Westchester Women's Bar Association
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The Trademark Trial and Appeal Board (“Board”) recently reversed a Section 2(d) refusal to register the composite mark DAILY HARVEST CAFE (CAFE disclaimed) for “cafe and restaurant services” in International Class 43. The Board found that even though the marks were similar, the Examining Attorney failed to show that the applicant’s restaurant services were related to the registrant’s food and beverage products. See In re Daily Harvest Café, Serial No. 98269684 (TTAB April 2, 2026) [not precedential]. The decision is a helpful reminder that there is no per se rule that food products and restaurant services offered under similar marks are likely to cause confusion.

The Examining Attorney refused registration based on five registrations for the standard character mark DAILY HARVEST, all owned by Daily Harvest, Inc. Together, the registrations cover a broad range of food and beverage products, including smoothies, fruit and vegetable juices, soups, prepared meals, coffee, oatmeal, snack foods, pizza, flatbread and non-dairy frozen confections. One of the registrations also covers “on-line retail store services featuring pre-prepared meals, desserts and beverages” in Class 35. Applicant’s mark consists of an oval containing DAILY HARVEST at the top, CAFE in script at the bottom, and a design of wheat, bread, eggs, a steaming coffee cup and a coffee grinder set against a horizon.

Turning first to the marks, Applicant argued that the design was the dominant feature of its mark. The Board disagreed. When a mark consists of words and a design, the words are normally accorded greater weight because they are what consumers use to request the goods or services. This is especially true for restaurant services, which are often recommended by word of mouth. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407 (Fed. Cir. 1997). The disclaimed term CAFE is generic and adds little source-identifying significance, and the design of breakfast foods and coffee merely reinforces the fresh-food connotation of the words DAILY HARVEST. Because Applicant’s mark incorporates the entirety of the cited marks, the Board found the marks similar in sound, appearance, connotation and commercial impression. In my opinion, this finding was expected. Unfortunately, many applicants wrongly assume that adding a design element and generic wording to a registered mark will be enough to distinguish it.

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In a precedential decision, the TTAB affirmed a decision of the Director of the USPTO which canceled a trademark registration based on the applicant failing to prove it used its mark in commerce as of the Statement of Use deadline. The applicant applied for the mark EVERWISE CREDIT UNION for a variety of credit union, banking and financial services. See Reexamination No. 2023-100533R for Registration No. 7068783 2026 USPQ2d 356 (TTAB 2026) [precedential]. The applicant submitted a specimen, the specimen was accepted and the registration issued. Soon thereafter, a third party petitioned for reexamination . See the firm’s webpage entitled, New USPTO Proceedings: Expungement & Reexamination, to learn more about these ex parte proceedings created by the Trademark Modernization Act of 2020.

In an expungement proceeding, it must be demonstrated that a mark has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration. In a reexamination proceeding, it must be shown that a mark was not in use in commerce on or in connection with some or all of the goods or services recited in the registration on or before the relevant date for use (the application filing date or the deadline for the Statement of Use.). Reexamination proceedings are only applicable to applications based on use in commerce. If the Director institutes a proceeding, it is set forth in an Office Action.

Here the Director instituted the proceeding and this required the registrant to provide evidence of use, information, exhibits, affidavits, or declarations as may be reasonably necessary to rebut the prima facie case of nonuse by establishing that the required use in commerce has been made on or in connection with the goods and/or services at issue as of the relevant date. As an alternative to introducing evidence to rebut the prima facie case of nonuse, the registrant may delete the goods or services at issue in the proceeding. This will render the proceeding moot as to those goods or services.

The third party’s Petition for reexamination included evidence of the Wayback Machine, an Internet archive, as of the deadline for the Statement of Use. Additional evidence included contentions that the Apple Store and Google Play Store were searched for an app branded under EVERWISE CREDIT UNION and no app was found except for a mobile application branded TCU Mobile Application. Petitioner also stated that it conducted a search of the USPTO database and found no evidence of use of the mark in connection with the services listed in international class 036, essentially implying that the specimen was not a proper demonstration of use in commerce. Based on the investigation, the Petitioner argued there was a prima facie case made that there was no use in commerce with the services identified in the registration by the deadline date for the Statement of Use. The Director agreed and issued a non-final office action wherein the registrant could rebut the prima facie showing.

