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

In a dubiously precedential decision, the CAFC upheld the dismissal of Fuente Marketing's opposition to registration of the mark shown immediately below, for oral vaporizers (vapes), concluding that confusion is unlikely with Fuente's registered mark X for cigars, ashtrays, cigar cutters, and lighters. The Board determined that, although many of the DuPont factors weighed in Fuente's favor, the distinct commercial impressions created by the marks were sufficient to negate any likelihood of confusion. Fuente Marketing Ltd. v. Vaporous Technologies, LLC, Appeal No. 2024-1460 (Fed. Cir. April 5, 2025) [precedential].

Fuente challenged the Board’s analysis of the first and fifth DuPont factors—respectively, the similarity of the marks and the fame of Fuente’s registered X marks. Fuente also challenged the Board’s overall weighing of the factors. Vaporous contested the Board’s analysis of DuPont factors three and four—the similarity between the parties’ trade channels and the relative sophistication of each party’s consumers.

The Marks: The Board found that consumers would perceive Vaporous’s mark as a stick figure rather than the letter X. Fuente contended that the Board erred in relying on the parties’ stipulation that Vaporous's mark "consists of an abstract stick figure" (the wording in Vaporous's application) because the stipulation did not address how consumers would perceive the mark. See In re I.AM.Symbolic, LLC, 866 F.3d 1315, 1323 (Fed. Cir. 2017); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 203 (Fed. Cir. 1992) (comparing commercial impression of marks from the perspective of purchasers of the goods under the registrations). The CAFC, however, concluded that the Board's reliance on the stipulation was harmless error, pointing out that the Board "reached the same dissimilarity conclusion without reference to the stipulation, and the Board’s conclusion is supported by substantial evidence." See Henkel Corp. v. Procter & Gamble Co., 560 F.3d 1286, 1289 n.2 (Fed. Cir. 2009) (error harmless considering express disavowal of reliance on erroneous rationale).

Fuente also argued that the Board ignored evidence that Vaporous’s mark would not be perceived as a stick figure, pointing to Vaporous's use of the mark "as part of its larger DABX branding." But not only did Fuente previously argue that the Board could not consider such external evidence, but the court was not persuaded that the Board "ignored evidence, much less relevant evidence."

To the extent that Fuente is advocating that we consider Vaporous’s use of the mark in connection with other marks not part of the applied- for mark, we decline to do so. See Denney v. Elizabeth Arden Sales Corp., 263 F.2d 347, 348 (C.C.P.A. 1959) (“In determining the applicant’s right to registration, only the mark as set forth in the application may be considered; whether or not the mark is used with an associated house mark is not controlling.”). The correct inquiry requires comparison only of the applied-for mark to Fuente’s registered X marks. In re I.AM.Symbolic, 866 F.3d at 1324.

The CAFC was simply "not persuaded that the Board failed to consider evidence in the record," concluding that "[s]ubstantial evidence supports the Board’s conclusion that consumers are likely to perceive the mark as a stick figure, and we may not reweigh the evidence on appeal." See In re NTP, Inc., 654 F.3d 1279, 1292 (Fed. Cir. 2011).

Fuente maintained that the Board failed to consider the sound of the involved marks, but actually the Board expressly found that Vaporous’s mark has no pronunciation and therefore “does not sound like the letter X.” And finally, Fuente claimed that the Board should have applied the legal principle that where the “parties’ goods are closely related, a lesser degree of similarity between the marks may be sufficient to give rise to a likelihood of confusion.” The CAFC brushed that argument aside because it "assumes what it aims to prove. It presupposes that substantial and confusing similarities between the marks exist when the Board found that they did not. The Board cannot alter its tolerance for similarities between the marks if it finds none exist."

Trade Channels and Buyer Sophistication: Vaporous contended that the Board erred regarding factors 3 and 4 because it "ignored reality," pointing to Fuente's prior coexistence agreement with another entity, stating that cigar purchasers are sophisticated and discerning consumers. Vaporous further asserted that Fuente's cigars "often sell quickly and are difficult to locate." The CAFC concluded that the Board did not err.

Registrability of an applicant’s mark “must be decided on the basis of the identification of goods set forth in the application,” regardless of what the record reveals as to the current real-world nature of the applicant’s goods, channels of trade, or class of purchasers. See Octocom Sys., Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937, 942 (Fed. Cir. 1990) (emphasis added).

Fame (Strength) of Fuente's Mark: The Board found that Fuente's X mark was arbitrary and conceptually strong, but as to commercial strength, Fuente failed to show that consumers independently consider the letter “X,” standing alone, as a source indicator. "Fuente’s evidence of marketplace recognition largely depicted the letter X integrated into other marks and advertising." The Board concluded that the X marks were entitled only to the same “protection accorded any inherently distinctive mark” and categorized factor 5 as neutral in the likelihood of confusion analysis.

