The following is a summary of select, precedential decisions issued by the U.S. Trademark Trial and Appeal Board in fiscal year 2026 (i.e., October 1, 2025 through September 30, 2026) regarding ex parte appeal and trademark opposition proceedings.

A. Ex parte proceedings

  1. In re Jiminez: No. 97551823, 2025 WL 3126703 (Nov. 5, 2025)

Issue: Likelihood of Confusion under Section 2(d)

Background: Jason Jimenez (“Applicant”) sought to register on the Principal Register pursuant to Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f) GASPER ROOFING (with “roofing” disclaimed) for roofing services in International Class 37.  The Examiner issued a final refusal to register based on, inter alia, that the mark was likely to cause confusion with the registered Mark JASPER CONTRACTORS (“contractors” disclaimed) for “Roofing services” in International Class 37.

 Holding: Board reversed the Section 2(d) refusal of GASPER ROOFING.

The Board recognized the long-standing principles that key considerations in a Section 2(d) refusal are (a) similarity of the marks in sight, sound, meaning, and commercial impressions; and (b) the relatedness of the parties’ goods or services.  Here, the Board found that there were no recognized pronunciations of “Gasper” and the Examining Attorney merely speculated, without evidentiary support, that “jasper” and “Gasper” are pronounced the same.  In addition, ROOFING and CONTRACTORS, albeit disclaimed, further contributed to differences in sound and appearance. The presence of the words ROOFING and CONTRACTORS in the respective marks also had differences in connotation and commercial impression when the marks were considered in their entireties.  Moreover, purchasers of roofing products, since they are expensive, generally exercise greater care in purchasing decisions, making confusion less likely.

Practice Tip: the determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”).  The likelihood of confusion analysis can be applied only to the DuPont factors for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019).

2. In re Everson: No. 97104306, 2026 WL 906530 (Mar. 31, 2026)

Issue: Failure to function as a trademark

The Trademark Examining Attorney refused registration of Applicant’s proposed mark on the Supplemental Register under (i) Trademark Act Sections 23(c) on the ground that the proposed mark was a functional design for the identified goods.

Holding: The Board affirmed the refusal to register Applicant’s proposed mark (consisting of a pancake cut into eight equal wedges) under Trademark Act Section 23(c) on the ground that it is a functional design for the identified goods.

Key findings: Functional matter cannot serve as an indicator of source for goods, i.e., a trademark. Qualitex v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995).  Matter is functional “‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article,’ that is, if exclusive use of the feature would put competitors at a significant…related disadvantage.” Qualitex, 514 U.S. at 165 (internal citation omitted).  The Board’s analysis was based on application of the functionality-test factors set forth in the matter of In re Morton-Norwich Prods., Inc., 671 F.2d 1332 (CCPA 1982), referred to as the “Morton-Norwich factors.”

Practice tip: Applicants should be careful to ensure that their own marketing materials do not support the Examiner’s arguments for refusal.  Here, the Applicant’s marketing materials and statements touted the product design’s utilitarian advantages, namely, facilitating more convenient serving, sharing, and transporting of a pancake.  The same tip would apply to Applicants who argue that their mark is not generic or merely descriptive in response to a refusal. In other words, Applicants should carefully review their marketing materials, as such evidence could be potentially held against them.

3. In re Textnow Inc.: No. 98231457, 2026 WL 1920576 (June 23, 2026)

Issue: Relying on Section 8 grace period for a Section 44(e) Registration to rely on the prior registered Mark as a basis for the newly filed Mark.

Background: Applicant applied to register the standard-character mark TOUCH MOBILE (with “Mobile” disclaimed), for inter alia, telecommunications goods and services in Classes 9 and 38.  The Examining Attorney issued a partial refusal of registration as to Classes 9 and 38 on two grounds. First, Applicant’s mark TOUCH MOBILE, as applied to the goods in Class 9 and the services in Class 38, is likely to cause confusion under Section 2(d) of the Trademark Act with five marks on the Principal Register, including MOBILE TOUCH in standard characters (with MOBILE disclaimed) for “text and numeric wireless digital messaging services…” in Class 38. Applicant argued that ownership of its prior registration of TOUCH MOBILE for identical goods and services (which registration was administratively cancelled after Applicant filed its current application) weighed against a likelihood of confusion in this case.  Applicant’s Prior Registration issued on October 17, 2017 under Section 44(e) and was cancelled for failure to file the required Section 8 Declaration. 
Holding: The Board affirmed the refusal to register Applicant’s TOUCH MOBILE Mark based on a likelihood of confusion under with MOBILE TOUCH under Section 2(d).  In affirming the refusal to register, the Board concluded that Applicant’s and Registrant’s marks were highly similar and Applicant’s services in Class 38 were legally identical in part to the cited registration’s services, and the trade channels and classes of consumers were presumed identical. All these factors weighed in favor of a likelihood of confusion.  In addition, the Board found that Applicant’s application did not overlap with the term of its prior registration.  The Board emphasized the Federal Circuit’s instruction that “the PTO’s allowance of . . . prior registrations does not bind the Board or this court.” In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001). 