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The Trademark Trial and Appeal Board (“the Board”) affirmed the refusal to register the mark GASPARILLA, and in doing so rejected the Consent Agreement submitted by Applicant. See In re Ye Mystic Krewe of Gasparilla, 2025 USPQ2d 1291 (TTAB 2025) [precedential]. The applicant was seeking to register the mark GASPARILLA on the Supplemental Register for multiple classes of goods. The Examining Attorney partially refused registration under 2(d) of the Lanham Act for classes 025 & 021, and the applicant appealed the decision. The cited registered mark was GASPARILLA TREASURES. The Examining Attorney found the consent agreement to be “naked”, as it lacked specific detail to explain why it was unlikely consumers would not be confused as to the sources of the marks.

On Appeal, the applicant did not address the other DuPont factors and only submitted evidence to contest the tenth DuPont factor (market interface between applicant and registrant) which in my opinion was an error on applicant’s part. A likelihood of confusion analysis is based on all the probative facts in evidence relevant to the factors bearing on likelihood of confusion. The two driving factors typically are the similarities of the marks and the relatedness of the goods or services, but each DuPont factor will be considered assuming there is evidence or argument pertaining to it in the record. See In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019). When the application was before the Examining Attorney, the applicant did not present evidence or argue that the marks were dissimilar, or that the goods were not related, but simply relied on the consent agreement to show that the parties did not believe there would be confusion as to the source of the marks in the marketplace.

Unfortunately, many applicants and practitioners wrongly assume that as long as a consent document is submitted, wherein the applicant and registrant agree that there is no confusion between the sources of the products or services, the refusal under Section 2(d) of the Lanham Act will be withdrawn. However, this is not the case. A consent agreement may or may not tip the scales in favor of registrability of a trademark. In re Mastic Inc., 829 F.2d 1114, 1117 (Fed. Cir. 1987) (citing DuPont, 476 F.2d at 1362-63). In order to properly give weight to the consent agreement, the other DuPont factors have to be analyzed. In fact, there is no per se rule that a consent agreement will tip the scales in favor of finding no confusion. See our blog post entitled, Another Rejected Trademark Consent Agreement, in a similar finding, the Board held that the other DuPont factors weighed in favor of confusion and the consent in that case did not overcome the refusal because the restrictions set forth in the agreement did not eliminate confusion. See In re 8-Brewing LLC, Serial No. 86760527 (October 30, 2017) [not precedential].

The Federal Circuit has provided guidance to assist in determining the probative value of a consent agreement. The following factors must be considered when assessing a consent agreement: (1) whether the consent shows an agreement between both parties; (2) whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels; (3) whether the parties agree to restrict their fields of use; (4) whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and (5) whether the marks have been used for a period of time without evidence of actual confusion. See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1567 (Fed. Cir. 1993); see also In re Dare Foods Inc., 2022 USPQ2d 291 (TTAB 2022) [precedential]. These factors are not the only factors to be considered but the principal areas of inquiry. The Board is seeking to ensure that the parties did not make a deal in their best interests at the cost of confusion to the public.

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The US Court of Appeals for the Federal Circuit, reversed in part the Board’s analysis of two DuPont factors in the case Apex Bank v. CC Serve Corp. 2025 USPQ2d 1224 (Fed. Cir. 2025) [precedential], remanding it for more consistent application of two factors. CC Serve Corp. provides credit card services to its customers. CC Serve owns a trademark registration for the word mark ASPIRE used with credit card services. CC Serve partners with a bank and the bank issues ASPIRE branded credit cards. The accounts are serviced by CC Serve. The other party, Apex bank is a retail bank that does not offer credit card services. However, Apex offers the following services, checking and savings accounts, home mortgages, business loans among other services. Apex filed an intent to use application for ASPIRE BANK for banking and financing services.

CC Serve filed an opposition proceeding against Apex’s mark ASPIRE BANK based on a likelihood of confusion. The Board sustained the opposition and determined that consumer confusion between the marks was likely. Apex appealed the Board’s decision. Apex argued the Board erred in its analysis of DuPont factors, one, two and six. The CAFC agreed with the Board’s analysis for the second factor only. The second factor evaluates the similarity of the applicant’s and registrant’s goods and services. In this case, credit card services were compared to banking and finance services. The Board noted that the dictionary definition for banking and finance included extending credit or providing funds through the issuance of credit cards. In addition, the Board relied on third party registrations that identified both applicant’s services and registrant’s services. Thus, the second factor weighed in favor of finding confusion because credit card services and banking and finance services were determined to be highly similar.

