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 Naterra International, Inc. v. Samah Bensalem, Cancellation No. 92074494 (December 3, 2025) [not precedential] (Opinion by Judge Mark Lebow).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.

Read comments and post your comment here.

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.

Read comments and post your comment here.

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.

Read comments and post your comment here.

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.

Read comments and post your comment here.

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.

Precedential No. 11: TTAB Awards Section 44(d) Priority to Domiciliary of British Virgin Islands Based on Reciprocity, Grants Summary Judgment Motion Contingent on Ultimate Registration

In this opposition to registration of the mark CANDYVERSE for confectionary products, the parties filed cross-motions for summary judgment on the only contested issue: priority. Applicant Zeeth Ltd., a British Virgin Islands company, relied on the filing date of its European Union application as the basis for its Section 44(d) priority claim. The dispute boiled down to whether the British Virgin Islands, a self-governing British overseas territory, “extends reciprocal rights to nationals of the United States by law[.]” CandyVerse, LLC v. Zeeth Ltd., Opposition No. 91289595 (November 24, 2025) [precedential].

Section 44(d) of the Lanham Act allows an applicant to rely on the filing date of its application in a foreign country as its date of constructive use under certain circumstances. Under Sections 44(b) and (d), to receive a priority filing date, the following requirements must be met:

1. the application in the United States must be filed within six months from the filing date of the first-filed foreign application; 
2. the application must include a verified statement that the applicant has a bona fide intent to use the mark in commerce; and 
3. the applicant’s country of origin and the country where the foreign application was filed must (a) be party to an international treaty or agreement with the United States that provides a right of priority or (b) extend reciprocal rights to priority to U.S. nationals.

Applicant Zeeth filed its U.S. application within six months of its EU filing date, it included a verified statement of bona fide intent, and the EU and USA are parties to the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights of 1994. However, the parties disputed whether Zeeth is eligible to claim priority, and particularly whether Applicant Zeeth’s country of origin is party to an international treaty or agreement with the United States or extends reciprocal rights to priority to U.S. nationals.

Zeeth conceded that the British Virgin Islands is not a party to a relevant treaty or agreement with the United States, but it argued that the Virgin Islands Trade Marks Act (“VITMA”) extends reciprocal priority rights to U.S. nationals and thus enables Zeeth to enjoy a right to priority under Section 44(d).

Although a British overseas territory, the British Virgin Islands is Applicant’s country of origin because the British Virgin Islands is internally self-governing and Applicant is organized under the laws thereof. * * * Ultimately, the parties’ dispute boils down to whether the British Virgin Islands “extends reciprocal rights to nationals of the United States by law[.]”

The Board observed that "[w]hether a foreign nation extends reciprocal rights of priority to U.S. nationals pursuant to Section 44(b) is an issue of first impression." Zeeth is "entitled to the benefits of Section 44 if the British Virgin Islands extends to U.S. nationals the same opportunity to claim a priority date based on a foreign-filed application." Reviewing the VITMA, the Board concluded that it does.

In summary, the VITMA affords any person seeking a registration in the British Virgin Islands the right to claim a priority date based on its first application filed in a country that is party to the Paris Convention or a WTO member if the person files in the British Virgin Islands within six months of such an application. Because the law does not set forth a limit with respect to a person’s country of origin, it affords U.S. nationals who satisfy its other requirements the opportunity to assert a priority right.

And so, the Board concluded that "[b]ecause the British Virgin Islands extends a reciprocal priority right to U.S. nationals, Applicant is entitled to the priority date under Trademark Act Section 44(d) based on its European Union application," and it granted Zeeth's motion for summary judgment, contingent upon Zeeth's establishment of constructive use - i.e., subject to the issuance of a registration to Zeeth. See Sections 7(c) and 44(c) of the Lanham Act.

