TTAB 2008 Precedential Decisions

Here is a compilation of this year's precedential decisions, categorized according to subject matter.


Section 2(a) - Disparagement:

• Precedential No. 52: TTAB Affirms 2(a) Disparagement Refusal of "HEEB" for Clothing and Entertainment Services
• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Section 2(a) - Suggesting a False Connection:

• Precedential No. 42: TTAB Reverses 2(a) False Connection Refusal of "MARIA CALLAS" for Jewelry
• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging
• Precedential No. 23: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing

Section 2(a) - Scandalous:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Section 2(d) - Likelihood of Confusion:

• Precedential No. 46: TTAB Affirms 2(d) Refusals of "RSI" Design Mark for Ink Jet Printers
• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging
• Precedential No. 23: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing
• Precedential No. 40: "SAM EDELMAN" Confusingly Similar to "EDELMAN" for Handbags, Says TTAB
• Precedential No. 37: Judge Rogers Beams as Section 2(d) Case is Tried Without Discovery
• Precedential No. 21: TTAB Finds "LA PEREGRINA" and "THE PILGRIM" Confusingly Similar for Jewelry Per Doctrine of Foreign Equivalents
• Precedential No. 18: TTAB Dismisses "SPORTSMAN'S WAREHOUSE" Cancellation Petition, Finding No Likelihood of Confusion and No Fraud
• Precedential No. 17: Finding the Marks Entirely Different, TTAB Grants Judgment on the Pleadings in 2(d) Opposition
• Precedential No. 16: TTAB Sustains Opposition to ITU Application, Applicant Lacked Bona Fide Intent
• Precedential No. 10: TTAB Sustains "VITAMILK" 2(d) Opposition, Again Rejects a Morehouse Defense

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

• Precedential No. 54: "DEC" Merely Descriptive of Nuclear Decay Batteries, Says TTAB
• Precedential No. 47: "BOBBLE POPS" Merely Descriptive of Candy, Says TTAB, Colorfully
• Precedential No. 32: Double Entendre Argument Remedies "THE FARMACY" 2(e)(1) Refusal, Says TTAB
• Precedential No. 29: TTAB Affirms 2(e)(1) Refusal of Japanese Term Meaning "Walking" for Footwear
• Precedential No. 1: TTAB Reverses Mere Descriptiveness Refusal of "SUGAR No. 11" For Futures Exchange Services and Finds Specimen of Use Acceptable

Section 2(e)(2) - Primarily Geographically Descriptive:

• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:

• Precedential No. 44: TTAB Sustains 2(e)(3) Opposition to "HAVANA CLUB" for Cigars Made From Cuban Seed Tobacco
• Precedential No. 12: TTAB Sustains 2(e)(3) Opposition to "GUANTANAMERA" for Non-Cuban Cigars, Folk Song Notwithstanding
• Precedential No. 6: TTAB Clarifies Doctrine of Equivalents, Affirms 2(e)(3) Refusal of "MOSKOVSKAYA" for Vodka
• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 8: Applicant Fails to Prove Acquired Distinctiveness for Sunglass Frame Product Design

Abandonment:

• Precedential No. 22: Finding Old "LASALLE" Automobile Mark Abandoned, TTAB Dismisses General Motors' Opposition for Lack of Priority

Failure to Function:

• Precedential No. 31: TTAB Reviews Specimen Brochure, Affirms Failure-to-Function Refusal
• Precedential No. 26: Specimens of Use Display Web Address, Not Service Mark Use
• Precedential No. 20: TTAB Finds Stitching Design on Jean Pockets Merely Ornamental

Fraud:

• Precedential No. 35: Despite Amendment of Application, TTAB Sustains Fraud Claim in "GRAND CANYON WEST" Opposition
• Precedential No. 27: Correction of Error in Goods Prior to Publication Creates Rebuttable Presumption of No Fraud, Says TTAB
• Precedential No. 18: TTAB Dismisses "SPORTSMAN'S WAREHOUSE" Cancellation Petition, Finding No Likelihood of Confusion and No Fraud
• Precedential No. 13: FRAUD! TTAB Cancels Four Registrations on Summary Judgment: Attorney Signed False Statements of Use

