TTABlog Quarterly Index: January - March 2025

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Section 2(a) Deceptiveness:

• TTABlog Test: Is ECOTWEED Deceptive for "Footwear made of a Tweed-like Material"? [Yes]

Section 2(c) - Consent of Living Individual:

• TTAB Upholds Four Section 2(c) Refusals of Anti-Trump Marks Due to Lack of Consent

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is KINGS ARMOR Confusable with UNDER ARMOUR for Clothing?
• TTABlog Test: Are Sexual Arousal Supplements Related to Hair Care Products Under Section 2(d)? [Yes]
• TTABlog Test: Is STEED COMPANY Confusable with CORCEL for Clothing? [Yes]
• TTAB Upholds 2(d) and 2(e)(4) Bifusal of WYSE LONDON for Clothing
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTAB Denies Section 2(d) Cancellation Petition due to Unconvincing Testimony Regarding Priority
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• Finding Restaurant Services Related to Paper Food Containers, TTAB Sustains DON'T MESS WITH TEX-MEX Opposition
• TTABlog Test: Is CLEANFACE Confusable with DR.BELMEUR CLEAN FACE for Beauty Products? [No]
• TTABlog Test: Are Educational Services for Incarcerated Individuals Related to Legal Services Under Section 2(d)? [Yes]
• TTABlog Test: Are Cosmetics Related to Bottled Water for Section 2(d) Purposes?
• TTABlog Test: Are Pizza Parlors and Baked Goods Related Under Section 2(d)? [Yes]

• RTC RICH TRAPPERS CLUB Logo Not Confusable with RTC for Clothing, Says TTAB
• Eleven Third-Party Uses of "Cowbell" Not Enough to Overcome Cited COWBELL CREAM ALE Registration
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• TTAB Reverses Section 2(d) Refusal of "12 & Design" for Cosmetics Due to Third-Party Registration Evidence
• TTAB Reverses USPTO's Section 2(d) Refusal of PBE AWARDS & Design for Marketing Award Services
• E.D. Va. Reverses TTAB's Precedential Decision in HME Opposition, Orders USPTO to Issue Registration
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out
• TTAB Reverses Section 2(d) Refusal of FITO for Seeds Due to Dissimilarity of Marks and 13th DuPont Factor (Strategic Partners)
• Opposer Proves Prior Use of Common Law REVOLUTION JEWELRY WORKS Marks, Wins Opposition Battle
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• In 2024, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?

Section 2(e)(1) - Mere Descriptiveness:

• TTABlog Test: How Did These Recent Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• In 2024, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals?
• Precedential No. 30: Illustration of Block Puzzle Merely Descriptive of Computer Game Software, Says TTAB

Section 2(e)(4) - Primarily Merely a Surname:

• TTAB Upholds 2(d) and 2(e)(4) Bifusal of WYSE LONDON for Clothing
• TTABlog Test: Is SELECT BY LANDRY'S Primarily Merely a Surname for a Customer Reward Program?

Section 2(e)(5) - Functionality:

• TTAB Lets Stand Bifusal of Leveling Leg Configuration: De Jure Functional and Non-Distinctive
• TTAB Affirms 2e5 Functionality Refusal of Fire Extinguisher Pressure Gauge Configuration, Despite Applicant's Design Patent
• CAFC Affirms TTAB: Pink Color De Jure Functional for Hip Joint Implants
• Precedential No. 1: TTAB Upholds USPTO Objections to Over-Inclusive Drawings for Watch Configuration Marks

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 1: TTAB Upholds USPTO Objections to Over-Inclusive Drawings for Watch Configuration Marks

Section 14(3) - Misrepresentation of Source:

• Precedential No. 2: TTAB Sustains Section 14(3) Opposition to LA MONTSERRATINA for Meat Products Based on Reputation in USA Without Use

Abandonment/Nonuse/Specimen of Use:

• TTAB Finds "RUFFAREE" T-Shirt Specimen Acceptable for Dog Park Services
• TTAB Denies "DISORDERLY FASHION" Nonuse Cancellation Petition: It's Hard to Prove a Negative

Dilution:

• PANERA Fails to Prove Fame Before Applicant's First Use Date, TTAB Dismisses Opposition to PANERALUX for Unrelated Products
• Porn Star Name GIGI DIOR Dilutes-by-Blurring Famous DIOR Mark

Failure-to-Function:

• BON VOYAGE Fails to Function as a Trademark for Travel Pillows, Sinking Cancellation Petitioner's 2(d) Claim

Fraud:

• On Remand, Great Concepts Escapes With TTAB Wrist Slap for its Fraudulent Section 15 Declaration

Genericness:

• TTABlog Test: Is MUSH Generic for Oat-Based Cereals? [Yes]
• TTAB Finds "BRILLIANT ROSE" Generic for . . . Guess What?
• TTAB Finds MENTCHEES Generic for .... Guess What?

