Likelihood of Confusion: Recent TTAB Decisions and Their Impact

One of the most common reasons the United States Patent and Trademark Office (USPTO) refuses trademark applications is likelihood of confusion under Section 2(d) of the Lanham Act. The Trademark Trial and Appeal Board (TTAB) plays a crucial role in deciding disputes over whether two marks are too similar, and its decisions shape the legal landscape for brand owners.

In recent years, the TTAB has issued several rulings clarifying key factors in likelihood of confusion cases, affecting businesses and trademark applicants across industries. This article will discuss recent TTAB decisions, their impact, and how businesses can avoid trademark conflicts.

Understanding Likelihood of Confusion in Trademark Law

Before diving into recent cases, let’s review what likelihood of confusion means. The USPTO examines applications based on whether an applied-for mark is confusingly similar to an existing registered mark. The test considers several factors outlined in In re E.I. du Pont de Nemours & Co. (1973), known as the DuPont factors.

The key factors include:

Similarity of the marks in appearance, sound, meaning, and commercial impression.

Relatedness of the goods/services – Are they in the same or overlapping industries?

Trade channels – Are the products sold in the same stores or platforms?

Strength of the prior mark – Is the cited mark well-known or weak?

Actual confusion – Is there evidence that consumers have been misled?

Now, let’s explore recent TTAB decisions that highlight how these factors are applied.

1. In re FabFitFun, Inc. (2023) – Consumer Perception Matters

The Case:

FabFitFun, Inc., a well-known subscription box company, applied for the mark “FUN FAB FIT” for online retail services. The USPTO refused registration, citing “FABFITFUN” as a conflicting registered mark.

TTAB’s Ruling:

TTAB upheld the refusal, ruling that “FUN FAB FIT” and “FABFITFUN” create a similar commercial impression. Even though the words were rearranged, the core elements remained identical, increasing the likelihood of confusion.

Impact:

  • Minor word rearrangements won’t necessarily avoid confusion.
  • The ruling reinforces that consumer perception plays a major role in trademark disputes.
  • Businesses should ensure distinctive branding beyond simple word modifications.

2. In re Color Street LLC (2023) – Differences in Industry Can Matter

The Case:

Color Street, a nail polish company, applied for the trademark “COLOR STREET” for beauty and cosmetics. The USPTO cited a prior registration for “STREET COLOR”, which was registered for hair dye.

TTAB’s Ruling:

The Board overturned the refusal, ruling that hair dye and nail polish are not closely related enough for consumers to assume a connection. Despite the word similarity, the difference in goods outweighed other DuPont factors.

Impact:

  • Even when marks look and sound similar, distinct industries can reduce confusion.
  • Before challenging a mark, businesses should consider whether products truly overlap in trade channels.
  • Strengthening arguments based on market realities can help overcome refusals.

3. In re Morrison Street Capital, LLC (2022) – Weak Marks Are Harder to Protect

The Case:

Morrison Street Capital, an investment firm, applied to register “MORRISON STREET CAPITAL” for real estate investment services. The USPTO rejected the applicatbecause the company already registeredTAL” in financial services.

TTAB’s Ruling:

TTAB reversed the refusal, finding that:

  1. The name “Morrison” is a common surname.
  2. “Capital” is a generic term in financial services.
  3. The addition of “Street” created a slightly different commercial impression.

Impact:

  • Weaker marks receive narrower protectioncommon surnames and generic words won’t permanently block similar marks.
  • Applicants can argue that minor differences matter when dealing with weak trademarks.
  • Businesses should aim for more distinctive trademarks to secure broader legal protection.

4. In re NFL Properties LLC (2023) – Strength of Famous Marks Matters

The Case:

The NFL applied to register “THE SUNDAY TICKET” for sports entertainment and ticketing services. The USPTO refused registration, citing “SUNDAY TICKET, already registered for broadcasting services.

TTAB’s Ruling:

TTAB sided with the existing registrant, stating that:

✔ The NFL’s widespread recognition did not eliminate confusion.

✔ Consumers could believe the two marks were affiliated, given their similar industries.

Impact:

  • Even well-known companies can face refusals if their mark is too close to a prior registration.
  • Fame does not always outweigh confusion—big brands must still conduct clearance searches.
  • Businesses should research similar marks before applying, regardless of brand strength.

Key Takeaways for Trademark Applicants

Based on recent TTAB rulings, here’s what businesses should consider when applying for trademarks:

✅ Avoid Small Variations: If your mark is too similar to an existing registration, rearranging words or adding generic terms won’t help.

✅ Consider Industry Differences: If two marks are similar, having different industries or trade channels may help avoid refusals.

✅ Be Aware of Weak Marks: If a cited mark uses common words, it may be easier to argue for distinctiveness.

✅ Fame Won’t Guarantee Protection: Even large brands must prove distinctiveness and avoid confusion.

✅ File a Strong Application: Conduct a comprehensive trademark search before applying to avoid unnecessary refusals.

The TTAB plays a critical role in shaping trademark law, and recent decisions highlight how similarity, industry overlap, and mark strength impact likelihood of confusion rulings. Businesses must stay informed on these cases to build stronger brands and secure trademark protection.

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