# TMEP § 1207.01(d)(iii): Third-Party Registrations and Evidence of Third-Party Use

> Federal · Agency guidance · In force

URL: https://www.frixlaw.com/law-library/statutes/TMEP_S1207.01(d)(iii)

## Section

- **Citation:** TMEP § 1207.01(d)(iii)
- **Heading:** Third-Party Registrations and Evidence of Third-Party Use
- **Jurisdiction:** Federal
- **Kind:** Agency guidance
- **Status:** In force
- **Text as of:** August 14, 2026
- **Source:** Compiled text
- **Location:** USPTO TMEP / Chapter 1200 - Substantive Examination of Applications / TMEP § 1207.01(d)(iii)

## Text

Third-party registrations used to
show relatedness of goods or services
. Third-party
registrations that cover the goods or services of the applicant and
registrant may have some probative value to the extent that they may serve
to suggest that goods or services are of a type that may emanate from a
single source, if the registrations are based on use in commerce.
See
Hewlett-Packard Co. v. Packard Press, Inc.
, 281 F.3d
1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that "a single
company sells the goods and services of both parties, if presented, is
relevant to the relatedness analysis");
Made in Nature, LLC v.
Pharmavite LLC
, Opp. No. 91223352, 2022 TTAB LEXIS 228, at
*54-55 (2022) (quoting
Joel Gott Wines LLC v. Rehoboth Von Gott
Inc.
, 107 USPQ2d 1424, 1432 (TTAB 2013));
In re Mucky
Duck Mustard Co.
, 6 USPQ2d 1467, 1470 n.6 (TTAB 1988),
aff’d per curiam
, 864 F.2d 149 (Fed. Cir. 1988).
Third-party registrations that are not based on use in commerce, such as
those registered under Trademark Act §66(a),
15
U.S.C. §1141f(a)
, or those registered solely under
§44,
15 U.S.C. §1126(e)
, and for which no
§8 or §71 affidavits or declarations of continuing use have been filed
(
15 U.S.C.
§§1058
,
1141k
),
have very little, if any, probative value.
See
Heil Co. v. Tripleye GmbH
, Opp. No. 91277359, 2024 TTAB
LEXIS 494, at *59-60 (2024) (citing
Made in Nature, LLC v.
Pharmavite LLC
, 2022 TTAB LEXIS 228, at *30-31);
In
re Info. Builders Inc.
, 2020 USPQ2d 10444, at *6 n.19 (TTAB
2020) (citing
Calypso Tech., Inc. v. Calypso Cap. Mgmt.,
LP
, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011)),
appeal
dismissed
, No. 20-1979 (Fed. Cir. Oct. 20, 2020);
In
re 1st USA Realty Pros., Inc.
, 84 USPQ2d 1581, 1583 (TTAB
2007).
Third-party registrations used to
show inherent or conceptual weakness of a term or mark
component
30-31);
In
re Info. Builders Inc.
, 2020 USPQ2d 10444, at *6 n.19 (TTAB
2020) (citing
Calypso Tech., Inc. v. Calypso Cap. Mgmt.,
LP
, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011)),
appeal
dismissed
, No. 20-1979 (Fed. Cir. Oct. 20, 2020);
In
re 1st USA Realty Pros., Inc.
, 84 USPQ2d 1581, 1583 (TTAB
2007).
Third-party registrations used to
show inherent or conceptual weakness of a term or mark
component.
Generally, the existence of third-party
registrations cannot justify the registration of another mark that is so
similar to a previously registered mark as to create a likelihood of
confusion, or to cause mistake, or to deceive.
E.g.
,
In re i.am.symbolic, llc
, 866 F.3d 1315, 123 USPQ2d
1744 (Fed. Cir. 2017);
In re Max Cap. Grp. Ltd.
, 93
USPQ2d 1243, 1248 (TTAB 2010);
In re Toshiba Med. Sys.
Corp.
, 91 USPQ2d 1266, 1272 (TTAB 2009). However, a large
number of active third-party registrations including the same or similar
term or mark component for the same or similar goods or services may be
given some weight to show, in the same way that dictionaries are used, that
a mark or a portion of a mark has a normally understood descriptive or
suggestive connotation, leading to the conclusion that the term or mark
component is relatively weak.
See
,
e.g.
,
Spireon, Inc. v. Flex Ltd.
,
71 F.4th 1355, 1363, 2023 USPQ2d 737, at *4-5 (Fed. Cir. 2023);
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v.
New Millennium Sports, S.L.U.
, 797 F.3d 1363, 116 USPQ2d 1129
(Fed. Cir. 2015);
Juice Generation, Inc. v. GS Enters.
LLC
, 794 F.3d 1334, 1339, 115 USPQ2d 1671, 1675 (Fed. Cir.
2015);
Tektronix, Inc. v. Daktronics, Inc.
, 534 F.2d 915,
917, 189 USPQ 693, 694-95 (C.C.P.A. 1976);
Heil Co. v. Tripleye
GmbH
, 2024 TTAB LEXIS 494, at *70-71;
Made in Nature,
LLC v. Pharmavite LLC
, 2022 TTAB LEXIS 228, at *28;
Tao Licensing, LLC v. Bender Consulting Ltd.
, 125
USPQ2d 1043, 1059 (TTAB 2017);
In re Melville Corp.
, 18
USPQ2d 1386, 1388 (TTAB 1991)
15 USPQ2d 1671, 1675 (Fed. Cir.
2015);
Tektronix, Inc. v. Daktronics, Inc.
, 534 F.2d 915,
917, 189 USPQ 693, 694-95 (C.C.P.A. 1976);
Heil Co. v. Tripleye
GmbH
, 2024 TTAB LEXIS 494, at *70-71;
Made in Nature,
LLC v. Pharmavite LLC
, 2022 TTAB LEXIS 228, at *28;
Tao Licensing, LLC v. Bender Consulting Ltd.
, 125
USPQ2d 1043, 1059 (TTAB 2017);
In re Melville Corp.
