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

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal about 95% of the time just by looking at the marks and the goods/services. Of course, if you just said "affirmed" you'd be right about 89.5% of the time. Anyway, here are three Board decisions issued two days ago. No hints this time. How do you think they came out? [Answer in first comment].

In re Eastside Food Cooperative, Serial No. 97253512 (January 22, 2025) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of the mark EASTSIDE FOOD CO-OP & Design for "retail grocery store services, namely, cooperative grocery store services provided by a food distribution outlet organized as a cooperative owned and governed by its members" [FOOD CO-OP disclaimed] in view of the registered mark EASTSIDE MARKETPLACE for "supermarkets" [MARKETPLACE disclaimed].]

In re ADCO Global, Inc., Serial No. 97452377 (January 22, 225) [not precedential] (Opinion by Judge David K. Heasley) [Section 2(d) refusal of the mark SOIL SWITCH for "plant growth nutrients" [SOIL disclaimed] in view of the registered mark GREENSWITCH for, inter alia, "fertilizers, liquid fertilizers; phosphates; biostimulants being plant growth stimulants for use on plants or in soils for the regulation of physiological processes in plants, including growth, for crop improvement."]

In re Unanimous Media LLC, Serial No. 97529322 (January 22, 2025) [not precedential] (Opinion by Judge Karen S. Kuhlke). [Section 2(d) refusal of the mark UNANIMOUS PUBLISHING & Design for "Book publishing; Publishing of books, e-books and audio books" [PUBLISHING disclaimed] in view of the registered mark UNANIMOUS GAMES for, inter alia, "development, creation, production and post-production services of multimedia entertainment content” and for e-sport gaming services. [GAMES disclaimed]. 

Read comments and post your comment here.

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

Text Copyright John L. Welch 2025.

TTAB Reverses Section 2(d) Refusal of FITO for Seeds Due to Dissimilarity of Marks and 13th DuPont Factor (Strategic Partners)

The Board reversed a refusal to register the mark FITO in stylized form (below left) for, inter alia, unprocessed edible seeds, finding confusion unlikely with the word-and-design mark shown below right, for several kinds of seeds, including plant seeds. The Board deemed the marks "significantly dissimilar" under the first DuPont factor and gave the applicant the benefit of Strategic Partners under the thirteenth factor. In re SEMILLAS FITO, S.A., Serial No. 79311562 (January 21, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The First DuPont Factor: The Board found the overall commercial impressions of the marks to be "significantly different." It first noted that applicant’s mark "is in an unusual, highly-stylized typeface." Although FITO is prominent in the registered mark (as the lead literal element), it does not dominate the commercial impression of that literal component. Furthermore, the words FITO PERU are integrated into a banner which is attached to "a semi-circular element partially surrounding a prominent design comprising a circular element vaguely reminiscent of a globe that itself serves as the background for a prominent leaved, plant-like design."

The Thirteenth DuPont Factor: Applicant invoked Strategic Partners, pointing to its two registrations for marks that are quite similar to the subject mark, which registrations co-existed on the Trademark Register with the cited registration. The Board observed that "the way that a Strategic Partners co-existence circumstance bears on likelihood of consumer confusion is that it can provide circumstantial evidence as to the view of the owner of the cited registration on whether confusion is likely."

A typical Strategic Partners-type scenario has the following characteristics:

• First, the cited registration issues;
• Later, an applicant obtains a registration for a mark and goods arguably similar to the mark and goods in the cited registration;
• A period of time then passes during which the owner of the cited registration does not file a petition to cancel the applicant’s later registration for causing a likelihood of confusion;
• Later still, the applicant applies for another registration of a mark similar to its prior registration both in terms of the mark and the goods, but, unlike the applicant’s first registration, that application is refused due to a likelihood of confusion with the mark in the cited registration.

The Board noted that there is "no requirement that, for this type of Strategic Partners thirteenth factor to apply at all, the case has to be just like Strategic Partners. No two trademark cases are the same, and each is decided on its own unique facts and evidence." The Board then explored the factual situation here, noting that one of the applicant's registrations expired two years ago and the other had just barely reached its 5-year maturity date. It found the marks of the two registrations to be similar enough to that of the subject application, and the goods at least overlapping and/or immaterially different.

Like many other factors, a Strategic Partners-type thirteenth factor can vary from zero (i.e., neutral) to dispositive. The shorter the co-existence period, the weaker any inference that confusion is unlikely. The longer the coexistence period, the more it tends to indicate that confusion is unlikely. It’s not a binary thing. We do agree, however, that the five-year birthday of the applicant’s registration is significant, but not because it is an absolute requirement. Rather, because five years marks the end of the period within which the prior registrant may petition for cancellation based on likelihood of confusion, we can be more confident after five years in inferring that the owner of the cited registration believes that the applicant’s registration does not create a likelihood of confusion.

