TTAB Precedent: Likelihood of Confusion (2024–2025) Key Takeaways
This is Part 1 of our series on the TTAB's 30 precedential decisions from 2024, covering the eight decisions on likelihood of confusion.
GleanMark Research analyzes 14 million USPTO trademark records to surface filing, prosecution, and TTAB trends.
Updated October 19, 2026
This is Part 1 of our series on the TTAB's 30 precedential decisions from 2024.
Likelihood of confusion is the heart of trademark law. It's why we have trademarks at all: to prevent consumers from being confused about the source of goods and services. The TTABlog's year-end roundup of the Board's 30 precedential decisions from 2024 files eight of them under Section 2(d), likelihood of confusion; we use its numbering below. Several are already cited in the current edition of the USPTO's Trademark Manual of Examining Procedure (TMEP).
The Framework: DuPont Factors Refresher
A quick reminder: likelihood of confusion is judged under the DuPont factors, thirteen factors set out by a federal appeals court in 1973. The Board calls two of them the key considerations:
- Similarity of the marks (appearance, sound, connotation, commercial impression)
- Similarity of the goods/services
Others that came up below include trade channels, how careful buyers are, the strength of the earlier mark, and actual confusion. Not every factor is relevant in every case, and any one of them can control the outcome.
Decision 1: TRIPLEYE vs. 3RD EYE - Different Meanings Beat Identical Goods
Case: Precedential No. 28, The Heil Co. v. Tripleye GmbH, Opposition No. 91277359 (November 20, 2024) Outcome: Opposition dismissed; TRIPLEYE found not confusingly similar to 3RD EYE
What Happened
Tripleye GmbH sought U.S. protection for TRIPLEYE for vehicle cameras, sensors, software and related engineering services. The Heil Co. opposed, relying on its 3RD EYE registrations for vehicle camera systems and software.
The TTAB's Analysis
The goods overlapped (both sides' identifications cover cameras), but the marks differ:
- Sight and sound: the first parts, TRIPLE and 3RD, look and sound different.
- Meaning: TRIPLEYE means "three eyes," suggesting three cameras. 3RD EYE calls to mind an extra eye that gives perception beyond ordinary sight.
- A weak shared element: EYE, the only thing the marks share, is a common element of marks for cameras.
The Board found these differences pivotal, even for identical goods sold in the same channels.
Why It Matters
Identical goods do not doom an application when the marks differ in look, sound and meaning and share only a common word.
Practical tip: When conducting clearance searches, compare what each mark means as a whole, not just the word they share.
Decision 2: CAPTAIN CANNABIS - Priority Through Analogous Use
Case: Precedential No. 1, Laverne John Andrusiek v. Cosmic Crusaders LLC and Lewis J. Davidson, Cancellation No. 92064830 (decided September 6, 2022; designated precedential January 3, 2024) Outcome: Petition to cancel granted; the petitioner proved priority through use analogous to trademark use
What Happened
Both sides sell comic books under CAPTAIN CANNABIS, a superhero's name. The character's creator, Laverne Andrusiek, petitioned to cancel the registration that issued in 2015. The parties agreed the marks were confusingly similar, so the only question was priority.
The TTAB's Analysis
The registrant could not prove use before its April 2, 2014 filing date. Andrusiek won through analogous use before that date (activity short of trademark use that makes the public connect the mark with a source): a flyer at a 1999 television industry trade show, a website at captaincannabis.com (a domain he registered in 1999), niche media coverage such as a 2007 High Times article, and social media promotion from 2010.
Analogous use counts only if it reaches enough of the relevant public and is followed by actual trademark use within a commercially reasonable time. Andrusiek's actual trademark use followed in 2017.
Why It Matters
Priority can start before your first sale, but only with proof that the public connected the name with you, and only if sales follow within a reasonable time.
Practical tip: If you're launching a new brand, keep dated records of your pre-launch publicity, and don't wait long to start selling.
Decision 3: UPC - No "Something More" Needed When Only Goods Are Involved
Case: Precedential No. 15, In re Samsung Display Co., Ltd. (July 17, 2024), an appeal from an examining attorney's refusal Outcome: Section 2(d) refusal affirmed
What Happened
Samsung Display applied to register UPC for display panels sold as components of monitors, TVs and smartphones. The examining attorney refused registration because of an earlier registration of the identical mark UPC for cable connectors, charging cables and power connectors.
The TTAB's Analysis
With identical marks, the goods needed less of a connection, and product pages from Dell, LG, HP, Apple and others showed display panels and power cables in the same finished electronics, which made the goods related.
Samsung argued that the examining attorney had to show "something more," a requirement from Federal Circuit cases. The Board said those cases limit it to goods used in providing services where the connection is not evident, and declined to extend it to a case involving only goods. Calling the goods components also did not limit them to manufacturers: the relevant buyers include ordinary end users.
