TTAB Finds "PERMANENT JEWELRY WELDER" Merely Descriptive of . . . Guess What?

The Board upheld a Section 2(e)(1) refusal to register the proposed mark PERMANENT JEWELRY WELDER, finding it to be merely descriptive of electric welding machines and welding education services. Applicant Sunstone argued that the mark is at most suggestive since permanent jewelry is a relatively new product, and unsophisticated consumers will not understand how welding, commonly understood as “a dangerous industrial process, involving high heat, bright flashes of light, and providing significant personal risk of bu[rn] injuries,” relates to formation of jewelry." The Board was unimpressed. In re Sunstone Engineering LLC, Serial No. 98088456 (October 16, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The Board pointed out that the proposed mark must be considered in the context of the goods and services, not in the abstract. "Here, the relevant consumers include prospective purchasers of electric welding machines, including machines used to affix permanent jewelry, and persons seeking instruction about the operation and maintenance of those machines, such as people who already have or would like to start a permanent jewelry business."

Sunstone conceded that its goods and services relate to "welders." Examining Attorney Kim Teresa Moninghoff submitted evidence that "permanent jewelry" refers to a "piece [of jewelry] (usually a necklace or bracelet) that’s welded together instead of secured with a clasp." She also provided third-party use-based registrations for goods or services relating to “jewelry” or “permanent jewelry” in which the term PERMANENT JEWELRY was disclaimed. Notably, the USPTO’s Acceptable Identification of Goods and Services Manual (2025) contains entries for repair or welding services for “permanent jewelry."

As to the proposed mark in its entirety, the evidence showed descriptive use of the wording PERMANENT JEWELRY WELDER in the marketplace: including articles, product listings, and websites. Applicant's own advertising used “Permanent Jewelry Welder” in a descriptive, if not generic, manner: "The World's Bestselling Permanent Jewelry Welder" and "“Professional permanent jewelry welder, built by Sunstone."

The Board therefore found that "the proposed mark PERMANENT JEWELRY WELDER describes a function, purpose or use of Applicant’s goods, that they are used to weld permanent jewelry."

To the average consumer familiar with the goods and services, which include “electric welding machines” and “education services, namely, providing educational seminars, lectures, presentations, workshops, and non-downloadable videos in the field of the operation and maintenance of an electric welder,” PERMANENT JEWELRY WELDER immediately conveys information about the goods and services, that they are or relate to welders for affixing permanent jewelry. Indeed, as noted by the Examining Attorney, the combination of “PERMANENT JEWELRY” and “WELDER” communicates to potential consumers that, as opposed to industrial welders, Applicant’s goods are appropriate for affixing jewelry, and its services relate to using welders for this purpose.

The Board did not find the proposed mark to be incongruous or to require imagination or a mental pause to convey information about the goods and services. "When the words PERMANENT JEWELRY and WELDER are combined to form the composite PERMANENT JEWELRY WELDER, they retain their original meanings as referring to features of the goods and services, which are or relate to welders for affixing permanent jewelry."

Applicant’s other arguments are also unavailing. It is of no moment that PERMANENT JEWELRY WELDER “does not appear in any pre-application dictionary, trade publication, or industry glossary as a recognized category name.” See In re Dahlquist, Inc., 1976 TTAB LEXIS 79, at *6. 

Applicant asserted that the cited third-party uses are “knock offs” of Applicant’s product, but even if true, "this does not change the fact that the proposed mark is merely descriptive of a function, characteristic or purpose of the goods and services."

The fact that Applicant may be the first or only user of a term does not render the term distinctive if, as here, it has been shown to be merely descriptive of the goods identified in the application.” KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first” and thereby “depriv[ing] commercial speakers of the ordinary utility of descriptive words”)

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TTABlogger comment: WYHA? The final office action included a "genericness advisory," but mere descriptiveness was the only issue on appeal.

Text Copyright John L. Welch 2026.

TTABlog Test: Is HIGHROAD PAVEMENT SERVICES Confusable with BUILDING THE HIGH ROAD for Road Construction Services?

The USPTO refused to register the mark HIGHROAD PAVEMENT SERVICES, in the word-and-design form shown below, for "road paving" and other construction services, such as "concrete paving, site clearing, excavation, … grading, and asphalt paving" [PACEMENT SERVICES disclaimed], deeming confusion likely with the registered mark BUILDING THE HIGH ROAD for, inter alia, "road construction” services. The services are "identical," but what about the marks? How do you think this came out? In re HighRoad Services, LLC., Serial No. 98586837 (October 16, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

Applicant arguesd that “Registrant is a general contractor for land developers, and a private landscape designer serving private homeowners” and that “Applicant, on the other hand, is not a general contractor, and does not specialize in landscape design." Irrelevant, said the Board (unsurprisingly): "Applicant may not restrict the scope of the services covered in the application or the cited registration by argument or extrinsic evidence." The Board must presume that the identical services are offered in the same trade channels to the same classes of consumers. And so, the second and third DuPont factors "strongly" supported the refusal.