The Board also noted that, “[t]o obtain a priority filing date under §44(d), the foreign application does not have to be filed in the applicant’s country of origin. However, to obtain registration under §44(e) based on the foreign registration that will issue from the application on which the applicant relies for priority, the applicant must establish that the country in which the application was filed is its country of origin.” And so, Zeeth was able to establish a priority date under Section 44(d) but it cannot rely on Section 44(e) as the basis for registration. It will have to establish actual use in commerce.

Read comments and post your comment here.

TTABlogger comment: A good discussion of Section 44 law. Also, confirming my frequent rant, the Board pointed out that "the TMEP does not have the force and effect of law." See W. Fla. Seafood, Inc. v. Jet Rests., Inc., 31 F.3d 1122, 1127 n.8 (Fed. Cir. 1994); see also In re Pennington Seed, Inc., 466 F.3d 1053, 1059 (Fed. Cir. 2006). Nonetheless, the Board cites the TMEP in footnote 6.

Hat-tip to FOBs Scott Alprin and Brian Taddonio.

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 3, 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.

Read comments and post your comment here.

Text Copyright John L. Welch 2025.

Supreme Court Developments in TTAB cases

The U.S. Supreme Court has recently denied petitions for certiorari in several cases arising out of the  TTAB and CAFC, while two petitions remain pending.

On October 6th, the Court denied petitions for certiorari in the US SPACE FORCE case (Section 2(a) false connection refusal) [TTABlogged here] and in the "pink hip joint" case (Section 2(e)(5) functionality).  [TTABlogged here].

On November 10th, the Organization for Transformative Works filed an Amicus Brief supporting the grant of certiorari in the RAPUNZEL case (consumer standing).  [TTABlogged here]. The case has been distributed for conference on December 12, 2025.

On November 21st, the USPTO filed an Opposition [pdf here] to the petition for certiorari in the VETEMENTS genericness case. [TTABlogged here].

On November 24th, the Court denied a petition for certiorari in the "green medical glove" case (genericness).  [TTABlogged here].

Read comments and post your comment here.

TTABlogger comment: The Supreme Court docket search site is here, where one may sign up for email updates for any case.

Text Copyright John L. Welch 2025.

TTAB Deputy Chief Judge Thomas V. Shaw Retires

Deputy Chief Judge Thomas. V. Shaw has retired. Judge Shaw was appointed to the Board in 2011, after serving as a Trademark Examining Attorney, Senior Attorney, Managing Attorney, and Associate Solicitor at the USPTO. Judge Melanye K. Johnson has assumed the role of Deputy Chief Judge.

Read comments and post your comment here.

TTABlogger comment: By my count, Judge Shaw is the ninth TTAB judge to resign this year. There are now 22 judges on the Board.

Text Copyright John L. Welch 2025.

TTAB Posts December 2025 Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled two oral hearings for the month of December 2025. Both will be held in-person in the Madison East Building, 600 Dulany Street 9th Floor (Hearing Room C), Alexandria, VA. Briefs and other papers for the case may be found at TTABVUE via the links provided.

December 4, 2025 - 11 AM : In re Nowpay, LLC, Serial No. 98073381 [Section 2(d) refusal of the mark shown below, for , credit card and debit card transaction processing services, in view of the registered mark PAYNOW for, inter alia, "Credit card and debit card services; Credit card payment processing services"].

December 10, 2025 - 10 AM: Olsman, MacKenzie, Peacock & Wallace, P.C. v. Emily Grace Thomas, Opposition No. 91272167 [Opposition to registration of the mark shown below, for legal services, on the grounds of non-ownership, fraud, and likelihood of confusion with opposer's essentially identical common law mark for identical services].

Read comments and post your comment here.

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 Curo Health Services, LLC, Serial No. 98414104 (November 19, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington). [Section 2(d) refusal of the mark ILLUMIA HEALTH for “palliative care services; hospice services; home health care services" [HEALTH disclaimed] in view of the registered mark ILLUMINA for, inter alia, "medical services."]

