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.

The Examiner argued that the registrant was using TCU and TEACHERS CREDIT UNION as the source of the services prominently and throughout the materials while EVERWISE CREDIT UNION was merely token use, used in an inconspicuous manner buried in the text. See, e.g., In re Osterberg, No. 78331176, 2007 WL 616032, at *3 (TTAB 2007) (finding the mark not prominently displayed because it was buried in text describing the mark and, while the mark was shown in bold font, so was other matter). The USPTO contended that registrant’s blog post of June 26, 2023, announced it would be rebranding the credit union from TEACHERS CREDIT UNION to EVERWISE CREDIT UNION as of June 26, 2023, well after the Statement of Use deadline date. This announcement was more consistent with registrant’s earlier uses of TCU and TEACHERS CREDIT UNION as shown in the specimen submitted with the Statement of Use.

Finally, when registrant’s new website launched after the Statement of Use deadline, it did prominently feature EVERWISE CREDIT UNION at the top of the webpage set apart from the other wording on the page and was used multiple other times with the registered services. There was also evidence of an online article from Inside Indiana Business, stating the registrant’s new branding to EVERWISE CREDIT UNION would launch on June 23, 2023. The registrant attempted to argue that because the Examining Attorney accepted the specimen that this should be sufficient evidence of use in commerce. However, it is critical to keep in mind that the acceptance by the Examining Attorney does not control the issue of use in commerce. The Director nor the TTAB are bound by prior decisions of Examining Attorneys, see TMEP 1716.04(c). The Board concluded that the change of name was executed on June 26, 2023, after the SOU Deadline (April 14, 2023), and therefore cancelled the trademark registration for EVERWISE CREDIT UNION. This decision provides guidance for practitioners that when in doubt, either request an extension to file the Statement of Use, and if no extensions are remaining, file a new application before the deadline of the last date to file the Statement of Use. If you have questions regarding proper use of your trademark in commerce, please feel free to contact the firm for a courtesy consultation.

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.

In the case at bar, the consent agreement was brief, and the substantive terms were contained in a single page. The Board is interested in why the parties believe confusion is unlikely. The more evidentiary support included in the consent, the more likely the Board will believe the parties made a reasoned assessment of the marketplace. The parties missed the mark here and failed to discuss if there would be separate trade channels or restrictions in their fields of use. Nor did the parties discuss the manner of display of the mark, and for example perhaps one party would use the trademark in conjunction with that party’s house mark to reduce the likelihood of confusion. In conclusion, since the marks were very similar, and the goods legally identical in part, and the period of concurrent use short, the Board held the consent agreement was not detailed enough to be given substantial weight to overcome the refusal and affirmed the refusal. If you have questions regarding whether a consent agreement will be sufficient to obviate confusion, please contact the firm for a courtesy consultation.

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.

I would expect that the Board’s further analysis of the sixth factor will impact the evaluation of the first DuPont factor. The CAFC stated that reconsideration of the sixth factor would likely cause the Board to re-evaluate the similarities of the marks because the commercial strength of the mark may be altered based on consideration of additional third-party use. The first DuPont factor focuses on commercial impression, visual appearance, sound and meaning. Therefore, the CAFC also remanded for reconsideration of the first DuPont factor.

This CAFC decision is not surprising as the Court does admonish the Board from time to time regarding the need for more consistent standards. See In re Erik Brunetti, 2025 USPQ2D 1105 (Fed. Cir. 2025) [precedential], where in August of 2025, the CAFC vacated the Board’s decision and remanded the matter, in anticipation of the Board sharpening its analysis for “failure to function” cases. Hopefully, CAFC decisions such as these, will reduce those Board decisions that appear to be subjective refusals, and in the case of In re Erik Brunetti, it could be the turning point in the failure to function doctrine. If you have questions regarding likelihood of confusion cases and the application of DuPont factors, please do not hesitate to contact the firm for a courtesy consultation.

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].

Whether an examining attorney should apply the doctrine of foreign equivalents turns upon the significance of the foreign mark to the relevant purchasers, which is based on an analysis of the evidence of record, including, for example, dictionary, Internet, and LexisNexis® evidence. See TMEP 1207.01(b)(vi). If the evidence shows that the relevant English translation is literal and direct, and no contradictory evidence of shades of meaning or other relevant meanings exists, the doctrine generally should be applied by the examining attorney. When determining the appropriate English translation of the foreign wording in the mark, an examining attorney should view the translations in the context of any significant features in the mark, such as design or wording elements, the identified goods and/or services in the application, the relevant marketplace, and the specimen. Here, the Court pointed out that the word in question was a simple common term, clothing. This is another factor to consider when determining if the ordinary American purchaser will stop and translate.