4.  In Re Ralphs Famous Italian Ices Franchise Corp.: No. 90302728, 2026 WL 1920835 (June 25, 2026))

Issue: failure to function (mere ornamentation), inherent distinctiveness, and acquired distinctiveness

Background:  Ralph’s Famous Italian Ices Franchise Corp. (Applicant) sought registration on thePrincipal Register of the following proposed mark for a wide variety of beverages and confectionsin Classes 29, 30, 32, and 33; franchising and restaurant management assistance in Class 35; and restaurant services in Class 43:

The Examiner had refused registration as to all identified classes of goods and services, as the proposed mark fails to function as a trademark and service mark under Sections 1, 2, 33 & 45 of the Trademark Act, and because it constitutes ornamental matter that is not inherently distinctive and Applicant failed to prove its claim, which it made in the alternative, of acquired distinctiveness under Section 2(f) of the Trademark Act.   Additional items were also addressed, including the Class 35 specimen and description of the Mark.

Holding: The Board affirmed the refusal to register the proposed mark as to all goods and services because (i) the evidence shows that it was ornamental matter that was not inherently distinctive and (ii) Applicant had failed to prove its alternative claim that it has acquired distinctiveness.

  • Inherent distinctiveness.  The Board noted that product packaging trade dress may qualify as inherently distinctive, depending on the evidence. Here, the Board adopted the test found in In re Fantasia Distrib., Inc., No. 86185623, 2016 WL 5866950 (TTAB 2016), for a design constituting a repeating ornamental pattern on goods: (a) the nature of Applicant’s goods and whether there is an industry practice of ornamenting such goods; (b) the nature of the pattern, including whether any element of the pattern might be perceived as source indicating if it were standing alone; (c) how common the pattern is, whether it is composed of common or unusual repeating shapes, whether such shapes repeat in a common or unusual manner, and whether the overall pattern is similar to, or a mere refinement or variation of, a common and well-known form of ornamentation; (d) the manner in which the repeating pattern appears on the product, including the size and location of the pattern on the product and how much of the product is covered by the pattern; and (e) whether the pattern creates a distinct commercial impression apart from any accompanying wording and design elements.

In applying the Fantasia test to each of the Applicant’s identification of goods and services, the Board found (with the help of an extensive record of third-party evidence) that the evidence overwhelmingly showed that blue & white stripes, and alternating color stripes generally, are a basic and common type of ornamentation used in connection with ice creams and frozen confections and restaurants generally.  In addition, the evidence concluded that many other vendors of these products use vertical stripes of other alternating pairs of colors or multiple colors.  In summary, the Board concluded that as to each of the classes of goods and services identified in the application, that consumers would perceive the proposed mark as mere ornamentation.

  • Acquired distinctiveness.   The Board also concluded that Applicant’s Mark, despite extensive evidence of sales, advertising, and related evidence, failed to show that its Mark had acquired distinctiveness.  Proving a claim of acquired distinctiveness under Section 2(f) requires not only evidence of an applicant’s “substantially exclusive and continuous use” of the mark in sales and advertising—i.e., its efforts to educate the public to associate the proposed mark with a single source, but also the effectiveness or success of those efforts.  Applicant’s evidence did not establish this fact.  The Board further stated that even if Applicant had made concerted efforts to educate consumers to regard the stripe pattern as uniquely indicating Applicant’s goods and services, the plethora of third-party uses of blue & white or similar stripes in connection with the same goods and services “presents a nearly insurmountable hurdle for any such effort succeed” since the evidence showed that Applicant’s use had not been substantially exclusive.

Practice tip.  If your client has many arguments to overcome in an ex parte appeal, it is best to inform the client of the percentage chances of success based on the nature of the refusal.  For example, Section 2(d) and Section 2(e) refusals are upheld approximately 85%-93% of the time, depending on the statistical source.

B. Inter Partes Decisions

1.   August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA No. 91277224, 2025 WL 4107480 (Nov. 14, 2025: non-precedential) (redesignated precedential January 27, 2026).

Issue: doctrine of foreign equivalents and likelihood of confusion

Background: Applicant sought registration of the following mark for chocolates in Class 30:

that included a statement that the English translation of “danke” is “thank you.”   Opposer, the owner of the Mark “MERCI” and derivative “MERCI” marks for chocolates and related goods in Class 30, including MERCI (in standard characters).  The application was opposed on the grounds of priority and likelihood of confusion under Section 2(d). 

Holding: Generally, the Board applies the doctrine of foreign equivalents when one mark is in the English language and the other is in a foreign language for purposes of determining likelihood of confusion.  There are times, however, when the Board has applied the doctrine where the two marks are from different foreign languages.   Under the doctrine of foreign equivalents, foreign words used as a mark are translated into English and then tested for likelihood of confusion. In re Vetements Grp. AG, 137 F.4th 1317, 1325 (Fed. Cir. 2025). Here, the Board concluded that based on the evidence of record, an appreciable number of U.S. purchasers are capable, without assistance, to translate MERCI and DANKE to mean “thank you” as they are common expressions.   Given the differences in sound and appearance and the differences in commercial impression, this outweighed the respective marks’ identical meaning. In Re Sarkli, Ltd., 721 F.2d 353 (Fed. Cir. 1983).

The Board noted the Mark “Thank You” to be conceptually weak for chocolates, as consumers would perceive the theme of saying “thank you” in connection with the goods (as a “thank you” gift), rather than to identify a unique source.  Opposer also damaged its own cause as it used “thank you” in various descriptive, non-trademark slogans including, “Thank you means merci”; “the sweetest way to say thank you”; “Nothing says thank you like Merci”; and “This holiday season say thank you with Merci.”

Practice tip: the Board reminded the parties that search summaries in the nature of listings of third-party websites have limited probative value because they are not the websites themselves and the information is truncated. Applicant’s evidence here, however, was slightly different as it consisted of image search results which were more probative than a typical search summary because they (i) included product images from which the Board could ascertain the nature of the uses, ii) identified the names of retailers, and (iii) in some instances reflected that the chocolate was for sale (e.g., “in stock”).

