TTABlog Test: Is FLAT EARTH SURF CLUB Confusable with TERRA PLANA for Clothing?

The USPTO refused to register the mark FLAT EARTH SURF CLUB, in standard character form, for “hats; shirts” [SURF disclaimed], concluding that confusion is likely with the registered mark TERRA PLANA for "“footwear, namely, boots, shoes, sandals and slipper." The Board unsurprisingly found the goods to be related, but what about the marks? Would consumers stop and translate "terra plana" (Portuguese) to "flat earth"? In re Dean Severson, Serial No. 98118905 (February 6, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The Examining Attorney argued that the dominant part of Applicant’s mark, FLAT EARTH, is the foreign equivalent of the Cited Mark TERRA PLANA, contending that "terra plana" means "flat earth' in Portuguese, a common modern language. Applicant Severson maintained that the doctrine of foreign equivalents does not apply in this case. The Board agreed with Severson, concluding that the ordinary American purchaser would not translate the cited mark.

First, American consumers, even non-Portuguese speakers, would be familiar with the word “terra,” which appears in English language dictionaries. These dictionaries show that “terra” has meaning in English both as a standalone word and as part of phrases like “terra cotta” and “terra firma.” This supports a finding that consumers would take the phrase “terra plana” as it is and not stop and translate it. *** Second, contrary to the Examining Attorney’s contention, the evidence does not show that the translation of TERRA PLANA in Portuguese to FLAT EARTH in English is direct and literal. [The Office's evidence showed "terra plana" as being translated as "flat earth" and "flat land."]

Comparing the marks, the Board observed that they have different connotations and commercial impressions (noting the incongruity and nonsensical connotation of applicant's mark) and "are not at all similar in appearance or sound because they do not share any of the same words or any words that have similar letters or sounds."

And so, the Board reversed the refusal to register.

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TTABlogger comment: In the DANKE/MERCI case, the Board applied the doctrine of equivalents, even though the two words are found in English dictionaries. Arguably, consumers would not translate the two recognized terms, but take them "as is."

Text Copyright John L. Welch 2026.

BARBEE for Social Networking App Not Confusable with, nor Dilutive of, Famous BARBIE mark for Dolls, Says TTAB

In a 70-page opinion, the Board dismissed this opposition to registration of the mark BARBEE, in the logo form shown below, for "Online social networking services accessible by means of downloadable mobile applications." The Board concluded that the mark is neither likely to cause confusion with, nor likely to dilute, Mattel's mark BARBIE, registered for, inter alia, dolls, doll accessories, and online entertainment services. Although the Board deemed the BARBIE mark to be famous for dolls, it found the involved goods and services to be unrelated and the marks dissimilar. This blog post will attempt to hit the highlights. Mattel, Inc. v. BarBee Inc., Opposition No. 91281982 (February 6, 2026) [not precedential] (Opinion by Judge Martha B. Allard).

Opposer Mattel got off on the wrong foot when the Board denied its motion to amend the notice of opposition to include a claim of lack of bona fide intent. The Board ruled that the issue was not tried by implied consent, noting Applicant Barbee's objections to evidence on that issue and finding that Barbee was not "was fairly apprised that the evidence was being offered in support of the unpleaded issue."

Likelihood of Confusion: Barbee failed to provide any probative evidence diminishing the conceptual strength of the BARBIE mark. As to commercial strength, the Board found that "for purposes of the likelihood of confusion analysis, the BARBIE mark is very commercially strong (indeed 'famous' for purposes of likelihood of confusion) for 'dolls,' 'clothing for dolls,' and 'doll houses.'"

With respect to relatedness, Mattel "simply does not point to (nor did we locate) any evidence in the record that might establish relatedness, such as evidence of third-party uses or registrations of Applicant’s identified services and Opposer’s identified goods and services under the same mark. On this record, Opposer has not met its burden of proof and has failed to establish that the parties’ goods and services are related." Nor did Mattel establish that the channels of trade overlap.

Even assuming that the parties’ goods and services are both offered on, for example, Facebook and Instagram, Applicant likens these platforms to departments stores and supermarkets, arguing that advertising on these platforms alone is not enough to establish that the channels of trade overlap. We agree and consider this far too general of an overlap to have any meaningful impact on the likelihood of confusion.