Here the Board found two significant periods of co-existence between Applicant’s "very similar" prior registrations and the cited registration: "a several-year period while the ’134 Registration existed through and beyond the date when the owner of the cited registration applied for registration; and a several-year period after Applicant obtained its ’285 Registration. Either period separately would tilt the Strategic Partners thirteenth factor against a determination that confusion is likely as between the cited registration and the application at issue. Together, they amplify each other.

And so the Board, giving Strategic Partners a rather liberal interpretation, concluded that the thirteenth DuPont factor weighed against a finding that confusion is likely.

Conclusion: The first and thirteenth factors outweighed the overlapping goods and presumably identical channels of trade and classes of consumers, and so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Judge Casagrande's opinions are refreshingly down-to-earh and readable. A tip of the TTABlog fedora to the Judge for not using the word "incontestable" in connection with applicant's five-year old registration.

Text Copyright John L. Welch 2025.

Precedential No. 2: TTAB Sustains Section 14(3) Opposition to LA MONTSERRATINA for Meat Products Based on Reputation in USA Without Use

Ruling that the potential harm to Opposer Plumrose Holdings' reputation in the United States gave it "standing" despite lack of use of its marks in this country, the Board sustained an opposition to registration of the mark LA MONTSERRATINA in the form shown immediately below, for ham, sausage, and other meat products, on the ground of misrepresentation of source under Section 14(3) of the Lanham Act. Opposer's Venezuelan company has sold meat products in Venezuela since 1949 under the LA MONTSERRATINA mark, and since 2011 under the mark shown second below. Plumrose Holding Ltd. v. USA Ham LLC, Opposition No. 91272970 (January 7, 2025) [precedential] (Opinion by Judge Thomas L. Casagrande).

Plumrose alleged that its marks are well known and have a reputation for superior quality in Venezuela and among Venezuelans living in the United States, and that USA Ham is seeking to benefit from that reputation, causing damage to Plumrose. It also charged USA Ham deliberately copied its trademarks in furtherance of USA Ham's scheme.

The Board mainly wrestled with the issue of whether Plumrose established its statutory entitlement to oppose the subject application "based on the alleged extension of the reputation of Opposer’s LA MONTSERRATINA brand to consumers in the U.S." The Board focused on the impact of the CAFC's decision in Meenaxi Enterprise, Inc. v. Coca-Cola Co., 38 F.4th 1067 (Fed. Cir. 2022), a Section 14(3) case involving the same question as here―"whether the foreign plaintiff can show reputational injury in the U.S." 

Coca-Cola argued that the reputation of its THUMS UP and LIMCA marks―which it had never used in this country, nor sought to register them― extended to a significant portion of Indian-American consumers, but its evidence fell way short. The CAFC noted Meenaxi's copying of Coca-Cola's marks and associated slogans, but that was insufficient to establish a “U.S. reputation.” Id. at 1079, citing Person’s Co. v. Christman, 900 F.2d 1565, 1569-70 (Fed. Cir. 1990). (Person’s held that, although Defendant Christman knew Person's mark was in use in Japan and he copied it, “mere knowledge of prior use” did not amount to culpable, bad-faith behavior. 900 F.2d at 1570.) The Meenaxi court "left for another day what 'types of U.S. commercial injury to reputation among U.S. consumers,' other than lost sales, 'would be sufficient to establish a Lanham Act cause of action.'"

The Board found this case "materially different from Meenaxi (and Person’s) in several ways that are legally significant." Here, Plumrose provided evidence of "multiple U.S. consumers communicating with it through social media and text messages asking whether Opposer’s products are available in the U.S.," as well as evidence that "at least some U.S. consumers have been confused or mistaken as to whether LA MONTSERRATINA products they have seen in Florida, where Applicant sells the product, are Opposer’s products."

There are over twenty (20) people who asked Opposer about obtaining its products here. They would not have asked if they weren’t aware of Opposer’s reputation. Five more people were confused about the source of products bearing the mark LA MONTSERRATINA. 

In light of USA Ham's "relatively unimpressive sales" under the LA MONTSERRATINA mark, the Board gave greater significance than usual to the mere five documented instances of actual confusion. 

[T]he multiple consumer inquiries about the availability of Opposer’s products in the U.S., and especially the instances of actual confusion, set this case apart from Meenaxi and show quite clearly that Opposer’s reputation for products under its mark extends to the U.S.

In the case at hand, the Board found that "the pieces of the puzzle reveal that Opposer’s brand reputation extends into the U.S., and that Applicant’s copying capitalizes on that reputation."

