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

Section 2(d) affirmances are running at about 90% this year (as usual). Here are three recent appeals. No hint this time. How do you think they came out? [Answer in first comment].

In re XOXO LOUNGE LLC, Serial No. 98196452 (July 8, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) refusal of the mark shown first below, for "Hookah lounge services; Shisha lounge services; Smoking lounge services" [LOUNGE disclaimed] in view of the registered mark shown second below, for "Cocktail lounges; Restaurant and bar services; Providing banquet and social function facilities for special occasions" [DINING ROOM disclaimed].]

In re Giulio Bertelli, Serial No. 79376970 (July 11, 2025) (Opinion by Judge Cheryl S. Goodman) [Section 2(d) refusal to register the mark shown below, for various clothing items, including "shirts," in view of the registered mark DSU for "Clothing, namely, T-shirts, sweatshirts, shorts, hats, cloth bibs, hooded sweatshirts, polo shirts."]

In re Unanimous Media LLC, Serial No. 97529328 (July 16, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Section 2(d) refusal of the mark shown below, for "Entertainment services, namely, providing podcasts in the fields of current events, pop culture, sports, art, politics, comedy, societal issues and topics of general interest" [PODCAST disclaimed], in view of the registered mark UNANIMOUS GAMES for, inter alia, "Arranging and conducting e-sports competitions; entertainment in the nature of e-sports competitions; entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content" [GAMES disclaimed].

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

Text Copyright John L. Welch 2025.

Proof of One Incident of Actual Confusion Factors Into TTAB's Granting of Petition to Cancel ZEROLIQUID Registration for Water Filters

The Board granted this petition for cancellation of a registration for the mark ZEROLIQUID for filters for drinking water and related goods, finding confusion likely with the registered mark ZEROWATER for “water filtering units for household use" [WATER disclaimed]. Although deeming the petitioner's mark to be "highly suggestive" of the goods and therefore "entitled to a narrower scope of protection under the sixth DuPont factor," the Board found the involved marks to be "very similar, with the first DuPont factor weighing heavily in favor of likelihood of confusion." Petitioner’s evidence of a single instance of actual confusion lent some support under the seventh DuPont factor. Zero Technologies, LLC v. Hangzhou Yilin Technology Research Co., Ltd., Cancellation No. 92081980 (July 14, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

Actual Confusion: Respondent Hangzhou objected to petitioner's submission of an email petitioner received regarding an item purchased on Amazon, but it was Hangzhou's ZEROLIQUID product. Hangzhou argued that the email was hearsay, but the Board disagreed: "those statements are either not offered for their truth, and thus are not hearsay, or fall within the state of mind exception to the hearsay rule under Fed. R. Evid. 803(3). The Board, however, did sustain Hangzhou's objection to the attachments to the email (the label and Amazon.com receipt) because they were offered "for the truth of the matter asserted therein, that is, to show that the customer actually purchased and received ZEROLIQUID-branded replacement water filters." [Why aren't the documents corroborative of the customer's state of mind? - ed.]. "While a single instance is insufficient as evidence from which to conclude that applicant’s mark has consistently caused confusion, the single instance of confusion is at least ‘illustrative of a situation/"

Priority: In a cancellation proceeding in which both parties own registrations, priority of use is an issue. The filing date of the application underlying petitioner’s pleaded registration, February 25, 1999, preceded both the September 9, 2021 filing date of the application underlying Hangzhou's registration and its asserted first use dates of June 11, 2021.

Strength of Petitioner's Mark: Petitioner's evidence fell short of proving that its mark was commercially strong. As to inherent strength, "the nature of the mark itself and the third-party registrations lead us to conclude that the mark as a whole is highly suggestive of Petitioner’s “water filtering units for household use” and is conceptually weak."

