TTABlog Quarterly Index: January - March 2015

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. You may also follow the blog on Twitter (here). And don't forget to leave your comments! [Note that E-mail subscribers may have to surf to the blog to see comments]. Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at lalaw.com.

Section 2(a) - Disparagement:

• WYHA? Precedential No. 8: TTAB Affirms Section 2(a) Disparagement Refusal of PORNO JESUS

Section 2(a) - False Association:

• Precedential No. 4: TTAB Affirms 2(a) and 2(c) Refusals of "PRINCESS KATE" and "ROYAL KATE" for Clothing

Section 2(c) - Consent to Register:

• Precedential No. 4: TTAB Affirms 2(a) and 2(c) Refusals of "PRINCESS KATE" and "ROYAL KATE" for Clothing

Section 2(d) - Likelihood of Confusion:

• Precedential No. 10: TTAB Test: Are These Two Marks for Furniture Confusingly Similar?
• Precedential No. 9: SMART BALANCE Not Confusable with SMART ONES for Frozen Food, Says TTAB
• TTAB Test: Are These Two Marks For Overlapping Goods/Services Confusingly Similar? [No]
• TTAB Reverses 2(d) Refusal Due to Specific Differences in Involved Software
• TTAB Test: Are Tequila and Wine Related for Section 2(d) Purposes? [Yes]
• TTAB Test: Is APOTHEOSIS Confusable With APOTHIC for Wine? [Yes]
• TTAB Test: Are Wine and Whiskey Related for Section 2(d) Purposes? And Where is Millbrook? [Yes]
• Precedential No. 6: "PMONEY" Confusable with "POPMONEY" for Electronic Funds Transfer, Says TTAB
• TTAB Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?
• TTAB Test: Is "ARMADALE" for Vodka Confusable with "ARMADA" for Sherry?[No]
• WYHA? TTAB Finds NOW YOGA AND FITNESS Confusable With NOWYOGA for Yoga Instruction
• What is the Likelihood of TTAB Affirmance of a Section 2(d) Refusal?
• TTAB Test: Is CALIFORNIA REPUBLIC Confusable With REPUBLIK OF KALIFORNIA, for Clothing? [No]
• TTAB Test: Are Sandwiches and Vegetable Salads Related for Section 2(d) Purposes? [Yes]
• Precedential No. 2: Applicant's Third-Party Registrations Show That RV Trailers and Trucks are Not Related
• TTAB Test: Is Wine Related to Alcohol/Fruit Juice Beverages? [Yes]
• TTAB Test: Are Beer and Wine Related for Section 2(d) Purposes? [Yes]

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

• WYHA? TTAB Affirms Mere Descriptiveness Refusal of PHOTOGREFER for Online Photography Referrals
• TTAB Test: Is "CLETAXI" Merely Descriptive of Taxi Transport Services?
• TTAB Dubiously Requires Disclaimer of RAIL for Surgical Implants
• WYHA? TTAB Affirms Mere Descriptiveness Refusal of INTERNATIONAL AIR AND SPACE PROGRAM for Aero Space Conferences
• TTAB Sustains 2(e)(1) Mere Descriptiveness Opposition to LIMITED for Sports Trading Cards
• What is the Likelihood of TTAB Affirmance of a Section 2(e)(1) Mere Descriptiveness Refusal?
• TTAB Test: Is WORLDBROWSER Merely Descriptive of an Online Travel Website?
• TTAB Test: Which One of These Three Mere Descriptiveness Refusals Was Reversed?
• TTAB Test: Must "47AG" Be Disclaimed for SiIver Jewelry? [Yes]
• TTAB Test: Which of these Three Mere Descriptiveness Refusals Did the TTAB Reverse?

Section 2(e)(1) - Primarily Merely Deceptively Misdescriptive:

• TTAB Test: Is FLAT IRON TACO Deceptively Misdescriptive of Tacos?

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

• TTAB Denies Request for Reconsideration of REDNECK RIVIERA Decision
• CAFC Reverses TTAB: NEWBRIDGE HOME Not Geographically Descriptive of Cutlery
• TTAB Test: Is REDNECK RIVIERA Geographically Descriptive of Entertainment Services?

Section 2(e)(4) - Primarily Merely a Surname:

• TTAB Reverses Section 2(e)(4) Surname Refusal of OKAMOTO for Stockings

Section 2(e)(5) - Functionality:

• Some Thoughts on de facto and de jure Functionality
• TTAB Affirms Section 2(e)(5) Functionality Refusal of "Bladeless" Electric Fan Configuration

Section 14(3) - Cancellation for Misrepresentation of Source:

• E.D. Va. Reverses TTAB's FLANAX Decision, Upholds Trademark Territoriality Principle

Failure to Function:

• Precedential No. 7: TTAB Reverses Failure-to-Function Refusal of Monster Truck Body Ornamentation

Laches:

• Precedential No. 5: TTAB Grants Partial Summary Judgment On Laches Ground

Discovery/Evidence/Procedure:

• Supreme Court Rules that TTAB Decision May Have Preclusive Effect
• WYHM? TTAB Denies Summary Judgment Motion, Says Opposer Has Standing
• TTAB Dismisses SURVIVAL BRACELET Opposition for Lack of Standing
• TTAB Denies Rule 12(b)(6) Motion to Dismiss Section 2(a) HAIRROIN SALON Cancellation
• Precedential No. 3: TTAB Grants Motion To Substitute New Expert Witness After Discovery Closed
• Precedential No. 1: Applying "Proportionality," TTAB Limits Number of Discovery Requests to Avoid Abuse

CAFC Decisions:

• CAFC Affirms TTAB: a Service Mark is Not in "Use" Until the Services are Rendered
• CAFC Reverses TTAB: NEWBRIDGE HOME Not Geographically Descriptive of Cutlery

Recommended Reading:

• The Trademark Reporter's "Annual Review of U.S. Trademark Cases"
• Recommended Reading: Benschar and Springut, Does Reckless Indifference Suffice for Fraud?
• Recommended Reading: Aaron and Nordemann: The Concepts of Trademark Use in the EU and the USA
• Recommended Reading: Sandra Edelman on Cancellation of Non-Use-Based Registrations Less Than 3-Years Old
• Recommended Reading: LaLonde and Gilson, "Proving Ownership Online . . . And Keeping It: The Internet’s Impact on Trademark Use and Coexistence"

Other:

• TTABlog Road Trip: "The Trademark Office Comes to California," April 14 and 16
• TTAB Posts March 2015 Hearing Schedule
• Florida Bar 6th Annual IP Symposium: Fort Lauderdale, March 5-6th
• TTABlog Road Trip: IPO's "PTO Day" in Washington, D.C., March 10th
• TTAB Posts February 2015 Hearing Schedule
• TTABlogger Named to 2015 "World Trademark Review 1000"
• Supreme Court Holds That Jury Should Decide Tacking Issue
• TTAB Issued 45 Precedential Opinions in 2014
• The Top Ten TTAB Decisions of 2014 [Part 2]
• The Top Ten TTAB Decisions of 2014 [Part 1]
• TTAB Posts January 2015 Hearing Schedule

Text Copyright John L. Welch 2015.