In determining the strength of a trademark, the TTAB considers both its inherent strength, based on the nature of the mark itself, and its commercial strength, based on marketplace recognition of the mark. Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1362 (Fed. Cir. 2023) (“There are two prongs of analysis for a mark's strength under the sixth factor: conceptual strength and commercial strength.”); see also In re Chippendales USA, Inc., 622 F.3d 1346, 1353-54 (Fed. Cir. 2010) (“A mark's strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).”); Top Tobacco, L.P. v. North Atl. Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by assessing its inherent strength and its commercial strength); McCarthy on Trademarks and Unfair Competition § 11:83 (5th ed. 2019) (“The first enquiry focuses on the inherent potential of the term at the time of its first use. The second evaluates the actual customer recognition value of the mark at the time registration is sought or at the time the mark is asserted in litigation to prevent another's use.”).

A trademark registered on the Principal Register without a claim of acquired distinctiveness is considered to be inherently distinctive. Tea Bd. of India v. Republic of Tea, Inc., Opp. No. 91118587, 2006 TTAB LEXIS 330, at *62 (TTAB 2006) (a “mark that is registered on the Principal Register is entitled to all Section 7(b) presumptions
including the presumption that the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods”). 

It is possible, however, for a trademark to be inherently distinctive but commerically weak. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (finding "no basis for requiring secondary meaning for inherently distinctive" marks, whether for trade dress or more traditional trademarks). For example, a suggestive mark may be inherently distinctive, but may have relatively weak conceptual strength for having a well-recognized suggestive meaning. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 1374 (Fed. Cir. 2015). 

To overcome a Section 2(d) refusal for likelihood of confusion with an earlier trademark registration, one common strategy is to cite third-party uses and registrations of similar marks for similar or related goods in order to show that the cited registered mark is weak and entitled to a narrow scope of protection. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338 (Fed. Cir. 2015) (“The weaker [a Registrant's] mark, the closer an applicant's mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.”); In re Melville Corp., Ser. No. 736814, 1991 WL 325859, *2 (TTAB 1991) (noting that for an inherent weak mark, "slight differences in the marks may be sufficient to distinguish one from the other"). 

Recently, the TTAB upheld a Section 2(d) refusal to register a BLYTH COWBELL BREWING CO. mark and design for "Beer, ale, lager, stout, porter, craft beers, pale beer, flavored beers" (with BLYTHE and BREWING CO. disclaimed) for likelihood of confusion with the registered mark COWBELL CREAM ALE for "Ales" (with CREAM ALE disclaimed). In re Blyth Cowbell Brewing Inc., Ser. No. 87411623 (TTAB Feb. 7, 2025). 

Applicant submitted evidence of eleven third-party uses of COWBELL-formative marks, including two for cream ales and nine for beers. But the TTAB noted that Applicant did not address the issue of conceptual weakness. 

The TTAB considered this third-party use in context of commercial strength and found that this "reflects a more modest amount of evidence than that found convincing" in Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. New Millennium Sports, S.L.U., 797 F.3d 1363 (Fed. Cir. 2015) (at least fourteen relevant third party uses or registrations of record) and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 (Fed. Cir. 2015) (at least twenty-six relevant third party uses or registrations of record). 

As a result, we find that Applicant has established at best that the term COWBELL is somewhat weak.

Because the literal element COWBELL is the dominant element in both marks, the TTAB found the marks to be similar, keeping in mind: (1) “the fallibility of memory over a period of time;” and (2) that the “average” purchaser “normally retains a general rather than a specific impression of trademarks.” Sealed Air Corp. v. Scott Paper Co., 1975 TTAB LEXIS 236, at *6 (TTAB 1975); see also In re St. Helena Hosp., 774 F.3d 747, 751 (Fed. Cir. 2014) (“marks must be considered in light of the fallibility of memory”) (citation, internal quotation marks, and ellipsis omitted)).

The TTAB held that even considering the slight commercial weakness of the COWBELL term in view of the third-party use in the record, it was not enough to outweigh the fact that the goods were identical, and the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods. See e.g., In re Bay State Brewing Co., Ser. No. 85826258, 2016 TTAB LEXIS 46, at *7 (TTAB 2016) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012)). 

As John Welch at TTABlog put it, "the Board wanted more cowbell."