However, the CAFC did not agree with the Board’s analysis for factor one and six. Factor six evaluates third party use of similar marks to assess the strength of the subject mark. Apex submitted evidence of ASPIRE marks for services related to credit card services and services in the financial industry. The Board did not consider the evidence in connection with the broader industry of financial services. I certainly agree with the Federal Circuit’s position that if you find the services related for the purposes of DuPont factor two, then you must consider the third party use by those owners of ASPIRE marks used in connection with financial services. Deeming ASPIRE marks used for financial services irrelevant, in my opinion is inconsistent with the analysis used to determine whether the parties’ services were related for factor two. In fact, DuPont factor six requires the Board to assess the similarity of marks for similar goods and services. The CAFC declared the Board’s restriction of third party uses only for credit card services an error. The Court refused to impose a stricter requirement for similarity in connection with the sixth factor compared to the second factor. The CAFC remanded the matter back to the Board so the proper consideration could be given to the third-party use of the ASPIRE marks in connection with financial services.

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In this precedential case of the United States Court of Appeals for the Federal Circuit (“CAFC”), the Trademark Trial and Appeal Board’s decision to refuse a foreign word trademark as generic was affirmed. Under the doctrine of foreign equivalents, a trademark applicant seeking to register a mark that includes non-English wording will need to include an English translation of that wording. 37 C.F.R. §2.32(a)(9). Moreover, this doctrine holds that foreign words from common languages such as French must be translated into English to determine genericness and descriptiveness. Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001); In re Am. Fertility Soc’y, 188 F.3d 1341, 1346 (Fed. Cir. 1999). There was substantial evidence in the record supporting the Board’s conclusion that French was a common language. The Board based its findings on the fact that as of 2010, French (including all French dialects) was the fourth most common language spoken in the United States and 2.1 million Americans over the age of five spoke French at home.

The CAFC held that a party opposing a translation of a term under the doctrine of foreign equivalents has the burden to show that it is unlikely that the average American consumer would translate the word to English. Applicant was seeking to register the term Vetements in standard characters and in a stylized form for clothing goods and for related retail store services featuring clothing. The subject trademark, Vêtements is a term in French that directly translates into English to mean clothing. There was no dispute in this case that the English translation of Vetements was clothing. The Appellant was instead arguing that the ordinary American consumer would not stop and translate the mark to English. Appellant argued that “likely” to stop and translate meant that there was a requirement of a fifty percent population threshold that would translate, but cited no authority for this proposition.

The doctrine will be applied if an ordinary American consumer is likely to stop and translate the foreign word into English. Here, Applicant was a Paris based fashion company, and this is relevant to explain why it was likely that American purchasers would stop and translate Vetements into the English word clothing. “The “ordinary American purchaser” in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language. The CAFC affirmed the Board’s decision finding Vetements generic for clothing. It concluded that the Appellant/Applicant did not meet its burden to show why the term Vetements would not be translated. See In re Vetements Group, 2025 USPQ2d 775 (Fed. Cir. May 21, 2025) [precedential].

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In one of the early opinions of 2025, the Trademark Trial and Appeal Board (TTAB) reversed the Examining Attorney’s refusal to register a mark based on likelihood of confusion. See  In re Metabeauty, Inc., Serial No. 97492557 (January 28, 2025) [not precedential].  In my opinion, the decision is noteworthy because it relied on only ten third party registrations (and technically only nine) as basis to conclude the shared term “12” is conceptually weak and therefore must receive a restricted scope of protection under U.S. trademark law. When multiple trademarks share a common term and co-exist on the Trademark Register it is referred to as a “crowded field”. See the previous blog posts discussing the crowded field theory, https://www.newyorktrademarkattorneyblog.com/the-federal-circuit-sends-a-strong-message-to-the-ttab/ and also https://www.newyorktrademarkattorneyblog.com/the-second-federal-circuit-decision-weighing-in-on-the-crowded-field-theory/ to better understand this important trademark principle.

The Applicant was seeking to register the number 12 in an octagon shape claiming green as a feature of the mark for nonmedicated skin care preparation in international class 003 and in class 035 for online retail store services featuring medical supplies, cosmetics, tools used for application of skin care preparations among other goods. The Examining Attorney refused the application based on a registration for TWELVE COSMETICS for private label cosmetics in class 003. The Applicant appealed the refusal. The Applicant did not contest the goods were related for confusion purposes. Therefore, the relatedness of the goods was not in dispute, and it was also held that the trade channels overlapped. Moving on to the similarities of the marks, the first consideration is whether the only literal term in the mark, 12 has any weakness for cosmetic products. A trademark’s legal strength is determined by its distinctiveness and its marketplace strength. In re Chippendales USA Inc., 622 F.3d 1346, 1353-54 (Fed. Cir. 2010).

