TTABlog Quarterly Index: October - December 2021

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 TTABlog on Twitter: @TTABlog.

Section 2(a) - Deceptiveness:

• TTAB Affirms Section 2(a) Deceptiveness Refusal of SMART SUTURE for Bandages

Section 2(a) - False Suggestion of a Connection:

• Precedential No. 31: TTAB Affirms Section 2(a) Refusal of "NATO" for Tents, for Falsely Suggesting a Connection With ... Guess What?

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Are Hockey Sticks Related to Sports Gloves Under Section 2(d)? [Yes]
• Precedential No. 35: TTAB Grants MIRAGE BRANDS Cancellation Petition Due To Likelihood of Reverse Confusion
• On Remand from the CAFC, TTAB Denies Petition for Cancellation of "NAKED" Registration for Condoms
• TTABlog Test: Three Recent Section 2(d) Inter Partes Cases - How Did They Come Out?
• TTABlog Test: Are Glass Ornaments Related to Dried Flower Arrangements Under Section 2(d)? [Yes]
• TTABlog Test: How Did These Three Section 2(d) Oppositions Come Out?
• TTABlog Test: Is "SAMSUNG WIZ" for Smartphones Confusable with "THE WIZ" for Consumer Electronics Retail Services? [Yes]
• TTABlog Test: Are Dietary Supplements Related to Skincare Products Under Section 2(d)? [Yes]
• TTABlog Test: How Did These Recent Section 2(d) Appeals Turn Out?
• Crowded Field of Third-Party Registrations and Uses Leads to TTAB Reversal of "MATCH STUDIO" Over "MATCH" for Clothing
• Licensee's Prior Common Law Use Established Priority for "SNORE MD" Mark
• TTABlog Test: Is "BEDLAM VODKA & Design" for Vodka Confusable With "BEDLAM! & Design" for Beer? [Yes]
• TTABlog Test: Which of These Three Section 2(d) Oppositions Was Dismissed?
• TTABlog Test: Is "ICY (Stylized)" Confusable With "ICEE" for Clothing?
• TTABlog Test: How Did These Recent Section 2(d) Appeals Turn Out?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?

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

• TTABlog Test: Is ZERO MEAT Merely Descriptive of Animal, Fish, and Poultry Certification Services? [Yes]
• TTABlog Test: Is "GOAT GREATEST OF ALL TIME" Merely Descriptive of Vodka?
• WYHA? TTAB Finds "5 DAY FASTING DIET" Merely Descriptive of Nutritionally Balanced Prepared Meals [Yes]
• Precedential No. 30: TTAB Reverses Descriptiveness Refusal of TAVERNA COSTERA, Declining to Apply Doctrine of Foreign Equivalents
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Is "VOTESAPP" Merely Descriptive of a Social Networking App? [No]
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

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

• Precedential No. 27: TTABlog Test: Is "REPUBLIC OF LONDON" Primarily Geographically Deceptively Misdescriptive of Clothing? [No]

> Section 2(f) - Acquired Distinctiveness:

• Precedential No. 32: Color "Cream" for Guitar Pickups Lacks Acquired Distinctiveness, Says TTAB

Fraud:

• Precedential No. 24: TTAB Rules that Reckless Disregard for the Truth Is Sufficient for Proving Fraud

Genericness:

• TTAB Affirms Genericness Refusal of "LETTERS & NUMBERS" for . . . . Guess What?
• TTABlog Test: Is "SPECTACLES" Generic for Computer Hardware and Peripherals Wearable as Glasses?

Lack of Bona Fide Intent:

• Precedential No. 33: "LOCH MOOSE MONSTER" Fends Off Monster Energy's Lack-of-Bona-Fide-Intent Summary Judgment Motion

Nonuse/Specimen of Use:

• USPTO Issues Examination Guide 1-21: Expungement and Reexamination Proceedings Under the Trademark Modernization Act of 2020
• Precedential No. 34: TTAB Affirms Nonuse Refusal - Service Mark Use Requires Rendering of the Services, Not Just Preparation
• TTAB Affirms Refusal of "MADE FOR MORE" for Employee Recruitment: Not Rendered for the Benefit of Others
• Precedential No. 29: TTAB Affirms Refusal of "DRINK MORE BEER" For Bottle Caps: Not Used as a Source Indicator
• Precedential No. 28: TTAB Sustains Opposition to "I AM THE MARS GENERATION" for Licensing Services on Ground of Nonuse
• TTAB Reverses Refusal of SPEED EZ for Cleaning Brushes, Finding Specimen of Use Acceptable

Procedural Issues/discovery:

