Chicago Brothers Best San Antonio Brothers in FADED CULTURE STUDIO Barbering Services Priority Battle

In an exhaustive and exhausting 76-page opinion, the Board awarded priority to applicant (Chicago) over opposer (San Antonio) in a battle over the mark FADED CULTURE STUDIO for barbering services. Opposer claimed priority based on common law rights in the mark FADED CULTURE for the same services, but its evidence fell short. "In the terms of the Federal Circuit’s puzzle metaphor in W. Fla. Seafood, there are a large number of pieces here, but they simply do not fit together to form a discernible picture of prior use of FADED CULTURE for barbering services." FVDED, LLC v. Faded Culture Studio, LLC, Opposition No. 91286343 (November 2, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Board first found that applicant established June 19, 2019, as its date of first use of the FADED CULTURE STUDIO mark in connection with barbering services, the date claimed in its application.

To beat that date, opposer attempted to rely on tacking, an issue that it had not raised in the pleadings, but the Board found that the issue was tried by implied consent. However, the marks that opposer relied on for tacking - FADED, FΛDED, FVDED CULTURE, FXDED CULTURE, F∀DED CULTURE, and FΛDED CULTURE - were used for clothing, not barbering services, and so they were irrelevant to the priority issue.

By definition, clothing and barbering services are not “substantially identical” and thus the use of any prior mark for clothing per se cannot be tacked onto Opposer’s current use of FADED CULTURE for barbering services to establish priority of use of FADED CULTURE for those services.

Opposer claimed that it began using the mark FADED CULTURE for barbering services in 2016, relying on the testimony of a barber's baker's dozen of "friends and longtime customers." However ,the testimony was inconsistent as to the date of first use of the mark, as to which mark opposer used, and as to how the mark was used.  

On this record, we find that it is more likely than not that the Barron brothers were not giving “haircuts to customers using the FADED CULTURE mark,” 48 TTABVUE 7, before June 19, 2019. [emphasis supplied)

Opposer also claimed prior use of the FADED CULTURE mark on clothing. However, it had asserted a 2020 date in a trademark application, and so the Board ruled that it must provide clear and convincing evidence to go behind that date. Again, its testimony fell short.

conspicuously absent from Opposer’s evidence that the Barron brothers “gave customers haircuts using the FADED CULTURE mark” prior to June 19, 2019 are any of the normal trappings of the use of a mark for barbering services, such as the signage shown and discussed above that established Applicant’s first use of its FADED CULTURE STUDIO mark, or even the type of circumstantial evidence credited in W. Fla. Seafood as establishing prior use of a mark for restaurant services, such as the “advertisements placed in local newspapers,” regulatory licenses, and inspection reports.

And so, the Board dismissed the opposition.

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TTABlogger comment: A typically thorough and instructive opinion by Judge Larkin.

Text Copyright John L. Welch 2026.

TTABlog Test: Is MIZUNARA WOODS Merely Descriptive of Engineered Hardwood Flooring?

The USPTO refused to register the proposed mark MIZUNARA WOODS for “Engineered hardwood flooring featuring wooden veneer of mizunara oak sold integrally therewith" [MIZUNARA disclaimed], finding the mark to be merely descriptive of the goods. Applicant AHF argued that “the term WOODS may be used in plural to indicate a variety of ‘woods’, i.e., different types of wood, but not to indicate a plural set of pieces of the same type of wood." How do you think this appeal came out? In re AHF, LLC, Serial No. 98366353 (October 30, 2026) [not precedential] (Opinion by Judge Robert Lavache).

Examining Attorney Gillian Brown provided evidence that the term MIZUNARA refers to a variety of oak tree from Japan and the wood therefrom. AHF's identified its goods as "featuring wood veneer of mizunara oak." "Thus, there is no dispute that MIZUNARA is merely descriptive as applied to the identified goods."

As to the word WOODS, the Examining Attorney relied on dictionary definitions and encyclopedia entries that included examples of use of the plural "woods" to refer to various types of woods or a collection of woods. Third-party websites showed the term “woods” being used to refer to wood types utilized for flooring. The Board agreed with the Examining Attorney that:

in this case, both the individual components [of the proposed mark] and the composite result are descriptive of Applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, the combination of MIZUNARA and WOODS does not create a new or nondescriptive meaning. Rather, consumers will understand the composite phrase as describing a characteristic of Applicant's hardwood flooring, in that the flooring has the characteristic of being a collection of WOODS featuring MIZUNARA oak.