As to the marks, "consumers who encounter Applicant’s mark would readily recognize its dominant element to consist of the terms, 'bar' and 'bee.'" The Board found that the marks "are not sufficiently similar to weigh in favor of a likelihood of confusion."

We agree with Applicant that its mark conveys a different meaning when the compound word BARBEE is considered as a whole, i.e., in combination with the logo consisting of a bee inside a martini glass, i.e., that of a worker bee at a bar. The record shows that BARBIE, on the other hand, is a nickname for the doll, whose full name is Barbara Millicent Roberts, and, as a result, it conveys the impression of a doll named BARBIE.

Balancing the relevant DuPont factors, the Board concluded that confusion is not likely.

Dilution by Blurring: The Board found the mark BARBIE to be famous, for dilution purposes, in connection with dolls. "The duration, extent, and geographic reach of the advertising and publicity of Opposer’s BARBIE mark is exceptional . . . and has resulted in the BARBIE mark remaining in the eye of the general public for decades." However, "Applicant’s BARBEE and Design mark is dissimilar from Opposer’s BARBIE mark in appearance, meaning and commercial impression such that the former does not readily conjure up the latter." Furthermore, there was no evidence that Applicant intended to create an association with Mattel's BARBIE mark.

And so, Mattel failed to prove dilution by blurring.

Dilution by Tarnishment: "Inasmuch as we have determined that the marks are dissimilar, Opposer has not established that its mark will suffer any negative association by Applicant’s mark. In view of the foregoing, Opposer has failed to prove its claim of dilution by tarnishment under Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c), by a preponderance of the evidence."

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TTABlogger comment: I think it's fair to say that "BARBIE" is a household word. But fame only gets one so far. The marks still have to be “sufficiently similar” while applying "the same test as for determining the similarity or dissimilarity of the marks in the likelihood of confusion analysis,” so that the required association exits. See, for example Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (TTAB 2011) [TTABlogged here].

Text Copyright John L. Welch 2026.

Finding the Issue of Lack of Bona Fide Intent Tried by Implied Consent, TTAB Sustains Opposition to FIREBURN 1878 for Alcoholic Beverages

The Board sustained this opposition to registration of the mark FIREBURN 1878, in standard character and logo form, for "alcoholic beverages, except beer; liquor." concluding that Applicant Wadada Spirits lacked a bona fide intent to use the marks when it filed the opposed applications. Opposer Sazerac, owner of the mark FIREBALL for the same goods, did not include a claim of lack of bona fide intent in its notice of opposition, but the Board found that the issue had been tried by implied consent. Sazerac Brands, LLC v. Wadada Spirits, LLC, Opposition No. 91283727 (February 4, 2026) [not precedential] (Opinion by Judge Jessica B. Bradley).

Implied Consent: Wadada did not file a brief or submit any evidence, so it never expressly consented to trial of the bona fide intent claim. So, the first question was whether the issue was tried "by implied consent under Fed. R. Civ. P. 15(b), made applicable to Board proceedings by Trademark Rule 2.116(a)." "The Board may find implied consent to the trial of an unpleaded issue “only where the non-offering party (1) raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was being offered in support of the issue."

Sazerac served numerous discovery requests regarding Wadada’s intent to use its marks. In its responses, Wadada did not object to these discovery requests, nor did it object to Sazerac's notice of reliance citing Wadada's responses. And Sazerac listed in its brief, without objection, lack of bona fide intent as one of the issues in this proceeding. "Accordingly, Opposer’s claim of Applicant’s lack of bona fide intent to use was tried by implied consent and 'the pleadings are deemed amended under Fed. R. Civ. P. 15(b)' to include this claim."

Lack of Bona Fide Intent: A party may demonstrate that an applicant lacks the requisite bona fide intent to use by showing that the applicant lacked documentary evidence regarding its intent. Boston Red Sox Baseball Club Ltd. P’ship v. Sherman, No. 91172268, 2008 TTAB LEXIS 67, at *16 (TTAB 2008). In its responses, Wadada stated that it was “not aware of any responsive documents” regarding its strategy for promoting and selling its goods, steps taken to manufacture the goods, licenses or regulatory approvals, distribution agreements, price of the goods, target customers, market research, or media promotion.

