Precedential No. 6: "O EL CIELO VALLE DE GUADALUPE" Confusable with CIELO for Wine, TTAB Concludes

The Board sustained an opposition to registration of the mark O EL CIELO VALLE DE GUADALUPE for “wine” [VALLE DE GUADALUPE disclaimed], concluding that confusion is likely with the registered mark CIELO for "wines." Applicant's use of its mark in a manner that emphasized the words EL CIELO, coupled with the identity of the goods and the presumed identity of channels of trade and classes of consumers, provided the foundation for the Board's decision. Cielo e Terra, S.p.A. v. Hoteles y Viñedos del Valle de Guadalupe S.A. de C.V., Opposition No. 91287216 (September 3, 2026) [precedential] (Opinion by Judge Christopher C. Larkin).

Applicant started out behind the proverbial 8-ball and never escaped. Under the first DuPont factor, the identity of the marks "strongly" supported the conclusion that confusion is likely. Furthermore, "where the parties’ goods, wine, are identical, we must presume that they would be marketed to the same classes of customers--ordinary adult wine drinkers and purchasers--through the same channels of trade." Thus, the third DuPont factor also "strongly" supported a conclusion that confusion is likely.

The fifth DuPont factor considers “[t]he fame of the prior mark (sales, advertising, length of use).” DuPont, 476 F.2d at 1361. “Fame for confusion purposes arises as long as a significant portion of the relevant consuming public . . . recognizes the mark as a source indicator.” Joseph Phelps Vineyards, 857 F.3d at 1324-25 (quoting Palm Bay, 396 F.3d at 1375). The Board considers "fame" of the prior mark in Section 2(d) cases in terms of the mark’s "commercial strength."

The commercial strength of a mark may be measured indirectly “by the volume of sales and advertising expenditures in connection with the goods sold under the marks, for example, and other factors such as length of time of use of the mark; widespread critical assessments; notice by independent sources of the products identified by the marks; and the general reputation of the products and services.” Monster Energy, 2023 WL 417620, at *11 (quoting Weider Publ’ns, LLC v. D & D Beauty Care Co., No. 91199352, 2014 WL 343269, at *6 (TTAB 2014)).

Opposer claimed substantially exclusive use of CIELO in the United States for more than four decades. Between 2013 and 2024, it sold more than 4,000,000 bottles of wine bearing the CIELO mark, accounting for gross sales in excess of $13,100,000. It has won several awards at international competitions. The Board was not impressed.

We have carefully considered Opposer’s sales, advertising and promotion, and awards evidence, but find that it is insufficient to establish that Opposer’s CIELO mark has achieved significant commercial strength in the United States, much less that it is “renowned in the wine market and among consumers of fine wine.” Joseph Phelps Vineyards, 857 F.3d at 1325. We find that Opposer’s mark is of average strength, and the fifth DuPont factor is neutral in our analysis of the likelihood of confusion.

Under the sixth DuPont factor, the Board considers a mark's conceptual strength and commercial strength. Applicant contended that third-party registrations for marks "that include ‘cielo,’ ‘heaven,’ or ‘sky’ for wine, beer, and spirits are relevant in showing the ubiquity of Opposer’s Cielo mark and its resultant weakness as a source indicator.” 

The Board found that wine and “distilled blue agave liquor” (but not beer) are “similar” goods for purposes of the sixth factor, noting that opposer had enforced its mark against third-party "CIELO" marks against different types of alcoholic beverages other than beer, including “distilled blue agave liquor” and “distilled agave liquors." "Having apparently asserted likelihood of confusion claims against those goods, Opposer is hard pressed to deny the similarity of those goods to wine for sixth factor purposes."

As to conceptual strength, "third-party registrations containing an element that is common to both the opposer’s and the applicant’s marks can show that that element has ‘a normally understood and well-recognized descriptive or suggestive meaning.’” Spireon. Applicant argued that the Board should apply the doctrine of foreign equivalents under the sixth DuPont factor to consider third-party registrations of marks incorporating the English equivalent of the foreign-language mark CIELO ("sky"). The Board declined.

"In discussing this factor, the Federal Circuit has explained that “third-party registrations containing an element that is common to both the opposer’s and the applicant’s marks can show that that element has ‘a normally understood and well-recognized descriptive or suggestive meaning.’” Spireon. Since those marks don't include the word CIELO, the Board concluded that "they are not probative of the conceptual weakness of Opposer’s mark." The Board cryptically noted, however, that "there may be circumstances, based on a different factual record, where it would be appropriate to apply the doctrine of foreign equivalents to third-party marks under the sixth DuPont factor."