As to the marks, applicant's mark is dominated by the word HIGHROAD. The stylized H design at the top of the mark "helps emphasize the term HIGHROAD; this portion of the mark is stylized such that the parallel side lines of the 'H' converge much like a highway that runs to the horizon and, as a result, reinforce the road construction nature of the services offered."

We also keep in mind that when marks have clearly dominant elements, such is the case here with HIGHROAD in Applicant’s mark, there is a “penchant of consumers to shorten marks” and, when calling for the services, “it is reasonable that such a practice would lead many consumers to drop the highly descriptive/generic term[s]” in marks.

The cited mark is "strongly suggestive of Registrant’s 'road construction' services, and is a possible double entendre, "based on the multiple meanings of the term 'high road,' which include: 'highway' or 'the easiest course' or 'an ethical course.'" In any case, "the wording HIGH ROAD plays a strong role in the mark’s overall commercial impression and meaning."

The Board found the marks to be "very similar visually and aurally based on the shared term HIGHROAD or HIGH ROAD." [Visually? - ed.]. Moreover, "the possible figurative meaning that consumers may perceive in the registered mark is also present in Applicant’s mark. That is, consumers encountering Applicant’s mark, may also understand the highly visible and dominant term HIGHROAD as alluding to an easier or ethical course, or literally as suggesting a highway that may be in need of Applicant’s pavement services." And so the Board found that "the marks are overall very similar and this DuPont factor weighs in favor of a conclusion that confusion is likely."

Applicant argued that the cited mark is weak because it evokes the idiom of ‘taking the high road,’ suggesting an honorable or correct course of action. The Board disagreed: "We find no weakness here based on use of the idiom as there is no evidence of third-party use of marks projecting the same double entendre in connection with road construction or road pavement services." Moreover, "this suggestive connotation actually brings the marks closer in terms of similarity."

Applicant also pointed to two third-party registrations (HIGH ROAD HOMES for “custom construction of homes” and WE DON’T JUST TAKE THE HIGH ROAD, WE BUILD THEM for “consulting services in the field of soil erosion control") and five third-party websites. The Board pooh-poohed that evidence because the registrations and websites concerned unrelated services, such as home construction, home repair, or soil erosion services.

However, the Board found that, "based on the plain or literal meaning of the cited mark, BUILDING THE HIGH ROAD, it is suggestive of Registrant’s road construction services and thus bears some inherent weakness." The Board  concluded that the sixth DuPont factor "weighs slightly against a finding that confusion is likely in our analysis."

As to consumer sophistication, the Board agreed with applicant that road construction and road paving services will generally be offered to larger companies or involve government contracts, but these services may also be offered to smaller entities, "including individuals interested in having private roads built, such as driveways."

[I]n the absence of restrictions in the identifications or evidence to the contrary, we must conclude that the least sophisticated purchasers here will not exercise anything other than ordinary care in selecting the services. Moreover, even sophisticated purchasers are not immune from source confusion, especially where, as here, the services are legally identical in part and would be offered under similar marks. * * * Accordingly, we find the fourth DuPont factor to be neutral in our analysis.

In sum, the first, second, and third DuPont factors "strongly" supported the conclusion that confusion is likely, and outweighed the finding that the cited mark bears some inherent weakness under the sixth DuPont factor. The remaining factors for which there was evidence were neutral. And so, the Board affirmed the refusal.

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TTABlogger comment: What do you think?

Text Copyright John L. Welch 2026.

TTAB Remands RAPUNZEL Application to the Examining Attorney for Re-Consideration of the Registrability of RAPUNZEL for Dolls

On April 14, 2026, the Supreme Court denied Professor Rebecca Curtin's petition for a writ of certiorari seeking review of the CAFC's decision that, as a mere consumer, she lacked entitlement to bring an opposition to registration of the mark RAPUNZEL for dolls. [TTABlogged here]. The TTAB has just issued an order stating that it would terminate the opposition "in due course;" but meanwhile it ordered that the application be "remanded to the Trademark Examining Attorney for further examination to consider the registrability of RAPUNZEL." Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (October 14, 2026) [not precedential].

The Board observed that "the registrability (or not) of the mark at issue remains before the USPTO." [How so? It's been examined and published. How does the issue remain before the USPTO? - ed.]. Moreover, "[e]ven if an opposition is dismissed, an application must be 'entitled to registration' in order to register. Trademark Act Section 13(b), 15 U.S.C. § 1063(b)."