2. Olsman, Mackenzie, Peacock & Wallace, P.C. v. Thomas No. 91272167, 2026 WL 2884462 (Sept. 10, 2026)

Issue: non-ownership of Mark

Background: Applicant, an attorney who specialized in birth injury matters, sought registration of the Mark

(with “BIRTH JUSTICE” disclaimed) for “legal services, namely, providing legal consultation and research services, and litigation assistance and strategy services relating to birth injury,” in International Class 45. The Opposer, a law firm, opposed registration on the grounds of non-ownership, fraud based on non-ownership and an incorrect domicile address, and likelihood of confusion under Trademark Act Section 2(d) based on Opposer’s prior use of essentially the same Mark at common law.  Opposer also pleaded ownership of a trademark application for its BIRTH JUSTICE and Design Mark for “legal services,” in International Class 45.  Applicant was employed by Opposer’s law firm at the time she filed the Application and as of the application’s first use date. Applicant testified that before leaving her old firm and joining Opposer, she informed Opposer  that she was developing a “Birth Justice” brand for her birth‑injury practice. Opposer’s application was based on use in commerce was filed on October 6, 2021, alleging August 10, 2018 as the date of first use anywhere and “October 2018” as the date of first use in commerce.

Applicant filed on December 16, 2020, based upon an allegation of use of the mark in commerce under Section 1(a), alleging February 25, 2019 as the date of first use anywhere and first use in commerce.  The Applicant was a former employee of the Firm at the time she filed the application.  Applicant used the firm’s mailing address in filing, and then updated her correspondence a month later to reflect her personal mailing address.  Moreover, Applicant was still employed by Opposer as of the alleged first use date contained in her application.  A birthjustice.com domain name redirected to Applicant’s biography page on Opposer’s website.  In her Trial Brief, Applicant argued that she granted Opposer an oral or implied license to use the BIRTH JUSTICE Mark. Since this was not pleaded as an affirmative defense and first raised after trial, it was not considered.

Holding: The question before the Board was whether Applicant, in her individual capacity, owned the Birth Justice Logo for the identified services as of the December 16, 2020 application filing date. It is well settled that only the owner of a mark may file for registration.  And merely designing or inventing a symbol does not create trademark rights but rather use in commerce. The Board held that based on the totality of facts, there was no doubt that Applicant was acting in the scope of her employment with Opposer at the time she participated in the development of the Birth Justice logo and as of the date of first use of the Mark while she was still employed by Opposer.  Applicant’s first use was at a law conference where Applicant handed out business cards with the BIRTH JUSTICE Mark that included Applicant’s name and the name of Opposer’s law firm as well as the firm’s address and website information. Accordingly, this use was held to create a sufficient association between Opposer and the Mark in the minds of consumers, not Applicant.

For further information about trademark opposition proceedings, see here.

The Hook ’em Horns of the University of Texas earned a big win in a recent trademark opposition proceeding.  This is an interesting sports trademark case.

The case, the Board of Regents of the University of Texas v. Kendall A. Beaver, was brought by UT against the owner of the following trademark application:

Trademark image

The Applicant’s application “(the downward hand design mark”) was for a variety of promotional merchandise.  This included decals in Class 16; apparel items in Class 25; and toy foam novelty items in Class 28.   The Application was based on an intent to use in commerce.

UT relied on its Reg. No. 4535612 of its Upward Hand Design Mark featured here:

Trademark image

UT’s goods included decals in Class 16; and t-shirts and shirts in Class 25.  The notice of opposition grounds included a likelihood of confusion, false suggestion of a connection, and dilution.  The complaint was thereafter amended to withdraw the dilution grounds and to add a count for lack of bona fide intent to use the mark on the applied for goods.

Applicant’s infraction.   Unfortunately for Applicant, it committed a trademark rules infraction that resulted in a severe penalty:

In Board proceedings, all parties must take and introduce its testimony during its trial testimony period.  The Applicant failed to do so here.  Instead, it attached evidentiary exhibits to its Brief submitted after its Trial Testimony period had ended.

The Trademark Trial and Appeal Board showed no mercy, and strictly applied its TTAB rules to the case.  The Applicant had ample opportunity during its Trial Testimony Period to submit declarations, notices of reliance, and other forms of admissible evidence in support of its case.  For the Board, Applicant’s failure to do could not result in a replay or looking the other way.  Accordingly, the Board granted Opposer’s motion to strike the exhibits as untimely evidence.  Furthermore, since the Applicant failed to submit any evidence during trial, any factual assertions in Applicant’s brief were not considered.

Opposer’s evidence.  The University of Texas properly submitted evidence and testimony to support all of its claims, which was recognized by the Board.   For each of the claims, Opposer, like all opposers in opposition proceedings before the Board, had the burden to present a prima facie case.   The Board found it did so here.  And while Applicant’s have the opportunity to rebut an Opposer’s initial showing, the Applicant here could not do so based on its rules infraction.  In the end, the Board ruled in Opposer’s favor, and refused Applicant’s registration.

Editor’s Note:  The Applicant represented herself, and was apparently neither an attorney nor versed in TTAB rules of practice.   The Trademark Board Manual of Procedure provides the basis for how to litigate or defend a trademark opposition. All applicants and their attorneys are encouraged to follow it.   We discuss other helpful hints in an earlier article that may be found here.