In sum, it beggars belief to view the copying here as having nothing to do with Opposer’s reputation within the U.S. We find instead that, in the totality of the circumstances here, Applicant’s copying clearly reflects a calculated, multi-faceted attempt to capitalize on Opposer’s reputation for its LA MONTSERRATINA-branded meat products with at least some U.S. consumers.

The Board firmly rejected USA Ham's argument that there can be no reputational injury unless there is evidence that consumers had "negative experiences" with its products and associate those negative experiences with Plumrose. "This reflects too stingy a view of the kinds of commercial injuries against which Section 14(3) is designed to protect. As Opposer points out in reply, one of the key assets the Act protects is the mark owner’s ability to control its reputation, which is uniquely symbolized by the mark." 

[T]he harm generated by loss of control over one’s reputation falls within the purview of the Lanham Act. Section 45, 15 U.S.C. § 1127, provides that the “intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce” and “to protect persons engaged in such commerce against unfair competition.” Misrepresentation of source is “deceptive and misleading use” and, as this record shows, the deception caused by misleading use of marks about which Congress is concerned may occur even when the source is not yet using the mark in the U.S. but its commercial reputation extends to the U.S. [Note: the Board reached much the same conclusion in the Bayer v. Belmora decision in 2014 [pdf here]].

The Board ruled that Plumrose "falls within the zone of interests protected by the opposition statute and has demonstrated proximate causation," and it is therefore statutorily entitled to oppose registration of USA Ham’s marks under Section 14(3). Moreover, the suspension of Plumrose's pending applications in view of USA Ham’s prior-pending application provides and independent basis of Plumrose's entitlement to bring the current opposition.

Turning to the merits of the Section 14(3) claim, Section 14(3) provides, in pertinent part: "A petition to cancel a registration of a mark … may … be filed … by any person who believes that he is or will be damaged … [a]t any time … if the registered mark is being used by … the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used." (Although the text of Section 14 is directed to petitions to cancel registrations, the Board held in PepsiCo, Inc. v. Arriera Foods LLC, No. 91269057, 2022 WL 15328405, at *4 (TTAB 2022) that it may apply to oppositions to an application when the challenged mark is in use.)

There are three elements to a Section 14(3) claim: (1) present use of the challenged mark by the defendant; (2) specific acts or conduct by the defendant that are deliberately aimed at passing-off its goods as those of the plaintiff; and (3) the nature of the injury to plaintiff as a result of defendant’s deliberate conduct (i.e. damage to reputation or lost sales).

There was no dispute regarding the first element. The second element was established by USA Ham's "copying and conduct." The potential damage to Plumrose's reputation "not only demonstrates entitlement to file an opposition proceeding against the party allegedly responsible for that damage, it also establishes element (3) of a Section 14(3) claim."

And so, the Board sustained the opposition.

Read comments and post your comment here.

TTABlogger comment: "Plumrose Lane, life's a holiday on Plumrose Lane."

BTW: Marty Schwimmer and I wrote an article in 2019, entitled "US Law Inches Towards Protecting Trademark Reputation Without Use," in which we discussed several reputation-without-use cases and suggested that the courtroom door seemed to be opening for an unfair competition claim under Section 43(a).

Text Copyright John L. Welch 2025.

Opposer Proves Prior Use of Common Law REVOLUTION JEWELRY WORKS Marks, Wins Opposition Battle

Opposer Revolution Jewelry Works survived some harsh Board sanctions for its attorneys' violation of the Standard Protective Order [TTABlogged here] and emerged victorious in this consolidated opposition to registration of the marks REVOLUTION JEWELRY in standard character form, and REVOLUTION JEWELRY DESIGNS in the design form shown first below [JEWELRY and JEWELRY DESIGNS disclaimed]. The Board found those two marks likely to cause confusion with opposer's common law marks REVOLUTION JEWELRY WORKS and the two marks shown second below, all for jewelry. The Board declared, "[t]he crux of the parties’ dispute in this case rests on priority." Revolution Jewelry Works, Inc. v. Stonebrook Jewelry, LLC DBA Revolution Jewelry, Oppositions Nos. 91248007 and 91248009 (January 15, 2025) [not precedential] (Opinion by Judge Cynthia C. Lynch).

To prevail on its likelihood of confusion claims, Opposer Revolution had to prove "that it owns a trademark that was used in connection with its pleaded 'sale of custom jewelry' and various jewelry goods, and not abandoned, prior to Applicant’s constructive use date of January 18, 2017 when it filed the applications, or any earlier priority date Applicant proves." Life Zone Inc. v. Middleman Grp. Inc., Opp. No. 91160999, 2008 TTAB LEXIS 37, *21 (TTAB 2008); see also 15 U.S.C. § 1057(c); Larami Corp. v. Talk to Me Programs, Inc., Opp. No. 85987, 1995 TTAB LEXIS 13, *14 (TTAB 1995) (parties may rely on the constructive use filing dates for purposes of priority).

