TTABlog Running Index: July 2025 to Date

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Section 2(a) - False Connection:

• US SPACE FORCE Applicant Files Certiorari Petition Seeking Reversal of Section 2(a) False Connection Refusal

Section 2(d) - Likelihood of Confusion:

• CAMPANARIO for Alcoholic Beverages Except Beer Confusable with BELL TOWER for Beer, Says TTAB
• MOSAIC Opposer Fails to Prove Relatedness Between Vocational Training and its Entertainment Website
• TTABlog Test: Is APPARITION Confusable with PHANTOM for Wine? [Yes]
• TTABlog Test? Is ELEMENTAL BEAUTY for Skincare Products Confusable with BEAUTY IS ELEMENTAL for Nutritional Supplements? [Yes]
• TTABlog Test: Are Clothing and Perfume Related Under Section 2(d)? [Yes]
• TTABlog Test: Are Clothing and Sunglasses Related Under Section 2(d)? [Yes]
• Differences in Goods/Services Yield Dismissal of MISS BUSINESS/MS. BUSINESS Section 2(d) Opposition
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• Rejecting Strategic Partners Argument, TTAB Affirms 2d Refusal of IN HARMONY WITH NATURE for On-line Sale of Personal Care Products
• TTAB Overturns 2d Refusal of "SIDECAR SLIDER BAR" for Restaurant and Bar Services Due to Extensive Third-Party Use of "SIDECAR"
• Precedential No. 7: Opposer Fails to Prove Distinctiveness of its Common Law Mark, Loses 2d Opposition on Priority
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTABlog Test: Is MAYELA Confusable with MAYA for Wine? [Yes]
• TTABlog Test: Is "LEFT RIGHT MIDDLE" Confusable with "LEFT CENTER RIGHT & Design" for Dice Games? [No]
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• DANKEES Confusable with YANKEES for Clothing, Says TTAB
• TTABlog Test: Is BUFFALO CITY for Alcoholic Beverages Confusable with BUFFALO TRACE for Bourbon? [Yes]

• On Remand, TTAB Sustains Cognac Institute's Section 2(d) Opposition to COLOGNE & COGNAC ENTERTAINMENT
• TTABlog Test: Is SEXTO for Alcoholic Beverages Confusable with THE SEXTON for Whiskey? [No]
• TTABlog Test: Are Mugs and Drinking Straw Cleaning Brushes Related Under Section 2(d)?
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• Proof of One Incident of Actual Confusion Factors Into TTAB's Granting of Petition to Cancel ZEROLIQUID Registration for Water Filters
• TTAB Affirms Five Refusals of SHYFT Marks for Beer and Flavored Malt Beverages: Confusable with SHIFT for Wine
• TTABlog Test: Is BREAK OUT THE BANDIDO Confusable with BANDIT for Overlapping Alcoholic Beverages?

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

• TTABlog Test: Is BATTLE ROYALE GOLF Merely Descriptive of Golf Games? [Yes]
• TTABlog Test: Is "GREEN COLLECTIVE" Merely Descriptive of Kitchen Utensils? [Yes]
• TTABlog Test: Is WORLDWIDECRYPTO Merely Descriptive of Cryptocurrency Exchange Services? [Yes]
• TTAB Upholds Mere Descriptiveness Refusal of "THE TRAVELING PAWTOGRAPHERS" for Pet Portrait Photography Services
• Federal Court (E.D. Va.) Reverses TTAB Decision: Apple's REALITY COMPOSER and REALITY CONVERTER Not Merely Descriptive of Developer Software
• TTABlog Test: Is TENNISOS Merely Descriptive of Robotic Systems Software Platforms? [Yes]
• TTABlog Test: Is GHOSTWRITTEN INC. Merely Descriptive of Publication of E-books and Blog Posts [No]
• TTABlog Test: Is NATIVE NATIONS CANNABIS Merely Descriptive of Hemp-Containing Cosmetics? [No]
• TTABlog Test: Three Recent Section 2(e)(1) Mere Descriptiveness Appeals - How Did They Turn Out?

