Event recap: Trademark Spotlight “Annual Review of U.S. Federal and State Case Law and TTAB Developments”

Speakers: Ted Davis (Kilpatrick Townsend & Stockton LLP) and John Welch (Wolf Greenfield)
By Cuitlahuac Medina, Student Reporter

Annual Review of U.S. Federal and State Case Law and TTAB Developments

Ted Davis and John Welch presented a review of trademark developments over the past year, covering federal court decisions and TTAB proceedings. Ted Davis discussed trademark protection for Non-Fungible Tokens (NFTs), trade dress pleading requirements, what constitutes actionable “use in commerce” under the Lanham Act, and the fading of the Dawn Donut Doctrine. John Welch focused on developments from the Trademark Trial and Appeal Board (TTAB) and the Court of Appeals for the Federal Circuit (CAFC). He analyzed the high affirmance rates for Section 2(d) likelihood of confusion and Section 2(e) mere descriptiveness refusals. He also discussed notable cases on the failure to function doctrine, the doctrine of foreign equivalents, statutory standing, and common arguments that consistently fail at the TTAB.

Federal and State Court Developments

Can you Trademark NFTs? In Yuga Labs, Inc. v. Ripps, 144 F.4th 1137 (9th Cir. 2025), the Ninth Circuit confirmed that NFTs can function as trademarks.

Trade dress pleading requirements: There is a split between circuit courts on what is considered sufficient for pleadings. The Second Circuit accepted photographs and written descriptions as enough, while the Ninth Circuit required more precise textual articulation beyond photographic depictions. In the Fourth Circuit, even if everyone in the courtroom agrees a trademark is valid, the judge still has to verify that it actually meets legal requirements. Just because both parties agree that a mark is a valid trademark, the court must make its own determination.

Use in Commerce and Dawn Donut Doctrine Fades

Courts clarified what counts as trademark “use in commerce.” The Second Circuit ruled that using someone’s personal name in a court order doesn’t constitute commercial trademark use, even in a case in which a sovereign citizen sued a New York state court judge for trademark infringement, claiming the judge’s use of his name in a child support order violated his trademark rights.

The Ninth Circuit held that putting a trademark on products made in the U.S. and shipping them across state lines counts as use in commerce, even if those products are sold only to foreign customers. However, the court ultimately found no likelihood of confusion in that case because the plaintiff’s mark was used only in the United States, while the defendant’s products were sold only to foreign consumers.

In another Ninth Circuit case involving a company in Japan, the court held that selling stock to U.S. investors does not constitute an actionable use in commerce under trademark law. The court also confirmed that buying a competitor’s trademark as a search engine keyword isn’t, in itself, trademark infringement, as illustrated in a case where a personal injury law firm’s competitor purchased “Lerner and Rowe” as a keyword from Google.

Separately, on the issue of legal ethics, the New Jersey Supreme Court addressed whether lawyers may engage in this keyword-purchasing practice and held it is not necessarily unethical, but imposed an affirmative obligation on lawyers to include conspicuous disclaimers of affiliation in any advertising triggered by competitor keywords.

The Fourth Circuit also limited an old trademark rule called the Dawn Donut doctrine. This doctrine traditionally protected businesses that use the same trademark in different geographic areas from infringement claims when their markets don’t overlap. In a case involving retirement communities using the mark “Westmont” on both coasts, the court held that geographic distance alone no longer provides this protection in the Internet age. Consumers now research services online and encounter both businesses regardless of location. Some consumers even relocate across the country to move into particular retirement communities.

TTAB AND CAFC DEVELOPMENTS

Section 2(d) likelihood of confusion Appeals: The Numbers

Section 2(d) likelihood of confusion refusals, along with mere descriptiveness appeals, account for about half of the TTAB’s final decisions each year, with Section 2(d) cases representing approximately 30-40% of that total. In 2024, there were 228 Section 2(d) appeals, of which 204 were affirmed and 24 were reversed, for an 89.5% affirmance rate. This means applicants have roughly a 10% chance of winning a likelihood of confusion appeal.