Wadada pointed to the prosecution histories of the opposed applications as evidence of its intent. The Board, as usual, rejected this contention: "the mere act of filing intent-to-use applications is insufficient to establish Applicant’s bona fide intention to use its FIREBURN 1878 Marks in commerce for the identified goods."

In its interrogatory answers, Wadada stated that it had no information regarding its intended first use dates, its sales strategy, steps taken to sell the goods, regulatory approvals, channels of trade, price, promotional channels, or target consumers.

The Board concluded that Sazerac had made a prima facie case of lack of bona fide intent, which Wadada failed to rebut. And so, the Board sustained the opposition on that basis, declining to reach Sazerac's likelihood of confusion claim.

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TTABlogger comment: This decision reminded me of the Bears' 46-10 win over the Patriots in the 1986 Super Bowl, only worse. BTW: the orange and blue color scheme of the TTABlog is borrowed from the colors of the University of Illinois. George Halas, and Illinois alum, took those colors for his Chicago Bears.

Text Copyright John L. Welch 2026.

"SOUL BNB" Not Confusable With "AIRBNB," Says TTAB, Noting Weakness of "BNB"

In a 45-page opinion, the Board dismissed this opposition to registration of the mark SOUL BNB for “Health spa services for health and wellness of the mind, body and spirit offered in or from a remote, mobile or temporary on-site location," concluding that confusion is unlikely with the registered mark AIRBNB for temporary lodging services, including an online marketplace for temporary accommodations. The Board found the services to be related, the channels of trade and classes of consumers overlapping, and the mark AIRBNB falling "at the higher end of the commercial strength spectrum," with some indirect evidence of actual confusion. Opposer's survey evidence, however, was flawed. The Board, noting the weakness of the term "BNB," found the first DuPont factor - the dissimilarity of the marks - to be dispositive. Airbnb, Inc. v. Soul BnB LLC, Opposition No. 91288785 (February 3, 2026) [not precedential] (Opinion by Judge Robert Lavache).

The Board agreed with the applicant that the services as identified in the opposed application and the cited registrations did not overlap. "In other words, the identification indicates that Applicant offers health spa services, which may be provided in a temporary location, or from a mobile location, or even remotely. The identification does not indicate that Applicant is arranging temporary lodging or accommodations, enabling reservations for that purpose, or even providing information in that field."

However, opposer's evidence showed that users of opposer’s online marketplace for temporary accommodations may also search the marketplace for “Wellness activities in California." Other evidence showed listings for various “wellness-related” experiences that consumers may book through Opposer’s AIRBNB-branded online marketplace, which are offered and provided by apparent third parties identified as 'Hosts.'"

In addition, this evidence establishes that experiences, including wellness activities, can be an integral part of travel and thus are relevant to the travel planning and booking process. Thus, consumers may utilize both Opposer’s and Applicant’s services in a complementary fashion.

The Board therefore found the services to be related, and further that the channels of trade and classes of consumers overlap. "[T]hose making travel arrangements, including reservations for temporary accommodations, may also seek health spa services for wellness, and they may do so through the same channels of trade, including an online marketplace."

Applicant argued that the AIRBNB mark is famous, but its evidence fell short. A party that claims its mark to be famous "must clearly prove it." Opposer relied on the results of a 2021 survey purportedly showing that 32.7% of respondents had an unaided awareness of AIRBNB in connection with the relevant services, while 90.3% had an aided awareness of the mark. The Board agreed that the survey "indicates a relatively high brand awareness of Opposer’s AIRBNB mark. But a couple issues weaken its probative value."

First, the survey was conducted in March 2021, and "thus is now nearly five years old." "[I]t may not accurately reflect contemporary consumer awareness of the AIRBNB mark." Second, “in general, the Board has discouraged heavy reliance on aided awareness to prove fame.”

While aided awareness relies on the prompting of survey participants with a list of marks, including the mark being assessed, unaided awareness does not. Thus, unaided awareness is entitled to more weight than aided awareness on the question of fame. *** Accordingly, we find that, based on the record before us, Opposer has not proved that its AIRBNB mark falls on the strongest end of the strength spectrum for likelihood of confusion purposes. See Coach Servs., 668 F.3d at 1367. That said, it does place at the higher end of the commercial strength spectrum, and is thus entitled to a broader scope of protection against confusingly similar marks.