The Marks: The Board observed that, on their face(s), "ZEROWATER and ZEROLIQUID bear certain similarities in appearance and sound. Both marks begin with the word ZERO as the prefix. The first word of a mark is often considered dominant as it is more likely to be noticed and remembered by consumers." Moreover, "[c]onsumers encountering the marks in the context of the goods—which are identified for use in filtering water—would perceive the marks as having a similar connotation, relating to the removal of contaminants from water."

Conclusion: "Balancing the factors, we find that Petitioner has shown, by a preponderance of the evidence, that confusion is likely when Petitioner’s and Respondent’s marks are used with their respectively identified goods, notwithstanding any conceptual weakness of Petitioner’s ZEROWATER mark."

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TTABlogger comment: This decision leaves a bad taste in my mouth. One incident of confusion? Gimmeabreak!

Text Copyright John L. Welch 2025.

TTABlog Test: Is GHOSTWRITTEN INC. Merely Descriptive of Publication of E-books and Blog Posts

The USPTO refused to register the mark GHOSTWRITTEN INC. for various services, including publication of e-books, blogs, and on-line journals, on the ground that the mark is merely descriptive of the services. The Examining Attorney contended that "it is common for blog posts, website content, e-books and written information to be ghostwritten." How do you think this came out? In re Ghostwritten LLC, Serial No. 98199104 (July 11, 2025) [not precedential] (Opinion by Judge David K. Heasley).

The Board agreed with the Examining Attorney that “GHOSTWRITTEN” is the past participle of “ghostwrite,” meaning “to write a book or article, etc. for another person to publish under his or her own name,” and that “INC.” usually does not add trademark significance to an applied-for mark, taken as a whole. However, the Board agreed with the applicant that the Examining Attorney did not carry her burden of proving that GHOSTWRITTEN INC. would be perceived by relevant consumers as merely descriptive of Applicant’s recited services.

Here, the term GHOSTWRITTEN INC. is too amorphous, nebulous and vague for consumers to immediately understand it as describing a significant feature of Applicant’s recited services. “If the mental leap between the word and the product’s [or services’] attributes is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness.”

The Board noted that the online articles in the record "may show that ghostwriting occurs in these broad creative fields, but they do not show that it is so prevalent and so publicized that the consuming public, encountering Applicant’s mark, would almost instantaneously take it as describing a key attribute of Applicant’s services."

The Board pointed to the applicant statement that it does not offer ghostwriting services and that “none of the services listed in the identification of services are intended to be created for another who is the presumed or credited creator or author. The Board concluded that "the remote, speculative contingency that some works might be ghostwritten is not a key feature of Applicant’s services, but only a bare possibility, incidental to those services."

Looking to third-party registrations for variations of “GHOSTWRITE,” the Board observed that "each identification of goods and services recites creative works; yet none was refused registration, and none was required to show acquired distinctiveness." “While superficially it may be easy to dismiss these [similar third-party] registrations, as we often do, on the basis that the records of these registrations are not before us and that each case must be decided on its own merits, it certainly does appear that the Office has in the past taken a different position with respect to marks of the nature of applicant’s.” In re Waverly Inc., 1993 WL 311934, *5 (TTAB 1993)

"The Examining Attorney’s interpretation that consumers would take the mark that way is speculative, at best." "While our decision is not entirely without doubt, we consider it appropriate to resolve this doubt in favor of Applicant." And so, the Board reversed the refusal to register.

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TTABlogger comment: Mental leap? I don't see it. Would you think applicant's services include ghostwriting?

Text Copyright John L. Welch 2025.

