2014 TTAB Precedential Decisions

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Amanda Blackhorse
Section 2(a) - Immoral or Scandalous:

• WYHA? Precedential No. 28: Finding "MOMSBANGTEENS" Scandalous for Adult Website, TTAB Affirms Section 2(a) Refusal
• Precedential No. 25: Finding ASSHOLE REPELLENT for Gag Gift to Be Vulgar, TTAB Affirms 2(a) Refusal

Section 2(a) - Disparagement:

• Precedential No. 26: In Split Decision, TTAB Orders Cancellation Of Six REDSKINS Registrations Due To Disparagement

Section 2(c) - Consent of Living Individual:

• Precedential No. 12: TTAB Reverses Section 2(c) Refusal of FRANKNDODD for Legislative Information Services

Section 2(d) - Likelihood of Confusion:

• Precedential No. 44: TTAB Test - Are "REDNECK RACEGIRL & Design" and "RACEGIRL" Confusable for Clothing?
• Precedential No. 40: TTAB Finds "MC" Family Famous, Sustains Dilution Opposition to MCSWEET for Pickled Vegetables
• Precedential No. 31: Fame of HARRY WINSTON Mark Crushes Son's BRUCE WINSTON Application for Jewelry
• Precedential No. 24: Finding Pepper Sauce and Agave Sweetener Related, TTAB Affirms 2(d) Refual of "CHANTICO & Design"
• Precedential No. 21: IKEA Gets Split Decision Against AKEA: Section 2(d), Yes in Part; Dilution, No
• Precedential No. 9: MINERS For Professional Baseball Goods Confusable With MINERS For Collegiate Sports Goods
• Precedential No. 5: "Family of Marks" Doctrine Inapplicable in Ex Parte Context, Says TTAB
• Precedential No. 1: Fame of SHAPE Magazine Yields 2(d) Opposition Victory over SHAPES for Beauty Salons

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

• Precedential No. 30: YOUR CLOUD Merely Descriptive of Cloud Computing-Related Services, Says TTAB
• Precedential No. 20: TTAB Affirms Mere Descriptiveness Refusal of TOURBILLON & Design for Jewelry and Watches
• Precedential No. 17: Is PERKS Generic For Volume Discount Buying Services? [No] Merely Descriptive? [Yes]

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

• Precedential No. 22: TTAB Affirms Geographical Descriptiveness Refusal of HOLLYWOOD LAWYERS ONLINE for Online Referral Services

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 39: Toothbrush Base Design Lacks Acquired Distinctiveness, Says TTAB, Affirming Refusal

Dilution:

• Precedential No. 23: CHANEL for Real Estate Services Dilutes Famous CHANEL Mark, Says TTAB
• Precedential No. 21: IKEA Gets Split Decision Against AKEA: Section 2(d), Yes in Part; Dilution, No

Fraud:

• Precedential No. 42: Board Grants 12(b)(6) Motion to Dismiss Fraud, Nonuse, and Abandonment Counterclaims
• Precedential No. 41: Finding Fraud, TTAB Sustains Opposition to NATIONSTAR for Real Estate Brokerage Services

Genericness:

• Precedential No. 32: TTAB Finds CLOUDTV Generic for ... Guess What?
• Precedential No. 17: Is PERKS Generic For Volume Discount Buying Services? [No] Merely Descriptive? [Yes]
• Precedential No. 11: TTAB Affirms Genericness Refusal of CHURRASCOS (Stylized) for Restaurant Services
• Precedential No. 6: TTAB Finds PRETZEL CRISPS Generic for Pretzel Crackers

Lack of Bona Fide Intent:

• Precedential No. 13: Lack of Bona Fide Intent Dooms Two "FUTURE" Applications, Says TTAB

Identification of Goods:

• Precedential No. 3: TTAB Applies Ordinary Meaning Test to Class Heading In Affirming Rejection of I.D. Amendment

Ownership:

• Precedential No. 29: After Partnership Breakup, TTAB Declares FAIRWAY FOX Application Void Ab Initio
• Precedential No. 16: TTAB Orders Cancellation of Registration - Applicant not Owner of Underlying Foreign Registration

Nonuse/Specimen of Use:

• Precedential No. 38: TTAB Deems "BEAUTV" Use-Based Application Void Ab Initio Due To Non-Use
• Precedential No. 37: TTAB Affirms Rejection of Web Page Specimen for Computer Services
• Precedential No. 36: TTAB Reverses Refusal of Service Mark Specimen for Financial Services
• Precedential No. 8: Catalogs Lacked Necessary Ordering Information to Qualify as Trademark Specimen, Says TTAB

Cancellation Under Section 14(3):

• Precedential No. 19: TTAB Grants Bayer's Petition for Cancellation Of FLANAX Registration Under Section 14(3)

Concurrent Use:

• Precedential No. 14: Junior User Awarded Concurrent Use Registration for Entire Country Except New Jersey and New York
• Precedential No. 2: In Concurrent Use Ruling, TTAB Okays Nationwide Registration Even Though Services Never Performed in NYC or CT

Discovery/Evidence/Procedure:

• Precedential No. 45: TTAB Grants Motion to Amend Opposition to Section 66(a) Application
• Precedential No. 43: TTAB Dismisses XBOX 360 Cancellation Petition as Sanction for Misconduct
• Precedential No. 42: Board Grants 12(b)(6) Motion to Dismiss Fraud, Nonuse, and Abandonment Counterclaims
• Precedential No. 38: TTAB Deems "BEAUTV" Use-Based Application Void Ab Initio Due To Non-Use
• Precedential No. 35: Filing of Opposition by Foreign Attorney is Curable Defect, Says TTAB
• Precedential No. 34: TTAB Grants Motion to Strike Belated Supplemental Expert Report
• Precedential No. 33: Party Withdraws Designation of Testifying Expert Who Provided Report: No Deposition Allowed, Says TTAB
• Precedential No. 27: TTAB Rules that Notice of Reliance Must Indicate Relevance of Each Document by duPont Factor
• Precedential No. 18: Identity of One Party's Trial Witnesses Cannot Be Kept Secret from Other Party
• Precedential No. 15: TTAB Dismisses Opposition Under Rule 2.132(a) For Failure To Prosecute
• Precedential No. 10: TTAB Denies Motion to Compel Due to Lack of Good Faith Effort to Resolve Dispute
• Precedential No. 7: TTAB Enters Judgment as Sanction For Intransigent Defendant's Failure to Attend Discovery Conference
• Precedential No. 4: Section 18 Available for Restriction of Color Mark to a Particular Shade, Says TTAB

Text Copyright John L. Welch 2014.