Taken together, the third-party registrations and uses do not show that CIELO has “‘a normally understood and well-recognized descriptive or suggestive meaning’” with respect to wine. Spireon, 71 F.4th at 1363 (quoting Jack Wolfskin, 797 F.3d at 1374). They show, at most, that “cielo” is mildly suggestive of some celestial quality of the goods. The record as a whole does not show that Opposer’s CIELO mark is conceptually weak.

As to the commercial strength of the CIELO mark, applicant made of record five third-party uses of CIELO-formative marks for wine, but there was "no information regarding the extent of consumer exposure to these third-party marks through the websites or sales of the goods."

In the absence of any evidence regarding the exposure of these five third-party marks, they have little probative value in diminishing the commercial strength of Opposer’s mark unless they are sufficient in number to fall within an important exception to the general rule that the “probative value of third-party trademarks depends entirely upon their usage.” Palm Bay, 396 F.3d at 1373 (citation omitted).

Under Jack Wolfskin (26 third-party marks) and Juice Generation (14 marks,) the specifics of the third-party uses may not be necessary when there is “voluminous” or “extensive” evidence of use of third-party marks. Here, however, the third-party registrations and uses "do not constitute voluminous or extensive evidence of use of such marks that is 'powerful on its face,' and thus they are insufficient to permit us to infer that 'customers have become so conditioned by a plethora of such similar marks that customers ‘have been educated to distinguish between different [such] marks on the bases of minute distinctions.'' Omaha Steaks, 908 F.3d at 1324 (quoting Palm Bay, 396 F.3d at 1374)."

We find that the third-party mark evidence falls short of establishing that Opposer’s CIELO mark for wine is either conceptually or commercially weak under the sixth DuPont factor. The sixth DuPont factor is neutral in our analysis of the likelihood of confusion, and we will accord Opposer’s CIELO mark the “normal scope of protection to which inherently distinctive marks are entitled.” Iron Balls, 2024 WL 2844425, at *15 (citation omitted).

The Board then turned to a consideration of the marks. Noting that applicant prominently displays the term EL CIELO on its labels (see below) and that the letter O "appears to be an interjection without any source-identifying significance," the Board found EL CIELO to be the dominant portion of applicant’s mark "because they are the first significant literal elements in the mark, and the words VALLE DE GUADALUPE are geographically descriptive and have been disclaimed."

Because each of the marks at issue are presented in standard-character form, "each could be used in any typeface, color, or size, including the same stylization actually used or intended to be used by the other party, or one that minimizes the differences or emphasizes the similarities between the marks." Applicant introduced several examples of use of its mark, including the depiction shown above. "This actual display of Applicant’s standard-character mark shows that the mark could be used in a manner that draws attention to the dominant words EL CIELO in the mark." Consequently, the Board found the marks to be similar in appearance.

As to sound, the Board noted the tendency of consumers to shorten marks. Iron Balls, 2024 WL 2844425, at *25 (quoting In re Bay State Brewing Co., No. 85826258, 2016 WL 1045677, at *3 (TTAB 2016) (citing In re Abcor Dev. Corp., 588 F.2d 811, 815 (CCPA 1978) (Rich, J., concurring) (“the users of language have a universal habit of shortening full names from haste or laziness or just economy of words.”)). Noting that applicant’s own website identifies its goods as “El Cielo Wines,” the Board found it "very likely, indeed probably inevitable, that wine consumers will shorten Applicant’s 'O EL CIELO VALLE DE GUADALUPE' mark to 'El Cielo' when verbalizing it, such as when ordering the wine in bars and restaurants, or recommending it by word of mouth to others." Cf. Bay State Brewing, 2016 WL 1045677, at *3.

As to connotation, wine consumers who speak Spanish or Italian would understand CIELO to mean "sky" in both marks, and for the many who do not speak those languages, "[t]o the extent [CIELO] has a meaning in connection with wine, it would have the same connotation in Applicant's mark as in [Opposer's] mark." Aquitaine Wine, 2018 WL 1620989, at *2.

In sum, the Board found the marks to be similar in appearance, sound, and meaning and commercial impression. 

The key first and second DuPont factors, and the third factor, support a conclusion that confusion is likely, and the other applicable factors are neutral. The goods, channels of trade, and classes of consumers are identical, and the CIELO and O EL CIELO VALLE DE GUADALUPE marks are similar. We find, based on the record as a whole, that consumers with a general recollection of Opposer’s CIELO mark for wine who separately encounter Applicant’s mark O EL CIELO VALLE DE GUADALUPE for wine are likely to believe mistakenly that the goods have a common source.

