- Bullshine Distillery 23-1682.pdf [NEEDS_REVIEW]

• Proper time period for determining whether a term was generic such that it could not be registered in the first instance.: For purposes of initial registrability, genericness turns on the relevant public’s perception at the time registration is sought/obtained; a term is not barred from registration solely because it may have been used generically at some earlier point in time.
• Whether the TTAB applied the correct genericness legal framework.: The TTAB applies the correct legal standard when it identifies the relevant genus and public and then evaluates evidence of consumer understanding of the term at the relevant registration time for each challenged registration.
• Fame/strength evidence in DuPont analysis and harmless error.: The Board may require contextual evidence to evaluate fame from sales/advertising and rankings, and any misstep in the fame-factor analysis is harmless where the Board nevertheless finds the mark commercially strong and affords it a broad scope of protection.
• Requirement to consider DuPont factors of record and effect on the likelihood-of-confusion determination.: The Board must consider DuPont factors that are supported by evidence and argument, but a likelihood-of-confusion determination may be affirmed where the Board addressed the pertinent factor(s) and substantial evidence supports dispositive findings (e.g., mark dissimilarity and conceptual weakness) that outweigh other factors.

- Ceramtec 23-1502.pdf [NEEDS_REVIEW]

• When an expired utility patent and related materials connect a claimed product feature to utilitarian advantages, that evidence strongly supports a finding of trademark functionality under TrafFix/Morton–Norwich.: A utility patent’s claims, specification, and prosecution history may be used as strong evidence that a claimed feature is functional; TrafFix does not require the patent to expressly label the feature as functional or to concern the same end-use goods, so long as the evidence shows the feature is a useful part of the invention.
• Standard for competitors’ alternative designs under the third Morton–Norwich factor.: To weigh against functionality, the record must contain probative evidence of actual or potential alternative designs that work equally well; absent such evidence, the TTAB may treat the factor as neutral and an appellate court will not reweigh the evidence.
• Allocation of the burden of proof in a § 23© functionality cancellation.: In a functionality cancellation, the petitioner bears the burden to prove functionality by a preponderance of the evidence; quoting TrafFix’s “heavy burden” language does not constitute improper burden shifting where the TTAB expressly applies the correct burden and finds the petitioner carried it.

- Dollar Financial Group 23-1375.pdf [NEEDS_REVIEW]

• Whether the zone of natural expansion doctrine can be used to establish priority for different goods/services against intervening common-law users.: The zone of natural expansion doctrine is purely defensive: it may be invoked to prevent a junior user from registering a confusingly similar mark for logically related goods/services within the senior user’s natural expansion, but it does not confer an affirmative right to register/claim priority for expanded goods/services when doing so would conflict with another party’s intervening rights.
• Similarity of marks and effect of descriptive/generic matter in DuPont factor 1 analysis.: In comparing marks, descriptive or generic matter may be given less weight, so adding terms like “PAWN” or “JEWELRY” may not avoid a finding of high similarity when the shared wording is dominant and the overall commercial impression remains substantially the same.

- Fraunhofer-Gesellshaft 23-2267.pdf [NEEDS_REVIEW]

• Whether misleading silence was established as a matter of law for equitable estoppel.: A patentee’s multi-year silence after knowing of accused use can constitute misleading conduct supporting equitable estoppel, particularly where the patentee helped build or enable the accused system and the accused infringer could reasonably infer acquiescence.
• Whether SXM proved reliance as a matter of law to support equitable estoppel on summary judgment.: To establish reliance for equitable estoppel, the accused infringer must show that the patentee’s misleading conduct was actually considered and influenced the accused infringer’s relevant actions; business-justification testimony that decisions were driven by market pragmatics can create a genuine dispute precluding summary judgment.
• Whether prejudice can be found without an undisputed showing of reliance.: Material prejudice must be causally tied to reliance on the patentee’s misleading conduct; absent undisputed evidence of reliance, prejudice cannot be established as a matter of law for summary judgment.

- Heritage Alliance 24-1155.pdf [NEEDS_REVIEW]

• Whether the TTAB’s finding that the opposer’s mark is (highly) descriptive is supported and properly analyzed as a whole mark.: In assessing descriptiveness, the Board must consider the mark as a whole but may evaluate individual components to determine the overall commercial impression; substantial evidence supported finding that a composite term directly and immediately describes the entire service, making it highly descriptive.
• Effect of five years’ use under 15 U.S.C. § 1052(f) on proving acquired distinctiveness for a highly descriptive mark.: Section 2(f) provides that the PTO/Board may accept five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness, but the Board has discretion to decline to treat such use as sufficient—particularly for a highly descriptive mark where more evidence may reasonably be required.
• Opposer’s burden in a Lanham Act opposition when likelihood of confusion is effectively conceded but the opposer relies on a non-distinctive common-law mark.: Even if likelihood of confusion is not disputed, an opposer must prove its asserted prior mark is protectable (distinctive inherently or through acquired distinctiveness) as of the relevant date; use of a non-distinctive designation does not create cognizable trademark rights that can confer priority.

- In re Bayou Grand Coffee 24-1118.pdf [NEEDS_REVIEW]

• Whether the Board relied on a new ground of refusal by affirming on the Kashmiri green-tea meaning of the mark.: A Board decision is not a new ground of refusal where the applicant had a fair opportunity to respond to the examiner’s theory and the examiner did not withdraw that refusal; the touchstone is fair notice and opportunity to react to the thrust of the rejection.
• Whether the doctrine of foreign equivalents required translating the mark from Arabic to assess descriptiveness/genericness.: The doctrine of foreign equivalents does not apply as a matter of law where the term has a well-established alternative English meaning such that ordinary purchasers (including foreign-language speakers) would not translate it; in that circumstance, no translation is required for genericness/descriptiveness analysis.
• Whether the Federal Circuit could decide the foreign-equivalents legal issue even though the Board declined to address it.: Where an issue is fully developed and briefed below and the remaining dispute is a legal question, the appellate court may resolve it notwithstanding the Board’s failure to reach it.

