TTABlog Quarterly Index: January - April 2010

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Section 2(a) - disparagement:

• Precedential No. 9: Divided TTAB Panel Affirms 2(a) Disparagement Refusal of "KHORAN" for Wines

Section 2(d) - likelihood of confusion:

• Test Your TTAB Judge-Ability: Are "THE CLOSET GUY" and "THE CLOSET LADY" Confusingly Similar for Closet-Related Services?
• TTAB Reverses 2(d) Refusal of "FLEXILOGIC" for Noise Reduction Software over Same Mark for Software Design Services
• Glitch-Filled Battle Over "COMPUTER GEEKS" Mark Lurches to Split TTAB Decision
• "PAPERCLIP CLUB" for Office Supply Services Not Confusingly Similar to "PAPERCLIP" for Office Furniture, Says TTAB
• TTAB Dismisses 2(d) Opposition, "MILANZA" Too Different from "POTENZA" and "TURANZA" for Tires
• TTAB Affirms 2(d) Refusal of "CARMINE'S" Design for Restaurant Services in view of Two Other "CARMINE'S" Designs
• Precedential No. 5: TTAB Finds "CAPITAL CITY BANK" and "CITIBANK" Not Confusingly Similar, Dismisses 2(d) and Dilution-Based Opposition
• TTAB Sustains 2(d) Opposition, finding "SWEDISH LUXURY" and "SWEDISH SLEEP SYSTEM" Confusingly Similar for Mattresses
• Finding Suits, Handbags, and Footwear Related, TTAB Affirms 2(d) Refusal of "VABEENE" Over "VABENE"
• Finding Restaurant Services and Sauces Related, TTAB Affirms 2(d) Refusal of "BLACK HORSE"
• Precedential No. 4: TxDOT Wins TTAB 2(d) Tussle Over "DON'T MESS WITH TEXAS" for Clothing
• Bummer! TTAB Finds "PEACH CLAIRE" for Lingerie Not Confusingly Similar to "PEACH BUNS" for Clothing
• Weakness of "UNITED" Mark for Money-Transfer Services Leads to TTAB 2(d) Reversal
• Affirming 2(d) Refusal of "COMMANDER-IN- CHIEF," TTAB Finds Board Games and Playing Cards Related
• TTAB Finds "CATELLI" for Pasta Sauce Confusingly Similar to "LOCATELLI" for Cheese
• TTAB Enters Summary Judgment: "RED KAP" and "RED SNAP" for Clothing Too Dissimilar for Confusion or Dilution
• Precedential No. 1: TTAB Yawningly Affirms 2(d) Refusal of "MAX & Design" Over "MAX" for Overlapping Insurance Services

Section 2(e)(1) - merely descriptive:

• "GREEN CEMENT" Merely Descriptive of Environmentally-Friendly Cement Products, Says TTAB, Concretely
• E-BANDAGE" and "ELECTRONIC BANDAGE" Merely Descriptive of Bandages, Says TTAB, Unshockingly
• "USEFUL NETWORKS" Merely Descriptive of Location Software, Says TTAB, Questionably
• "HEALTHY HOME VACUUM" Not Merely Descriptive For Vacuum Cleaners, Says TTAB
• Applicant's Policing Efforts Lead to TTAB Reversal of Mere Descriptiveness Refusal of "PERFECTING SERUM" For Skin Moisturizer
• WYHA? TTAB Affirms Mere Descriptiveness Refusal of "TITANIUM" for Kitchen Applicances

Section 2(e)(2) - primarily geographically descriptive:

• TTAB Affirms 2(e)(2) Geographical Descriptiveness Refusal of "US PATIENT REGISTRY" for Medical Information Database

Section 2(e)(3) - primarily geographically deceptively misdescriptive:

• TTAB Sustains 2(d) Opposition, finding "SWEDISH LUXURY" and "SWEDISH SLEEP SYSTEM" Confusingly Similar for Mattresses

Section 2(e)(4) - primarily merely a surname:

• Test Your TTAB Judge-Ability: Does "VALVERDE" Have the Look and Sound of a Surname?
• WYHA? TTAB Affirms Section 2(e)(4) Surname Refusal of "WEIS" for Frozen Dairy Products
• Extreme Rareness of "RENATI" as Surname Leads to 2(e)(4) Reversal

Section 2(f) - acquired distinctiveness:

• Precedential No. 3: Denying 2(f) Tacking, TTAB Finds HOLLYWOOD and BOLLYWOOD Not Legal Equivalents

Abandonment:

• Petitioner North Face Falls Flat in Attempted Cancellation on Abandonment and Fraud Grounds

Dilution:

• Precedential No. 11: Foreign Mark's Fame in US Plus ITU Application Provides Dilution Cause of Action, Says TTAB
• Precedential No. 5: TTAB Finds "CAPITAL CITY BANK" and "CITIBANK" Not Confusingly Similar, Dismisses 2(d) and Dilution-Based Opposition

Disclaimer practice:

• Finding Applicant's 2(f) Evidence Misdirected, TTAB Affirms Requirement for Disclaimer of CHILDREN'S in "THE CHILDREN'S PLACE"

Fraud:

• Petitioner North Face Falls Flat in Attempted Cancellation on Abandonment and Fraud Grounds
• TTAB Vacates 2008 Fraud Ruling in Xel Pharmaceuticals Case
• TTABlog Bonus: Your Very Own FRAUD-O-METER™
• Thinking About Fraud (Part III): After Bose, Can Fraud Be Cured?
• Thinking About Fraud (cont.): Why Look to Patent Law for the Trademark Fraud Standard?
• Thinking About Fraud: Where Does "Inadvertence" End and "Reckless Disregard" Begin?
• Precedential No. 2: TTAB Okays Fraud Pleading But Denies Summary Judgment on Intent Issue

Genericness:

• Precedential No. 9: TTAB Finds "ELECTRIC CANDLE COMPANY" Generic for Light Bulbs
• TTAB Finds "JOJOBA BUTTER BEADS" Generic for ... Guess What?
• WYHA? TTAB Finds "INFUSED CIGARS" Generic for ... Guess What?

Lack of bona fide intent:

• Precedential No. 12: TTAB Sustains "HERE'S JOHNNY" Portable Toilets Opposition on Two Grounds: Res Judicata and No Bona Fide Intent

Non-Use:

• TTAB Finds Service Mark Application Void ab initio for Non-Use Because Services Were Not Rendered Prior to Filing

Res Judicata:

• Precedential No. 12: TTAB Sustains "HERE'S JOHNNY" Portable Toilets Opposition on Two Grounds: Res Judicata and No Bona Fide Intent

Use in Commerce/Drawing/Specimen of Use:

• Test Your TTAB Judge-Ability on this Specimen of Use

TTAB Discovery/Evidence/Procedure:

• Will the TTAB Follow the 4th Circuit's Rosenruist Ruling?
• Appellee Removes CAFC Appeal to Federal District Court Under 15 USC 1071
• Precedential No. 8: You Can't Move for Summary Judgment Until After Serving Initial Disclosures, Says TTAB
• Precedential No. 7: TTAB Deems Internet Printouts Admissible Via Notice of Reliance
• Precedential No. 52 (2009): TTAB Rules That Objection to Discovery For Failure to Provide Initial Disclosures Must Be Made Specifically
• Precedential No. 6: TTAB Spanks Opposer Who Failed to Serve Initial Disclosures
• Precedential No. 51: TTAB Denies Sanctions But Orders Parties to Hold Discovery Conference with Board Participation

CAFC Decisions:

• CAFC Affirms TTAB Summary Judgment in 2(d) Farm Boy Design Dispute
• CACF Affirms TTAB Ruling: "X-PIPE" is Generic for Engine Exhausts
• Thinking About Fraud (cont.): Why Look to Patent Law for the Trademark Fraud Standard?
• CAFC Favors USC Trojans Over USC Gamecocks in "SC" Logo Fracas

CAFC Oral Arguments:

• CAFC Hears Argument in "ODOM'S PRIDE" 2(d) Summary Judgment Appeal
• CAFC Hears Oral Argument Regarding Distinctiveness of Religious Habit

Other:

• "TTAB Comes To Boston" - April 9th at Boston University School of Law
• Interesting TTAB Statistics in Report to February TPAC Meeting
• TTAB Posts March 2010 Hearing Schedule
• TTABlog Article: The Top Ten TTAB Decisions of 2009®
  
• Trademark Public Advisory Committee (TPAC) Webcast Today
• Which Law Firms Filed the Most Petitions for Cancellation in 2009?
• Parties Respond to TTAB Order in Oldest Pending Case
• Which Law Firms Filed the Most Oppositions in 2009?
• From the TTAB Website: Everything You Ever Wanted to Know About Accelerated Case Resolution (ACR)
• TTAB Posts February 2010 Hearing Schedule
• Senate Passes Bill to Provide Usual Grace Periods for Section 71 Declarations of Use
• TTAB Issues New Order in Oldest Pending TTAB Case
• Oldest Pending TTAB Case Continues in Suspension
• TTAB Issued 52 Precedential Decisions in 2009
• Current Roster of TTAB Administrative Trademark Judges
• TTAB Posts January 2010 Hearing Schedule
• "CAB CALLOWAY" TTAB Ruling Goes to Southern District of New York for 1071(b) Review

Text and photos ©John L. Welch 2009-2010.