Despite 18 years of Sales, LED Configuration Lacks Acquired Distinctiveness, Says TTAB

The Board upheld a refusal to register the configuration shown below as a trademark for a "light emitting diode (LED) apparatus for lighting, incorporated into medical instruments," on the ground that Applicant Translite failed to prove that the design had achieved acquired distinctiveness. Trasnlite pointed to its 18 years of use of sales of the product but that alone was not enough, and its other evidence fell short of convincing the Board that the design merited registration. In re Translite, LLC, Serial No. 97925710 (July 10, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

The Board observed that, "[u]nlike product packaging trade dress, which can be inherently distinctive, product configuration trade dress is not inherently distinctive because consumers are not predisposed to equate such configurations with particular sources: 'even the most unusual of product designs − such as a cocktail shaker shaped like a penguin − is intended not to identify the source, but to render the product itself more useful or more appealing.' Wal-Mart Stores Inc. v. Samara Bros. Inc., 529 U.S. 205, 213 (2000)."

Considering Translite's Section 2(f) claim, the Board looked to the factors set forth in Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 1120 (Fed. Cir. 2018)): "(1) association of the trade[mark] with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark.

Translite submitted marketing materials for its "Veinlite EMS Pro"” product, a printout from its website, a declaration of its president, and declarations from four consumers, along with a purported “report” from the Society of Nuclear Medicine & Molecular Imaging. It averred that the subject product has been sold since 2006, but the Board observed that "[t]e length of time needed to acquire distinctiveness in the mind of the consuming public is proportional to the non-distinctiveness of the applied-for mark." It found 18 years of use to be insufficient, by itself, to establish acquired distinctiveness.

Translite has sold some 3,055 units per year for $1.61 million in annual revenue. It did not submit its advertising expenditures, nor did it indicate how many individuals accessed its website or attended its trade shows. The Board pointed out that sales figures for a product "are not probative of purchaser recognition of a configuration as an indication of source." Moreover, there was nothing that showed promotion of the subject configuration as an indicator of source. In fact, each image of the product includes the “VeinLite” mark in connection with the product.

"It is well-settled that, where, as here, a party’s advertising and sales data is based on materials and packaging in which the mark at issue is almost always displayed with another mark [e.g., 'Veinlite'], such data does not prove that the mark at issue possesses the requisite degree of consumer recognition.” ProMark Brands Inc. v. GFA Brands, Inc., Opp. No. 91194974, 2015 TTAB LEXIS 67, at *43 (TTAB 2015).

Translite did not submit survey evidence regarding consumer recognition. The declarations, identically worded, stated that the declarant had been a customer of Translite's product and "instantly" recognized the product as emanating from Translite. "It is my understanding that product configuration comes solely from Translite and has high quality and performance."

The Board found the declarations "of minimal probative value." for several easons. First, "the testimony of four consumers out of an alleged 55,000-plus customers over an eighteen-year period is not convincing to prove widespread recognition of Applicant’s applied-for mark." Second, "the consumer declarations are fill-in-the blank forms that were clearly drafted by someone other than the declarants." And third, "it is unclear whether the declarants considered the functional elements of the product configuration (i.e., the vein holder and LED elements) in rendering their testimony that they recognize Applicant as the source of the product configuration." [The dashed lines in the drawing represent functional, unclaimed features - ed.].

Finally, the "report” that Translite submitted "is largely dedicated to identifying and praising Mr. Mullani for his professional accomplishments. While the “report” does identify Mr. Mullani as the “Inventor of Veinlite,” there is no reference to Applicant’s applied-for product configuration mark or how the public views the configuration."

At bottom, the critical question is not the length of Applicant’s use, the dollar amount of its sales, or the extent of its advertising; it is the effectiveness of these efforts in “creating a consumer association between the product configuration and the producer.” Ennco Display Sys., 2000 TTAB LEXIS 235, at *19. Based on consideration of all of the evidence of record, and having considered the relevant factors, we find that Applicant has failed to satisfy its burden of proving acquired distinctiveness under Section 2(f) of the Trademark Act. We find that the applied-for mark is a nondistinctive product configuration that has not acquired distinctiveness.

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TTABlogger comment: Product configuration marks nearly always trip over one (or both) of the two hurdles to registration: Section 2(e)(5) functionality and/or Section 2(f) acquired distinctiveness.