- In re Brunetti 23-1539.pdf [NEEDS_REVIEW]

• Whether “commonality” or being a commonplace word is itself a registrability bar under the failure-to-function doctrine.: Commonality alone is not the test and is not a standalone basis to refuse registration; the governing inquiry is whether relevant consumers would perceive the designation as identifying source for the applied-for goods/services, assessed primarily from marketplace use and consumer perception.
• Whether the Board may rely on third-party marketplace use of the applied-for term on similar goods in assessing failure to function.: The Board may properly consider prominent third-party use of the applied-for matter on similar goods/services as probative of how consumers perceive the matter and whether it can function as a source identifier, including concerns about attempting to appropriate matter others use freely.
• Effect of potentially inconsistent prior PTO registrations of similar/common words on review of the Board’s refusal.: While prior examiner-level registrations do not bind the PTO and each application must be decided on its own merits, the Board must still engage in reasoned decisionmaking and provide rational guidance; merely dismissing other registrations without explaining the contextual distinctions contributing to its rule is inadequate.

- In re Foster 23-1527.pdf [NEEDS_REVIEW]

• Whether substantial evidence supported the Board’s findings on the first two elements of the § 2(a) false-connection test (same/close approximation; uniquely and unmistakably pointing).: Substantial evidence supported findings that a proposed mark identical to a widely publicized governmental/military identity can be a same-or-close approximation and can point uniquely and unmistakably to the United States; the appellate court will not reweigh conflicting evidence where the Board’s chosen view is reasonable.

- In re PT Medisafe Tech. 23-1573.pdf [NEEDS_REVIEW]

• Proper legal test for genericness of a single-color mark (trade dress).: For a single-color mark, genericness is assessed by a two-step inquiry: (1) identify the genus of goods/services; and (2) determine whether the relevant public primarily understands the color as a category/type of trade dress so common in that genus that it denotes the genus rather than a single source (the TTAB’s Milwaukee framework, consistent with Marvin Ginn).
• Meaning of “generic name” in Lanham Act §1064(3) as applied to trade dress.: The term “generic name” in §1064(3) is read broadly to include trade dress (including color marks); trade dress that cannot function as a source indicator because it is understood as generic is unprotectable and barred from registration.
• Genus definition and relevant public for genericness inquiry in registration context.: The Board need not adopt an applicant’s narrowing of the genus or market (e.g., limiting to the applicant’s authorized resellers) when the identification of goods supports a broader genus and the inquiry must not be artificially limited to the applicant’s own products.

- In re Vetements Group 23-2050.pdf [NEEDS_REVIEW]

• When the doctrine of foreign equivalents applies (stop-and-translate threshold and burden).: The doctrine of foreign equivalents applies unless it is unlikely the ordinary American purchaser would stop and translate the foreign term; the party opposing translation bears the burden to show translation is unlikely, consistent with the general principle that words from modern languages are generally translated.
• Whether translation requires proof that a majority of U.S. consumers can translate the foreign term.: Application of the doctrine of foreign equivalents does not require showing that more than 50% of Americans can translate the term; it is sufficient that an appreciable number of Americans are capable of translating it, and a rigid “median purchaser/headcount” rule would improperly nullify the doctrine.
• Role of marketplace context in deciding whether purchasers would translate a foreign-language mark.: Even where consumers may have the linguistic ability, context can make translation unlikely; but where the foreign term directly names or closely relates to the applied-for goods/services, context supports finding consumers would stop and translate.
• Genericness after translation under the doctrine of foreign equivalents.: After translating a foreign-language term, if the relevant public would primarily understand the translated term to name the genus of the identified goods or services, the mark is generic and unregistrable on the Principal Register.
• Need to reach alternative mere-descriptiveness and acquired-distinctiveness holdings once genericness is affirmed.: Because a generic term is incapable of indicating source and cannot acquire distinctiveness, affirmance of a genericness refusal makes it unnecessary to decide an alternative refusal based on mere descriptiveness and lack of acquired distinctiveness.

- Sunkist Growers 24-1212.pdf [NEEDS_REVIEW]

• Effect of rejecting the Board’s similarity-of-the-marks finding on the overall likelihood-of-confusion determination under DuPont.: Where the goods and trade channels are closely related and other relevant DuPont factors favor confusion, a lack of proven actual confusion is not dispositive, and the proper weighing of factors can require a finding of likelihood of confusion once the similarity-of-the-marks analysis is corrected.
• Role of “actual confusion” evidence in § 2(d) likelihood-of-confusion analysis.: Failure to show instances of actual confusion does not, by itself, defeat a likelihood-of-confusion claim because actual confusion is difficult to prove; it cannot outweigh multiple factors favoring confusion absent stronger countervailing evidence.

- Ceramtec 23-1502.pdf [NEEDS_REVIEW]

• Availability and application of unclean hands in TTAB cancellation proceedings involving functionality.: The TTAB may not adopt a categorical rule barring unclean hands in functionality cancellations given its rules permitting the defense, but it may decline to apply the defense in a particular case where the public interest in removing functional marks from the register outweighs equitable considerations; any overbroad statement is harmless where the TTAB exercises case-specific discretion.