Reviewing opposer's extensive evidentiary filings, the Board found "the record more than sufficient to prove Opposer’s November 8, 2013 priority date for all three pleaded marks. The supporting testimony by multiple witnesses is detailed, clear and consistent, and the testimony is corroborated by voluminous documentation."

Turning to Applicant Stonebrook’s allegations of priority, the Board noted its admission that its word-and-design mark was not used prior to May 14, 2014 (the alleged first use date in the opposed applications). As to the word mark REVOLUTION JEWELRY, however, applicant claimed a priority date of December 2009, a date earlier than the date alleged in its applications. That raised a problem for Stonebrook:

Because Applicant’s asserted priority date for the ‘185 Mark predates the alleged first use date of May 14, 2014 in the application for the 185 Mark, Applicant must prove this earlier date by clear and convincing evidence. Martahus v. Video Duplication Servs., Inc., 3 F.3d 417, n.7 (Fed. Cir. 1993) (“VCDS alleges use prior to the date that it apparently listed in its registration application as its date of first use, i.e., prior to May of 1985, and therefore VCDS has the burden of establishing that use by clear and convincing evidence instead of mere preponderance of the evidence”).

Stonebrook failed to clear that evidentiary hurdle. The Board found that Stonebrook's testimony was "not specific enough" as to the nature of the alleged use of REVOLUTION JEWELRY "to assure us that it was used as a trademark for jewelry by the relevant date." See, for example, Elder Mfg. Co. v. Int’l Shoe Co., 194 F.2d 114, 118-19 (CCPA 1952) (testimony without specifics and without supporting documentation deemed too vague). "The testimony is not clear, specific and certain. And . . . we lack persuasive documentary evidence that Applicant used REVOLUTION JEWELRY as a mark for the identified goods prior to Opposer’s established priority date."

Turning to the merits of the likelihood of confusion claims, the Board focused on Opposer Revolution's word mark and its second word-plus-design mark. In a straightforward DuPont analysis, it found the parties' respective goods to be identical and the trade channels and consumers overlapping, "weighing heavily in favor of a likelihood of confusion." The mark REVOLUTION JEWELRY in standard characters is "highly similar" to Opposer’s common law word mark REVOLUTION JEWELRY WORKS, since the disclaimed word JEWELRY in Applicant’s mark and the words JEWELRY WORKS in Opposer’s mark, all are generic or descriptive.

As to Stonebrook's word-and-design mark, the Board found it to be "highly similar" to Revolution's word mark and its second word-and-design mark. "[T]hey both display REVOLUTION in relatively large block lettering that appears in the same black-and-red color combination, contain underlining of REVOLUTION, and display the remaining wording in much smaller block lettering underneath."

Finally, the Board found the testimony of two of Revolution's witnesses to be "probative to demonstrate some actual consumer confusion between Applicant’s and Opposer’s marks. "[E]vidence of some instances of actual confusion can serve as a powerful demonstration that many more people are likely to be confused." See In re ALP of South Beach, Inc., Serial No. 75819306, 2006 TTAB LEXIS 108, *12 (TTAB 2006).

And so, the Board concluded (unsurprisingly) that confusion is likely and it sustained the consolidated opposition:

As previously noted, when marks appear on identical goods, the marks need not be as similar to lead to likely confusion. Century 21 Real Estate Corp., 970 F.2d at 877. The parties’ marks share sufficient indicia of similarity that we find them similar overall. In addition, the previous occurrence of actual confusion between the parties’ respective marks weighs heavily in favor of likely additional confusion in the future. However, even if the actual confusion factor were neutral, we still would reach the same conclusion in overall balancing. Given that the relevant DuPont factors weigh in favor of likely confusion, most of them heavily so, the challenged applications present a likelihood of consumer confusion.

Read comments and post your comment here.

TTABlogger comment: A bit of a snoozer, no?

Text Copyright John L. Welch 2025.

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

A TTAB judge once said to me that one can predict the outcome of a Section 2(d) appeal about 95% of the time just by looking at the marks and the goods/services. Of course, if you just said "affirmed" you'd be right about 89.5% of the time. Anyway, here are three Board decisions issued early this year. No hints this time. How do you think they came out? [Answer in first comment].