A trademark registration for the mark PROHEAR for audio headphones and related goods has been cancelled based on a likelihood of confusion with the mark PROTEAR for similar goods.   The trademark cancellation proceeding was filed and decided before the U.S. Trademark Trial and Appeal Board.

The case, Hangzhou Zhaohu Technology Co., Ltd. v. Hangzhou Johnson Tech Co., Ltd,, presented facts that are commonly found in cancellation proceedings based on a likelihood of confusion.  In such cases, the Petitioner bears the burden of proving a likelihood of confusion based on a preponderance of the evidence.

A summary of the TTAB’s decision is outlined below:

Priority.  In any trademark cancellation proceeding based on likelihood of confusion, the Petitioner has to establish its prior trademark rights in the form of a trademark registration or common law use that predates the Respondent’s first use.  Here, the Petitioner’s application for its PROTEAR Mark was December 9, 2016.   Respondent’s application for its PROHEAR Mark was filed on August 30, 2018.  Respondent had offered no evidence of prior common law use.  This factor was resolved in Petitioner’s favor.

Statutory right to bring a cause of action.  To maintain its case, a Petitioner has to show that it has a legitimate interest in the outcome of the proceeding and is not a mere intermeddler.  Here, Petitioner was able to do so by the introduction into evidence of its prior registration of the PROTEAR Mark for similar goods.

The likelihood of confusion analysis includes the following factors:

Similarity of the Marks.  The first step in a likelihood of confusion analysis is whether the parties’ respective marks are similar in sight, sound, meaning, and commercial impression.  The petitioner’s Mark is PROTEAR; the Respondent’s Mark is PROHEAR.   Since the marks are identical with the exception of one letter, this factor weighed in Petitioner’s favor.

Relatedness of the Goods.  While both parties’ trademark registrations contained many goods listed in their respective registrations, certain of the goods were either legally identical or highly related, such as Petitioner’s headphones and Respondent’s audio headphones.  When two registrations share one or more goods that are in part identical, then the likelihood of confusion analysis for this factor will favor the Petitioner.

Relatedness of trade channels.   Here, the goods are in part identical and the registrations unrestricted with regard to trade channels. Accordingly, it is presumed as a matter of law that the goods of the respective parties travel in the same trade channels and are marketed to the same potential consumers.  This factor weighed in Petitioner’s favor.

Actual confusion.  Evidence of actual confusion is probative of likelihood of confusion.  While the Petitioner submitted evidence of alleged actual confusion, the Board did not find it conclusive.  Therefore, this factor was neutral.

The Board’s decision.  The petitioner successfully established its statutory right to bring a cause of action and priority.  These two elements of its case were necessary to proceed with the likelihood of confusion analysis.   With regard to the likelihood of confusion analysis, since the goods were identical in part, the similarity of the marks necessary to support a likelihood of confusion need not be as great.   Regardless, the Board found here that the PROTEAR and PROHEAR Marks were similar in sight, sound, appearance, connotation, and commercial impression.  Accordingly, judgment entered in favor of Petitioner, and the Respondent’s registration was cancelled.

Editor’s Note:  a summary of the likelihood of confusion factors, which is applicable to both trademark cancellation and trademark opposition proceedings, may be found in our post here.

A recent trademark opposition is a lesson in how to properly establish a likelihood of confusion for apparel goods.

In Roots Corporation v. Colorful Roots LLC, the Opposer, Roots Corporation, relied on several of its trademark registrations of ROOTS and its derivatives.  The “Roots” Marks, for various apparel items and related accessories in Class 25, included ROOTS, BABY ROOTS, ROOTS KIDS, and ROOTS ATHLETICS.   The Opposer also claimed common law rights in ROOTS and other ROOTS-formative marks. The Applicant, Colorful Roots LLC, applied for the mark COLORFUL ROOTS for “clothing, namely, shirts and hats” in International Class 25.

Opposer made of record its four ROOTS trademark registrations as well as the testimony declaration of its Chief eCommerce Officer.   Applicant introduced the testimony declaration of its owner.

In ruling for the Opposer, the Board made the following observations and findings:

  1.  Entitlement to statutory cause of action.   In every opposition, the Opposer must first demonstrate its entitlement to a statutory cause of action.   This is done by showing a real interest in the proceeding and a reasonable belief of damage. An opposer need not prove actual damage.   By introducing status copies of its pleaded trademark registrations, Roots Corporation sufficiently met the criteria.
  2.  Priority.   This is shown by having an earlier effective rights date, either by common law use or as here, registrations that were made of record that pre-dated Applicant’s claimed date of first use of its mark in commerce.  Because Opposer’s registrations were in the record, and Applicant did not counterclaim to cancel any of them, priority was not an issue.
  3.  Likelihood of confusion.   An analysis of likelihood of confusion is based on the all the probative facts in evidence.  In doing so, the Board relies of the factors set forth in E.I. du Pont de Nemours & Co. (CCPA 1973) (the “du Pont Factors”).  In any likelihood of confusion analysis, two key considerations are the similarities between the goods and services and the similarities between the marks.   The Board proceeded to analyze the similarity between Roots Corporation’s ROOTS trademark (Reg. No. 1815620) because this mark and the associated goods are most similar to Applicant’s mark and goods.
  • (a) similarity of the marks.  In comparing marks, the Board considers their appearance, sound, connotation, and commercial impression.  In comparing the similarity between marks, the ultimate conclusion rests on an analysis of the marks in their entireties.  That being said, it is proper to give more weight to a particular feature of a mark.  In addition, where the goods of both parties are identical in part, this reduces the degree of similarity that it necessary as to the marks.   Here, the Board concluded that  the marks are similar since Applicant’s COLORFUL ROOTS Mark encompasses the entirety of Opposer’s ROOTS Mark,  and given that “Roots” is arbitrary when used in connection with clothing.
  • (b)  Relatedness of the goods.   In assessing this factor, the Board looks to the goods as identified in Applicant’s application and the Opposer’s registration.  Here, since the goods are in-part legally identical and without restriction as to channels of trade, there is a presumption that the the parties’ trade channels and classes of purchasers are the same.
  • (c)  Actual confusion.    The issue of actual confusion goes towards the seventh DuPont factor (the “nature and extent of any actual confusion”) and the eighth DuPont factor, the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.”   The Applicant testified that there have been no instances of actual confusion since it first started selling its COLORFUL ROOTS goods in 2015.  It also had approximately 1,300 visitors to its website in 2020 and grossed approximately $83,000 in sales.  The Board ruled that absence of any reported confusion is not meaningful here, as such facts are only probative if the record indicates appreciable and continuous use by Applicant of its mark for a significant period in the same markets served by Opposer.  Based on Applicant’s relatively small sales and website visitors, there was no meaningful opportunity for confusion to occur.

