TTAB Reverses Specimen Refusal, Finding Webpage Sufficient for Pet Food Products

The Board overturned a specimen refusal of the mark RAISED RIGHT RR VETERINARY SUPPORT (in standard characters) for "Cat food; Dog food; Pet food; Edible cat treats; Edible chews for dogs; Edible dog treats; Edible pet treats," finding that applicant's website constituted an acceptable "display associated with the goods." In re Raised Right Pets, L.P., Serial No. 98709772 (August 3, 2026) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Under Section 45 of the Trademark Act, a mark is deemed to be in use in commerce on goods when, among other things, “it is placed in any manner on the goods or their containers or the displays associated therewith ....”

To establish that a webpage constitutes a “display associated with the goods,” the following criteria must be met: (1) the website contains a picture or textual description of the identified goods; (2) the website shows the mark in association with the goods; and (3) the website provides a means for ordering the identified goods. MN Apparel, 2021 TTAB LEXIS 162, at *19 (citing TMEP § 904.03(i)).

The Managing Attorney maintained that this specimen is split across five different pages, requiring multiple “clicks” to purchase the pet foods products; but only the first page displays the proposed mark.  Applicant argued that, considered together, the website is an acceptable display associated with the goods: the mark appears at the top of the page; the "corresponding contiguous webpages display and describe the goods identified in the application”"; and 'the adjoining webpages provide a direct purchasing mechanism."

The Board sided with the applicant. It noted that "the top of the webpage shows the mark RAISED RIGHT RR VETERINARY SUPPORT in a stylized format along with the menu for 'buy a box' and a shopping cart symbol." "Further down the webpage we find explanations and pictures which make clear to the consumer that Applicant’s goods are human-grade pet food that is cooked and frozen by Applicant; thawed by the consumers; and then served to the pet."

Applicant explained that the button “choose recipes” may be used by consumers to proceed to purchase the goods. This button is not a model of clarity in terms of directing consumers to add the pet food items sold under the mark to the shopping cart. But the “buy a box” dropdown tab and the shopping cart, which appear in close association with the mark, fill in the blanks. We infer that the drop-down options lead consumers to a webpage on Applicant’s website, as presented in the specimen, from which they can select a box of bagged pre-cooked and frozen pet food to purchase.

In sum, the proposed mark appears prominently at the top of the webpage, in close association with the product images, descriptions, and ordering mechanisms. "Viewed as a whole, the specimen demonstrates that the mark functions as a source identifier for the goods being offered for sale."

We find that the three-part test for a display associated with the goods as set forth in MN Apparel, 2021 TTAB LEXIS 162, at *19, is satisfied because the Second Substitute Specimen includes: (1) A picture or textual description of identified goods (images of pet food and descriptions of human-grade pet food that is cooked, frozen, thawed, and served); (2) The mark shown in association with the goods (mark in upper-center portion of webpage in close proximity to images of the goods); and (3) A means for ordering the goods (collectively, the “buy a box” dropdown, shopping cart icon, and “choose recipes” button, leading to an ordering page).

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TTABlogger comment: Good to see the Board side with the applicant on a specimen issue. PS: Former TTAB Judge Beth Chapman just pointed out to me that, although the Board says the application "will proceed to registration," it actually has to be published for opposition first.

Text Copyright John L. Welch 2026.

TTAB Sustains Nike's Section 2(d) Opposition to GOT EM KICKS for Consignment Stores for Retro Sneakers and Clothing

The Board sustained Nike's opposition to registration of the mark GOT EM KICKS for "Retail consignment stores featuring retro sneakers and clothing," in view of the Nike's common law rights in the mark GOT 'EM for retail store services featuring footwear and clothing. The Board found that "all factors weigh in favor of a likelihood of confusion or are neutral, and none weigh against it." This post will hit some of the "highlights." NIKE, Inc. v. Gotemkicks, Opposition No. 91287908 [not precedential] (Opinion by Judge Martha B. Allard).

he Board found that Nike launched its on-line SNKRS Platform in February 2015 and has used the GOT ’EM mark in connection with sales on that platform since its launch. Thus, Nike established use of its mark "at least in connection with its computer software application featuring footwear for sale since at least March 27, 2018, which is prior to any date upon which Applicant may rely."

Applicant’s brief focused mainly on the argument that Nike’s mark is a "commonly understood message [that] does not function as a trademark because it does not identify and distinguish source." However, the evidence showed that "consumers do indeed perceive the GOT ’EM phrase as identifying Opposer as the source of the online shopping platform services and computer software application."