In re Rockridge Enterprises LLC, Serial No. 97578343 (January 3, 2025) [not precedential] (Opinion by Judge Robert H. Coggins). [Section 2(d) refusal of the mark ROCKRIDGE ORCHARDS for "Non-alcoholic cider, namely apple ciders, raspberry apple cider, strawberry apple cider and asian pear cider; non-alcoholic sweet ciders, namely spiced apple cider" [ORCHARDS disclaimed] in view of the registered mark ROCKRIDGE CELLARS for "wine" [CELLARS disclaimed].]

In re Lofty Water LLC, Serial No. 97043120 (January 7, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin) [Section 2(d) refusal of the mark LOFTIWATER for "Water beverages" in view of the registered mark LOFTY for, inter alia, coffee, tea, fruit juices and fruit juice-based drinks.]

In re Wet Holdings (Global) Limited, Serial No. 79290215 (January 8, 2025) [not precedential] (Opinion by Judge Michael B. Adlin). [Section 2(d) refusal of the mark WEECAN for "waters, namely, still water, carbonated mineral water and flavored mineral water; carbonated mineral water, and flavored mineral water; flavored waters; functional water-based beverages, namely, energy drinks, fruit juice beverages and beauty beverages, namely, fruit juices and energy drinks containing nutritional supplements; mineral waters" in view of the registered mark WECANVEGAN for "retail store services featuring vegan and nutritional fortified foods and beverages; online retail store services featuring vegan and nutritional fortified foods and beverages."]

Read comments and post your comment here.

TTABlogger comment: See any WYHA?s? 

Text Copyright John L. Welch 2024.

Res Judicata Thwarts Applicant Seeking to End Run Prior Opposition by Limiting Services in Second Applications

Applying the age-old doctrine of res judicata (a/k/a claim preclusion), the Board sustained oppositions to registration of the marks MYSTIC PARKS and MYSTIC CITY for amusement park services, based on a final judgment in a prior proceeding that involved the same parties or their privy, and likelihood of confusion claims based on the same set of transactional facts as the claims in this consolidated proceeding. Although the opposer did not plead res judicata, the Board decided that the issue had been tried by implied consent. Shakopee Mdewakanton Sioux Community v. Adrenalin Technologies, LLC, Oppositions Nos. 91285546 and 91285548 (January 7, 2025) [not precedential] (Opinion by Judge Robert Lavache).

Applicant Adrenalin Technologies, LLC argued that Adrenalin Attractions, LLC controlled the defense in the prior proceeding, but the Board found that "amounts to a distinction without a difference." Both entities are controlled by the same person, one Mr. D'Avanzo. He was the sole witness in both the earlier proceeding and this one, and he controlled the presentation of the prior litigation and the current one.

We therefore conclude that Adrenalin Attractions, LLC and Adrenalin Technologies, LLC are in privity for purposes of res judicata because they have the same owners and the same CEO: Mr. D’Avanzo, who controls and directs the actions and interests of both entities.

All of the proceedings involved opposer's mark MYSTIC (in slightly stylized form) for casino and entertainment services. The prior proceeding involved concerned the marks MYSTIC PARKS AND RESORTS and MYSTIC CITY, whereas the current proceeding involved MYSTIC PARKS and MYSTIC CITY. The Board agreed with the opposer that the marks MYSTIC PARKS AND RESORTS and MYSTIC PARKS are legally identical [PARKS and PARKS AND RESORTS were disclaimed] because they engender the same commercial impression, mainly because the word MYSTIC is the dominant element in both marks. "The fact that the descriptive/generic terms AND RESORTS do not appear in the subsequent version would not alter that perception or otherwise create a 'new mark' in consumers’ eyes."

And, importantly, allowing a party to avert claim preclusion by simply deleting a non-source-indicating element from a subsequent mark would too easily subvert the doctrine’s dual purposes of avoiding relitigation and promoting judicial economy.

The recited services in the prior proceedings were "“amusement park and theme park services" for the MYTIC PARKS AND RESORTS mark and "amusement park and theme park services; entertainment in the nature of an amusement park ride" for the MYSTIC CITY mark. Here, the MYTIC PARK application covers "Operating of amusement park attractions, namely amusement park rides; entertainment services, namely, ticket agency services for amusement park attractions, namely amusement park rides," while the MYTIC CITY application identified "Providing amusement park facilities including a fictional location featuring an amusement park attraction in the nature of a themed area and amusement park rides."

Applicant Adrenalin argued that the services in the current applications are different from those in the prior application and registration because they are "undoubtedly more focused than the broad description of amusement park and theme park services." The Board was unimpressed. "[T]he Board’s likelihood-of-confusion determination in the prior proceeding was based on a broader identification of services, and the judgment there necessarily extends to any and all identified services under the umbrella of that broader identification."