The cited mark, TWELVE COSMETICS is registered on the Principal Register without a claim of acquired distinctiveness, thus it is presumed inherently distinctive. However, even marks on the Principal Register will vary in strength depending on if the mark is considered to be fanciful, arbitrary or suggestive. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1325 (Fed. Cir. 2017). Third-party registrations are important evidence to show the conceptual strength (distinctiveness) of a trademark since it will  “‘show the sense in which a mark is used in ordinary parlance,’ that is, some segment that is common to both parties’ marks may have ‘a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak[.]”’ Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1374 (Fed. Cir. 2015). It is possible to conclude from third party registrations that a mark is weak due to a specific term, and slight differences can be enough to distinguish one source from another source. Continue reading

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The Trademark Modernization Act of 2020 provided for two new ex parte proceedings for non-use trademark challenges, Expungement and Reexamination. Prior to the new proceedings, if a trademark applicant encountered a trademark registration that blocked its application from registering at the Trademark Office, the only option was to initiate an expensive Cancellation Proceeding at the Trademark Trial and Appeal Board (“TTAB or Board”). For information on how these two proceedings work, see the firm’s webpage entitled, New USPTO Proceedings: Expungement & Reexamination. Also review, the Examination Guide1-21, Expungement and Reexamination Proceedings under the Trademark Modernization Act of 2020.

A few years later, the Board issued its first precedential expungement decision in In Re Locus Link USA, 2024 USPQ2d 1181 (TTAB 2024). Here, the Board affirmed the USPTO Director’s decision to cancel two registrations for SMARTLOCK for “components for air conditioning and cooling systems, namely evaporative air coolers”. The matter was initiated by a third party who filed a Petition for Expungement against the Registrant alleging non-use of the trademark SMARTLOCK for specified goods.

A Petition for Expungement must allege that the mark “has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration.” 37 C.F.R. §2.91(a)(1).  A complete Petition must include: (1) a filing fee of  $400 per class; (2) the trademark registration number(s) subject to the Petition: (3) the basis for the Petition under 37 C.F.R. §2.91(a); (4) the required information for Petitioner; (5) identification of each good or service subject to the Petition; (6) the elements of the reasonable investigation of non-use as defined under 37 C.F.R. §2.91(d), it must include a description of how and when the searches were conducted and what the searches disclosed; (7) a factual statement that supports the allegations of non-use as specified in paragraph 37 C.F.R. §2.91(a); and (8) a clear and legible copy of all documentary evidence supporting a prima facie case of non-use of the mark in commerce and an itemized Index of Evidence.

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After years of battles, this is a victory for dairy groups and cheese producers in the U.S. The Fourth Circuit Court of Appeals ended this dispute, see Interprofession du Gruyere v. U.S. Dairy Export Council, 61 F.4th 407 (4th Cir. 2023). Initially the United States Patent & Trademark Office (USPTO) approved and published the trademark application containing the certification mark (aka geographical indication) for “Gruyere” for cheese. Section 4 of the Trademark Act of 1946 (as amended) provides protection for Geographical Indications as certification and collective marks indicating regional origin. Domestic Geographical Indications include IDAHO (potatoes), WASHINGTON (apples) and FLORIDA (citrus). For more on the topic of certification marks, see our webpage, What You Need To Know to Register A Certification Trademark. The application was opposed at the Trademark Trial and Appeal Board (TTAB) on the grounds that Gruyere is a generic term for a type of cheese.

To determine if the term Gruyere is generic, the TTAB applied the test of Marvin Ginn. A generic term is one that the relevant public understands to be the common name of the goods or services or the name of the class of the products or services. See our web page entitled, Generic Terms, for examples of generic terms that were ineligible for registration at the USPTO.  Determining if a term is generic requires asking two questions: (1) what is the genus of goods or services at issue? and (2) is the term sought to be registered, understood by the relevant public primarily to refer to that genus of goods or services? The generic determination is based on the meaning of the term to consumers. The TTAB found that the genus of the goods was cheese and members of the general public who purchase or consume cheese to be the relevant public. In the end, the Board held that Gruyere is a generic term for a type of cheese in the U.S. See, U.S. Dairy Export Council et al. v. Interprofession du Gruyère and Syndicat Interprofessionnel du Gruyère, 2020 USPQ2d 10892 (TTAB 2020) [precedential].