The CAFC, in its May 22, 2025 decision denying standing [TTABlogged here], explained:

“Unless registration is successfully opposed,” the USPTO shall register the trademark if it is “entitled to registration,” issue a certificate of registration, and publish a notice of registration in the Official Gazette. 15 U.S.C. § 1063(b); see Heritage All. v. Am. Pol'y Roundtable, 133 F.4th 1063, 1071 (Fed. Cir. 2025) (“The opposition provision of the Lanham Act says that registration generally follows when an opposition, if any, fails, but the stated precondition is that the mark at issue be a ‘mark entitled to registration,’ 15 U.S.C. § 1063(b), which might allow the PTO, after an opposition fails, to reconsider the examiner’s pre-opposition allowance.”). Curtin, 137 F.4th 1359, 1362 (emphasis supplied); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 706.01 (May 2026) (explaining that the Office may “issue a new refusal” to the registration of the mark if “it is necessary to do so to prevent the issuance of a registration that would violate the Trademark Act.”).

The Board looked to Trademark Rule 2.131, which provides that the Board may remand an application if, “during an inter partes proceeding involving an application under section 1 or 44 of the Act, facts are disclosed which appear to render the mark unregistrable, but such matter has not been tried under the pleadings as filed by the parties.” 37 C.F.R. § 2.131. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 515 (June 2026) and cases cited therein." The Board found that Rule 2.131 applies here:

First, the facts disclosed during these proceedings, including in connection with the parties’ summary judgment briefing and the evidence presented at trial, see 27-28 TTABVUE; 43-44 TTABVUE; 53 TTABVUE, appear to render the mark unregistrable. Second, the claims asserted in Opposer’s operative pleading were not tried in view of the Board’s determination on entitlement to a statutory cause of action. See 14 TTABVUE ¶¶ 8, 14 (asserting claims under Section 2(e)(1) for mere descriptiveness and under Sections 1, 2, and 45 for genericness); see also In re United Trademark Holdings, Inc., 2017 WL 2876825 (TTAB 2017) (denying the registration of LITTLE MERMAID as merely descriptive for use with dolls) (precedential) [TTABlogged here]. (emphasis supplied)

And so, the application was remanded to the Trademark Examining Attorney for further examination to consider the registrability of RAPUNZEL. See Trademark Rule 2.131, 37 C.F.R. § 2.131. 

The Board noted that, if the Examining Attorney finally refuses registration, an appeal may be taken as provided by Trademark Rules 2.141 and 2.142, 37 C.F.R. §§ 2.141 and 2.142.

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TTABlogger comment: What happens if the examining attorney does not refuse registration? Will the application be published for opposition for the second time, even though the same application was already published once? BTW: Hat tip to Professor Curtin: although she lacked statutory standing, the evidence she submitted during the proceeding may yield the result she wanted anyway.

Text Copyright John L. Welch 2026.

TTAB Orders Cancellation of "THE REMNANT" Registration for Religious Services Despite Weakness of Petitioner's Identical Common Law Mark

The Board granted a petition for cancellation of a registration for the mark THE REMNANT for "religious and spiritual services, namely, providing gatherings to develop and enhance the spiritual lives of men," concluding that confusion is likely with petitioner's identical, common law mark for printed newspapers and the provision of online information, commentary and news services in the field of or pertaining to Catholicism. Petitioner had no trouble proving priority, and the marks are identical. What about the services? And how weak is "remnant" for religious-type services? The Remnant, Inc. v. New Life Worship Center, Inc., Cancellation No. 92085610 (September 28, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

Petitioner relied on only two marks, THE REMANT and REMNANT TV, and claimed to own a "family" of marks. However, the evidence did not show that those two marks were promoted in a manner that would cause consumers to recognize REMNANT as a common source-identifying element. [Turns out, it didn't need the "family" anyway - ed.]

The Board focused on petitioner's mark THE REMNANT. The fact that the two marks at issue are identical weighed "heavily" in petitioner's favor.

As to the services, third-party use evidence demonstrated that "it is common for religious organizations to offer, under the same mark, the same services as Respondent as well as the same or very similar goods and services to those of Petitioner." "The parties adopted the term due to its biblical significance and as a show of faith, and so too apparently have several other religious organizations." "The record before us demonstrates that the term REMNANT is not only conceptually weak but also has some commercial weakness."

Respondent relied on petitioner's admission that it was unaware of any instances of actual confusion between the parties’ marks, arguing that "[a] Catholic newspaper and a Protestant men’s spiritual gathering are not self-evidently related." The Board pointed out, however, that respondent’s broadly worded identification "does not limit its gatherings to any particular denomination." And so, it considered respondent's identification as encompassing religious and spiritual gatherings directed to men of any denomination, including Catholic men.

According to Respondent, its services are offered to “members resid[ing] in Rhode Island, Connecticut, and Massachusetts” and it “has no plans to expand beyond New England.” Thus, respondent essentially acknowledged that there has not been a “meaningful opportunity for actual confusion” during the few years of concurrent use of the parties’ marks.