Applicant AHF argued that "Mizunara oak is referenced as a singular type of wood” and thus “[a] consumer will look at the [proposed mark], in its entirety, and interpret the mark to be ‘a variety or collection of different WOODS’ and then, will need to make a connection to mizunara oak in the singular and try to understand how this represents a ‘variety or collection.’” Therefore “an incongruity is present” in the proposed mark and a “consumer will certainly need a mental pause to reconcile these incongruous concepts, a hallmark of a mark being suggestive.” The Board was unimpressed, pointing to evidence that, "in the context of flooring, 'woods' is used to refer to a particular type of wood or a collection featuring a particular type of wood."

while Applicant is correct that “woods” can refer to different types of wood, as some of the evidence previously discussed shows, that is not the only potential meaning of the term when used in connection with flooring. * * * [W]e concur with the Examining Attorney’s finding that consumers viewing the proposed mark will immediately understand it as referring to a feature or characteristic of Applicant’s flooring in that the flooring contains mizunara oak woods.

The Board pooh-poohed AHF's risible argument that consumers "may recognize the term MIZUNARA as Japanese, but may consider it coined, e.g., consider it as relating to anime or video-game genres, which are highly associated with Japanese culture” and thus “MIZUNARA WOODS may be perceived as a fantasy or made up place with no connection to an actual species of oak.” The Board pointed out once again that a mark must be considered in the context of the goods, not in the abstract.

Two significant reasons for not registering merely descriptive marks are: “(1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.” *** [O]ther entities in the marketplace who choose to offer these goods should be free to use MIZUNARA WOODS in advertising such goods.

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 HIBOU BLANC Confusable with THE WHITE OWL CANDLE COMPANY for Candles?

The USPTO refused to register the mark HIBOU BLANC for "candles; scented candles; scented soy candles; melt tarts, namely, scented wax to be melted slowly with a warmer," deeming confusion likely with the registered mark THE WHITE OWL CANDLE COMPANY for “candles; candle contained in a clamshell; scented candles; soy candles" [CANDLE COMPANY disclaimed]. Applicant Leo G. Bressette conceded that goods are identical in-part. Examining Attorney Claudia A. Kopenski, maintained that HIBOU BLANC is French for “WHITE OWL," but Bressette argued that HIBOU "is not a common English loanword, is absent from standard English usage, and is unlikely to be recognized or translated by ordinary purchasers" and so "consumers will perceive HIBOU BLANC as a foreign-language brand name, not as the literal equivalent of 'white owl.'" How do you think this appeal came out? In re Leo G Bressette, Serial No. 99020217 (October 28, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The Federal Circuit held in Vetements that "words from modern languages are generally translated into English," and "unless it is unlikely that the ordinary American purchaser would stop and translate the word into its English equivalent, the doctrine of foreign equivalents applies."

French is a modern foreign language spoken by more than 1.2 million Americans. Various dictionaries translate HIBOU as OWL and BLANC as WHITE. The Board concluded that an "appreciable number" of U.S. consumers would know that HIBOU BLANC translates to WHITE OWL in English. 

[Note: the number of French speakers who will "stop and translate" HIBOU BLANC pales in comparison to the number of consumers who would have no clue regarding its meaning. In an infringement action, if the plaintiff showed that such a small percentage of US consumers would be confused, what do you think would be the outcome? - ed.]

The Board brushed aside Bressette's assertion that HIBOU is not a common word and would not be translated, pointing out that Bressette's argument was topsy-turvy: if HIBOU were a word commonly known in English (like croissant or fiesta), there would be no need to translate it. "[T]he threshold inquiry is not whether the non-English wording is common or present in English as a 'loanword,' but rather whether an ordinary American purchaser would stop and translate it."

Bressette cited the Palm Bay decision, which declined to translate VEUVE ROYALE when considering confusing similarity with the opposer’s mark THE WIDOW because "it [was] improbable that the average American purchaser would stop and translate 'VEUVE' into 'widow.'" 396 F.3d at 1377. The Board, however, found the cases distinguishable: 

The evidence here supports a finding that an appreciable number of Americans are capable of translating the wording HIBOU BLANC into WHITE OWL in English. Contrary to Applicant’s suggestion, there is no evidence that the words in his mark are "obscure or not widely recognized" or that they would be considered "as a distinctive foreign expression rather than as a translatable phrase."

