IP Law Daily, TRADEMARK—TTAB: PCS mark for woodworking machinery proceeds for registration for limited goods, (Aug 18, 2025)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

TTAB rejected the opposer’s priority-based challenge but curtailed the applicant’s registration over unsupported use claims.

In a precedential decision, the Trademark Trial and Appeal Board (TTAB) issued a mixed ruling dismissing a Section 2(d) opposition that alleged likelihood of confusion, while sustaining in part a Section 66(a) claim based on lack of bona fide intent to use. The opposer, a U.S.-based manufacturer of woodworking equipment, failed to demonstrate prior trademark rights in the term “PCS,” which the Board found to be used merely as a model number abbreviation rather than a source-identifying mark. However, the applicant, an Austrian company seeking U.S. registration through the Madrid Protocol, was found not to have documentary evidence supporting its intent to use the PCS mark (standard characters) on several of the goods listed in its international application. As a result, the mark was allowed to proceed to registration, but only for a narrowed list of goods where sufficient intent to use was established (SawStop, LLC v. Felder KG, No. 91255905 (T.T.A.B. Aug. 14, 2025)).

Background. Felder KG, an Austrian manufacturer of industrial woodworking equipment, sought registration of the standard character mark PCS in the U.S. via extension of protection under Section 66(a) based on International Registration No. 1466799. The application, filed on April 12, 2019, identified a wide range of woodworking machines and safety devices in Class 7. SawStop, LLC, a U.S. company known for table saws featuring active injury mitigation technology, opposed the application under Section 2(d) and Section 66(a), alleging likelihood of confusion and lack of a bona fide intent to use the PCS mark for all identified goods.

The parties are industry peers and direct competitors in the U.S. woodworking equipment market. Notably, Felder previously approached SawStop regarding potential distribution, indicating a prior business relationship. Both companies market their table saws to professionals and woodworking businesses, but operate separately with their own branded product lines.

Felder’s application covered “Stationary woodworking systems comprising circular saws, band saws, table saws, panel saws, electric sanders, spindle motors, shapers, drilling machines, and safety devices attended thereto; stationary sliding table saw systems comprising band saws, table saws, panel saws, electric sanders, spindle motors, shapers, drilling machines, and safety devices attended thereto,” for use in woodworking and cutting finished plastics. The mark was applied for in standard characters under Application Serial No. 79258755.

SawStop initiated the opposition in 2019. In its notice of opposition, it alleged common law rights in the mark PCS since 2009 and pointed to its later-filed application for PCS (Serial No. 88409410), which had been suspended due to Felder’s earlier application. The opposition advanced two claims: (1) likelihood of confusion under Section 2(d), and (2) lack of bona fide intent to use the mark across the goods identified. Felder denied the key allegations but admitted that it had not used the mark in the U.S. prior to its application.

Priority and distinctiveness. The Board first addressed the Section 2(d) likelihood of confusion claim, focusing on whether SawStop had priority in the PCS mark. Because SawStop did not own a federal registration predating Felder’s application, it bore the burden of showing common law rights in PCS prior to Felder’s constructive use date of December 13, 2018.

The Board found SawStop’s evidence of trademark use inadequate. PCS was consistently used as an abbreviation for “Professional Cabinet Saw” and appeared in model numbers (e.g., PCS175, PCS31230) rather than in a standalone or stylized manner. Citing Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317 (CCPA 1981), and In re Dana Corp., 1989 TTAB LEXIS 34 (TTAB 1989), the Board reiterated that model numbers and descriptive abbreviations do not inherently function as trademarks unless they are perceived by consumers as source indicators.

SawStop’s attempt to show acquired distinctiveness also failed. The Board noted the absence of direct consumer evidence, such as surveys, and emphasized that mere sales and advertising expenditures, even if substantial, are insufficient to establish secondary meaning without proof that the designation serves a source-identifying function. The decision relied on Mini Melts, Inc. v. Reckitt Benckiser LLC, 2016 TTAB LEXIS 151 (TTAB 2016), and In re Tennis Indus. Ass’n, 2012 TTAB LEXIS 76 (TTAB 2012), to support the conclusion that SawStop’s marketing efforts were directed at promoting the “SawStop” brand, not PCS.

Because SawStop failed to demonstrate that PCS functioned as a trademark before December 13, 2018, the Board held that it lacked priority and dismissed the Section 2(d) claim without assessing the likelihood of confusion.

Trademark use. The Board also noted that SawStop had previously attempted to amend its opposition to argue “analogous use” of PCS—non-trademark use that may still support priority. However, the Board had denied leave to amend and thus declined to consider that theory.

Lack of bona fide intent. The Board then turned to SawStop’s second claim: that Felder lacked a bona fide intent to use the PCS mark for all the goods listed in the application. Under Section 66(a), a foreign applicant must declare a bona fide intent to use the mark in U.S. commerce. The Board explained that a lack of documentation can be sufficient to rebut the presumption of bona fide intent.

Felder produced some evidence of intended use for table saws and related woodworking machinery. However, it failed to provide credible evidence regarding its intent to use the PCS mark on several goods identified in the application—specifically, electric sanders, drilling machines, spindle motors, and shapers. The Board held that Felder’s generalized plans and lack of product-specific documentation were insufficient to demonstrate intent for the entire scope of the application.

Accordingly, the Board partially sustained the opposition, allowing the application to proceed only for those goods where bona fide intent had been established.

Procedural and evidentiary matters. Both parties raised multiple evidentiary objections regarding depositions and exhibits submitted via notices of reliance. The Board declined to rule on these objections individually but stated it was capable of giving appropriate weight to admissible evidence, citing Inter IKEA Sys. B.V. v. Akea, LLC, 2014 TTAB LEXIS 166 (TTAB 2014), and Hangzhou Mengku Tech. Co. v. Shanghai Zhenglang Tech. Co., 2024 TTAB LEXIS 575 (TTAB 2024).

Conclusion. Thus, the TTAB dismissed SawStop’s opposition under Section 2(d) for failure to establish prior rights in the PCS mark, rejecting both inherent and acquired distinctiveness arguments. However, it sustained the opposition in part under Section 66(a), limiting Felder KG’s ability to claim PCS for goods beyond those supported by documentary evidence.

The Case is Opposition No. 91255905.

Judge: Lavache, R.

Attorneys: Toby Butterfield (Moses & Singer LLP) for SawStop, LLC. Rebeccah Gan (Muncy, Geissler, Olds & Lowe, PC) for Felder KG.

Companies: SawStop, LLC; Felder KG

Cases: Trademark USPTO GCNNews