In sum, the evidence establishes an absence of known actual confusion. However, because the parties’ actual concurrent use has been geographically limited and relatively brief, the record does not establish a meaningful opportunity for confusion to have occurred. We therefore treat both the seventh and eighth factors as neutral.

The parties are using an identical mark, and that weighed heavily in favor of a likelihood of confusion. The parties’ goods and services are "closely related," and the trade channels and classes of consumers overlap. "These factors outweigh our finding that the term REMNANT is conceptually weak and has some commercial weakness in connection with religious goods and services."

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TTABlogger comment: Did respondent have a prayer of winning?

Text Copyright John L. Welch 2026.

TTAB Dismiss AURI Supplements Opposition, Finding the Goods Unrelated to Agricultural Services and Rejecting Actual Confusion Evidence

In a 78-page decision, the Board dismissed an opposition to registration of the mark AURI for "nutritional supplements in the form of gummies," concluding that confusion is unlikely with the two composite marks shown immediately below, for research, consultation, education, and various related services in the field of agriculture. The Board found that opposer failed to prove the relatedness of the involved goods and services, nor any overlap in channels of trade or classes of consumers. The Board analyzed in detail opposer's evidence of actual confusion (a substantial number of misdirected voice mails and emails) and found it of little probative value. This blog post will attempt to hit the high points. Agricultural Utilization Research Institute v. Ejec Ventures, LLC, Opposition No. 91292154 (October 8, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Marks: The Board found the term "auri" to be the dominant element in Opposer's marks: "the word 'auri' in stylized lowercase letters is '[d]isplayed in a large, bold typeface' and, to varying degrees, comprises the largest literal portion of the mark[s] in terms of size, position, and emphasis. It is also the first term in the mark[s], further establishing its prominence."

As to appearance, the Board observed that applicant's standard character mark could be displayed in a lower case form like that used by registrant. [And see applicant's specimen of use, below]. As to sound, for both of the cited marks, "the marks would sound similar because the word 'auri' is the first thing heard when Opposer’s mark is verbalized and the only thing heard when Applicant’s mark is verbalized." 

As to connotation and commercial impression, a consumer "could readily understand Applicant’s mark to be the acronym auri, and the word auri, in Opposer’s marks." And so, the Board found the marks to be similar in connotation and commercial impression.

Therefore, the first DuPont factor favored opposer.

The Goods/Services: On the issue of relatedness, Opposer submitted a single registration that covered both supplements and scientific research, which the Board found of limited probative value. Opposer's testimony that opposer "has provided services to several clients in the mushroom area" was vague and unsubstantiated. [Where is the "mushroom area" anyway? - ed.] The Board found that "Opposer’s services and Applicant’s goods are unrelated, and the second DuPont factor strongly supports a conclusion that confusion is not likely ...."

There was no evidence that opposer’s services "are rendered through any of the actual current and potential channels of trade in which nutritional supplements in the form of gummies are sold to consumers." Nor did the evidence show "the similarity of the consumers of nutritional supplements in the form of gummies and the consumers of the services identified in the ’975 and ’051 Registrations."

Nutritional supplements in the form of gummies are sold to individual consumers, while the services identified in the ’975 and ’051 Registrations are rendered to what Opposer’s website describes variously as “[l]eading agricultural institutions,” “businesses, farmers and entrepreneurs,” “[a]gricultural processors,” and “[f]ood and beverage entrepreneurs,” among other institutional clients. [Don't farmers take supplements? - ed.].

Purchaser Care: The Board found that "the least sophisticated potential purchaser of Opposer’s services is likely to exercise at least some degree of care in purchasing them, and that the least sophisticated potential purchaser of nutritional supplements in the form of gummies is also likely to exercise “at least a moderate degree of consumer care when purchasing [such] dietary supplements." The Board found the fourth DuPont factor to be neutral. [Seems like it favored Applicant - ed.]

Actual Confusion: Opposer pointed to 102 instances of purported actual confusion (emails and calls that it received). Many of the emails were from protective re-sellers and business partners, mostly "generic 'form' emails that could be sent to any company regarding resale of any product, and none of them refers to nutritional supplements in the form of gummies sold by Applicant." 

They are all solicitations offering services rather than customer emails. The Board has long recognized that persuasive evidence of actual confusion must show confusion as to source or sponsorship, not mere carelessness in attempts to contact a business. *** [B]ut even assuming that the senders were only trying to reach Applicant to purchase nutritional supplements in the form of gummies for resale, we find on this record that it is more likely than not that they reached Opposer because they searched the Internet using “Auri,” or a search term containing “Auri,” and selected Opposer’s website at its auri.org address rather than Applicant’s website at the less intuitive tryauri.com address.