In re Herbert, Rowland & Grubic, Inc., Serial Nos. 97698576 and 97698586 (November 21, 2025) (Opinion by Judge David K. Heasley) [Section 2(d) refusal to register the mark HRG, in standard character and logo form (below left), for "engineering services focusing on the coordination and design of civil infrastructure systems; structural engineering design services; site design services, namely, engineering design services for commercial buildings; land surveying services” in view of the registered mark shown below right, for "professional engineering services for the design and construction of facilities in the transportation, water, governmental services, senior living and energy markets."]

In re Bruhhl LLC, Serial No. 97741879 (November 21, 2025) [not precedential] (Opinion by Judge Christoper C. Larkin). [Section 2(d) refusal of the mark SANITEE for “Spray sanitizer for personal use," in view of the registered mark SANITY for "Disinfectants, hand sanitizers."]

Read comments and post your comment here.

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

Text Copyright John L. Welch 2025.

TTAB Grants Petition to Cancel RAFT Registration for Computer Game Software Based on Prior Trademark Use and Analogous Use

In an 81-page opinion, the Board granted a petition for cancellation of a registration for the mark RAFT for "survival mobile games," finding that Petitioner Redbeet Interactive had priority for the identical mark for computer game software, based both on trademark use and use analogous to trademark use. Or, as the Board put it, "Petitioner’s RAFT mark reached our shores before Respondent’s RAFT mark did." This blog post will attempt to hit the "highlights." Redbeet Interactive AB v. Alexander Novikov, Cancellation No. 92075698 (November 20, 2025) [not precedential] (Opinion by Judge Christopher C. Larkin).

Petitioner Redbeet objected to the testimony declaration of Respondent Novikov (in English) on the ground that "Mr. Novikov was not competent to provide such Declaration and there is no reason to believe that [he] understood what he signed." Redbeet pointed out that during cross-examination, Mr. Novikov required a Russian translator in order to understand the questions asked of him, and he responded only in Russian throughout the deposition, requiring the translator to translate his responses back into English for the record.” Novikov stated that he understands English "at a very low – low level," and that he required a translator "[i]n order to have a full understanding of the questions asked of me."

The Board pointed out that the proper practice "would have been for Mr. Novikov to sign a declaration in Russian, have the signed Russian declaration translated into English by a qualified translator, and submit the English translation introduced into evidence under oath by the translator with the Russian original." It sustained Redbeet's objection and struck the Novikov Declaration from the record in its entirety, as well as two of the three exhibits to the declaration.

With respect to priority, the parties agreed that the critical date was April 28, 2017, the date on which Respondent’s RAFT game was published on the Google Play Store and made available to consumers in the United States. The Board carefully set out the history of Redbeet's development of the RAFT game, beginning in October 2016 with the creation of a "development blog" for the game and the publishing of blog entries on October 13, 2016.

Petitioner Redbeet Interactive AB was formed in February 2017. Four days later, the Developers published their second blog entry and made a first prototype of the RAFT game available to the general public for downloading. During the summer of 2017, the Developers continued to post entries on their blog and on social media with information about the RAFT game and new features that were being added to the game.

On May 23, 2018, the Developers released the RAFT game on Steam Early Access, because they had had plans to add more features to the game and "Early Access was the best vehicle for that.” A "full release" was listed on Steam in June 2022.

The parties differed "dramatically" as to the characteristics that a computer game must have before trademark rights can attach. According to Respondent Novikov, the game must be a "completed" game; according to Redbeet, an "uncompleted" game with bugs and future modifications suffices if the game can be played. The Board concluded that Redbeet had the better of the argument.