, 18
USPQ2d 1386, 1388 (TTAB 1991). However, cancelled or expired third-party
registrations for similar marks are not probative evidence of a mark’s
descriptiveness, suggestiveness, or strength.
See
New Era Cap Co. v. Pro Era, LLC
, 2020 USPQ2d 10596, at
*13 (TTAB 2020) (citing
In re Inn at St. John’s, LLC
, 126
USPQ2d 1742, 1745 (TTAB 2018),
aff’d per curiam
, 777 F.
App’x 516, 2019 BL 343921 (Fed. Cir. 2019));
In re Info. Builders
Inc.
, 2020 USPQ2d 10444, at *6 n.19 (citing
Bond v.
Taylor
, 119 USPQ2d 1049, 1054 n.10 (TTAB 2016)),
appeal dismissed
, No. 20-1979 (Fed. Cir. Oct. 20,
2020);
In re Kysela Pere et Fils Ltd.
, 98 USPQ2d 1261,
1264 (TTAB 2011)).
Third-party use to show commercial
weakness
. Evidence of third-party use falls under the sixth
DuPont
factor – the "number and nature of similar
marks in use on similar goods."
In re E. I. du Pont de Nemours
& Co.
, 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.
1973). Evidence of third-party use may bear on the commercial strength or
weakness of a mark.
Juice Generation
, 794 F.3d at
1338-39, 115 USPQ2d at 1674. Significant evidence of third-party use of
similar marks on similar goods or services can show that consumers have
become conditioned by encountering so many similar marks that they
distinguish between them based on minute distinctions.
Id.
;
Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee en 1772
, 396 F.3d 1369, 1373-74, 73
USPQ2d 1689, 1693 (Fed. Cir. 2005)
9, 115 USPQ2d at 1674. Significant evidence of third-party use of
similar marks on similar goods or services can show that consumers have
become conditioned by encountering so many similar marks that they
distinguish between them based on minute distinctions.
Id.
;
Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee en 1772
, 396 F.3d 1369, 1373-74, 73
USPQ2d 1689, 1693 (Fed. Cir. 2005). If the applicant's evidence is properly
submitted and establishes ubiquitous or considerable third-party use of the
same or similar marks on the same or similar goods or services, it may be
"relevant to show that a mark is relatively weak and entitled to only a
narrow scope of protection."
Palm Bay Imps.
, 396 F.3d at
1373-74, 73 USPQ2d at 1693;
see
Jack Wolfskin
, 797 F.3d at 1373-74, 116 USPQ2d at 1136-37
(finding evidence of ubiquitous use of a paw print design on clothing
rendered that component of the opposer’s mark relatively weak for clothing);
Juice Generation
, 794 F.3d at 1337 n.1, 1341-42, 115
USPQ2d at 1673 n.1, 1676-77 (finding evidence of a considerable number of
third-party uses of the component "peace and love" in connection with
restaurant services or food products relevant to assessing the opposer’s
mark’s strength or weakness without the need for specifics as to the extent
or impact of use);
In re FabFitFun, Inc.
, 127 USPQ2d
1670, 1674-75 (TTAB 2018) (finding the component term SMOKING HOT in the
marks I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME to be "somewhat weak" based
in part on evidence of third-party use of the term on similar cosmetics
goods, noting that such uses "tend to show consumer exposure to third-party
use of the term on similar goods");
see also
Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living,
LLC
, 122 USPQ2d 1030, at 1034-36 (finding weakness based on at
least eighty-five actual uses of ROSE-formative marks for similar services
and eight similar third-party registrations);
In re Broadway
Chicken Inc
r cosmetics
goods, noting that such uses "tend to show consumer exposure to third-party
use of the term on similar goods");
see also
Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living,
LLC
, 122 USPQ2d 1030, at 1034-36 (finding weakness based on at
least eighty-five actual uses of ROSE-formative marks for similar services
and eight similar third-party registrations);
In re Broadway
Chicken Inc.
, 38 USPQ2d 1559, 1565-66 (TTAB 1996) (holding no
likelihood of confusion due to differences in the marks and finding
"Broadway" weak for restaurant services based on evidence that hundreds of
restaurants and eating establishments used Broadway as a trademark or trade
name);
cf.
In re i.am.symbolic, llc
, 866 F.3d at 1329, 123 USPQ2d at
1751 ("Symbolic’s evidence of third-party use of I AM for the same or
similar goods falls short of the ‘ubiquitous’ or ‘considerable’ use of the
mark components present in its cited cases.").
Limitations regarding probative
value of third-party registration or use evidence to show weakness of
mark in cited registration
. The potential relevance of
third-party registrations and uses offered to support registrability over
the cited registration depends on the relationship they bear to the
application and registration at issue. The third-party marks must generally
