Charles B. Griffin v. Warman Family Trust

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: January 27, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Charles B. Griffin
v.
Warman Family Trust
_____
Opposition No. 91286997
_____
Donald McKay and Thomas Gulick of McNees Wallace & Nurick LLC
for Charles B. Griffin.
Gwen R. Acker Wood of Acker Wood Intellectual Property Law, LLC
for Warman Family Trust.
_____
Before Wellington, Cohen and Brock,
Administrative Trademark Judges.
Opinion by Cohen, Administrative Trademark Judge:
Applicant, Warman Family Trust, seeks registration on the Principal Register for
the standard character mark FUDGIE WUDGIE for “fudge; chocolate and chocolates;
beverages with a chocolate base” in International Class 30.1
1 Application Serial No. 97575703 (the “Application”) was filed on September 1, 2022 based
on an allegation of use in commerce and anywhere of September 3, 2022, under Section 1(a)
of the Trademark Act, 15 U.S.C. § 1051(a).

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Opposer, Charles B. Griffin, opposes the Application alleging the following claims:
• Applicant committed fraud because of a permanent injunction barring
Applicant’s sole trustee from using FUDGIE WUDGIE as a mark;
• the term FUDGIE in the FUDGIE WUDGIE mark is descriptive and
should be disclaimed; and
• Applicant’s use of a FUDGIE WUDGIE mark was prohibited by a prior
court order and thus, the Application is void ab initio due to nonuse as of
the filing date of the amendment to allege use (“AAU”).2
2 In the Board’s order denying the parties’ cross motions for summary judgment, the Board
determined that Opposer’s assertion that the Application is void is a claim that the
Application was void based on nonuse at the time the AAU was filed. 12 TTABVUE 10 (“While
not a model of clarity, the Board construes the claim as one contending that the application
is void ab initio due to nonuse as of the filing of the AAU, rather than a claim of
abandonment.”). However, the notice of opposition and both parties’ briefs also address
whether the Application, at the time of filing, was void ab initio. See, e.g., 1 TTABVUE 9, ¶60
(“Because such use of the FUDGIE WUDGIE mark is prohibited by court order, Applicant’s
application should be considered void ab initio.”); 23 TTABVUE 11 (“Whether the Applicant’s
‘703 application should be refused registration or void ab initio where, at the time of filing
the application or at the time of filing the Amendment to Allege Use …”). In view thereof, we
also consider the claim that the Application when filed was void ab initio based on nonuse as
well as the claim that the Application at the time the AAU was filed was void based on
nonuse. See, e.g., Conolty v. Conolty O’Connor NYC LLC, No. 91206045, 2014 WL 3427346,
at *2 (TTAB 2014) (matters will be found as having been tried by implied consent when, even
if not expressly raised in the pleadings, the parties introduce evidence regarding the unpled
matters without objection and discuss the issues relating thereto in their briefs).
Opposer also asserts in its brief that because of the injunction, Applicant’s use “precludes a
bona fide intent to use the mark lawfully and independently warrants refusal of registration
regardless of Mr. Warman’s intent or knowledge of the injunction.” 23 TTABVUE 7-8; see
also id. at 27-31. Applicant addressed this claim, substantively, without objection. 24
TTABVUE 33 (“Opposer’s claim that the ’703 Application is void ab initio for lack of bona fide
intent cannot be sustained”). While Opposer does not use the terms “bona fide intent to use”
in its pleading, under Fed. R. Civ. P. 15(b), we consider the pleadings amended by implied
consent to include the claim that at the time of filing the Application was void based on a lack
of bona fide intent to use the mark in commerce. See also Morgan Creek Prods. v. Foria Int’l
Inc., No. 91173806, 2009 WL 1719597, at *3 (TTAB 2009) (“[I]mplied consent to the trial of
an unpleaded issue can be found only where the non[o]ffering party (1) raised no objection to
the introduction of evidence on the issue, and (2) was fairly apprised that the evidence was
being offered in support of the issue.”); TBMP § 507.03(b) (“When issues not raised by the
pleadings are tried by the express or implied consent of the parties, unless prohibited by 37
C.F.R. § 2.107, the Board will treat them in all respects as if they had been raised in the
pleadings.”).