Considering the totality of the evidence of record, the record does not demonstrate that Opposer’s mark is used in general parlance or that it conveys a common social, political, patriotic, religious or other informational message, such as was found to be the case in the phrases I ♥ DC, ONCE A MARINE, ALWAYS A MARINE and DRIVE SAFELY. Instead, we find that it shows that consumers perceive used with a computer software application as associated with Opposer rather than as a commonplace expression. * * * On this limited record we are simply not persuaded by Applicant’s arguments and cannot find, as Applicant argues, “widespread use and public exposure” of the phrase.

Applicant feebly argued that Nike failed to establish priority because its mark appeared on promotional items that were given away, not sold, to consumers. The Board kicked that argument to the curb: "As an initial matter, it ignores the fact that Opposer did in fact sell millions of items of footwear through its platform, where each successful sale caused the GOT ’EM mark to be displayed to the buyer. Regardless, '[t]he [Trademark Act] does not require that goods or services be sold for purposes of establishing priority.'"

Applicant also claimed that Nike's delay in seeking registration of its mark suggested that Nike itself did not consider the phrase to function as a mark. According to applicant, had Nike considered the GOT ’EM mark as a source indicator, it would have filed the application at or near the same time that it filed applications to register the SNKRS marks. The Board kicked that argument over the curb: "This is not persuasive, as there is no requirement that a mark owner apply to register its marks at all, much less that it seek to register all marks used with a particular good or service at the same time, or contemporaneously with the launch of the good or service."

Applicant did not dispute that the relatedness of the involved goods and services, nor that the parties’ channels of trade or classes of consumers are similar.

As to the conceptual strength of Nike's mark, the Board found that Nike's mark is suggestive, meaning that it is inherently distinctive. However, Nike's evidence regarding commercial strength fell short of proving that GOT 'EM is a particularly strong mark.

The record is clear that the SNKRS Platform is popular. However, with regard to the fifth DuPont factor, it is difficult to discern how many sales of footwear products were made via Opposer’s computer software application and how many of the consumers who visited the SNKRS Platform successfully purchased footwear and, as a consequence, were exposed to Opposer’s stylized mark. Even considering the unsolicited media evidence, we cannot find, on this record, that Opposer’s mark is entitled to be placed on the very high end of the fame/commercial strength spectrum; rather, we find that Opposer’s mark is entitled to the normal scope of protection

Applicant argued that the marks are dissimilar due to Applicant’s inclusion of the term KICKS and Opposer’s use of an apostrophe. The Board disagreed that these differences are enough to distinguish the marks. It found, instead, that the first DuPont factor weighed "heavily" in favor of a likelihood of confusion.

Finally, Applicant pointed to the lack of evidence of actual confusion. The Board was again unimpressed: "Here, Applicant’s co-existence as of the time of trial of about three years without evidence of actual confusion when the extent of its use is limited to services offered at a single location that has itself had low sales does not render confusion unlikely. We find the seventh and eighth DuPont factors neutral."

And so, the Board sustained the opposition.

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TTABlogger comment: Nike just did it.

Text Copyright John L. Welch 2026.

TTAB Upholds Section 2(e)(5) Functionality Refusal of Office Chair Wheel Configuration

The Board put the brakes on Applicant Equiper, LLC's attempt to register a mark comprising the three-dimensional configuration of an office chair wheel (shown immediately below). The Board, relying in part on a third-party utility patent, found the configuration to be functional under Section 2(e)(5). In re Equiper, LLC, Serial No. 98448363 (July 30, 2026) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

The CCPA's Morton-Norwich decision sets forth the following four factors to be considered when assessing functionality under Section 2(e)(5):

1. the existence of a utility patent disclosing the utilitarian advantages of the design; 
2. advertising materials in which the originator of the design touts the design’s utilitarian advantages;
3. the availability to competitors of functionally equivalent designs; and
4. facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

The Board observed that a utility patent that claims the features of a proposed mark may be strong evidence of the functionality of those features. Furthermore, the patent’s specification and/or drawings may provide evidence of functionality even if the features are not explicitly claimed as part of the invention. "To be relevant under the first Morton-Norwich factor, the utility patent need not be owned by the applicant, but may be owned by a third party."