Fuente asserted that the Board gave "no weight" to the conceptual strength of the X marks. Not so, said the CAFC: "the Board acknowledged the X marks are arbitrary, and thus conceptually strong, while separately concluding that this conceptual strength is offset by the marks’ limited commercial strength." [Emphasis by the CAFC]. The Board's finding that the fifth DuPont factor is neutral was supported by substantial evidence."

Third-Party Marks: The Board "may have been in error" when it stated that, under the sixth DuPont factor, Vaporous failed to submit any evidence of third-party use of similar marks on similar goods. However, "its overall assignment of little probative weight to the evidence" was not erroneous.

Vaporous’s evidence of a single third-party mark in use is insufficient to demonstrate a crowded field of similar marks sufficient to suggest consumers are accustomed to carefully distinguishing between such marks. See Apex Bank v. CC Serve Corp., 156 F.4th 1230, 1235 (Fed. Cir. 2025). As such, we see no error in the Board’s assignment of “little probative weight” to Vaporous’s evidence.

Balancing the Factors: Fuente asserted that the Board failed to explain its balancing of the DuPont factors so that the appellate court could discern the Board’s rationale. The CAFC, however, saw no such problem:

[T]he Board’s path is discernable: As Fuente concedes, the Board concluded all but one DuPont factor was neutral or favored a likelihood of confusion. The Board’s finding that, nonetheless, there was no likelihood of confusion between the parties’ marks thus necessitates the conclusion that it considered factor one—the similarity or dissimilarity of the marks—sufficient, on its own, to find no likelihood of confusion. This is enough for us to discern the Board’s path to dismissal. See In re Charger Ventures LLC, 64 F.4th 1375, 1384 (Fed. Cir. 2023) (“We will, nevertheless, uphold a decision of less than ideal clarity if the agency’s path may reasonably be discerned.” (cleaned up)).

Fuente also contended that the Board erred in giving dispositive weight to the dissimilarity of the marks under the first DuPont factor and failing to give sufficient weight to the other factors. Again, the court was unmoved. "The likelihood of confusion analysis is a balancing test, and a single DuPont factor “may be dispositive,” especially where, like here, “that single factor is the dissimilarity of the marks.” Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed. Cir. 1998)."

In sum, the CAFC agreed with the Board that the differences between the marks outweighed all of the other relevant DuPont factors.

Read comments and post your comment here.

TTABlogger comment: I don't see why such a fact-dependent ruling was deemed precedential. What's new here?

Text Copyright John L. Welch 2026.

Trade Name Use is not Trademark Use, Says TTAB

Things turned out not so grate for Maple Leaf Cheesemakers in its attempt to register the mark MAPLE LEAF CHEESE CO-OP for "cheese." Considering the only specimen of use, the Board found that Maple Leaf used the phrase only as a trade name and not as a source indicator, and so the proposed mark was not eligible for registration. In re Maple Leaf Cheesemakers, Inc., Serial No. 88663903 (April 8, 2026) [not precedential] (Opinion by Judge Thomas W. Wellington).

Section 45 of the Act defines a trade name as "any name used by a person to identify his or her business or vocation." "If a proposed mark functions solely as a trade name, registration must be refused." See, e.g., Martahus, 3 F.3d at 421. Note that a designation may function as both a trade name and a trademark.

“The question of whether a name used as a trade name also functions as a trademark is one of fact, and is determined from the manner in which the name is used and the probable impact on purchasers and prospective purchasers.” Diamond Hill Farms, 1994 TTAB LEXIS 16, at *2. Factors to consider include whether Applicant has used its full corporate name or entity designation, capitalized its name, utilized its name in the same lettering style as other matter, used its name in a significantly bolder or larger style of type, or displayed its name in a contrasting color. In re Univar Corp., No. 73786565, 1991 TTAB LEXIS 31, at *5.

Here, Maple Leaf's specimen of use (shown above) was a label for its packaged cheese. The proposed mark appears on the bottom line of the label, immediately preceded by the words "Distributed By:" and followed by Maple Leaf's city/state/zip code and website address. The font size, style and color for the “Distributed By:” wording is the same as that for the proposed mark. The Board agreed with Examining Attorney David Brookshire that consumers "will perceive MAPLE LEAF CHEESE CO-OP merely as a trade name, and not as a product source-identifier."

Specifically, “the applied-for mark only has the impression of identifying a business or a vocation, and therefore is an unregistrable trade name.” In contrast, consumers encountering this packaging will view the composite mark, MAPLE LEAF CHEESE with a maple leaf and banner design, that appears stylized, in color, and much more prominently at the top as the source-identifier for the cheese.