In other words, Applicant may not avoid the preclusive effect of this prior judgment by merely providing a narrower, or “more focused,” identification of services, if those services remain encompassed by the broader identification of services and are therefore essentially legally identical.

And so, the Board found that the evidence supporting the likelihood-of-confusion claim in this case would be identical to the that supporting the likelihood-of-confusion claim in the prior proceeding.

The Board therefore sustained the oppositions, invoking res judicata.

Read comments and post your comment here.

TTABlogger comment: I think the evidence could be different in the two situations. When faced with a broad recitation of services, the attacker need show an overlap or relatedness as to only something falling within that broad scope. But that attacking evidence could be narrow as long as it fell within the broad scope. However, once the broad recitation is pared down, the attacker's narrow evidence might not overlap or be related. Am I making sense?

Text Copyright John L. Welch 2025.

TTAB Affirms 2e5 Functionality Refusal of Fire Extinguisher Pressure Gauge Configuration, Despite Applicant's Design Patent

The Board affirmed a Section 2(e)(5) functionality refusal to register the product configuration shown below, for "fire extinguishing preparations," finding that applicant's advertising and its utility patents "establish the functional benefits of Applicant's proposed mark." "The mark consists of a three-dimensional configuration of a pressure gauge placed in the center of a recess on the bottom of product packaging." In re Kronebusch Industries, LLC, Serial No. 87621232 (December 30, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Applying the ever-popular Morton-Norwich factors, the Board found that applicant's advertising "confirms that one of the main utilitarian advantages of a recessed (concave) bottom to Applicant’s fire extinguisher is to protect the gauge in rough conditions." A second advantage touted by applicant is that the recessed placement of the gauge makes it easy for an inspector to quickly determine that the extinguisher is properly pressurized.

Applicant Kronebusch's patents, which claimed the "recessed bottom portion," explain that "the design allows the fire extinguisher to sit on a flat surface such that it protects the gauge from abuse and debris and promotes ease of inspection." It also "enables storage of the apparatus on a flat surface, in a variety of vehicles, cabinets, or other storage areas where storing traditional fire extinguishers is difficult." Of course, these utility patents constituted "strong evidence" that the design is de jure functional.

The Board found the third and fourth Morton-Norwich factors to be neutral, noting as to the third that once functionality is found based on other considerations, there is no need to consider available alternative designs.

Kronebusch conceded that the pressure gauge on a fire extinguishing apparatus is functional, but it contended that here the pressure gauge configuration is not functional vis-a-vis chemical preparations. The Board was not moved, pointing out that this argument was "effectively and squarely rejected in In re Creative Edge Design Grp., 2019 TTAB LEXIS 127." There, to avoid a functionality refusal, "the applicant also argued it had applied for a packing design in connection with milk,' and not for the jug itself." The Board observed in that case:

The fact that the configuration is for packaging for milk does not remove its utilitarian aspect from the applied-for goods. The stackability feature is a utilitarian advantage whether the applied-for goods are containers for milk or milk. This advantage begins when the containers are filled with milk, and continues as the milk is distributed to and then sold at the store. In In re Mars, Inc., [Ser. No. 77545810, 2013 TTAB LEXIS 4, at *22] (TTAB 2013), the applicant applied for registration of the three-dimensional configuration of packaging for “pet food.” The Board found it to be generic, in part, because the attributes “permit[ed] stacking of containers.”

For completeness, the Board noted that applicant owns a design patent, which "appears to cover" the proposed mark. The case law says that the existence of a design patent "'presumptively . . . indicates that the design is not de jure functional.’” In re OEP Enters., Ser. No. 87345596, 2019 TTAB LEXIS 278, *20-21 (TTAB 2019) (quoting Becton, Dickinson, 675 F.3d at 1375). However, the existence of a design patent is not dispositive of non-functionality. The "'fact that a device is or was the subject of a design patent does not, without more, bestow upon said device the aura of distinctiveness or recognition as a trademark.'" Id. (quoting Becton, Dickinson, 675 F.3d at 1375)."

The Board, however, looked at the totality of the evidence, including the utility patents and applicant’s advertising, finding that "the strong and explicit evidence that the applied-for mark has utilitarian benefits rebuts any presumption of non-functionality resulting from the existence of ’673 Design Patent."

And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: It continues to be my view that the existence of a design patent should have no bearing on the issue of whether the proposed mark is functional in a trademark sense (i.e., de jure functional) because the respective standards for functionality are different. See Sarah Fackrell (Burstein), Faux Amis in Design Law, 105 TMR 1455 (2015). [pdf here].

Suppose applicant's pressure gauge was in some unique shape, like an octagon, rather than circular. Would the octagonal shape be de jure functional?