Text Copyright John L. Welch 2025.

CAFC Affirms TTAB: YUCATAN SHRIMP is Merely Descriptive of Prepared Shrimp Dish

The CAFC upheld the Board's decision [here] affirming the USPTO's Section 2(e)(1) refusal to register the proposed mark YUCATAN SHRIMP for "prepared food, namely, shrimp, not live." The court ruled that substantial evidence supported the Board's finding that YUCATAN SHRIMP is recognized as a dish using shrimp and particular ingredients associated with Mexican cuisine. In re Randy Wayne White, 2025 USPQ2d 929 (Fed. Cir. July 10, 2025) [not precedential].

Examining Attorney Charles Miller provided "a legion of recipes and descriptions of 'Yucatan Shrimp' dishes from third-party cooking and restaurant webpages, showing that the public understands 'Yucatan Shrimp' to refer to a dish that features shrimp prepared with a set of common ingredients associated with Mexican cuisine, such as hot peppers or sauce, citrus juice, and cilantro."

The Board also relied on Mr. White’s own usage of the mark on his restaurant’s menu. The menu describes the dish as originating in Quintana Roo, Mexico, which encompasses a portion of the Yucatan Peninsula. And the menu explains that the dish is prepared using the same ingredients as the third-party dishes described above, further supporting the Board’s finding that the public would recognize the YUCATAN SHRIMP mark as describing a shrimp dish with common ingredients.

The CAFC pooh-poohed all of Applicant White feeble arguments: that that there is no particular style of cooking originating, or understood to originate, in the Yucatan region of Mexico, that the Board relied on a ground of refusal not raised by the Office, and that the Examining Attorney failed to consider certain evidence (which evidence the Board did consider).

Finally, White contended that any doubt as to descriptiveness should have been resolved in his favor, but the court found "no basis on this record to conclude that the examiner or the Board doubted the descriptiveness of the mark or that they improperly resolved any doubts against Mr. White."

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TTABlogger comment: Randy Wayne White is the author of a series of "Doc Ford" novels set in Florida, and he owns and operates a restaurant called "Doc Ford's Rum Bar & Grille" on Sanibel Island. 

Text Copyright John L. Welch 2025.

Oops! Opposer Fails to Prove Statutory Standing: Submitting Ordinary Copy of Registration Not Enough

Waldencast UK Limited filed an opposition to registration of the mark COATER for various skin care products, alleging likelihood of confusion with its registered mark COATS for non-medicated cosmetics. Neither party submitted testimony or other evidence and only Opposer Waldencast filed a brief. Looks like a slam dunk, right? Not so fast there, Charlie. Waldencast UK Limited v. Oretia LLC, Opposition No. 91286541 (July 1, 2025) [not precedential] (Opinion by Judge Mary Beth Myles).

Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1), provides that an opposer may make a pleaded registration of record by attaching to the notice of opposition “an original or photocopy of the registration prepared and issued by the Office showing both the current status of and current title to the registration, or by a current copy of information from the electronic database records of the Office showing current status and title of the registration." Waldencast did not comply with that rule. It attached a "plain copy" of its pleaded registration to its notice of opposition.

A plain copy of the registration is not sufficient to establish that the registration is currently in force and owned by Opposer because it does not indicate the current status and title of the registration. See Indus. Adhesive Co. v. Borden, Inc., 1983 WL 51985, at *4 (TTAB 1983).

However, "[i]f a pleaded registration issued 'substantially' or 'reasonably' contemporaneous with the filing of the notice of opposition, the undated, plain copy of the registration will be sufficient to establish current status and title of the registration. Shenzhen IVPS Tech. Co. v. Fancy Pants Products, LLC, Opp. No. 91263919, 2022 WL 16646840, at *3-4 (TTAB 2022)." Waldencast’s registration issued on November 9, 2021, more than one year and nine months prior to the filing of the notice of opposition on August 14, 2023. The Board found that the issue date of the registration was not "substantially contemporaneous" with the filing of the notice of opposition, and consequently the registration was not of record.