As to the marks, the Board found that AIR and SOUL are the dominant elements in the respective marks "because they are each more distinctive than BNB." "[W]hen used in connection with bed-and-breakfast services, BNB is likely to be perceived as highly suggestive, if not descriptive." 

Opposer's likelihood of confusion survey was entitled to "little probative weight" because applicant’s services were not correctly characterized, and some of the survey responses were ambiguous. "But the survey does provide some indirect evidence of actual confusion on the part of some consumers. Thus, while Opposer overstates the probative value of the survey, we find that the seventh DuPont factor weighs slightly in favor of a conclusion that confusion is likely."

Balancing the relevant DuPont factors, the Board found that "this is a case where the first DuPont factor is dispositive, because the differences between the marks in sound, appearance, and overall commercial impression outweigh the minimal amount of similarity created by the shared term BNB." And so, it dismissed the opposition.

Read comments and post your comment here.

TTABlogger comment: A few months ago, this opposer failed to prove likelihood of confusion vis-a-vis the mark COMPLETE BNB [TTABlogged here]. That case is now on appeal by way of civil action in the U.S. District Court for the District of Kansas.

Text Copyright John L. Welch 2026.

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

For the past decade, about 90% of Section 2(d) refusals have been affirmed. A TTAB Judge once said to me 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. Here are three recent Section 2(d) appeals. Let's see how you do. [Answer in first comment].

In re Bayou Pumps & Products Inc., Serial No. 88057994 (January 27, 2026) [not precedential] (Opinion by Judge Martha B. Allard). [Section 2(d) refusal of the mark TESLA DISK PUMPS for “pumps for machines" [DISK PUMPS disclaimed], in view of the registered mark TESLA & Design for, inter alia, "electric pumps for machines."]

In re Magnify Sportswear, Serial No. 97494080 (January 30, 2026) (Opinion by Judge Catherine Dugan O'Connor) [Section 2(d) refusal to register the mark MAGNIFY SPORTSWEAR & Design (shown below) for, inter alia, "sports pants," "sports shirts; sports shirts with short sleeves," and "sports caps and hats" [SPORTSWEAR disclaimed] in view of the registered mark MAGNAFIED for, inter alia, "pants," "shirts and short-sleeved shirts," and "baseball caps; baseball caps and hats."]

In re Magdalena Bauza LLC, Serial No. 98593407 (January 30, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin). [Section 2(d) refusal of the mark LEGAL PEACEMAKERS for “Attorney services; Attorney services, namely, representation of clients in Family Law matters” [LEGAL disclaimed] in view of the registered mark PEACEMAKER "conflict counseling, mediation, and arbitration services."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

GOLD PALM Confusable with SILVER PALM for Wine, Says TTAB

The Board sustained an opposition to registration of the mark GOLD PALM on the ground of likelihood of confusion with the registered mark SILVER PALM, both for wine. The second and third DuPont factors (identical goods and presumed same channels of trade) heavily favored opposer, the marks are "overall similar," and none of the other factors favored the applicant. Jackson Family Farms, LLC v. Dylan Fairweather, Opposition No. 91291000 (January 30, 2026) [not precedential] (Opinion by Judge Thomas W. Wellington).

Opposer Jackson Family Farms argued that, although the terms “gold” and “silver” are different in appearance and sound, they may actually increase the likelihood of confusion because consumers "will mistakenly believe that Applicant’s GOLD PALM mark is a variation of Opposer’s mark that Opposer has adopted for use on a higher quality product line extension of its SILVER PALM wine." In support, opposer pointed to the tiered system for medal awards given out in the Olympic Games.

More specifically, opposer relied on evidence showing that this tiered system is frequently applied in the context of wine, including quality awards from competitions, brand labelling, and wine purchasing clubs. Screenshots from retail and winemakers’ websites showed how a winemaker may tout its wine as “gold” and “silver” for purposes of representing certain qualities. The Board found that this evidence "offers some credence to Opposer’s argument that the tiering system, in general and particularly as used in the context of wine, helps bring the marks together."

That is, should consumers be familiar with Opposer’s SILVER PALM wine and then encounter Applicant’s GOLD PALM wine, it is likely these consumers may attribute the initial terms in each mark as merely indicating a quality or status for a series of wines emanating from the same source or the same line of wines from the same winemaker. In other words, the evidence demonstrates that it would be reasonable for the consumers to mistakenly believe that the Opposer’s SILVER PALM wine is second, or has different qualities, in a line of PALM wines that includes Applicant’s GOLD PALM wine.

