​

April 21, 2025

Hello Reader,

Here’s another real-world lesson from the Trademark Trial and Appeal Board (TTAB) that highlights two common pitfalls brand owners face:

🔁 Choosing a name that’s too close to an existing mark​
🔁 Using a last name without understanding the trademark limits

The case involved Wyse London, a fashion brand that applied to register its name for clothing and retail store services. But the USPTO refused registration on two separate grounds—and the TTAB agreed.

Here’s What Went Wrong:

1. Likelihood of Confusion (Section 2(d))​
The TTAB found that WYSE LONDON was too similar to an existing registration for WYSE (in stylized form), which covered clothing accessories like buttons, zippers, and hat ornaments. Even though the goods weren’t identical, the Board held that:
✔ The marks are “highly similar”
✔ The goods are related and often sold under the same brand
✔ Consumers could easily assume both come from the same source

Pro tip: Just because products are in different classes doesn’t mean they’re safe from conflict. Zippers and hats? Still too close.

2. Surname Refusal (Section 2(e)(4))​
Because the company’s founder is Marielle Wyse, and the brand openly promotes this, the TTAB held that WYSE is primarily merely a surname—which can’t be registered on the Principal Register without proving acquired distinctiveness.

Adding “LONDON” didn’t help. The Board noted that it just made it sound like “a brand run by someone named Wyse in London”—which was literally true and didn’t change the surname analysis.

Tips & Tricks to Avoid These Issues:

✅ Search first, build later – Don’t invest in packaging, branding, or a product launch until you know your name clears key legal hurdles.
✅ Surnames are tricky – If your name is on the door, you may need to prove that consumers recognize it as a brand—not just a family name.
✅ Consider creative add-ons – Adding unique, suggestive, or fanciful elements to a surname can improve your chances of approval.

Naming a brand is hard enough—don’t let a simple refusal set you back months (or years). If you're not sure whether your brand name is safe, a quick strategy session could save you thousands.

Keep Your Brand Safe and Protected,​
​

J.J. Lee and the Trademark Lawyer Law Firm Team!

P.S. If you’re planning to use your last name in your brand or launch a line of clothing or accessories, let’s check for conflicts first. The TTAB isn’t too forgiving when it comes to surnames or sound-alike marks.

​trademarklawyerfirm.com​
​Unsubscribe · Preferences​