The crux of Applicant’s argument appears to be that the features of the wheel design claimed as its trade dress are not functional because they can be made in other shapes or designs and these non-functional shapes or designs outweigh the functional characteristics. Having carefully reviewed the [third-party] ’820 Patent . . .  we agree with the Examining Attorney that it discloses both the utilitarian advantages of Applicant’s overall design and of significant features claimed by Applicant as part of its trade dress, supporting a finding that the proposed mark, as a whole, is functional.

As to the second factor, Examining Attorney Gregory Gutierrez submitted advertising of both applicant and third parties that touted the utilitarian features of the design and supported a finding that the proposed mark, as a whole, is functional.

Since the first two factors were met, the Board did not need to consider the third and fourth factors. For the sake of completeness, however, the Board considered them anyway and found them to be neutral.

Applicant’s overall design and the significant features thereof are, as a whole, functional. Any non-functional features, such as specific shapes used by Applicant, are outweighed by the significant functional features. See, e.g., Heatcon, 2015 TTAB LEXIS 360, at *35-37 (citing Becton, Dickinson, for the proposition that the Board is to weigh functional and non-functional matter in determining whether a mark in its entirety is overall functional).

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TTABlogger comment: Why aren't statement made in the specification of a third-party patent inadmissible hearsay? Of course, a patent applicant will make assertions regarding the benefits of its design. Why should a trademark applicant be tarred and feathered with third-party statements? PS: I like to see a clear discussion of de facto functionality versus de jure functionality.

Text Copyright John L. Welch 2026.

TTAB Sustains Mere Descriptiveness Opposition to REALITY ENGINE for Computer Software Design But Dismisses Lack of Bona Fide Intent Claim

The Board rendered a split decision in this opposition to registration of REALITY ENGINE for, inter alia, computer software design, computer programming, computer system design, and updating and rental of computer software [ENGINE disclaimed], finding the mark to be merely descriptive of the services under Section 2(e)(1). However, Opposer Novel's lack-of-bona-fide-intent claim bit the dust. Novel Brands USA LLC v. Zerodensity Yazilim Anonim Sirketi, Opposition No. 91254798 (July 27, 2026) [not precedential] (Opinion by Judge Thomas. W. Wellington).

Lack of Bona Fide Intent: Opposer Novel bore the burden of proof to demonstrate by a preponderance of the evidence that Applicant lacked a bona fide intent to use the mark at the time it filed its Section 66(a) request for extension of protection in September 2018. Novel argued that applicant failed to introduce any objective evidence that it intended to use the REALITY ENGINE mark for the identified services at the time that it filed the Application.

Applicant’s witness testified that applicant (a Turkish company) currently provides "complementary engineering, design, consultancy, software development, training, rental, and production services," and that applicant is "comprised of skilled video production and computer professionals" experienced in the relevant fields. He also testified that The Weather Channel (TWC) has been a customer "using the Reality Engine system in their daily shows" since 2019. And as early as "April 4, 2016, ZD formed Zero Density Inc., (ZDI) in the United States "as a distributor and authorized entity to enter into contracts with third party resellers for licensing the Reality Engine broadcast compositing system."

Taken together, these uncontroverted averments indicate that Applicant had the demonstrated capacity or experience to provide the Remaining Services at the time the application was filed. *** Accordingly, we find Opposer has not met its burden of demonstrating that Applicant lacked a bona fide intent to use its mark in commerce in connection with respect to the Remaining Services.

Mere Descriptiveness: Based on Opposer Novel's evidence (dictionary definitions, applicant's website and advertising, media articles), the Board found that "Applicant’s mark REALITY ENGINE describes a type of computer software that 'performs a fundamental function of a larger program' in connection with augmented reality or virtual reality applications."

While we are keenly aware that the involved application does not list goods, such as this type of software, the services listed in the application do include “computer software design … computer programming … computer system design … [and] updating and rental of computer software.” And these services are broad enough to include the use or design or involve augmented reality or virtual reality engine software as a primary feature or purpose of those services. In which case, REALITY ENGINE mark immediately conveys information about these services to those who know what they are.

Applicant contended that, upon hearing the mark as a whole, a multi-step thought process is necessary before a consumer realizes the descriptive significance of the mark. The Board disagreed.

Because the terms REALITY and ENGINE are merely descriptive of features or purposes of Applicant’s services, and these individual terms do not lose their descriptive significance when combined, consumers aware of Applicant’s services will immediately understand the mark REALITY ENGINE to convey information about the services.

The Board found that consumers encountering the mark REALITY ENGINE in connection with “computer software design … computer programming … computer system design … [and] updating and rental of computer software" services "will quickly understand that the mark imparts information about these services in that they involve the design, use or rental of virtual or augmented reality engine software."