be as similar to the registered mark as the applied-for mark.
See
,
e.g.
,
Specialty
Brands, Inc. v. Coffee Bean Distribs., Inc.
, 748 F.2d 669,
675, 223 USPQ 1281, 1284-85 (Fed. Cir. 1984) ("Applicant introduced evidence
of eight third-party registrations for tea which contain the word ‘SPICE’,
five of which are shown to be in use. None of these marks has a ‘SPICE
(place)’ format or conveys a commercial impression similar to that projected
by the SPICE ISLANDS mark, and these third-party registrations are of
significantly greater difference from SPICE VALLEY and SPICE ISLANDS than
either of these two marks from each other.");
see also
In re Mighty Leaf Tea
, 601 F.3d 1342, 1347, 94 USPQ2d
1257, 1259 (Fed. Cir. 2010)
in use. None of these marks has a ‘SPICE
(place)’ format or conveys a commercial impression similar to that projected
by the SPICE ISLANDS mark, and these third-party registrations are of
significantly greater difference from SPICE VALLEY and SPICE ISLANDS than
either of these two marks from each other.");
see also
In re Mighty Leaf Tea
, 601 F.3d 1342, 1347, 94 USPQ2d
1257, 1259 (Fed. Cir. 2010). Potential relevance also depends on whether the
third-party registered marks and uses are for goods or services as similar
to those in the cited registration as those identified in the application.
See
,
e.g.
,
Nat’l Cable
Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc.
, 937 F.2d 1572,
1580, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) ("None of the third party marks
and uses of ACE made of record are nearly as closely related to the
activities of the parties as the virtually identical uses of the parties are
to each other. Thus, we agree with the Board that nothing in the record
shows a narrowing of Editors’ identification with A.C.E./ACE by third party
marks with respect to the relevant public, namely, the film industry or even
the broader entertainment industry. In sum, Cable’s argument that it can use
ACE because ACE is a ‘weak’ mark, as an abstract proposition, is not only
unpersuasive but essentially meaningless.") (citation omitted);
see
also
Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co.
,
908 F.3d 1315, 1325-26, 128 USPQ2d 1686, 1694-95 (Fed. Cir. 2018) (citing
Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Eds.,
Inc.
, 937 F.2d 1572, 1580, 19 USPQ2d 1424, 1430 (Fed. Cir.
1991)).
However, considering a mark’s relative
strength or weakness is only part of the process of determining whether
there is a likelihood of confusion. Even registered marks deemed "weak" are
entitled to the presumptions of validity under §7(b), and are entitled to
protection under §2(d) against the registration of confusingly similar
marks.
See
,
e.g.
,
In re
Detroit Athletic Co.
, 903 F.3d 1297, 1304, 128 USPQ2d 1047,
1049 (Fed. Cir
ative
strength or weakness is only part of the process of determining whether
there is a likelihood of confusion. Even registered marks deemed "weak" are
entitled to the presumptions of validity under §7(b), and are entitled to
protection under §2(d) against the registration of confusingly similar
marks.
See
,
e.g.
,
In re
Detroit Athletic Co.
, 903 F.3d 1297, 1304, 128 USPQ2d 1047,
1049 (Fed. Cir. 2018) (affirming the Board’s conclusion that confusion was
likely between DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB, marks
comprised of the "conceptually weak" wording DETROIT ATHLETIC combined with
the non-source identifying business identifiers "Co." and "Club");
see also
King Candy Co. v. Eunice King’s Kitchen, Inc.
, 496 F.2d
1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974);
Food Specialty Co.
v. Standard Prods. Co.
, 406 F.2d 1397, 1398, 161 USPQ 46, 47
(C.C.P.A. 1969) (in speaking of marks as being weak or strong, "we should
not lose sight of the ultimate question that must be answered, namely,
whether there is a likelihood of confusion, mistake, or deception."). Thus,
arguments that third-party use has rendered the registered mark so weak as
to lack any source-identifying ability may not be raised in examination, but
only in cancellation proceedings.
See
,
e.g.
,
In re Dixie Rests., Inc.
,
105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) ("it is not open
to an applicant to prove abandonment of a registered mark in an ex parte
registration proceeding"; a cancellation proceeding against the registrant
is required) (citations omitted);
Wallpaper Mfrs., Ltd. v. Crown
Wallcovering Corp.
, 680 F.2d 755, 766, 214 USPQ 327, 336
(C.C.P.A. 1982) (where a "fail[ure] to police its mark" has "caused the
[registered] mark to lose its significance as a mark," a cancellation
proceeding for abandonment may lie).
See
TMEP
§710.01(b)
regarding the proper submission of
Internet evidence and
§710.03
regarding making third party registrations of record.