The Board observed that whether MAPLE LEAF CHEESE CO-OP is actually a business or entity name is irrelevant. It "does not distinguish Applicant’s goods from those of others. Accordingly, the proposed mark cannot proceed to registration under Sections 1, 2, and 45 of the Act."

Read comments and post your comment here.

TTABlogger comment: WYHA? I think that I would have amended the basis to intent-to-use, rather than appeal. 

Text Copyright John L. Welch 2026.

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

Here are three recent TTAB decisions in Section 2(d) appeals. Remembering that a TTAB Judge (now retired) once said that one can predict the outcome of a Section 2(d) appeal 95% of the time just by considering the marks and the goods/services, how do you think these came out? [Answer in first comment].

In re Wilson Carter, Serial No. 98290246 (April 1, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of the mark CLUTCH for "Batteries; Battery chargers for mobile phones; Battery chargers for use with electronics; Mobile telephone batteries" in view of the registered mark CLUTCH OUTDOORS for, inter alia, "solar-powered battery chargers for charging mobile and handheld electronic devices" [OUTDOORS disclaimed].

In re SC Bucin Mob SRL, Serial No. 79403753 (April 6, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon) [Section 2(d) refusal of the mark shown below, for "Skadi-style non-metallic prefabricated houses; laminated wood carpentry, namely, laminated wooden exterior doors, wooden shutters" [WOOD disclaimed] in view of the registered mark INFINITY for "windows and plastic window frames."]

In re Halo Machine, Serial No. 98672491 (April 6, 2026) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.). [Section 2(d) refusal of the mark HALO MACHINE for, inter alia, "custom additive manufacturing of firearm display stands and wristwatch display stands for others" [MACHINE disclaimed] in view of the registered mark HALO for, inter alia, "additive manufacturing for others," 'custom additive manufacturing," and "custom additive manufacturing for others."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

Affirming Section 2(d) Refusal, TTAB Rejects Consent Agreement and Finds Strategic Partners Inapplicable

The Board affirmed a refusal to register the mark COLORS for "seminars directed toward personal behavior analysis and emotional self-improvement," concluding that confusion is likely with the identical mark registered (in both standard character and log form) for "workshops and seminars, live and online, in the field of therapeutic spiritual self-healing." Based on third-party website evidence, the Board found the services, the channels of trade, and classes of consumers to be identical or overlapping. Applicant Cook Capital focused on a consent agreement between its predecessor and the cited registrant, and on its ownership of a now-cancelled registration for the same mark and services as the subject application, but the Board rejected both excuses. In re Cook Capital, LLC, Serial No. 97627407 (March 30, 2026) [not precedential] (Opinion by Judge David K. Heasley).

Prior Consent Agreement: Considering the twelve-year-old consent agreement, the Board observed that "[a]t bottom, we must look at all of the surrounding circumstances . . . to determine if the consent reflects the reality of no likelihood of confusion in the marketplace, or if the parties struck a bargain that may be beneficial to their own interests, regardless of confusion to the public." It found that "[t]his case appears to present more of the latter than the former."

The Board noted the lack of evidence that, after Cook’s prior registration was cancelled and registrant’s two registrations became "incontestable" [sic! - i.e., the registrations were more than five-years-old], the registrant granted consent to Cook’s new application. "The silence is conspicuous. This tends to evince a prior consent agreement based on personal interest rather than concern for averting public confusion."

In short, on consideration of all applicable circumstances and evidence, we find that the Consent Agreement “has no effect on the likelihood of confusion.” In re Permagrain Prods., Inc., No. 73268400, 1984 WL 62813, *2-3 (TTAB 1984). Contrary to Applicant’s position, the Consent Agreement does not establish that its signatory parties had good reason to view public confusion as unlikely; and it does not establish a lack of actual confusion during the parties’ contemporaneous registration of their marks. In light of these facts, we find that “[t]he tenth DuPont factor does not outweigh all of the other relevant DuPont factors, which weigh heavily in favor of a conclusion of likelihood of confusion.”

Cook asserted that it was aware of no incidents of actual confusion in the twelve-year period since the agreement was signed, but this was mere uncorroborated attorney argument. Moreover, there was no requirement in the agreement that one party contact the other should confusion occur. "Consequently, Registrant’s silence on this issue may not be taken as a concession that there has been no actual confusion." [In this ex parte appeal, how was registrant going to be heard on this issue? - ed.].

Strategic Partners: Cook invoked the Board's Strategic Partners decision under the 13th DuPont Factor. There, the Board found that:

Applicant’s registered mark, a mark that is substantially similar to the applied-for mark, both covering “footwear,” has coexisted with the cited mark for over five years. At this stage, applicant’s existing registration is over five years old, and thus is not subject to attack by the owner of the cited registration on a claim of priority and likelihood of confusion. … We find that these facts tip the scale in favor of applicant and a finding of no likelihood of confusion.