And so, the Board sustained the mere descriptiveness claim.

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TTABlogger comment: Applicant accepted judgment as to some of its services, conceding that it had no evidence to prove an intent-to-use as to those items. However, under Wet Seal, that did not render the entire application void ab initio.

Text Copyright John L. Welch 2026.

KUL STOOL for Portable Coolers Confusable with KÜHL for Water Bottles, Says TTAB

The Board sustained an opposition to registration of the mark KUL STOOL and Design for "Portable coolers, non-electric" [COOL STOOL disclaimed], concluding the confusion is likely with the registered mark KÜHL for "Water bottles sold empty; Empty water bottles for bicycles; Plastic water bottles sold empty; Reusable plastic water bottles sold empty." The Board found that the marks to be similar and that the goods closely related and marketed through overlapping channels of trade to overlapping classes of consumers. None of the DuPont factors favored the applicant. Alfwear, Inc. v. Kul Products LLC, Opposition No. 91290865 [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Marks: Opposer's registration states that KÜHL translates to "cool" in English. The opposed application states that "KUL" also translates to "cool" in English. The Board not surprisingly found KUL to be the dominant element of applicant's mark since it is the first word in the literal portion of the mark.

Applicant argued that the umlaut over the “U” in KÜHL creates a visual and aural difference. The Board agreed that it creates a minor visual difference, but as to the sound of the mark, the Board noted that "there is no correct pronunciation of a trademark, and [a]bsent evidence in the record indicating that U.S. consumers pronounce KÜHL differently than they would pronounce KUL, we are not persuaded that these words sound different from one another."

The word STOOL in applicant's mark is generic or highly descriptive, since one of the functions of applicant's product, besides being a cooler, is to provide "a sturdy stool for seating."

The Board acknowledged the "minor" differences in the marks, but found the marks, overall, to be similar.

The Goods: Opposer submitted evidence that more than two dozen entities offer both applicant's and opposer's goods. "This amply shows substantial consumer exposure to nonelectric coolers and water bottles coming from the same source." Applicant feebly argued that the involved goods are different and can be told apart, and furthermore that its product doubles as a seat. Irrelevant, said the Board.

Based on the plentiful third-party use evidence, we find that the respective goods in the application and the goods in Registration No. 5931177 are closely related. In our final weighing of the relevant factors, this factor will count in favor of a conclusion that confusion is likely.

Trade Channels/Consumers: Opposer pointed to evidence that several online retail outlets offer both nonelectric portable coolers and water bottles. Furthermore, several third-parties offer their own-branded coolers and water bottles on their own websites. The Board found that the involved goods are offered in overlapping trade channels to overlapping classes of customers.

Purchaser Care: There were no limitations as to price in the registration or challenged application. The Board noted that some water bottles sell for more that some coolers. On the other hand, there was no evidence that these products are the type of goods generally subject to impulse-purchasing. The Board found this factor to be neutral.

Strength of Opposer's Mark: Due to lack of pertinent evidence from opposer, the Board found the fifth DuPont factor to be neutral. As to the sixth factor, applicant argued that there are numerous ‘COOL/KOOL/KUL’ marks on coolers/water bottles/clothing, but it provided no evidence in support.

The Board briefly discussed the eighth (lack of evidence of actual confusion), ninth (the variety of goods on which a senior user’s mark is used), tenth (the market interface between the parties), and eleventh (the extent to which applicant has a right to exclude others from use of its mark on its goods) DuPont factors and found them all to be neutral. As to the twelfth factor (the extent of potential confusion, i.e., whether de minimis or substantial), it found that "[w]here, as here, both parties’ products 'are the type of goods that would be marketed to and purchased by significant numbers of purchasers,' this factor will count a bit in favor of a conclusion that confusion is likely."

Conclusion: All of the non-neutral factors favored Opposer, and so the Board concluded that confusion is likely and it sustained the opposition.

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TTABlogger comment: Judge Casagrande's discussion of the import/purpose of several of the DuPont factors is worth reading.

Text Copyright John L. Welch 2026.

TTABlog Test: Is MUSEUM OF NAMES Merely Descriptive of Entertainment and Educational Services in the Field of Names?

