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 Jackson Family Farms, LLC v. Dylan Fairweather, Opposition No. 91291000 (January 30, 2026) [not precedential] (Opinion by Judge Thomas W. Wellington).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.

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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, the addition of a surname to MARIO 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.

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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.

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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.

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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.

TTAB Affirms Genericness Refusal of FREE PHOTOS for . . . Guess What?

The Board upheld refusals to register, on the Supplemental Register, the proposed marks FREE PHOTOS and FREEPHOTOS (in standard form), finding the terms to be generic for “printing services for printing photos and personalized items, namely, photo albums, photo posters, photo tiles, canvas prints, photo cards, photo blankets, photo mouse pads, photo magnets, and photo cups." Applicant Inmate Photos argued that neither “free photos” nor “freephotos” are defined dictionary terms, but other evidence developed by the Office proved to be decisive. In re Inmate Photos, LLC, Serial Nos. 97513508 and 97513513 (January 15, 2026) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

The determination of genericness employs a two-part test: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986)." Because the identification of services in an application defines the scope of rights conferred by Section 7(b) of the Trademark Act, the genericness inquiry ordinarily “focuses on the description of services set forth in the [application or] certificate of registration.”

[T]he ultimate question is whether consumers who buy or use printing services for printing photos and personalized items understand FREE PHOTOS and FREEPHOTOS primarily to refer to a class or category of those services.

Examining Attorney Taylor Barrese submitted website excerpts showing numerous third parties using “free photos” to describe a perk or reward offered to consumers. Additional third-party uses of the phrase “free photos” appear in blogs and articles that recommend photo‑printing services offering free photos. And applicant "uses 'free photos' in a non‑source‑identifying manner to describe a perk of its services − printing photographs at no charge to the consumer."

Based on dictionary definitions [of "free" and "photo"], third‑party uses, and Applicant’s own materials, we find that “free photos” is commonly used to identify a perk or reward in connection with printing services for printing photos and personalized items, and that both Applicant and other market participants offer such services. Ordinary consumers of these services would therefore understand FREE PHOTOS and FREEPHOTOS to refer primarily to a key aspect of the services − namely, that the provider supplies free photo prints as a reward or promotional benefit.

And so, the Board affirmed the refusal.

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TTABlogger comment: Seems to be merely descriptive to me.

Text Copyright John L. Welch 2026.

TTAB Denies KINETIC SPORTS Cancellation Petition for Failure to Prove Abandonment and Fraud

Petitioner Perfect Arm was armed with imperfect evidence in its attempt to cancel a registration for the mark KINETIC ENERGY for elbow guards, compression wraps, and a host of other such devices. Respondent, appearing pro se, fended off claims of abandonment and fraud, aided by Petitioner's failure to cross-examine Respondent. The Perfect Arm, LLC v. Muhammed Tanveer Memon, Cancellation No. 92083488 (January 23, 2026) [not precedential] (Opinion by Judge Mark A. Thurmon).

Abandonment: To prove abandonment, Petitioner relied upon the Section 45 statutory presumption triggered by proof of at least three years of nonuse, arguing that “Respondent] keeps business records and proof of sales in a haphazard and cursory manner and is unable to show proof of sales in the three-year period starting October 20, 2020 and ending October 20, 2023.” The Board, however, pointed out that "it is not Respondent’s burden to prove use of its mark. Petitioner has the burden of proving nonuse of the mark, and yet, the evidence Petitioner submitted proves the opposite."

Petitioner argued that Respondent’s evidence should not be trusted, and that his declaration is "self-serving." [Isn't it supposed to be? - ed.]. The Board found Respondent’s testimony "credible and consistent with the documentary evidence."

We further note that Petitioner did not exercise its right to cross-examine Respondent and that Petitioner’s own evidence shows ongoing sales of the KINETIC SPORTS goods during the alleged period of nonuse. Petitioner has failed to show any cessation of use of the mark by Respondent. Because a break in use is an element of Petitioner’s abandonment claim, this failure of proof is fatal to the claim.

Although intent not to resume use was not alleged by Petitioner, the Board also found that Respondent "never intended to discontinue use" of his mark. And so, Petitioner failed to prove the second element of an abandonment claim.

Fraud: Respondent admitted that its underlying, used-based application included goods that he had not yet sold at the time of filing. The Board found that Respondent's false statement was material because "the identification of goods plays a key role in defining the rights obtained through a federal trademark registration." However, Petitioner failed to prove that Respondent had an intent to deceive the Office.

Indeed, Petitioner never obtained testimony from Respondent concerning the reason for the overly broad list of goods in the Application. Proving a misstatement, without more, is not proof of fraud. Because there is no evidence of an intent to deceive in the record, Petitioner’s fraud claim fails.

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TTABlogger comment: Actually, it appears that cross-examination may not have done much good.

Text Copyright John L. Welch 2026.