Why Applicants Almost Always Lose Likelihood of Confusion Appeals

The Board looks only at how marks appear in applications and what goods they cover, ignoring how companies actually market their products. When marks look similar, the Board calls this factor “heavyweight” without explaining why, and it assumes related goods move through the same channels to the same customers. The Board frequently dismisses third-party evidence of mark weakness and applies no file wrapper estoppel, permitting prior registrants to advance contradictory arguments. Using the “least sophisticated consumer” standard and the “nose of wax” doctrine, the Board analyzes standard character marks to emphasize similarities. Relatedness findings sometimes extend beyond marketplace realities, such as determining that straws are related to energy drinks because consumers might use straws with energy drinks.

Failure to Function: The “F**K” Case

The Federal Circuit vacated and remanded the TTAB’s refusal to register “F**K” for phone cases, jewelry, and bags on failure-to-function grounds. The Board called it an “all-purpose word” used to express different emotions but didn’t clarify how to distinguish between commonplace words, such as “LOVE” that can be trademarks and those that cannot. The court asked, if “LOVE” can be a trademark, why not “F**K”? This question pushed the Board to offer clearer reasoning. The decision puts the USPTO in a tough spot. Welch questioned why the Board can’t use its normal discretion, similar to how it handles a Section 2(e)(1) descriptiveness refusal where an applicant can respond with Section 2(f) evidence of acquired distinctiveness. Instead, the CAFC is demanding a “bright line” standard for this doctrine, which the Board isn’t required to draw in other contexts. The case has been remanded to the TTAB to establish clearer standards for failure-to-function determinations.

The Boston Strong Case

The TTAB refused “Boston Strong” for a volleyball team, finding it fails to function as a trademark because it merely conveys an informational message of support for Boston after the Marathon bombing. The application was an intent-to-use filing by Franklin Sports. The evidence showed third-party use on jewelry, clothing, stickers, and keychains, but no use for sports teams. The Board concluded the phrase was informational based on how others used it, not how the applicant intended to use it. This reasoning has problems: the Board rejected the application before Franklin Sports could submit a specimen showing actual trademark use, making the refusal premature. Historical phrases work as sports team trademarks all the time. The San Francisco 49ers and New England Revolution both use historically significant terms as their brand names, yet “Boston Strong” was treated differently.

Foreign Equivalents: The “Appreciable Number” Standard

Under the foreign equivalents doctrine, the USPTO translates foreign words into English when deciding whether a mark can be registered. The Federal Circuit agreed with rejecting “vetamins” for clothing since “vêtements” means “clothing” in French. The court rejected the argument that only 1% of Americans speak French, holding that an “appreciable number” capable of translation triggers the doctrine regardless of percentage. Three principles control how courts apply this doctrine: applicants must show that regular consumers would not translate the foreign word, even a small number of people who can translate creates a legal presumption that translation will happen, and judges evaluate the likelihood based on what the typical American shopper would do. Applicants can overcome the doctrine by demonstrating contextual factors that prevent translation or by showing that the foreign word lacks a direct English equivalent. The low threshold for “appreciable number” requires practitioners to prepare contextual evidence early in the application process.

Standing to Challenge Trademark Registrations

Whether someone can challenge a trademark depends on what legal claim they’re making, the Federal Circuit explained. In the Rapunzel case, the CAFC said Professor Rebecca Curtin couldn’t oppose “Rapunzel” for dolls based on genericness or descriptiveness because she was just a “mere consumer.” Only commercial actors have standing under the Lanham Act’s “zone of interests” for those types of challenges. This holding was distinguished from the older Ritchie (O.J. Simpson) case, where an individual had standing based on moral objections under the now-defunct Section 2(a). Similarly, the TTAB denied standing to a petitioner challenging a President Xi Jinping mark, finding the petitioner’s claimed fear of retribution was not the direct, personal harm required.

Top Ten Arguments That Never Work

Based on Welche’s decades of practice, he analyzed that these arguments consistently fail: reading real-world limitations into identifications; treating descriptiveness as a guessing game; arguing lack of competition; making unsupported attorney arguments; claiming customer sophistication without strong evidence; citing third-party registrations without proof of use; pointing to lack of actual confusion; alleging fraud without clear and convincing evidence; asserting family of marks without coordinated advertising proof; and invoking prior registrations defense.

Conclusion

Ted Davis and John Welch’s panel offered practical advice for dealing with today’s tougher trademark landscape. They both stressed knowing how the TTAB rules on appeals and gathering evidence early to fight refusals. Winning means predicting how the Board will decide, building a solid record right from the application, and staying flexible as doctrines like failure to function and foreign equivalents continue to shift.