The USPTO refused to register the mark MUSEUM OF NAMES (in standard character form), deeming it to be merely descriptive of "entertainment and educational services, namely, the presentation of seminars, workshops and panel discussions, and ongoing television and radio shows all in the field of names" [MUSEUM disclaimed]. So far this year, the Board has affirmed all 11 Section 2(e)(1) mere descriptiveness refusals that have been appealed. How do you think this one came out?  In re Taymitch & Associates, Serial No. 99033907 (July 27, 2026) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Examining Attorney provided dictionary definitions of “museum” (an institution devoted to the procurement, care, study, and display of objects of lasting interest or value or a place where objects are exhibited), “of” (relating to: about), and “name” (a word or combination of words by which a person, place or thing, a body or class or any object of thought is designated, called, or known), an entry from Encyclopaedia Britannica related to “virtual museum” ([A] collection of digitally recorded images, sound files, text documents, and other data of historical, scientific, or cultural interest that are accessed through electronic media), and webpages from physical museums that offer virtual access to their collections.

The Examining Attorney contended that the proposed mark describes the provider of the services, whether physical or virtual.

Applicant Taymitch argued that the Examining Attorney’s evidence was insufficient since its services do not involve collections or access to collections in virtual form and "[n]othing in the identified services involves collections, study, display, or museum operation." [See Applicant's website here]. The Board agreed with Taymitch.

Applicant’s recited services are not identified as museum services, virtual museum services, museum-based educational or entertainment programming, or retail gift shop services provided in or by a museum. The record also contains no evidence that Applicant’s identified services involve the study or display of collections, otherwise constitute a museum-like institution, or are virtual museum services.

The Board observed that, although a proposed mark is considered merely descriptive if it describes the source of the services (see, e.g., Omaha Nat’l Bank, 819 F.2d at 1119; Major League Umpires, 2001 TTAB LEXIS 515, at *5; see generally TMEP § 1209.03(q) (listing cases)), there was no evidence that Applicant Taymitch is a museum.

And so, the Board reversed the refusal.

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TTABlogger comment: Compare this decision with yesterdays' decision deeming NATRUAL BRIDGE CAVERNS to be merely descriptive even though the recited services were not identified as involving cave systems or cave. Is the mark MUSEUM OF NAMES misdescriptive? PS: What is the "field of names"?

Text Copyright John L. Welch 2026.

TTABlog Test: Is NATURAL BRIDGE CAVERNS Merely Descriptive of Theme Park-Related Services?

The USPTO refused to register NATURAL BRIDGE CAVERNS as a service mark for cabin rentals, provision of parking spaces, theme park services, and provision of campground facilities (in four classes), on the ground of mere descriptiveness under Section 2(e)(1). Applicant argued that the mark cannot be merely descriptive of the identified services because it is not seeking to register the proposed mark for cave systems or cave tours. How do you think this appeal came out? In re Natural Bridge Caverns, Inc., Serial Nos. 97438479, 97438507, 97546721 & 97546743 (July 24, 2026) [not precedential] (Opinion by Judge Robert Lavache).

Examining Attorney Danielle Anderson submitted dictionary definitions of NATURAL BRIDGE (“a rock formation in which the central bottom part has been completely eroded away, leaving a structure that looks like a bridge”) and CAVERN ("cave"), as well as excerpts from third-party websites using the term "natural bridge" to refer to a type of natural rock formation, and other websites using "cave" interchangeably with "cavern."

The Board found that the combination NATURAL BRIDGE CAVERNS "connotes a cave system featuring a naturally occurring rock formation with a bridge-like structure." But, the Board asked, what is the relevant consumers’ understanding of the term as used in connection with Applicant’s services?

The Examining Attorney asserted that NATURAL BRIDGE CAVERNS is merely descriptive of these services because the phrase describes a key aspect or characteristic of them, namely, that they are provided in connection with an attraction consisting of a cave system featuring a naturally occurring bridge-like rock formation. The Board agreed.

In view of the evidence of record, we agree with the Examining Attorney that “a consumer knowing that applicant’s services are being offered for the purposes of viewing a cavern with a natural bridge will immediately understand the wording NATURAL BRIDGE CAVERNS as conveying information about the services, namely that applicant’s rental cabins[,] [parking facilities, temporary accommodations, campgrounds, social function facilities, and theme-park special event services] are for the purpose of accessing” a cave system featuring a naturally occurring bridge-like rock formation.

The Board rejected applicant's assertion that it was applying a "per se" rule that would find the mark descriptive of any goods or services offered at or near a natural cavern: e.g., snack foods. Not so, said the Board.

