 'buy a box' and a shopping cart symbol." "Further down the webpage we find explanations and pictures which make clear to the consumer that Applicant’s goods are human-grade pet food that is cooked and frozen by Applicant; thawed by the consumers; and then served to the pet."

Applicant explained that the button “choose recipes” may be used by consumers to proceed to purchase the goods. This button is not a model of clarity in terms of directing consumers to add the pet food items sold under the mark to the shopping cart. But the “buy a box” dropdown tab and the shopping cart, which appear in close association with the mark, fill in the blanks. We infer that the drop-down options lead consumers to a webpage on Applicant’s website, as presented in the specimen, from which they can select a box of bagged pre-cooked and frozen pet food to purchase.

In sum, the proposed mark appears prominently at the top of the webpage, in close association with the product images, descriptions, and ordering mechanisms. "Viewed as a whole, the specimen demonstrates that the mark functions as a source identifier for the goods being offered for sale."

We find that the three-part test for a display associated with the goods as set forth in MN Apparel, 2021 TTAB LEXIS 162, at *19, is satisfied because the Second Substitute Specimen includes: (1) A picture or textual description of identified goods (images of pet food and descriptions of human-grade pet food that is cooked, frozen, thawed, and served); (2) The mark shown in association with the goods (mark in upper-center portion of webpage in close proximity to images of the goods); and (3) A means for ordering the goods (collectively, the “buy a box” dropdown, shopping cart icon, and “choose recipes” button, leading to an ordering page).

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TTABlogger comment: Good to see the Board side with the applicant on a specimen issue.

Text Copyright John L. Welch 2026.

TTAB Sustains Nike's Section 2(d) Opposition to GOT EM KICKS for Consignment Stores for Retro Sneakers and Clothing

The Board sustained Nike's opposition to registration of the mark GOT EM KICKS for "Retail consignment stores featuring retro sneakers and clothing," in view of the Nike's common law rights in the mark GOT 'EM for retail store services featuring footwear and clothing. The Board found that "all factors weigh in favor of a likelihood of confusion or are neutral, and none weigh against it." This post will hit some of the "highlights." NIKE, Inc. v. Gotemkicks, Opposition No. 91287908 (July 29, 2026) [not precedential] (Opinion by Judge Martha B. Allard).

he Board found that Nike launched its on-line SNKRS Platform in February 2015 and has used the GOT ’EM mark in connection with sales on that platform since its launch. Thus, Nike established use of its mark "at least in connection with its computer software application featuring footwear for sale since at least March 27, 2018, which is prior to any date upon which Applicant may rely."

Applicant’s brief focused mainly on the argument that Nike’s mark is a "commonly understood message [that] does not function as a trademark because it does not identify and distinguish source." However, the evidence showed that "consumers do indeed perceive the GOT ’EM phrase as identifying Opposer as the source of the online shopping platform services and computer software application."

Considering the totality of the evidence of record, the record does not demonstrate that Opposer’s mark is used in general parlance or that it conveys a common social, political, patriotic, religious or other informational message, such as was found to be the case in the phrases I ♥ DC, ONCE A MARINE, ALWAYS A MARINE and DRIVE SAFELY. Instead, we find that it shows that consumers perceive used with a computer software application as associated with Opposer rather than as a commonplace expression. * * * On this limited record we are simply not persuaded by Applicant’s arguments and cannot find, as Applicant argues, “widespread use and public exposure” of the phrase.

Applicant feebly argued that Nike failed to establish priority because its mark appeared on promotional items that were given away, not sold, to consumers. The Board kicked that argument to the curb: "As an initial matter, it ignores the fact that Opposer did in fact sell millions of items of footwear through its platform, where each successful sale caused the GOT ’EM mark to be displayed to the buyer. Regardless, '[t]he [Trademark Act] does not require that goods or services be sold for purposes of establishing priority.'"

Applicant also claimed that Nike's delay in seeking registration of its mark suggested that Nike itself did not consider the phrase to function as a mark. According to applicant, had Nike considered the GOT ’EM mark as a source indicator, it would have filed the application at or near the same time that it filed applications to register the SNKRS marks. The Board kicked that argument over the curb: "This is not persuasive, as there is no requirement that a mark owner apply to register its marks at all, much less that it seek to register all marks used with a particular good or service at the same time, or contemporaneously with the launch of the good or service."