In conclusion, the foreign equivalent of a generic English word is no more registrable than the English word itself. For more on this topic, see the firm’s web page entitled, The Trademark Doctrine of Foreign Equivalents. See also, the firm’s blog post entitled, The Doctrine Of Foreign Equivalents Is Alive And Well, for a case involving this doctrine and a likelihood of confusion refusal. If you have questions regarding the doctrine of foreign equivalents, or other trademark related inquiries do not hesitate to contact the firm for a courtesy consultation.

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.

Here, the TTAB pointed out that two of the third-party registrations were owned by one source and therefore, technically only nine third parties are relevant, bringing the third party registration count down by one. The number 12 or twelve suggests a form of measurement, and therefore the nine third party marks demonstrate the common element 12 or twelve is conceptually weak for cosmetic goods. Applicant’s mark contains a carrier element an octagon in green color with the number 12 inside the geometric shape. The design elements add to the commercial impression and aid in distinguishing the mark from the other 12/twelve marks for cosmetic goods. Moreover, the TTAB argues that although the registrant’s mark TWELVE COSMETICS contains a disclaimed term, it does provide a structure and appearance different than Applicant’s mark.

This case continues sending a strong message to Examining Attorneys that third-party registrations alone can be evidence of a term’s recognized meaning. Once this is demonstrated, it may be concluded that the mark is weak and in addition, the dissimilarities between the marks may be sufficient to distinguish the sources of the marks. Prior to this decision, according to my count, the least amount of third-party registrations accepted to prove a weak mark was twelve. Now we have ten, and technically nine due to the two marks owned by one third party. We must keep in mind that In Juice Generation, Inc. v. GS Enterprises LLC, the Court held that evidence of third-party use is powerful even where the specific extent and impact of the usage is not established. The “crowded field” argument should not be overlooked when receiving a likelihood of confusion refusal. If you have questions, regarding how to successfully leverage a “crowded field” argument to overcome a 2(d) refusal or other trademark related questions, please feel free to contact the firm for a courtesy consultation.

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.

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.

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.

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).

To understand the legal requirements and benefits of filing a Declaration of Incontestability under Section 15 of the Lanham Act, see our web page entitled, Incontestable Trademarks. If you qualify to file a Declaration of Incontestability, it will become more difficult for a third party to invalidate your trademark. For example, once your mark registers, it becomes prima facie evidence of the validity of the trademark, but an incontestable trademark shall be conclusive evidence of the validity of the registered mark. Thus, it is more burdensome and difficult to prove invalidity of a registered incontestable mark than a registered mark without incontestable status. Once a mark is incontestable, the grounds to invalidate it will be restricted to those grounds listed in Section 14 of the Lanham Act. To view the restricted grounds, please see our webpage entitled, Challenging Trademark Rights After Five Years of Registration.

This CAFC decision is significant for a couple of reasons. Firstly, it clarifies that fraud in connection with filing and acquiring incontestability status is independent from fraud in connection with filing the application and obtaining registration of the mark. Further fraud in connection with filing a Section 15 Affidavit is also distinct from fraud committed in renewing or maintaining a trademark. And that engaging in fraud while filing a Section 15 Declaration cannot be used as a basis to cancel the registration. Secondly, the CAFC has made it clear that it will not expand the statutory basis under Section 14 of the Lanham Act.

The Court noted that when Congress sets forth a lengthy list of provisions, it will not add to that long list since, the adding could contradict a purposeful omission. However, one can still initiate a trademark cancellation proceeding if fraud is committed while obtaining a registration. Moreover, this CAFC decision also still permits a cancellation proceeding to be initiated if fraud was committed in connection with maintaining a trademark registration. See Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 48 (Fed. Cir. 1986) (“Fraud in obtaining renewal of a registration amounts to fraud in obtaining a registration within the meaning of section 14(c) of the Lanham Act.”).

I tend to agree more with the Dissent of this CAFC decision. The USPTO should be able to exercise its authority without the Court usurping its power. There should be a consequence for the reckless filing of USPTO documents, and for disregarding the truth while seeking an expansion of trademark rights that the registrant was not entitled to receive. On that note, the CAFC did remand the decision to the USPTO to determine what if any sanctions would be implemented against the Registrant or its attorney, so we will have to wait to see if a consequence ensues. This decision is a reminder that it is important to consult with a trademark attorney prior to filing any documents at the Trademark Office, including post registration documents. If you have questions or need assistance with your post registration filing at the USPTO, please contact the firm for a courtesy consultation.

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