But here, unlike Strategic Partners, Cook’s prior registration has been cancelled, and so its earlier registration is not an “existing registered mark” and the “unique situation” of Strategic Partners is not present here.

Cook asked, “if the purported shortcomings in the verbiage of the Consent Agreement are truly fatal to its efficacy, then why was it previously deemed acceptable to facilitate the maturation of Serial No. 85/643,944 into the now cancelled ’336 Registration?” The Board brushed that question aside. "Ultimately, the Board must decide each case on its own merits; the Office’s allowance of a prior registration does not bind it."

On careful consideration of the applicable law, arguments, and evidence, we find: that the marks’ identicality weighs heavily in favor of finding a likelihood of confusion under the first Dupont factor; that Applicant’s broadly-phrased recitation of services encompasses Registrant’s recited services, offered through unrestricted and overlapping channels of trade to overlapping groups of consumers, such that the second and third DuPont factors weigh in favor of a likelihood of confusion; and that the Consent Agreement, considered in light of Strategic Partners, does not tip the balance of the first through third DuPont factors, as the tenth, eighth, and thirteenth DuPont factors are neutral.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Reminder: there is no such thing as an "incontestable" registration. Read Sections 14 and 15 of the Act. With regard to the rejection of the consent agreement, note the recent Ye Olde Crewe decision involving the mark GASPARILLA [TTABlogged here].

Text Copyright John L. Welch 2026.

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

The Board reversed a Section 2(d) refusal of the mark shown below, for "cafe and restaurant services," finding confusion unlikely with the mark DAILY HARVEST registered for various food items and for "on-line retail store services featuring pre-prepared meals, desserts and beverages." It found that the marks to be similar in sound, appearance, connotation and commercial impression," but the USPTO failed to prove that the involved goods and services are related. In re Daily Harvest Café, Serial No. 98269684 (April 2, 2026) [not precedential] (Opinion by Judge Wendy B. Cohen).

As to the services, the Examining Attorney pointed to four restaurant websites at which pre-packaged food can be ordered online [e.g., Starbucks.com]. The Board was unimpressed: "Four websites in support of the relatedness of Applicant’s restaurant and café services and Registrant’s on-line retail store services falls short of demonstrating that the relevant services are related."

As to the goods, the Board agreed with the applicant that the Office "must show something more than that similar or even identical marks are used for food products and for restaurant services." The Board has found the "something more" requirement to be met where, for example, the applicant’s mark made clear that its restaurant specialized in registrant’s type of goods; or where the record showed that a registrant’s goods were actually sold in the applicant’s restaurant; or where the mark was found to be “a very unique, strong mark."

The Examining Attorney argued that "because Registrant offers pre-packaged smoothies, soups and coffee and Applicant offers smoothies, soups and coffee at its restaurant and café, 'both parties actually sell identical goods in similar settings, that is a retail food establishment.'" The Board was again unimpressed: "the evidence in the record only suggests a general similarity between the type of food packaged by Registrant and some of the items available on the menu in Applicant’s restaurant and café."

It is commonly known that there are a large number of restaurants and cafés in the United States .... [E]vidence of only three or four restaurants selling pre-packaged foods is far from what would be considered numerous or substantial. * * * Thus, the evidence before us indicates that the degree of overlap between the sources of restaurant services and the sources of pre-packaged foods is de minimis; this is far cry from establishing the requirement of “something more” than the fact that restaurants serve food."

Finally, the Board observed, "nothing has been placed in the record upon which to base a finding that the mark DAILY HARVEST is a “very unique, strong mark."

And so, the Board reversed the refusal to register

Read comments and post your comment here.

TTABlogger comment: I suspect that there are a whole lot of restaurants that offer pre-packaged food on-line.

Text Copyright John L. Welch 2026.

TTAB Affirms 2(e)(4) Refusal of Rare Surname "TUGENDHAT" for Seating Furniture Due to Applicant's Own Marketing Materials

The Board upheld a Section 2(e)(4) refusal of the proposed mark TUGENDHAT for "seating furniture," deeming the mark to be primarily merely a surname. Applicant Knoll argued that Tugendhat is an exceptionally rare surname but the Board pointed out that "even a rare surname may be held primarily merely a surname if its primary significance to purchasers is that of a surname." The evidence showed that "there is meaningful and fairly sufficient exposure to the surname throughout the United States, especially Applicant’s own marketing materials in an online catalog or at the point of sale." In re Knoll, Inc., Serial No. 98370045 [not precedential] (Opinion by Judge George C. Pologeorgis).

