TTABlog Quarterly Index: October-December 2017

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Section 2(d) - Likelihood of Confusion:

• TTAB Test: Are Frozen Pizza and Restaurant Services Related For Section 2(d) Purposes? [Yes]
• Precedential No. 36: Claim of Conjoint Use Not Pleaded and Not Tried by Consent, Says TTAB
• TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?
• THE SAISON D'HERETIQUE Confusable with HERETIC BREWING COMPANY for Beer, Says TTAB
• TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?
• TTAB Test: Is FALL HARVEST Confusable With AUTUMN HARVEST BLEND For Coffee? [Yes]
• Precedential No. 34: TTAB Orders Cancellation of TAO VODKA Registration for Nonuse and Likelihood of Confusion With TAO Restaurants
• WYHA? CROME Confusable with CHROME GIRL for Hair Care Products, Says TTAB
• TTAB Finds "CREPES BONAPARTE" for Food Trucks Confusable With CAFÉ BONAPARTE & Design for Restaurants
• Finding Bicycles and Clothing Related, TTAB Sustains KÜHL Opposition to KU:L
• PARATI Confusable With PYRAT For Spirits, Says TTAB
• TTAB Test: Are These Two Word + Design Marks Confusable for Beer? [Yes]
• WYHA? "GOLF WITH PURPOSE" Confusable With "GOLF WITH A PURPOSE" For Golf Stuff, Says TTAB
• TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?
• TTAB Test: Is CAREBOARD Confusable with ECAREBOARD for Patient Information Systems? [Yes]
• TTAB Test: Are Distilled Spirits and Brewpub Services Related for Section 2(d) Purposes? [No]
• TTAB Orders Cancellation of AMIGOS FOODS Registration, Third-Party Evidence Fails
• TTAB Test: Is "SLAY OR PREY" Confusable With "PRAY THEN SLAY" for T-Shirts? [No}
• TTAB Test: Is SINFUL ZINFANDEL Confusable with ZINFUL for Wine? [Yes]
• TTAB Rejects Another Consent Agreement, Affirms Section 2(d) Refusal of "8-Bit Aleworks" for Beer
• TTAB Test: Are Department Store Services Related to Computer Store Services? [Yes]
• TTAB Dismisses 2(d) Opposition, Finding Chevron Marks Dissimilar for Footwear

• Finding Sound Equipment Related to Repair and Retail Services, TTAB Affirms SOUNDSCAPE Refusal
• TTAB Finds SUNBELT ORGANIC Confusable With SUNBELT and SUNBELT BAKERY For Some Food Items
• GREATER OMAHA Not Confusable With OMAHA STEAKS for Meat, Says TTAB
• TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?
• Precedential No. 31: TTAB Dismisses Section 2(d) Claim Due to Lack of Use of Opposer's Foreign Mark in USA

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

• TTAB Test: Is "BREATHLESS" Merely Descriptive of Idiopathic Pulmonary Fibrosis Information Services? [No]
• TTAB TEST: Is "UNI/FORM" Merely Descriptive of Clothing?
• TTAB Test: Is TRAILERSHARING Merely Desctiptive of Trailer Rental Services? [Yes]
• TTAB Test: Is CRAWLER Merely Descriptive of SUV Suspension Parts? [No]
• TTAB Test: Is BAZAAR HOME a Double Entendre, or Merely Descriptive of Retail Furniture Services?
• TTAB Test: Is "PERSON" Merely Descriptive of Wearable Electronic Devices? [No]
• APPARATUS Not Generic But Merely Descriptive of Lighting Fixtures and Related 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

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 35: TTAB Sustains Opposition to Honda Motor Configuration - Functional and, Alternatively, Lacks Aquired Distinctiveness
• TTAB Rejects 5-Year Acquired Distinctiveness Claim Due To Lack of Continuous Use

Misuse of Registration Symbol

• Virginia Tech's "HOKIE" Service Mark Application Survives Challenge From U. Va. Grad

Genericness:

• CAFC Affirms TTAB: MAGNESITA is Generic for .... Guess What?
• APPARATUS Not Generic But Merely Descriptive of Lighting Fixtures and Related Services

Nonuse/Abandonment/Specimen of Use/Failure to Function:

• DESIGNED WITH YOU IN MIND Fails to Function As a Service Mark, Says TTAB
• TTAB Affirms Refusal of OLANA for Jewelry and Clothing: Drawing Doesn't Match Specimen
• Precedential No. 34: TTAB Orders Cancellation of TAO VODKA Registration for Nonuse and Likelihood of Confusion With TAO Restaurants
• TAB Orders Cancellation of CROC-TAIL Registration: Nonuse and Abandonment

Discovery/Evidence/Procedure::

• SDNY Applies B&B Hardware Issue Preclusion Based on 2004 TTAB Decision
• E.D. Va Orders BOOKING.COM to pay USPTO $76k in Expenses
• USPTO Proposes to Remove Certain Rules Governing Trademark Interference Proceedings
• 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

CAFC Decisions:

• CAFC Rules That the Section 2(a) Bar For Immoral or Scandalous Marks is Unconstitutional
• CAFC Affirms TTAB: MAGNESITA is Generic for .... Guess What?
• CAFC Affirms TTAB's Section 2(d) Refusal of SENSI for Diapers: Extrinsic Evidence of Meaning Irrelevant

Recommended Reading:

• Recommended Reading: The Trademark Reporter Fashion Issue
• Profs. Beebe and Hemphill: "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?"

Other:

• USPTO Seeks Candidates for Deputy Chief Judge at the TTAB
• Wolf Greenfield Seeks Applicants for Trademark/Copyright Associate Position in Boston or New York City
• TTAB Posts December 2017 Hearing Schedule
• TTABlog Reaches its 13th Anniversary!
• TTAB Posts November 2017 Hearing Schedule
• TTABlog Road Trip: AIPLA Annual Meeting, Washington, D.C., October 21st
• TTAB Posts October 2017 Hearing Schedule

Text Copyright John L. Welch 2017.