In response, the European consortiums filed a complaint in the United States District Court for the Eastern District of Virginia challenging the TTAB decision. The District Court noted that the term “Gruyere” previously may have referred to cheese exclusively from Switzerland and France, but due to decades of importation of cheese labeled Gruyere produced outside the Gruyere region of Switzerland and France has diluted the meaning of the term rendering it generic. Thereafter, the European Consortium appealed to the Fourth Circuit of the Court of Appeals. The Fourth Circuit reviewed the evidence and also found that there was widespread labeling of Gruyere cheese originating in other countries besides Switzerland and France. The Fourth Circuit concluded that U.S. consumers understood the term “gruyere” referred to a type of cheese which renders the term gruyere generic. The reasoning for refusing to provide trademark protection for generic terms is that granting a party an exclusive right to utilize a generic term would be unfair and would interfere with competition.

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The Board’s Fifth Precedential Case of 2024

Suggestive marks with some conceptual weakness are still afforded a relatively broad scope of protection. See Sage Therapeutics, Inc. v. SageForth Psychological Services, LLC, Opposition No. 91270181 (April 12, 2024) [precedential], where the Board sustained an opposition based on priority and likelihood of confusion grounds. The Applicant was seeking to register the mark SAGEFORTH in standard characters for a lengthy list of services in class 44. The relevant portion included providing information in the field of psychological counseling, assessments, diagnosis, and treatment. The registered mark, SAGE CENTRAL provided services in class 44 for providing health and medical information about postpartum depression and treatment. Opposer pleaded six of its registrations and properly made the registrations part of the record, and because the applicant did not counterclaim to cancel any of the registrations, but merely to restrict the services, priority was not an issue in this case. See our web page entitled, Likelihood of Confusion Refusals 2(d) Refusals, for more on this topic.

The likelihood of confusion analysis was limited to the SAGEFORTH and SAGE CENTRAL registration. Regarding the similarities of the marks, the Board noted that the shared term SAGE was the dominant element in both parties’ marks. The parties noted that the word Sage is used to indicate wisdom or wise advice which is suggesting that the therapy services will provide wise counseling. Because Sage is the first element in each mark it is likely to be remembered by consumers. The Board held that the marks were visually similar since the marks were both Sage formatives. In addition, the marks have similar meanings and structure, and are likely to have the same commercial impression. The Board summed up the issue by stating that the shared Sage term will run the risk that consumers will believe there is an association or connection between the Applicant and Registrant. The similarities of the marks weigh in favor of likelihood of confusion.

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The Trademark Trial and Appeal Board (“TTAB” or “Board”) reversed the Examining Attorney’s refusal for likelihood of confusion based on identical trademarks, RAO’S for wine and restaurant services. See In re 1729 Investments LLC, Serial No. 90694523 (April 24, 2023) [not precedential]. This is not the first time, the Board reversed on this basis, see our blog post entitled, The TTAB Reverses a Refusal Relying On the Something More Standard (where the applicant applied for beer and the registration covered restaurant services). For more on the “something more” rule see our blog post entitled, The Origin Of The “Something More” Standard In Trademark Law.  The RAO’S case is an example where the TTAB holds the Examining Attorney accountable to its standard of proof. As mentioned above, the marks were identical, applicant was seeking to register RAO’S for wine and registrant was using RAO’S for restaurant and bar services.

The Board first compared the marks. The marks had some inherent conceptual weaknesses as it was a surname in one case and a middle name in the other case. Registrant in fact, sought registration under Section 2(f) of the Trademark Act. When a registration is issued based on acquired distinctiveness under Section 2(f), then it is an established fact the mark lacks inherent distinctiveness. Since the marks are conceptually weak, they are entitled to a narrower scope of protection. But of course, even weak marks must be protected against a similar or identical mark being registered for related goods and services. In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982). The marks are identical in their appearance, sound, meaning and commercial impression, thus the first Du Pont factor favors confusion.

The TTAB next assessed the relatedness of the goods and services. It is common knowledge that restaurants often serve alcoholic beverages such as wine, but it doesn’t necessarily follow that patrons and consumers expect wine to emanate from the same source as restaurants. In fact, there is no per se rule that food and beverage products and restaurant services are related. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993). The Trademark Office has to show “something more” than identical or similar trademarks used for wine and restaurant services. See In re Giovanni Food Co., Inc., 97 USPQ2d 1990, 1992 (TTAB 2011). See also, In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003).

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