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In its answer, Applicant admits several of the allegations in the notice of
opposition including the following admissions of note:
• Christopher Warman, Sr. is the sole trustee of Applicant;3
• Fudgetopia, LLC claimed ownership of the FUDGIE WUDGIE mark;4
• Third-party Three Rivers Confections, LLC filed suit against Mr. Warman
and Fudgetopia, LLC wherein default judgment was granted which reads:
ORDERED, ADJUDGED AND DECREED, that Defendant Fudgetopia,
LLC, and its agents, servants, employees, attorneys, and all those
persons in active concert or participation with it are permanently
enjoined from using the Fudgie Wudgie Marks, any counterfeit
reproduction of the Fudgie Wudgie Marks, any copy or colorable
imitation of the Fudgie Wudgie Marks, or any other mark confusingly
similar thereto or likely to dilute their distinctive quality;5
• Mr. Warman was an agent, servant and/or employee of Fudgetopia, LLC,
or was a person in active concert or participation with Fudgetopia, LLC who
was covered by the injunction and was permanently enjoined from using
the mark FUDGIE WUDGIE;6
• Warman was fully aware of the court order enjoining him permanently from
using the FUDGIE WUDGIE marks;7
• The parties attend the same events;8 and
• Applicant signed a declaration claiming it believed it was entitled to use
the FUDGIE WUDGIE mark in commerce.9
3 4 TTABVUE 2, ¶2.
4 Id. at 4, ¶18.
5 Id. at 5, ¶¶20, 23.
6 Id. at ¶24.
7 Id. at ¶26. Applicant qualifies its admission by stating that it “if fair and equitable relief is
granted, Judge Conti’s order of September 24, 2014 of the permanent injunction referenced
in Paragraph 23 of the Notice of Opposition, shall be dissolved.” Id.
8 Id. at 6, ¶40.
9 Id. at 7, ¶42. In response to Opposer’s allegation that there is an injunction which “prohibits
use of the FUDGIE WUDGIE mark by Christopher Warman, who makes up the entirety of
the Warman Family Trust,” 1 TTABVUE 7, ¶42, Applicant also states in its answer that

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Applicant denies several of the remaining salient allegations in its answer to the
notice of opposition. 10 For the reasons discussed below, we dismiss the opposition.
I. The Record
The record consists of the pleadings, and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), the file of the Application. The parties also introduced
additional evidence and testimony which we do not list here. Nonetheless, the entire
record has been carefully considered, and relevant evidence is discussed throughout
this opinion. See Quiktrip W., Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 1036 (Fed.
Cir. 2021) (Board not obliged to expressly discuss every piece of evidence); In re
Miracle Tuesday LLC, 695 F.3d 1339, 1348 (Fed. Cir. 2012) (“[T]he mere fact that the
Board did not recite all of the evidence it considered does not mean the evidence was
not, in fact, reviewed.”); Plant Genetic Sys., N.V. v. DeKalb Genetics Corp., 315 F.3d
“with respect to the second sentence in Paragraph 42, if fair and equitable relief is granted,
Judge Conti’s order of September 24, 2014 of the permanent injunction referenced in
Paragraph 23 of the Notice of Opposition shall be dissolved.” 4 TTABVUE 7, ¶42.
10 Applicant asserted the affirmative defenses of unclean hands but did not pursue or prove
this defense at trial; they are thus deemed impliedly waived. Id. at 10, ¶2; see Keystone
Consol. Indus. v. Franklin Inv. Corp., No. 92066927, 2024 WL 3771168, at *2 n.10 (TTAB
2024) (“Affirmative defenses that were asserted in an answer but then not pursued at trial
may be deemed impliedly waived, while affirmative defenses that were never asserted may
be deemed forfeited.”); Coca-Cola Co. v. Meenaxi Enters., Inc., No. 92063353, 2021 WL
2681898, at *1 (TTAB 2021) (“Respondent did not pursue the purported affirmative defenses
at trial, and we therefore consider them waived.”).
Respondent also asserted purported affirmative defenses which are not true affirmative
defenses, 4 TTABVUE 10, ¶¶1, 3, so we do not address them as such. See, e.g., DeVivo v.
Ortiz, No. 91242863, 2020 WL 1227592, at *1 (TTAB 2020) (mere amplifications of the
applicant’s denials not considered as separate affirmative defenses); John W. Carson Found.
v. Toilets.com, Inc., No. 91181092, 2010 WL 1233881, at *9 (TTAB 2010) (“The asserted
defense of failure to state a claim is not a true affirmative defense because it relates to an
assertion of the insufficiency of the pleading of opposer’s claim rather than a statement of a
defense to a properly pleaded claim.”).

