TTABlog Test: Is BLACKTHORN for Construction Management SAAS Confusable with BLACKTHORNE for Computer-Based Information Systems Consulting?

The USPTO refused to register the mark BLACKTHORN SOFTWARE, in standard character and design form, for on-line software services (SAAS) in the field of construction or project management, employee and contractor tracking and management, and time tracking and management [SOFTWARE disclaimed] in view of the registered mark BLACKTHORNE for "Consulting services in the design and implementation of computer-based information systems for businesses; Technological planning and consulting services in the field of computer and cyber security." Not surprisingly, the Board found the marks to be similar, but what about the goods and services? How do you think this came out? In re Blackthorn IP, LLC, Serial Nos. 97714024, 97714033 (December 12, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Marks: The Board observed that "consumers’ tendency to focus on and recall the first part of a trademark means the added generic word 'software' in Applicant’s mark provides little distinction from the cited mark BLACKTHORNE. *** And when a descriptive term, like 'software for Applicant’s software-based services," is added to a mark, consumers will understand the term as describing the services, not as identifying the source of the services. For this reason, descriptive terms, like the disclaimed 'software' in the applied-for mark, receive less emphasis in the likelihood of confusion analysis."

There was no evidence that the word "Blackthorn(e)" has different meanings in the marks. The Board concluded that "Applicant’s word mark and the cited mark are similar in every respect and this fact increases the likelihood of confusion."

As to applicant's word-and-design mark, the design element "does not create a new and different meaning for that created by the literal elements of this mark." The Bord found that "Applicant’s word + design mark is likely to create a commercial impression similar to that created by the cited BLACKTHORNE mark."

The Goods and Services: The Board acknowledged that the cited registration does not identify software services; instead, it refers to "computer-based information systems." However, applicant conceded that this phrase involves "software or computing," as does the listing of services in the application. Moreover, the registration "identifies a broad range of consulting services relating to software of any kind, and for that reason, the narrower software services identified by Applicant may be effectively subsumed within the scope of the services identified in the cited Registration."

We find that Applicant’s software services include at least some amount of consulting or planning with prospective customers of the services. To provide the sort of specialized software solutions identified in the Application without any consultation or planning would make no sense. Applicant concedes this point when it acknowledges “a market trend whereby companies that offer particular software products also offer consultations on use and implementation of those particular software products sold by the same company.”

The Board concluded that the services "are closely related and this increases the likelihood of confusion."

Other Factors: As to trade channels, applicant maintained that the involved services are offered through each party's respective website. The Board noted that this argument "is based on actual market uses (or likely uses). Our analysis, on the other hand, must be limited to the normal trade channels based on the services identified in the Application and cited Registration."

As to purchaser care, the cited registration "identifies a broad range of services and there is no evidence that consumers of such services consistently exercise care when making purchasing decisions."

We find this is a mixed market, with some consumers likely making careful purchasing decisions and some making less careful decisions, and we are required to base our decision “on the least sophisticated potential purchasers.” Stone Lion Capital Partners, 746 F.3d at 1325. We find that the “least sophisticated potential purchasers” of Registrant’s consultation and planning services likely exercise ordinary care in making purchasing decisions, which does not materially alter the likelihood of confusion. The fourth DuPont factor is neutral.

Conclusion: The Board concluded that the first and second DuPont factors weighed "most heavily" in this appeal, and so it affirmed the refusal.

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TTABlogger comment: Prunus spinosa, called blackthorn or sloe, is a species of flowering plant in the rose family,

Text Copyright John L. Welch 2025.

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

The rate of section 2(d) affirmances so far this year is about 92% (a bit higher than usual). Here are three recent appeals. No hints this time. How do you think they came out? [Answer in first comment].

In re Innocent Health LTD, Serial No. 97528277 (December 8, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon). [Section 2(d) refusal of the mark NOVOMINS NUTRITION for “Food supplements in the form of gummies for general health and well-being; Gummy vitamins" [NUTRITION disclaimed] in view of the registered mark NOVOMIN for “Food supplements; Nutritional supplements.”]