• TTAB Bifurcates "RAPUNZEL" Doll Opposition; Will Re-Visit "Standing" Issue Before Considering Merits of Professor Curtin's Claims
• Precedential No. 26: Claim Preclusion Inapplicable in Concurrent Use Proceeding After Cancellation or Opposition Proceeding
• Precedential No. 25: TTAB Rejects Proposed Modification of Standard Protective Order, Refuses to Apply EU Privacy Regulation

Recommended Reading:

• Recommended Reading: The Trademark Reporter, November-December 2021 Issue
• Recommended Reading: Germain and Sitler, "The Constitution Commandeth: Thou Shalt Not Protect the Same Subject Matter Under Design Patent and Trade Dress Laws"
• Recommended Reading: "Trademark Injury in Law and Fact: A Standing Defense to Modern Infringement"
• Ted Davis: 2021 Annual Review of U.S. Federal Case Law and TTAB Developments
• Holiday Reading: The Trademark Modernization Act of 2020 and Newly-Issued Implementing Regulations
• Recommended Reading: The Trademark Reporter, September-October 2021 Issue

CAFC Rulings:

• CAFC Affirms TTAB's Dismissal of SKY CINEMAS Opposition: Not Confusable with SKY NEWS for News Reporting Services
• CAFC Affirms TTAB: "BF-7" Registration for Nutritional Supplements Invalid Due to Non-Ownership
• CAFC Reverses TTAB's "MONEY MART" Decision Due to Error in Assessing Priority
• CAFC Again Remands GALPERTI Case to TTAB Due To Legal Errors in Assessing Falsity of Claim of Acquired Distinctiveness
• CAFC Largely Affirms TTAB's "BROOKLYN BREW SHOP" Decision Finding that Laches Barred Brooklyn Brewery's Section 2(d) Claims
• CAFC Vacates andRemands TTAB's IBKÜL Decision: The KÜHL Registration It Relied On Was Cancelled
• CAFC Upholds TTAB: GM's "SUPER CRUISE" Driving System Not Related to "SUPERCRUISE" Computer Components for Section 2(d) Purposes

Other:

• TTAB Posts January 2022 (Video) Final Hearing Schedule
• TTABlog Test: How Well Do You Know Your TTAB "Factors"?
• TTAB Posts December 2021 (Video) Hearing Schedule
• USPTO Issues Regulations Implementing the Trademark Modernization Act of 2020 (TMA)
• New Nonuse Provisions of Trademark Modernization Act May Significantly Impact Non-US Trademark Owners
• TTAB Posts November 2021 (Video) Hearing Schedule
• District Court Finds Lack of Personal Jurisdiction Over Defendant in TTAB Appeal, Transfers Case Rather Than Dismissing It
• Three Recent TTAB Inter Partes Decisions Among the End-of-Fiscal-Year Flurry
• TTABlog Quarterly Index: July - September 2021

Read comments and post your comment here.

Text Copyright John L. Welch 2021.

2021 TTAB Precedential Decisions

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 TTABlog on Twitter: @TTABlog.


 

Section 2(a) - Deceptiveness:

• Precedential No. 2: "BURNS NIGHT" Whiskey Opposition Survives Rule 12(b)(6) Motion to Dismiss

Section 2(a) - False Suggestion of a Connection:

• Precedential No. 31: TTAB Affirms Section 2(a) Refusal of "NATO" for Tents, for Falsely Suggesting a Connection With ... Guess What?
• Precedential No. 1: TTAB Dismisses Olympic Committee's Section 2(a) False Connection Opposition to PIERRE DE COUBERTIN for Various Goods

Section 2(d) - Likelihood of Confusion:

• Precedential No. 35: TTAB Grants MIRAGE BRANDS Cancellation Petition Due To Likelihood of Reverse Confusion
• Precedential No. 13: TTAB Affirms Section 2(d) Refusal of NBA Star Joel Embiid's "TRUST THE PROCESS" For Shoes

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

• Precedential Nos. 9 and 10: TTAB finds "CLEAR" Deceptively Misdescriptive of Non-Transparent Clothing and Handbags

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

• Precedential No. 30: TTAB Reverses Descriptiveness Refusal of TAVERNA COSTERA, Declining to Apply Doctrine of Foreign Equivalents

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

• Precedential No. 27: TTABlog Test: Is "REPUBLIC OF LONDON" Primarily Geographically Deceptively Misdescriptive of Clothing? [No]

Section 2(e)(5) - Functionality

• Precedential No. 12: TTAB Grants Petition to Cancel Registration for Gun Barrel Trade Dress Due to Section 2(e)(5) Functionality