Holding:  Based on all the applicable factors, the Board held a likelihood of confusion to exist such that judgment entered in Opposer’s favor and the Applicant’s COLORFUL ROOTS application was refused registration.

Editor’s Note:   The Board does not always find a likelihood of confusion for apparel trademarks, especially when the marks are dissimilar in appearance.  See discussion here.

Non profit trademark owners can be protective about their brand names, too.

Competing Alzheimer’s foundations recently battled it out in a trademark opposition before the Board.  In the end, the Board was more charitable to the Opposer, ruling in its favor on its likelihood of confusion claim.

Background.  In Alzheimer’s Disease and Related Disorders Association, Inc. v. Alzheimer’s New Jersey, the Applicant sought to register the design composite mark ALZHEIMER’S NEW JERSEY WALK TO FIGHT ALZHEIMER’S.  The services were for a wide variety of charitable foundation and fundraising in International Class 36.  Opposer took issue with Applicant’s mark, and filed a notice of opposition.   As the Board indicated,

For thirty years between 1985 and 2015, Opposer and Applicant were affiliated, and since 1998 the parties’ relationship was governed by a Statement of Relationship which granted to Applicant a non-exclusive license to use Opposer’s trademarks

The Opposer relied on its prior rights and registration for the word-mark WALK TO END ALZHEIMER’S  (with “WALK” and “ALZHEIMER’S disclaimed) for charitable foundation and related services in International Class 36.   In addition, the Opposer also relied on an application for unregistered, common law trademark rights in and to the composite design mark  WALK TO END ALZHEIMER’S (with the words ALZHEIMER’S ASSOCIATION) in smaller font.  The Opposer had disclaimed “WALK,” “ALZHEIMER’S,” and “ASSOCIATION.”

In its answer, the Applicant denied the allegations, arguing that the claims were barred under the prior registration defense, also known as the Morehouse defense.  Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969).  The Applicant based its defense on ownership of the following registered marks:

  • Reg. No. 5053635 of the mark WALK TO FIGHT ALZHEIMER’S (with “WALK” and “ALZHEIMER’S” disclaimed) for charitable fundraising services in International Class 36; and
  • Reg No. 5373234 of the composite design mark ALZHEIMER’S NEW JERSEY, the depiction of the state of New Jersey, and WALK TO FIGHT ALZHEIMER’S with a sneakers design (with all of the foregoing disclaimed of the words “to fight” and the sneakers design).  The mark, like the others, was for charitable fundraising services in International Class 36.

The issues presented before the Board were (a) whether Opposer had established that Applicant’s Mark is likely to cause confusion with Opposer’s Marks; (b) whether Opposer had established that Applicant’s Mark was likely to dilute Opposer’s Marks; and (c) whether the Applicant’s Morehouse defense warranted dismissal of the Opposition.

Analysis.   Below is a summary of the main issues that the Board addressed.

  • Standing.   In any proceeding before the Board, an Opposer must establish its entitlement to a statutory cause of action.  This concept is formerly known as “standing.”  To do so, the Opposer must show that its opposition is within the zone of interests protected by 15 U.S.C. Section 1063, and that is has a reasonable belief that it will be damaged by registration.   Standing is a low threshold before the Board.  Here, since Opposer is relying on its own valid trademark registrations as a basis for the opposition, it has met its burden that is has a legitimate interest to oppose the Applicant’s trademark application.
  • Morehouse Defense.   The Morehouse defense, also known as the prior registration defense, is an equitable defense that can be invoked by an Applicant.  It applies where an Applicant owns a prior registration for the same or substantially identical mark for the same mark and substantially similar goods or services for which is it now applying.  In theory, this defense can be successful since there already exists a registration that would damage Opposer.  In other words, allowing the later-filed application of the Applicant to issue would not add to Opposer’s injury.   Here, the Board did not accept Applicant’s defense as for it to be applicable it requires that the Plaintiff not be able to cancel the prior registration.  Since here, the prior registration is less than five years old, the Opposer still has the ability to procure trademark cancellation of the mark under Section 2(d) of the Trademark Act.