Turning to the marks, the Board unsurprisingly found that WHITE OWL is the dominant term in the cited mark. "Comparing the marks in their entireties in view of the applicable legal principles, including that a lesser degree of similarity of the marks is needed for confusion to be likely when the goods are literally or legally identical, we find that the marks are similar in connotation and overall commercial impression and the first DuPont factor favors a likelihood of confusion."

The Board found the fourth, fifth, and eighth DuPont factors to be neutral, and none of the factors favored applicant.

Read comments and post your comment here.

TTABlogger comment: Take a look at applicant's brief [pdf here]. Do you think it was a creation of AI? Do you think it matters to the Board that it had to plow through 16 pages of argument that was largely off-base?

Text Copyright John L. Welch 2026.

TTAB Posts November 2026 Hearing Schedule

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

November 5, 2026 - 2 PM [Virtual]: In re Entertainment Content, Inc., Serial No. 97022351 [Refusal to register the proposed mark SPORTS.TV on the Supplemental Register, for downloadable software for accessing information about sports, news, and entertainment, internet broadcasting, and entertainment services in the fields of sports, news, and entertainment, on the ground of genericness.].

November 12, 2026 - 1 PM [In-Person]: Lara Kajajian v. Larisa Love, LLC dba Larisa Love, Cancellation No. 92071241 [Petition for cancellation of a registration for the mark LARISA LOVE for "Hair salon services" on the ground of likelihood of confusion with petitioner's common law mark LARISSA LOVE for cosmetics and personal care products.]

November 12, 2026 - 2:30 PM [Virtual]: Encyclopaedia Iranica Foundation Inc. v. Persian Heritage Foundation, Opposition No. 91245273 [Opposition to registration of the mark PERSIAN HERITAGE FOUNDATION and Design shown below left, for "Charitable foundation services, namely, providing fundraising activities, funding, scholarships and/or financial assistance for the furthering of Persian heritage and culture in academia" [PERSIAN HERITAGE FOUNDATION disclaimed] on the grounds of lack of bona fide intent and likelihood of confusion with the common mark "flower" design mark shown below right, for a variety of goods and services, including books and other printed or online publications, publication services, services consisting in promoting preservation and awareness of Iranian culture and heritage, charitable services, namely, providing fundraising activities and granting funds to support preservation and awareness of Iranian culture and heritage.]

November 19, 2026 - 11:00 AM [Virtual]: In re Granite Hoback Ranch LLC, Serial No. 98964493 [Refusal to register the mark THE HAWKEN for retail store services, resort and recreational services, resort lodging services, and health spa services, on the ground that the mark is primarily merely a surname under Section 2(e)(4).

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.

TTABlog Test: Is HARD WATER Merely Descriptive of Canned Alcoholic Beverages?

The Board upheld the USPTO's refusal to register the mark BLUEBIRD HARDWATER, in standard character and logo form, for "Canned alcoholic beverages, except beer,” in view of the registered mark BLUEBIRD DISTILLING for "distilled spirits" [DISTILLING disclaimed]. The Office also required a disclaimer of HARD WATER (the proper spelling of HARDWATER) on the ground of mere descriptiveness under Section 2(e)(1). Applicant claimed that "HARDWATER" is a coined term and that the Office improperly dissected it into "HARD" and "WATER." How do you think the Board came out on the disclaimer issue? In re Bluebird Hardwater, Serial Nos. 90902279 and 97187261 (October 22, 2026 [not precedential] (Opinion by Judge Martha B. Allard).

Likelihood of Confusion: The Section 2(d) analysis was straightforward. The Board found the goods to be complementary and related and the channels of trade and classes of consumers the same. [In a concurrence, Judge Casagrande would have found the goods legally identical]. 

As to the strength of the cited mark, the Board plowed through applicant's voluminous evidence and painstakingly whittled it down for relevancy. It found the cited mark to be unweakened commercially by applicant's evidence of four third-party uses of BLUEBIRD-containing marks [too few], but somewhat weakened conceptually ["at worst suggestive"] by those four uses and by three third-party registrations. [Why would "BLUEBIRD" be suggestive of alcoholic products? - ed.]. And so, it deemed the sixth DuPont factor to be neutral.

