The TTAB's April 2026 decision in in re Wilson Carter is a clean affirmance of a likelihood of confusion refusal. CLUTCH for batteries and battery chargers was refused based on CLUTCH OUTDOORS, a registration with OUTDOORS disclaimed, leaving CLUTCH as the dominant element and the goods identical in part. The applicant argued consumer sophistication, absence of actual confusion, lack of fame in the cited mark, and the existence of its own prior registration. All arguments were rejected without drama.
The Application
Wilson Carter applied to register CLUTCH in standard characters for batteries, battery chargers for mobile phones, battery chargers for use with electronics, and mobile telephone batteries, all in International Class 9. The application was filed as a use-based application under Section 1(a) of the Trademark Act, with a claimed first use date of May 15, 2019.
The examining attorney issued a final refusal based on three existing registrations owned by two different entities. The Board focused its analysis on one: the word mark CLUTCH OUTDOORS, registered by Tog-IP LLC for goods that included solar-powered battery chargers for charging mobile and handheld electronic devices.
Similarity of the Marks
The applied-for mark was CLUTCH. The cited mark was CLUTCH OUTDOORS. The Board found the marks similar in appearance, sound, meaning, and commercial impression.
The reasoning centered on the dominant element of the cited mark. OUTDOORS had been disclaimed in the cited registration, which signals that the word is descriptive or generic as applied to the goods. A disclaimed term carries less weight in the similarity analysis because consumers are less likely to rely on it as a source identifier. That left CLUTCH as the dominant and sole distinctive element of CLUTCH OUTDOORS.
Because the applied-for mark was identical to that dominant element, the Board found the marks highly similar. The applicant argued that the marks were used in different fonts in the marketplace, but the Board dispensed with that quickly: both marks were registered in standard characters, meaning both covered all fonts and stylistic variations. Font choice in actual use is irrelevant when the registrations are standard character marks.
The Board also noted the consumer tendency to shorten marks. A consumer familiar with CLUTCH OUTDOORS might simply ask for CLUTCH, which only increases the potential for confusion with the applied-for mark.
Relatedness of the Goods
The cited registration covered solar-powered battery chargers for mobile and handheld electronic devices. The application covered battery chargers for use with electronics. The Board found these goods identical in part, which was sufficient to support the refusal. Notably, the applicant effectively conceded this point, acknowledging in its appeal brief that batteries and battery chargers are legally identical goods.
Arguments That Did Not Move the Needle
Consumer sophistication. The applicant argued that the relevant consumers would be sophisticated purchasers who would not confuse the two marks. The Board rejected this for lack of evidentiary support. Battery chargers for mobile phones are mass-market consumer electronics, unrestricted by price point or target demographic. Without evidence that buyers of these goods exercise heightened care, the Board applied the standard of the least sophisticated potential purchaser, which did not favor the applicant.
No evidence of fame. The applicant pointed out that there was no evidence the cited mark was famous or had acquired secondary meaning. The Board found this observation accurate but irrelevant. In ex parte appeals, the registrant is not a party and cannot submit evidence of its own mark's strength. The cited mark had been registered on the Principal Register without a claim of acquired distinctiveness, which means it was presumed inherently distinctive and entitled to the normal scope of protection for such marks. Fame is not a prerequisite to enforceability.
No actual confusion. The applicant argued that no actual consumer confusion had been demonstrated. The Board gave this no weight. Ex parte proceedings do not involve the registrant, so there is no mechanism for evidence of actual confusion or its absence to enter the record. Uncorroborated statements that no confusion has occurred carry little value in this context.
Prior registration owned by the applicant. This was the applicant's most substantive argument. The applicant owned a prior registration for a stylized version of its own mark and argued that because its registration predated the three cited registrations, the refusal should be withdrawn. The Board acknowledged the situation was somewhat awkward: the applicant's application was being refused based on registrations that issued after the applicant's own prior registration. But the Board was not persuaded. Each application is evaluated on its own merits, and there is no legal basis to disregard a valid cited registration simply because the applicant holds an earlier one.
The applicant also attempted to invoke the Morehouse defense, which allows a party to argue that an existing registration it already owns forecloses any meaningful likelihood of confusion with a new application. The Board rejected this cleanly: the Morehouse defense is available only in inter partes proceedings, not in ex parte appeals. The applicant's remedy, if it believed it had priority and that confusion was likely, was to oppose the cited registration when it published or to petition for cancellation.
The Outcome
The first two DuPont factors, similarity of the marks and relatedness of the goods, were both dispositive. Every other factor was neutral. The refusal was affirmed.
If your application has received a likelihood of confusion refusal, a free consultation with Five Dogs Law can help you understand your options and evaluate whether a response is worth pursuing.
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