P.S. I like to use the Latin terms de jure functionality (i.e., Section 2(e)(5) and de facto functionality (mere utility), despite the USPTO's current rejection of those terms, because I think they are clear and concise.

Text Copyright John L. Welch 2025.

In 2024, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals?

By my count, in 2024 the Board issued final decisions in 66 appeals from Section 2(e)(1) mere descriptiveness refusals or from disclaimer requirements based on mere descriptiveness. The Board affirmed 58 of the refusals and reversed eight. That's an affirmance rate of about 87.9%.

Three of the opinions were deemed precedential. The Board upheld a refusal of ZPILE for metal sheet piles [TTABlogged here]. It reversed a requirement for disclaimer of the word ARCHITECT in the mark KORN FERRY ARCHITECT for human resources software and services [TTABlogged here]. And the Board affirmed a refusal of an illustration of a block puzzle game (shown below) for computer game software. [TTABlogged here]

Set out below is a bar chart showing the recent history of Section 2(e)(1) mere descriptiveness appeals. They continue to hover around 90%. Why so many failures? I suspect some or many of these doomed applications are driven by marketing types looking for an edge.

Click on image for larger picture

Read comments and post your comment here.

Text Copyright John L. Welch 2025.

In 2024, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?

The TTABlogger has once again taken a stab at estimating the percentage of Section 2(d) likelihood-of-confusion refusals that were affirmed by the Board in the past calendar year. I counted 228 decisions, of which 204 were affirmances and 24 were reversals. That's an affirmance rate of about 89.5%.

Only one of the opinions was designated precedential: an affirmance regarding the mark UPC for computer display panels, where the Board found confusion likely with the identical mark registered for charging cables and power connectors. [TTABlogged here]. Applicant Samsung argued that "something more" is necessary to prove relatedness than evidence that some monitor and television manufacturers also sell power cables. The Board, however, pointed out that the "something more" doctrine is limited to cases "where goods are used in the rendering of services and the relatedness of the goods and services is not evident, well known, or generally recognized."

Set out immediately below is a bar chart showing the somewhat sinusoidal history of Section 2(d) appeals. Given the way the cards are stacked against the applicant, it's not surprising that the percentage tends to stay near 90%. The "heavy weight" given the first DuPont factor when the involved marks are identical or nearly so, the lowering of the standard for the first factor when the goods or services are identical, the presumptions regarding channels of trade and classes of consumers, the frequent discarding of third-party registration and use evidence, the "least sophisticated purchaser" test, and the registrant's benefit-of-the-doubt often frustrate these appeals.

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Text Copyright John L. Welch 2025.

The Top Ten TTAB Decisions of 2024 (Part II)

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 (2024). This is the second of two posts; the first five (5) selections are posted here. Additional commentary on each case may be found at the linked TTABlog post.

Laverne John Andrusiek v. Cosmic Crusaders LLC and Lewis J. Davidson, 2024 USPQ2d 21 (TTAB 2024) [redesignated as precedential January 3, 2024] (Opinion by Judge Frances Wolfson) [TTABlogged here]. The Board granted a petition for cancellation of a registration for the mark CAPTAIN CANNABIS for comic books, on the ground of likelihood of confusion with Petitioner Andrusiek’s identical mark, for which he claimed prior use for comic books. Andrusiek’s “actual” trademark use on comic books did not begin until 2017, but from 2006 he used the term as the name of a character, which the Board accepted as use analogous to trademark use. The question, then, was whether Andrusiek made technical trademark use (or “actual use,” as the Board put it) of the CAPTAIN CANNABIS mark within a reasonable time after his analogous use. Andrusiek submitted evidence of such technical trademark use from 2016 and 2017, including displays of comic book covers on Amazon.com, on YouTube, and in other media. The Board found that “Petitioner’s actual trademark use in 2017 was within a commercially reasonable period of time following his analogous use in 2013-14 so as to create a ‘continuing association of the mark’ with Petitioner’s goods.” Viewing the evidence as a whole, “as if each piece of evidence were part of a puzzle,” the Board found that “when fitted together,” the puzzle pieces established prior use by Andrusiek.]