Why It Matters
The "something more" requirement is narrow, and a components label does not, by itself, narrow who buys your goods.
Practical tip: Any limit on who buys your goods only counts if it is written into your identification of goods.
Decision 4: SAGEFORTH vs. SAGE CENTRAL - A Shared First Word and a Broad Description
Case: Precedential No. 5, Sage Therapeutics, Inc. v. SageForth Psychological Services, LLC, Opposition No. 91270181 (April 12, 2024) Outcome: Opposition sustained based on the SAGE CENTRAL registration; SageForth's counterclaim dismissed without prejudice
What Happened
SageForth Psychological Services applied to register SAGEFORTH for psychological services, including "providing information in the field of psychological counseling, assessments, diagnosis, and treatment." Sage Therapeutics opposed based on six registrations, including SAGE CENTRAL for information about postpartum depression.
The TTAB's Analysis
The Board decided the case on SAGE CENTRAL alone:
- The marks: SAGE comes first and dominates both.
- The services: SageForth's broadly worded information services covered any mental health condition, including postpartum depression, so the services were legally identical in part. The applicant "chose that broad wording and now faces the consequences of that decision."
- Strength: SAGE is somewhat weak in the mental health field, but SAGE CENTRAL is suggestive and still entitled to protection.
SageForth's Section 18 counterclaim to narrow four other Sage registrations was dismissed without prejudice, because the Board did not rely on them.
Why It Matters
A shared first word can carry a confusion finding, and broad wording in your own application can create the overlap that sinks it.
Practical tip: Describe your goods and services as broadly as your business needs, but no broader.
Decision 5: DISTRICT OF FASHION - The Employee Named It, the Employer Owned It
Case: Precedential No. 25, DowntownDC Business Improvement District v. Roquois Y. Clarke, Opposition No. 91275100 (October 8, 2024) Outcome: Opposition sustained; priority belonged to the employer
What Happened
Roquois Clarke's employer, a Washington, D.C. nonprofit, assigned her to help create and run fashion runway shows held in 2018 and 2019 as DOWNTOWNDC DISTRICT OF FASHION. Clarke came up with the name. After her position was eliminated, she applied to register DISTRICT OF FASHION, and her former employer opposed.
The TTAB's Analysis
Clarke argued that she created the name outside her job and that her employer used it only under an implied license from her. The Board disagreed: the fashion show work was assigned to her, covered in her performance reviews, paid through her salary and bonuses, and controlled by her employer, so the goodwill belonged to the employer. Nothing in the parties' conduct showed a license, and beliefs Clarke never shared with her employer did not count.
Why It Matters
Coming up with a brand name at work does not make it yours.
Practical tip: Put trademark ownership in writing for employees and contractors. Here, no written agreement covered the mark, so the Board had to decide ownership from the parties' conduct.
Decision 6: PERMITS.COM vs. PERMIT.COM - The First User Wins When Neither Name Is Distinctive
Case: Precedential No. 20, State Permits, Inc. v. Fieldvine, Inc., Cancellation No. 92075095 (August 15, 2024) Outcome: Petition to cancel granted based on prior use; neither party proved acquired distinctiveness
What Happened
Fieldvine owned a Supplemental Register registration for PERMITS.COM for software that helps contractors get construction permits, a name it began using in 2018. Registering there was an admission that the term was descriptive when registered. State Permits, a competing permit expediter, had used PERMIT.COM since 2013 and petitioned to cancel.
The TTAB's Analysis
Confusion was not really in dispute, so the case turned on priority. The Board found PERMIT[S].COM highly descriptive and held that neither side proved acquired distinctiveness. State Permits had used its term for approximately ten years, which the Board said is not an extensive period of time.
Under the Federal Circuit's Books on Tape decision, an earlier user of a descriptive term can cancel a later user's Supplemental Register registration without proving acquired distinctiveness. State Permits was first, so the Board ordered Fieldvine's registration canceled.
Why It Matters
A Supplemental Register registration does not protect a descriptive name against someone who used a similar name first, unless the registrant proves its name became distinctive first.
Practical tip: If your brand is a descriptive keyword, or a keyword plus .com, expect a heavy burden to prove it has become distinctive, and check for earlier users first.
Decision 7: Red, White and Blue vs. Red-Top Fence Posts
Case: Precedential No. 19, Keystone Consolidated Industries, Inc. v. The Franklin Investment Corp. dba Franklin Industries, Cancellation No. 92066927 (August 12, 2024) Outcome: Petition to cancel denied; marks found not confusingly similar; laches defense rejected
What Happened
Franklin Industries owned a Supplemental Register registration for a metal fence post colored blue at the bottom, white in the middle and red at the top. Keystone, which owns a 1919 registration for coloring a short portion of the upper end of a metal fence post red, petitioned to cancel it.