In this case, our determination does not rest on such a per se rule, but on the specific relationship between the proposed mark and the particular services identified in each application, as established by this record. *** The third-party evidence of record likewise shows that accommodations, campgrounds, parking facilities, event facilities, and similar services are routinely offered specifically to provide access or proximity to cavern and natural-bridge attractions. This record thus establishes a direct nexus between the proposed mark and a feature, characteristic, or fundamental purpose of these services—not a categorical rule that everything offered on Applicant’s premises is descriptive

With respect to the argument that applicant's recitations of services do not include cave systems or tours, the Board pointed out that the wording of the proposed mark need not actually appear in the identification of services. It is sufficient that the proposed mark merely describes a feature, characteristic, or purpose of the identified services. "Here, the wording used to identify Applicant’s various services is broad enough to include such services offered in connection with an attraction consisting of a cave system featuring a naturally occurring bridge-like rock formation."

And so, the Board affirmed the refusal to register.

Two significant reasons for not registering merely descriptive marks are: “(1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods [or services]; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.” *** [W]e agree with the Examining Attorney that other entities in the marketplace who offer the same services in connection with an attraction consisting of, or including, a cave system featuring a naturally occurring bridge-like rock formation, should be free to use NATURAL BRIDGE CAVERNS in advertising such services.

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TTABlogger comment: Rock-solid decision?

Text Copyright John L. Welch 2026.

TTABlog Test: Is BRECKIN ANKLES Confusable with BREKENS B & Design for Overlapping Clothing Items?

The USPTO refused to register the mark BRECKIN ANKLES for various clothing items "used in relation to basketball," including tops and bottoms [ANKLES disclaimed], concluding that confusion is likely with the mark shown below, for clothing items, including tops and pants. The Board found the goods to be overlapping, but what about the marks? How do you think this came out? In re Andrew Riess, Serial No. 98436600 (July 23, 2026) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Goods: The Board found that the "tops" of the cited registration encompass Applicant Riess's "tops . . . to be used in relation to basketball," and Riess's "bottoms . . . to be used in relation to basketball" quivalent to registrant's "pants." Because the involved goods are identical in-part, the Board presumed that these goods travel in the same trade channels to the same classes of consumers.

The Board therefore found that the second and third DuPont factors "strongly" support a conclusion that confusion is likely.

The Marks: The Board agreed with the Examining Attorney that BREKENS is the dominant portion of the cited mark. It noted that Applicant's mark is in standard character form, and could be displayed in the same font, style, and style as the word BREKENS in the cited mark.

Even assuming such a depiction of the mark BRECKIN ANKLES, however, we find that the dissimilarities of the marks in appearance outweigh their similarities. Although the dominant word BRECKIN in Applicant’s mark may resemble the word BREKENS in the cited mark, the presence of the word ANKLES in Applicant’s mark makes the marks, in their entireties, slightly dissimilar in appearance.

With respect to sound, the Board agreed with the Examining Attorney that the word BRECKIN, standing alone, likely "is not pronounced 'BREAKING'." However, it observed that "[t]here is no correct pronunciation of a trademark that is not a recognizable word. *** BRECKIN, standing alone, is not a 'recognizable word' in the sense that it does not appear in any of the English-language dictionaries in the record other than as a name of Irish origin, but '[a]bsent evidence to the contrary, we must consider all reasonable possibilities' for the pronunciation of BRECKIN as part of Applicant’s mark BRECKIN ANKLES when it is verbalized in its entirety."

On the other hand, the record showed that consumers of clothing items "to be used in relation to basketball" and 'basketball accessories" are likely to be familiar with the phrase "breaking ankles": "[A] point guard in basketball breaks ankles when they are dribbling and cross over a defender, causing them to trip up on their feet and fall over." The OXFORD ENGLISH DICTIONARY defines the "ankle-breaking" in the same way, albeit more formally. And Google search results provide links to videos captioned “NBA - The Art of Breaking Ankles” and “NBA ‘Broken Ankles Moments.”

We find that for consumers of clothing items “to be used in relation to basketball” and “basketball accessories” sold under Applicant’s mark BRECKIN ANKLES, the pronunciation of the mark as a whole as a slang variant of “breaking ankles,” through the dropping of the “g” in the gerund “breaking,” which involves a common practice in colloquial American English speech, is a reasonable possibility.

And so, the Board found BREKENS and BRECKIN ANKLES to be "slightly dissimilar in sound due to the presence in Applicant’s mark of the word ANKLES, which causes the mark as a whole to be likely to be spoken and heard as something akin to “Breakin’ Ankles.'"