Likelihood of Confusion.  In any Section 2(d) case, the Opposer must establish priority rights and a likelihood of confusion.  Priority rights can be established by introducing into evidence of a prior trademark registration, prior use as a trade name or common law rights that predate the Applicant’s rights.  Finally, priority can also be established through evidence of use analogous to trademark use.  In this case, Applicant did not challenge Opposer’s priority.   With regard to likelihood of confusion, any one factor may be determinative. Yet, two key considerations are similarity of the marks and similarity of the goods or services.

  • Similarity of the marks.  Here, the Board confined its analysis between Applicant’s mark and Opposer’s pleaded logo mark.  This is due to the fact that Opposer’s pleaded logo mark is the most similar to Applicant’s mark.  Opposer argued that the parties’ marks have identical commercial impressions.  Both involve Alzheimer’s charitable fundraising walks, share common core words (Alzheimer’s and walk),  and contain dominant purple backgrounds.  Applicant argued that the words should be accorded greater weight, and that each mark contains additional wording the key wording is merely descriptive.  Nonetheless, the Board found in comparing the marks, the two had quite similar visual and word elements.  Therefore, it concluded that the marks were similar in appearance, commercial impressions, and meaning.
  • Similarity of the services.  With regard to the similarity of the services of the parties, the Board found that charitable fundraising services and fundraising in the nature of walks for Alzheimer’s are legally identical.  Accordingly, this factor weighed in favor of a finding of likelihood of confusion.  As to the similarity of the channels of trade, since the Opposer relied on its common law rights, the analysis was confined to those trade channels that Opposer had established on the record.  Where, as here, the Applicant did not limit its trade channels in it application, it is presumed that its services move in all channels of trade and are available to all classes of purchasers.  Therefore, based on the evidence presented, and due to the fact that the parties’ services offered under their respective marks are offered on at least one common social media platform, it was found that the trade channels overlapped.

The Board reviewed the strength of the Opposer’s ALZHEIMER’s Mark, as this could have a bearing on the likelihood of confusion analysis.  The Board noted that Opposer’s log mark is comprised of several elements, including colors.  While Opposer’s mark had some disclaimed matter, Applicant did not demonstrate that the overall conceptual strength of Opposer’s log mark as a whole was weak.  Furthermore, while the Board recognized the existence of numerous other “Alzheimer’s walk” marks, the purple color component of Registrant’s mark constituted a large visual component that was not impacted by other third-party marks introduced by Applicant that did not include the dominant color purple for Alzheimer’s charity services.

Holding.  Based on all of the relevant likelihood of confusion factors, the Board held in favor of Opposer and entered judgment in its favor in accordance with Section 2(d) of the Trademark Act.

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U.S. trademark expungement and reexamination proceedings are now available.  This constitutes a major development in U.S. trademark practice.  A result of the U.S. Trademark Modernization Act., the new rules became effective December 18, 2021.

As ex parte proceedings, trademark reexamination and expungement have the potential to be more efficient and less expensive than trademark cancellation and opposition proceedings.  The takeaway?  To avoid challenges to registrations, trademark owners must remain vigilant.

Here’s what you need to know:

1. Trademark Expungement.  A party may request cancellation of some or all of the goods or services in a registration if it is shown that the registrant never used the trademark in connection with those goods or services.  A U.S. trademark expungement proceeding must be instituted between three and ten years after the registration date.  Until December 27, 2023, however, a proceeding may be requested for any registration at least three years old, regardless of the ten-year limit.

2. Trademark Reexamination.  This is available to seek cancellation of some or all of the goods or services in a use-based registration.  The grounds for doing so are that trademark was not use use in commerce with those goods or services on or before one the following particular dates:

  • if the underlying application was filed based on use, the relevant date will be the filing date of the application;
  • if the underlying application was filed based an intent to use, the relevant date is the later of the date that an amendment to allege use was filed or the date the deadline to file a statement of use expired.

This new procedure must be requested within the first five years after registration.

Here are facts common to both trademark expungement and reexamination:

  • Who can Petition.  Any person may file a petition with the USPTO to request institution of an expungement or reexamination proceeding. You’re not required to identify the name of the real party in interest on whose behalf the petition is filed, but the Director has authority to require that information in particular cases. For example, while an attorney can file the request in their name instead of their client’s name, the Director may require the attorney to provide the client’s identity. Foreign-domiciled petitioners are required to obtain U.S. counsel in order to file a petition.
  • How to file.   Submit a Petition for Expungement or Reexamination requesting that the USPTO Director institute a proceeding to cancel some or all of the goods or services identified in a trademark registration for which the trademark either has never been used in commerce for expungement or was not used in commerce before a particular relevant date for reexamination.

The request must include a verified statement that a reasonable investigation was conducted.  This requires a concise factual statement as well as evidence supporting a prima facie case of non-use.  In the event the Request does not satisfy the filing requirements, the USPTO will issue a letter that gives the petitioner 30 days to complete the petition.  The USPTO will make the request and evidence of record through the Trademark Status and Document Retrieval (TSDR) system.  All future correspondence involving the petition will be viewable in TSDR.

Practice tip:  Just because a petition is filed in either type of proceeding does not mean that the Trademark Office will act on it.  In fact, if a Petitioner fails to establish a prima facie case for a trademark expungement or trademark reexamination, the USPTO will decline to institute a proceeding.  If the initial burden is satisfied, the USPTO will commence the proceeding.  It is therefore important that all petitions are throughly investigated and documented.

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This is a second-part of an article regarding U.S. Trademark Opposition strategies.

