The following is a summary of select, precedential decisions issued by the U.S. Trademark Trial and Appeal Board in fiscal year 2026 (i.e., October 1, 2025 through September 30, 2026) regarding ex parte appeal and trademark opposition proceedings.
A. Ex parte proceedings
- In re Jiminez: No. 97551823, 2025 WL 3126703 (Nov. 5, 2025)
Issue: Likelihood of Confusion under Section 2(d)
Background: Jason Jimenez (“Applicant”) sought to register on the Principal Register pursuant to Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f) GASPER ROOFING (with “roofing” disclaimed) for roofing services in International Class 37. The Examiner issued a final refusal to register based on, inter alia, that the mark was likely to cause confusion with the registered Mark JASPER CONTRACTORS (“contractors” disclaimed) for “Roofing services” in International Class 37.
Holding: Board reversed the Section 2(d) refusal of GASPER ROOFING.
The Board recognized the long-standing principles that key considerations in a Section 2(d) refusal are (a) similarity of the marks in sight, sound, meaning, and commercial impressions; and (b) the relatedness of the parties’ goods or services. Here, the Board found that there were no recognized pronunciations of “Gasper” and the Examining Attorney merely speculated, without evidentiary support, that “jasper” and “Gasper” are pronounced the same. In addition, ROOFING and CONTRACTORS, albeit disclaimed, further contributed to differences in sound and appearance. The presence of the words ROOFING and CONTRACTORS in the respective marks also had differences in connotation and commercial impression when the marks were considered in their entireties. Moreover, purchasers of roofing products, since they are expensive, generally exercise greater care in purchasing decisions, making confusion less likely.
Practice Tip: the determination under Section 2(d) is based on an analysis of all of the probative evidence of record bearing on the likelihood of confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”). The likelihood of confusion analysis can be applied only to the DuPont factors for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019).
2. In re Everson: No. 97104306, 2026 WL 906530 (Mar. 31, 2026)
Issue: Failure to function as a trademark
The Trademark Examining Attorney refused registration of Applicant’s proposed mark on the Supplemental Register under (i) Trademark Act Sections 23(c) on the ground that the proposed mark was a functional design for the identified goods.
Holding: The Board affirmed the refusal to register Applicant’s proposed mark (consisting of a pancake cut into eight equal wedges) under Trademark Act Section 23(c) on the ground that it is a functional design for the identified goods.
Key findings: Functional matter cannot serve as an indicator of source for goods, i.e., a trademark. Qualitex v. Jacobson Prods. Co., 514 U.S. 159, 165 (1995). Matter is functional “‘if it is essential to the use or purpose of the article or if it affects the cost or quality of the article,’ that is, if exclusive use of the feature would put competitors at a significant…related disadvantage.” Qualitex, 514 U.S. at 165 (internal citation omitted). The Board’s analysis was based on application of the functionality-test factors set forth in the matter of In re Morton-Norwich Prods., Inc., 671 F.2d 1332 (CCPA 1982), referred to as the “Morton-Norwich factors.”
Practice tip: Applicants should be careful to ensure that their own marketing materials do not support the Examiner’s arguments for refusal. Here, the Applicant’s marketing materials and statements touted the product design’s utilitarian advantages, namely, facilitating more convenient serving, sharing, and transporting of a pancake. The same tip would apply to Applicants who argue that their mark is not generic or merely descriptive in response to a refusal. In other words, Applicants should carefully review their marketing materials, as such evidence could be potentially held against them.
3. In re Textnow Inc.: No. 98231457, 2026 WL 1920576 (June 23, 2026)
Issue: Relying on Section 8 grace period for a Section 44(e) Registration to rely on the prior registered Mark as a basis for the newly filed Mark.
Background: Applicant applied to register the standard-character mark TOUCH MOBILE (with “Mobile” disclaimed), for inter alia, telecommunications goods and services in Classes 9 and 38. The Examining Attorney issued a partial refusal of registration as to Classes 9 and 38 on two grounds. First, Applicant’s mark TOUCH MOBILE, as applied to the goods in Class 9 and the services in Class 38, is likely to cause confusion under Section 2(d) of the Trademark Act with five marks on the Principal Register, including MOBILE TOUCH in standard characters (with MOBILE disclaimed) for “text and numeric wireless digital messaging services…” in Class 38. Applicant argued that ownership of its prior registration of TOUCH MOBILE for identical goods and services (which registration was administratively cancelled after Applicant filed its current application) weighed against a likelihood of confusion in this case. Applicant’s Prior Registration issued on October 17, 2017 under Section 44(e) and was cancelled for failure to file the required Section 8 Declaration.