Non-ownership:

• Applicant Contractually Barred from Using Mark in 11 Metro Areas Still Entitled to Registration
• On Summary Judgment TTAB Sustains Opposition: Applicant Merely Re-packaged Branded Goods and so Does Not Own the Mark
• TTAB Grants Petition to Cancel VIVACE Registration for Microneedling Device: Manufacturer Owns the Mark, Not Distributor

Prosecution Issues:

• Precedential No. 1: TTAB Upholds USPTO Objections to Over-Inclusive Drawings for Watch Configuration Marks

Discovery/Evidence/Procedure:

• Precedential No. 3: Dismissal with Prejudice but Without Judgment Suffices for Claim Preclusion Defense
• Res Judicata Thwarts Applicant Seeking to End Run Prior Opposition by Limiting Services in Second Applications

CAFC Decisions:

• CAFC Affirms TTAB's MONEY MART Decision, Confirming that Zone of Natural Expansion Doctrine Applies Only Defensively
• CAFC Affirms TTAB's Dismissal of BULLSHINE FIREBULL Opposition Despite Commercial Strength of FIREBALL for Whisky
• CAFC Hears Oral Arguments in FUCK and RAPUNZEL Appeals
• CAFC Affirms TTAB: Pink Color De Jure Functional for Hip Joint Implants

Other:

• Current Roster of TTAB Judges
• The Trademark Reporter's 2025 "Annual Review" of U.S. Trademark Cases
• TTAB Posts March 2025 Hearing Schedule
• Three Recent Inter Partes Proceedings: The Bigger They Are ....
• TTAB Posts February 2025 Hearing Schedule
• TTAB Chief Judge Gerard F. Rogers Retires; Thomas V. Shaw Appointed Acting Chief Judge
• The Top Ten TTAB Decisions of 2024 (Part II)
• The Top Ten TTAB Decisions of 2024 (Part I)

Text © John L. Welch 2025.

2024 Precedential Decisions

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Section 2(a) - False Suggestion of a Connection:

• Precedential No. 11: TTAB Upholds 2(a) False Connection Refusal of LEATHERNECKS for Motorcycle Club Membership

Section 2(d) - Likelihood of Confusion:

• Precedential No. 28: TRIPLEYE Not Confusable With 3RD EYE for Optical Monitoring Software and Services, Says TTAB
• Precedential No. 25: TTAB Awards Priority to Opposer over Its Employee, Sustains Opposition to DISTRICT OF FASHION Mark
• Precedential No. 20: Supplemental Registration for PERMITS.COM Cancelled by Prior User of PERMIT.COM Despite No Acquired Distinctiveness
• Precedential No. 19: Red-White-and-Blue Mark Not Confusable with Red-Top Mark for Fence Posts, Says TTAB
• Precedential No. 18 (Part II): TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles
• Precedential No. 15: TTAB Affirms Section 2(d) Refusal of UPC for Computer Components, Rejecting "Something More" Requirement When Only Goods are Involved
• Precedential No. 5: TTAB Finds SAGEFORTH Confusable With SAGE CENTRAL for Medical Information Services, Dismisses Section 18 Counterclaim Without Prejudice
• Precedential No. 1: TTAB Orders Cancellation of CAPTAIN CANNABIS Registration for Comic Books: Petitioner Proved Priority By Use Analogous to Trademark Use

Section 2(e)(1) - Mere Descriptiveness:

• Precedential No. 30: Illustration of Block Puzzle Merely Descriptive of Computer Game Software, Says TTAB
• Precedential No. 13: TTAB Reverses Requirement to Disclaim "ARCHITECT" in KORN FERRY ARCHITECT for HR Services
• Precedential No. 4: TTAB Finds "ZPILE" Merely Descriptive of Metal Sheet Piles

Section 2(f) - Acquired Distinctivenss:

• Precedential No. 2: TTAB Affirms Refusal to Register Proposed Multi-Color Mark for Breakfast Cereals

Failure-to-Function/Specimen of Use:

• Precedential No. 2: TTAB Affirms Refusal to Register Proposed Multi-Color Mark for Breakfast Cereals

Fraud:

• Precedential No. 18 (Part I): Fraud! TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles

Use/Nonuse:

• Precedential No. 18 (Part II): TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles - Nonuse
• Precedential No. 17: TTAB Rules that Retail Offering of One's Own Goods Qualifies as a "Service" Under the Trademark Act
• Precedential No. 16: "GABBY'S TABLE" Specimen Fails to Show Use of Mark for Recited On-Line Store Services
• Precedential No. 14: TTAB Affirms Two Expungement Decisions Based on Nonuse of SMARTLOCK for Evaporative Air Coolers

Discovery/Evidence/Procedure:

• Precedential No. 29: USPTO Has Inherent Authority to Correct its Error by Cancelling Inadvertently Issued Registration
• Precedential No. 26: TTAB Denies Motion to Compel: Responding without Objection to First Set of Discovery Requests does not Preclude Excessiveness Objection to Second Set
• Precedential No. 24: TTAB Rejects Law School Amicus Brief, Denies Partial Summary Judgment, and Tosses Out Six Affirmative Defenses
• Precedential No. 23: TTAB Refuses to Grant Partial Summary Judgment Against Applicant Who Doesn't Own the Mark
• Precedential No. 22: Failure to Respond to Requests for Admissions Leads to Cancelled Registration
• Precedential No. 21: TTAB Grants Motion to Bifurcate VELCRO Cancellation into two Phases
• Precedential No. 12: TTAB Rejects Sovereign Immunity Claim in Opposition to Virginia College System Marks
• Precedential No. 10: TTAB Denies Section 18 Petition to Restrict Beer Registration to Micro-Brewed Craft Beer