The Board next considered four emails from consumers, and was likewise unimpressed. "We again find that it is more likely than not that the four consumer senders of emails to Opposer reached Opposer because they searched the Internet for 'Auri' and selected Opposer’s website at auri.org." Opposer did not attempt to reach any of these consumers to find out why and how they contacted Opposer: "without direct testimony from the supposedly confused individuals . . . there is insufficient evidence to ascertain what they were thinking, or whether they were actually confused."

We cannot infer that the consumers reached Opposer because they believed Opposer to be the source of the products that they had purchased rather than because they were careless in trying to find Applicant’s email address on the Internet.

Finally, the Board considered ten or so telephone voicemail messages and call summaries. "There is again no doubt that the callers were trying to call Applicant, but we are again confronted with the issue of why they called Opposer instead."

The number of misdirected emails and calls here is substantial, but in this context quantity does not have a quality all its own. On this record, the contacts are at least equally consistent with inattention and carelessness on the part of the senders and callers in using the Internet to locate Applicant as they are with the actual mistaken belief that Opposer sells Applicant’s gummies

The Board found that this evidence had limited probative value and did not support a finding of actual confusion. The seventh DuPont factor was deemed neutral.

Conclusion: The Board concluded that, although the marks are similar, "confusion is unlikely because the parties’ respective goods and services have not been shown to be related, and they are not offered through overlapping channels of trade to overlapping consumers." The second and third DuPont factors outweighed the first factor.

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TTABlogger comment: Misdirected phone calls and messages seem inevitable in the Internet age. If the "confused" consumers aren't asked to explain the circumstances, how can you present probative evidence of confusion as to source?

Text Copyright John L. Welch 2026.

TTABlog Test: Is TRU SUPPORT COMFORT YOU CAN FEEL for Clothing Confusable with TRUSUPPORT for Bras?

The USPTO refused to register the mark TRU SUPPORT COMFORT YOU CAN FEEL for footwear and clothing, including footwear, jackets, pants, t-shirts, sweatshirts, dresses, and hosiery, concluding that confusion is likely with the registered mark TRUSUPPORT for "bras." The goods are different, the marks are different, and the cited mark has "some conceptual weakness." How do you think this appeal came out? In re Columbia Insurance Company, Serial No. 98848901 (October 7, 2026) [not precedential] (Opinion by Judge Jessica B. Bradley).

The Board began by considering the strength of the cited mark. Applicant argued that the TRUSUPPORT is entitled to only a narrow scope of protection in light of "widespread use and registration of ‘TRU’-formative trademarks in connection with bras,” and given that “the term ‘SUPPORT’ is descriptive of a key feature of bras and is routinely disclaimed in registrations covering bras." However, Applicant did not submit any evidence of marketplace use, and therefore the Board declined to considerer the commercial strength of TRUSUPPORT.

As for conceptual strength, five third-party registrations for bras, with the word "support" disclaimed, together with a definition of “support” (“something that holds up or serves as a foundation or prop), led the Board to find that the term “support” in the cited mark "has some conceptual weakness in relation to Registrant’s bras." 

Turning to the marks, the Board agreed with Examining Attorney Heather Kennedy that TRU SUPPORT is the dominant element in applicant's mark. The addition of “Comfort You Can Feel” "reinforces the message of physical support conveyed by the Cited Mark TRUSUPPORT." Furthermore, applicant could display its mark in a way that prominently emphasizes the term TRU SUPPORT.

[C]onsumers are accustomed to seeing messaging of “support” and “comfort” together both in relation to Applicant’s goods and Registrant’s goods which reinforces the overall similarity in meaning and commercial impression. As such consumers are likely to view “Comfort You Can Feel” as merely an additional informational or laudatory slogan added to the Cited Mark rather than as a distinguishing element.

The Board concluded that "[a]pplicant’s addition of the phrase 'Comfort You Can Feel' to Registrant’s mark TRUSUPPORT “do[es] little to alleviate confusion."

Applicant pointed to two prior Board decisions that found identical or nearly identical marks not confusable - CROSSOVER/CROSS-OVER for sportswear and bras, and PLAYERS for shoes and underwear - but the Board was unmoved, distinguishing them on the facts and observing once again that each case must be decided on its own record.

[T]he evidence in this case shows that the current retail environment for clothing and bras has changed since the time the Board decided these cases -- in particular given the advent of widespread internet shopping -- and the record here demonstrates the similarity of the goods, trade channels and consumers.

Evidence of 20 third-party registrations supported the relatedness of the involved goods, along with ten third-party websites that offer one or more of the articles of clothing included in Applicant’s identification of goods, under the same mark as bras. The Board agreed with the examining attorney that:

"the evidence clearly establishes that both bras and other clothing items, including applicant’s tops, bottoms, dresses, coats, hosiery, and footwear, are commonly produced by the same manufacturer, and are marketed to the same consumers, under the same mark, and through the same websites, thus establishing a very close relatedness between bras and [Applicant’s applied-for] clothing." ("applied-for" clothing? - ed.).