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1335, 1343 (Fed. Cir. 2003) (“We presume that a fact finder reviews all the evidence
presented unless he explicitly expresses otherwise.”); Newhouse v. Nicholson, 497
F.3d 1298, 1302 (Fed. Cir. 2007) (“The fact that [a particular piece of evidence] was
not specifically mentioned in the Board’s decision in this case is insufficient to
overcome this presumption [that the Board reviewed all the evidence in the record].”).
II. Entitlement to a Statutory Cause of Action
An opposer in an opposition proceeding before the Board must prove its
entitlement to a statutory cause of action. Australian Therapeutic Supplies Pty. Ltd.
v. Naked TM, LLC, 965 F.3d 1370, 1372 (Fed. Cir. 2020); see also Luca McDermott
Catena Gift Tr. v. Fructuoso-Hobbs SL, 102 F.4th 1314, 1325 (Fed. Cir. 2024);
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 1274 (Fed. Cir. 2014).
To establish its entitlement, Opposer must demonstrate: (1) that its claim falls within
the zone of interests protected by the statute (i.e., it has a “real interest” in the
outcome of the proceeding); and (2) damage proximately caused by the proposed
registration (i.e., a reasonable basis for its belief in damage). See Curtin v. United
Trademark Holdings, Inc., 137 F.4th 1359, 1367 (Fed. Cir. 2025); Corcamore, LLC v.
SFM, LLC, 978 F.3d 1298, 1303-07 (Fed. Cir. 2020); Australian Therapeutic Supplies,
965 F.3d at 1373-74; Empresa, 753 F.3d at 1275.
Opposer testifies that he is the sole member of Copper Coast Confections which is
a competitor of Applicant in the fudge and chocolate sales industry;11 has “used the
11 Griffin Declaration, 16 TTABVUE 16, ¶¶22-23.

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term FUDGIE since the fall of 2021”;12 has used “FUDGIE in various slogans that
are often communicated orally”;13 and in addition to the oral uses, “since the fall of
2021 I have used FUDGIE on package labels, web banner ads, and signs for different
events.”14 Additionally, Opposer testifies that he opened a company in 2017 “which
competes with [Applicant].”15
This testimony and evidence establish that Opposer and Applicant are
competitors in the fudge and chocolate industry and Opposer has an interest in using
the term FUDGIE in connection with its business. Thus, Opposer has a real interest
and reasonable belief of damage from registration of the mark in the Application and
thus, entitlement to bring his claim of fraud. See, e.g., Books on Tape, Inc. v. Booktape
Corp., 836 F.2d 519, 520 (Fed. Cir. 1987) (finding competitor has an interest in the
outcome of the proceedings beyond that of the general public). Having established his
entitlement to bring a statutory cause of action, Opposer is entitled to rely on any
other statutory grounds set forth in the Trademark Act that negate Applicant’s right
to register the mark in the Application, including the grounds that the Application is
void and should disclaim FUDGIE as set forth in the notice of opposition. See Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1377 (Fed. Cir. 2012) (“[O]nce
an opposer meets the requirements for [statutory entitlement], it can rely on any of
the statutory grounds for opposition set forth in … [the Trademark Act]”); Spotify AB
12 Id. at 5, ¶27.
13 Id. at 5-6, ¶¶28-34.
14 Id. at 16, ¶30.
15 Griffin Declaration, 16 TTABVUE 3, ¶9.

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v. U.S. Software Inc., No. 91243297, 2022 WL 110251, at *9 (TTAB 2022) (“Once
Opposer has proven its entitlement to a statutory cause of action on one pleaded
ground, it has established its entitlement for any other ground.”).
III. Did the Prior Injunction Prohibit Applicant From Using the
FUDGIE WUDGIE Mark at the Time of Filing the AAU?
Opposer asserts that the Application was void at the time of filing and also upon
the filing of the AAU.16 In his discussion arguing that the Application should be
refused because it was void at the time of filing the AAU, Opposer uses terms such
as “lack of bona fide intent to use,”17 “void ab initio” and “nonuse,” often
interchangeably. Each basis—whether it is phrased as the Application being void at
the time of filing or upon filing the AAU, either based on a lack of bona fide intent to
use or based on nonuse—is predicated on whether a prior injunction prohibited
16 23 TTABVUE 11 (In its statement of the issues, Opposer asserts fraud, a disclaimer of
FUDGIE is required, and the Application should be refused because Applicant’s sole trustee
was enjoined by the court from using FUDGIE WUDGIE).
17 Opposer asserts in his brief that because of the Prior Injunction, Applicant’s use “precludes
a bona fide intent to use the mark lawfully and independently warrants refusal of
registration regardless of Mr. Warman’s intent or knowledge of the injunction.” 23 TTABVUE
7-8; see also id. at 27-31. Because Applicant did not object and addresses the merits of this
claim, under Fed. R. Civ. P. 15(b), we consider the pleadings amended by implied consent to
include the claim that the Application is void based on a lack of bona fide intent to use the
mark in commerce. See, e.g., 24 TTABVUE 33-34 (“Opposer’s claim that the ’703 Application
is void ab initio for lack of bona fide intent cannot be sustained.” “Applicant demonstrated a
good faith intent to use the FUDGIE WUDGIE mark in commerce”); see also Morgan Creek
Prods. v. Foria Int’l Inc., No. 91173806, 2009 WL 1719597, at *3 (TTAB 2009) (“[I]mplied
consent to the trial of an unpleaded issue can be found only where the non[o]ffering party (1)
raised no objection to the introduction of evidence on the issue, and (2) was fairly apprised
that the evidence was being offered in support of the issue.”); TBMP § 507.03(b) (“When issues
not raised by the pleadings are tried by the express or implied consent of the parties, unless
prohibited by 37 C.F.R. § 2.107, the Board will treat them in all respects as if they had been
raised in the pleadings.”).