• Precedential No. 9: TTAB Denies HOLLYWOOD HOTEL Summary Judgment Motion, Finding No Claim Preclusion
• Precedential No. 8: TTAB Strikes "Trademark Bullying" Affirmative Defense in DOOR DABZ Opposition
• Precedential No. 7: TTAB Dismisses Cancellation Proceeding as Moot After Registrant Fails to File Section 8 Declaration
• Precedential No. 6: TTAB Denies Meta Platforms' Motion to Dismiss META Opposition on Timing and Standing Grounds
• Precedential No. 3: TTAB Rules that a Cancellation Petition Filed During Grace Period is Mooted If Section 8 Declaration Is Not Filed

Pan-American Convention:

• Precedential No. 27: TTAB Dismisses Empresa Cubana's Pan-Am Article 8 Claim, But With Leave To Re-Plead

Text Copyright John L. Welch 2024.

TTABlog Quarterly Index: October - December 2024

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield.com.

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Three Recent Section 2(d) Appeals - How Did They Turn Out?
• Heck Freezes Over: USPTO Fails to Prove Gin Related to Beer Under Section 2(d)
• TTABlog Test: Three Section 2(d) Appeals - Affirmed or Reversed?
• TTABlog Test: Is SWAG GOLF for Clothing Confusable with SWAG for Belt Buckles? [Yes]
• TTABlog Test: Three Recent Section 2(d) Oppositions - Which Was/Were Dismissed?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• JERSEY GIRL WHISKEY for Distilled Spirits Confusable with JERSEY GIRL for Beer and Wine, Says TTAB

• Another Strategic Partners Argument Fails: TTAB Affirms Refusal of "REACH & Design" for Vehicle Parts
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• Precedential No. 28: TRIPLEYE Not Confusable With 3RD EYE for Optical Monitoring Software and Services, Says TTAB
• TTAB Affirms Refusal of ENDURELITE in view of ENDUROLETE for Supplements, Rejecting Strategic Partners Argument
• TTABlog Test: Three Section 2(d) Appeals - Affirmed or Reversed?
• PICKWELL FARMS Confusable with PICTSWEET FARMS for Frozen Vegetables, Says TTAB
• TTABlog Test: Is AGAVE BLACK Confusable with BLACK AGAVE ESPECIAL for Skin Care Preparations? [Yes]

• TTABlog Test: Three Section 2(d) Appeals - Affirmed or Reversed?
• TTAB Reverses 2(d) Refusals of "SUN CHLORELLA" for Noodles Due to Crowded Field
• TTAB Finds Energy Drinks Related to Nutritional Supplements and Pickles
• TTABlog Test: Is This Word-and-Design Mark Confusable with PASION, Both for Cigars?
• TTABlog Test: Is FIJIAN SPICE COMPANY for Spices Confusable with FIJI for Drinking Water?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed on Appeal?
• TTABlog Test: Three Recent Section 2(d) Oppositions - How Do You Think They Came Out?
• Precedential No. 25: TTAB Awards Priority to Opposer over Its Employee, Sustains Opposition to DISTRICT OF FASHION Mark
• TTABlog Test: Three Section 2(d) Appeals - Affirmed or Reversed?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• Consent Agreement Trumps Other DuPont Factors in Reversal of Section 2(d) Refusal
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?

Section 2(e)(1) - Mere Descriptiveness:

• TTABlog Test: Is CERTIFIED SUGAR DADDY Merely Descriptive of Dating Software and Services? [Yes]
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Is PHYSICIANCARE Merely Descriptive of Software and Services Enabling Manufacturers to Deliver Information to Healthcare Providers?

• TTABlog Test: Must "CATTLE COMPANY" Be Disclaimed in "ROCK CREEK CATTLE COMPANY" for Real Estate Development Services?
• TTABlog Test: Must "Pop! Popcorn" Be Disclaimed in "Harry & David Pop! Popcorn" for Popcorn?

Section 2(f) - Acquired Distinctiveness:

• "Sunflower in Lapel" for Legal Services Lacks Acquired Distinctiveness, Says TTAB

Abandonment:

• In Second Stage of Cancellation Proceeding, TTAB Deems RASCAL HOUSE Abandoned for Restaurant Services

Failure to Function/Specimen of Use:

• "PROMATCH" for Drum Sticks Identifies a Process, Fails to Function as a Trademark
• TTAB Dubiously Finds that Vertical Light Beams atop Guitar-Shaped Building Fail to Function as a Source Indicator