Wikipedia entries indicated that "Tugendhat" was the surname of a family of Czech-Jewish textile and oil industrialists. Villa Tugendhat is an architecturally significant building in Brno, Czech Republic. The Tugendhat Chair was designed by Miles van der Rohe and Lilly Reich in 1929-1930 for the Tugendhat Villa. The Board noted that these Wikipedia statements are hearsay, but "because the content of the Wikipedia entries is consistent with other evidence of record, we accord these entries probative value to the extent that they show that TUGENDHAT, TUGENDHAT VILLA, and TUGENDHAT CHAIR have achieved recognition significant enough that Wikipedia entries devoted to them have been created."

Most significantly, Knolls's own promotional materials emphasized the connection with the Tugendhat family and villa, the historical association, and the surname's origins. Knoll stated in its brief that "the Goods are named after the Tugendhat chair designed for the Tugendhat Villa, and named for the Tugendhat family …."

The evidence revealed at most 423 persons with the surname Tugendhat. The Board pointed out, however, that "the determination of whether a surname is common or rare is not determined solely by comparing the number of listings of the surname to the total number of listings in a computerized database, because even the most common surname would represent only a small fraction of the database." "Moreover, "even if TUGENDHAT” is a relatively rare surname in the United States, that would not per se preclude a finding that a term is primarily merely a surname inasmuch as even a rare surname may be held primarily merely a surname."

Put simply, Applicant’s self-made connection between its products and the Tugendhat family and its eponymous villa exacerbates the surname significance of TUGENDHAT because actual purchasers of Applicant’s products will encounter the mark alongside surname use of TUGENDHAT when viewing Applicant’s own advertising and marketing material and even point-of-sale information.

Knoll argued that the term TUGENDHAT is best recognized as the name of an architectural landmark, i.e., the Villa Tugendhat, and a specific design style of furniture, namely, the Tugendhat chair, and so consumers will associate the term with aesthetics and design, not a family lineage. However, there was no evidence to support that contention, nor evidence showing that "Tugendhat" has any meaning other than as a surname.

Knoll contended that Tugendhat does not have "the typical structure or phonetic quality of common American surnames" but instead is like the coined terms used by Ikea for its furniture and home goods. The Board was unmoved. There was no evidence that consumers would perceive Tugendhat as a brand name akin to Ikea's brands. Moreover, the Ikea brand names (Swedish-based) are "linguistically and culturally distinct from the German or Czech language."

In sum, we find that the purchasing public will understand TUGENDHAT as a family name regardless of whether descendants currently work for Applicant simply because Applicant’s own marketing material ties the mark to the Tugendhat family villa, reinforcing the surname perception of the purchasing public.

Read comments and post your comment here.

TTABlogger comment: Does the reference to a old Czech surname necessarily mean that American consumers will think it's a current American surname?

Text Copyright John L. Welch 2026.

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

In the first precedential opinion of 2026 (not counting the January re-designation of the 2025 DANKE/MERCI decision), the Board affirmed a refusal to register the proposed product configuration mark shown below, for pancakes, under Section 23(c) of the Lanham Act. The Board found that certain utilitarian advantages provided by the design, coupled with the applicants' own marketing materials and their statements to the Examining Attorney touting the design’s utilitarian advantages, required refusal of the application in order to "'protect[] competitors against a disadvantage (unrelated to recognition or reputation) that trademark protection might otherwise impose, namely their inability reasonably to replicate important non-reputation-related product features.'" (quoting Qualitex, 514 U.S. at 169). In re Misty Everson and Christine Maynard, Serial No. 97104306 (March 31, 2026) [precedential] (Opinion by Judge Robert Lavache).

The proposed mark "consists of a three-dimensional product design of a round pancake consisting of 8 uniform wedges. The broken lines depicting the curved outer edges of the wedges indicate placement of the mark on the goods and are not part of the mark. The stippling is a feature of the mark and does not indicate color."

Section 23(c) permits registration on the Supplemental Register of, inter alia, "any matter that as a whole is not functional." The Board observed that "the caselaw applying Section 2(e)(5) to potentially functional matter is equally applicable to functionality refusals under Section 23(c)." See Heatcon, 2015 TTAB LEXIS 360, at *12. 

Matter is functional "'if it is essential to the use or purpose of the article or if it affects the cost or quality of the article,’ that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage." Qualitex, 514 U.S. at 165 (quoting Inwood Labs. v. Ives Labs., 456 U.S. 844, 850 n.10 (1982)). The Board once again applied the Morton-Norwich factors to determine whether the subject design at issue is functional for trademark purposes:

(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.

Becton, 675 F.3d at 1374 (citing Valu Eng’g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1274 (Fed. Cir. 2002)); see Morton-Norwich, 671 F.2d at 1340-41.