Finally, and most importantly, with respect to meaning, the cited mark would likely be understood to be a name, particularly given the presence of the initial “B” in close proximity to BREKENS in the mark, while Applicant’s mark would likely be understood as a slang variant of the phrase “Breaking Ankles” when used in connection with clothing items “to be used in relation to basketball” and “basketball accessories."

And so, the Board found the marks "somewhat dissimilar" in appearance and sound, and "quite dissimilar" in connotation and commercial impression. "The first DuPont factor strongly supports a conclusion that confusion is not likely."

Ruling that the first DuPont factor was dispositive, the Board reversed the refusal.

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TTABlogger comment: Not quite a slam dunk, but maybe a reverse lay-up?

Text Copyright John L. Welch 2026.

TTAB Finds SAAS Services Related to Consulting Services, Rejecting Thor Tech Third-Party Paired Registration Argument

In a lengthy opinion, the Board upheld a refusal to register the mark GREENVIEW for “Software as a service (SAAS) services featuring software for deploying and reviewing reports, dashboards and analytics in a customizable interface that can be white labeled for external use," concluding that confusion is likely with the registered mark shown below, for business consulting services. There was no doubt about the similarity of the marks. Applicant argued that the services are unrelated, but the Boad took a dim view of that contention. Applicant pointed to 18 pairs of third-party registrations for identical or substantially similar marks, where one entity’s registration covers software and the other’s covers business consulting. The Board found that evidence of little probative value. In re Green Leaf Consulting Group, Inc., Serial No. 98620760 (July 21, 2026) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

The Board observed that "[w]here a technology service automates or facilitates the same function that a professional service performs, the two may be found intrinsically related. Examining Attorney Jaime Batt's evidence confirmed that "the same entity commonly provides both business consulting services of the type identified in the cited registration and SaaS analytics platforms of the type identified in Applicant’s application." And the Board noted that applicant itself offers both consulting and SaaS analytics under the mark GREEN LEAF CONSULTING GROUP.

Applicant countered the Examining Attorney’s evidence by submitting eighteen pairs of use-based registrations owned by different entities, for identical or substantially similar marks, where one entity’s registration covered software and the other’s covers business consulting. According to applicant, these paired registrations demonstrate the Office’s repeated recognition that business consulting services on the one hand and software or SaaS on the other are not related for likelihood of confusion purposes. See In re Thor Tech, Inc., No. 85667188, 2015 WL 496133, at *4 (TTAB 2015) (reversing a Section 2(d) refusal based in part on approximately 50 pairs of registrations for similar marks owned by different entities for automobiles versus recreational vehicles). [TTABlogged here]

The Board distinguished Thor Tech on its facts: "the examining attorney there relied on only two third-party registrations, the goods were expensive (respectively ranging between about $8,000-23,000 and $17,000-40,000), and the record did not establish overlapping trade channels." It found applicant's registration evidence of "little weight for several reasons." 

First, three of the registrations had been cancelled. Second, there was no evidence "whether the listed marks are currently in use, whether the public is familiar with them, or whether consumers have formed any expectations based on their coexistence."

Third, there was no evidence as to "whether the paired registrants entered into coexistence agreements, whether their marks actually coexisted in the marketplace without confusion, or whether they operate in a crowded field that has conditioned consumers to distinguish among similar marks."

Fourth, these paired registrations "almost certainly present an incomplete picture of USPTO practice. There is no comparative evidence of how many applications covering the relevant services were refused registration based on similar marks." "Moreover, the fact that these types of services may sometimes emanate from different sources does not negate the affirmative evidence that they may also emanate from a common source."

Fifth, each case must be decided on its own merits, and prior decisions of other examining attorneys carry little evidentiary weight and are not binding on the Board.

The paired registrations demonstrate that the USPTO has sometimes permitted coexistence, but they do not establish that confusion never occurs or that the services are categorically unrelated. The Examining Attorney’s affirmative marketplace evidence, particularly Applicant’s own website, demonstrates that these services do in fact emanate from the same source in the actual marketplace − a showing that paired registrations, without more, cannot overcome.

The Board concluded that the second DuPont factor weighed in favor of likelihood of confusion.

The Board next found that the channels of trade overlap. It then considered the consumers for these services and found that they are the same: namely, business professionals and organizations seeking data analytics, reporting, and advisory solutions. Applicant argued that the consumers are sophisticated and exercise a heightened degree of care, but it submitted no supporting evidence. The Board "must consider the full range of potential purchasers and base our analysis on 'the least sophisticated potential purchasers.'" See Stone Lion Cap. Partners, 746 F.3d at 1325.