• Does "FIRST LOOK" Fail to Function as a Source Indicator for Retail Membership Club Services?
• TTAB Dismisses FIRST YEAR DOWN Opposition: Failure-to-Function and Fraud Claims Fail
• TTAB Remands Failure-to-Function Refusal to USPTO for Consideration of Descriptiveness and Deceptiveness
• "SURVIVAL + Greek Cross Design" Fails to Function as a Trademark for First Aid Kits, Says TTAB
• Faulty Specimen Sinks YACHTLY Application for Yacht Chartering Services
• TTAB Wrestles with Applicant over Specimen Refusal: Guess Who Won?
• TTAB Affirms Refusal Because Specimens Show Use of Mark with Mobile App but not SAAS
• Ornamental Design on Jewelry and Clothing Fails to Function as a Trademark, Says TTAB

Fraud:

• TTAB Dismisses FIRST YEAR DOWN Opposition: Failure-to-Function and Fraud Claims Fail

Genericness:

• District Court Overturns USPTO's Genericness Refusal of SPECTACLES for "Smart Glasses"

Discovery/Evidence/Procedure:

• TTAB Dismisses 2d Opposition to VSS GLOBAL for Vedic Educational Services, But Remands Application for Consideration of Non-Distinctiveness
• Precedential No. 26: TTAB Denies Motion to Compel: Responding without Objection to First Set of Discovery Requests does not Preclude Excessiveness Objection to Second Set
• TTAB Denies Motion For Relief from Judgment After Applicant Failed to Appoint U.S. Counsel
• Precedential No. 24: TTAB Rejects Law School Amicus Brief, Denies Partial Summary Judgment, and Tosses Out Six Affirmative Defenses

Pan-American Convention:

• Precedential No. 27: TTAB Dismisses Empresa Cubana's Pan-Am Article 8 Claim, But With Leave To Re-Plead

Recommended Reading:

• Recommended Reading: The Trademark Reporter's Theme Issue on Artificial Intelligence
• Recommended Reading: The Trademark Reporter, September-October 2024 Issue
• Recommended Reading: Farmer and Bosnic: "2023-24 Trademarks Developments"

Other:

• TTAB Posts January 2025 Hearing Schedule
• Precedential No. 29: USPTO Has Inherent Authority to Correct its Error by Cancelling Inadvertently Issued Registration
• Three Recent Inter Partes "Disasters" - Don't let this Happen to You
• INTA Files Proposed Amicus Brief in Peju's Appeal: SDNY Erred in Applying Issue Preclusion Based on TTAB Decision
• Peju Pursues Appeal of SDNY Decision Misapplying B&B Hardware On Issue Preclusion

• TTAB Posts December 2024 Hearing Schedule
• November 2024 Update of TMEP Now Available
• TTABlog Celebrates 20th Anniversary !
• TTAB Posts November 2024 Hearing Schedule
• Replay of and Slides from Michael Keyes Webinar on "Avoiding Consumer Survey Pitfalls at the TTAB"
• TTABlog Webinar: Michael Keyes on "Avoiding Consumer Survey Pitfalls at the TTAB"

Text © John L. Welch 2024.

TTABlog Quarterly Index: July - September 2024

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield.com.

Section 2(a) - Deceptiveness:

• TTABlog Test: Is LEATHER MAN LTD & Design Deceptive for Belts Not Made of Leather? [No]

Section 2(c) - Consent of Living Individual

• TTAB Affirms Section 2(c) Refusal of TRUMPINOCCHIO for Shirts due to lack of Consent by ... Guess Who?

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Are these two "I * NY" Confusable for Backpacks and Clothing?
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• TTAB Dismisses Section 2(d) Opposition to NOMAD for Barbecue Grills due to Lack of Proof of Relatedness with Electronic Goods
• TTABlog Test: Is KID CHRISTIAN for Sweatshirts Confusable with CHRISTIAN for Wrestling Entertainment Services? [Yes]
• TTAB Renders Split Decision in MRS. CLAUS Section 2(d) Appeal
• TTABlog Test: Which of these Three Section 2(d) Refusals Was/Were Reversed?
• TTABlog Test: Which of these Three Section 2(d) Refusals Was/Were Reversed?
• TTABlog Test: Is "ACUITI" Confusable with "QIACUITY" for Medical Testing Services? [Yes]
• TTABlog Test: Are Mascara and Clothing Related for Section 2(d) Purposes? [Yes]
• TTAB Reverses Section 2(d) Refusal of OCTAVE for Mental Health Services Due to Ambiguity in Cited Registration
• TTABlog Test: Is UGLY DOG SALOON for Restaurant and Bar Services Confusable with UGLY DOG for Distilled Spirits? [Yes]
• TTABlog Test: Is "LIP TAR" Confusable with "THE LIP BAR" for Lip Gloss? [Yes]
• EAGLE PARK DISTILLING for Alcoholic Beverages Not Confusable with EAGLE RARE for Bourbon Whiskey, Says TTAB
• TTAB Reverses Section 2(d) Refusal of "LendingOne & Design" Over LENDERS ONE Due to Differences in Mortgage Lending Services
• TTAB Reverses Section 2(d) Refusal of NAMASTE COUTURE BY APRIL STOLF over NAMASTE for Jewelry
• Precedential No. 20: Supplemental Registration for PERMITS.COM Cancelled by Prior User of PERMIT.COM Despite No Acquired Distinctiveness
• TTABlog Test: Three Recent Section 2(d) Appeals - Outcome?
• Precedential No. 19: Red-White-and-Blue Mark Not Confusable with Red-Top Mark for Fence Posts, Says TTAB

