Thus Far In 2004: 12 Citable TTAB Decisions

Through November 2nd, the TTAB has deemed 12 of its decisions "citable," out of about 536 rulings rendered this year. This fraction (1/45) of citable decisions is the lowest since the turn of the century, despite the clamor of the trademark bar for more precedential TTAB rulings. Moreover, the 12 decisions that have been deemed citable cannot exactly be called monumental.

In the last several years, the Board rendered noteworthy rulings on the issues of fraud, dilution, and trade dress protection, but the year 2004 is shaping up to be considerably less interesting. Perhaps the most significant of this year’s citable cases is In re Dell, in which the Board may be signaling an easing of the standard for trademark specimens when the mark is used in connection with products sold on the Internet.

Here are the 12 citable decision, listed in chronological order. Ten of the 12 have been published in the United States Patents Quarterly.

In re Los Angeles Police Revolver and Athletic Club, Inc., 69 USPQ2d 1630 (TTAB 2004) [Section 2(a) - falsely suggesting a connection]

In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) [Rule 2.61(b) - PTO request for information]

Zimmerman v. National Ass’n of Realtors, 70 USPQ2d 1425 (TTAB 2004) [genericness]

In re Gregory, 70 USPQ2d 1792 (TTAB 2004) [Section 2(e)(4) - primarily merely a surname]

Yahoo! Inc. v. Loufrani, 70 USPQ2d 1735 (TTAB 2004) [Section 13 - timely filing of opposition]

Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301 (TTAB 2004) [laches]

Finger Furniture Co. v. Finger Interests Number One, Ltd., 71 USPQ2d 1287 (Dir. of PTO 2004) [attorney disqualification]

Baseball America, Inc. v. Powerplay Sports, Ltd., 71 USPQ2d 1844 (TTAB 2004) [Section 2(d) - likelihood of confusion]

In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004) [Rule 2.56(b)(1) - trademark specimen of use]

In re Consolidated Specialty Restaurants, Inc., 71 USPQ2d 2004 (TTAB 2004) [Section 2(e)(3) - primarily geographically deceptively misdescriptive]

In re Candy Bouquet Int’l, Inc.¸ S.N. 78058216 (Sept. 8, 2004) [genericness]

In re White, S.N. 78175476 (Sept. 8, 2004) [Section 2(a) - falsely suggesting a connection]