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Applicant from using FUDGIE WUDGIE. Accordingly, we first address the terms the
prior injunction.
The prior injunction to which the parties refer was issued on September 24, 2014
by the United States District Court for the Western District of Pennsylvania18 (the
“Prior Injunction”).
Neither party disputes that the Prior Injunction contains the following language:
ORDERED, ADJUDGED AND DECREED, that Defendant Fudgetopia,
LLC, and its agents, servants, employees, attorneys, and all those
persons in active concert or participation with it are permanently
enjoined from using the Fudgie Wudgie Marks, any counterfeit
reproduction of the Fudgie Wudgie Marks, any copy or colorable
imitation of the Fudgie Wudgie Marks, or any other mark confusingly
similar thereto or likely to dilute their distinctive quality …
ORDERED, ADJUDGED AND DECREED, that Judgment is entered in
favor of Three Rivers Confections, LLC, and against Fudgetopia, LLC,
pursuant to the Declaratory Judgments Act, declaring that Three Rivers
Confections, LLC, is the lawful and rightful owner of the Fudgie Wudgie
Marks, that Fudgetopia, LLC, has no property or other rights in the
Fudgie Wudgie Marks, and that the transfers of the Fudgie Wudgie
Marks to Three Rivers Confections, LLC, were lawful, valid and
proper.19
The parties also do not dispute that Christopher Warman, the individual, is bound
by the Prior Injunction; nor do the parties dispute that Warman is the sole trustee of
Applicant. However, the parties dispute whether Applicant, the Warman Family
Trust, is bound by the Prior Injunction.20
18 Opposer’s Notice of Reliance, 15 TTABVUE 236-37.
19 Opposer’s Notice of Reliance, 15 TTABVUE 236-37.
20 See, e.g., 24 TTABVUE 14, ¶2

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Opposer argues that the Prior Injunction was in effect at the time of filing the
Application and the AAU, “Applicant proceeded with this [A]pplication for the
Challenged Mark in direct violation of that court order.”21 As part of our analysis of
whether Applicant is bound by the Prior Injunction, we initially address whether the
Prior Injunction issued on behalf of Three Rivers Confections, LLC (“TRC”) is still
enforceable.
Applicant asserts that the prevailing party, TRC, to whom judgment and the Prior
Injunction was entered in favor of, ceased doing business. Specifically, Mr. Warman
testifies that after issuance of the Prior Injunction, “[o]n Dec 19, 2014, [TRC] went
out of business and ceased all use of the Fudgie Wudgie marks”22 and “the FUDGIE
WUDGIE Registrations were canceled by the USPTO in 2017.”23 Applicant does not
21 23 TTABVUE 7.
22 Warman Declaration, 21 TTABVUE 5, ¶14; id. at 7-8, ¶29
23 Id. at 8, ¶29; 24 TTABVUE 19. In its trial brief, Applicant also refers to Warman’s
testimony submitted with Applicant’s motion for summary judgment, wherein Warman
declares that he attended TRC’s asset liquidation on May 16, 2015 which included the
FUDGIE WUDGIE marks, and the registrations for those marks were cancelled on August
18, 2017. See, e.g., 5 TTABVUE 23, ¶¶16-18; 21 TTABVUE; 24 TTABVUE 11-13, 19. This
testimony was submitted with Applicant’s motion for summary judgment and before its trial
period and thus, as trial testimony it was prematurely filed. Although Opposer did not file
any objection on grounds of untimeliness, the testimony was not resubmitted or reaffirmed
during trial. We have not considered this summary judgement testimony or the exhibits
thereto.
Applicant does not provide current status and title copies of the FUDGIE WUDGIE
registrations. Applicant did provide copies of the registrations dated from 2012 which do not
show the registrations as cancelled but rather, registered. 15 TTABVUE 100-104. However,
even if the registrations for FUDGIE WUDGIE may have been cancelled, this argument
conflates registration of a mark with use of a mark. “[A] trademark owner does not abandon
[its] rights in a mark by abandoning prosecution.” Fuji Med. Instruments Mfg. Co., Ltd., v.
Am. Crocodile Int’l Grp., Inc., No. 92062760, at *11 (TTAB 2021) (quoting Australian
Therapeutic Supplies Pty. Ltd., v. Naked TM, LLC, 965 F.3d 1370, 1375 (Fed. Cir. 2020)
(citations omitted)).