Opposer asserted that its SILVER PALM mark “has achieved moderate commercial strength,” pointing to its sales, advertising, social media exposure, and the length of time of use of the mark on wine. However, its sales figures covered only the years 2020-2024 and were not placed in context, so the Board was unable to determine their relative significance. There was no evidence regarding opposer’s advertising and promotional expenditures.

In sum, Opposer’s evidence shows its SILVER PALM mark has enjoyed recent success, but the record is not so persuasive to move the commercial strength dial in a meaningful manner. Accordingly, the fifth DuPont factor is neutral in our analysis of the likelihood of confusion.

In an effort to show the weakness of the cited mark (sixth DuPont factor), applicant submitted 235 third-party registrations and evidence of 53 common law uses of marks containing the words "gold," "silver," or "palm." The Board found only ten of the registrations, containing the word "palm," to be probative, and there was no evidence regarding actual use of these marks.

We thus cannot find any commercial weakness. Indeed, in terms of showing that Opposer’s SILVER PALM mark or that the shared term PALM itself is weak, the record before us falls into a category often characterized as being a “far cry” from the type and amount of evidence deemed significant or meaningful in other cases.

The Board concluded that applicant's evidence makes "no meaningful impact" on the strength of opposer's mark.

The Board briefly addressed the fourth (purchaser care), seventh (lack of actual confusion), eighth (opportunity for confusion), ninth (variety of goods with which opposer's mark is used), twelfth (extent of potential confusion), and thirteenth (other relevant facts) DuPont factors and found them to be neutral.

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TTABlogger comment: How about BRONZE PALM for beer? 

Text Copyright John L. Welch 2026.

TTABlog Test: Is FIRST RESPONDER Merely Descriptive of Customized Motor Vehicles?

The USPTO refused to register the proposed mark FIRST RESPONDER for "Customized and converted motor vehicles, namely, automobiles, trucks, sports utility vehicles and structural parts therefor," deeming it merely descriptive under Section 2(e)(1). Applicant Rubitrux mainly argued that the opposed application "has not identified its Goods as having anything to do with 'first responders,'" and that the "broad scope of goods prevents direct descriptiveness." How do you think this came out? In re Rubitrux, LLC, Serial No. 98023094 (January 9, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Examining Attorney Kristin Kuraishi submitted dictionary definitions of "first responder" (“a person whose job is to deal with emergencies when they occur, esp. a firefighter, police officer, or member of the ambulance service."), screenshots of third-party websites referring to "first responder vehicles," and articles describing how a "first responder vehicle is customized" and providing a history of such vehicles.

The Board first pointed out that Rubitrux's goods are identified broadly as "Customized and converted motor vehicles," and include customized and converted motor vehicles that serve as first responder vehicles.

In addition, even if we were to assume that Applicant has never offered and will never offer customized or converted vehicles for first responder use, trademark law would not tolerate attempted usurpation of a term descriptive of others’ converted or customized vehicles.

Rubitrux also argued that competitor can “use other terms like ‘emergency vehicles,’ ‘specialty vehicles,’ or specific descriptors like ‘ambulance’ or ‘fire truck’ to convey the same idea.”

This argument flies in the face not only of the evidence in the record but of the core policy underlying trademark law’s refusal to grant exclusive rights in a descriptive term: allowing market participants and the public the right to freely use descriptive language to describe their goods or services.

The Board shot down several more arguments made by Rubitrux: that consumer might understand FIRST RESPONDER to refer to delivery vehicles or merely as evoking "heroism," and that the term “does not describe the process of customization or conversion, nor does it specify the structural parts of the vehicles.” There was no evidence to support the "heroism argument." Even if consumers perceived FIRST RESPONDER to refer to other types of vehicles, those vehicles would still fall within Rubitrax's broad identification of goods. And, the Board observed, "for a term to be merely descriptive, it 'need not recite each feature of the relevant goods or services in detail . . . it need only describe a single feature or attribute.'"

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Is this a WHYA?

Text Copyright John L. Welch 2026.

TTAB Posts February 2026 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled one oral hearing for the month of February 2026. The hearing will be held virtually. Briefs and other papers for the case may be found at TTABVUE via the links provided.