Section 2(f) - Acquired Distinctiveness

• Precedential No. 32: Color "Cream" for Guitar Pickups Lacks Acquired Distinctiveness, Says TTAB
• Precedential No. 16: WYHA? TTAB Affirms Mere Descriptiveness Refusal of ONLINETRADEMARKATTORNEYS.COM as Claim of Acquired Distinctiveness Fails

Abandonment/Nonuse:

• Precedential No. 29: TTAB Affirms Refusal of "DRINK MORE BEER" For Bottle Caps: Not Used as a Source Indicator
• Precedential No. 28: TTAB Sustains Opposition to "I AM THE MARS GENERATION" for Licensing Services on Ground of Nonuse
• Precedential No. 8: TTAB Orders Cancellation of "NT-MDT" Registration Due to Nonuse

Fraud:

• Precedential No. 24: TTAB Rules that Reckless Disregard for the Truth Is Sufficient for Proving Fraud
• Precedential No. 21: TTAB Upholds Fraud Claim Against Distributor of Massage Chairs Who Registered Manufacturer's Mark FUJIIRYOKI
• Precedential No. 7: Denying FRCP 12(b)(6) Motion, TTAB Finds DOCTOR DISABILTY Fraud and Likelihood of Confusion Claims Adequately Pleaded

Genericness

• Precedential No. 4: TTAB Deems THE CONSUMER PROTECTION FIRM.COM Generic for Legal Services, but Okays Supplemental Registration for Design Form With Disclaimer
• Precedential No. 15: On Remand, TTAB Reverses COOKINPELLETS.COM Genericness Ruling, But Affirms Mere Descriptiveness and Lack of Acquired Distinctiveness

Lack of Bona Fide Intent:

• Precedential No. 33: "LOCH MOOSE MONSTER" Fends Off Monster Energy's Lack-of-Bona-Fide-Intent Summary Judgment Motion

Nonuse/Failure to Function/Specimens of Use:

• Precedential No. 34: TTAB Affirms Nonuse Refusal - Service Mark Use Requires Rendering of the Services, Not Just Preparation
• Precedential No. 28: TTAB Sustains Opposition to "I AM THE MARS GENERATION" for Licensing Services on Ground of Nonuse
• Precedential No. 5: Sustaining U. Kentucky's Opposition, TTAB Finds that "40-0" Fails to Function as a Trademark for T-Shirts
• Precedential No. 11: Specimen Webpages Fail the "Display-Associated-With-the Goods" Test, Says TTAB

Section 14(3) Misuse of a Registration:

• Precedential No. 18: TTAB Orders Cancellation of Two Registrations Under Section 14(3) Due to Registrant's Misrepresentation of Source

Procedural Issues/Discovery:

• Precedential No. 26: Claim Preclusion Inapplicable in Concurrent Use Proceeding After Cancellation or Opposition Proceeding
• Precedential No. 25: TTAB Rejects Proposed Modification of Standard Protective Order, Refuses to Apply EU Privacy Regulation
• Precedential No. 23: TTAB Refuses to Allow Withdrawal of Express Abandonment of Opposed Application
• Precedential No. 22: TTAB Allows Withdrawal of Cancellation Petition Prior to Answer, Without Prejudice, Despite Federal Court Ruling Adverse to Petitioner
• Precedential No. 20: Claim Preclusion and Issue Preclusion Inapplicable in VALVOLINE Opposition to MAXVOLINE, Says TTAB
• Precedential No. 19: Does Eastern Standard Time Control the Timeliness of Discovery Requests? TTAB Says No
• Precedential No. 17: TTAB Dismisses ADVENTIST Cancellation Petition Due to Failure to Maintain "Standing"

Prosecution Issues:

• Precedential No. 6: Applying Res Judicata, TTAB Again Affirms Mere Descriptiveness Refusal of POWERCOATINGS for Solar Cell Chemicals
• Precedential No. 3: TTAB Rejects Applicant's Express Abandonment of Application "Without Prejudice" After Adverse Final Decision
• Precedential No. 14: Indefinite Recitation of Services and Failure to Adequately Respond to Information Request Sink SHIFTMAG Application

Text Copyright John L. Welch 2020-2021.

TTABlog Quarterly Index: July - September 2021

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 TTABlog on Twitter: @TTABlog.