And so, the Board sustained the opposition.

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TTABlogger comment: Judge Larkin's opinion is, as usual, well written and instructive. But I do not understand why this opinion is deemed precedential. It is highly fact-dependent and seemingly does not break any new legal ground.

Text Copyright John L. Welch 2026.

Sale of Four Saxophones over Five-Year Period Suffices to Avoid Abandonment, Say TTAB

In this six-year old proceeding, the Board denied a petition for cancellation of a registration for the mark ADOLPHE SAX & CIE for "musical instruments" on the ground of abandonment. Petitioner relied on the presumption that a mark that is not used for a three-year period is presumed abandoned, but it "failed to show three consecutive years of nonuse or use that was not bona fide use in the ordinary course of trade." Henri Selmer Paris, S.A.S. v. Karel Goetghebeur, Cancellation No. 92074077 (September 3, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

"There are two elements to a claim for abandonment: (1) nonuse; and (2) intent not to resume use." If the petitioner is able to prove that a mark was not in use for a three-year period, abandonment is presumed, and the burden shifts to the registrant to overcome that presumption by showing that he either used the mark during the statutory period or intended to resume use. [See Section 45 of the Act: "Nonuse for 3 consecutive years shall be prima facie evidence of abandonment."].

Petitioner limited its abandonment claim to the period between December 15, 2015, and April 28, 2020 (the period between the issuance of the registration and the filing of this Petition). It put "all its eggs in the 'presumption' basket," claiming that the evidence "establishes the presumption of abandonment through non-use of the mark . . . .” However, the parties stipulated that "registrant sold four saxophones identified by the mark at issue to U.S. residents from the time of the issuance of the registration of the mark until the initiation of this cancellation proceeding," and further that "these sales constitute use of the mark in commerce."

Notwithstanding this stipulation of use, Petitioner insists that the presumption still applies, arguing that these instances of use do not constitute “bona fide use of such mark made in the ordinary course of trade,” as set forth in the statutory definition of “abandonment,” because they are “de minimis, sporadic, casual, nominal, or isolated.”

Petitioner "relied heavily" on Adamson Sys. Eng’g, Inc. v. Peavey Elecs. Corp., No. 92076586, 2023 WL 7274674 (TTAB 2023) [TTABlogged here], in which the Board found that Peavey's sales of a few amplifiers bearing the mark "CS" fell short of the statutory standard of “bona fide use made in the ordinary course of trade." The Board distinguished Adamson on the facts.

First, unlike in Adamson, there are invoices of Respondent’s U.S. saxophone sales. Second, in Adamson, there was evidence that the respondent stopped advertising the amplifiers with the mark, had a representative recommend another brand because the amplifiers with the mark were out of stock, and stated on its website that the amplifiers with the mark were no longer available. And third, Respondent here is an individual, as opposed to a sizeable company. What is "the ordinary course of trade" for a sizeable company is unlikely to be the same for an individual.

Here, there was "nothing that would show that Respondent’s U.S. sales were stopped or were purposefully being 'drawn-down.'" Nothing in Respondent’s deposition testimony "even vaguely intimat[ed] that Respondent’s sales were made in anything other than the ordinary course of trade." Respondent testified that his prices are posted on his website, that his media posts are intended for a worldwide audience, and that he has employees that assist him.

Respondent’s U.S. sales are small, but, critically, they’ve never stopped (as Petitioner concedes), and we do not see how they were made in anything other than the ordinary course of Respondent’s modest trade. * * * In summary, the record shows, and we find, that Respondent, at minimum, sold one saxophone in 2016 or 2017 (that invoice spans the end of the year into the new year), another in 2017, one in 2018, and one in 2019.22 There is no three-year consecutive period of nonuse in the roughly four-and-a-half-year period that Petitioner contests.

Since Petitioner failed to show three consecutive years of nonuse or use that was not bona fide use in the ordinary course of trade, it could not rely on the presumption of abandonment. And so, the Board denied the petition for cancellation.

Adolphe Sax

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TTABlogger comment: Adolphe Sax invented the saxophone in the 1840s and patented it in 1846.

Text Copyright John L. Welch 2026.

TTAB Finds "FIND - FETCH - TRANSFER" Merely Descriptive of Delivery Robots

The Board upheld a Section 2(e)(1) refusal to register the proposed mark FIND - FETCH - TRANSFER, finding it to be merely descriptive of "self-driving robots for delivery." Applicant Drobot's own website provided "particularly compelling" evidence in support of the refusal, and "the most revealing evidence of how the relevant public would understand Applicant’s proposed mark comes from Applicant’s own arguments." In re Drobot, Inc., Serial No. 99010898 (September 1, 2026) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

Examining Attorney Catherine Lee submitted dictionary definitions of "find," "fetch," and "transfer." The Board found that "[e]ach of these terms describes a function or purpose of Applicant’s self-driving delivery robots. *** These are not tangential or incidental features; they are the core functions that define the very purpose of delivery robots."