Section 2(e)(2) - Geographical Descriptiveness:

• TTAB Reverses 2(e)(2) Geographical Descriptiveness Refusal of BUCKEYE CUSTOM E-BIKES

Section 2(f) - Acquired Distinctiveness:

• Despite 18 years of Sales, LED Configuration Lacks Acquired Distinctiveness, Says TTAB

Failure-to-Function:

• CAFC Vacates and Remands TTAB's Affirmance of F**K Failure-to-Function Refusal Due to Lack of Clarity
• BOSTON STRONG Fails to Function as a Service Mark for Volley Ball Entertainment, Says TTAB
• STROLL TO THE POLLS Fails to Function as a Trademark for Clothing, Says TTAB

Genericness:

• VETEMENTS Applicant Files Certiorari Petition Seeking Reversal of Genericness Refusal Under Doctrine of Foreign Equivalents

Lack of Bona Fide Intent:

• TTAB Sustains Disney's Opposition to OSWALD THE RABBIT for Movie and Play Production Due to Lack of Bona Fide Intent

Section 15(6) Nonuse Cancellation:

• DESPACITO Registrant Defeats Section 14(6) Claim by Proving Excusable Nonuse

Discovery/Evidence/Procedure:

• USPTO Trademark Alert: TTAB Changes Deadline for Answer in Board Proceeding to 60 Days
• TTAB Allows Amendment of Admission Responses but Grants Motion for Summary Judgment for Lack of Bona Fide Intent
• Oops! Opposer Fails to Prove Statutory Standing: Submitting Ordinary Copy of Registration Not Enough
• Precedential No. 6: TTAB Refuses to Add Affirmative Defense of Abandonment but Allows Addition as Counterclaims

CAFC Decisions:

• CAFC Vacates and Remands TTAB's Affirmance of F**K Failure-to-Function Refusal Due to Lack of Clarity
• CAFC Reverses TTAB: KIST is Confusable with SUNKIST for Soft Drinks
• CAFC Affirms TTAB: YUCATAN SHRIMP is Merely Descriptive of Prepared Shrimp Dish

Recommended Reading:

• Recommended Reading: The Trademark Reporter, July-August 2025 Issue

Other:

• Current Roster of TTAB Administrative Trademark Judges
• TTAB Posts September 2025 Hearing Schedule
• TTAB Posts August 2025 Hearing Schedule

Text © John L. Welch 2025.

TTABlog Quarterly Index: April - June 2025

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:

• USPTO Fails to Prove Section 2(a) False Connection of ENAIRA with the Central Bank of Nigeria
• CAFC Affirms TTAB: US SPACE FORCE Falsely Suggests a Connection with the United States

Section 2(d) - Likelihood of Confusion:

• WYHA? TTAB Finds VITAWHEY Confusable with VITAWAYS for Dietary and Nutritional Supplements
• TTABlog Test: Are Jewelry and Underwear Related Under Section 2(d)? [Yes]
• Prior Registration Under 13th DuPont Factor Fails to Save RAIN DANCER From Section 2(d) Refusal
• TTABlog Test: Are These Two Word-And-Design Marks Confusable for Keys and Key Blanks?
• TTAB Finds VORSPRUNG for Electric Vehicle Charging Stations Confusable with VORSPRUNG DURCH TEKNIK for Land Vehicles
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTABlog Test: Which of These Section 2(d) Refusals Was/Were Overturned on Appeal?
• Yankees Win! TTAB Sustains Section 2(d) Opposition to NYC NEW YORK CANNABIS & Design for Clothing
• TTABlog Test: Are Golf Simulator Services Related to Restaurant Services Under Section 2(d)? [Yes]
• Third-Party Registrations and Uses Yield TTAB Reversal of Section 2(d) Refusal
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• TTABlog Test: Are Leather Bags Related to Cosmetics Under Section 2(d)? [Yes]
TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Overturned on Appeal?
• TTAB Dismisses THOR Opposition, Finding Boats Unrelated to Recreational Vehicles: 34 Pairs of Third-Party Registrations Proved Decisive
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?

• TTABlog Test: Is MONSTER STRAW for Drinking Straws Confusable with MONSTER for Energy Drinks? [Yes]
• Professor J. Thomas McCarthy: "What is the 'Zone of Natural Expansion' Doctrine?"
• TTAB Partially Grants GUIDEON Cancellation Petition but Rejects Zone-of-Natural-Expansion Claim
• CAFC Affirms TTAB: CHICKEN SCRATCH for Beer is Confusable with CHICKEN SCRATCH for Restaurant Services
• 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?

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

• TTABlog Test: Is "USNA" Merely Descriptive of Cosmetics? [Yes]
• POWER CAPSULE and POWER TUNNEL Merely Descriptive of Energy Storage Containers, Says TTAB
• WYHA? TTAB Finds DOCRETENTION Merely Descriptive of Document Retention Software
• TTABlog Test: Is PIZZACCIA Merely Descriptive of Pizza and Cheese? [Yes]
• SWIPE LEFT Merely Descriptive of, and Fails-to-Function as a Source Indicator for, Matchmaking Software, Says TTAB
• TTABlog Test: Is BLADE Merely Descriptive of Hammers for Hammer Mill Machines? [Yes]
• TTABlog Test: Is UNITED STATES COAST GUARD Merely Descriptive of Employment Counseling and Recruiting Services? [Yes]
• TTABlog Test: Which of These Three Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals Was/Were Reversed?

