2018 Precedential Opinions

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Section 2(d) - Likelihood of Confusion:

• Precedential No. 32: Giving "Great Weight" to Two Consent Agreements, TTAB Reverses Section 2(d) Refusal of AMERICAN CONSTELLATION for Cruise Ship Services
• Precedential No. 28: TTAB Test - Is I'M SMOKING HOT Confusable With SMOKIN' HOT SHOW TIME for Cosmetics?
• Precedential No. 27: TTAB Affirms 2(d) Refusal of #WILLPOWER - Hashtag Has No Trademark Significance
• Precedential No. 25: "I LOVE YOU" Fails to Function as a Trademark for Bracelets AND is Confusable with "I LUV U" for Jewelry, Says TTAB
• Precedential No. 20: Prior Registration of 5IVE RESTAURANT Fails to Shield 5IVE STEAKHOUSE From Section 2(d) Refusal
• Precedential No. 17: TTAB Grants Section 2(d) Petition for Cancellation of KEMI OYL Registration; Laches Defense Fails
• Precedential No. 10: LAROQUE & Design Confusable With LAROQUE for French Wines From Different Regions
• Precedential No. 5: Opposer Fails to Prove Priority, Apple's IPAD Mark Survives Opposition
• Precedential No. 3: TTAB Refuses to Limit Goods in Cited Software Registration, Affirms Section 2(d) Refusal

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

• Precedential No. 31: Applying Equivalents, TTAB Finds Greek Word "GÁMOS" Merely Descriptive of Jewelry

Section 2(e)(5) - Functionality:

• Precedential No. 12: TTAB Rejects Functionality Claim But Finds Truck Light Configuration Lacks Acquired Distinctiveness

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 9: TTAB Finds "SERIAL" Generic for Podcasts, But Logo Forms Registrable With Disclaimer

• Precedential No. 36: Applying CAFC's Converse Factors, TTAB Finds SNOBALLS Concession Trailer Configuration Lacks Acquired Distinctiveness
• Precedential No. 14: TTAB Rules that a Phrase May Have Acquired Distinctiveness Even Though It Contains a Generic Term

Abandonment:

• Precedential No. 16: TTAB Orders Cancellation of Four "GIDGET" Registrations Due to Abandonment

Color Marks:

• Precedential No. 29: Multiple Colors Applied to Product Packaging Cannot Be Inherently Distinctive, Says TTAB

Dilution:

• Precedential No. 40: TIVOTAPE and TIVOBAR for Lighting Fixtures Dilute Famous TIVO Mark, Says TTAB

Genericness:

• Precedential No. 9: TTAB Finds "SERIAL" Generic for Podcasts, But Logo Forms Registrable With Disclaimer
• Precedential No. 6: TTAB FInds MECHANICALLY FLOOR-MALTED Generic for ... Guess What?

Laches:

• Precedential No. 17: TTAB Grants Section 2(d) Petition for Cancellation of KEMI OYL Registration; Laches Defense Fails
• Precedential No. 15: Laches Dooms Petition to Cancel TRAILERTRADERS.COM Supplemental Registration

Lawful Use:

• Precedential No. 39: TTAB Denies Concurrent Use Registrations For Wine Because Applicant Failed to Prove Prior Lawful Use in Commerce

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

• Precedential No. 25: "I LOVE YOU" Fails to Function as a Trademark for Bracelets AND is Confusable with "I LUV U" for Jewelry, Says TTAB
• Precedential No. 4: TTAB Reverses Rejection of Downloadable Software Specimen Showing Mark in On-Screen Display
• Precedential No. 1: TTAB Okays Service Mark Specimen of Use Thanks to Applicant's Clarifying Information

Ownership:

• Precedential No. 23: TTAB Sidesteps Court Order to Transfer Pending Application, Provides Alternatives

Phantom Mark:

• Precedential No. 26: TTAB Affirms Phantom Mark Refusal of "SHAPE XXXX" for Educational Journals

Discovery/Evidence/Procedure::

• Precedential No. 38: TTAB Finds Allegations of Abandonment Legally Sufficient Under Iqbal/Twombly
• Precedential No. 37: Dismissing "NAKED" Condoms Cancellation, TTAB Finds Lack of Standing Due To Contractual Estoppel
• Precedential No. 35: TTAB Enters Judgment as a Sanction for Discovery Abuses and Egregious Conduct
• Precedential No. 34: In "Expedited Cancellation" Proceeding, TTAB Denies Petition to Cancel MYST Registration for Musical Entertainment Services
• Precedential No. 33: TTAB Denies Reconsideration of Untimely Motion to Compel Filed on Deadline Day for Pre-Trial Disclosures
• Precedential No. 30: Rejecting Opposer's Over-Counting of Interrogatories, TTAB Grants Motion to Compel Responses
• Precedential No. 24: Finding Good Cause (Puerto Rico Hurricane), TTAB Extends Discovery Period to Allow Written Discovery
• Precedential No. 23: TTAB Sidesteps Court Order to Transfer Pending Application, Provides Alternatives
• Precedential No. 22: Failure to Plead Compulsory Counterclaim Leads to Claim Preclusion in Second Proceeding
• Precedential No. 21: TTAB Extends Safer Requirements to Internet Evidence Submitted by Applicants
• Precedential No. 19: TTAB Rules that Evidence From A Website No Longer Active Is Not Probative
• Precedential No. 18: TTAB Extends Safer Rule to Internet Evidence During Ex Parte Prosecution
• Precedential No. 13: TTAB Denies Motion to Strike Pre-Trial Disclosures of Authenticating Witnesses
• Precedential No. 11: Despite Court Non-Infringement Ruling, TTAB Affirms 2(d) Refusal of MOAB for Automobiles and Parts
• Precedential No. 8: Webpages Alone Insufficient to Prove Priority, Says TTAB
• Precedential No. 7: TTAB Denies Motion to Strike Disclosure Notice and Preclude Expert Testimony
• Precedential No. 2: TTAB Again Lets Party off the Hook Based on January 2017 Rule Changes

Text Copyright John L. Welch 2018-19.