The TTAB's Analysis
The goods were identical, and Keystone had priority. But color on a product is never inherently distinctive, so Keystone's mark was entitled to a narrow scope of protection; over a hundred years of use did not, by itself, prove it commercially strong. Compared as a whole, Franklin's post would be seen as the national colors, or the flag, of the United States, not as a red top. The dissimilarity of the marks was the pivotal factor.
The Board also rejected Franklin's laches defense: Keystone filed a little more than three months after it was shown to know of the registration.
Why It Matters
Color marks are judged by their overall impression, and additional colors can change that impression even on identical products.
Practical tip: A color mark for a product needs proof that buyers see the color as a brand, and even then its scope of protection may be narrow.
Decision 8: BLOOKE vs. LOOK - A Familiar Word Inside a Coined One
Case: Precedential No. 18, Look Cycle International v. Kunshan Qiyue Outdoor Sports Goods Co., Ltd., Cancellation No. 92079409 (August 9, 2024) Outcome: BLOOKE registration for bicycles and bicycle parts ordered canceled
What Happened
Kunshan Qiyue Outdoor Sports Goods owned a registration for BLOOKE for bicycles and bicycle parts. Look Cycle International, which has owned a registration for its LOOK logo for "cycles and structural parts thereof" since 1989, petitioned to cancel it.
The TTAB's Analysis
The goods were legally identical in part. BLOOKE contains all of LOOK, and its standard-character registration allows displays that emphasize LOOK. A first letter B did little to set it apart, and many consumers would pronounce BLOOKE to rhyme with LOOK.
The Board also granted the petition on two other grounds: Kunshan had not used BLOOKE on the listed goods when it filed its use-based application, and its specimen of use listed sales to U.S. addresses that do not exist, which the Board held was fraud.
Why It Matters
Adding a letter to someone else's word may not be enough when the word is still visible and audible inside yours, especially on identical goods.
Practical tip: Before adopting a coined name, check whether an existing brand's word sits inside it.
Key Takeaways for Brand Owners
Do Your Clearance Research
These eight decisions show that likelihood of confusion is fact-specific. A proper clearance search should identify marks with shared elements (including a familiar word inside a coined one), compare goods and services as written in the identifications, and consider what each mark means as a whole.
Protect Your Priority
Keep dated records of brand-building activities and follow publicity with sales. Put trademark ownership in writing for employees and contractors. Don't count on a Supplemental Register registration to hold off an earlier user.
Don't Rely on Technicalities
The "something more" requirement does not apply when only goods are involved, and any limit you rely on must be written into your identification of goods or services.
Monitor the Register
Even after registration, your mark can be challenged. Four of these eight decisions were petitions to cancel existing registrations, and three of them succeeded. Use monitoring tools to track potentially conflicting applications and address threats early.
Up Next: Part 3 - Descriptiveness
In Part 3, we look at four 2024 decisions on descriptiveness and distinctiveness: an illustration of a block puzzle for computer game software, whether ARCHITECT had to be disclaimed in KORN FERRY ARCHITECT, ZPILE for metal sheet piles, and a multi-color mark for breakfast cereals.
Read Part 3: Descriptiveness →
Monitor Your Marks with GleanMark
Staying ahead of potentially confusing marks requires constant vigilance. GleanMark's monitoring tools alert you when new applications might conflict with your brands.
This article is for informational purposes only and does not constitute legal advice. Consult with a qualified trademark attorney for guidance on your specific situation.
Sources:
- Board opinions: No. 28 TRIPLEYE · No. 1 CAPTAIN CANNABIS · No. 15 UPC · No. 5 SAGEFORTH · No. 25 DISTRICT OF FASHION · No. 20 PERMITS.COM · No. 19 fence posts · No. 18 BLOOKE
- The TTABlog: The TTAB Issued 30 Precedential Opinions in 2024
- Trademark Manual of Examining Procedure (current edition)
- TTAB Reading Room
FAQ
What did recent TTAB cases say about relatedness?
The Board compared goods and services as written in the application and registration, not as actually sold. Marketplace evidence still mattered: in UPC, product pages showing display panels and power cables in the same finished electronics made the goods related.
How similar can marks be before refusal?
There is no fixed line. When goods are identical, less similarity is needed (BLOOKE), but marks that differ in look, sound and meaning can coexist even on identical goods (TRIPLEYE, the fence post color marks).
How do I use TTAB precedent in an office action response?
Cite analogous cases, pair with marketplace evidence, and tailor to your IDs and channels.
Before you file: run the free trademark search checklist to screen conflicts early.