As noted, the Board found the evidence from Drobot's own website to be "particularly compelling:" "Our robots are able to operate in tight, cluttered and dynamic environments, such as Manufacturing job shops, where they will find, fetch, and transfer things, not just in a pre-scheduled manner, but also responding to ad hoc requests by shopfloor Operators and Technicians."

This is not a case of incidental reuse in an unrelated context; the proposed mark and the product description are one and the same. That Applicant uses the exact wording of its proposed mark—without quotation marks, capitalization, or other source-indicating formatting—in ordinary descriptive prose demonstrates that the phrase naturally functions as a description of the goods’ capabilities, not as a source identifier.

Third-party evidence corroborated the descriptive nature of the component terms. "The Examining Attorney made of record materials from MIT, IEEE Spectrum, Robots Guide, AutoStore, Fanuc, and AGV Network showing that the terms 'find,' “'fetch,' and 'transfer' are commonly used in the robotics and warehouse automation industries to describe functions of robots — specifically, locating items, retrieving them, and moving them from one place to another."

Drobot asserted that this third-party evidence was insufficient because it showed only that the individual terms are in use, not the composite phrase FIND - FETCH - TRANSFER. The Board pointed out, however, that evidence of third-party use of the exact composite phrase is not required. "Rather, where the individual components each retain their descriptive significance in relation to the goods, the third-party evidence serves to corroborate that the relevant purchasing public encounters these terms in connection with the very functions described by the mark."

During prosecution, Drobot "repeatedly acknowledged—and indeed embraced—the descriptive significance of each component term and of the composite phrase as applied to the identified goods." For example, it stated: "[T]he term ‘FIND’ in the applicant’s mark introduces a unique element that emphasizes the process of locating or identifying items before they are delivered;” “[T]he term ‘FETCH’ is commonly used in various industries, particularly in technology and service sectors, to describe actions related to retrieving or obtaining information or items;" and “[T]he phrase ‘TRANSFER’ in the applicant’s mark further differentiates its meaning by indicating the act of moving or conveying items from one location to another.” Drobot summed it up thusly: "[T]he combination of ‘FIND - FETCH - TRANSFER’ creates a cohesive and descriptive phrase that clearly communicates the functionality and purpose of the applicant’s goods."

These concessions independently confirm what the dictionary definitions and website evidence establish: a consumer who knows the goods are self-driving delivery robots will immediately understand FIND - FETCH - TRANSFER to describe core functions those robots are designed to perform.

Drobot trotted our various other arguments that the Board somewhat robotically tossed aside. Plainly, Drobot had shot itself in the feet and there was no way to avoid the descriptiveness refusal via attorney argument.

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TTABlogger comment: WYHA?

Text Copyright John L. Welch 2026.

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

A now-retired TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal 95% of the time by looking at just the marks and the goods/services. Here are three appeals decided recently. Let's see how you do. [Answers in first comment].

In re BS Liquor, LLC DBA MudHen Brewing Company, Serial No. 97474171 (August 31, 2026) [not precedential] (Opinion by Judge Wendy B. Cohen). [Section 2(d) refusal of the mark MUDHEN BREWING COMPANY for "beer" [BREWING COMPANY disclaimed] in view of the registered mark MUD HENS for "bar and restaurant services."]

In re ALLCITY Network, Inc., Serial No. 98209334 (August 31, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin). [Section 2(d) refusal of the mark KNUX for various clothing items, including t-shirts, sweatshirts, and jackets, in view of the registered mark NUX for various clothing items, including t-shirts, sweatshirts, and jackets.]

In re Leskro Incorporated, Serial No. 98644460 (September 1, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Section 2(d) refusal of the mark KATIE’S KANDY KORNER [CANDY disclaimed] in view of the registered mark CAROL’S CANDY CORNER, both marks in standard form, for candy.]

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

Text Copyright John L. Welch 2026.