As to the marks, the Board unsurprisingly found the term BLUEBIRD to be the dominant element in the marks, and then found them to be similar in sound and appearance to the extent that they all contain BLUEBIRD as the initial term. They have similar connotations and commercial impressions "due to their shared use of the literal element BLUEBIRD and their use on related goods." [They are dissimilar to the extent they contain other words - ed.]. And so, the first DuPont factor supported the refusal.

Finding that purchasers of the goods "cannot be considered to have any particular sophistication about these alcoholic beverages," the Board deemed the fourth DuPont factor to be neutral. "Because all of the DuPont factors either weigh in favor of a likelihood of confusion or are neutral, and none weigh against it, we conclude that confusion with Registrant’s mark is likely to occur."

Disclaimer Requirement: Examining Attorney Kieu-Nhi Le maintained that HARDWATER merely describes a characteristic or ingredient of applicant's goods. The evidence showed that the term “hard” is defined as “having a high concentration of alcohol." “Water” is listed as an ingredient in Applicant’s goods. Moreover, third-party website evidence established that "the phrase 'hard water' is commonly used by third parties to mean beverages composed of alcohol and water."

The record included third-party registrations for marks incorporating the term 'hard' or 'water' for alcoholic beverages containing alcohol or water, in which registrations these terms were disclaimed.

Applicant’s use of the term HARDWATER is consistent with the dictionary definition of the term HARD and with the third-party website and registration evidence . . . all of which shows that consumers will understand the compound word to mean a beverage composed of alcohol and water.

The Board brushed aside applicant's assertion that HARDWATER is a coined term. "Rather, it is a combination of two common, well-established terms that describe an alcoholic beverage containing both water and alcohol, which precisely describes the ingredients of Applicant’s identified “'Canned alcoholic beverages, except beer.'"

The dictionary definition of the term “hard” and third-party use and registration evidence of record confirm that these terms, when combined, have a common meaning in the relevant field and it requires no imagination to connect it to Applicant’s identified goods. Applicant’s combining the terms “hard” and “water,” and omitting the space between them, does not cause the combined terms to be something other than merely descriptive of the identified goods.

Furthermore, as to the "coined term" argument,"[t]he fact that Applicant may be the first or only user of a term does not render that term distinctive if . . . it has been shown to be merely descriptive of the goods identified in the application."

And so, the Board upheld the disclaimer requirement

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TTABlogger comment: BLUEBIRD is registered for wine, and BLUEBIRD DAY for beer. But there's room for only one BLUEBIRD in the canned alcoholic beverage space.

Text Copyright John L. Welch 2026.

Recommended Reading: The Trademark Reporter, September - October 2026 Issue

The September-October 2026 (Vol. 116 No. 5) issue of The Trademark Reporter [pdf here] has arrived. Willard Knox, Staff Editor-in-Chief, summarizes the contents as follows (and below): "This issue of The Trademark Reporter (TMR) offers readers a novel theory of adapting patent law’s convoyed sales damages theory for trademark infringement cases, a roadmap for navigating the obstacle course that certification mark applicants routinely face, and a toolkit updating litigants on the key changes to an essential reference manual on evidence."

A Patently Obvious Remedy for Trademark Infringement: Convoyed Sales by Jonathan E. Moskin and Roma Lopes. The practitioner authors of this article argue that patent law’s convoyed sales remedy can be adapted (and adopted) by brand owners seeking damages for trademark infringement.

The Certification Mark Challenge: Successfully Navigating the Prosecution Obstacle Course by B. Brett Heavner and Caroline G. Segers. The practitioner authors of this article detail how brand owners can maneuver the obstacle course of prosecuting a certification mark from application to registration.

A Practitioner’s Précis of the 2025 "Reference Guide on Survey Research": Key Revisions in the Federal Judicial Center’s Reference Manual on Scientific Evidence, Fourth Edition by David T. Neal, Ph.D. The practitioner author of this article updates attorneys and survey experts who develop and critique consumer surveys in litigation on the key changes from the previous edition of this essential reference manual on evidence.