Section 2(a) - False Suggestion of a Connection:

• TTAB Denies Fraud Claim But Grants Petition to Cancel SEYIDOGLU Registration on Section 2(a) False Connection Ground

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?
• 13th DuPont Factor (Prior Registration) Saves AXION From Section 2(d) Refusal Over AXEON LABS for Clothing
• Third-Party Uses and Registrations Show Weakness of Cited Mark ASCENT; TTAB Reverses 2(d) Refusal of ASCENT FEDERAL CREDIT UNION
• TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?
• TTABlog Test: Is MICHELLE MAE for Wholesale Clothing Confusable With MICHELLE MAY NEW YORK for Jewelry?
• "NAMX" Not Confusable with "NYMEX" for Electronic Financial Services, Says TTAB
• TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?
• TTABlog Test: Are These Two Alligator Designs Confusingly Similar for Clothing? [Yes]
• TTABlog Test: Is "R RADIAL YOKOHAMA G.T. SPECIAL & Design" Confusable With RADIALWEAR for Clothing? [Yes]
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?
• TTAB Dismisses HUDL Opposition to HUDL BREWING COMPANY: Proof of Dilution Fame Fails and Goods/Services Too Different for Section 2(d)
• TTABlog Test: Three Recent Section 2(d) Appeals - How Did They Come Out?
• TTABlog Test: Is "GENRESTORE" Confusable With "RESTOREGEN" for Dietary Supplements?
• WYHA? TTAB Affirms Section 2(d) Refusal of "BRUNO AND THE HOOLIGANS" in view of "THE HOOLIGANS," Both For Live Musical Entertainment
• TTABlog Test: Are Protective Clothing and Sporting Gear Related to Underwear and Loungewear for Section 2(d) Purposes? No
• TTAB Dismisses TREK Bicycle's Opposition to RANGER TREK for Overlapping, Non-Bicycle Goods

• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?
• TTABlog Test: Is KING'S RANSOM for Scotch Whiskey Sold by Invitation Confusable With the Identical Mark for Wines?
• TTABlog Test: Is "ONE GREEN" Confusable With "8GREENS" for Nutritional Supplements? [Yes]
• Two Prior Registrations and DuPont Factor 13 Save "ELDORADO RESORT CASINO RENO" From a Section 2(d) Refusal
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?

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

• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Is FAST DRINK Merely Descriptive of Nutritional Meal Replacement Drinks? [No]
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Must AQUACHAR be Disclaimed in AQUACHAR & Design for Water Filtration Products?">
• TTABlog Test: Must "BARK" Be Disclaimed in "BIG BARK" for Tree Care Services? [No]

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

• TTABlog Test: Is PARMA COFFEE Primarily Geographically Descriptive of Coffee and Other Food Items? [Yes]
• Updated TTAB Collection of Section 2(e)(2) "Primarily Geographically Descriptive" Cases
• TTABlog Test: Is "BEAUTY SG" Primarily Geographically Descriptive of Cosmetics and Supplements?

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

• Updated TTABlog Collection of Section 2(e)(3) "Primarily Geographically Deceptively Misdescriptive" Cases

Section 2(e)(5) - Functionality:

• TTAB Affirms Section 2(e)(5) Functionality Refusal of Mark Consisting of the Transparency of Plastic Food Packaging Trays
• TTAB Affirms Section 2(e)(5) Functionality Refusal of Iconic Eames Chair Design

Section 14(3) - Miserpresentation of Source:

• Precedential No. 18: TTAB Orders Cancellation of Two Registrations Under Section 14(3) Due to Registrant's Misrepresentation of Source

Abandonment/Nonuse:

• E.D. Va. Upholds TTAB Dismissal of SHUSTOV Cancellation Petition: Registrant Overcame Prima Facie Case of Abandonment
• TTAB Denies Petition to Cancel "ONEPACKET" Registration: Failure to Prove Nonuse

Dilution:

• TTAB Dismisses HUDL Opposition to HUDL BREWING COMPANY: Proof of Dilution Fame Fails and Goods/Services Too Different for Section 2(d)

Fraud:

• Another Fraud Claim Fails to Clear the "Deceptive Intent" Hurdle
• Precedential No. 21: TTAB Upholds Fraud Claim Against Distributor of Massage Chairs Who Registered Manufacturer's Mark FUJIIRYOKI
• TTAB Denies Fraud Claim But Grants Petition to Cancel SEYIDOGLU Registration on Section 2(a) False Connection Ground

Genericness:

• TTABlog Test: Is "MULTI-GRIP" Generic for Exercise Stretch Bands? [Yes]
• TTABlog Test: Is "THE TAILORY" Generic for Custom Tailoring or Dressmaking? [No]/a>
• TTAB Affirms Genericness Refusal of CRANIAL/STRUCTURAL for Medical Massage Services, Rejecting "Mixed Evidence" Argument

