Here is a guest blog post by Thomas A. Reichert , Assistant Professor of Law at Simmons Law School, Southern Illinois University, in Carbondale, Illinois. The Board's recent decision on remand in the Apex Bank case [ TTABlogged here ] led to Professor Reichert's observations on the changing role of the sixth DuPont factor in the Board's Section 2(d) analysis. The Board Changes Its Mind Without…
The USPTO refused to register the proposed mark ROUNDS , finding it to be merely descriptive of "cigars" under Section 2(e)(1). Applicant Kretek argued that the Board should ignore Kretek's registration for CUBAN ROUNDS, in which it relied on Section 2(f) with regard to the word ROUNDS, and further contended that ROUNDS is a double entendre. No cigar, said the Board. In re Kretek International,…
The Board affirmed a refusal to register, on the Supplemental Register, the proposed mark PULSE DECOMPOSITION ANALYSIS , finding it to be generic for patient monitors and patient sensors for monitoring and measuring physiological parameters. Applicant CareTaker Medical argued that the proposed mark identifies a method or function by which the sensors and monitors measure blood pressure, not the…
TTAB affirmances of Section 2(d) refusals are running at about 84% so far this year, appreciably below the usual 90%. Here are three appeals decided last week. How do you think they came out? [Answer in first comment]. In re Happy Ears Hearing Center, LLC , Serial No. 97036010 (August 6, 2026) [not precedential] (Opinion by Judge George C. Pologeorgis) [Section 2(d) refusal of the mark HAPPY EARS…
Professor J. Thomas Mc Carthy has given me permission to post the following comments on the TTAB's treatment of the issue of dilution. His comments stem from the Ninth Circuit's recent decision in the BAD SPANIELS case [ TTABlogged here ], in which the appellate court vacated the permanent injunction issued by the Arizona district court, based on dilution by tarnishment, and remanded the case for…
The USPTO refused to register the mark THE SKIN MIXOLOGY for various non-medicated skin care preparations, not including "custom-blended aromatherapy creams, lotions, oils, massage oils, or exfoliating body scrubs" [SKIN disclaimed], deeming confusion likely with the registered mark MIXOLOGY for "Custom-blended aromatherapy bath and body products, namely, creams, lotions, oils, massage oil,…
In the latest chapter of the long-running BAD SPANIELS case, the U.S. Court of Appeals for the Ninth Circuit has vacated the permanent injunction issued by the Arizona district court, based on dilution by tarnishment, and has remanded the case for entry of judment in favor of VIP Products. The appellate court ruled that "[t]he district court erred in concluding that JDPI met that burden and that…
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…
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…
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…
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.…
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…
The USPTO refused to register the mark M USEUM 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…
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…
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 ,…
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…
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…
In a rare Section 2(e)(2) inter partes proceeding, the Board sustained an opposition to registration of the mark SERVICE WEST (in standard character form), finding it to be primarily geographically descriptive of applicant's services of "Installation, maintenance and repair of furniture, architectural walls and portable trade show booths,” in International Class 37, and “Transportation and storage…
The Board upheld a reexamination decision cancelling a registration for the mark DISCUSS.IO for streaming services and SAAS market research services, on the ground that the registrant had failed to use the mark prior to the filing date of its underlying use-based application. The Board tossed aside registrant's claim that it was "unclear" that rendering of the services was required, rather than…
On remand from the CAFC, the Board dismissed this opposition to registration of ASPIRE BANK & Design (in three similar forms) for "banking and financing services" (BANK disclaimed), concluding that confusion is unlikely with the registered mark ASPIRE for "credit card services." In May 2023, the Board had sustained the opposition [pdf here ], but in September 2025 the CAFC vacated and remanded the…
In this Section 2(d) opposition, Opposer NameGürok alleged that Applicant TGL Golf's mark shown first below, is likely to cause confusion with its two registered marks shown second below, all for, inter alia , drinking glasses. Since the goods overlap, the Board presumed that these goods travel in the same channels of trade to the same classes of consumers, and it found that the goods are…
The Board upheld a refusal to register the proposed mark EGGBAR for "restaurant services featuring breakfast sandwiches, hash browns, coffee, matcha, and fruit drinks," finding the mark to be merely descriptive of the services. Applicant argued that EGGBAR is an incongruous combination of terms because "[w]hen consumers encounter the term 'BAR,' their immediate association is with alcohol service,…
The Board granted a petition for cancellation of a registration for the mark FLASHIN' ASSASSIN for, inter alia , fishing lures, concluding that confusion is likely with the registered mark ASSASSIN for inter alia , fishing lures. With the goods overlapping in-part and the channels of trade and classes of customers presumed to be the same for the overlapping goods, it all boiled down to the marks,…
Applicant Matthew Sinnerich applied to register the mark shown below, for "Hats; Pants; Shirts; Shorts; Socks; Collared shirts; Polo shirts; T-shirts; Tops as clothing," but Examining Attorney Catherine Lee concluded the confusion was likely with the registered mark BLANCO LABEL for "Clothing, Namely, Shirts, Pants, Sweatpants, Jeans, Sweatshirts, Bandanas, Hats, Shoes, Sox, Vests, Sweaters,…
For the past decade, about 90% of Section 2(d) refusals have been affirmed on appeal. A TTAB Judge (now retired) once said to me that one can predict the outcome of a Section 2(d) appeal 95% of the time just by considering the marks and the goods/services. [Apparently, if you just say "affirmed," you will be right 90% of the time. It's the other 5% that's the challenging part.] Here are three…