February 11, 2026 - 2 PM [Virtual]: In re Ideal Capital Group Holdings, LLC, Serial Nos. 98352828 et al. [Refusals to register the mark IDEAL CAPITAL GROUP, in standard character and design form, and IDEAL PRIVATE CLIENT in standard character form, for "Real estate investment consultancy; Real estate investment services; Financial investment in the field of Real Estate," on the ground of likelihood of confusion with the registered marks IDEAL FUTURES for "Investment management services, financial retirement planning, financial planning, financial investment planning and estate planning services" [FUTURES disclaimed] and IDEAL SALE for "Real estate investment services" [SALE disclaimed], and also on the ground of applicant's refusal to disclaim the wording CAPITAL GROUP and PRIVATE CLIENT.]

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Text Copyright John L. Welch 2025.

Crowded Field Argument Fails, TTAB Deems MARIO'S for Clothing Confusable with MARIO'S 3.10 for Retail Apparel Stores

Despite some two dozen third-party registrations for MARIO-formative marks for clothing and footwear, the Board affirmed a refusal to register the mark MARIO'S for boots, dresses, shirts, and various other clothing items, finding confusion likely with the registered mark MARIO'S 3.10 for "retail apparel stores." Noting that "[r]etail store services have frequently been found to be related to goods sold by those retail stores," the Board deemed the involved goods and services "related on their face[s?]." But what about the marks? In re Mario’s LLC, Serial No. 98460342 (January 27, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The third-party registrations for MARIO-formative marks were considered with respect to the conceptual strength of the cited mark. Applicant also submitted evidence of use for some of the registrations, and that evidence may be considered vis-a-vis both conceptual and commercial strength.

The third-part registered marks included MARIO MILLIONS, CHEERFUL MARIO, SUPER MARIO BROS, MARIOKART, JOY&MARIO, MMMM MARIO’S, MARIO CALDI, MARIO BERLUCCI, MARIO FAGNI, MARIO VALENTINO, MARIO ROSSI, MARIO SAMELO, MARIO PELLINO and Design, MARIO BEMER USA, and MARIO HERNANDEZ. (Some of the registrations were owned by the same registrant.) Applicant argued that, in light of this "crowded field," MARIO marks should be "narrowly construed." The Board was not persuaded.

Many of these registrations (and uses) do not contain MARIO/MARIO’S standing alone or in combination with generic or descriptive wording and are far more dissimilar than the cited mark.

The addition of a surname to MARIO in many of the marks "distinguishes these marks’ commercial impression. When considered with clothing or footwear, each of these marks engenders the impression of a fashion designer, with the first name of less (or equal) prominence."

We also find the two JOY&MARIO marks have a different commercial impression due to the use of two personal names. Similarly, we find that the three SUPER MARIO marks and the MARIOKART mark have the commercial impression of a Nintendo video game and are distinguishable

The Board focused on MMMM MARIO’S, which it found to be the most probative, and CHEERFUL MARIO, and MARIO MILLIONS, which it deemed somewhat probative, "all showing the personal name MARIO/MARIO’S as a component of a mark with other matter." However, the Board found these registrations "too few in number to establish that the MARIO’S component of Registrant’s mark is relatively weak and entitled only to limited protection." And so, it deemed the sixth DuPont factor neutral

Turning to the marks, the Board found that the presence of the number 3.10 in the cited mark lends a slightly different connotation (suggesting that it is the third store owned by the registrant) than that of Applicant’s MARIO’S mark, but that difference was outweighed by the similarity in connotation resulting from the presence of the word MARIO’S in each mark. "Consumers familiar with the MARIO’S 3.10 mark are likely to perceive MARIO’S as a product line of that brand."

Weighing the relevant DuPont factors, the Board concluded that confusion is likely, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: The crowded field argument is often made but seldom succeessful.

Text Copyright John L. Welch 2026.

Precedential No. 12 - TTAB Re-designates Decision: DANKE Not Confusable with MERCI for Chocolates

On January 27th, the Board re-designated as precedential its November 14, 2025 opinion in the DANKE/MERCI opposition, in which it concluded that DANKE (Stylized) is not confusable with MERCI for chocolate, despite their identical meaning in English. The original TTABlog post may be found here. Perhaps some of the comments to that blog post, including one by Professor McCarthy, played a role in the Board's re-assessment of the opinion.