U.S. trademark opposition proceedings need not be expensive or protracted.  This is one of the surprising conclusions for global trademark owners who seek to protect their rights in the United States.

Commencement of action.  Under U.S. law, trademark applications that have been approved by the Examining Attorney are published in the Official Gazette of the USPTO.  During the publication period, any third-party has 30 days to oppose the trademark application on a wide variety of grounds.  Alternatively, the potential Opposer can request extensions of time to file the opposition of up to 90 days.

Phases of Proceeding.  United States trademark oppositions are primarily heard before the U.S. Trademark Trial and Appeal Board (TTAB), the adjudicative body of the USPTO.   The proceeding has three distinct phases:

  1.  Pleadings.  The complaint is called a Notice of Opposition, in which the Opposer sets forth a short and plain statement of its legal standing and grounds for opposing the subject application.The Notice of Opposition should set forth in short detail, the grounds for the opposition.  Typical grounds include:  (a) likelihood of confusion with a preexisting trademark registration or common law rights of the Opposer; (b)  the Applicant’s mark, when used in association with the goods, is merely descriptive and thus not capable of registration on the Principal Register; and (c) the Applicant had a lack of bona-fide intent to use its mark on some or all of the goods at the time of the filing of its application.   Once the Notice of Opposition is filed, the Applicant will file its Answer, together with any affirmative defenses that it wishes to plead.  In some cases, the Applicant may, if warranted, file a petition to cancel the Opposer’s U.S. trademark registrations that form the basis of the notice of opposition.
  2.  Discovery.  This is the phase of the case where the parties are permitted to seek relevant information or documents from the other party that support its claims and defenses.  These may include interrogatories, requests for production of documents, and requests for admissions.  Either party is also entitled to take discovery depositions of relevant witnesses, including third-parties.  A party can object to any discovery request that it deems to be harassing or outside the scope of relevant issues of the proceeding.  This being said, parties are obligated to respond in good-faith to any and all proper discovery requests, and should not interpose objections on any meritless grounds or for the purpose to delay proceedings.
  3.  Trial.  In the TTAB, trial testimony is submitted via written declarations and by Notice of Reliance, together with any documentary exhibits.  The Federal Rules of Evidence govern the proper way to introduce evidence and what is required to do so.  In addition, TTAB trial testimony procedure that is specific to opposition and cancellation proceedings may be found in the Trademark Board Manual of Procedure (TBMP).

Helpful hint:  Consider an early settlement.  The discovery conference provides a good opportunity for the parties’ counsel to freely discuss the merits of their clients’ respective positions and likelihood of success.  During this time, they will also discuss any possible settlement options.  In over 94% of cases, the contested proceeding settles before a full trial on the merits.  Accordingly, it is vitally important for trademark practitioners to be familiar with U.S. Trademark Trial and Appeal Board practice and procedure.  By doing so, trademark counsel can assist its clients in creating opportunities for an early settlement that furthers their legal and business goals.

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Third-parties routinely seek extensions of time to file a Notice of Opposition against pending trademark applications.  The time to oppose a trademark application is 30 days from the date of publication.   An additional 30-day extension will be granted upon request, while 90 day extensions must allege good cause.

Below is a list of representative trademark opposition extension requests and Notice of Opposition proceedings filed for the week of August 9, 2021:

APPLICANT TRADEMARK APPL. NO. POTENTIAL OPPOSER
DS Double Sisters LP SERIOUSLY SIMPLE 90035076 Unilever Global IP
Herkules Equipment Corp. ENKON 90038961 Engcon Holding AB
North American Marketing, Inc. POLYPHENOL-C 90059130 E. & J. Gallo Winery
RL Brands, LLC CHEF IQ 88831911 Bloomberg L.P.
El Cinco, Inc. DILLINGER 90091726 AOVM Companies
Radix IoT, LLC RADIX IOT 90165341 Radix DLT Limited
Washington Wine Group EVERGREEN 90187983 Luxco, Inc.
G.A. Fleet Associates SHARKFIN 90259888 Reliance Worldwide
Platini Love Epic DR. EPIC 90370257 Epic Games, Inc.
APPLICANT TRADEMARK APPL. NO. POTENTIAL OPPOSER
Ronieke Smith HEAVEN’S ARMOR 90307404 Under Armour, Inc.
Jiahu Xu FUZMOPAR 90376470 FCA US LLC
N Squared Technologies QUIN 90380632 Quin B.V.
Sarepta Technologies SANGENTRI 90382648 Novartis AG
UAMG Content, LLC BILLIONAIRE U. 90394028 Majestas Sarl
Spectrum Brands, Inc. VIERA 90498049 VIEGA Holding GmbH
Momentive, Inc. G 90529599 MoneyGram Payment Systems
Clicked-In LLC CLINKED-IN 90246737 LinkedIn Corporation
Elevated Business Brands SMASHVILLE HOT CHICKEN 90243939 Smashburger IP Holder

Editor’s Note:  To discuss how to respond to a Notice of Opposition or extension request to file an opposition proceeding with the TTAB, please contact us.

U.S. trademark opposition proceedings can be done within a reasonable time and budget

TTAB proceedings have a reputation for being extremely costly and time consuming.  Yet, this is not necessarily true.  Depending on your goals, it is possible to favorably resolve a TTAB contested proceeding in a relatively short amount of time and within a reasonable budget.  Here’s just one important fact to consider:

While the cost of a fully-litigated trial on the merits before the U.S. Trademark Trial and Appeal Board can be $75,000 or more, approximately 95% of trademark cancellation and opposition cases settle before trial.