In re The Toasted Yolk Cafe, LLC, Serial No. 97579560 (December 8, 2025) (Opinion by Judge Thomas L. Casagrande) [Section 2(d) refusal to register the mark shown below, for “Restaurant and café services” [BRUNCH disclaimed] in view of the registered mark TOAST A BRUNCH LIFE for “Café services; Restaurant services."]

In re Find Salt Owned By Independent Restaurants Management One Person Company LLC, Serial Nos. 98492526 and 98492654 (December 10, 2025) [not precedential] (Opinion by Judge Elizabeth K. Brock). [Section 2(d) refusal of the two marks shown first below, for, inter alia, cafe services and restaurant services, in view of the registered marks shown second below, for "Restaurant and café services."]

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

Text Copyright John L. Welch 2025.

CAFC Upholds TTAB's Grant of Counterclaim for Cancellation: Applicant Proved Priority Through Assignment of Common Law Mark After Proceeding Commenced

The CAFC affirmed the Board's December 2023 decision [TTABlogged here] granting a counterclaim petition for cancellation of a registration for the mark I AM MORE THAN AN ATHLETE. GP GAME PLAN & Design (shown below) for "charitable fundraising services by means of selling t-shirts to raise funds for educational and entertainment programs." Game Plan, Inc. opposed six applications to register the marks I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE for clothing and entertainment services, claiming likelihood of confusion with its registered mark. The sole issue for the Board was priority, and Applicant UNIP came in first. UNIP based its priority claim on a 2019 assignment of common law rights of the mark MORE THAN AN ATHLETE, rights that UNIP acquired after the opposition was commenced. Neither the Board nor the CAFC saw a problem with that. Game Plan, Inc. v. Uninterrupted IP, LLC, 2025 USPQ2d 1451 (Fed. Cir. 2025) [precedential].

Game Plan relied on the filing date of its underlying application (December 28, 2016) as its constructive first use date. It did not challenge the establishment of common law rights by UNIP's assignor in 2013, nor that UNIP continued to use the mark, but it did dispute the validity of the 2019 assignment. Game Plan claimed that the assignment violated the trademark antitrafficking rule of Section 1060(a)(1) of the Trademark Act for two reasons: first, it was an assignment in gross; and second, it constituted an improper assignment of an intent-to-use application. The CAFC disagreed.

Substantial evidence supported the Board finding that the 2019 assignment satisfied the requirement that goodwill be transferred. The assignment expressly defined the purchased assets as trademarks "together with the goodwill of the business associated therewith." Furthermore, UNIP's use of the mark was substantially similar to the assignor's use, sharing a common purpose and audience. And UNIP retained the individual assignor as a consultant. Thus there was a "continuity of goodwill." And so, the 2019 Assignment was not an assignment in gross.

Nor did the assignment improperly transfer UNKP's intent-to-use applications. Section 1060 restricts the assignment of intent-to-use applications before an amendment to allege use or a verified statement of use is filed. However, here "UNIP did not assign its pending intent-to-use applications. Rather, it received an assignment of pr-existing common law rights to an already-used mark." (emphasis in original).

Game Plan also argued that the timing of the 2019 Assignment violated 37 C.F.R. § 2.133(a). The CAFC again disagreed. Section 2.133(a) governs amendments to trademark applications or registrations during a TTAB proceeding. Game Plan contended that the 2019 Assignment should be treated as a substantive amendment to UNIP's intent-to-use applications and therefore it was prohibited because the assignment occurred after Game Plan filed its Notice of Opposition. However, Game Plan cited no authority supporting its claim that the acquisition of common law trademark rights constitutes an "amend[ment] in substance” within the meaning of § 2.133(a)."

In any case, the Board's ruling on priority was not based on UNIP's intent-to-use applications, but on its ownership of common law rights pre-dating Game Plan's priority date.

