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 O&M Halyard, Inc. v. Guidepoint Global, LLC, Cancellation Nos. 92077680 (parent) and 92078922 (October 20, 2026) [not precedential].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.

TTAB Deems TALKIE Confusable with TALKIE.AI & Design for Chatbot Software, Rejecting Crowded Field Argument

The Board affirmed a refusal to register the mark TALKIE for, inter alia, "downloadable computer chatbot software for simulating conversations in the field of entertainment, education, creative writing, role-playing, and personal companionship," concluding that confusion is likely with the registered mark shown below, for, inter alia, "downloadable computer chatbot and bot software for simulating conversation." Applicant Subsup pointed to the four other registrations cited in the final refusal, but the Board found them insufficient to show a "crowded field" of TALKIE-formative marks. In re Subsup Pte. Ltd., Serial No. 98680779 (October 19, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

Subsup argued that the entire identification of goods in the cited registration, "read as a whole, is lengthy and heavily oriented toward specialized AI and communications-processing functionalities, including extensive interaction and healthcare-focused features alongside other technical components," and is distinguishable from Subsup's "non-medical, AI chatbot software and related software offerings under TALKIE versus the registrant’s broad, specialized, and differently framed suite of goods under TALKIE.AI."

Examining Attorney Mitchell Knief maintained that the particular goods identified in the cited registration as "downloadable computer chatbot and bot software for simulating conversation" are broad enough to encompass applicant's more limited software. The Board agreed: "These goods are legally identical, and the second DuPont factor strongly supports a conclusion that confusion is likely." Furthermore, the Board must presume that these identical goods travel in the same channels of trade to the same classes of consumers.

Turning to a comparison of the marks, the Board noted that "[w]hen a mark comprises both words and a design, the words are normally accorded greater weight because they are more likely to be impressed upon a purchaser’s memory and would typically be used by purchasers to request the goods or services." And so, the Board gave greater weight to the literal element than the design element of the mark. Furthermore, the Board observed that since the mark at issue is in standard character form, it could be depicted in the same font style and size as the word TALKIE in the cited mark

The marks are similar in sound because the TALKIE element of each mark will sound identical. The marks are "quite similar" in connotation and commercial impression because TALKIE suggests “‘talking’ or ‘chatting,’ a commonplace concept in software used for conversation, messaging, and chatbot interaction.” The design element reinforces the idea of “talking” or “chatting,” and the .AI suffix in the cited mark "identifies one party to the conversation."

And so, the first DuPont factor "strongly supports" a conclusion that confusion is likely.

As to customer care, there was "nothing in the record to show that the least sophisticated potential purchaser of Applicant’s downloadable software is likely to exercise anything more than ordinary care," and so the fourth DuPont factor was neutral.

Subsup argued that TALKIE is conceptually weak, pointing to the TALKIE-related registrations cited by the Examining Attorney in the final refusal, and asserting that “the shared TALKIE/TALK element should be afforded a narrower scope in the overall Section 2(d) analysis ....” The Board pointed out that the cited registration issued on the Principal Register without a requirement of a showing of acquired distinctiveness, and so "we presume that it is inherently distinctive, i.e., that it is at worst suggestive of the goods." Nonetheless, common use of a term may indicate that the mark or common element has some conceptual weakness.

Applicant has pointed to no TALKIE-formative registrations in the record beyond the three cited registrations owned by the same entity and the fourth cited registration owned by a different entity. Even if we consider the four other cited registrations, reflecting only two additional source entities, to be “third-party registrations” vis-à-vis the mark shown in the ’449 Registration, “two sources are not enough to show dilution of a mark, nor [do] they show that there is a ‘crowded field’ of sources utilizing these similar terms.”

Finding that the first, second, and third DuPont factors supported the refusal and none weighed against it, the Board affirmed.

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TTABlogger comment: There were three third-party owners in the supposed "crowded field" (including the registrant). If applicant had added a word to TALKIE, would that have avoided the refual?

Text Copyright John L. Welch 2026.

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 argued 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.

Read comments and post your comment here.

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.

Read comments and post your comment here.

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

Text Copyright John L. Welch 2026.