Evidence was lacking as to the first and fourth Morton-Norwich factors, but the second and third factors supported the refusal.

Touting: Applicant's own "Brand Style Guide" stated that this design should be touted as a “new team-sized meal option” that is "shareable," 'dippable," and '[a]ny time-able." During prosecution, applicants explained that the design "allows pancakes . . . to be eaten seated, standing up, or walking," such that '[n]o utensils are needed, and it targets a family-sized serving." The design "allows family members to reach in to grab a slice or use a pie server to obtain a piece" of the pancake and enables "d[]ipping into a sauce such as maple syrup or blueberry compote."

Examining Attorney Joshua Sturman submitted excerpts from fourteen third-party websites that feature pancake recipes and that include photographs of pancakes cut into roughly equal wedges, often eight equal wedges.

The Board found that Applicant’s own marketing materials and statements "directly address, and express, the utilitarian advantages of the proposed product design, namely, facilitating more convenient serving, sharing, consumption, and transporting of the pancake." The third-party evidence provided "additional support for the conclusion that the product design embodied in the proposed mark offers certain utilitarian advantages, namely, shareability and customization of toppings on the individual wedges or slices."

We find that Applicant’s arguments to the contrary—that "there is no practical advantage to the [design’s] eight equal slices" and that the claimed design would "not confer any functional benefit like easier handling or consumption" contradict its own materials and prior statements in the record, which clearly emphasize the utility of a design that provides individual slices, particularly equal slices.

And so, the Board concluded that the second Morton-Norwich factor "strongly" supported the refusal.

Alternative Designs: Applicants argued that there is no competitive need to use their design because "there [are] many ways to present pancakes and that using 8 slices is only one of many," pointing to evidence showing six-, seven-, and ten-slice configurations, and also to photographs of pancakes presented in a stacked configuration, in some cases with a wedge cut out of the entire stack.

The Board, however, agreed with the Examining Attorney that, as a general matter, alternative designs need not be considered if the other evidence of record establishes functionality. See Becton, 675 F.3d at 1376 (stating that there is no need to consider availability of alternative designs “if functionality is found based on other considerations”). Nonetheless, for the sake of completeness, the Board considered these alternative designs.

As to the stacked pancakes, applicants failed to establish that this configuration "offers the same utilitarian benefits as the proposed design, at least with respect to facilitating more convenient serving, sharing, consuming, and transporting of the pancake," and so this is not a "functionally equivalent design." As to the unstacked pancakes, the only differences are in the number of slices.

[C]onsistent with the statements made in Applicant’s “Brand Style Guide” and in its response to the Examining Attorney’s request for information, both the drawing of the mark and the specimens of use show that the eight equal slices claimed in the applied-for configuration can result in eight appropriately-sized servings, especially when the pancake is large (or family-size) and shared among a group of people. As Applicant itself states, “[t]he number of slices in a pancake is usually determined by practical considerations, like the size of the pancake, [or] the desired portion size.

The Board observed that "the eight-equal-slices configuration is one of a very few superior designs for the utilitarian advantages Applicant itself touts. This same eight-slice configuration is commonly used with pizzas, pies, and cakes, as shown in the Examining Attorney’s evidence." [I find it a lot easier to cut eight more-or-less equal slices than seven or ten. - ed.] "Therefore, allowing 'exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage,' Qualitex, 514 U.S. at 165, and thus hinder competition."

Applicants pointed to the stippling in the mark which, according to their brief, represents “a texture” and “a gradient of the texture” of the pancake. The Board, however, noted the many photographs of pancakes in the record and concluded that the texture that Applicants claim "is simply the texture that typically results from the process of making pancakes. In other words, it is akin to a by-product of the manufacturing process. Therefore, we find that the claimed texture feature is functional." Cf., e.g., McGowen Precision Barrels, LLC v. Proof Rsch., Inc., No. 92067618, 2021 TTAB LEXIS 167, at *80, *84-85 (finding respondent’s trade dress functional because, inter alia, it resulted from the manufacturing process for the relevant products); Saint-Gobain Corp. v. 3M Co., No. 91119166, 2007 TTAB LEXIS 82, at *78 (finding the purple color of applicant’s sandpaper functional where, inter alia, it was a natural by-product of the manufacturing process).

Accordingly, the Board found that the third Morton-Norwich factor supported the refusal.

Conclusion: Finding the proposed configuration mark to be a functional design for applicants' goods, the Board affirmed the refusal under Section 23(c).

Read comments and post your comment here.

TTABlogger comment: Compare this decision with the Board's non-precedential decision in the Hershey bar case, TTABlogged here, where it reversed a functionality refusal of the 12-segment configuration of that candy bar.

Text Copyright John L. Welch 2026.