• Precedential No. 18 (Part II): TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles
• TTABlog Test: Which of These Section 2(d) Refusals Was/Were Reversed?
• With Amended First Use Date, RESORT WEAR SEASPICE Registration Survives Section 2(d) Attack
• Sustaining Opposition, TTAB Finds RYDE OUT Confusable with RYDE for Supplements and Energy Drinks
• TTAB Sustains Nike's Opposition to "4IR", Finding Confusion Likely with "AIR" For Shirts
• TTAB Easily Finds TREEBNB Confusable with AIRBNB for Temporary Housing Services
• TTABlog Test: How Did These Three Section 2(d) Likelihood of Confusion Appeals Turn Out?
• Precedential No. 15: TTAB Affirms Section 2(d) Refusal of UPC for Computer Components, Rejecting "Something More" Requirement When Only Goods are Involved
• TTAB Sustains Instagram's 2(d) Opposition to INSTASIZE for Photo Editing Software
• TTABlog Test: Three Recent Section 2(d) Appeals For Your Consideration

Section 2(e)(1) - Mere Descriptiveness:

• TTABlog Test: Is BRAINCARE Merely Descriptive of Goods and Services Related to Analysis of Brain Waves? [Yes]
• TTAB Finds SOLAR CONCIERGE Merely Descriptive of, and Lacking Acquired Distinctiveness for, ..... Guess What?
• TTABlog Test: Is WHOLESALEHOME Merely Descriptive of Dusting Cloths?
• TTABlog Test: Must "DAILY" be Disclaimed in DAILY MIND for Mental Health Services
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• Precedential No. 13: TTAB Reverses Requirement to Disclaim "ARCHITECT" in KORN FERRY ARCHITECT for HR Services

Section 2(e)(2) - Primarily Geographically Descriptive:

• TTABlog Test: Is AMERICAN CLOUD Primarily Geographically Descriptive of Cloud-Based Computer Services? [Yes]

Section 2(e)(4) - Primarily Merely a Surname:

• TTABlog Test: Is "SIMON FAMILY WINES" Primarily Merely a Surname for Wines? [Yes]

Failure-to-Function:

• "A CHANCE TO LIVE LONGER" Fails to Function as a Source Indicator for Medical Information, Says TTAB

Fraud:

• Precedential No. 18 (Part I): Fraud! TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles
• Cleveland Guardians Attack CLEVELAND SPIDERS for Clothing: Summary Judgment Motion Fails on Fraud, Succeeds in Part on Nonuse
• TTAB Says Chutter Still Good Law: Reckless Disregard in Obtaining or Maintaining a Registration is Enough for Fraud

Genericness:

• TTAB Finds LOTERIA Generic for Gaming Machines

Use/Nonuse/Specimen of Use:

• Precedential No. 18 (Part II): TTAB Grants Petition to Cancel BLOOKE Registration for Bicycles - Nonuse
• TTAB Dismisses REEFER MAN Opposition Due to Unlawfulness of Opposer's Pleaded Applications
• Precedential No. 17: TTAB Rules that Retail Offering of One's Own Goods Qualifies as a "Service" Under the Trademark Act
• Precedential No. 16: "GABBY'S TABLE" Specimen Fails to Show Use of Mark for Recited On-Line Store Services
• Cleveland Guardians Attack CLEVELAND SPIDERS for Clothing: Summary Judgment Motion Fails on Fraud, Succeeds in Part on Nonuse
• https://thettablog.blogspot.com/2024/07/precedential-no-14-ttab-affirms-two.html

Discovery/Evidence/Procedure:

• Precedential No. 23: TTAB Refuses to Grant Partial Summary Judgment Against Applicant Who Doesn't Own the Mark
• Precedential No. 22: Failure to Respond to Requests for Admissions Leads to Cancelled Registration
• Precedential No. 21: TTAB Grants Motion to Bifurcate VELCRO Cancellation into two Phases

CAFC:

• TTABlog Test: Are These Design/Stylized Marks for Clothing and Purses Confusable?
• CAFC Tosses Out TTAB's Dismissal of COGNAC Opposition Due to Flawed Application of the DuPont Factors to a Certification Mark
• CAFC Affirms TTAB in Genericness Refusal of MODULAR GABION SYSTEMS for . . . . Guess What?

Recommended Reading:

• Recommended Reading: Prof. Michael Grynberg, "Trademarks as Comics"
• Recommended Reading: The Trademark Reporter, July-August 2024 Issue

Other:

• TTAB Posts October 2024 Hearing Schedule
• TTAB Posts September 2024 Hearing Schedule
• (Corrected) Current Roster of TTAB Administrative Trademark Judges
• Three Administrative Trademark Judges Added to TTAB Roste
• TTAB Posts August 2024 Hearing Schedule
• Three Administrative Trademark Judges Added to TTAB Roster
• TTAB Posts July 2024 Hearing Schedule

Text © John L. Welch 2024.