Claim Preclusion and Nonuse Block "ERA 8 BY LAMAR JACKSON" Trademark Application

Baltimore Ravens quarterback Lamar Jackson (who wears number "8") was tackled for a loss in his attempt to register the mark ERA 8 BY LAMAR JACKSON for "athletic bags; backpacks; duffel bags; sport bags; carry-on bags; travelling bags," in International Class 18 and "bottoms as clothing; footwear; headwear; tops as clothing; undergarments," in International Class 25. Claim preclusion knocked him down as to most of the goods, and as to the rest (carry-on bags and travelling bags), the Board piled on by finding that Jackson hadn't used the mark for those goods prior to filing his use-based application. New Era Cap, LLC v. Lamar Jackson, Opposition No. 91264801 (August 27, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

Claim Preclusion: Under the doctrine of claim preclusion (or res judicata), "'a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action.'" Jet, Inc. v. Sewage Aeration Sys., 223 F.3d 1360, 1362 (Fed. Cir. 2000)(quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322). For claim preclusion to apply, there must be: 

(1) identity of parties (or their privies); 

2) an earlier final judgment on the merits of a claim; and

(3) a second claim based on the same set of transactional facts as the first claim.

A prior opposition was brought by New Era against Jackson, alleging priority and likelihood of confusion based on a number of registrations for NEW ERA, in standard character and stylized form, and other ERA-formative marks. The prior opposition involved the identical mark ERA 8 BY LAMAR JACKSON and nearly the same goods as in the instant opposition. Jackson failed to serve and file an Anwer to the notice of opposition, and so judgment was entered by default against Jackson on September 28, 2019.

The Board agreed with Jackson that claim preclusion does not apply to the goods "added" into the new application: namely, carry-on bags and travelling bags. New Era did not cite any case law applying claim preclusion to goods in a subsequent application that were not encompassed by the goods identified in the prior application.

Jackson also argued that his professional achievements since the default judgment was entered in the prior opposition represented a material change in circumstances, such that New Era did not show that the new opposition rose from the same set of transactional facts as the prior one. [According to Jackson, the strength of his mark had increased, but the Board pointed out that the DuPont analysis considers the strength of the cited mark, not the "applied-for" mark]. "Since the prior default, Mr. Jackson has also achieved high ranking sales of his No. 8 jersey, reached 3.2 million social media followers and registered his word and design mark featuring a wild dog design and the words 2018 ERA 8 BY LAMAR JACKSON 2018." The Board was unmoved.

Here, we do not find a material change in the facts relevant to the claim of likelihood of confusion. As detailed above, except for the newly added goods (which we conclude are not subject to claim preclusion), the Prior Opposition involved the same parties (or their privies), the same mark, and the same goods, and resulted in a judgment by default, which operates as a judgment on the merits. This Application was filed approximately six months after default judgment was entered in the Prior Opposition. Evidence in the record indicates that Mr. Jackson’s upward trajectory was well in motion in September 2019 when the default judgment was entered.

The Board concluded that Jackson failed to show a material change in circumstances that would alter the likelihood of confusion analysis in this proceeding from the prior opposition.

Jackson claimed that he didn't receive notice of the default in the prior opposition, but the Board pointed out that he can't rely on a lack of communication from prior counsel. "While such circumstances may be relevant to a [timely] request for relief under Fed. R. Civ. P. 60(b) in the Prior Opposition, they do not negate the finality of the earlier judgment for purposes of claim preclusion here."

Nonuse: Jackson admitted during discovery that he never used the subject mark on athletic bags, backpacks, duffle bags, sport bags, carry-on bags, or traveling bags. Nonuse was also supported by his "failure to proffer any affirmative testimony or documentary evidence, such as purchase orders or invoices, showing that it sold or shipped any athletic bags, backpacks, duffel bags, sport bags, carry-on bags or travelling bags under the mark as of the filing date."

And so, the Board ruled that Jackson's application to register was void ab initio as to all of the bags listed therein, based on nonuse at the time the application was filed.

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TTABlogger comment: Quoth the Raven, "Nevermore."

Text Copyright John L. Welch 2026.

TTABlog Test: Is GOSHI for Body Lotions Confusable with GOCHI for Supplements?

The USPTO refused to register the mark GOSHI for "Body lotions; Body wash, Facial moisturizers; Facial washes; Skin toners," concluding that confusion is likely with the registered mark GOCHI for, inter alia, "Nutritional supplements, dietary supplements, and liquid dietary supplements" (both marks in standard character form). The marks are awfully close. What about the goods? How do you think this came out? In re Garrett Gutierrez, Serial No. 98666953 (August 27, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Applicant Gutierrez argued that the cited mark is conceptually weak because it is suggestive of goji berries, a primary ingredient in one of registrant’s products. The Board was unimpressed.

