2017 TTAB Precedential Opinions

The TTAB issued thirty-nine (39) precedential opinions in calendar 2017. Among the more interesting ones, the Board considered the registrability of the color yellow for a cereal box, again deemed PRETZEL CRISPS generic for pretzel crackers, and affirmed two refusal under the flag/insignia prohibition of Section 2(b). It rejected three product configuration marks due to functionality under Section 2(e)(5), continued to downplay the rareness factor in Section 2(e)(4) surname refusals, and dealt with two phantom mark refusals, affirming one and reversing one.

Section 2(a) - Deceptiveness:

• Precedential No. 8: TTAB Finds KLEER ADHESIVES Deceptive, But Not KLEER MOULDINGS and KLEER TRIMBOARD

Section 2(b) - Flag, Coat of Arms, or Other Insignia:

• Precedential No. 7: TTAB Affirms Section 2(b) Refusal of Mark Simulating the Prince of Wales Emblem
• Precedential No. 3 = TTAB Test: Does this Mark Include a Simulation of the Swiss Flag? [Yes]

Section 2(d) - Likelihood of Confusion:

• Precedential No. 36: Claim of Conjoint Use Not Pleaded and Not Tried by Consent, Says TTAB
• Precedential No. 34: TTAB Orders Cancellation of TAO VODKA Registration for Nonuse and Likelihood of Confusion With TAO Restaurants
• Precedential No. 26: Licensee Cannot Establish Priority Based On Licensor's Use
• Precedential No. 11: TTAB Affirms Section 2(d) Refusal of Hockey Logo, Finding No Consent to Registration, 13th Factor Outweighed

Section 2(e)(1) - Mere Descriptiveness

• Precedential No. 23: MEDICAL EXTRUSION TECHNOLOGIES Lacks Aquired Distinctiveness, Says TTAB
• Precedential No. 15: LITTLE MERMAID Merely Descriptive of Dolls, Says TTAB
• Precedential No. 14: TTAB Affirms Mere Descriptiveness Refusal of WELL LIVING LAB for Research Services
• Precedential No. 4: Despite Amendment of Drawing to "SharpIN," TTAB Treats Mark as Standard Characters and Affirms Descriptiveness Refusal

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

• Precedential No. 28: TTAB Affirms Surname Refusal of OLIN, Rejects Transfer of Acquired Distinctiveness under 2(f)
• Precedential No. 16: Rejecting Equivalents Argument, TTAB Affirms Surname Refusal of WEISS WATCH COMPANY
• Precedential No. 10: TTAB Sustains Surname Claim Against AZEKA'S RIBS, But Proceeds to Find Opposer's Mark Abandoned
• Precedential No. 9: TTAB Affirms Surname Refusal of BELUSHI'S for Travel and Restaurant Services

Section 2(e)(5) - Functionality::

• Precedential No. 35: TTAB Sustains Opposition to Honda Motor Configuration - Functional and, Alternatively, Lacks Aquired Distinctiveness
• Precedential No. 33: TTAB Orders Cancellation of Three Registrations for Bag Closure Configuration Marks Due to Section 2(e)(5) Functionality
• Precedential No. 19: TTAB Affirms Section 2(e)(5) Functionality Refusal of Wind Turbine Configuration

Section 2(f): Acquired Distinctiveness:

• Precedential No. 35: TTAB Sustains Opposition to Honda Motor Configuration - Functional and, Alternatively, Lacks Aquired Distinctiveness
• Precedential No. 28: TTAB Affirms Surname Refusal of OLIN, Rejects Transfer of Acquired Distinctiveness under 2(f)

Abandonment/Nonuse:

• Precedential No. 34: TTAB Orders Cancellation of TAO VODKA Registration for Nonuse and Likelihood of Confusion With TAO Restaurants
• Precedential No. 18: Finding Abandonment of Opposer's Mark, TTAB Dismisses ARMBRUSTER STAGEWAY Opposition

Application Requirements/Lawful Use/Specimen of Use:

• Precedential No. 24: Yellow Cheerios Box Lacks Acquired Distinctiveness, Fails to Function as a Trademark
• Precedential No. 17: TTAB Affirms Refusal of PHARMACANN for Medical Marijuana Services Due to Illegality under CSA
• Precedential No. 13: TTAB Reverses Mutilation and Phantom Mark Refusals of U. Miami Ibis Design
• Precedential No. 6: Applicant Complied With Rule 2.61(b) Request for Information, Says TTAB
• Precedential No. 4: Despite Amendment of Drawing to "SharpIN," TTAB Treats Mark as Standard Characters and Affirms Descriptiveness Refusal
• Precedential No. 2: TTAB Affirms Rejection of Specimen of Use for CONEY ISLAND BOARDWALK CUSTARD

Certification Mark Control:

• Precedential No. 1: TTAB Dismisses Opposition to TEQUILA Certification Mark Application

Failure to Function/Phantom Mark:

• Precedential No. 22: Breast Cast Design Fails to Function as a Mark for Cancer Awareness Services
• Precedential No. 13: TTAB Reverses Mutilation and Phantom Mark Refusals of U. Miami Ibis Design
• Precedential No. 12: Return of the Phantom Mark Refusal

Fraud:

• Precedential No. 1: TTAB Dismisses Opposition to TEQUILA Certification Mark Application

Genericness:

• Precedential No. 25: On Remand, TTAB Again Finds PRETZEL CRISPS Generic For Pretzel Crackers
• Precedential No. 21: TTAB Finds "COFFEE FLOUR" Generic for ...... Guess What?
• Precedential No. 1: TTAB Dismisses Opposition to TEQUILA Certification Mark Application

Discovery/Evidence/Procedure:

• Precedential No. 40): TTAB Strikes Evidence of Common Law Rights Not Listed By Madrid Opposer On ESTTA Cover Sheet
• Precedential No. 39: TTAB Again Cuts Some Procedural Slack Due to 2017 Rule Changes
• Precedential No. 38: TTAB Excuses Failure to Plead Compulsory Counterclaim in Answer
  
• Precedential No. 37: Applying Revised Rules, TTAB Denies Motion for Judgment on the Pleadings as Untimely
• Precedential No. 32: TTAB Defers Decision on Motion to Strike Testimony Declaration
• Precedential No. 31: TTAB Dismisses Section 2(d) Claim Due to Lack of Use of Opposer's Foreign Mark in USA
• Precedential No. 30: Party that Cross-Examines Testimony Declarant Bears The Expenses
• Precedential No. 29: TTAB Refuses to Disqualify Itself in TRUMP-Related Cancellation Proceeding
• Precedential No. 27: TTAB Suspends LATEA Opposition In View of Arbitration Clause
• Precedential No. 20: TTAB Forgives Party for Untimeliness of Discovery Requests Under New Board Rules
• Precedential No. 10: TTAB Sustains Surname Claim Against AZEKA'S RIBS, But Proceeds to Find Opposer's Mark Abandoned
• Precedential No. 5: TTAB Rejects Untimely, Fee-less Paper Opposition Filed Sans Petition to Director

Text Copyright John L. Welch 2017-2018.