Read comments and post your comment here.

Text Copyright John L. Welch 2026.

TTABlog Test: Are Legal Services Related to Brand Consultation Services Under Section 2(d)?

The USPTO refused to register the mark MIRICK & Design, below left, for "legal services," deeming confusion likely with the registered mark shown below right, for, inter alia, "Business consulting services; developing customized branding strategies for businesses and individuals." Applicant and Examining Attorney Kiara Rodríguez Fontánez sparred over which part of applicant's mark is dominant and whether the services are related. How do you think this came out? In re Mirick, O’Connell, DeMallie & Lougee, LLP, Serial No. 98278181 (January 27, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Marks: The Board found it unnecessary to determine whether there is a dominant element in applicant's mark. "[O]verall, it is enough that the design element is significant, because the design element is identical to the cited mark. This creates a visual similarity that increases the likelihood of confusion."

Furthermore, the similar commercial impressions engendered by the marks are likely to lead consumers to believe that "either the owner of the cited mark or the Applicant is now using a slightly different version of its mark (either by adding the MIRICK element or deleting it)."

The Services: The Board found the services to be related. It noted that because there is no limitation on the scope of the legal services identified in the application, they include legal services relating to brands. "Applicant’s counsel is, in fact, providing legal services relating to branding through its work on this appeal."

To put a finer point on it, a consumer might seek general consultation about branding as part of the process of selecting a trademark. Once that mark is selected, the same consumer may seek legal services concerning the protection of the mark. The services are complementary and may well be used by many of the same consumers. In such a context, it is likely that consumers will believe the two types of services, while technically distinct, are offered by a single source.

Customer Care: Applicant argued that consumers seeking legal services are careful, but it provided no evidence of same. The Board instead found that "not all actual and prospective consumers of Applicant’s services are careful."

We find this is a mixed market, with some consumers likely making careful purchasing decisions and some making less careful decisions, and we are required to base our decision “on the least sophisticated potential purchasers.” Stone Lion Capital Partners, 746 F.3d at 1325. We find that the “least sophisticated potential purchasers” of Applicant’s legal services likely exercise ordinary care in making purchasing decisions, which does not alter the likelihood of confusion. The fourth DuPont factor is neutral.

Strength of the Cited Mark: Applicant submitted 11 third-party registrations in an attempt to show that the Cited Mark is weak and entitled to a narrowed scope of protection. None were probative: some involved unrelated services and none were for marks sufficiently similar to the Cited Mark to put a dent in its strength. "There are an infinite number of ways to stylize the letter M, and Applicant’s evidence shows substantial variation."

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: What do you think? Don't trademark lawyers do brand consulting in one form or other?

Text Copyright John L. Welch 2026.

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

For the past decade, about 90% of Section 2(d) refusals have been affirmed. A TTAB Judge once said to me 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. Here are three recent Section 2(d) appeals. At least one of them was reversed. Let's see how you do. [Answer in first comment].

In re Culine Imports LLC, Serial No. 98480830 (January 16, 2026) [not precedential] (Opinion by Judge Jessica B. Bradley). [Section 2(d) refusal of the mark shown below, for "consumer electronic products, namely, audio amplifiers, audio speakers, audio receivers, electrical audio and speaker cables and connectors, audio decoders, video decoders, speakers, power conversion devices, power converters, and power inverters" in view of the registered mark FUZZIX for lamps, lamp fixtures, and other lighting products.]

In re Free-Free(USA) Inc. and Free-Free Industrial Corp., Serial No. 98518085 (January 16, 2026) [not precedential] (Opinion by Judge Thomas L Casagrande). [Section 2(d) refusal of the mark VAC-TITE for, inter alia, "canister sets" and "acrylic insulation jars and all purpose household acrylic jars used to store dry food goods such as cereal, chips, pasta, sugar, cookies, flour, bagels," in view of the registered mark TIGHTVAC for "kitchen containers."]

In re Luxury Brands International LLC, Serial No. 98476728 (January 26, 2026) (Opinion by Judge Angela Lykos) [Section 2(d) refusal to register the mark shown below, for "bed sheets" and other bedding products [LUXURY BRANDS INTERNATIONAL disclaimed], in view of the registered mark LUXBRAND for "bed blankets" and "bed sheets."]

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Text Copyright John L. Welch 2026.