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provide any evidence in support of Mr. Warman’s assertion regarding TRC’s
purported dissolution (e.g., copies of TRC’s dissolution or secretary of state records).
However, Mr. Warman’s testimony was made under penalty of perjury24 and Opposer
does not dispute this assertion or otherwise call into question Mr. Warman’s
testimony. See Fed. R. Evid. 602 (“A witness may testify to a matter only if evidence
is introduced sufficient to support a finding that the witness has personal knowledge
of the matter. Evidence to prove personal knowledge may consist of the witness’s own
testimony.”); Kemi Organics, LLC v. Gupta, No. 92065613, 2018 WL 2230555, at *9
n.22 (TTAB 2018) (a “witness’s averment of personal knowledge may be sufficient to
establish it depending upon the circumstances,” although “the better practice is for
witnesses to provide additional testimony to substantiate their averments.”). Mr.
Warman also testifies, “I believed I was completely free to use my Fudgie Wudgie
Mark”25 because TRC had gone out of business, had stopped using the FUDGIE
WUDGIE marks and the FUDGIE WUDGIE registrations were cancelled.26
The Prior Injunction was entered as part of the judgment in a court case between
TRC and Fudgetopia, LLC (including agents, servants or employees, of which Mr.
Warman was one). The Prior Injunction does not extend beyond the interests and
claims of TRC, the plaintiff in the court case. In Trump v. CASA, 606 U.S. 831, 852
(2025), the Supreme Court explains:
24 Warman Declaration, 21 TTABVUE 2, 11.
25 Id. at 7, ¶29.
26 Id. 7-8, ¶29.

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Consider an archetypal case: a nuisance in which one neighbor sues
another for blasting loud music at all hours of the night. To afford the
plaintiff complete relief, the court has only one feasible option: order the
defendant to turn her music down—or better yet, off. That order will
necessarily benefit the defendant’s surrounding neighbors too; there is
no way ‘to peel off just the portion of the nuisance that harmed the
plaintiff.’ … But while the court’s injunction might have the practical
effect of benefiting nonparties, ‘that benefit [is] merely incidental.’ … As
a matter of law, the injunction’s protection extends only to the suing
plaintiff—as evidenced by the fact that only the plaintiff can enforce the
judgment against the defendant responsible for the nuisance. If the
nuisance persists, and another neighbor wants to shut it down, she must
file her own suit (internal citations omitted).
Indeed, Opposer does not assert or make any evidence of record that he was a party
(or in privity with any party) to the court case and there are no allegations or evidence
of record that TRC has a successor in interest or otherwise assigned its rights in
FUDGIE WUDGIE. The Prior Injunction’s protection does not extend to Opposer and
Opposer could not enforce the terms of the Prior Injunction.
There is no dispute that the court did not issue an order vacating the Prior
Injunction until after the filing of the Application and AAU.27 Moreover, because TRC
was no longer in business while the Prior Injunction was still in force, there was no
party that could enforce the Prior Injunction. In fact, when Applicant sought vacatur
of the Prior Injunction, the court granted the motion noting “there being no objection
by the plaintiff [TRC], IT IS HEREBY ORDERED that Defendant’s Motion to Vacate
Permanent Injunction is GRANTED.”28 Once TRC no longer existed, the Prior
27 Opposer’s Notice of Reliance, Request for Admission No. 5, 15 TTABVUE 11 (Applicant
responds that “The Injunction was vacated on December 12, 2023”).
28 17 TTABVUE 60. Applicant’s motion to vacate alleges that TRC’s “chocolate and fudge
business permanently closed in 2015, at which time [TRC] ceased using the Fudgie Wudgie

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Injunction lost its underlying rationale, namely, to protect TRC’s rights including its
trademark rights and interests in FUDGIE WUDGIE. Cf. Tory v. Cochran, 544 U.S.
734, 736 (2005) (Court determined that because the death of Cochran after a
permanent injunction against Tory had issued, the injunction “as written, has now
lost its underlying rationale … the grounds for the injunction are much diminished,
if they have not disappeared altogether.”). Ultimately, any putative grounds for
opposition based on the Prior Injunction disappeared for all practical purposes upon
TRC’s dissolution in 2014.
In view thereof, given TRC’s dissolution shortly after the Prior Injunction issued
in 2014, we find that the Prior Injunction did not prevent Applicant from filing the
Application in 2022 or the AAU in 2023. Because Opposer’s claim that the Application
is void is entirely predicated on the Prior Injunction―whether it is phrased as being
void ab initio upon the filing of the Application based on a lack of a bona fide intent
to use the mark, or whether it is based on nonuse as of the filing of the AAU―the
claim is dismissed.
IV. Fraud
“Fraud in procuring or maintaining a trademark registration occurs when an
applicant for registration or a registrant in a declaration of use or a renewal
application knowingly makes specific false, material representations of fact with the
intent of obtaining or maintaining a registration to which it is otherwise not entitled.”
Marks. Further, [TRC]’s Fudgie Wudgie Registrations were cancelled by the U.S. Patent and
Trademark Office (USPTO) in 2017 pursuant to Plaintiff’s non-use.” Id. at 50.