TTABlog Quarterly Index: April - June 2024

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield.com.

Section 2(a) - False Suggestion of a Connection:

• Precedential No. 11: TTAB Upholds 2(a) False Connection Refusal of LEATHERNECKS for Motorcycle Club Membership

Section 2(c) - Consent of Living Individual

• Supreme Court Upholds Constitutionality of the Trademark Act’s “Names Clause” in Affirming Refusal to Register TRUMP TOO SMALL

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is HOLLYWOOD COFFEE CO. for Retail Store Services Confusable with HOLLYWOOD CAFÉ for Restaurant Services?
• TTABlog Test: Three More Section 2(d) Refusals For Your Review
• On Remand, TTAB Again Dismisses I-FIT FLEX Opposition Due to Difference in Goods and Services
• TTABlog Test: Three Recent Section 2(d) Appeals For Your Consideration
• TTAB Reverses Section 2(d) Refusal of "CREATIVE HOME IDEAS" in view of Weakness of Two Cited Marks
• TTAB Sustains Nike's Confusion and Dilution Claims Against "DON'T JUST DO IT, GET IT DONE" for Clothing
• TTABlog Test: Which of These Three Recent 2(d) Refusals Was/Were Reversed?
• TTAB Orders Cancellation of "THE PLIMSOULS" Registration on Ownership and Likelihood of Confusion Grounds, Rejects Abandonment Claim
• Another Section 2(d) Reversal: USPTO Fails to Prove Cosmetics Are Related to Flatware and Other Household Goods
• BREAKING! TTAB Reverses Section 2(d) Refusals of FURY TIRES and FURY OFF-ROAD for Tires
• TTAB Affirms Section 2(d) Refusal of NUDE X for Cosmetics in view of NAKED X for Hair Care Products
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• CAFC Affirms TTAB: Opposer's Testimony Declaration Deemed Timely and Sufficient to Prove Priority
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTABlog Test: Is CROKO for Chocolates and Cookies Confusable with CROCO BERRY CRUNCH for Breakfast Cereals?

• TTABlog Test: Are Backpacks, Wallets, and Purses Related to Cake Under Section 2(d)? [Yes]
• TTABlog Test: Are Cigarettes and Cigars Related to Alcoholic Beverages Under Section 2(d)? [Yes]
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• Precedential No. 5: TTAB Finds SAGEFORTH Confusable With SAGE CENTRAL for Medical Information Services, Dismisses Section 18 Counterclaim Without Prejudice
• Summary Judgment Motion Backfires: C.D. Cal. Dismisses Kate Spade Appeal of TTAB Opposition Defeat
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?

Section 2(e)(1) - Mere Descriptiveness:

• "ECOPRENEUR" Merely Descriptive of Environmental Awareness Software and Services, Says TTAB
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• In a Split Decision, TTAB Reverses Mere Descriptiveness Refusal of ARBATA for Tea Despite the Word's Lithuanian Meaning
• TTAB Affirms Mere Descriptiveness Refusal of SPICED CHAI for Tobacco
• TTAB Sustains 2(e)(1) Opposition, Finding WOOLWAX Merely Descriptive of Lubricants

Section 2(e)(5) - Functionality:

• TTAB Says "No Dice" to Opposer's Claim of Functionality of Dice Box Configuration

Section 2(f) - Acquired Distinctiveness:

• TTAB Affirms Refusal to Register Muffler Configuration Due to Lack of Acquired Distinctiveness
• TTAB Affirms 2(e)(4) Surname Refusal of "BASQUIAT" for Alcoholic Beverages, Rejecting Transferred Distinctiveness Claim
• 4th Circuit Upholds District Court and TTAB: Timberland Boot Design Lacks Acquired Distinctiveness

Section 43(c) - Likelihood of Dilution:

• TTAB Sustains Nike's Confusion and Dilution Claims Against "DON'T JUST DO IT, GET IT DONE" for Clothing

Abandonment:

• TTAB Summarily Dismisses Monster Energy's Opposition to PREDATOR & Design: No Lack of Bona Fide Intent and No Abandonment

Failure-to-Function:

• "ASSHOLES LIVE FOREVER" Fails-to-Function as a Service Mark for Online Retail Store Services, Says TTAB
• "DREAM DECIDE DO" Fails to Function as a Trademark for Stationery and Printed Works, Says TTAB

Genericness:

• TTAB Deems STUDENT ALLY Generic for . . . . Guess What?
• TTAB Issues Correction of CINNAMON DONUT STOUT Opinion Regarding Genericness Burden of Proof
• TTAB Finds CINNAMON DONUT STOUT to be Generic for . . . Guess What?

