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The "crowded field" argument is a common strategy used to overcome likelihood of confusion refusals: if an applicant points to enough similar third-party marks, the Board may conclude that each mark is entitled to a narrow scope of protection such that even minor differences will suffice to prevent consumer confusion. In In re Mario's LLC, Serial No. 98460342 (T.T.A.B. Jan. 27, 2026), however, the TTAB held that the applicant's third-party evidence didn't meaningfully weaken the cited mark, and thus affirmed the refusal.
Applicant Mario's LLC sought to register MARIO'S for a broad set of Class 25 clothing and footwear products. The Examining Attorney refused registration under Section 2(d) based on a prior registration for MARIO'S 3.10 covering "Retail apparel stores" in Class 35 (Reg. No. 3306186). The Board affirmed the refusal, while noting that the application could still proceed for Class 18 goods that were not affected by the final refusal.
In reaching that conclusion, the Board emphasized that its likelihood of confusion determination under Section 2(d) is "based on an analysis of all probative facts in the record that are relevant to the likelihood of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) ("DuPont")."
The Board had little trouble finding that the parties' goods and services were related. The MARIO'S 3.10 registration covers retail apparel store services, which necessarily involve selling apparel—the same general category as the clothing items listed in the application for MARIO'S. Consistent with longstanding TTAB practice, the Board reiterated that retail store services are frequently deemed related to the goods sold through those stores.
On similarity of the marks, the applicant argued that the marks are different in appearance and sound given the additional term "3.10" in the cited mark. The Board acknowledged some differences in appearance and sound, but found MARIO'S dominant in MARIO'S 3.10, especially because it appears first and is the portion consumers are most likely to remember. The Board also found it significant that applicant's mark is entirely subsumed within the cited mark, increasing overall similarity.
On meaning, applicant argued that each mark pointed to a different "Mario" in the marketplace: applicant's mark refers to Mario Rodriguez and items provided by Mario LLC, while the cited mark refers to Mario Biso of Portland. The Board rejected that argument because neither of the surnames—Rodriguez or Biso—appears in the marks, stressing that it compares marks as shown in the application and registration. The Board acknowledged "3.10" might hint at a store iteration (e.g., a third location or version), but held that any nuance was outweighed by the shared MARIO'S connotation and commercial impression.
Applicant submitted roughly two dozen third-party registrations for MARIO-formative marks covering clothing/footwear, plus some evidence of use. The Board agreed that registrations can bear on conceptual strength and that proof of use can bear on commercial strength. But it found most of the cited third-party marks meaningfully distinguishable from MARIO'S as a stand-alone possessive personal name, particularly the many "MARIO + surname" marks that create a designer-name impression and are therefore distinguishable from MARIO'S alone.
After discounting the less comparable examples (including marks tied to the "Super Mario" franchise), the Board pointed to only a few registrations it found even somewhat probative (such as MMMM MARIO'S, CHEERFUL MARIO, and MARIO MILLIONS) and concluded that these were "too few" to weaken the cited mark's MARIO'S component. The Board thus found the sixth DuPont factor (the number and nature of similar marks in use on similar goods) to be neutral.
Applicant also relied on other third-party registrations (e.g., possessive personal names for clothing) to argue inconsistent USPTO treatment. The Board emphasized that prior decisions resulting in third-party registrations for different marks do not bind the TTAB and cannot "justify the registration of another confusingly similar mark." Applicant likewise pointed to a now-cancelled MARIO clothing registration that once coexisted with the cited registration, but the Board found it had little probative value beyond showing that it had once issued.
Balancing the DuPont factors, the TTAB found the marks “very similar,” the goods and services related on their face, and the crowded-field evidence neutral. The Board thus affirmed the Examining Attorney’s refusal of MARIO’Sin Class 25.
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