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

TTAB Finds "THE JONES" for a Host of Services to be Primarily Merely a Surname

The Board affirmed a refusal to register the mark THE JONES for a laundry list of disparate services, including educational consulting, hotel accommodation, and beauty care [this is a Section 66(a) request for extension of protection filed by a UK company], finding the mark to be primarily merely a surname under Section 2(e)(4). Applicant argued that "[g]iven the overwhelming frequency with which consumers are accustomed to encountering marks comprised of THE and a surname, for hotel and hotel-related services, the public is most likely to perceive [THE JONES] as a source indicator for such services." The Board was not accommodating. In re Solomon & Silver Limited, Serial No. 79405252 (October 21, 2026) [not precedential] (Opinion by Judge Robert Lavache).

Examining Attorney Andrew Crowder-Schaefer relied on evidence from Ancestry.com and Wikipedia stating that JONES is the fifth most common surname in the United States. The 2010 U.S. Census data confirmed that point. "This evidence establishes that JONES is an extremely common surname in the U.S. and Applicant’s brief does not contend otherwise." Nor did applicant contest that JONES, alone, has the look and feel of a surname.

Applicant maintained, however, that the addition of the word THE to JONES makes a difference. It pointed to what it called "numerous registrations for, and widespread third-party use of, marks constructed in the form THE + [surname] in connection with the pertinent [hotel and hotel-related] services." The Board noted, however, that the file histories of those registrations were not in evidence, "and thus we do not know the examining attorneys’ reasons for approving the relevant marks for registration." In any case, the Board observed once again, each case must be decided on its own record. As to applicant's evidence:

Some of the names reflected in both the third-party registrations and the examples of use do appear to have primary significance as surnames. These include “Moore,” “Crawford,” “Pittman,” “Barnes,” “Williams,” and “Duniway.” But many of the others, including “Alexander,” “James,” “Tony,” “Thomas,” “Stanley,” and “Drake” could also be perceived as first names. Still other examples feature words that have other non-name significance, such as “Butler,” “Cooper,” and “Brown.” We therefore disagree with Applicant’s characterization of the evidence . . . ." 

The Board also noted that there was no evidence as to how the public "would view any proposed mark with a similar construction that is used in connection with hotel services as something other than just a surname."

Applicant pointed to In re IMH Columbia, LLC [TTABlogged here], where the Board reversed a Section 2(e)(4) refusal of the mark THE MERRIWEATHER for hotel services, but the Board distinguished that case:

[T]he decision explicitly states that the Board’s determination was also "based on ‘Merriweather’ being a relatively uncommon surname, having several possible non-surname meanings, including a very similar, known historical first name." Here, JONES is an extremely common surname and the record contains no evidence that it has any non-surname meanings. Thus, we agree with the Examining Attorney that Applicant’s evidence of hotel names prefaced by “the” does not compel us to reach the same conclusion here as in IMH Columbia.

Merriweather Clark

Even if we were convinced that the purchasing public would view the primary significance of THE JONES as something other than a surname when used in connection with hotel services, Applicant seeks registration of more than just hotel services. Indeed, the application identifies other services in International Class 43, as well as various services in International Classes 41 and 44.24 And, as the Examining Attorney points out, there is no evidence of record to support a finding that the addition of “THE” lends the proposed mark non-surname significance when used in connection with any of the identified non-hotel services in Classes 41, 43, and 44.

And so, the Board affirmed the refusal.

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TTABlogger comment: What if the applicant files a new application for THE JONES for hotel services?

Text Copyright John L. Welch 2026.

TTAB Refuses to Vacate Prior Decision Despite Stipulated Dismissal of Section 1071(b) Civil Action for Review

The Board denied a joint motion to vacate its July 25, 2025 decision in M Halyard, Inc. v. Guidepoint Global, LLC [pdf here] under FRCP 60(b). Observing that relief from judgment is "an extraordinary remedy to be granted in the court’s discretion only in exceptional circumstances," the Board concluded that "the public interest is substantial in protecting the integrity of the federal trademark register and cancelling Petitioner’s invalid trademark registrations." O&M Halyard, Inc. v. Guidepoint Global, LLC, Cancellation Nos. 92077680 (parent) and 92078922 (October 20, 2026) [not precedential].

