The Trademark Trial and Appeal Board just reminded brand owners of a hard truth: you cannot relitigate a losing trademark opposition simply by adding generic words to your mark and tightening your identification of services. In Mars, Incorporated v. PAGS Inc., Opposition No. 91263504 (September 16, 2026), the Board sustained Mars’s opposition on claim preclusion grounds after PAGS filed a second application for a mark and services that closely tracked—but did not meaningfully depart from—the mark and services the Board had already rejected. Although the decision carries a “non-precedential” designation, it offers trademark practitioners and brand owners a detailed roadmap for understanding how the Board evaluates whether modifications to a mark and its associated services suffice to defeat res judicata.
Procedural Background & Key Facts
This dispute traces back to 2014, when PAGS filed an application for the standard character mark PET-AGREE for wholesale, retail, and online supply store services featuring pet grooming supplies. Mars opposed on likelihood-of-confusion grounds, citing its PEDIGREE marks for pet food and related goods, and in July 2019 the Board sustained Mars’s Section 2(d) claim in a non-precedential decision.
PAGS appealed to the Federal Circuit but voluntarily dismissed the appeal on January 21, 2020—and on that same day filed a new application for PET-AGREE GROOMING SUPPLIES. The new application narrowed services to wholesale-only, business-to-business supply store services for pet grooming supplies directed to pet professionals and commercial pet groomers, and expressly excluded pet food, pet treats, and related items. Mars again opposed, reasserting its confusion and dilution claims and adding res judicata and collateral estoppel. During the interlocutory phase, PAGS moved without consent to further amend its services to grooming supplies “made by third parties and carrying the third party’s brand name”—a motion the Board deferred until trial.
Denial of the Motion to Amend
The Board denied PAGS’s motion to amend its identification of services for two independent reasons. First, although the proposed amendment qualified as limiting under Trademark Rule 2.71, PAGS never consented to the entry of judgment on its broader, original identification. Second, PAGS failed to show that limiting its services to goods “made by third parties” would introduce a substantially different issue for trial—because “third party” in a service identification means any party other than the applicant, which includes Mars and its PEDIGREE-branded products.
The Three-Part Claim Preclusion Framework
Turning to the merits of res judicata, the Board applied the Federal Circuit’s three-part test from Jet, Inc. v. Sewage Aeration Systems: (1) the parties must be identical; (2) an earlier final judgment on the merits must exist; and (3) the second claim must rest on the same set of transactional facts as the first. PAGS conceded the first two prongs. The entire dispute therefore turned on the third prong—namely, whether the current Section 2(d) claim shared the same “core of operative facts” as the prior opposition.
The Board broke this inquiry into two sub-questions: (a) whether the marks in the two proceedings carry the same commercial impression, and (b) whether the likelihood-of-confusion evidence would be identical.
Same Commercial Impression
Applying the tacking standard, the Board found that PET-AGREE GROOMING SUPPLIES creates the same continuing commercial impression as PET-AGREE because PET-AGREE remains the sole source-indicating element; the added words GROOMING SUPPLIES are generic for the identified services, as third-party competitor advertising confirmed. Citing Miller Brewing Co. v. Coy International Corp., the Board characterized the addition as a “minor alteration” and warned that it “does not wish to encourage losing parties to insignificantly modify their marks after an adverse ruling and thereby avoid the res judicata effect of the prior adjudication.”
Same Transactional Facts
The Board also found that PAGS’s narrowed services did not generate a new nucleus of operative facts, for four reasons. First, the new identification merely carves a subset out of the broader prior description—removing retail services and adding B2B and professional-purchaser language—so the services remain in part legally identical, and the prior judgment extends to every service the broader identification encompassed. Second, expressly excluding Mars’s goods (pet food, treats, and related items) did not alter the relatedness inquiry the Board had already resolved. Third, because Mars’s registrations remain unrestricted as to trade channels and purchasers, its goods still presumptively move in all normal channels to all consumers—and even “pet professionals and commercial pet groomers” are not uniformly sophisticated, so the least-sophisticated-purchaser standard still governs. Fourth, the trial records substantially overlapped: Mars called the same corporate witness, and PAGS’s only admissible testimony came from the same declarations it submitted in the prior opposition.
Timing of the Filing
The Board acknowledged the notable timing—PAGS filed the current application on the exact same day it withdrew its Federal Circuit appeal—but declined to rest its decision on that fact alone, finding it “noteworthy” but insufficient by itself to establish evasive intent. The Board also noted that PAGS’s explanation for the timing—that during oral argument in the prior opposition, the Board had invited PAGS to amend its identification—fell outside the evidentiary record because oral hearings do not form part of the record.
Ramifications & Practice Tips
Although this decision lacks precedential status, it delivers practical lessons that trademark practitioners and brand owners should take seriously.
1. Generic additions to a mark will not break claim preclusion. The Board made clear that appending generic or descriptive matter—particularly disclaimed terms—to a previously rejected mark does not create a new commercial impression for res judicata purposes. Practitioners advising clients who have lost an opposition should conduct an honest assessment of whether any proposed modifications to the mark genuinely alter its source-indicating character, not merely its word count.
2. Narrowing an identification of services is not the same as changing it. The Board drew a critical distinction between narrowing services (which keeps a party within the same transactional facts) and changing them (which might introduce new facts sufficient to avoid preclusion). A revised identification that carves out a subset of previously encompassed services—adding B2B limitations, professional-customer restrictions, or product exclusions—still falls within the scope of the prior judgment.
3. Exclusions of an opposer’s goods do not reset the relatedness analysis. PAGS expressly excluded pet food and related items from its identification, but the Board treated this as irrelevant because the prior proceeding already assessed—and resolved—the relatedness of grooming supplies to pet food. Practitioners should recognize that an exclusion does not erase the factual findings from a prior adjudication.
4. Unrestricted registrations give opposers a structural advantage. Because Mars’s registrations contained no limitations on trade channels or purchasers, the Board continued to presume that Mars’s goods travel in all normal channels to all classes of consumers. Brand owners holding unrestricted registrations enjoy broad protection that can defeat an applicant’s attempt to dodge preclusion through identification-of-services restrictions alone.
5. If a tribunal invites you to amend, act immediately and on the record. PAGS claimed the Board suggested during oral argument in the prior opposition that it amend its identification—but PAGS never filed a motion to do so while the prior case was still pending. The Board noted that an unconsented motion to amend was available under Trademark Rule 2.133(a). Practitioners should treat any such invitation as time-sensitive and memorialize it through a formal filing rather than relying on it as justification for a second application.
6. Non-precedential decisions still signal how the Board thinks. While no future panel must follow this decision, its thorough analysis of the tacking standard in the claim preclusion context and its treatment of narrowed service identifications reveal the analytical framework the Board applies. Practitioners should monitor non-precedential opinions like this one for patterns that may foreshadow future precedential rulings or inform strategic decisions in pending cases.
The Bottom Line: The Board will not reward a party that dresses up a previously rejected mark with generic language and repackages its services in slightly narrower terms. Trademark owners who prevail in an opposition should take comfort in the durability of that judgment, and applicants contemplating a second bite at the apple should think carefully about whether their proposed changes truly break new factual ground—or merely rearrange the furniture.
Recent Comments