Although the product contains goji juice, there is no evidence that consumers view the cited mark GOCHI as referring to goji berries. Nor is there any evidence that the mark is commercially weak. We conclude that the sixth DuPont factor is neutral and accord the mark the normal scope of protection due to inherently distinctive marks.

Gutierrez asserted that the marks would be pronounced differently, but he offered no evidence in support. The Board pointed out the "sh" and "ch" may be pronounced the same way (e.g. "Chicago"). And there was no evidence that the marks have different meanings or connotations. "In sum, we find GOSHI and GOCHI are highly similar in appearance and sound. * * * Therefore, the first DuPont factor favors a finding of likelihood of confusion."

Turning to the goods, Examining Attorney Lindsey Olson Diefenbach submitted five registrations and internet excerpts showing use by 13 third parties of a single mark for both skin care products and supplements, supporting a finding that the involved products are related. This same evidence also showed that the products "are complementary in nature and closely related insofar as dietary and nutritional supplements and topical skincare (i.e. lotions, washes, moisturizers, and toners) are advertised and typically used together as part of a single skin care or health regimen or routine."

Gutierrez argued that “Registrant’s goods are sold in bulk quantities and are intended to be consumed in small doses.” However, the cited registration contains no such limits, and the Board must evaluate the trade channels based on the goods identified in the registration, regardless of real-world conditions. Moreover, the third-party website evidence "shows that the same online providers sell both the goods in the cited registration and the goods in the subject application, and that these goods are bought by the same consumers — e.g., those seeking improved skin."

Although registrant's goods are sold at a "relatively expensive price," its registration covers "all goods of the type identified, without limitation as to their nature or price" and presumably includes goods that are relatively inexpensive.

The Board noted that prospective consumers for nutritional supplements "might be expected to exercise a reasonable degree of care regarding products that they ingest to improve their health." Nonetheless, "[w]hen relevant consumers include both consumers who exercise more care and the general public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser, who is unlikely to exercise more than an ordinary degree of care. In re Samsung Display Co., No. 90502617, 2024 TTAB LEXIS 258, at *22 (citing Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 1325 (Fed. Cir. 2014))."

Gutierrez pointed to the lack of evidence of actual confusion, but the Board observed that this has little probative value in an ex parte context, since the registrant has no opportunity to address the issue. Moreover, there was no evidence that, "in the actual marketplace, the same consumers have been exposed to both marks for the respective goods, such that we could make a finding as to the 'length of time during and conditions under which there has been concurrent use without evidence of actual confusion.'"

Finally, Gutierrez invoked Strategic Partners, pointing to it ownership of a registration, more than five years old, for the identical mark GOSHI for "Exfoliating cloths; Exfoliating pads; Loofahs for household purposes; Bath sponges; Bath products, namely, loofah sponges; Cleaning cloth; Facial cleansing sponges; Scrub sponges.” Under that ruling, "[w]here an applicant owns a prior registration and the mark is 'substantially the same' as in the applied-for application [sic], this can weigh against finding that there is a likelihood of confusion." Unfortunately for Gutierrez, the prior registration "does not cover any of the topical skincare goods identified in the present application; instead, it covers various cloths and sponges for personal cleaning use."

Registrant’s GOCHI and Applicant’s applied-for mark GOSHI, both in standard characters, are highly similar in appearance and sound. The goods are related in part, and these related goods are offered in overlapping channels of trade to the same classes of consumers. The fourth, fifth, sixth, seventh, eighth, and thirteenth factors are neutral. No factors weigh against likelihood of confusion.

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TTABlogger comment: Is this WYHA? Takeaway: you can't win without evidence!

Text Copyright John L. Welch 2026.

TTAB Posts September 2026 Hearing Schedule

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

September 17, 2026 - 10:00 AM [Virtual]: Aysha NY LLC v. ASHYA, LLC, Cancellation No. 92084257 [Petition for cancellation of a registration for the mark ASHYA (stylized) for "Handbags, purses and wallets," in view of the registered marks AYSHA, AYSHA SAEED, and AYSHA NEW YORK & Design for women's clothing, jewelry, handbags, and accessories.]

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TTABlogger comment: No oral hearings in August and only one in September. As Marvin Gaye would say, what's goin' on?

Text Copyright John L. Welch 2025.