Unlawful Use:

• TTAB Affirms Unlawul Use Refusal of ITU Application for "FOR JOY" for CBD-Containing Tea

Procedural Issues:

• Third Circuit Rules That TTAB Decision Has No Claim Preclusive Effect on "THE EBONYS" Section 43(a) Claim
• Precedential No. 23: TTAB Refuses to Allow Withdrawal of Express Abandonment of Opposed Application
• Precedential No. 22: TTAB Allows Withdrawal of Cancellation Petition Prior to Answer, Without Prejudice, Despite Federal Court Ruling Adverse to Petitioner
• Precedential No. 19: Does Eastern Standard Time Control the Timeliness of Discovery Requests? TTAB Says No
• TTAB Denies Motion for Relief From Default Judgment Issued in December 2018
• GOYA Fails to Submit Evidence On Time, TTAB Dismisses Opposition to GOLA FOODS for Health Food Supplements
• District Court Grants Stay of Recently-Filed Infringement Suit in Favor of TTAB Proceeding Nearing Completion
• TTAB Gives District Court Judgment Only Partial Res Judicata Effect, Strikes 8 of 10 Affirmative Defenses in EASYLING Cancellation Proceeding

CAFC Rulings:

• CAFC Rejects Constitutionality Challenge to Appointment of Administrative Trademark Judges, Affirms TTAB's "SCHIEDMAYER" False Association Decision
• CAFC Rules that the USPTO is not Entitled to Expert Witness Fees in a Civil Action for Review of a PTAB Decision. What about the TTAB?

Recommended Reading:

• Trademark Reporter: July–August 2021 (Vol. 111 No. 4) issue
• Ted Davis Article: "Recent Developments in Trademark and Unfair Competition Law"
• TTABlog Article: "Decisions of the Federal Circuit and the Trademark Trial and Appeal Board on Registrability Issues July 2020 to June 2021"
• Recommended Reading: The Trademark Reporter, May-June 2021 Issue

Other:

• TTAB Posts October 2021 (Video) Hearing Schedule
• Martha B. Allard Appointed to Trademark Trial and Appeal Board
• TTAB Posts September 2021 (Video) Hearing Schedule
• "Advanced Practice Before the TTAB," IP Institute, USC Gould School of Law, September 22, 2021 (11:30 AM (PST))
• Belmora Files Petition for Writ of Cetiorari in Long-Running FLANAX Battle with Bayer
• What Firms/Lawyers Represent Opposed Applicants Most Frequently (2018-2021)?
• TTAB Posts August 2021 (Video) Hearing Schedule
• TTAB Posts July 2021 (Video) Oral Hearing Schedule

Text Copyright John L. Welch 2021.

TTABlog Quarterly: April - June 2021

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 TTABlog on Twitter: @TTABlog.

Section 2(a) - False Suggestion of a Connection:

• Gilead Science Loses Opposition to GILEAD CAPITAL: No Section 2(d) Likelihood of Confusion and No 2(a) False Connection

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is QUARRY VINEYARD Confusable with PEDRERA for Wine? [Yes]
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• Failure to Prove "Standing" and Priority Dooms Section 2(d) Cancellation of CHUBB TRAVEL SMART Registration for Mobile Apps
• Catch-all Thirteenth DuPont Factor Saves HANA BANCORP & Design from Section 2(d) Refusal
• Precedential No. 13: TTAB Affirms Section 2(d) Refusal of NBA Star Joel Embiid's "TRUST THE PROCESS" For Shoes
• TTABlog Test: Which of These Three Section 2(d) Refusal Was/Were Reversed?
• TTABlog Test: Are These Two "Bull" Designs Confusingly Similar For Auto Parts? [Yes]
• In a Six-Year TTAB Tussle, Monster Energy and Toronto Raptors Claw Their Way to a Dismissal of All Section 2(d) Claims and Counterclaims
• Gilead Science Loses Opposition to GILEAD CAPITAL: No Section 2(d) Likelihood of Confusion and No 2(a) False Connection
• TTABlog Test: Is CHROMAFUSION for Plastic Sleeves for Trading Cards Confusable WIth CHROME for Trading Cards?
• TTAB Test: Which of These Three Section 2(d) Refusal Was/Were Reversed?
• Apple, Inc. Survives Section 2(d) Opposition Challenge to APPLE MUSIC by Tacking On Prior Use of APPLE by Apple Corps

• Fourth Circuit Affirms E.D.Va.: VAGISAN Confusable With VAGISIL for Feminine Hygiene Products
• M.D. Florida District Court Upholds TTAB Decision Affirming Section 2(d) Refusal of VIVE HEALTH for Retail Medical Suply Services
• TTABlog Test: Are These Marks Confusingly Similar for Waterpark Services? [No]

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

• TTABlog Test: Must "DANK" be Disclaimed in DANK TANK for Ale and Beer? [Yes]
• TTABlog Test: How Did These Three Mere Descriptiveness Appeals Turn Out?