Holding: The Board affirmed the refusal to register Applicant’s TOUCH MOBILE Mark based on a likelihood of confusion under with MOBILE TOUCH under Section 2(d). In affirming the refusal to register, the Board concluded that Applicant’s and Registrant’s marks were highly similar and Applicant’s services in Class 38 were legally identical in part to the cited registration’s services, and the trade channels and classes of consumers were presumed identical. All these factors weighed in favor of a likelihood of confusion. In addition, the Board found that Applicant’s application did not overlap with the term of its prior registration. The Board emphasized the Federal Circuit’s instruction that “the PTO’s allowance of . . . prior registrations does not bind the Board or this court.” In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001).
4. In Re Ralphs Famous Italian Ices Franchise Corp.: No. 90302728, 2026 WL 1920835 (June 25, 2026))
Issue: failure to function (mere ornamentation), inherent distinctiveness, and acquired distinctiveness
Background: Ralph’s Famous Italian Ices Franchise Corp. (Applicant) sought registration on thePrincipal Register of the following proposed mark for a wide variety of beverages and confectionsin Classes 29, 30, 32, and 33; franchising and restaurant management assistance in Class 35; and restaurant services in Class 43:
The Examiner had refused registration as to all identified classes of goods and services, as the proposed mark fails to function as a trademark and service mark under Sections 1, 2, 33 & 45 of the Trademark Act, and because it constitutes ornamental matter that is not inherently distinctive and Applicant failed to prove its claim, which it made in the alternative, of acquired distinctiveness under Section 2(f) of the Trademark Act. Additional items were also addressed, including the Class 35 specimen and description of the Mark.
Holding: The Board affirmed the refusal to register the proposed mark as to all goods and services because (i) the evidence shows that it was ornamental matter that was not inherently distinctive and (ii) Applicant had failed to prove its alternative claim that it has acquired distinctiveness.
- Inherent distinctiveness. The Board noted that product packaging trade dress may qualify as inherently distinctive, depending on the evidence. Here, the Board adopted the test found in In re Fantasia Distrib., Inc., No. 86185623, 2016 WL 5866950 (TTAB 2016), for a design constituting a repeating ornamental pattern on goods: (a) the nature of Applicant’s goods and whether there is an industry practice of ornamenting such goods; (b) the nature of the pattern, including whether any element of the pattern might be perceived as source indicating if it were standing alone; (c) how common the pattern is, whether it is composed of common or unusual repeating shapes, whether such shapes repeat in a common or unusual manner, and whether the overall pattern is similar to, or a mere refinement or variation of, a common and well-known form of ornamentation; (d) the manner in which the repeating pattern appears on the product, including the size and location of the pattern on the product and how much of the product is covered by the pattern; and (e) whether the pattern creates a distinct commercial impression apart from any accompanying wording and design elements.
In applying the Fantasia test to each of the Applicant’s identification of goods and services, the Board found (with the help of an extensive record of third-party evidence) that the evidence overwhelmingly showed that blue & white stripes, and alternating color stripes generally, are a basic and common type of ornamentation used in connection with ice creams and frozen confections and restaurants generally. In addition, the evidence concluded that many other vendors of these products use vertical stripes of other alternating pairs of colors or multiple colors. In summary, the Board concluded that as to each of the classes of goods and services identified in the application, that consumers would perceive the proposed mark as mere ornamentation.
- Acquired distinctiveness. The Board also concluded that Applicant’s Mark, despite extensive evidence of sales, advertising, and related evidence, failed to show that its Mark had acquired distinctiveness. Proving a claim of acquired distinctiveness under Section 2(f) requires not only evidence of an applicant’s “substantially exclusive and continuous use” of the mark in sales and advertising—i.e., its efforts to educate the public to associate the proposed mark with a single source, but also the effectiveness or success of those efforts. Applicant’s evidence did not establish this fact. The Board further stated that even if Applicant had made concerted efforts to educate consumers to regard the stripe pattern as uniquely indicating Applicant’s goods and services, the plethora of third-party uses of blue & white or similar stripes in connection with the same goods and services “presents a nearly insurmountable hurdle for any such effort succeed” since the evidence showed that Applicant’s use had not been substantially exclusive.
Practice tip. If your client has many arguments to overcome in an ex parte appeal, it is best to inform the client of the percentage chances of success based on the nature of the refusal. For example, Section 2(d) and Section 2(e) refusals are upheld approximately 85%-93% of the time, depending on the statistical source.
B. Inter Partes Decisions
1. August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA No. 91277224, 2025 WL 4107480 (Nov. 14, 2025: non-precedential) (redesignated precedential January 27, 2026).
