2015 TTAB Precedential Decisions

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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. 39: TTAB Dismisses 2(a) False Association Claim: MARATHON MONDAY vs.BOSTON MARATHON
• Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims
• 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. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims
• 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. 38: Fame of "will.i.am" Can't Save "I AM" Trademark Applications From 2(d) Bar
• Precedential No. 34: MMMBop! TTAB FInds C.H. HANSON Confusable with HANSON for Hand Tools
• Precedental No. 33: North Face Gets Split Decision In Multi-Class Section 2(d) Opposition
• Precedential No. 32: Orange Bang Wins "OLÉ" Section 2(d) Beverage Bullfight
• Precedential No. 27: Fame of BUD for Beer Brings Victory over WINEBUD for Wine
• Precedential No. 20: 13th du Pont Factor Yields TTAB 2(d) Reversal
• Precedential No. 16: MARAZUL and BLUE SEA Confusable for Seafood, Says TTAB
• Precedential No. 11: Despite Examination Errors, Issued Registration Must Be Cited as Section 2(d) Bar
• 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
• Precedential No. 6: "PMONEY" Confusable with "POPMONEY" for Electronic Funds Transfer, Says TTAB
• Precedential No. 2: Applicant's Third-Party Registrations Show That RV Trailers and Trucks are Not Related

Section 2(e)(1) - Deceptive Misdescriptiveness:

• Precedential No. 35: TTABang! SMART SERIES Merely Descriptive of Firearm Safes
• Precedential No. 31: "THCTea" Deceptively Misdescriptive of Tea-Based Beverages, Says TTAB

Section 2(e)(5) - Functionality:

• Precedential No. 37: TTAB Affirms Functionality Refusal of Hot Bonder Product Design

Dilution:

• Precedential No. 14: TTAB Sustains Yankees' Dilution Claim Re "THE HOUSE THAT JUICE BUILT"

Failure to Function:

• TTAB Precedential No. 25: "WALK-IN-SHOPPER" Not Used As Source Indicator for Applicant's Services
• Precedential No. 7: TTAB Reverses Failure-to-Function Refusal of Monster Truck Body Ornamentation

Genericness:

• Precedential No. 13: TTAB Finds BUYAUTOPARTS.COM Generic for .... Guess What?

Laches:

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

Lack of Bona Fide Intent:

• Precedential No. 30: Finding Lack of Bona Fide Intent, TTAB Sustains SWISS GRILLS Opposition

Ownership:

• Precedential No. 21: TTAB Sides With Band in "WONDERBREAD 5" Ownership Dispute
• Precedential No. 18: U.S. Seller, Not Foreign Manufacturer, Owns Trademark, TTAB Rules

Discovery/Evidence/Procedure:

• Precedential No. 41: TTAB Refuses Reconsideration of its Denial of Rule 12(b)(6) Motion to Dismiss
• Precedential No. 40: TTAB Refuses to Allow Witness to Change Testimony in HOLLYWOOD HOTEL Opposition
• Precedential No. 28: TTAB Denies Motion to Add Claim Preclusion Defense As Futile
• Precedential No. 26: TTAB Dismisses Opposition As Untimely, Denying Opposer Benefit of Another's Extension of Time
• Precedential No. 24: TTAB Summarily Dismisses Cancellation Petition Due to Claim Preclusion
• Precedential No. 23: Abandonment and Opposition Filed on Same Day, TTAB Dismisses Opposition Without Prejudice
• Precedential No. 22: Unreasonable Party Loses Right to Substantive Objections to Document Requests
• Precedential No. 19: PTO "Clear Error" Determination Not Reviewable by Petition or Appeal
• Precedential No. 17: TTAB Refuses to Vacate HOUNDSTOOTH MAFIA Decision
• Precedential No. 11: Despite Examination Errors, Issued Registration Must Be Cited as Section 2(d) Bar
• 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

Application Requirements:

• Precedential No. 12: WYHA? TTAB Says Application Must Be Verified, Affirms Refusal to Register

Concurrent Use:

• Precedential No. 29: TTAB Dissolves Concurrent Use Proceeding, Plaintiff Fails to Prove Prior Use
• Precedential No. 15: TTAB Refuses Concurrent Use Registration of DELMONICO'S For Restaurant Services

Text Copyright John L. Welch 2015.