Finally, Game Plan feebly argued that the Board had failed to consider certain evidence relevant to the assignment issue. Game Plan conceded that it did not submit any evidence during its trial period. Instead, it attempted to rely on documents submitted with a motion of summary judgment that it had filed. That was improper, and the Board did not abuse its discretion by declining to consider that summary judgment evidence.

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TTABlogger comment: Hat Tip to Howard Shire, the LeBron James of trademark law.

Text Copyright John L. Welch 2025.

CAFC Reverses TTAB: KAHWA not Generic for, or Descriptive of, Cafés and Coffee Shops - Substantial Evidence Lacking

In a precedential ruling, the CAFC reversed the TTAB's August 2023 decision [here] affirming a refusal to register the mark KAHWA for "Cafés; Coffee shops" on the ground of genericness, or alternatively, mere descriptiveness. The Board had based its findings on the English-language meaning of KAHWA as a traditional type of green tea from Central Asia. But the CAFC saw no evidence of any café or coffee shop in the United States ever selling khawa tea and so khawa tea could not be considered a "key aspect" of Applicant Bayou Grande's services. In re Bayou Grande Coffee Roasting Co., Appeal No. 2024-1118 (Fed. Cir. December 9, 2025) [precedential].

Genericness: In reaching its finding of genericness, the Board relied on the CAFC's decision in In re Cordua Rests., Inc., 823 F.3d 594, 603 (Fed. Cir. 2016) (CHURRASCOS, a type of grilled meat, found to be generic for restaurant services), which held that a term "can be generic ... if the relevant public ... understands the term to refer to a key aspect of [the] genus - e.g., a key good that characterizes a particular genus of retail services." Finding that cafés and coffee shops serve a variety of tea beverages, the Board deemed KAHWA to be generic for Bayou Grande's services because it refers to a key aspect thereof.

Bayou Grande argued that the Board's genericness finding was not supported by substantial evidence. The CAFC agreed.

There is no record evidence of any café or coffee shop in the United States ever selling kahwa, a specific type of Kashmiri green tea. This is undisputed. *** KAHWA therefore cannot be generic for cafés and coffee shops because there is no evidence selling kahwa is a key aspect of café and coffee shop services, let alone any aspect of these services. *** In other words, the fact that relevant customers understand KAHWA to refer to a specific type of Kashmiri green tea is insufficient to establish genericness for cafés and coffee shops selling coffee and other kinds of tea.

Mere Descriptiveness: Based on the evidence that KAHWA is a type of green tea, and the fact that cafés and coffee shops serve tea, the Board deemed KAHWA to be merely descriptive of the services because "KAHWA immediately informs prospective customers that the establishment serves this particular type of green tea drink" and "no imagination or thought is required by prospective customers to discern the nature of Applicant's services." Again, the CAFC saw a lack of substantial evidence in support of that finding.

As we already established, it is undisputed that there is no record evidence showing any café or coffee shop in the United States has ever sold kahwa. *** This necessarily means there is no evidence selling kahwa is a “characteristic of the goods or services” of cafés or coffee shops, let alone evidence showing relevant customers would immediately know selling kahwa is a characteristic of cafés and coffee shops. Bayer, 488 F.3d at 963.

Foreign Equivalents: The examining attorney had also refused registration via the doctrine of foreign equivalents on the ground that KAHWA means coffee in Arabic. On appeal, Bayou Grande argued that the doctrine did not apply because KAHWA has a well-established alternative English meaning as referring to Kashmiri green tea. The Board had declined to address that issue, but Bayou contended that the USPTO should be precluded from relying on that doctrine in any future proceeding since the Board's decision conceded that KAHWA has a well-established alternative meaning. The USPTO argued that the CAFC should not consider the issue because the Board did not do so. The CAFC again sided with Bayou Grande.