However, the Board acknowledged that "even the least sophisticated purchaser of SaaS analytics services or business consulting would likely exercise at least some degree of care beyond a casual impulse purchase. These are not inexpensive consumer goods purchased off a shelf; by their nature, they involve a threshold level of evaluation." It concluded that the fourth DuPont factor slightly weighed against finding a likelihood of confusion.

On balance, the factors favoring a likelihood of confusion − the virtual identity of the marks, the relatedness of the services, and the overlapping trade channels − outweigh the modest counterweight of the fourth factor.

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Text Copyright John L. Welch 2026.

Law Firm Fails to Win Big in its Opposition to "844-I-WIN-BIG" for Legal Services, TTAB Tosses Out Non-Use and Section 2(d) Claims

Sigal Law sought to register the mark 844-I-WIN-BIG for legal services, but Newton, Udinson, & Hill PLLC opposed, claiming non-use and likelihood of confusion with its common law mark WIN BIG LAW, also for legal services. The Board, however, found that applicant was using its mark as a source indicator as of the filing date of its application, and further found that opposer failed to prove that its alleged mark was distinctive. Newton, Udinson, & Hill PLLC v. Sigal Law Firm, PLLC, Opposition No. 91289155 (July 13, 2026) [not precedential] (Opinion by Judge Mark Lebow).

The Board spent about half of its opinion dealing with various evidentiary and procedural objections, overruling nearly all of them. It found opposer's reply brief was too long, and so it refused to consider the brief.

Likelihood of Confusion: Opposer claimed common law rights dating back to May 2021, but opposer failed to address the issue of whether WIN BIG LAW mark is distinctive "even though Applicant made it an issue." [Emphasis by the Board].

Applicant also made of record approximately 46 third-party registrations for marks containing the words BIG and/or WIN” for legal services “to show the descriptiveness and/or suggestiveness of Opposer’s Mark and its related weakness.” In addition, Opposer itself highlights, in its main brief, that “in a directly related opposition involving the same parties and services, [it] alleges that the phrase ‘WIN BIG’ is merely descriptive or laudatory and so commonly used that it lacks distinctiveness.

Opposer admitted in its pending application for WIN BIG LAW that "the meaning of the phrase is a law practice that 'wins big' on behalf of its clients, and the commercial impression is that the mark describes the service provider." The Board observed that "[t]his is precisely the type of laudatory, outcome-oriented message that has been held merely descriptive in analogous contexts."

The Board found the claimed mark WIN BIG LAW to be merely descriptive. Consequently, opposer was required to prove that the mark had acquired distinctiveness through secondary meaning.

Here, Opposer’s evidence consists primarily of its length of use of the term WIN BIG LAW for around five years, or since May 6, 2021, substantial advertising expenditures, social media activity, and billboards. While this evidence demonstrates commercial promotion of the claimed mark, it consists largely of testimony from an interested party and lacks objective evidence such as consumer surveys or third-party declarations showing that the relevant consumers perceive WIN BIG LAW as identifying Opposer as the source of the services, rather than as a promotional slogan touting successful results.

The Board concluded that, given the highly descriptive nature of the mark WIN BIG LAW, Opposer’s evidence fell short of the "substantial showing" required to establish acquired distinctiveness.

Because Opposer failed to establish that it owns a protectable mark, it failed to prove priority, and so its Section 2(d) claim was dismissed.

Nonuse: In its brief, Opposer argued that applicant’s use did not qualify as bona fide trademark use because (1) applicant’s services are provided only in Michigan, and (2) applicant uses 844-I-WIN-BIG solely as a telephone number and point of contact, rather than as a source identifier for its legal services. The Board was not impressed.

Use of a mark in connection with services that affect interstate commerce satisfies the “use in commerce” requirement of Section 1(a), even if the services themselves are rendered in only one state. * * * Applicant’s website is accessible to potential clients throughout the United States, and its services affect interstate commerce.

As to the question of non-use, the Board offered little discussion: "[t]he evidence shows that Applicant was actively providing personal injury legal services to clients as of the filing date of the application and was displaying 844-I-WIN-BIG on its website in connection with those services and alongside its firm name."

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TTABlogger comment: Opposer, on the last day of its rebuttal period, tried to add a failure-to-function claim, but the Board refused, finding that the claim was not tried by implied consent. 

Text Copyright John L. Welch 2026.