Applicant did not dispute that the relatedness of the involved goods and services, nor that the parties’ channels of trade or classes of consumers are similar.

As to the conceptual strength of Nike's mark, the Board found that Nike's mark is suggestive, meaning that it is inherently distinctive. However, Nike's evidence regarding commercial strength fell short of proving that GOT 'EM is a particularly strong mark.

The record is clear that the SNKRS Platform is popular. However, with regard to the fifth DuPont factor, it is difficult to discern how many sales of footwear products were made via Opposer’s computer software application and how many of the consumers who visited the SNKRS Platform successfully purchased footwear and, as a consequence, were exposed to Opposer’s stylized mark. Even considering the unsolicited media evidence, we cannot find, on this record, that Opposer’s mark is entitled to be placed on the very high end of the fame/commercial strength spectrum; rather, we find that Opposer’s mark is entitled to the normal scope of protection

Applicant argued that the marks are dissimilar due to Applicant’s inclusion of the term KICKS and Opposer’s use of an apostrophe. The Board disagreed that these differences are enough to distinguish the marks. It found, instead, that the first DuPont factor weighed "heavily" in favor of a likelihood of confusion.

Finally, Applicant pointed to the lack of evidence of actual confusion. The Board was again unimpressed: "Here, Applicant’s co-existence as of the time of trial of about three years without evidence of actual confusion when the extent of its use is limited to services offered at a single location that has itself had low sales does not render confusion unlikely. We find the seventh and eighth DuPont factors neutral."

And so, the Board sustained the opposition.

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TTABlogger comment: Nike just did it.

Text Copyright John L. Welch 2026.

TTAB Upholds Section 2(e)(5) Functionality Refusal of Office Chair Wheel Configuration

The Board put the brakes on Applicant Equiper, LLC's attempt to register a mark comprising the three-dimensional configuration of an office chair wheel (shown immediately below). The Board, relying in part on a third-party utility patent, found the configuration to be functional under Section 2(e)(5). In re Equiper, LLC, Serial No. 98448363 (July 30, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The CCPA's Morton-Norwich decision sets forth the following four factors to be considered when assessing functionality under Section 2(e)(5):

1. the existence of a utility patent disclosing the utilitarian advantages of the design; 
2. advertising materials in which the originator of the design touts the design’s utilitarian advantages;
3. the availability to competitors of functionally equivalent designs; and
4. facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

The Board observed that a utility patent that claims the features of a proposed mark may be strong evidence of the functionality of those features. Furthermore, the patent’s specification and/or drawings may provide evidence of functionality even if the features are not explicitly claimed as part of the invention. "To be relevant under the first Morton-Norwich factor, the utility patent need not be owned by the applicant, but may be owned by a third party."

The crux of Applicant’s argument appears to be that the features of the wheel design claimed as its trade dress are not functional because they can be made in other shapes or designs and these non-functional shapes or designs outweigh the functional characteristics. Having carefully reviewed the [third-party] ’820 Patent . . .  we agree with the Examining Attorney that it discloses both the utilitarian advantages of Applicant’s overall design and of significant features claimed by Applicant as part of its trade dress, supporting a finding that the proposed mark, as a whole, is functional.

As to the second factor, Examining Attorney Gregory Gutierrez submitted advertising of both applicant and third parties that touted the utilitarian features of the design and supported a finding that the proposed mark, as a whole, is functional.

Since the first two factors were met, the Board did not need to consider the third and fourth factors. For the sake of completeness, however, the Board considered them anyway and found them to be neutral.

Applicant’s overall design and the significant features thereof are, as a whole, functional. Any non-functional features, such as specific shapes used by Applicant, are outweighed by the significant functional features. See, e.g., Heatcon, 2015 TTAB LEXIS 360, at *35-37 (citing Becton, Dickinson, for the proposition that the Board is to weigh functional and non-functional matter in determining whether a mark in its entirety is overall functional).

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TTABlogger comment: Why aren't statement made in the specification of a third-party patent inadmissible hearsay? Of course, a patent applicant will make assertions regarding the benefits of its design. Why should a trademark applicant be tarred and feathered with third-party statements? PS: I like to see a clear discussion of de facto functionality versus de jure functionality.

Text Copyright John L. Welch 2026.