Given the parties do not dispute KAHWA has a well-established alternative English meaning, as the Board decision admits, no translation is necessary since the doctrine of foreign equivalents does not apply as a matter of law. In re Spirits, 563 F.3d at 1352; see also Cont’l Nut Co. v. Le Cordon Bleu, 494 F.2d 1395, 1396–97 (C.C.P.A. 1974). Under these circumstances, the Board’s failure to address this issue, which was fully developed and briefed to the Board, does not preclude us from deciding a legal question. N. Am. Philips Corp. v. Am. Vending Sales, Inc., 35 F.3d 1576, 1579 (Fed. Cir. 1994) (“We thus address the legal question, which the district court did not reach ....”).

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TTABlogger comment: I guess you could say that the TTAB was roasted in this one.

Text Copyright John L. Welch 2025.

VETEMENTS AG Files Reply to USPTO's Certiorari Opposition: TTABlog Asks, What About the Perception of 99 Percent of American Purchasers as to Genericness?

Vetements AG has filed its Reply Brief [pdf here] on its petition for writ of certiorari in the VETEMENTS genericness case. In upholding the TTAB's decision affirming the genericness refusal, the CAFC ruled that Vetements AG had the burden to prove it unlikely that the ordinary American purchaser (including those familiar with the French language) would not stop and translate the French word "vetements" into the English word "clothing." [The petition for certiorari may be found here, and the USPTO's opposition here.] [Distributed for conference of January 9, 2026].

Vetements AG points out that French is spoken by fewer than 1% of Americans, yet the Board and the CAFC found that 1% is enough, under the doctrine of foreign equivalents, to justify the finding that the mark VETEMENTS is generic for clothing. My question is, should the remaining 99% of American purchasers be ignored? In the likelihood-of-confusion context, if a survey showed that less than 1% - or even less than 15% - of consumers would be confused as to source with respect to a particular mark or marks, a Section 2(d) refusal (or an infringement claim) would not stand. Why is 1% enough when the issue is genericness?

Here is Vetement AG's introduction to the Reply Brief:

The categorical application by the court of appeals of a judicially generated concept to overcome an Act of Congress warrants this Court’s review. The Trademark Act provides that no trademark by which the goods of an applicant may be distinguished from those of others shall be refused registration unless an exclusion applies. It is therefore the burden of Respondent to establish the basis for refusal, which determination is to be predicated on the perception of the trademark by the American consuming public. Whether to attempt translation of a term is part of that burden, rather than first translating and then fitting the translation to the particular situation in order to arrive at an unwarranted conclusion that the consuming public would likely undertake such a translation. Further, this case presents an outcome-determinative circuit conflict that this Court should resolve.

The questions presented are recurring and important and the Court should grant the petition in order to clarify the statutory mandate for registration of a trademark.

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TTABlogger comment: Let's hope that the Supreme Court takes up this case and clarifies the doctrine of foreign equivalents.

Text Copyright John L. Welch 2025.

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

Section 2(d) affirmances continue to run at a 90% clip this year (as usual). Here are three recent appeals. No hints this time. How do you think they came out? [Answer in first comment].

In re TST Biomedical Electronics Co., ltd., Serial No. 98033208 (December 3, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn). [Section 2(d) refusal of the mark IPRO-LAB for, inter alia, diagnostic preparations for medical purposes and reagent paper for medical purposes, in view of the mark PRO-LAB, registered on the Supplemental Register for overlapping goods.]

In re Night Owl Concrete, LLC, Serial No. 98341508 (December 4, 2025) (Opinion by Judge Martha B. Allard) [Section 2(d) refusal to register the mark shown below left, for software and services for scheduling and delivery of concrete by mixer trucks [CONCRETE disclaimed] in view of the registered mark shown below right, for "delivery services for construction tools and construction supplies" [CONSTRUCTION SUPPLY, INC. and FREE NIGHT DELIVERIES disclaimed.]

In re Callie Renae McMorran, Serial No. 98502058 (December 5, 2025) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.). [Section 2(d) refusal of the mark HUSTLE SOLD SEPARATELY for "hats; hoodies; shirts" in view of the registered mark THE DREAM IS FREE...THE HUSTLE IS SOLD SEPARATELY for "clothing, namely, hats, shirts, sweatpants, hoodies and jackets."]

