TTABlog 2011 Precedential Decisions

The Trademark Trial and Appeal Board issued 37 precedential decisions in calendar 2011, a decrease of about 30% from the average annual output of 56 for the prior five-year period. The ratio of precedential decisions to total decisions, however, remained relatively constant according to my calculation: about 10 to 12 %. In other words, the total number of final decisions issued by the Board fell considerably last year, perhaps because so many Board employees were focusing on completion of the long-awaited revision to the Trademark Board Manual of Procedure. In any case, here is a compilation of the precedential decisions of 2011, categorized according to subject matter.


Section 2(a) - Immoral or Scandalous:

• Precedential No. 25: TTAB Finds Raised Middle Finger Design for Bottle to be Scandalous or Immoral, Affirms 2(a) Refusal

Section 2(d) - likelihood of confusion:

• Precedential No. 32: CLASSIC AMERICAN BLEND Confusingly Similar to CLASSIC CANADIAN for Tobacco, Says TTAB
• Precedential No. 27: TTAB Sustains 2(d) and Dilution Claims in MOTOWN Challenge to MOTOWN METAL for Toy Vehicles
• Precedential No. 24: Fame of TOTAL Mark Yields Near Total Victory in General Mills 2(d) Opposition to Fage Yogurt Applications
• Precedential No. 23: Sophistication of Buyers Leads to TTAB Dismissal of CALYPSO Section 2(d) Opposition and Cancellation Proceeding
• Precedential No. 22: TTAB Renders Split Decision in CURE4KIDS 2(d) Oppositions
• Precedential No. 19: "JUST JESU IT" Likely to Cause Confusion With and Dilute Nike's "JUST DO IT," Says TTAB
• Precedential No. 13: In Issue-Packed 2(d) Decision, TTAB Cancels "LA INDITA MICHOACANA" Registration for Ice Cream
• Precedential No. 9: Finding Wine and Beer Related, TTAB Affirms 2(d) Refusal of "HB" over "HB & Crown Design"
• Precedential No. 7: ZU ELEMENTS Not Confusingly Similar to ELEMENT for Overlapping Goods, Says TTAB
• Precedential No. 6: With Proof of "Something More" Lacking, TTAB Finds Barbecue Sauce and Catering Services Not Related

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

• Precedential No. 31: TTAB Affirms Mere Descriptiveness Refusal of ".MUSIC" for Domain-Related Services

Section 2(e)(3) - Primarily geographically deceptively misdescriptive:

• Precedential No. 3: Finding KUBA KUBA Primarily Geographically Deceptively Misdescriptive for Cigars, TTAB Affirms 2(e)(3) Refusal

Section 2(f) - acquired distinctiveness:

• Precedential No. 4: TTAB Finds That "NKJV" Has Acquired Distinctiveness for Bibles

Concurrent Use:

• Precedential No. 34: TTAB Approves Geographic Restriction in Concurrent Use Proceeding Despite Overlap of Parties' Territories

Dilution:

• Precedential No. 33: TTAB Rejects ROLEX Dilution Claim for Failure to Prove Likely Impairment of the Distinctiveness of the Mark
• Precedential No. 27: TTAB Sustains 2(d) and Dilution Claims in MOTOWN Challenge to MOTOWN METAL for Toy Vehicles
• Precedential No. 19: "JUST JESU IT" Likely to Cause Confusion With and Dilute Nike's "JUST DO IT," Says TTAB

Failure to Function:

• Precedential No. 16: TTAB Finds That Orange-and-Green Color Combination Fails to Function as a Trademark For Newport Cigarettes

Functionality:

• Precedential No. 2: TTAB Cancels Supplemental Registration for Shape of Culvert Unit Due To Functionality
• Precedential No. 1: TTAB Affirms 2(e)(5) Functionality Refusal of Motorcycle Stand Design

Genericness:

• Precedential No. 29: TTAB Affirms Genericness Refusal of "Person2Person Payment" For Electronic Funds Transfers
• Precedential No. 28: TTAB Reverses Genericness Refusal of COUNTRY MUSIC ASSOCIATION for Country Music Association Services

Goods in Trade:

• Precedential No. 35: Finding Applicant's Medical Reports not to be Goods In Trade, TTAB Affirms Refusal to Register

Lack of bona fide intent:

• Precedential No. 33: TTAB Rejects ROLEX Dilution Claim for Failure to Prove Likely Impairment of the Distinctiveness of the Mark
• Precedential No. 15: Finding Lack of Bona Fide Intent, TTAB Sustains MOSKONISI Opposition

Res judicata:

• Precedential No. 37: TTAB Applies Res Judicata to 2(f) Issue, But Not Genericness, in AMERICAN INFRASTRUCTURE Oppositions
• Precedential No. 14: Applying Collateral Estoppel to the Ownership Issue, TTAB Enters Summary Judgment in "WINNIE THE POOH" Trademark Dispute
• Precedential No. 8: Applying Claim Preclusion, TTAB Dismisses Two of Three "DVD & Design" Cancellation Petitions

Single Creative Work:

• Precedential No. 36: TTAB Enters Summary Judgment Cancelling Trademark Registration for the Title of a Single Creative Work

TTAB Discovery/Evidence/Procedure:

• Precedential No. 30: TTAB Refuses to Compel Sweeping E-Discovery
• Precedential No. 26: TTAB Grants Motion to Exclude 26 Belatedly-Identified Trial Witnesses
• Precedential No. 21: Two Cuban Corporations Have Standing to Bring Section 2(e)(3) Cancellation Petition
• Precedential No. 20: Madrid Opposer Limited to Single Ground Designated in ESTTA Form
• Precedential No. 18: TTAB Denies Motion to Re-Open Testimony Period, Dismisses 2(d) Opposition for Shortage of Proof
• Precedential No. 17: TTAB Suspends NFL's "WHO DAT" Opposition In View of Pending Lawsuit
• Precedential No. 13: In Issue-Packed 2(d) Decision, TTAB Cancels "LA INDITA MICHOACANA" Registration for Ice Cream
• Precedential No. 12: TTAB Issues Pre-Trial Order in New REDSKINS Disparagement Case
• Precedential No. 11: TTAB Limits Madrid Opposition to Goods Listed on ESTTA Form, But Opposer Wins Anyway
• Precedential No. 10: TTAB Okays Opposer's Pre-Trial Disclosures, Denies Motion to Strike Trial Testimony
• Precedential No. 5: Prompt Supplementation of Expert Disclosure Defeats Motion to Exclude Testimony, Says TTAB

Text ©John L. Welch 2011-12.