TTAB Deems MONTANA EQUINE Confusable with MONTANA ROSE EQUINE THERAPY for Horse-related Services

The Board affirmed a Section 2(d) refusal of the mark MONTANA EQUINE for, inter alia, "Veterinary sports medicine and physical rehabilitation services for horses through use of modalities and exercise," [EQUINE disclaimed], concluding that confusion is likely with the registered mark MONTANA ROSE EQUINE THERAPY for, inter alia, "Physical rehabilitation services for horses through use of massage and exercises" [EQUINE THERAPY disclaimed]. Applicant Western Veterinary jockeyed for a reversal but the Board rode with Examining Attorney Tracy Fletcher. In re Western Veterinary IP, LLC, Serial No. 98727230 (August 24, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Western argued that the Board should consider the extrinsic evidence regarding its and registrant’s actual uses to show that the involved services are “disparate.” The Board pointed out, however, that "we may not consider arguments “about how the parties’ actual … services … are narrower or different from the … services identified in the application[] and registration[ ].” The Board found the above-recited services to be "in part identical and in part legally identical."

Western contended that the services are offered in different trade channels and marketed to different localized customers. The Board was unmoved, pointing out again that "[t]he real-world use restrictions argued by Applicant do not appear in the identification of services, and we cannot read limitations into identifications based on either argument or evidence of actual use."

Moreover, although Applicant contends that the trade channels do not overlap because Applicant’s and Registrant’s services are each local to a specific geographic area, the Board is constrained to evaluate likelihood of confusion in terms of nationwide markets when an applicant is seeking a geographically unrestricted registration.

The Board was required to presume that the in part identical and legally identical services are offered to the same classes of consumers and move through the identical trade channels.

As to purchaser care, the Board acknowledged that "a decision as important as choosing a veterinarian or a provider of rehabilitation services for horses will be made with some thought and research and a higher degree of care," and it found that the fourth DuPont factor weighed in Western's favor.

As to the strength of registrant’s mark, the Board found it to be inherently distinctive but noted that the Board may consider whether an inherently distinctive mark is “weak as a source indicator.” Western contended that the terms MONTANA and EQUINE are weak because MONTANA is primarily geographic and commonly used in third-party registered marks, and EQUINE is generic or descriptive for horse-related services and is a term used in many third-party registrations. 

Registrant’s services, however, are offered in Minnesota, not Montana, and Western did not show that Montana is known for physical rehabilitation horse exercise and massage services. Therefore, the Board did not find the word MONTANA in Registrant’s mark to be conceptually weak as a geographic term. The Board also did not find that MONTANA or MONTANA ROSE have any surname significance. However, EQUINE is a conceptually weak term. The Board concluded that the sixth DuPont factor was neutral.

Turning to the marks, the Board found that the dominant term in Western’s mark is MONTANA while the dominant terms in registrant’s mark are MONTANA ROSE. The additional words in the cited mark " do not materially alter the similar overall commercial impression created by the shared initial term MONTANA and the related wording EQUINE."

Considered in their entireties, we find that Applicant’s MONTANA EQUINE mark and Registrant’s MONTANA ROSE EQUINE THERAPY mark are similar overall in appearance, sound, connotation, and commercial impression due to the shared terms MONTANA and EQUINE, which are likely to create a similar overall recollection of the marks. Even if consumers note and remember the additional middle and end words in Registrant’s mark, they are not likely to ascribe the differences between the marks to differences in the source of the respective services. 

The Board concluded that the factor weighing against confusion was outweighed by the similarity of the marks, the identical-in-part and legally identical services, and the overlapping trade channels and consumers.

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TTABlogger comment: Not the most exciting decision I've ever read.

Text Copyright John L. Welch 2026.

TTAB Affirms Functionality Refusal of the Color Green for Surveyor Tripods

The Board affirmed a refusal to register the color "green," on the Supplemental Register, as a trademark for "Construction and Surveyor Tripod," finding the proposed mark to be functional and therefore unregistrable under Section 23(c). In re Dave White’s SitePro, LLC, Serial No. 98404066 (August 25, 2026) [not precedential] (Opinion by Judge Robert Lavache).

According to the application, "[t]he mark consists of the color green, which is the equivalent of Pantone Matching System 2297C, applied to the legs of the tripods. The matter shown in the drawing in broken lines serves only to show positioning of the mark and no claim is made to it."

The Board observed that "color marks may be found functional where, inter alia, the relevant color improves the safety or visibility of a product or the product’s user; facilitates identification of a particular type of product; serves a particular function in the relevant market or industry; or simply makes the product more useful to the user." [See cited cases for examples, including "black" for outboard motors and "pink" for wound dressings].

Examining Attorney Tasneem Hussain maintained that the proposed mark is functional because it consists of a bright, “neon or fluorescent green” that, as applied to the identified construction and surveyor tripod, "acts as a visual indicator to ensure that users are employing safety measures by using high-visibility gear."

