TTABlog Quarterly Index: January - March 2021

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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.