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Illyrian Imp. Inc. v. Adol SH.P.K., No. 91234244, 2022 WL 970321, at *19 (TTAB
2022) (citing In re Bose Corp., 580 F.3d 1240, 1243 (Fed. Cir. 2009); see Torres v.
Cantine Torresella, S.r.l., 808 F.2d 46, 48 (Fed. Cir. 1986)); Smith Int’l, Inc. v. Olin
Corp., No. 91059261, 1981 WL 48127, at *7 (TTAB 1981).
A party asserting a fraud claim “bears a heavy burden of proof.” Bose, 580 F.3d at
1243. “A party alleging fraud in the procurement of a registration bears the heavy
burden of proving fraud with clear and convincing evidence.” Luxco, Inc. v. Conseuo
Regulador del Tequila, A.C., No. 91190827, 2017 WL 542344, at *27 (TTAB 2017)
(cleaned up). “Indeed, ‘the very nature of the charge of fraud requires that it be proven
‘to the hilt’ with clear and convincing evidence. There is no room for speculation,
inference or surmise and, obviously, any doubt must be resolved against the charging
party.’” Id. (quoting Smith Int’l, Inc. v. Olin Corp., No. 91059261, 1981 WL 48127, at
*7 (TTAB 1981)). Subjective intent to deceive, however difficult it may be to prove, is
an indispensable element in the analysis.” Bose, 580 F.3d at 1245. “When drawing an
inference of intent, ‘the involved conduct, viewed in light of all the evidence . . . must
indicate sufficient culpability to require a finding of intent to deceive.’” Id. at 1245
(quoting Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 876 (Fed.
Cir. 1988 (en banc)). “Of course, ‘because direct evidence of deceptive intent is rarely
available, such intent can be inferred from indirect and circumstantial evidence. But
such evidence must still be clear and convincing, and inferences drawn from lesser
evidence cannot satisfy the deceptive intent requirement.”’ Id. (quoting Star Sci., Inc.
v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008)).

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The basis for Opposer’s fraud claim is that at the time of filing the Application and
AAU, “Applicant’s trustee was legally barred by the active federal court Injunction
from using the applied-for-mark”;29 and that “after being explicitly reminded of the
injunction before this proceeding began, Applicant took no steps to vacate the order,
amend or withdraw the application, or notify the U.S. Patent and Trademark
Office.”30
Applicant submits the testimony of its trustee, Mr. Warman, who testifies that he
was “presented with an opportunity to open a franchise … and wanted to use the
FUDGIE WUDGIE mark at issue in this proceeding”;31 that his attorney conducted
a trademark search to determine if the mark was available;32 and that he “believed I
was completely free to use my Fudgie Wudgie Mark and file for its registration, as I
did not believe that I was still enjoined from doing so because (a) [TRC] has closed its
business in 2014 and had stopped all use of the FUDGIE WUDGIE marks; and (2)
the FUDGIE WUDGIE Registrations were canceled by the USPTO in 2017.”33
Opposer offers no direct evidence of Applicant’s subjective intent to deceive in the
form of Applicant’s testimony, cross-examination of Applicant or discovery responses.
Cf. Fuji Med. Instruments, 2021 WL 3286400, at *28-38 (considering witness
testimony and emails exchanged between the parties in finding that the respondent
29 23 TTABVUE 24.
30 Id. at 8.
31 Warman Declaration, 21 TTABVUE 7, ¶28.
32 Id.
33 Id. at 7-8, ¶29.

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intended to deceive the USPTO); Nationstar Mortg. LLC v. Ahmad, No. 91177036,
2014 WL 6480655, *13 (TTAB 2014) (finding subjective intent to deceive where the
applicant’s testimony “was not at all credible”).
We find that there is insufficient evidence in the record before us to warrant the
inference of an intent to deceive the USPTO.34 “[A]bsent the requisite intent to
mislead the PTO, even a material misrepresentation would not qualify as fraud under
the Lanham Act warranting cancellation.” Bose, 580 F.3d at 1243 (citing King Auto.,
Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 1011 n.4 (CCPA 1981)). Mr.
Warman’s testimony is clear and uncontradicted regarding his understanding of the
Prior Injunction. Opposer has failed to prove, by clear and convincing evidence, that
Applicant made material false statements to the USPTO with the subjective intent
to deceive the USPTO into issuing a registration to which Applicant was not entitled.
Opposer’s fraud claim is thus dismissed.
V. Disclaimer
“A term is merely descriptive if it immediately conveys knowledge of a quality,
feature, function, or characteristic of the goods or services with which it is used.” In
re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012) (quoting
In re Bayer AG, 488 F.3d 960, 963 (Fed. Cir. 2007)); see also In re Gyulay, 820 F.2d
1216, 1217 (Fed. Cir. 1987). Descriptiveness is not considered in the abstract but is
analyzed in relation to an applicant’s identified goods or services, the context in which
34 In reaching this conclusion, we recognize Mr. Warman’s less than candid approach with
his attorney and failure to reveal the existence of the Prior Injunction before filing the
Application.