Experienced Trademark Paralegal Seeks Position with East Coast Firm or Corporation

Experienced Trademark Paralegal seeks position with a corporation or law firm, preferably in New York, New Jersey, Delaware, or other areas on the East Coast, but will consider other locations as well. With more than 25 years of focused trademark and brand-protection experience at top law firms and global companies across fashion, technology, finance, and consumer goods, this person brings the institutional knowledge, tactical skill, and proven results necessary that would add immediate value to any organization. Ready to step into a role that requires both deep technical knowledge and pragmatic execution. Send inquiries to jwelch at wolfgreenfield.com to arrange for an introduction.

Throughout this person’s career, they have led and executed end-to-end trademark programs that delivered measurable business value, comprehensive clearance and prosecution strategies, disciplined portfolio management, coordinated enforcement and litigation support, thorough due diligence for merger, acquisitions and divestitures, and contract work. They have supported cross-functional teams to align IP strategy with marketing and product initiatives, reducing clearance risk and accelerating time-to-market while protecting brand equity.

Key qualifications:

• Extensive trademark expertise: clearance, prosecution, maintenance, and portfolio optimization across domestic and international jurisdictions. 
• Litigation and enforcement experience: prepared pleadings, motions, discovery requests and responses, manage evidence, and coordinated with international counsel to support successful outcomes. 
• Transactional and agreement work: drafted and negotiated trademark provisions in licenses and coexistence agreements. 
• Operational leadership: created tracking systems and SOPs that improved docketing accuracy, reduced missed deadlines, increased departmental efficiency and provide analytics for making strategic and informed decisions. 
• Clear, persuasive legal writing.

Text Copyright John L. Welch 2026.

"NO LAW DEGREE REQUIRED" Fails to Function as a Source Indicator for Business Consulting and Legal Information Services

The Board affirmed a failure-to-function refusal of the proposed mark NO LAW DEGREE REQUIRED for business consulting, educational, and legal information services, finding that applicant uses the phrase to convey information about its services, and that third-parties use the phrase "for the same purpose for closely related goods and services also offering business and legal information." In re Protect for Success, LLC, Serial No. 98051678 (January 21, 2026) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

The Board observed that "'failure to function' is an umbrella term because there are many reasons why a proposed mark may not function as an indicator of source."

In addition to the proposed mark being merely informational, the proposed mark may be, for example, the title of a single creative work, a trade name, or a model number. The informational failure to function refusal itself has sub-categories, for example, the informational message is a widely used or commonplace message, or merely conveys general information about the goods or services.

The Board agreed with Examining Attorney Amit Shoor that "the placement of NO LAW DEGREE REQUIRED amidst other information about Applicant’s services supports the finding that Applicant’s use of NO LAW DEGREE REQUIRED would be perceived as merely conveying information about the level of education required for consumers of Applicant’s three classes of services."

Evidence of third-party use of NO LAW DEGREE REQUIRED demonstrated that the phrase "has an ordinary meaning that conveys that prospective customers do not require legal training to understand legal concepts in an article or publication ..., or to perform certain jobs in the legal field ...." The Board noted that applicant’s services are unrestricted as to the services performed, and so may include the use of written materials; the services are also unrestricted as to purpose, and so may include the purpose of aiding job performance in the legal field.

We agree [with the applicant] that NO LAW DEGREE REQUIRED may not be informational in all contexts, without finding the point particularly relevant. Whether, for example, the consumer of canned peas would see NO LAW DEGREE REQUIRED on the can and perceive it as a mark is not the issue before us. Instead, we assess the evidence that the term as used by Applicant will be perceived as a mark by the relevant consumers of Applicant’s business and legal information services.

The Board concluded that Applicant uses NO LAW DEGREE REQUIRED to convey the information that prospective customers for its business consultation services, educational courses, and legal information services do not need legal training. Third-party uses show the term used for the same purpose for closely related goods and services also offering business and legal information.

And so, the Board affirmed the refusal.

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TTABlogger comment: Is this a WYHA? 

Text Copyright John L. Welch 2026.

TTABlog Test: Is YOGUT for Freeze-Dried Yogurt-Based Snacks Confusable with YOURGUT for Yogurt?

The USPTO refused to register the mark YOGUT for "Freeze-dried yogurt-based snack," on the ground of likelihood of confusion with the registered mark YOURGUT for "yogurt." Applicant Mira International Foods argued that the “YO” portion of its mark will be seen as the Spanish word for “I” or “me,” and thus consumers will read its mark as “I am stomach.” Examining Attorney Amanda Miller contended that consumers will likely read the mark as a misspelled version of “your gut." How do you think this came out? In re Mira International Foods, Inc., Serial No. 98465558 (January 12, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Board agreed with the Examining Attorney: "We see nothing in the record, nor is there anything about Applicant’s identified goods (freeze-dried yogurt-based snacks), that would prompt consumers to read the first portion of Applicant’s single-term mark as a Spanish word and the second half as an English word." 