The Board had ordered cancellation of two registrations owned by Petitioner Halyard on the ground of nonownership, after full trial, briefing, and an oral hearing. Halyard sought review by way of civil action under Section 1071(b) [in the E.D. Va.], and then entered into a joint stipulation with Respondent Guidepoint, leading to a dismissal with prejudice of all claims and counterclaims asserted in the civil action

The parties claimed that "[t]he district court’s dismissal with prejudice of the de novo review of this case renders the underlying TTAB proceeding moot" and so "the Board’s Final Decision is properly vacated pursuant to Rule 60(b)." However, the Supreme Court held in U.S. Bancorp, in the context of a review under 28 U.S.C. § 2106, that “mootness by reason of settlement does not justify vacatur of a judgment under review” absent “exceptional circumstances." "To allow a party who steps off the statutory path to employ the secondary remedy of vacatur as a refined form of collateral attack on the judgment would -- quite apart from any considerations of fairness to the parties -- disturb the orderly operation of the federal judicial system." Id. The Board concluded that "[t]he same reasoning holds true for Board proceedings, and the prescribed routes of appeal for final decisions."

Based on Petitioner’s own documents and testimony, the Board found that "on the filing date of the applications underlying Petitioner’s Registration Nos. 5739878 and 6357539, Petitioner did not own the mark QSIGHT, and as such Petitioner’s underlying applications are void ab initio and the resulting registrations are invalid. Respondent’s agreement otherwise does not alter this evidence, no new evidence has been identified or adjudged that changes this determination, and accordingly there is no basis to vacate this holding."

[T]he Joint Stipulation entered by the district court does not reference any new evidence, make any findings based on the district court’s de novo review of any evidence, and also does not “adjudge” anything regarding either of the party’s registrations, or the issues decided in the Final Decision. * * * In entering the Joint Stipulation, the district court also did not remand the case to the Board to consider vacatur, it only dismissed all claims with prejudice.

The Board ruled, in accord with U.S. Bancorp, that "settlement alone does not justify vacatur and the parties do not identify any 'exceptional circumstances' that would warrant vacating the Final Decision."

Even accepting the parties’ representation that “[a]s part of th[e] resolution [of the civil action], [Respondent] agreed that Petitioner is the owner of Registration Nos. 5739878 and 6357539,” does not provide a basis to vacate the Final Decision. As discussed in the Final Decision, the Federal Circuit recognizes, “registration by one who did not own the mark at the time of filing renders the underlying application void ab initio.”

The parties argued that vacating the decision would not harm the public interest because the decision was not precedential, and the dismissal with prejudice of the civil action “support[s] the public’s interest in preclusion and putting an end to years-long litigation between these parties.” They also claimed that “neither party will suffer hardship from the vacatur of the Final Decision, as the parties will co-exist in the market, cover their own costs of the litigation, and abstain from further litigation.” The Board was unmoved.

[T]he parties’ arguments overlook a key public interest. Cancellations, like “[o]ppositions[,] protect the public interest in the integrity of the federal trademark register by providing a means to consider and decide the right to registration, a matter of public interest.”

Concluding that "[N]one of the interests articulated by the parties outweigh this substantial public interest," the Board denied the motion to vacate.

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TTABlogger comment: The Board noted that "[i]f Petitioner is the current owner of the marks, then Petitioner has the right, of course, to file new applications identifying itself as the owner."

Text Copyright John L. Welch 2026.

TTAB Enters Summary Judgment Dismissing EMPOWER Monogram Opposition: First DuPont Factor Dispositive

Opposer Inmode alleged that the "monogram" mark shown below is confusingly similar to its registered, standard character marks EMPOWERRF and EMPOWERRF BY INMODE, all for skin care treatment services. The Board granted Applicant Empower Aesthetics' motion for summary judgment and dismissed Inmode's Section 2(d) claim, finding the first DuPont factor to be dispositive. Inmode Ltd. v. Empower Aesthetics LLC, Opposition No. 91299827 (October 26, 2026) [not precedential].

In its application, Empower Aesthetics described its mark as consisting of “a monogram of the word ‘EMPOWER’ such that, in the monogram, a first letter ‘E’ is shown on the left side facing inward, a second letter ‘E’ is shown on the right side facing inward, a letter ‘R’ is shown inside of the first letter ‘E’, a letter ‘P’ is shown inside of the second letter ‘E’ facing inward and the letters ‘O’, ‘W’ and ‘M’ are shown on top of one other and in the center of the monogram.”