Accordingly, the Board concluded that the first, second, and third DuPont factors favored a finding of likelihood of confusion. "The Cited Registration has some conceptual weakness, but this does not outweigh the other factors or alter our conclusion that confusion is likely."

And so, the Board affirmed the refusal.

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TTABlogger comment: Do you think confusion as to source is likely in the real world?

Text Copyright John L. Welch 2026.

ZEN WAFFLES Confusable with ZEN BAKERY, Says TTAB

The Board upheld a Section 2(d) refusal of the mark ZEN WAFFLES for "Waffles; Filled waffles; Frozen waffles; Waffle mixes; Protien [sic]-enriched waffles" [WAFFLES disclaimed], concluding that confusion is likely with the registered mark ZEN BAKERY in standard character form, for "bakery goods; muffins, cookies, rolls, pastry; bakery goods for retail and wholesale distribution and consumption on or off the premises," and in stylized form for "muffins, cookies, rolls, pastry" [BAKERY disclaimed]. Applicant claimed that ZEN is a weak formative because it "refers to calmness, mindfulness, and wellness, concepts that are routinely used in food and lifestyle branding." The Board didn't buy it. In re Zen Cafe Corp., Serial No. 99185689 (October 7, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

The Board agreed with Examining Attorney Mackenzie Olson's assessment of the conceptual weakness argument: "[p]eople do not tend to seek out waffles and baked goods in a search for peace or calmness; consumers seek out waffles and baked goods because they are hungry." Applicant also claimed that ZEN is commercially weak because "the marketplace is saturated with ZEN-formative marks for tea, matcha, spices, noodles, packaged foods, beverages, cafes, and restaurants" and the term is also used in connection with many other food and wellness-themed products. However, there was no admissible evidence in support of that argument.

As to the marks, the Board acknowledged the “penchant of consumers to shorten marks.” It found the shared distinctive term ZEN to be the dominant element in both marks, resulting in similar appearance and sound. It also noted that applicant's mark could be displayed a style similar to that of the cited stylized mark.

Applicant claimed that the marks have different meanings and connotations: a modern, product-specific brand focused on a particular type of food, as opposed to a traditional bakery business offering a range of baked good. The Board was unmoved: "Applicant's arguments . . . are not well taken or supported by evidence. The far more dominant term is the distinctive ZEN, and waffles and bakery products and pastries are not so different that they impart starkly different connotations to consumers."

As to the goods, the examining attorney submitted twelve third-party use-based registrations that identify goods in both the cited registrations and the application at issue. Evidence of six third-parties,  each selling the goods under a single mark, confirmed the relatedness of the goods. 

Applicant argued that the Board should consider the goods and services actually offered by applicant and registrant: "protein-enriched waffles that are marketed as functional, health-oriented breakfast products" versus "traditional bakery offering fresh baked goods, muffins, cookies, and pastries, distributed through wholesale grocery channels" and no waffles. The Board pointed out that there are no such limitations in the application or cited registrations. "We cannot read limitations into identifications of goods based on either argument or evidence of actual use."

The Examining Attorney’s third-party registration and use evidence is persuasive and uncontroverted. In view of the foregoing, we find that the goods identified in the application are related to the goods identified in the cited registration.

As to channels of trade, "Applicant’s and Registrant’s goods presumptively move in all normal trade channels and to all consumers that purchase such goods. * * * For this reason, the evidence of real-world trade channels and consumers relied on by Applicant are irrelevant." In short, the goods "may be encountered in the same retail outlets by the same consumers, and thus the channels of trade overlap."

Furthermore, bakery goods are low-priced items subject to impulse buying, which increases the likelihood of confusion because purchasers "are held to a lesser standard of purchasing care.” And so, the Board found that the third and fourth DuPont factors favored likelihood of confusion.

Finally, applicant pointed to the lack of evidence of actual confusion, but the Board pointed out that this is an ex parte proceeding in which the owner of the cited registration has no opportunity to submit evidence of actual confusion. Furthermore, applicant did not submit any evidence to show there has been a significant opportunity for actual confusion to have occurred.

In this case, the first and second DuPont factors – which we consider most important – weigh in favor of likelihood of confusion given the similarity of the marks and similarity of the goods. * * * The third and fourth factors also weigh in favor of likelihood of confusion. The fifth, sixth, seventh, and eighth factors are neutral on this record. No factors weigh against likelihood of confusion. We conclude that confusion is likely.

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TTABlogger comment: Is this a "WYHA?"? [That double question mark is tricky].

Text Copyright John L. Welch 2026.