Click on photo for larger picture

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

Text Copyright John L. Welch 2025.

USPTO Seeks Applicants for Chief Administrative Trademark Judge at the TTAB

The USPTO is seeking applicants for the position of Chief Adminstrative Trademark Judge at the TTAB. The job announcement and details may be found here. Currently, the closing date for applications is December 10, 2025.

As the Chief Administrative Trademark Judge for the Trademark Trial and Appeal Board (TTAB), you will: 

• Serve as a full voting member of the TTAB exercising full administrative, legal and technical authority over the Board.
• Develop and implement the USPTO rules associated with trademark appeals and trademark opposition, cancellation, concurrent use, and interference proceedings.
• Ensure the predictability, reliability, and consistency of the thousands of decisions issued annually by Board judges he or she will oversee.
• Be responsible for the comprehensive executive management, strategic planning, and financial functions essential to effective Board operations.
• Develop and maintain quality, timeliness, and productivity performance standards for the Board's legal staff and administrative support staff trademark judges and administrative support staff.
• Interact with the legal community, including the Court of Appeals for the Federal Circuit, bar associations, participate in public conferences and meetings, and create presentations for foreign dignitaries regarding the Board.

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Text Copyright John L. Welch 2025.

On Remand, TTAB Again Denies Petition to Cancel BABIE'S MAGIC TEA Registration: Confusion Unlikely with BABY MAGIC for Skincare Products

Back in February 2024, the CAFC vacated the Board's decision denying a petition for cancellation of a registration for the mark BABIES' MAGIC TEA for "medicated tea for babies that treats colic and gas and helps babies sleep better." [TTABlogged here]. The Board had found no likelihood of confusion with the registered mark BABY MAGIC for various toiletry goods (including baby lotion). The CAFC ruled that the basis for the Board's finding as to the second DuPont factor was unclear, that the Board had ignored certain evidence bearing on the third factor, and that it erred in failing to weigh the first factor heavily in favor of Petitioner Naterra. On remand, the Board has again concluded that confusion is not likely, and so it denied the cancellation petition. Naterra International, Inc. v. Samah Bensalem, Cancellation No. 92074494 (December 3, 2025) [not precedential] (Opinion by Judge Mark Lebow).

Second Dupont factor: With respect to the relatedness of the goods, Petitioner Naterra relied entirely on its expert witness, who testified generally about the marketing concept known as "umbrella branding" (in a global sense and not focused on the U.S. market) and what he characterized as "BABY MAGIC’S Natural Zone of Expansion." But his testimony did not include any information about whether the umbrella brands and products he mentioned are sold in the U.S., or that U.S. consumers have been exposed to them.

The Board noted the lack of evidence that consumers would be likely to encounter the specific goods identified in the registrations offered under the same marks in a manner that would lead them to believe they emanate from a common source. And so the Board again found that Naterra failed to show that the goods are related.

Third factor: The Board acknowledged Respondent Bensalem's admission that the channels of trade for the involved goods are similar, and that she sells her BABIES’ MAGIC TEA to “parents of babies and caregivers of babies” - the same customers of Petitioner’s BABY MAGIC products.

First factor: The Board noted that in its prior Decision, it found that “the marks BABY MAGIC and BABIES’ MAGIC TEA are more similar than dissimilar in appearance, sound, connotation and commercial impression.” Here, it "stand[s] by that finding." "While the marks share common elements (“BABY/BABIES” and “MAGIC”), they are not identical or highly similar, as the addition of “TEA” and the possessive form create distinctions in appearance, sound, and overall commercial impression that moderate their similarity."

Balancing the Factors: Mindful of the CAFC's directive that the first factor should weigh heavily in favor of the petitioner, the Board found the marks to be "more similar than dissimilar," but it did not find the marks to be "highly similar or identical." "We thus weigh the first factor of similar marks heavily in our analysis and in favor of concluding confusion is likely, but it does not deserve dispositive weight." [emphasis added). It also weighed the third factor of similar trade channels in favor of likelihood of confusion.