Section 2(e)(5) - Functionality:

• TTAB Affirms Another Section 2(e)(5) Functionality Refusal: Beach Canopy

Abandonment/Nonuse/Specimen of Use:

• Providing Warranty Services With One's Own Goods is not a Recognizable Service Under the Trademark Act
• TTABlog Test: Is this Trademark Mutilation?
• TTABlog Test: Do You Recognize Trademark Mutilation When You See It?
• TTAB Grants HALFANIMAL Cancellation Petition on the Ground of Abandonment

Dilution:

• Two Dilution Claims: TTAB Finds "IVY LEAGUE" to be Famous, But Not "ASUS"

Failure-to-Function:

• TTAB Affirms Failure-to-Function Refusal of YOUR BEST CHOICE for Educational Services
• TTAB Affirms Failure-to-Function Refusal of Certification Badges for Completion of Skills Evaluation Courses
• SWIPE LEFT Merely Descriptive of, and Fails-to-Function as a Source Indicator for, Matchmaking Software, Says TTAB

Genericness:

• CAFC Affirms TTAB's VETEMENTS Genericness Ruling
• TTAB Finds SLEEP HEADPHONES to be Generic for . . . . Guess What?
• CAFC Affirms TTAB: Dark Green Color is Generic for Chloroprene Medical Examination Gloves
• TTABlog Test: Is HEELS Generic for Medicated Skin Care Cream?

Lack of Bona Fide Intent:

• Three Recent TTAB Inter Partes Decisions: a Mixed Bag of Defeats for the Plaintiffs
• Precedential No. 4: TTAB Sustains Opposition to CUADRA for Alcoholic Beverage Due to Lack of Bona Fide Intent

Pan-American Convention:

• E.D. Va. Affirms TTAB Decision Ordering Cancellation of two General Cigar Registrations for "COHIBA" Under Pan-Am Convention

Discovery/Evidence/Procedure:

• Three Recent TTAB Inter Partes Decisions: a Mixed Bag of Defeats for the Plaintiffs
• Precedential No. 5: TTAB Will Not Accept Incorporation-By-Reference of An Appellant's Prosecution Arguments
• CAFC Affirms TTAB: Mere Consumer Curtin Lacked Statutory Standing to Oppose RAPUNZEL for Dolls
• Petitioner Failed to Prove "Standing" for Cancellation of KINNEY SHOES Registration
• TTAB Dismisses LIVE RESIN Oppositions Under Rule 2.132(a) for Failure to Prosecute

CAFC Decisions:

• CAFC Reverses TTAB - Remands ECHO D’ANGÉLUS Opposition Due to Lack of Substantial Evidence Supporting Dismissal
• CAFC Affirms TTAB: Mere Consumer Curtin Lacked Statutory Standing to Oppose RAPUNZEL for Dolls
• CAFC Affirms TTAB's VETEMENTS Genericness Ruling
• CAFC Overturns TTAB Dismissal of SFERA Opposition, Remanding for Reconsideration of1st and 2nd DuPont Factors
• CAFC Affirms TTAB: US SPACE FORCE Falsely Suggests a Connection with the United States
• CAFC Affirms TTAB: Dark Green Color is Generic for Chloroprene Medical Examination Gloves
• CAFC Affirms TTAB: CHICKEN SCRATCH for Beer is Confusable with CHICKEN SCRATCH for Restaurant Services
• CAFC Upholds TTAB Dismissal of "fleur-de-lis" Cancellation Petition Due to Lack of Standing
• CAFC Affirms TTAB Dismissal of IVOTERS Opposition Due to Failure to Prove Acquired Distinctiveness (Priority) of Pleaded Marks

Recommended Reading:

• Recommended Reading: The Trademark Reporter, May-June 2025 Issue
• Ted Davis: "Federal Court and Trademark Trial and Appeal Board Review"
• The Trademark Reporter's 2025 "Annual Review of European Trademark Law"
• Professor J. Thomas McCarthy: "What is the 'Zone of Natural Expansion' Doctrine?"
• Recommended Reading: Dustin Marlan, "Servicing Trade Dress: Demystifying the Tertium Quid"

Other:

• Christina Hieber Named TTAB Acting Chief Administrative Trademark Judge
• Updated Roster of TTAB Administrative Trademark Judges
• TTAB Posts May 2025 Hearing Schedule
• Trademark Reporter: Call for Submissions for Theme Issue on Third-Party Liability and Related IP and Product Disputes
• TTAB Posts April 2025 Hearing Schedule

Text © John L. Welch 2025.

TTABlog Quarterly Index: January - March 2025

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 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.