Laches:

• TTAB Orders Cancellation of UBANK Registration for Banking Services, Rejects Laches Defense and Suggested Geographical Carve-Out

Lack of Bona Fide Intent:

• TTAB Summarily Dismisses Monster Energy's Opposition to PREDATOR & Design: No Lack of Bona Fide Intent and No Abandonment

Nonuse:

• TTAB Orders Cancellation of TEEN EARTH Registration Due to Nonuse With Intent Not to Resume Use

Ownership:

• TTAB Orders Cancellation of "THE PLIMSOULS" Registration on Ownership and Likelihood of Confusion Grounds, Rejects Abandonment Claim

Discovery/Evidence/Procedure:

• Fourth Circuit Rules that Bacardi May Challenge USPTO's Renewal of HAVANA CLUB Registration via Civil Action Under the APA
• Precedential No. 12: TTAB Rejects Sovereign Immunity Claim in Opposition to Virginia College System Marks
• Precedential No. 10: TTAB Denies Section 18 Petition to Restrict Beer Registration to Micro-Brewed Craft Beer
• Precedential No. 9: TTAB Denies HOLLYWOOD HOTEL Summary Judgment Motion, Finding No Claim Preclusion
• Precedential No. 8: TTAB Strikes "Trademark Bullying" Affirmative Defense in DOOR DABZ Opposition
• CAFC Affirms TTAB: Opposer's Testimony Declaration Deemed Timely and Sufficient to Prove Priority
• Precedential No. 7: TTAB Dismisses Cancellation Proceeding as Moot After Registrant Fails to File Section 8 Declaration
• Precedential No. 6: TTAB Denies Meta Platforms' Motion to Dismiss META Opposition on Timing and Standing Grounds

CAFC Decisions:

• CAFC Affirms TTAB Dismissal of Consolidated Cancellations Due to Lack of Entitlement to a Statutory Cause of Action
• Chestek PLLC Files Cert Petition for Supreme Court Review of CAFC Decision Upholding Domicile Address Requirement
• CAFC Remands I-FIT FLEX Opposition at Request of USPTO for Re-consideration of First and Second DuPont Factors
• CAFC Affirms TTAB: Opposer's Testimony Declaration Deemed Timely and Sufficient to Prove Priority
• CAFC Partially Remands "HERE COMES THE JUDGE" Appeal to TTAB for Production of AEO Materials

Recommended Reading:

• Recommended Reading: The Trademark Reporter, May-June 2024 Issue
• Five Amicus Briefs in Support of Chestek PLLC Petition for Writ of Certiorari
• Recommended Reading: Fromer and McKenna, "Amazon's Quiet Overhaul of the Trademark System"
• J. Michael Keyes:: "Just Do It" Doesn't Fly When Submitting Survey Evidence to the TTAB"
• Ted Davis: "Annual Review of U.S. Federal and State Case Law and T.T.A.B. Developments"
• The Trademark Reporter's "Annual Review of European Trademark Law"
• J. Michael Keyes: "Will Bad Spaniels' New 'Disclaimer' Keep VIP Products Out Of The Doghouse?"

Other:

• TTAB Posts June 2024 Hearing Schedule
• The Last Two Slides from My INTA Presentation>/a>
• "MEET THE BLOGGERS" Postponed Until 2025
• S.D. Ohio District Court, Despite Default, Stays Infringement Action in Favor of Pending TTAB Proceeding
• Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications
• Three Recent TTAB Inter Partes Decisions of Interest

Text © John L. Welch 2024.

TTABlog Quarterly Index: January - March 2024

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. Please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at wolfgreenfield.com.

Section 2(a) - False Suggestion of a Connection:

• Despite Applicant's Bad Intent, TTAB Dismisses Oppositions to EVSFOOD for Beverages

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is OTTO'S for Soda Pops Confusable With OTTO'S OATMEAL STOUT for Beer? [Yes]
• TTABlog Test: Are Pizza and Bakery Goods Related Under Section 2(d)? [Yes]
• TTABlog Test: Are These Two Stylized "X" Marks Confusable for Footwear? [Yes]
• TTABlog Test: Are Gummy Vitamins Related to Personal Care Products Under Section 2(d)? [yes]
• TTABlog Test: Is VEUVE OLIVIER for Sparkling Wines Confusable with VEUVE CLICQUOT for Champagne? [Yes]
• Despite Applicant's Bad Intent, TTAB Dismisses Oppositions to EVSFOOD for Beverages
• Stock Ticker Symbol HIG Confusable with H.I.G. for Financial Services, Says TTAB
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTABlog Test: Which of These Three Section 2(d) Oppositions Was/Were Dismissed?
• TTABlog Test: Which of These Three Recent 2(d) Appeals Was/Were Reversed?
• First DuPont Factor Brings TTAB Dismissal of Monster Energy's Opposition to LAIKABEAST & Design for Mugs and Plates
• TTABlog Test: Is TABLEAU for Wine Confusable with TABLEAU for Bar Services? [Yes]
• TTABlog Test: Are Nail Polish Strengtheners Related to Dietary Supplements? [Yes]
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTAB Sustains eBay's Section 2(d) Opposition to AFREBAY & Design for Advertising and Payment Processing Services
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTABlog Test: Is UNFORGETTABLE TRIPS Confusable With UNFORGETTABLE HONEYMOONS for Travel Agency Services? [No]
• TTABlog Test: Is CHILL for Hard Seltzer Confusable with CHILL for Beer? [Yes]
• TTABlog Test: Is CROSSFIRST BANK & Circle Design Confusable with Banc of California's RIng Design?
• In 2023, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• Precedential No. 1: TTAB Orders Cancellation of CAPTAIN CANNABIS Registration for Comic Books: Petitioner Proved Priority By Use Analogous to Trademark Use