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

• TTABlog Test: Must "HAUS" Be Disclaimed in "GRAVITY HAUS" for Social Club Services?
• TTABlog Test: How Did These Three Appeals from 2(e)(1) Mere Descriptiveness Refusals Turn Out?
• Precedential Nos. 9 and 10: TTAB finds "CLEAR" Deceptively Misdescriptive of Non-Transparent Clothing and Handbags

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

• TTABlog Test: Is MALIBU SUPPER CLUB Primarily Geographically Descriptive of Restaurant Services? [Yes]

 

 

 

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

• TTABlog Test: Is BREAUXS for Barbecue Grills Primarily Merely a Surname?
• TTABlog Test: Is "SOUND ART CREATION NASH STUDIO" Primarily Merely a Surname?
• TTABlog Test: Is BARSKI Primarily Merely a Surname for Glassware and Related Goods? [No]

Section 2(e)(5) - Functionality

• TTAB Affirms Refusal to Register Canned Fish Packaging on the Supplemental Register: Functional and Generic
• Precedential No. 12: TTAB Grants Petition to Cancel Registration for Gun Barrel Trade Dress Due to Section 2(e)(5) Functionality
• E.D. Va. District Court Upholds TTAB Affirmance of Functionality of Bathtub Overflow Drain Cap

Section 2(f) - Acquired Distinctiveness

• Precedential No. 16: WYHA? TTAB Affirms Mere Descriptiveness Refusal of ONLINETRADEMARKATTORNEYS.COM as Claim of Acquired Distinctiveness Fails
• Timberland Boot Design Lacks Acquired Distinctiveness, Says TTAB
  
  

Abandonment/Nonuse:

• Precedential No. 8: TTAB Orders Cancellation of "NT-MDT" Registration Due to Nonuse

Dilution:

• TTAB Sustains Coca-Cola's Dilution Claim Against "Conceal-Carry Registered Handgun" Stylized Mark

Genericness

• TTAB Sustains Opposition to Apple's "LIVE PHOTOS," Finding it Generic or Merely Descriptive
• TTAB Affirms Refusal to Register Canned Fish Packaging on the Supplemental Register: Functional and Generic
• TTAB Affirms Genericness Refusal of PICKLESHOT for .... Guess What?
• Precedential No. 15: On Remand, TTAB Reverses COOKINPELLETS.COM Genericness Ruling, But Affirms Mere Descriptiveness and Lack of Acquired Distinctiveness
• North Carolina District Court Finds PRETZEL CRISPS Generic, Orders Cancellation of Registration
• TTABlog Test: Is "SWISS MILITARY" Generic for Watches of Swiss Origin?
• TTAB Finds DENVER MIX Generic for ..... Guess What?
• TTAB Finds ARTESANO Generic for Bread, but if not Generic, Registrable Under Section 2(f)
• TTAB Finds CERTIFIED BISON Generic for . . . . Guess What?

Failure to Function/Specimens of Use/Nonuse:

• TTAB Affirms Failure-to-Function Refusal of NIGGA for Clothing
• Llama Design Mark Fails to Function as a Trademark for Video Game Software, Says TTAB
• "DEHYDRATION RELIEF FAST" Incapable of Functioning as a Trademark for Hydration Solution Products, Says TTAB
• Precedential No. 11: Specimen Webpages Fail the "Display-Associated-With-the Goods" Test, Says TTAB
• TTAB Affirms Refusal of ELECTRONIC PAYMENTS: Providing Independent Sales Reps is Not a Registrable Service
• "INVENTORY IS EVIL" Fails to Funtion as a Trademark for Business Consulting Services, Says TTAB

Prosecution Issues:

• Precedential No. 14: Indefinite Recitation of Services and Failure to Adequately Respond to Information Request Sink SHIFTMAG Application

Procedural Issues:

• TTAB Dismisses MANDALAEVERYWEAR Opposition; Opposer Proved Prior Advertisement But Not Prior Rendering of Services
• Precedential No. 17: TTAB Dismisses ADVENTIST Cancellation Petition Due to Failure to Maintain "Standing"
• Turn Back the Clock! TTAB Designates 2019 COKE ZERO Decision Precedential

CAFC Decisions:

• CAFC Affirms TTAB: FOCUSVISION Confusable With FOCUS for Data Management Software
• CAFC Affirms TTAB: "BLUE INDUSTRY" Not Confusable with, or Dilutive of, "INDUSTRY" for Clothing
• CAFC Upholds TTAB: Affirms Order for Cancellation of MOBILEBLACKBOX Registration for Audio Speakers on the Ground of Nonuse

Recommended Reading:

• Recommended Reading: Zerounian and Thiele, "An Introduction to the Trademark Moderization Act"
• Recommended Reading: "The Role of Consumer Uncertainty in Trademark Law: An Experimental and Theoretical Investigation"
• Schwimmer and Welch: "Where to appeal a TTAB decision? The choice is complicated"
• Recommended Reading: Prof. Lorelei Ritchie, "What is 'Likely to be Confusing' About Trademark Law: Reconsidering the Disparity Between Registration and Use"

Other:

• TTAB Posts June 2021 (Video) Oral Hearing Schedule
• USPTO Issues Notice of Proposed Rulemaking to Implement Provisions of the Trademark Modernization Act of 2020, Plans Two Roundtables
• INTA Pro Bono Legal Clinic (Virtual): June 15th, 11AM to 12PM
• California Lawyers Association Webinar June 15: "Trademark Cases To Remember From A Year To Forget"
• TTAB Posts May 2021 (Video) Oral Hearing Schedule
• IP Talk, Episode 2: "Keeping Tabs on the TTAB." The TTABlogger Speaks!
• TTAB Posts April 2021 (Virtual) Hearing Schedule

Text Copyright John L. Welch 2021.

TTABlog Quarterly Index: January - March 2021

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 TTABlog on Twitter: @TTABlog.

Section 2(a) - Deceptiveness:

• Precedential No. 2: "BURNS NIGHT" Whiskey Opposition Survives Rule 12(b)(6) Motion to Dismiss
• TTABlog Test: Is CAVIAR & CASHMERE Deceptive for Skin Care Products? [Yes}

Section 2(a) - False Suggestion of a Connection:

• Precedential No. 1: TTAB Dismisses Olympic Committee's Section 2(a) False Connection Opposition to PIERRE DE COUBERTIN for Various Goods

Section 2(d) - Likelihood of Confusion:

• TTAB Rejects Fraud Counterclaim, Finds ZOOMPAY Confusable With XOOM for Electronic Payment Services
• TTABlog Test: Is LOGGERHEAD DISTILLERY for Distilled Spirits and Distillery Services Confusable With LOGGERHEAD LANDING for Restaurant and Bar Services? [Yes]
• TTABlog Test: Are Live Plants Related to Fresh Vegetables for Section 2(d) Purposes? [Yes]
• TTAB Affirms Bifusal of Design Mark for Training Services: Faulty Specimens and Likelihood of Confusion with "KF" Mark
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• TTABlog Test: Are These Two Design Marks Confusingly Similar for Overlapping Clothing Items?
• TTABlog Test: Which of These Section 2(d) Refusals Was/Were Reversed?
• TTABlog Test: Is MS. INTERNATIONAL Confusable With MISS INTERNATIONAL for Beauty Pageant Services? [No]
• TTABlog Test: Is QUERCUS COFFEE for Coffee Confusable With QUERCUS for Wine? [Yes]/a>
• TTABlog Test: Is BEENDER Confusable With TINDER for Dating App Software? [Yes]
• TTABlog Test: Is VALLKREE for Electric Bicycles Confusable with VALKYRIE for Motorcycles? [No]
• TTABlog Test: Are Clothing Items Related to Bath and Body Care Products Under Section 2(d)? [Yes]
• TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• TTABlog Test: Is "BLU" for Electronic Toothbrushes Connected to a Mobile App Confusable with "RED BLU" & Design for Toothbrushes? [yes]

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

• TTABlog Test: Is HOSTIING Merely Descriptive of Rental and Lodging Services? [Yes]
• TTABlog Test: Which of These Three Mere Descriptiveness Refusals Was/Were Reversed?
• TTABlog Test: Which One of These Mere Descriptiveness Refusals Was Reversed?
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: How Did These Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Is COMPOSTA (Italian) Merely Descriptive of Compostable Containers? [Yes]
• TTAB Sustains Mere Descriptiveness Opposition to "ENHANCED PUSH-TO-TALK" for Telecommunication Services

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

• TTABlog Test: Is PENNSTATE HEALTH Primarily Geographically Descriptive of Health Care Services? [No]
• TTAB Affirms Geographical Descriptiveness Refusal of RENOAIR for Air Transport Services: Distinctiveness for Model Airplanes Not Transferable