Inasmuch as Opposer’s pleaded registration is not of record and Opposer presented no admissible testimony or other evidence, and Applicant did not admit Opposer’s entitlement or any facts that might establish it in its answer, there is no record evidence to support Opposer’s real interest in this proceeding or any reasonable basis for its belief of damage. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1372 (Fed. Cir. 2020) (entitlement to a statutory cause of action must be proven by the plaintiff in every inter partes case) (citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 128 n.4 (2014)).

The Board concluded that Waldencast failed to establish its entitlement to a statutory cause of action by a preponderance of the evidence, and so, the Board dismissed the opposition.

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TTABlogger comment: TTABlog tip: read the Rules. BTW: What is the res judicata effect of this dismissal?

PS: For further explanation of how to get a pleaded registration into the record, see Opposition No. 91241442 at 70 TTABVUE.

Text Copyright John L. Welch 2025.

TTABlog Test: Is NATIVE NATIONS CANNABIS Merely Descriptive of Hemp-Containing Cosmetics?

The USPTO refused to register the mark NATIVE NATIONS CANNABIS , finding it to be merely descriptive of "Cosmetic bath salts; massage oils; cosmetic mud masks; body butter; anti-aging cream; moisturizing creams; bath bombs; and hand lotions; all of the foregoing containing ingredients solely derived from hemp with a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis" [CANNABIS disclaimed]. Applicant is "from" the native nation Flandreau Santee Sioux Tribe in South Dakota. How do you think this appeal came out? In re FSST Pharms, LLC, Serial No. 97419333 (July 8, 2025) [not precedential] (Opinion by Judge Cheryl S. Goodman).

The Examining Attorney maintained that NATIVE NATIONS CANNABIS "would immediately convey to consumers not just the information that the goods contain cannabis, but that the goods and/or their cannabis ingredient are produced and/or offered for sale from one of the Native Nations.” She argued that there is a connection between Native Nations and cannabis products, pointing to evidence of a “growing movement of tribes to become involved in the cannabis products industry,” and noting that Applicant has a tribe-based dispensary.

The Board rejected the Examining Attorney’s argument that NATIVE NATIONS describes a particular location of the goods or reflects goods that are grown on a tribal reservation, because the evidence indicated that the term NATIVE NATIONS describes 574 nations within nations in the United States, and not a specific geographic unit or location.

As to the Examining Attorney’s argument that NATIVE NATIONS identifies the grower of a main ingredient of Applicant’s goods (hemp), the record did not establish that average consumers are aware that tribes of native nations are growing cannabis or hemp. As to the argument that NATIVE NATIONS identifies Applicant as a provider or source of the goods, the Board observed that there is no per se rule that a term that identifies the provider or source of the goods is merely descriptive. "Absent evidence, a specific finding standing alone that a term describes the provider or source is insufficient to support a Section 2(e)(1) refusal."

The evidence shows that some consumers may be aware that Applicant is a Native nation, and may be aware that Applicant operates a medical marijuana dispensary, but the record does not support a finding that NATIVE NATIONS immediately conveys to average consumers information about a quality, feature, or characteristic of the identified goods. We find NATIVE NATIONS is not merely descriptive of the identified goods.

And so, the Board reversed the refusal.

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TTABlogger comment: I don't find this opinion to be convincing, do you? To me, NATIVE NATIONS tells me that the goods come from a native tribe. Shouldn't every tribe be able to use the phrase?

Text Copyright John L. Welch 2025.