Section 2(e)(1) - Mere Descriptiveness:

• Precedential No. 4: TTAB Finds "ZPILE" Merely Descriptive of Metal Sheet Piles
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Is MOTO CLUB INTERNATIONAL Merely Descriptive of Bumper Stickers and T-Shirts? [No]
• TTABlog Test: Is FOOTWARE Merely Descriptive of Footwear with Integrated Technology? [Yes]
• TTABlog Test: Is MENSTRUATION CRUSTACEON Merely Descriptive of Microwavable Heating Pads?
• TTABlog Test: Is "UNRIVALED LUXURY" Merely Descriptive of Cruise Ship Services?
• In 2023, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals?

Section 2(e)(1) - Deceptive Misdescriptiveness:

• CUESZ Is Deceptively Misdescriptive of Cue-less Fitness Training Services, Says TTAB [Yes]

Section 2(e)(4) - Primarily Merely a Surname:

• TTABlog Test: Is CANTU for Vehicle Tires Primarily Merely a Surname? [Yes]

Section 2(e)(5) - Functionality:

• TTAB Affirms Section 2(e)(5) Functionality Refusal of Holster Configuration

Section 2(f) - Acquired Distinctivenss:

• TTAB Affirms Refusal to Register Blue Bundle of Dental Floss Due to Lack of Acquired Distinctiveness
• Precedential No. 2: TTAB Affirms Refusal to Register Proposed Multi-Color Mark for Breakfast Cereals

Abandonment:

• TTAB Denies Bertini's Petition for Cancellation of APPLE Registration Due to Failure of Proof of Abandonment

Failure-to-Function/Specimen of Use:

• WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! Fails to Function as a Source Indicator for . . . Guess What?
• TTAB Affirms Refusal to Register Blue Bundle of Dental Floss Due to Lack of Acquired Distinctiveness
• Precedential No. 2: TTAB Affirms Refusal to Register Proposed Multi-Color Mark for Breakfast Cereals

Nonownership:

• In a Unanimous Decision, TTAB Dismisses SPLIT DECISION Opposition: Billy Stott Failed to Prove Ownership of the Band Name
• TTAB Orders Cancellation of FREEDOM PARTY Registration: Application Was Void Ab Initio Due to Nonownership

Nonuse:

• Finding MRS. COLORADO Use-less, TTAB Grants Petition for Cancellation
• Trade Name Use is not Trademark Use, Says TTAB
• Three Recent TTAB Oppositions Sustained on the Ground of Non-use

Discovery/Evidence/Procedure:

• TTAB Dismisses AMERICAN APPAREL Cancellation Petition: Claims Should Have Been Raised as Counterclaims in Pending Opposition
• TTAB Denies Request for Reconsideration of TORPEDO JUICE Cancellation Denial
• Despite Respondent's Bogus Legal Citations, TTAB Denies BRONX NATIVE Cancellation Petition on Contractual Estoppel Ground
• District Court Refuses to Enforce Subpoena for TTAB Case: Must Be Issued by the Court, Contrary to TBMP
• Precedential No. 3: TTAB Rules that a Cancellation Petition Filed During Grace Period is Mooted If Section 8 Declaration Is Not Filed
• Precedential No. 35: TTAB Grants Motion to Sever Permissive Counterclaim from Cancellation Proceeding

CAFC Decisions:

• CAFC Vacates and Remands BABIES' MAGIC TEA Cancellation Denial: TTAB Misapplied the DuPont Factors
• CAFC Affirms TTAB: USPTO'S Domicile Address Requirement for Applicants Was Not Improperly Promulgated
• At USPTO's Request, CAFC Re-designates as Precedential Its EVERYBODY VS RACISM Failure-to-Function Affirmance
• CAFC Slighlty Modifies Chutter Fraud Opinion Per USPTO Request

Recommended Reading:

• The Trademark Reporter's 2024 "Annual Review" of U.S. Trademark Cases
• Guest Article by Michael Hall: "A Few Recommendations for the Office and Those Practicing Before the Office"
• Recommended Reading: Michael P. Goodyear, "Queer Trademarks."
• J. Michael Keyes: "TTAB Goes "Bamm-Bamm" To Fruity Pebbles' Consumer Surveys"

Other:

• TTAB Posts April 2024 Hearing Schedule
• USPTO Proposes Trademark Fee Hike for FY 2025
• TTAB Posts March 2024 Hearing Schedule
• Another TTAB Footnote on Legal Citations Says USPQ Still Acceptable
• TTAB is Considering Dropping Citations to USPQ in favor of Westlaw
• TTAB Posts February 2024 Hearing Schedule
• In 2023, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals?
• In 2023, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?
• The Top Ten TTAB Decisions of 2023 (Part II)
• Precedential No. 35: TTAB Grants Motion to Sever Permissive Counterclaim from Cancellation Proceeding
• The TTAB Issued 35 Precedential Opinions in 2023

Text © John L. Welch 2024.