In re Samsung Display Co., Ltd., 2024 USPQ2d 1279 (TTAB 2024) [precedential] (Opinion by Judge Robert H. Coggins) [TTABlogged here]. The Board affirmed a refusal to register the mark UPC for, inter alia, display panels as components of computers and smart phones, finding confusion likely with the identical mark registered for charging cables and power connectors. Applicant Samsung argued that, to show relatedness of the goods, “something more” is required than the mere fact that some third-party manufacturers sell both types of goods. The Board was not impressed. The Board found that “the goods are related because they are each incorporated and used in the same finished electronic products.” As to Samsung’s “something more” argument, the Board pointed out that the two cases relied on by Samsung – Coors Brewing and St. Helena Hospital – involved the relatedness of goods and services, thus “limiting the requirement for ‘something more’ to circumstances where goods are used in the rendering of services and the relatedness of the goods and services is not evident, well known, or generally recognized.” Coors Brewing involved beer and restaurant services, while St. Helena Hospital concerned hospital-based lifestyle programs and printed materials dealing with fitness. Although some purchasers of the involved goods here may be sophisticated, others are not – such as hobbyists and gamers who build or repair their own electronic devices – and there was no evidence that these ordinary consumers would exercise more than ordinary care.

State Permits, Inc. v. Fieldvine, Inc., 2024 USPQ2d 1458 (TTAB 2024) [precedential] (Opinion by Judge Thomas W. Wellington) [TTABlogged here]. In a “somewhat unusual” Section 2(d) cancellation proceeding targeting a Supplemental Register registration and involving “dueling claims of acquired distinctiveness,” the Board granted a petition for cancellation of Fieldvine, Inc.’s registration for the mark PERMITS.COM for construction permit services. Although Petitioner State Permits, Inc. could not prove acquired distinctiveness for its mark PERMIT.COM, it did prove first use for identical services, and that was enough. Unlike in a challenge to a registration on the Principal Register, where the challenger must prove prior proprietary rights in its mark, if the challenged registration resides on the Supplemental Register and covers a descriptive term that lacks acquired distinctiveness, a prior user of a confusingly similar term may succeed in cancelling that registration even without establishing acquired distinctiveness for its own mark. As the CAFC observed in Books on Tape, it would be an "anomalous result" if, "in view of our finding of a likelihood of confusion, Respondent is permitted to keep its Supplemental Register registration for PERMITS.COM, in the absence of a showing of acquired distinctiveness and in the face of Petitioner’s prior use of PERMIT.COM.”

Alfred Sarmento v. Maria Manuela Pinho DE Carvalho, 2024 USPQ2d 1683 (TTAB 2024) [precedential]. [TTABlogged here]. In this opposition to registration of the mark VICE REI for “Wine; Spirits; Liqueurs; Anise liqueur,” the Board denied opposer’s motion for partial summary judgment grounded on non-ownership of the mark on which applicant’s international registration was based. The World Intellectual Property Organization (WIPO) had cancelled the international registration after the Portuguese Trademark Office ruled that the applicant did not own the mark. Nevertheless, the Board gave its blessing to the transformation of the United States request for extension of protection into a national application with a Section 1(b) intent-to-use basis. The Board observed that applicant properly followed the procedures for transformation under Section 70(c) of the Trademark Act, and it then held that Sarmento’s contention that the mark was improperly transformed “cannot form the basis of an inter partes challenge to the registrability of the mark.” “Processing a request for transformation is a ministerial act, and there is no substantive examination of the document(s) or the permissibility of the circumstances that prompted the request for transformation.” Furthermore, opposer’s non-ownership claim was meritless because the challenged application is based on intent-to-use, and there is no statutory requirement that a Section 1(b) applicant be the owner of the mark at the time of filing.

Iron Balls International Ltd. v. Bull Creek Brewing, LLC, 2024 USPQ2d 1004 (TTAB 2024) [precedential] (Opinion by Judge David K. Heasley). [TTABlogged here]. Attempting to side-step a Section 2(d) refusal of the mark shown below, for “gin,” Iron Balls petitioned to restrict Respondent Bull Creek’s registration for the mark IRON BALLS for “beer” to “micro-brewed craft beer.” The Board found that the proposed restriction would not avoid a likelihood of confusion, and so it denied the petition. Under Section 18 of the Trademark Act, “[a] party seeking to restrict a registrant’s broadly worded identification of goods under Section 18 must plead and prove ‘(1) that the registrant is not using its mark on goods or services that would be excluded by the limitation, and (2) that the limitation would result in the avoidance of a finding of a likelihood of confusion.’” As to the first requirement, the Board found it significant that Bull Creek represented itself as a “craft brewery” and displayed the “Independent Craft Brewer Seal” on its labels, and so it concluded that relevant purchasers would see respondent as a “brewer with a limited, small batch output” and would consider it to be a “craft microbrewery” and its goods “micro-brewed craft beer.” However, as to the second requirement, “even if Respondent’s goods could be characterized as ‘micro-brewed craft beer,’ and even if its identification of goods were so restricted, the restriction would not avoid a likelihood of confusion.”

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Text Copyright John L. Welch 2025.