Genericness:

• Precedential No. 24: TTAB Affirms Genericness Refusal of "BOND-OST" for Cheese
• Precedential No. 15: TTAB Again Affirms Genericness Refusal of "HOTELS.COM" for ... Guess What?
• Precedential No. 11: TTAB Finds "REDUCER" Generic for Flow Meters

Lack of Bona Fide Intent:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging
• Precedential No. 16: TTAB Sustains Opposition to ITU Application, Applicant Lacked Bona Fide Intent

Ownership:

• Precedential No. 53: TTAB Decides Ownership Dispute over "JOYCE" for Dance Theater and Charitable Services

Pan American Convention:

• Precedential No. 44: TTAB Sustains 2(e)(3) Opposition to "HAVANA CLUB" for Cigars Made From Cuban Seed Tobacco

Phantom Mark:

• Precedential No. 25: TTAB Affirms Refusal of Mark Having a Phantom Element

Procedural Issues:

• Precedential No. 55: TTAB Denies Cross-Motions for Summary Judgment Because Briefs Exceeded Page Limit
• Precedential No. 51: TTAB Dismisses Morehouse and Laches Defenses, Denies Summary Judgment in 2(d) Opposition
• Precedential No. 50: TTAB Grants Motion to Compel Proper Initial Disclosures
• Precedential No. 49: Failure to Serve Notices of Opposition Leads to Swift TTAB Dismissal
• Precedential No. 48: TTAB Resolves Procedural Spat Over Discovery Conference
• Precedential No. 45: TTAB Denies Petitioner's Motion to Amend, Grants Respondent's Motion for Judgment on the Pleadings
• Precedential No. 43: Absent TTAB Order, No Sanction for Failure to Provide Initial Disclosures
• Precedential No. 39: Evidentiary Errors Lead to Dismissal of 2(d) Opposition for Failure to Prove Priority
• Precedential No. 38: TTAB Dismisses Opposition as Untimely - Electronic Payment Incomplete and Faxed Filing Ineffective
• Precedential No. 34: TTAB Okays Stipulation Between Red Sox and "RAD SEX" Applicant to Waive Initial Disclosures
• Precedential No. 17: Finding the Marks Entirely Different, TTAB Grants Judgment on the Pleadings in 2(d) Opposition
• Precedential No. 9: TTAB Issues Non-Ultimate Sanctions for Failure To Comply With Board Order Compelling Document Production
• Precedential No. 7: TTAB Dismisses 2(d) and Dilution Opposition for Lack of Evidence and Inadequate Pleading
• Precedential No. 5: TTAB Dismisses Opposition for Opposer's Failure to Serve Prior to Filing
• Precedential No. 3: NFL Thrown for a Loss as TTAB Denies Request to Extend Discovery
• Precedential No. 2: TTAB Issues Sanctions For Discovery Abuses

Res Judicata/Collateral Estoppel:

• Precedential No. 19: TTAB Grants Summary Judgment Against Applicant Enjoined From Use and Registration of His Mark

Rule 2.61(b) - PTO Demand for Information:

• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

Single Artistic Work:

• Precedential No. 33: TTAB Affirms Refusal of "FREEDOM STONE" for Cornerstones as Title of a Single Work

Specimens of Use/Drawing:

• Precedential No. 36: Finding Specimen Doesn't Match Drawing, TTAB Affirms Refusal of "UPPER 90" for Clothing
• Precedential No. 33: TTAB Affirms Refusal of "FREEDOM STONE" for Cornerstones as Title of a Single Work
• Precedential No. 28: TTAB Finds Drawings OK, But Packing Label Specimen Fails to Show Service Mark Use
• Precedential No. 14: TTAB Affirms Three Refusals: Website Specimens Fail to Show Trademark Use
• Precedential No. 1: TTAB Reverses Mere Descriptiveness Refusal of "SUGAR No. 11" For Futures Exchange Services and Finds Specimen of Use Acceptable

Use in Commerce:

• Precedential No. 30: TTAB Grants Summary Judgment in Opposition Because Applicant Was Contractually Prohibited From Using Subject Mark