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the term is being used, and the possible significance that the term would have to the
average purchaser encountering the goods or services in the marketplace. In re Bayer,
488 F.3d at 963-64; see also DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd.,
695 F.3d 1247, 1253 (Fed. Cir. 2012) (“The question is whether someone who knows
what the goods or services are will understand the term to convey information about
them.”) (citation omitted). A mark is merely descriptive if it merely describes any of
the listed goods. In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 525 (CCPA 1980)
(“Registration will be denied if a mark is merely descriptive of any of the goods or
services for which registration is sought.”).
Our determination as to whether FUDGIE WUDGIE is merely descriptive is
based on an analysis of the proposed mark as a whole. DuoProSS Meditech, 695 F.3d
at 1252 (“When determining whether a mark is merely descriptive, the Board must
consider the commercial impression of a mark as a whole.”). On the other hand, we
may consider the significance of each element separately in the course of evaluating
the mark as a whole. Id. at 1253 (noting that “[t]he Board to be sure, can ascertain
the meaning and weight of each of the components that makes up the mark.”).
Evidence of the relevant purchasers’ understanding of a term or phrase “may be
obtained from any competent source, such as purchaser testimony, consumer surveys,
listings in dictionaries, trade journals, newspapers[,] and other publications.” Real
Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 974 (Fed. Cir. 2018) (quoting
Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 1366 (Fed. Cir. 2018)).

Opposition No. 91286997
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Here, Applicant has misspelled the term “fudgy” by replacing “y” with “ie.” This
simple misspelling does not change the commercial impression or the way prospective
purchasers would view the term. See Nupla Corp. v. IXL Mfg. Co., 114 F.3d 191, 196
(Fed. Cir. 1997) (CUSH-N-GRIP “which is merely a misspelling of CUSHION-GRIP,
is also generic as a matter of law”); In re Quik-Print Copy Shops, 616 F.2d 523, 526
n.9 (CCPA 1980) (QUIK-PRINT held descriptive; “There is no legally significant
difference here between ‘quik’ and ‘quick”’); King-Kup Candies, Inc. v. King Candy
Co., 288 F.2d 944, 949 (CCPA 1961) (“the syllable ‘Kup,’ which is the full equivalent
of the word ‘cup,’ is descriptive”). In addition to its arguments that “fudgie” is a
colloquial term35 and that third parties use “fudgie” to describe various types of
chocolate and fudge foods,36 Opposer submitted a dictionary definition of “fudgy”
which means “of the consistency, appearance, or taste of fudge.”37 Applicant uses the
variant “fudge” in the identification to identify its goods. The identification of goods
therefore also serves as evidence of mere descriptiveness. See In re NextGen Mgmt.,
LLC, No. 88098031, 2023 WL 111145, at *4 (TTAB 2023) (“With respect to the term
PORTAL, Applicant has identified its services as ‘an Internet website portal in the
healthcare field to provide a patient and caregivers with the patient's drug
35 23 TTABVUE 45.
36 Id.; Griffin Declaration, 16 TTABVUE 6-8, ¶37; id. at 242-317.
37 Opposer provided this definition for the first time in its trial brief. 23 TTABVUE 47
(accessed from https://www.oed.com/dictionary/fudgy). Because Applicant did not object to
this untimely submission of evidence and since the Board may take judicial notice of
dictionary definitions, including online dictionaries, see, e.g., In re Omniome, Inc., No.
87661190, 2019 WL 7596207, at *3, n. 17 (TTAB 2019), we take judicial notice of the
definition, submitted by Opposer, for “fudgy.”