However, the Board weighed the lack of relatedness of the goods under the second factor "heavily" "against concluding that confusion is likely." It found Naterra’s BABY MAGIC mark to be somewhat conceptually weak and lacking in demonstrated commercial strength, and so the fifth factor weighed against a likelihood of confusion. The fourth, sixth, eighth, tenth, and twelfth DuPont factors were deemed neutral.

On balance, the differences in the goods, coupled with the conceptual weakness of the marks, outweigh the similarity of the marks and trade channels. As the Federal Circuit has recognized, even where marks share similarities, the absence of a demonstrated relationship between the specific goods can preclude a finding of confusion.

Concluding that confusion is not likely, the Board denied the petition for cancellation.

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TTABlogger comment: Seems to me that the Board got it right. FWIW: I don't think the first factor should weigh heavily in Naterra's favor.

Text Copyright John L. Welch 2025.

TTABlog Test: Is WISHBONES for a Casino Bar Confusable with WISHBONE FARMS for Restaurant Services?

The USPTO refused to register the mark WISHBONES for "bar services provided in a casino,” finding confusion likely with the registered mark WISHBONE FARMS (standard characters) for "“restaurant, catering and restaurant carryout" [FARMS disclaimed]. Applicant Caesars did not dispute the relatedness of the services but argued that the marks have "clearly different" connotations because the word FARMS suggests that registrant’s services are associated with a farm at a specific location where registrant provides its services or sources food. How do you think this appeal came out? In re Caesars License Company, LLC, Serial No. 98083981 (November 24, 2025) [not precedential] (Opinion by Judge Catherine Dugan O'Connor).

Examining Attorney Juna Bell submitted evidence that farm-to-table restaurants are desirable for sustainable or cleaner dining, with consumers now accustomed to farms being associated with restaurants, such that the “presence of FARMS in the registrant’s mark does not change the commercial impression of the marks because consumers may perceive WISHBONE FARMS as being related to WISHBONES but provided on a farm or featuring food from farms." She also provided evidence that casinos have embraced “eatertainment,” in which guests seek unique and elevated dining experiences; even casino buffets “have really increased in quality, and food has gone upscale exponentially,” with food cooked fresh several times a day.

Applicant Caesars insisted that the term WISHBONE in the cited mark would be perceived as either the name of the farm or as referring to farm animals such as turkeys or chickens, which have a bone called a wishbone. In contrast, its mark WISHBONES has a very different connotation when used with casino bar services, either being arbitrary, suggesting the name of a person (such as the bar’s owner), or conveying the concept of good luck while gambling “just as getting the bigger half of the Thanksgiving turkey wishbone is reputed to bring good luck."

The Board, however, did not believe "that consumers familiar with the general connotation of FARMS relating to farm-to-table food are likely to perceive WISHBONE in the cited mark as referring to an anatomical feature of poultry rather than the common tradition.

Moreover, there was no evidence that consumers would perceive WISHBONES as the name of the bar’s founder or any other person. “WISHBONE” is not a common personal nickname and Applicant’s mark does not contain an apostrophe indicating that it is possessive.

Finally, Caesars urged that the USPTO’s registration of marks that are nearly identical except for the word “FARM” or “FARMS” for restaurant services warrants a similar outcome here. In support, Applicant referred to ten pairs of such of registrations. The Board conceded that some of the pairs (e.g., JUNE/JUNE FARMS and ROSEWOOD/ROSEWOOD FARMS) appeared on their face to contradict the refusal, but it shook them off.

We acknowledge the importance of consistency in examination actions, but we are not bound by the prior registrability determinations of examining attorneys made at different times on different records. Instead, we must assess the registrability of Applicant’s mark based on the record before us.

And so, the Board affirmed the refusal.