Respondent’s vision of a “completed” or “final” version of computer game software is an illusion. Software, a good that is ubiquitous in modern society, is not a static one, but instead evolves by its very nature; as anyone who owns a mobile phone or uses a personal computer can attest, software is routinely updated.55 The record suggests that computer game software may be the paradigm of such dynamism.56 The relevant issue with respect to when trademark rights attach to computer game software is not when it is “final” or “completed,” but rather when consumers recognize computer game software as a game that can be played and the involved mark is associated by purchasers in the United States with a particular source for the goods

The Board found that, from the standpoint of consumers, the RAFT game was a playable computer game in its most rudimentary version and continued to be one throughout its development, and all versions of that game came from the source identified as “Redbeet.” "[F]or purposes of priority, Petitioner is not required to show that its use of RAFT prior to April 28, 2017 would entitle it to registration of its mark based on use of the mark “in commerce.” Rather, Petitioner need only prove that the RAFT mark was “previously used in the United States” prior to that date.

The Board found Redbeet enjoyed priority because its RAFT mark was in fact used "in commerce" before April 28, 2017, and such prior use necessarily means that the mark was “previously used in the United States.”

Between December 16, 2016, the date of the release of the RAFT game on itch.io, and April 21, 2017, the Developers’ RAFT listing on itch.io had nearly 14,000,000 page views, and nearly 3,500,000 users, and the largest portion of users during this time period (13.11%) were from the United States. *** That is, there were approximately 450,000 U.S. players of the RAFT game before April 21, 2017. These activities establish that the RAFT game was “transported” in commerce in the same manner as the email software.

Moreover, the Board found that the Developers made analogous use of the RAFT mark between October 2016 and the end of April 2017, and they and Redbeet took steps to commercialize the game both during and after that period. Accordingly, Redbeet proved its priority by analogous use if its pre-April 28, 2017 distribution of the RAFT game through the Internet did not constitute technical trademark use of the RAFT mark in commerce.

Finally, the Board jettisoned Novikov's laches defense because "it is well established that equitable defenses such as laches and estoppel will not be considered and applied where, as here, the marks of the parties are identical and the goods are the same or essentially the same."

Read comments and post your comment here.

TTABlogger comment: What's next? A suit for trademark infringement?

Text Copyright John L. Welch 2025.

TTABlog Test: Two Section 2(d) Refusals of THE JILLY BOX: How Did the Appeal Turn Out?

The USPTO refused to register the mark THE JILLY BOX (standard characters) [BOX disclaimed] for "jewellery; curated boxes being kits comprised of jewellery" in Class 14, and for subscription box services (described more fully below) in Class 35, on the ground of likely confusion with two different registered marks. Keeping in mind the comment of one former TTAB judge that the outcome of a Section 2(d) case can be predicted 95% of the time based on just the marks and the goods, how do you think these appeals (set out in more detail below) came out? [Answer in first comment]. In re The Jilly Box Inc., Serial No. 90253914 (November 19, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

As to the class 14 goods, registration of THE JILLY BOX for "jewellery; curated boxes being kits comprised of jewellery" was refused in view of the registered mark shown immediately below, for "jewelry."

As to the class 35 services - "subscription services, namely, online retail store services featuring subscription boxes containing clothing and handbags, footwear, fashion accessories in the nature of belts, scarves, shoulder wraps, mittens, gloves and socks and headwear, health and beauty, home décor, technology, fitness and food products; promoting the goods and services of others through the distribution of boxes filled with assorted items in the fields of fashion, health and beauty, home décor, technology, fitness and food products" - registration of THE JILLY BOX was refused in view of the registered mark JILLY'S MOM MADE THAT (in standard form) for "On-line retail store services featuring woman, teens, and children’s apparel, namely, shirts, long sleeve shirts, short sleeve shirts, tank tops, sweaters, dresses, pants, capris, jackets, footwear, hats and caps, children’s and infant’s apparel, namely, shirts, tank tops, jackets, pants, capris, jumpers, overall sleepwear, pajamas, rompers and one-piece garments, bodysuits, baby bibs not of paper, children’s headwear, gloves for apparel, hats for infants, one piece garment for infants and toddlers, shirts for infants, babies, toddlers and children, sleeping garments, shoes, sandals, boots, purses, clutches, handbags, all-purpose carrying bags, wallets, and plush toys."

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TTABlogger comment: Good luck!

Text Copyright John L. Welch 2025.