The Top Ten TTAB Decisions of 2025 (Part Two)

The TTABlogger has once again gone out on a limb to chose the ten (10) TTAB decisions that he considers to be the most important and/or interesting from the previous calendar year (2025). This is the second of two posts; the first five selections are posted here. Additional commentary on each case may be found at the linked TTABlog post.

In re Princeton Equity Group LLC, 2025 USPQ2d 829 (TTAB 2025) [precedential] (Opinion by Judge Thomas L. Casagrande) [TTABlogged here]. The Board wasted little time in affirming a Section 2(e)(2) refusal to register the mark PRINCETON EQUITY GROUP, agreeing with the Office that the mark is primarily geographically descriptive of applicant’s financial services. The Board was more concerned about applicant’s arguments on appeal, or lack thereof, and particularly with applicant’s attempt to incorporate its prosecution arguments by reference. In its brief, applicant’s only remark specifically directed to the refusal was to state that it “repeats and reiterates the arguments and evidence set forth” during prosecution of the application. The Board was not happy: “this is an insufficient presentation of whatever arguments Applicant may have contemplated.” “Its statement leaves it to the Board to ferret out what applicant’s argument might be, and acceptance of such an incorporation-by-reference might encourage circumvention of the 25-page limit on appeal briefs.” Although the Board made an attempt to identify what arguments applicant had it mind, it made it clear that in the future, “[p]arties whose briefs purport to incorporate by reference arguments made during prosecution will be held to have failed thereby to present whatever arguments the incorporation statement purports to cover to the Board and will be deemed to have forfeited them.”

August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA, Opposition No. 91277224 (TTAB November 14, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen) [TTABlogged here]. August Stork KG opposed an application to register the mark DANKE in the stylized form shown here, for “chocolate; chocolate bars,” claiming likelihood of confusion with its registered mark MERCI for “chocolate and chocolates.” The Board, applying the doctrine of foreign equivalents, found that both marks mean “thank you” in English, a message “widely used in the industry and pervasively associated with chocolate.” “Further, when it comes to commercial impression, because the marks are derived from different foreign languages and have distinct appearances and pronunciations, we find the marks are somewhat dissimilar overall in commercial impression, despite sharing an identical meaning.” The Board was not convinced by Storck’s argument that these differences are outweighed by the marks’ “exact same connotation and meaning,” particularly because the shared meaning is a common message related to chocolate. Instead, it found that the differences in sound and appearance and the differences in commercial impression outweighed the marks’ identical meaning and weighed strongly against a finding of likelihood of confusion.

Chutter, Inc. v. Great Management Group, LLC and Great Concepts, LLC, Cancellation No. 92061951 (TTAB February 25, 2025) [not precedential] (Opinion by Judge Michael B. Adlin) [TTABlogged here]. Last year, a divided panel of the CAFC reversed the TTAB’s precedential decision granting Chutter’s petition for cancellation of a registration for the mark DANTANNA’S for restaurant services, on the ground of fraud. The CAFC concluded that “a Section 14 cancellation proceeding is not available as a remedy for a fraudulent Section 15 incontestability declaration,” and it remanded the case to the Board for consideration of “whether to declare that Great Concepts’ mark does not enjoy incontestable status and to evaluate whether to impose other sanctions on Great Concepts or its attorney.” On remand, the Board noted the CAFC’S holding that “the Board can remove the mark’s incontestability status,” and that’s what the Board did. That’s all the Board did. “We find that removal of the registered mark’s incontestability status is necessary and appropriate. We decline, however, to refer the practitioner’s conduct to the Director of the Office of Enrollment and Discipline pursuant to 37 C.F.R. § 11.18(c)(2) and 37 C.F.R. § 2.193(f) for action under 37 C.F.R. §11.19 et seq. given the passage of time and the specific circumstances of this case.” The Board subsequently terminated the cancellation proceeding.

JT Spirits, LLC v. Global Brands Manufacturing, S.A. de C.V., Cancellation No. 92079052 (TTAB July 18, 2025) [not precedential] (Opinion by Judge Robert Lavache) [TTABlogged here]. In what appears to be the Board’s first decision regarding a Section 14(6) nonuse cancellation claim, the Board denied this petition for cancellation of a registration for the mark DESPACITO for alcoholic beverages (except beer). The registration was more than four years old when the petition was filed, and Respondent Global Brands had never used the mark in commerce for any of the identified goods. However, Global argued that its nonuse was excusable. The Board noted that it lacked Board precedent and any other binding case law addressing this relatively new Section of the Trademark Act. It looked to the legislative history of the ex parte nonuse exception, which indicates that the “circumstances that satisfy excusable nonuse are limited and must be due to special circumstances beyond the registrant’s control (e.g., trade embargo, fire or other catastrophe).” Global Brands asserted that the COVID-19 pandemic disrupted its plans to begin exporting DESPACITO-branded products from Mexico to the U.S. and that this disruption qualified for an exception under Section 14(6). The Board plowed through the evidentiary record and concluded that Global had established that its nonuse of the DESPACITO mark on the identified goods was excusable.

In re Solace Cine LLC, Serial Nos. 98558485, 98558583, and 98558650 (December 18, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn) [TTABlogged here]. The Board affirmed refusals to register the mark shown below, along with two similar marks, for film production and streaming services, on the ground that the applicant failed to provide its domicile address as required by Section 1(a)(2) of the Trademark Act and by Rule 2.189. Solace provided the address of its counsel’s law firm, but with no statement that the law firm address was Solace’s principal place of business. That was unacceptable. Rule 2.2(p) states: “[t]he term principal place of business as used in this part means the location of a juristic entity’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled.” “Despite being given ample opportunity to do so, or to petition for a waiver of the requirement, Applicant did not provide its domicile address or seek such a waiver. Counsel’s law firm address, with no statement that the law firm address was Applicant’s principal place of business, was insufficient.” Furthermore, Solace did not state that it lacks a fixed physical address. If that were the case, Solace had various response options. TMEP § 601.01(c)(iv)(a). “However, none of these options include listing a law firm.”

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Text Copyright John L. Welch 2026.