TTAB Posts April 2026 Hearing Schedule

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

April 16, 2026 - 10:00 AM [Virtual]: In re Western Veterinary IP, LLC, Serial No. 98727230 [Refusal to register the mark MONTANA EQUINE for "Breeding services for horses; Horse breeding and stud services; Veterinary sports medicine and physical rehabilitation services for horses through use of modalities and exercise; Veterinary dentistry; Veterinary emergency and trauma services; Veterinary services; Veterinary services, namely, full service veterinary care for horses, ponies, mules and donkeys including surgery, vaccinations, lameness treatment, reproductive medicine, preventative care and internal medicine; Veterinary specialty services featuring advanced dental and oral surgery; Veterinary specialty services featuring advanced medical, diagnostic and surgical services for animals; Veterinary surgery" [EQUINE disclaimed] in view of the registered mark MONTANA ROSE EQUINE THERAPY for “Equine massage and for "Equine massage and kinesthesiology services; Massage therapy services for horses; Physical rehabilitation services for horses through use of massage and exercises" [EQUINE THERAPY disclaimed].]

April 23, 2026 - 2:00 PM [Virtual]: In re Cardiovascular Research Foundation, Serial No. 98354882 [Refusal to register the mark NEW YORK VALVES: THE STRUCTURAL HEART SUMMIT for "downloadable electronic publications, namely, medical journals, books, magazines, fact sheets, update sheets, newsletters, and booklets in the field of vascular medicine:" "educational services, namely, conferences, seminars, and workshops concerning mammalian or human circulation system or heart valves, valvular heart conditions or diseases, and transcatheter valve therapies or interventions; providing non-downloadable electronic publications, namely, non-down medical journals, books, magazines, fact sheets, update sheets, newsletters, and booklets in the field of vascular medicine;" and "vascular research" [NEW YORK, SUMMIT, and THE STRUCTURAL HEART SUMMIT disclaimed] on the ground that the proposed mark is primarily geographically descriptive under Section 2(e)(2).

April 28, 2026 - 10:00 AM [Virtual]: In re BS Liquor, LLC DBA MudHen Brewing Company, Serial No. 97474171 [Section 2(d) refusal of the mark MUDHEN BREWING COMPANY for "beer" [BREWING COMPANY disclaimed] on the ground of likelihood of confusion with the registered mark MUD HENS for "restaurant and bar services."]

April 30, 2026 - 11:00 AM [In-person]: Campari America LLC v. Seven Skies, LLC, Opposition No. 91291788 [Section 2(d) Opposition to registration of the mark SEVEN SKIES for "Non-alcoholic cocktails, namely, mocktails" and "Alcoholic cocktails; Alcoholic fruit cocktail drinks; Prepared alcoholic cocktail; Wine-based cocktails" in view of the registered mark SKYY for "distilled spirits, namely vodka."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2025.

TTAB Overturns 2(d) Refusal of HOUSE OF PRIM Due to Prior Settlement Agreement Between Applicant and Cited Registrant

The Board reversed a refusal to register the mark HOUSE OF PRIM for goods and services related to home organization and design, concluding that confusion is unlikely with the registered mark PRIM for "Home organization services, namely, sorting and organizing household belongings." The Board found the marks confusingly similar and the services related, but not applicant's goods. However, a prior settlement agreement between applicants and the cited registrant outweighed all the other DuPont factors. In re Prim LLC, Serial Nos. 98301711, 98301726, 98301752, 98301773, 98301804 (March 27, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The tenth DuPont factor, the market interface between the applicant and registrant, required an evaluation of a March 11, 2022 “Settlement Agreement” between them. "'[D]epending on the circumstances,' agreements between the involved parties 'may ... carry great weight' since the parties are in a 'better position to know the real life situation than bureaucrats or judges."

In the Settlement Agreement, applicant promised to re-brand from PRIM LIVING to HOUSE OF PRIM and the parties agreed that this new mark would not cause confusion with the PRIM mark. Applicant agreed not to apply to register PRIM or any similar variant, including PRIM LIVING. The parties  promised continued cooperation in taking reasonable action to avoid confusion, and to make reasonable efforts to rectify any instances of likelihood of confusion that came to their attention.

The Examining Attorney argued that the settlement agreement does not function as a consent to registration of the mark in these applications because it was executed before the applications were filed. The Examining Attorney also argued that the agreement does not contain provisions “fundamental to a consent agreement.”

The Board observed that in In re Dare Foods, Inc., No. 88758625, 2022 TTAB LEXIS 92, at *24, it stated that it was aware of "no authority requiring a consent agreement to discuss all of these factors [listed in Four Seasons Hotels] in order to be probative.”