TTAB Affirms Five Refusals of SHYFT Marks for Beer and Flavored Malt Beverages: Confusable with SHIFT for Wine

In these five consolidated appeals, the Board upheld the USPTO's Section 2(d) refusals to regsiter the mark SHYFT - in standard character form, in stylized form, and in the form shown immediately below - for beer and flavored malt-based beverages, excluding beer, finding confusion likely with the registered mark SHIFT for wine. There was little dispute over the relatedness of the goods, and the applicant did not address the channels of trade or classes of consumers. Applicant focused the bulk of its argument on the sixth DuPont factor, relying on third-party use and registration of marks containing the word SHIFT. In re Star Catcher LLC, Serial Nos. 97759143, 98032414, 98032430, 98032440, and 98032445 (July 1, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Marks: Applicant argued that SHIFT and SHYFT have different connotations because SHYFT, due to the fact that its misspelled with a “Y,” connotes “flavor-shifting qualities,” but the registered (correctly-spelled) SHIFT mark evokes the shifting of a car’s transmission. The Board didn't buy it. First, because there was no evidence to support that argument, and second, because "SHYFT is an easily-recognized misspelling of SHIFT."  The additional, disclaimed language “flavor shifting cocktail” is a descriptive phrase, displayed in a much smaller typeface, and "plays little role in the overall commercial impression of this version of Applicant’s mark."

The Board found Applicant’s SHYFT and Stylized SHYFT marks to be nearly identical to the standard character SHIFT mark in the cited registration. As to the other marks, "[w]ith only a small additional difference, Applicant’s marks fare little better and still are highly similar to the mark in the cited registration."

Sixth DuPont Factor As to applicant's third-party uses, there was no evidence of use of SHIFT marks for "flavored malt-based alcoholic beverages, excluding beers." With respect to beer (e.g., DOWNSHIFT, SPIRIT SHIFT, and SHIFT TRADE) and wine (THE SHIFT, REDSHIFT, SHIFTING LENS), "the differences from Applicant’s mark and the mark in the cited registration detract from the weight we assign the third-party evidence within the wine-and-beer space."

The Board found applicant's third-party registration evidence (SHIFT HAPPENS, NIGHT SHIFT) to be just as "underwhelming." "[N]one of these marks [is] as close to the mark in the cited registration as Applicant’s marks. Second, several of them are unitary marks where the meaning of 'shift' has a specific connotation."

In sum, while we do not find any degree of conceptual weakness in the registered mark, the slight level of commercial weakness shown by Applicant’s third-party use evidence will go on Applicant’s side of the ledger, to be weighed with the other factors in the final weighing.

Balancing the relevant DuPont factors, the Board concluded that confusions is likely, and so it affirmed the refusal to register.

If the first four factors did not so clearly support a conclusion that confusion is likely, a marginal showing of weakness like the one here hypothetically could tip the balance. But this is not such a case. The similarity of the marks here is just too great, and consumers perceive these goods as related. These are usually the most critical factors, and we see nothing indicating that they should not warrant their usual weight here. The classes of customers and trade channels overlap as well. In these circumstances and on this record, the slight weakness Applicant has shown in the term “shift” is nowhere near able to carry the day.

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TTABlogger comment: SHYFT for beer confusable with SHIFT for wine? In the real world, I doubt it.

Text Copyright John L. Welch 2025.

TTABlog Test: Three Recent Section 2(e)(1) Mere Descriptiveness Appeals - How Did They Turn Out?

Last year the Board affirmed about 88% of the Section 2(e)(1) mere descriptiveness refusals reviewed on appeal. So far this year, the rate is well over 90%. Here are three recent appeals. How do you think they came out? You might respond by asking, what was the evidence? Well, give it a try anyway. [Answer in first comment].

In re Lifetime Brands, Inc., Serial No. 98012956 (June 30, 2025) [Opinion by Judge Angela Lykos]. [Section 2(e)(1) mere descriptiveness refusal of SNACKLEBOX for "cutting boards and attached serverware, namely, serving platter with compartments sold together as a unit." Applicant argued that the term is suggestive because it is “a play on the words, ‘snack’ and ‘tackle box’, and does not immediately convey that applicant’s goods feature a cutting board and a serving platter with compartments.”]