As usual, the Board applied the Morton-Norwich factors:

(1) the existence of a utility patent disclosing the utilitarian advantages of the design;

(2) advertising materials in which the originator of the design touts the design’s utilitarian advantages;

(3) the availability to competitors of functionally equivalent designs; and

(4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

As to the first factor, there was no evidence or argument regarding the existence of a utility patent. As to the second, the Examining Attorney pointed to applicant's website statements: "Out-performs others and gets seen on the jobsite with UV-resistant high-visibility," and "the first hi-vis heavy-duty composite tripod designed for all environments." An Amazon listing for the product points out the "[h]igh visibility flo-yellow composite legs and struts."

This and other evidence demonstrated that "A high-visibility color, such as bright or fluorescent green, applied to products used in construction provides a utilitarian advantage when applied to such products because it enhances safety by increasing visibility and awareness."

Applicant argued that its statements touting the product were "mere puffery" that described a feature that is not essential to the functioning of the product. The Board was unmoved: "Applicant’s argument that the color is merely a feature, not an essential function, of the goods relies on an overly strict application of the functionality standard."

The evidence also shows the color claimed in the proposed mark is one of a few colors that provide high visibility in these environments. Thus, the high visibility provided by the color claimed in the proposed mark is more than a product feature; it fulfills an essential purpose or function of the goods and affects their quality and usefulness, such that granting Applicant exclusive right to the use of the color would result in a significant non-reputation-related disadvantage to competitors.

The Board therefore found that the second Morton-Norwich factor "strongly supports the conclusion that the applied-for mark is functional."

As to the third factor, the Board noted that "alternative designs need not be considered if the other evidence of record establishes functionality." In any case, "while other colors may provide similar functionality, the record establishes that the color at issue here is one of a very few colors that provide the utilitarian advantages that Applicant and others tout."

As to the fourth factor, applicant argued that its goods in the claimed color are “more costly to produce than other colors,” but it provided no evidence to support that claim. Moreover, "[e]ven if the claimed color does increase the production cost of Applicant’s goods, that higher cost does not necessarily render the claimed color nonfunctional if it otherwise results in a product of superior quality."

Thus, registration of the proposed mark must be refused to “protect[] competitors against a disadvantage (unrelated to recognition or reputation) that trademark protection might otherwise impose, namely their inability reasonably to replicate important non-reputation-related product features.”

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TTABlogger comment: When is the last time the Board found a single color mark to be registrable? I think it was In re Hodgdon Powder Company, Inc., 119 USPQ2d 1254 (TTAB 2016) [precedential], involving the color white for "preformed gunpowder charges for muzzleloading firearms." [TTABlogged here].

Text Copyright John L. Welch 2026.

Recommended Reading: The Trademark Reporter, July-August 2026 Issue

Here's some late summer reading material: the July-August 2026 (Vol. 116 No. 4) issue of The Trademark Reporter. [pdf here]. Willard Knox, Staff Editor-in-Chief, summarizes the contents as follows (and below): "This issue of The Trademark Reporter (TMR) offers readers insights by practitioners on bad faith trademark applications under Turkish law; an argument that to uphold trademark law’s purpose of ensuring competition, a product feature valued by consumers for its own sake (regardless of source) should not receive trademark protection; an in-depth look at the potential risks posed by a 2026 U.S. Supreme Court decision to secondary liability in the trademark context; and a recommendation of a comprehensive and useful resource to practitioners appearing before the U.S. Trademark Trial and Appeal Board."

Evaluation of Bad Faith in Trademark Applications Under Turkish Trademark Law by Uğur Aktekin, Selin Bilik, and Bilge Ayperi Kemer. Brand owners doing business in Türkiye will benefit from the insights on bad faith trademark applications shared by the practitioner authors.

Trademarks, Functionality, and Competition by Glynn S. Lunney, Jr. This article argues that because trademark law’s primary objective is to ensure competition, a product feature valued by consumers for its own sake (regardless of the source) is functional and not entitled to trademark protection.

Commentary: Rethinking Contributory Trademark Infringement After Cox Communications by David H. Bernstein, Megan K. Bannigan, Christopher S. Ford, Kathryn C. Saba, and Anna M. Rennich. This in-depth look at the U.S. Supreme Court’s 2026 decision in Cox Communications, Inc. v. Sony Music Entertainment outlines the decision’s potential risks to established principles of secondary liability in the trademark context.

Book Review: A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice. Theodore H. Davis Jr., ed. Reviewed by Leigha R. Santoro. The reviewer finds this guide to be a comprehensive and useful resource for those practicing before the U.S. Trademark Trial and Appeal Board.

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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®.