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

• Divided TTAB Panel Affirms Surname Refusal of "INGLIS US & Design" for Firearms
• TTABlog Test: Is CAFFREY Primarily Merely a Surname for Plumbing Products? [Yes]

Section 2(f) - Acquired Distinctiveness

• Rocker Switch Actuator Configurations Lack Acquired Distinctiveness, Says TTAB
• Rejecting Claim of Acquired Distinctiveness, TTAB Affirms Failure-to-Function Refusal of Melissa & Doug's "Red Oval" Background Design

Abandonment:

• QURATE Registrant Fails to Overcome Three-Year Presumption of Abandonment with Proof of Intent to Commence Use, Says TTAB
• Precedential No. 46: Registrant Proves Intent to Resume Use; TTAB Dismisses A.W. SHUCK'S Cancellation Petition

Genericness

• Precedential No. 4: TTAB Deems THE CONSUMER PROTECTION FIRM.COM Generic for Legal Services, but Okays Supplemental Registration for Design Form With Disclaimer
• TTAB Affirms Genericness Refusal of "ECOMANSION" for . . . . . Guess What?
• TTAB Deems Apple's SMART KEYBOARD Generic for .... Guess What?

Failure-to-Function/Improper Specimens:

• TTAB Sees Problems with Applicant's Specimen, Affirms Refusal to Register "20/20 IN 2020" for Optometry Advertising Services
• TTAB Affirms Bifusal of Design Mark for Training Services: Faulty Specimens and Likelihood of Confusion with "KF" Mark
• Precedential No. 5: Sustaining U. Kentucky's Opposition, TTAB Finds that "40-0" Fails to Function as a Trademark for T-Shirts
• TTAB Reverses Failure-to-Function Refusal of "SAY YES TO WHAT’S NEXT" for Clothing and Religious Books
• MAMA BEAR Fails to Function as a Trademark for Clothing, Says TTAB
• "I LOVE YOU SO MUCH" Fails to Function as a Service Mark for Charitable Fundraising Services, Says TTAB

Fraud:

• TTAB Rejects Fraud Counterclaim, Finds ZOOMPAY Confusable With XOOM for Electronic Payment Services
• Precedential No. 7: Denying FRCP 12(b)(6) Motion, TTAB Finds DOCTOR DISABILTY Fraud and Likelihood of Confusion Claims Adequately Pleaded

Illegal Use:

• Applying Stanley Bros., TTAB Affirms Illegality Refusal of CBD2GO for Dietary Supplements Containing CBD

Prosecution Issues:

• Precedential No. 6: Applying Res Judicata, TTAB Again Affirms Mere Descriptiveness Refusal of POWERCOATINGS for Solar Cell Chemicals
• Precedential No. 3: TTAB Rejects Applicant's Express Abandonment of Application "Without Prejudice" After Adverse Final Decision

CAFC Decisions:

• CAFC Affirms TTAB: NORTH 61 Confusable with 66⁰NORTH for Clothing and Clothing Store Services
• CAFC Affirms TTAB: WEIGEL'S KITCHEN & Design Not Confusable With QT KITCHENS & Design

Recommended Reading:

• Recommended Reading: "Fanciful Failures: Keeping Nonsense Marks off the Trademark Register"
• The Trademark Reporter's 2021 "Annual Review of U.S. Trademark Cases"
• Recommended Reading: Professors Farley on Genericness, Boyle and Jenkins on University Brand Bullies

Other:

• SDNY Correctly Applies B&B Hardware In Rejecting Plaintiff Lexington Furniture's TTAB-based Issue Preclusion Argument
• Fourth Circuit Rules That a TTAB Party, After Remand from its CAFC Appeal, May Seek Further Review in District Court
• TTAB Posts March 2021 (Video) Hearing Schedule
• Fourth Circuit Affirms E.D. Virginia, Upholds Apple's Summary Judgment Victory in "IPAD" Case
• Fourth Circuit Returns Long-Running FLANAX Case to E.D. Virginia on Laches, Statute of Limitations, and Tolling Issues
• TTAB Posts February 2021 (Video) Hearing Schedule
• In 2020, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals?
• In 2020, What was the Rate of TTAB Affirmance of Section 2(d) Refusals to Register?
• The Top Ten TTAB Decisions of 2020 (Part II)
• The Top Ten TTAB Decisions of 2020 (Part I)
• TTABlog Quarterly Index: October - December 2020
• TTAB Issued 46 Precedential Rulings in 2020

Text Copyright John L. Welch 2021.