TTAB Grants Petition to Cancel STORYTELLER OVERLAND (Clothing) Registrations for Nonuse, Rejects Laches Defense

The Board granted a petition for cancellation of two registrations for the mark STORYTELLER OVERLAND, in standard character and logo forms, for various items of clothing, finding that Respondent Storyteller failed to overcome Petitioner Overland's prima facie case of nonuse. Storyteller made a half-baked attempt at a laches defense, but it was inadequately pled, was not tried by consent, and was not supported by the evidence. Overland Sheepskin Co., Inc. v. Storyteller Overland, LLC, Cancellation No. 92082396 (October 6, 2026) [not precedential] (Opinion by Judge Thomas L. Casagrande).

Nonuse: Storyteller did not contest that it had no documentation showing sales as of the filing dates of the underlying applications (in 2018 and 2019). That was sufficient to make out a prima facie case for Petitioner Overland, shifting the burden of production onto Storyteller. [Of course, the ultimate burden to prove nonuse remained on Overland].

In rebuttal, Storyteller relied nearly exclusively on the testimony of its founder, Mr. Hunter, provided during discovery and at trial. The Board went through his testimony and Storyteller's evidence in detail, finding that his testimony was "vague and uncertain as to when Storyteller first used the marks in commerce. "[H]is testimony is liberally infused with a lot of 'would have been's' and sprinkled with a few 'probably’s.'" The "sketchy" documentation offered by Storyteller did not show the sale or interstate transport of any clothing items to the general public as of the relevant dates.

The Federal Circuit has likened assessing evidence of prior use to putting together a jigsaw puzzle, where it is often the case that, while no individual piece proves prior use, sometimes the pieces viewed together bring the prior-use picture into focus. See W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 1125-26 (Fed. Cir. 1994). Here, however, there are just too many missing pieces for us to complete the puzzle the way Respondent urges us to do. Key gaps include missing documentary corroboration of Mr. Hunter’s vague and imprecise (and keenly-interested) testimony and the lack of any corroboratory testimony from the two people implicated by name in Mr. Hunter’s testimony. 

The Board concluded that Storyteller failed to overcome Petitioner Overland’s prima facie case of nonuse as of either relevant date.

Laches: Storyteller assert in its answer: "Registrant pleads the affirmative defenses of unclean hands, laches, estoppel, and acquiescence.” The Board was not happy: "That’s it. The bare recitation of the names of four equitable affirmative defenses in one short sentence is patently insufficient." "[B]y merely typing the word 'laches' in its Answer, Respondent failed to adequately plead this defense. This prevented Petitioner from obtaining fair notice of the relevant facts and circumstances underlying this defense." That "grossly insufficient" pleading alone warranted rejection of the laches defense.

Furthermore, without express or implied consent, "the Board does not allow the assertion at trial of unpleaded claims or defenses—and we consider Respondent’s one-word recitation of the word 'laches' to be the equivalent of an unpleaded defense."

Respondent said not a word about laches, defending itself only on the merits of the nonuse claim. This had the natural effect of lulling Petitioner into thinking Respondent’s one-word incantation of “laches” in its Answer—assuming Petitioner even noticed it—was a throwaway. In its reply brief—the first chance Petitioner had to confront the defense—Petitioner objected to the belated insertion of laches into the case. We therefore think it entirely unfair for Respondent to have developed the defense for the first time in its defending trial brief. We do not consider the defense to have been tried by implied consent.

Petitioner Overland, apparently out of caution, addressed the merits of the laches issue, and so the Board did too. The Board found that Overland's delay of approximately three years after the registrations issued, before filing its petition for cancellation, was not unreasonable. The Board noted that "[T]he filing of a petition to cancel a registration less than three years after issuance (May 2020) falls comfortably within the time allowed under Section 14(1)." Moreover, Storyteller was put on notice via a cease-and-desist letter in April 2022, and Overland was dealing with other infringers at the time.

The Board also found the Storyteller was not prejudiced by the delay. Storyteller argued that it "significantly invested" in the brand during the delay period, but there was no evidence that this investment involved its clothing products rather than its core camper and van business. And so, the Board saw "no economic prejudice at all, let alone economic prejudice caused by the alleged 'delay.'"

Storyteller claimed evidentiary prejudice because its witness, Mr. Hunter, would have had a better memory of events had the petition been filed earlier. The Board was unmoved.

[I]t seems much more likely to us that Mr. Hunter’s sketchy recall of events concerning clothing stems from (1) his lack of direct involvement in merchandising and (2) his instead being locked on getting Respondent’s first vehicle to the market, and not from any “loss of memory” that occurred in the less-than-three-year period between the issuance of the registration and the filing of this Petition.

Storyteller also claimed that documentary evidence was lost during the delay, but the Board again was unmoved: "So far as we can tell, no evidence connects Respondent’s alleged loss of documentation to any post-registration period of delay."

