IP Law Daily, TRADEMARK—TTAB: Refusals to register applicant’s POTS marks reversed for failure to establish relatedness of fundraising services, (Jan 2, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

Applicant’s marks and the registered mark are similar in appearance, sound, connotation, and commercial impression but the goods and services, channels of trade, and classes of consumers are quite dissimilar.

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) reversed both refusals to register the applicant’s standard-character mark POTS and the composite word-and-design mark for failure to establish relatedness of charitable food distribution and fundraising services. The TTAB determined that confusion was unlikely with the registrant’s mark because the differences in the goods and services, channels of trade, and classes of consumers outweighed the identity and similarity of the marks (In re Part of the Solution, Nos. 97791804 and 97791806 (T.T.A.B. Dec. 18, 2025)).

Background. Part of the Solution (applicant) sought to register on the Principal Register of the standard-character mark POTS and the composite word-and-design mark for “Distributorship services in the field of food; Procurement, namely, purchasing food for others; Charitable services in the nature of coordination of the procurement and distribution of food donations from the general public to needy persons; Charitable services, namely, organizing and conducting volunteer programs and community service projects; Charitable services, namely, organizing and developing projects that aim to improve the lives of underprivileged and impoverished people” in International Class 35.

The applicant filed Application Serial No. 97791804 (the ’804 Application) to register the standard-character mark and Application Serial No. 97791806 (the ’806 Application) to register the composite mark. The examining attorney refused to register both marks under Section 2(d) of the Trademark Act on the ground that each mark so resembles the standard-character mark POTS, registered on the Principal Register (the ’860 Registration) for fundraising software and services as to be likely to cause confusion, to cause mistake, or to deceive. When the examining attorney made the refusals final, the applicant requested reconsideration in both cases, which was denied, and subsequently appealed both refusals. The examining attorney moved to consolidate the appeals on the ground that they involved common questions of law and fact (’804 and ’806 Applications). The TTAB granted the motion and consolidated the two cases.

Likelihood of confusion. The TTAB, upon considering the DuPont factors for evaluating likelihood of confusion, found that the key first and second DuPont factors, and the third factor and a portion of the fourth factor, point toward different conclusions regarding the likelihood of confusion, while the other DuPont factors were neutral.

Under the first DuPont factor, the POTS word mark shown in the ’804 Application is identical to the POTS word mark shown in the ’860 Registration, and the POTS-dominated composite mark shown in the ’806 Application is very similar to the POTS word mark shown in the ’860 Registration. The TTAB noted that the involved POTS standard-character marks are identical in appearance, sound, and connotation and commercial impression. Additionally, there was nothing on the face of the applicant’s composite mark indicating that the word POTS is an abbreviation, and no evidence supporting the applicant’s claim that POTS means one thing in the applicant’s mark, and an entirely different thing in the cited mark, in the context of the respective goods and services. Thus, the first DuPont factor weighed heavily in favor of a conclusion that confusion is likely.

Under the second, third, and fourth DuPont factors, the TTAB found that the goods and services, channels of trade, and classes of consumers are quite dissimilar, even taking into account the reduced degree of similarity required for confusion to be likely between the involved identical and very similar marks.

The TTAB agreed with the examining attorney that the evidence showed that charitable organizations such as the applicant engage in fundraising; indeed, money or in-kind donations raised through such efforts are the lifeblood of those organizations. But unlike the fundraising-related goods and services identified in the ’860 Registration, which are necessarily provided to, and for the benefit of, entities other than the registrant, the fundraising activities of the applicant and other charitable organizations are for the benefit of the organizations themselves and are not provided to, and for the benefit of, other entities. As a result, those fundraising activities are not “services” for purposes of the second DuPont factor. Therefore, the goods and services identified in the ’860 Registration and the services identified in the ’804 and ’806 Applications are not related, and the second DuPont factor strongly supported a conclusion that confusion was not likely with respect to the ’804 and ’806 Applications.

The TTAB noted that the channels of trade and classes of consumers are unclear for the Class 35 services and the Class 36 services. Further, there was no evidence that the beneficiaries of the charitable services identified in the ’804 and ’806 Applications would also be consumers of those services. The TTAB concluded that on the basis of the language in the involved identifications and the extrinsic evidence in the record, the charitable services in the ’804 and ’806 Applications and the various fundraising-related goods and services in the ’860 Registration referenced by the examining attorney have different sources, trade channels, and classes of consumers.

Additionally, the record as a whole did not show that the POTS word mark for the fundraising-related goods and services identified in the ’860 Registration and the POTS word and composite marks for the charitable services identified in the ’804 and ’806 Applications are likely to be exposed to the same purchasers or end users of the respective goods and services through the same or overlapping channels of trade. The differences in the goods and services, channels of trade, and classes of consumers outweigh the identity and similarity of the marks, and make confusion unlikely.

Accordingly, the TTAB concluded that confusion is unlikely as to the services in those classes notwithstanding the identity of the marks. Therefore, the third DuPont factor and the portion of the fourth DuPont factor regarding the identification of “buyers to whom sales are made,” strongly supported a conclusion that confusion is not likely with respect to the ’804 and ’806 Applications.

The TTAB found that the fifth, seventh, eighth, twelfth, and thirteenth DuPont factors were neutral.

Thus, the refusals to register the word mark in the ’804 Application and the composite mark in the ’806 Application were reversed.

The Case is Serial Nos. 97791804 and 97791806.

Judge: Larkin, C.

Attorneys: Lisa Li (Greenberg Traurig, LLP) for Part of the Solution. Khanh M. Le for the USPTO.

Companies: Part of the Solution

Cases: Trademark USPTO