Litmus Test Cases

See examples of Litmus Law's successes. Let these cases be the Litmus test
of our firm's competence and dedication to exceptional client service.

Strong Evidence of Third-Party Users of Similar Marks Can Lead to Success

Despite the odds, Litmus Law recently prevailed in its appeal to the Trademark Trial and Appeal Board and the Board reversed the Examiner in connection with a likelihood of confusion refusal.  See In re Sycamore Growth Group, LLC (Ser. No, 98125231) (non-precedential) (May 8, 2025). Reversals on appeal are very uncommon. In 2024, the Board affirmed the decisions of Examiners in approximately 9 out of 10 appeals (i.e., in the 228 similar appeals, the Board sided with the Examiner 204 times).

Our client’s application for SYCAMORE GROWTH GROUP received a refusal to register on the basis that there was a likelihood of confusion with prior registrations for the mark SYCAMORE CAPITAL. During the prosecution of the application, Litmus Law was successful in getting the Examiner to withdraw a requirement to add a disclaimer for GROWTH.  Having successfully argued to the Examiner that a disclaimer of GROWTH was unwarranted, the differences between the marks were even more pronounced.

Litmus Law submitted extensive arguments and critical internet evidence of over twenty third-party uses of SYCAMORE marks.  In the appeal, we heavily relied upon this evidence in arguing that SYCAMORE formative marks, and tree marks, in general, are common in the fields of finance and tax due to their unique symbolism and connotation of growth.  

The basis for this appeal was heavily based upon the important Juice Generation case. See Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015) [precedential]. In Juice Generation, the Federal Circuit ruled that “[s]ufficient evidence of third-party use of similar marks can “show that customers ‘have been educated to distinguish between different marks on the basis of minute distinctions.’” Moreover, the Federal Circuit concluded that the Board's treatment of evidence of use of third-party marks did not sufficiently appreciate the force of that evidence, and that even without specific evidence as to extent and impact of use, the evidence of third-party use was "nonetheless powerful on its face."

Rulings of the Federal Circuit are binding upon the TTAB, meaning that all decisions that come down from the Federal Circuit Court must be followed by members of the Board and Examining Attorneys at the USPTO. However, despite this, Examiners have been very slow to adopt Juice Generation and give sufficient weight to evidence of third-party use in likelihood of confusion cases, as the Federal Circuit Court directed, even though the case was decided a decade ago.

As adopted in the Board’s decision in Sycamore Growth Group, evidence of over twenty third-party uses (even in the absence of third-party registrations) “support[s] that consumers have become conditioned to distinguish between different SYCAMORE-formative marks based on minute distinctions." Referencing Juice Generation, the Board found that the evidence was “powerful on its face.”

Our success in this case reaffirms what we have long known and repeatedly argue in Office Action responses—that Examiners at the USPTO must follow Juice Generation. The Board’s reversal in this appeal will add to the existing decisions exhibiting the proper application of Juice Generation, and we are hopeful that this may encourage Examiners to carefully consider third-party uses of the same/very similar terms when deciding likelihood of confusion issues.

When Is a Surname Registrable Based on Acquired Distinctiveness Absent Five Years of Use?

As a general rule, a term that is primarily merely a surname or merely descriptive cannot be registered in the U.S. on the Principal Register, absent acquired distinctiveness (and the Supplemental Register is not available to International Registration designation to the U.S.). The most common way to assert acquired distinctiveness is a declaration that there has been substantially exclusive use of the mark for the recited goods/services in the U.S. for at least five years. With this claim, many trademark applicants can successfully overcome a mere descriptiveness or surname refusal under Section 2(e)(1) of the Trademark Act. However, it is also possible to prove that a mark is sufficiently well-known to be registered on the Principal Register based on acquired distinctiveness without a claim of five years of substantially exclusive use.

Arguments that a mark meets the criteria for acquired distinctiveness without the use stipulations noted above are rarely successful. However, Litmus Law was able to succeed in doing so in connection with IR No. 1723874, for the mark ZELENSKYY, owned by Volodymyr Zelenskyy, President of Ukraine. With substantial evidence and carefully drafted arguments, we proved that ZELENSKYY is sufficiently well-known in the U.S. and associated with Applicant such that the mark has acquired distinctiveness. Thus, we gained official approval of the U.S. designation for ZELENSKYY for “entertainment services, film productions, and publications of books” (without a claim of five years of substantially exclusive use in the U.S. for relevant goods/services).

Should I Represent Myself before the Trademark Trial and Appeal Board? …… Probably Not.

The Trademark Trial and Appeal Board ("TTAB") is more informal than federal court and only has the power to decide registrability of trademarks, although the implications of a TTAB decision on the merits can be more far-reaching.  The TTAB Manual of Procedure is a well-developed guide to practice before the TTAB.  Therefore, it may be tempting to forego legal counsel and handle a matter pro se.  However, this is usually a mistake.  The rules that govern trademark proceedings are complex, the Federal Rules of Civil Procedure and the Federal Rules of Evidence are (mostly) applicable, and there are a number of strategy points, dates to track, and other legal considerations.  While the Board may grant some leniency to pro se parties, the Board will expect such parties to understand the rules and meet deadlines.  Critically, there is no authority for the TTAB to waive statutory requirements.
 
In a recent case handled by Litmus Law, the Registrant chose to defend itself via its principal in connection with a TTAB cancellation action.  While this Defendant was able to file an Answer to the Petition, join the required discovery conference (with the participation of a TTAB interlocutory attorney), and even attempted a Motion for Summary Judgment, the legal hurdles proved to be insurmountable.  While focused on the cancellation action, Defendant allowed its registration at issue to be cancelled by the USPTO for failure to file a required maintenance document.  Therefore, the challenged registration which was blocking our client’s application was cancelled and the bar to registration based upon Defendant's registration was removed, thus Litmus Law’s client’s application will be allowed to proceed in due course.