Because the marks have identical suggestive meanings and connotations and are similar in visual appearance and sound, we find that, overall, they create very similar commercial impressions. Thus, in our final weighing we will count the first duPont factor as favoring a conclusion that confusion is likely.

The Board observed that "[t]he more consumers see companies selling certain non-identical goods under one mark, the more they tend to see those goods as related in the sense that matters for potential source confusion." The Examining Attorney submitted evidence that several companies "do just that" at their websites.

Based on the descriptions of the respective goods in the application and registration and on the evidence of third-parties selling both types of goods under one brand, we find the goods to be related. This important factor will also count in favor of a conclusion that confusion is likely when we conduct our final factor-weighing.

That same evidence also showed that the trade channels overlap.

Here, the marks are very similar and the goods are related. As we mentioned earlier, these both are important factors. The trade channels overlap, too, though this is not as weighty a consideration in this case. With all three factors addressed on appeal pointing towards a conclusion that confusion is likely, we have no difficulty on this record so concluding.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2026.

EASY BEE-ZY KNOCK OUT Not Confusable with OSO EASY and OSO EASY PEASY for Live Plants, Says TTAB

In a "modern-day War of the Roses," the Board dismissed an opposition to registration of the mark EASY BEE-ZY KNOCK OUT for “live plants,” concluding that confusion is not likely with the registered marks OSO EASY and OSO EASY PEASY for live plants. The Board found that "the dissimilarity of the marks and the slight weakness of Opposer’s marks" outweighed the other DuPont factors. Spring Meadow Nursery, Inc. v. The Conard-Pyle Company, Opposition No. 91291336 (January 12, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Opposer pleaded seven registrations but the Board focused on only two of them: OSO EASY for “live plants” and OSO EASY PEASY for “live plants excluding barley and peas in any form,” because they are "most similar to Applicant’s mark and goods." "If we find a likelihood of confusion as to either of these marks and the associated goods, we need not find it as to Opposer’s other marks. Conversely, if we do not find a likelihood of confusion as to either of these marks, we would not find it as to Opposer’s other marks."

Opposer attempted to prove that its marks are commercially strong under the fifth DuPont factor, but it failed to provide sufficient context for its sales and advertising figures to allow the Board to make that finding. The Board concluded that the marks are of "average commercial strength." Under the sixth factor, the Board found Opposer’s marks OSO EASY and OSO EASY PEASY, to be inherently distinctive, "although their conceptual strength is somewhat limited by the conceptual weakness of the term EASY as it pertains to the ease of growing and maintaining the shrubs."

Since applicant's goods and those of the two registrations are identical or overlap, the Board presumed that the overlapping goods travel in the same trade channels to the same classes of consumers. Moreover, a lesser degree of similarity between the marks is therefore needed to conclude that confusion is likely.

Turning to the marks, the Board found that OSO EASY and OSO EASY PEASY are "inseparable unitary phrases with an unusual spelling of 'oh so,' both imparting to the consumer that growing and caring for the plants is very easy." "Applicant’s mark begins with the phrase EASY BEE-ZY, which, despite some phonetic similarity to a portion of Opposer’s unitary marks, ends with the incongruous phrase KNOCK OUT." "[It] includes a hyphen setting off BEE and ZY, and so the mark specifically directs consumers to understand that the shrubs attract bees as pollinators."

Applicant argued that consumers will likely focus on the KNOCK OUT portion of its mark because it is part of a “family” of KNOCK OUT marks. Although it is "well-established that the family of marks doctrine is not available to overcome a Section 2(d) refusal in an ex parte proceeding," the Board ruled [without citing any legal support] that "evidence of a family of marks also supports the distinctiveness of a defendant’s mark, or a portion thereof (such as KNOCK OUT), in a Section 2(d) analysis." Other evidence of applicant's use of the term KNOCK OUT with other rose plants also supported the argument that the KNOCK OUT portion of applicant's mark is distinctive.

We conclude that the inclusion of the term KNOCK OUT in Applicant’s mark significantly contributes to the other differences we have identified in the marks. In sum, we find that the similarities in appearance, sound, meaning, and overall commercial impression are outweighed by the marks’ significant dissimilarities, particularly considering the limited scope of protection of Opposer’s OSO EASY marks, and in spite of the similarities in goods and channels of trade. The first DuPont factor weighs against a finding of likelihood of confusion.

The Board then determined that the dissimilarity of the marks and the slight weakness of Opposer’s marks outweighed the other DuPont factors. Because opposer failed to prove by a preponderance of the evidence that confusion is likely, the Board dismissed the opposition.

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TTABlogger comment: I have no problem with the result, but question the Board's resort to external evidence to show the distinctiveness of the phrase KNOCK OUT. Moreover, isn't KNOCK OUT inherently distinctive anyway?

Text Copyright John L. Welch 2026.