Opposition No. 91286997
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prescription information.’ Use of a term in an application's recitation of services
strongly suggests that the term is merely descriptive.”). Contrary to Applicant’s
assertion that “fudgie” is not descriptive,38 based on the evidence of record, there can
be no doubt that FUDGIE is descriptive of Applicant’s goods and in particular, its
fudge. There is no evidence or argument that WUDGIE has any meaning in
association with the parties’ respective goods.
Applicant, however, argues that a disclaimer of FUDGIE is not required because
FUDGIE WUDGIE is a composite mark;39 and that Opposer’s assertions recognize
and characterize FUDGIE WUDGIE as a composite mark.40
Just as the registration of a mark may be opposed on the Section 2(e)(1) ground
that the entire mark, when applied to the goods or services of the applicant, is merely
descriptive of them, so too it may be on the ground that an undisclaimed portion of
the mark is merely descriptive of the applicant’s goods or services (and that the mark
should not be registered without a disclaimer of that portion). Kellogg Co. v. PackEm
Enters. Inc., No. 80586, 1990 WL 354499, at *3 (TTAB 1990) aff’d 951 F.2d 330 (Fed.
Cir. 1991).
An exception to a disclaimer requirement exists, however, if the descriptive term
at issue is so merged together with other elements of a composite mark, that they
38 24 TTABVUE 46 (“Considering that the ‘fudgie’ portion of the Challenged Mark is not
merely descriptive …”).
39 Id. at 44.
40 Id.; 23 TTABVUE 45 (“Opposer asserts, not that the whole composite mark is descriptive,
but that the FUDGIE element of Applicant’s composite mark is merely descriptive and should
be disclaimed.”).

Opposition No. 91286997
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form a unitary, non-descriptive whole that renders a disclaimer unnecessary. In re
EBS Data Processing, Inc., 1981 WL 40480, at *2 (TTAB 1981). “[A] unitary mark
simply has no ‘unregistrable component,’ but is instead an inseparable whole.” Dena
Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560 (Fed. Cir. 1991). When two or more
merely descriptive terms are combined, the composite mark “is registrable only if the
combination of terms creates a unitary mark with a non-descriptive meaning, or if
the composite has a bizarre or incongruous meaning as applied to the goods or
services.” Omniome, 2019 WL 7596207, at *5; Dena Corp. v. Belvedere Int’l, Inc., 950
F.2d 1555, 1561 (Fed. Cir. 1991) (when considering if a mark is unitary or composite,
the inquiry focuses on “how the average purchaser would encounter the mark under
normal marketing of such goods and also ... what the reaction of the average
purchaser would be to this display of the mark.”) (quoting In re Magic Muffler Serv.,
Inc., 1974 WL 20082, at *1 (TTAB 1974)). “[T]he PTO must … determine whether the
mark as a whole, i.e., the combination of the individual parts, conveys any distinctive
source-identifying impression contrary to the descriptiveness of the individual parts.”
In re Oppedahl & Larson LLP, 373 F.3d 1171, 1174-75 (Fed. Cir. 2004) (citing In re
Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)); In re Zuma Array Ltd., No.
79288888, 2022 WL 3282655, at *4 (TTAB 2022). Only where the combination of
descriptive terms creates a unitary mark, or a mark with a unique, incongruous, or
otherwise nondescriptive meaning in relation to the goods or services is the mark
registrable as suggestive. See In re Colonial Stores Inc., 394 F.2d 549, 552-53 (CCPA
1968) (SUGAR & SPICE for bakery products); In re Shutts, 1983 WL 51780, at *1-2

Opposition No. 91286997
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(TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a
snow-removing head at one end, the head being of solid uninterrupted construction
without prongs”).
In some cases, alliterative marks, or as is the case here, those with a rhyming or
other sound pattern, can encourage persons encountering the mark to perceive the
mark as a whole. See, e.g., In re Kraft, Inc., 1983 WL 51972, at *2 (TTAB 1983)
(finding LIGHT N’ LIVELY to be a unitary term not subject to disclaimer because the
mark “as a whole has a suggestive significance which is distinctly different from the
merely descriptive significance of the term ‘LIGHT’ per se,” which is “lost in the mark
as a whole”).
Use of FUDGIE alone is not incongruous since fudge is included in Applicant’s
identified goods and given the order of the terms, FUDGIE could be perceived as an
adjective describing WUDGIE, a coined term. Notwithstanding, we find the
combination of FUDGIE WUDGIE to be unitary and incongruous. The terms
FUDGIE WUDGIE are highly similar in appearance and have a rhyming cadence
which a consumer is likely to perceive as a whole rather than just focusing on the
descriptive FUDGIE portion of the mark or the undefined WUDGIE portion of the
mark. Combined, the rhyming scheme and cadence of FUDGIE WUDGIE make the
mark unitary such that the individual descriptive element, FUDGIE, does not need
to be disclaimed.
VI. Conclusion
In sum, we find that because the rationale and ground for which the Prior

Opposition No. 91286997
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Injunction was issued no longer exists and the entity that could enforce the Prior
Injunction no longer exists, the Application was not void upon filing the Application
or upon filing the AAU; that upon filing the Application and AAU, the evidence does
not show that Applicant had the requisite intent to defraud the USPTO; and that a
disclaimer of FUDGIE is not required given the unitary nature of FUDGIE WUDGIE.
Decision: The opposition is dismissed.