Issue: doctrine of foreign equivalents and likelihood of confusion
Background: Applicant sought registration of the following mark for chocolates in Class 30:
that included a statement that the English translation of “danke” is “thank you.” Opposer, the owner of the Mark “MERCI” and derivative “MERCI” marks for chocolates and related goods in Class 30, including MERCI (in standard characters). The application was opposed on the grounds of priority and likelihood of confusion under Section 2(d).
Holding: Generally, the Board applies the doctrine of foreign equivalents when one mark is in the English language and the other is in a foreign language for purposes of determining likelihood of confusion. There are times, however, when the Board has applied the doctrine where the two marks are from different foreign languages. Under the doctrine of foreign equivalents, foreign words used as a mark are translated into English and then tested for likelihood of confusion. In re Vetements Grp. AG, 137 F.4th 1317, 1325 (Fed. Cir. 2025). Here, the Board concluded that based on the evidence of record, an appreciable number of U.S. purchasers are capable, without assistance, to translate MERCI and DANKE to mean “thank you” as they are common expressions. Given the differences in sound and appearance and the differences in commercial impression, this outweighed the respective marks’ identical meaning. In Re Sarkli, Ltd., 721 F.2d 353 (Fed. Cir. 1983).
The Board noted the Mark “Thank You” to be conceptually weak for chocolates, as consumers would perceive the theme of saying “thank you” in connection with the goods (as a “thank you” gift), rather than to identify a unique source. Opposer also damaged its own cause as it used “thank you” in various descriptive, non-trademark slogans including, “Thank you means merci”; “the sweetest way to say thank you”; “Nothing says thank you like Merci”; and “This holiday season say thank you with Merci.”
Practice tip: the Board reminded the parties that search summaries in the nature of listings of third-party websites have limited probative value because they are not the websites themselves and the information is truncated. Applicant’s evidence here, however, was slightly different as it consisted of image search results which were more probative than a typical search summary because they (i) included product images from which the Board could ascertain the nature of the uses, ii) identified the names of retailers, and (iii) in some instances reflected that the chocolate was for sale (e.g., “in stock”).
2. Olsman, Mackenzie, Peacock & Wallace, P.C. v. Thomas No. 91272167, 2026 WL 2884462 (Sept. 10, 2026)
Issue: non-ownership of Mark
Background: Applicant, an attorney who specialized in birth injury matters, sought registration of the Mark
(with “BIRTH JUSTICE” disclaimed) for “legal services, namely, providing legal consultation and research services, and litigation assistance and strategy services relating to birth injury,” in International Class 45. The Opposer, a law firm, opposed registration on the grounds of non-ownership, fraud based on non-ownership and an incorrect domicile address, and likelihood of confusion under Trademark Act Section 2(d) based on Opposer’s prior use of essentially the same Mark at common law. Opposer also pleaded ownership of a trademark application for its BIRTH JUSTICE and Design Mark for “legal services,” in International Class 45. Applicant was employed by Opposer’s law firm at the time she filed the Application and as of the application’s first use date. Applicant testified that before leaving her old firm and joining Opposer, she informed Opposer that she was developing a “Birth Justice” brand for her birth‑injury practice. Opposer’s application was based on use in commerce was filed on October 6, 2021, alleging August 10, 2018 as the date of first use anywhere and “October 2018” as the date of first use in commerce.
Applicant filed on December 16, 2020, based upon an allegation of use of the mark in commerce under Section 1(a), alleging February 25, 2019 as the date of first use anywhere and first use in commerce. The Applicant was a former employee of the Firm at the time she filed the application. Applicant used the firm’s mailing address in filing, and then updated her correspondence a month later to reflect her personal mailing address. Moreover, Applicant was still employed by Opposer as of the alleged first use date contained in her application. A birthjustice.com domain name redirected to Applicant’s biography page on Opposer’s website. In her Trial Brief, Applicant argued that she granted Opposer an oral or implied license to use the BIRTH JUSTICE Mark. Since this was not pleaded as an affirmative defense and first raised after trial, it was not considered.
Holding: The question before the Board was whether Applicant, in her individual capacity, owned the Birth Justice Logo for the identified services as of the December 16, 2020 application filing date. It is well settled that only the owner of a mark may file for registration. And merely designing or inventing a symbol does not create trademark rights but rather use in commerce. The Board held that based on the totality of facts, there was no doubt that Applicant was acting in the scope of her employment with Opposer at the time she participated in the development of the Birth Justice logo and as of the date of first use of the Mark while she was still employed by Opposer. Applicant’s first use was at a law conference where Applicant handed out business cards with the BIRTH JUSTICE Mark that included Applicant’s name and the name of Opposer’s law firm as well as the firm’s address and website information. Accordingly, this use was held to create a sufficient association between Opposer and the Mark in the minds of consumers, not Applicant.
For further information about trademark opposition proceedings, see here.
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