Finally, the Board observed that "[a] party asserting the defense must also convince us that the equities favor application of the defense under the circumstances." "On this front, Respondent faces a headwind: the strong public policy in ridding the Register of registrations found to be void ab initio." The Board also noted the inequity of Storyteller "surprising Petitioner by developing, in several pages of its trial brief, a defense it hadn’t mentioned since asserting the word 'laches' (lumped together with three other one-word defenses) in its answer.

Respondent offers no reasons why equity favors application of the defense in the circumstances presented here. With no equities that we can discern favoring application of laches and two circumstances disfavoring it, we find that the equities disfavor application of the defense.

And so, the Board rejected Storyteller's laches defense.

Read comments and post your comment here.

TTABlogger comment: Another down-to-earth opinion by Judge Casagrande. BTW: clothing seems to be merely ancillary to Storyteller's main business. One wonders whether this battle was worth it?

Text Copyright John L. Welch 2026.

TTAB Affirms Two Failure-to-Function Refusals: Marks Not Perceived as Source Indicators on Specimens of Use

We haven't had a failure-to-function refusal in a while, but here's a double-header. The Board affirmed refusals to register, on the Supplemental Register, the marks BILL OF RESPONSIBILITIES and DECLARATION OF INTERDEPENDENCE, in standard character form, for educational services in the fields of science, technology, engineering, and mathematics. The Board found that the marks, as displayed on the specimens of use, would not be perceived as source indicators. In re International FIRST Committee Association, Serial Nos. 98849390 and 98849414 (September 28, 2026) [not precedential] (Opinions by Judge Robert Lavache).

The Board observed that "“the central question in determining whether Applicant’s proposed mark functions as a service mark is the commercial impression it makes on the relevant public (e.g., whether the term sought to be registered would be perceived as a mark identifying the source of the services)." "To make this determination we look to the specimens and other evidence of record showing how the designation is actually used in the marketplace."

Examining Attorney Joseph Greene maintained that "consumers will perceive the applied-for mark on the original specimen as merely identifying or referring to the statement of values, and not as the source of any services." The Board agreed.

When viewed in its entirety, [each] specimen is simply a statement of the values [or list of responsibilities] of Applicant’s organization FIRST Global. * * * The fact that the applied-for mark appears on a wall-mounted plaque, where such statements typically appear, reinforces this conclusion.

Furthermore, the examining attorney submitted various excerpts from third-party websites showing that it is common for organizations in various industries to publish "bills of responsibilities" and "declarations of interdependence," setting forth lists of values and responsibilities for their organizations.

The Board concluded that, as to each mark, "the only function the applied-for mark serves is to identify the type and nature of the statements displayed."

Applicant submitted substitute specimens, but they also merely listed the values and responsibilities of First Global, with no reference to any services being provided.

And so, the Board affirmed the refusals.

Read comments and post your comment here.

TTABlogger comment: "[T]the mere fact that the applied-for mark appears on the specimen does not make it a service mark."

Text Copyright John L. Welch 2026.

TTABlog Test: Is CARSCAN Merely Descriptive of Automobile Diagnostic Services?

The USPTO refused to register the proposed mark CARSCAN for "Automobile diagnostic services provided on-line, via a computer network and by telephone," finding it to be merely descriptive under Section 2(e)(1). Applicant Innova argued that CARSCAN is at most suggestive because it "could allude to a multitude of automotive inspection services wholly unrelated to diagnostics," such as a visual survey for dents or a physical smog check, and therefore does not describe its online and telephone diagnostic services with particularity. How do you think this appeal came out? In re Innova Electronics Corporation, Serial No. 97851338 (September 29, 2026) [not precedential] (Opinion by Judge Mark Lebow).

The problem with applicant's argument is that "the test is not whether the mark, viewed in the abstract, could refer to other automotive activities."

Someone who knows that the services are “automobile diagnostic services provided on-line, via a computer network and by telephone” will understand CARSCAN to convey that those diagnostic services involve scanning cars. DuoProSS, 695 F.3d at 1254. The mark need not describe every detail of the identification.

Innova claimed ownership of an existing registration for CARSCAN for "automotive diagnostic devices, including code readers and scan tools," which issued without a descriptiveness refusal. Irrelevant, said the Board. "Each application, however, must be decided on its own record. *** The ’892 Registration covers goods, not the services here, and it does not bind us on this record."

Finally, Innova argued that its use of the mark for more than 17 years for diagnostic goods, and the absence of other live CARSCAN registrations owned by third parties, demonstrate a strong association between Innova and those goods and related services. The Board pointed out, however, that Innova did not claim acquired distinctiveness under Section 2(f). "Evidence that consumers associate a term with a particular source, and evidence of length of use, goes to acquired distinctiveness, not inherent distinctiveness."

And so, the Board sustained the refusal.

Read comments and post your comment here.

TTABlogger comment: Looks like Innova may want to file a new application with a Section 2(f) claim.

Text Copyright John L. Welch 2026.