In this case, the parties’ settlement agreement, while not technically a consent to registration of a mark in any particular application, is an acknowledgment of a broader settlement relating to PRIM LIVING and other confusingly similar variants, and also addresses Applicant’s ability to rebrand with the mark that is the subject of these applications. * * * While the settlement agreement does not include some of the provisions we would typically see in a consent agreement, it was reached after the parties had been seeking to resolve a dispute regarding marks Registrant determined were confusingly similar (infringing) to her PRIM mark.

The Board noted that the agreement explicitly refers to Registrant’s PRIM registration. "One would expect that, if the agreement’s broad provision that Applicant rebrand as HOUSE OF PRIM covered only the right to use that mark but not the right to register it for home organization services, the agreement would have said so explicitly."

The settlement agreement strongly supports Applicant’s position of no likelihood of confusion based on the reasoned analysis of Applicant and Registrant who understand the nature of their businesses.

The Board concluded that the agreement is entitled to "substantial weight," and it "outweighs the factors that indicate confusion is likely in all five applications."

Read comments and post your comment here.

TTABlogger comment: If during negotiations, applicant wanted to be able register HOUSE OF PRIM, it could have expressly included that in the agreement. So, I think the absence of such a provision is meaningless. The fact is that the registrant did not consent to registration. Will we see an opposition?

Text Copyright John L. Welch 2026.

TTAB Reverses CASA BLANCA Refusal: UPSTO Fails to Prove Relatedness of Tequila and Wine

The Board reversed the USPTO's refusal to register the mark CASA BLANCA for "distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant,” concluding that the USPTO failed to prove likely confusion with the registered mark CASABLANCA for "wine." The Board found the marks to be "nearly identical" and the trade channels overlapping, with the goods subject to impulse purchases. However, it also found the cited mark to be "highly suggestive" and the evidence insufficient to establish that "Applicant’s and Registrant’s particular types of alcoholic beverages are related." In re Lucien G. Lallouz, Serial No. 90782980 (March 27, 2026) [not precedential] (Opinion by Judge Angela Lykos).

The Goods: The Examining Attorney submitted only two examples of third-party uses under the same mark, and no third-party registrations covering both tequila and wine. "Two examples of third-party marketplace uses is unconvincing, especially when there is no indication whether Applicant’s specific type of tequila is made by any of these wineries/distilleries."

The Examining Attorney also contended that the goods are related because they are "complementary beverages often used together as cocktail mixers." The Board observed, however, that "[i]t is not unusual for recipes to contain many different ingredients and consumers are not likely to assume merely from the fact that two items are called for in the same recipe that they necessarily emanate from the same source of origin."

The mere existence of a handful of cocktail recipes incorporating wine and tequila does not mean that consumers recognize both beverages as ingredients commonly used together for cocktail recipes. * * * [W]e cannot extrapolate from this evidence that consumers following each recipe believe that these ingredients come from the same source. There is no evidence that the recipes use the same brands producing both wine and tequila. For the most part, wine and tequila are distinct types of alcoholic beverages consumed individually, not together, and this evidence fails to show otherwise.

The Examining Attorney lastly argued, based on a single article, that wine and tequila are related because tequila can be made using wine-making techniques. "Again, this evidence fails to show wine and tequila offered to consumers from the same entity under the same trademark."

The Board concluded that the second DuPont factor weighed against a likelihood of confusion finding, noting that "on a more developed record" it might rule otherwise.

Channels of Trade: The evidence showed that the normal trade channels for both tequila and wine include U.S. importers, wholesale distributors, online retailers, and the premises of winery/distillery tasting rooms. Applicant Lallouz argued that "in retail settings, wines are typically segregated and displayed separately from distilled spirits, a segregation that extends to online platforms and restaurant menus." The Board was unmoved: "Consumers browsing the aisles in retail liquor establishments are likely to 'jaunt to another counter or section of the store' and encounter a variety of alcoholic beverages and spirits, including wine and tequila."

Strength of the Cited Mark: The evidence revealed that "Casablanca" refers to wine originating from the Casablanca Valley in Chile, "making the cited mark highly suggestive." Third-party marketplace use of "Casablanca Valley" in connection with wine to indicate geographic origin "does not demonstrate commercial weakness because none of the examples involve use of 'Casablanca Valley' as a trademark. But with over 1200 examples, it is a strong indicator of conceptual weakness as it signals geographic origin." The Board therefore found that the sixth DuPont factor favored Applicant Lallouz.

Conclusion: Weighing the relevant DuPont factors, the Board found that "the lack of competent evidence to prove the relatedness between the goods, combined with the cited mark’s relative conceptual weakness in connection with wine, outweighs the virtual similarity of the marks and overlapping trade channels." It concluded that confusion is unlikely.

Read comments and post your comment here.

TTABlogger comment: Will we see an opposition by the cited registrant?

Text Copyright John L. Welch 2026.