## Nearby sections

- [TMEP § 1201 Ownership of Mark](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.md)
- [TMEP § 1201.01 Claim of Ownership May Be Based on Use By Related Companies](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.01.md)
- [TMEP § 1201.02(a) Identifying the Applicant Properly](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(a).md)
- [TMEP § 1201.02(c) Correcting Errors in How the Applicant Is Identified](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(c).md)
- [TMEP § 1201.02(d) Operating Divisions](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(d).md)
- [TMEP § 1201.02(e) Changes in Ownership After Application Is Filed](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.02(e).md)
- [TMEP § 1201.03(a) No Explanation of Use of Mark by Related Companies or Applicant’s Control Over Use of Mark by Related Companies Required](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(a).md)
- [TMEP § 1201.03(b) Wholly Owned Related Companies](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(b).md)
- [TMEP § 1201.03(c) Common Stockholders, Directors, or Officers](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(c).md)
- [TMEP § 1201.03(e) License and Franchise Situations](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.03(e).md)
- [TMEP § 1201.04 Inquiry Regarding Parties Named on Specimens or Elsewhere in Record](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.04.md)
- [TMEP § 1201.05 Acceptable Claim of Ownership Based on Applicant’s Own Use](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.05.md)
- [TMEP § 1201.06(a) Applicant Is Merely Distributor or Importer](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.06(a).md)
- [TMEP § 1201.06(b) Goods Manufactured in a Country Other than Where Applicant Is Located](https://www.frixlaw.com/law-library/statutes/TMEP_S1201.06(b).md)

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Source: Frix Law Library, https://www.frixlaw.com/law-library/statutes/TMEP_S1207.01(d)(iii). Check the current official text before relying on it. Not legal advice.