In re Lewitt, Hackman, Shapiro, Marshall & Harlan, Serial No. 98115823(July 2, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington). [Mere descriptiveness refusal of JUSTICENTER for “Attorney services; Attorney services, namely, representation of clients in personal injury matters; Legal services." Applicant contended that JUSTICENTER, “as a telescoped mark, has no meaning in and of itself.”]

US Ghost Adventures Llc, Serial No. 98186224 (July 3, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande). [Mere descriptiveness refusal of MURDER HOUSE for "Museum services, namely, exhibiting to the public a historical site” and “Hotel accommodation services.” Applicant argued that MURDER HOUSE could indicate something other than a house where a murder took place, such as a restaurant with food so good diners want to “murder” their meals or a house where crows gather.]

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

Text Copyright John L. Welch 2025.

Precedential No. 6: TTAB Refuses to Add Affirmative Defense of Abandonment but Allows Addition as Counterclaims

In this opposition to registration of the mark JOKER SMOKER, in the form shown below, for smoker's articles and related retail services, the applicant moved for leave to amend its answer to add an affirmative defense of abandonment regarding the opposer's pleaded JOKER registrations. The Board deemed the proposed addition improper, since an abandonment claim is an attack against the validity of the registrations that can be raised only by way of a counterclaim or separate petition for cancellation, not by an affirmative defense. However, the Board allowed applicant 15 days within which to add counterclaims for cancellation of the registrations. Republic Technologies (NA), LLC v. Joker Smoker Shop, Inc. dba Joker Smoker, 2025 USPQ2d 830 (TTAB 2025) [precedential] (Order by Interlocutory Attorney Michael Webster).

Applicant's proposed affirmative defense alleged that "Opposer has discontinued use of its marks, Registration Nos. 1,087,438, and 2,661,926, for a period of more than three (3) years, with intent not to resume use, and has thereby abandoned use of such marks pursuant to Section 45 of the Lanham Act.” The Board found those allegations to be legally sufficient to support counterclaims for abandonment. Lewis Silkin LLP v. Firebrand LLC, Can. No. 92067378, 2018 WL 6923002, at *4-6 (TTAB 2018) (“The petition to cancel pleads that Respondent is not using the mark with its goods and services, and has no intent to resume use. The Board finds that no more is necessary for a legally sufficient abandonment claim in the context of the Board’s narrow jurisdiction limited to trademark registrability.”).

Further, the Board observed, applicant did not unduly delay in seeking to amend its answer (within two months after receiving amended discovery responses from the opposer). See Black & Decker Corp. v. Emerson Elec. Co., Opp. No. 91158891, 2007 WL 894416, at *3 (TTAB 2007); Karsten Mfg. Corp. v. Editoy AG, Opp. No. 91101408, 2006 WL 1258869, at *2 (TTAB 2006) (motion for leave to amend pleading granted because grounds for new claim learned during discovery); see also TBMP § 507.02(a). Opposer did not argue that it would be prejudiced by allowing the amendment (six weeks remained in the discovery period). See, e.g., Topco Holdings, Inc. v. Hand 2 Hand Indus., LLC, Opp. No. 91267988, 2022 WL 157880, at *4 (TTAB 2022) (no undue prejudice when three months remain in discovery). Nor was there any evidence applicant acted in bad faith or had a dilatory motive in seeking leave to amend, and it had not previously amended its pleading.

If Applicant files an amended answer with counterclaims, the Board will construe Applicant’s motion for leave to amend as asking to add properly pleaded counterclaims for abandonment. Accordingly, a decision on the motion for leave to amend is deferred and proceedings remain suspended.

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TTABlogger comment: Does this ruling merit the "precedential" tag? If the Board had denied the motion, would applicant simply have filed a new motion to add the counterclaims?

Text Copyright John L. Welch 2025.