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TTABlogger comment: Was this appeal merely wishful thinking? Should Caesars have conceded the relatedness of the services?

Text Copyright John L. Welch 2025.

TTAB Denies SMARTLING/EASYLING Cancellation Petition for Translation Software Due to Differences in Marks, Purchaser Sophistication, and Lack of Actual Confusion

In this nine-year-old proceeding, the Board denied Smartling, Inc.'s petition for cancellation of a registration for the mark EASYLING (standard characters) for translation software, finding confusion unlikely with the registered and common law mark SMARTLING for overlapping goods. In an earlier skirmish, Respondent Skawa moved for summary judgment on the grounds of claim preclusion and issue preclusion based on its successful defeat of a unfair competition lawsuit brought by Smartling. [TTABlogged here]. The Board there agreed that claim preclusion applied to Smartling's claims of abandonment and lack of bona fide intent, which claims could have been brought in the civil action, but denied any preclusion vis-a-vis its likelihood of confusion claim due to the differences in transactional facts and the lack of any specific finding in the jury's conclusion regarding likelihood of confusion. Smartling, Inc. v. Skawa Innovation Kft., Cancellation No. 92063654 (December 1, 2025) [not precedential] (Opinion by Judge Mark A. Thurmon).

Large companies and others who rely heavily on the Internet are the target customers of the parties' services: translating versions of a website into many different languages so that a visitor to the website may see the content in her or his preferred language almost instantaneously. However, the end user is not the relevant consumer; but rather highly specialized professionals with a background in translation services.

We are dealing with a case of highly sophisticated purchasers and a careful, protracted purchasing process. Such circumstances greatly reduce the risk of confusion, as this Board and the courts have consistently held. The fourth DuPont factor, therefore, weighs very heavily against a finding that confusion is likely.

As to the strength of Smartling's mark, the Board found that the term “ling” is a reference to linguistics or language. "The term, therefore, is descriptive of the parties’ services, and many related services within the broader translation services market." "To the highly sophisticated translation professionals within this market, who knows Petitioner’s services, Petitioner’s mark will suggest a translation management system that is smart."

[T]he “ling” segment of this mark is weak and will not be viewed as a distinctive source-identifying element of the mark. It is only the mark as a whole that has some conceptual strength. Given this marginal conceptual strength, we find the sixth DuPont factor is neutral, but we do so with the express reservation that the “ling” segment of Petitioner’s mark is not distinctive.

The Board found the marks to be "not similar." "Given that the only shared element of the marks is descriptive of the parties’ services, that element will have minimal source-identifying impact on the relevant purchasers."

The SMARTLING mark likely suggests a smart translation management system, one that performs complex functions for its users. The EASYLING mark, on the other hand, suggests an easier-to-use translation management system. The words “smart” and “easy” have wholly distinct meanings, and when used in these marks, lead to different meanings and commercial impressions for each mark. This is particularly true in this case, where the purchasers are highly sophisticated.

Therefore, the first DuPont factor "weighed heavily" against a finding that confusion is likely.

Finally, the Board noted that the parties have been in direct competition for more than 15 years. "Given such a long period of direct competition, one would have expected some actual confusion to have occurred if confusion is likely." "The absence of probative actual confusion evidence, therefore, suggests that the relevant purchasers were never confused by these two marks. The seventh and eighth DuPont factors, taken together, weigh somewhat against a finding that confusion is likely."

We place great weight on the dissimilarity of the marks (DuPont Factor One) and the purchasing conditions (DuPont Factor Four), which together easily outweigh the fact that the parties compete. Petitioner may have lost business to Respondent, but the record shows that is a result of competition, not because of confusion in the market.

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TTABlogger comment: Hat-tip to Bostonian Tom O'Connell, a fellow patent/trademark attorney.

Text Copyright John L. Welch 2025.

TTABlog Test: Is "MUSIC.AI" Merely Descriptive of Music Production Software?