 

Trademark Opposition Facts to Consider

Below are some additional facts to keep in mind if you have a contested proceeding before the Board:

Jurisdiction

The U.S. Trademark Trial and Appeal Board (TTAB) is limited to deciding issues of registration only.  Accordingly, it only has the authority to either cancel an existing trademark registration or refuse a trademark application from maturing to registration.  

The TTAB cannot order a party to cease using its trademark in commerce.  Nor does it have the authority to award attorney’s fees or damages.

Duration of proceeding

While it is not uncommon for TTAB proceedings to last one to two years, this is generally true in the following limited circumstances:

  • one or more parties file a potentially dispositive motion that suspends proceedings
  • the parties agree to suspend proceedings to engage in settlement discussions
  • the parties consent to extend all applicable discovery and trial dates for various scheduling reasons
  • the TTAB administrative backlog to rule on motions further delays the proceedings

Costs

The costs of opposition proceedings vary depending on how far into the process the case proceeds and whether it can be resolved prior to trial.  

Since approximately 95% of all Board proceedings settle before trial, costs can be greatly reduced the earlier the parties are able to negotiate an amicable settlement.   

Quite often, it is possible for parties to settle the matter between the initial discovery conference and the opening of the discovery period.  In such cases, costs can be as little as US US$5,000-US$7,500.   

If the full discovery period is undertaken without settlement, discovery can range between US$25,000 on the low side to US$60,000 on average.  

The trial phase, including witness declarations, exhibits and briefing has an average range of approximately US$20,000-US$35,000.

Discovery period

Discovery is often the most expensive phase of an Opposition proceeding.  Discovery is where the parties gather evidence from the other party that supports or refutes its claims.  Typical discovery tools include:

  • Interrogatories
  • Requests for production of documents
  • Requests for admissions
  • Depositions

The discovery period usually lasts seven to eight months, and includes the opportunity to designate expert witnesses, which is rare in Board proceedings.  

The discovery period can be extended by consent of the parties, or suspended in instances where there is a motion pending before the Board.  

If discovery is suspended for the Board to rule on a motion, the current backlog for the Board to issue a ruling is approximately 4-5 months.  Discovery can also be extended by the consent of the parties to engage in settlement discussions.  

At the end of the discovery period, or any time prior, either party may file a motion for summary judgment on any or all issues.  

This is an expedited process wherein the moving party asks the Board to make a final and early ruling based on the fact there exist no genuine issues of material fact and that the Board should rule on the merits as a matter of law.

Settlement

Oppositions and trademark cancellation proceedings can be withdrawn with the consent of the other party.  This usually occurs in cases where a settlement is achieved.   Examples of settlement terns include:

  • the applicant agrees to withdraw its application;
  • restricts the goods in its identification; and/or
  • consents to use-based restrictions

If an Opposer unilaterally withdraws an opposition without the consent of the Applicant, then judgment will enter against the Opposer in favor of the Applicant and the application will proceed to registration.   This could hurt the Opposer’s attempts to enforce the same mark against third-parties in the future.  The Board has no authority to award attorney’s fees or damages so that would not be an issue of concern.

Editor’s Note:  if you are an international company or foreign trademark associate that has questions about TTAB proceedings, please contact us.

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The U.S. Patent and Trademark Office  (USPTO) has adapted to the COVID-19 era.  Yet, performance challenges in certain operational areas remain.  This is the conclusion of the USPTO FY 2020 Annual Report.  Our previous article on TTAB statistics in the age of COVID-19 may be found here.

TTAB FY 2020 performance.   The TTAB is responsible for the adjudication of trademark opposition, trademark cancellation, and ex parte appeals. The USPTO fiscal year commences on October 1 and ends on September 30 of the following calendar year.

Fiscal year (FY) 2020 had its pre-COVID operational challenges from day one.  These included:

  • a backlog of cases from FY 2019;
  • an increase in TTAB filings by trademark owners;
  • a steep escalation in motion practice;
  • a significant increase in cases ready for decision (RFD); and
  • the ratio of RFD trial cases to Trademark Appeals was heavily titled towards trial cases

In 2020, the Board continued to address its backlog of cases, hiring more attorneys and judges to its staff.  In total, brought on more than 40 combined attorneys and judges.  This is the highest level ever.   As a result, by third-quarter, decisions on the merits and motions were all processed within goals.  Total annual goals, however, were not met.

Strategic Initiatives.  FY 2020 also had certain strategic goals realized.  For example, the Trademark Board completed a two-year pilot program to encourage early resolution of trademark cancellation cases.  This early resolution model is for trademark cancellation cases involving abandonment or non-use claims.   The TTAB also commenced an analysis of Accelerated Case Resolution (“ACR”) cases to determine its effectiveness to date over a several year period.  This is for the purpose of encouraging litigants to utilize ACR, which in theory could be less expensive and lengthy than traditional proceedings.   Whether ACR is preferred for cancellation and opposition proceedings is the subject of future articles.

The Board also began outlining a new pilot project, expected to begin in FY 2021.  This project will focus on having pre-trial conferences with parties in selected cases.  Other TTAB enhancements include a new digital Reading Room where users can search TTAB opinions.

Conclusion.  The U.S. Trademark Trial and Appeal Board has made significant progress over the past year.  It has adapted well to having its employees work virtually due to COVID-19.  The transition of more TTAB employees to a virtual work environment will likely continue even after the pandemic.  What will remain, however, are certain case management inefficiencies that result from Board practices that have remained unchanged over the years.