Opposer Inmode maintained that applicant’s characterization of the mark as “a monogram of the word ‘EMPOWER’” was an admission that the mark is a “stylized version of the word 'EMPOWER'" and therefore the “literal element of Applicant’s EMPOWER & Design Mark is identical to the dominant portion of" Opposer’s marks.

Empower Aesthetics responded that focusing on the description of the mark, instead of the drawing of the mark, is improper. The Board agreed: “A drawing depicts the mark sought to be registered.”

Here, while Applicant may have intended that its mark be made up of an arrangement or “monogram” of the constituent letters of the word “EMPOWER,” the arrangement of geometric shapes that make up the mark is so highly stylized and arranged so as to form what appears to be a portal-like configuration devoid of any literal component. Our determination of a mark’s likely connotation and commercial impression are based on the perspective of the consuming public, not an applicant’s intention.

The Board observed that "consumers will be unaware of Applicant’s description of its mark when encountering it in the marketplace."

[C]onsumers are highly unlikely to perceive Applicant’s mark as stylized wording, but instead may only perceive a stylized design with somewhat symmetrical arrangement of geometric shapes, some of which may resemble letters. Even if an average consumer recognized one or more letters in this drawing, it is highly unlikely that the average consumer could reorient and rearrange those letters to form the word “EMPOWER.” * * * Indeed, even knowing that the design is intended to contain the letters “E-M-P-O-W-E-R,” it is very difficult to parse the design and identify those letters, let alone place them in the order Applicant describes in the application.

In short, the Board found the marks to be "strikingly different in all aspects," and so it granted the motion for summary judgment.

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TTABlogger comment: WYHO?

Text Copyright John L. Welch 2026.

TTABlog Test: Is this Word+Design Mark, with BLOCKOUT Disclaimed, Inherently Distinctive?

The USPTO refused to register the proposed composite mark shown below, for light-blocking plastic films and labels [BLOCKOUT disclaimed], finding the mark to be merely descriptive of the goods under Section 2(e)(1). With the literal portion disclaimed, the question "revolves around the other elements in the proposed mark and whether they render the mark inherently distinctive as a whole." The Examining Attorney argued that the background is a "basic design." Applicant argued that "[t]he interplay between the inner filled rectangle containing BLOCK, the absence of any rectangle around OUT, and the contrasting use of positive and negative space creates a cohesive design that communicates meaning beyond the literal wording." How do you think this appeal came out? In re Brook & Whittle Limited, Serial No. 98590492 [not precedential] (Opinion by Judge Jennifer L. Elgin).

The Board noted that Applicant did not make a claim of acquired distinctiveness, and therefore the stylization of BLOCKOUT and the design must create a separate and inherently distinctive impression. The Examining Attorney acknowledged that if descriptive or generic wording is presented in a distinctive display or design, the mark as a whole may be registered with a disclaimer of the unregistrable component. See In re Sadoru Grp., Ltd. [TTABlogged here].

The Board found that the proposed mark "can be seen as more than mere non-stylized text superimposed on a geometric background design."

Arguably, the differently colored rectangle and contrasting superimposed text create a commercial impression separate and apart from the disclaimed wording. The concept of positive and negative space is apparent in the mark and would remain so even when rendered in colors other than black and white. The placement of the word BLOCK within the rectangle (i.e., a block) can evoke the act of blocking light. The rectangular design is more than a mere background carrier for the contrasting superimposed block text.

The Examining Attorney's evidence showed that both the wording BLOCKOUT and the light-blocking function of the goods are described in the trade. "But that evidence bears on the descriptiveness of the wording, which Applicant has conceded through its disclaimer; it does not establish that the design and stylization immediately convey the light-blocking characteristic of the goods."

To the contrary, discerning the interplay of positive and negative space, and connecting that visual treatment of the design and text to the light-blocking nature of the films and labels, arguably requires imagination, thought, and perception on the part of someone who knows what the goods are to reach a conclusion about their nature, even when combined with the disclaimed matter. * * * Reasonable minds can differ on the distinctiveness of the design and the question of whether the mark as a whole is merely descriptive of the goods in the application. We have doubt about that question and resolve that doubt in favor of Applicant.

And so, the Board reversed the refusal to register.

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TTABlogger comment: I don't get it. Compare this decision to the SERIAL decision [TTABlogged here], in which the Board found that the two composite marks shown below [with SERIAL disclaimed] were not inherently distinctive.

Text Copyright John L. Welch 2026.