The USPTO refused registration of the proposed mark MUSIC.AI under Section 2(e)(1), deeming the mark merely descriptive of software for creating and modifying audio recordings, including musical audio recordings. Applicant Moises Systems argued that the mark is a unitary term and a double entendre, and that no other person or entity "is using MUSIC.AI with a period between the terms." How do you think this appeal came out? In re Moises Systems, Inc., Serial No. 98142204 (November 26, 2025) [not precedential] (Opinion by Judge Elizabeth A. Dunn).

Not surprisingly, the Board found the term MUSIC to be "highly" descriptive of applicant's software, noting that the software facilitates the creation and modification of "music, songs, sounds, and audio recordings." "The identification of goods and services therefore serves as evidence of mere descriptiveness."

As to the term AI, the evidence indicated that the term "is a noun, or the abbreviation, for 'artificial intelligence,' which is defined as 'software designed to imitate intelligent human behavior.' Applicant’s software is described broadly enough to encompass software using AI to perform its functions." Examining Attorney Cindy Nguyen submitted website excerpts from various websites using the term AI to refer to music production software (e.g., Remusic - AI Music Creation and Music Learning Platform).

Applicant Moises Systems pointed to third-party registrations for marks containing the term “AI” on the Principal Register without disclaimer of AI (e.g., keybe.ai). The Board was not impressed. Many of the registered marks combined AI with either a distinctive term or a design element, and so "the presence of AI in the mark does not establish that the term AI is distinctive." Moreover, three of the registrations were 14 years old or older.

While there is no evidence that the term “artificial intelligence” is new, the record indicates that the use of AI in software available to the general public is a more recent occurrence. *** "[T]he location of a new term on the spectrum of distinctiveness is anything but static. The USPTO has, and must have, the freedom, over a period of decades — or increasingly, just years — to consider such questions anew whenever the evidence compiled in a new, unique record reflects such dynamic changes."] (quoting In re ActiveVideo Network, Inc., No. 77967395, 2014 TTAB LEXIS 283, at *27-28).

The Board found that the remaining evidence of seven third-party registrations on the Principal Register for the term AI "combined with presumptively descriptive matter does not rebut the evidence that the term AI is descriptive as applied to Applicant’s software."

Considering the combined terms, the Board noted the third-party use of the term MUSIC AI to describe a type of software using artificial intelligence for music applications" (e.g., ResearchGate - How Music AI Is Useful: Engagements with Composers, Performers and Audiences). At its own website, Moises uses both MUSIC.AI and MUSIC AI (no period) for software to facilitate creation and modification of "music, songs, sounds, and audio recordings."

As to the argument that MUSIC.AI is a unitary mark that would not be perceived as the descriptive term MUSIC AI, the Board disagreed. The Board again pointed to Moises's own website, where Moises uses term without a period.

In general, the presence of punctuation does not alter the commercial impression of a literal term. *** In view of the considerable evidence of third-party use of MUSIC AI for music software, we find that this case is no exception, and the addition of the dot does not alter the mere descriptiveness of MUSIC.AI as a whole.

As to the no-other-user argument, the Board once again observed that "[t]he fact that an applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive."

Finally, Moises argued that because .AI is a top-level domain, or part of an internet address, and MUSIC.AI is Applicant’s domain name, MUSIC.AI is a double entendre, but the Board found that argument way off-key: "having a top-level domain as part of the mark does not preclude the mark being merely descriptive. We find probative the sixteen third-party registrations with the suffix .AI that issued in the last six years on the Supplemental Register: Registration on the Supplemental Register indicates that the mark is not inherently distinctive, e.g., because it is merely descriptive."

In short, "the terms MUSIC and AI do not lose their merely descriptive significance when joined together by a period, nor does the composite itself result in a unique or distinctive meaning which differs from the meanings of the terms considered separately." And so, the Board affirmed the refusal.

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TTABlogger comment: AI is the country code top-level domain (ccTLD) of Anguilla, a British Overseas Territory in the Caribbean.

Text Copyright John L. Welch 2025.