TTABlog Quarterly Index: October - December 2006

Well, that was a pretty dull quarter, wasn't it? Okay, the new dilution act was signed and three new TTAB judges were appointed, but other than that? Things should pick up early in the new year, when the TTAB announces its Rule changes. The proposed Rules were roundly criticized, so it will be interesting to see what the final Rules look like and how the trademark bar responds. On a personal note, I will co-host the INTA Roundable in January at Lowrie, Lando in Cambridge, will discuss the new TTAB Rules at a Boston Bar Association luncheon in February, and will be speaking at the John Marshall Law School Intellectual Property Law Conference in Chicago in late February.


Section 2(d): likelihood of confusion:

• Finding Spa Services and Beauty Products Related, TTAB Affirms 2(d) Refusal of "LOVEJOY"
• CAFC Affirms TTAB "GOLD SEAL" Laches Decision
• Citable No. 51: TTAB Upholds 2(d) Refusal of "PSYCHO" for Clothing, But Overturns Mutilation Refusal
• Citable No. 50: "GENUINE RIDE SKIN CARE" & Design Not Confusingly Similar to "GENUINE SKIN," Says TTAB
• Fame of "HOT WHEELS" Fuels TTAB 2(d) Victory Over "HotToyz" Trademark
• Finding Fishing and Climbing Gear Related, TTAB Affirms 2(d) Refusal of "METOLIUS"
• Weakness of "SMART CHOICE" Formative Leads to TTAB Reversal of 2(d) Refusals
• Black Dog Tavern Triumphs in TTAB 2(d) Opposition Dogfight
• Citable No. 48: "RAD RIGS" and "RAD RODS" Confusingly Similar for Toy Vehicles, Says TTAB
• TTAB Affirms 2(d) Refusal of "VOODOO TIKI" for Tequila
• TTAB Finds "GOYA" and "GAYO MOUNTAIN COFFEE" Confusingly Similar for Coffee
• Zone of Natural Expansion for "WAVE" Marks Brings Victory in "WAVETRACE" 2(d) Opposition
• TTAB Finds "GOLD ACCOUNT" and "CITIZENS CIRCLE GOLD ACCOUNT" Not Confusingly Similar
• Sid Terror Punked by Bobby Steele in "THE UNDEAD" TTAB Priority Clash
• TTAB Sustains "HARRY POTHEAD" Opposition on Confusion and Dilution Grounds

Section 2(e)(1) - mere descriptiveness:

• TTAB Affirms Mere Descriptiveness Refusal of "FABLESS SOFTWARE COMPANY"
• TTAB Deems "SMART SENSOR" Merely Descriptive of Interactive Toys
• "THE HOME DIGITAL JUKEBOX" Merely Descriptive, Says TTAB
• "PROGRAMMED PROTEIN" Merely Descriptive of DNA Research Services, Says TTAB
• Citable No. 49: TTAB Upholds Disclaimer Requirement of "ROUGE" in "GALA ROUGE" for Wine
• "GAMESTUDIO" Not Merely Descriptive of On-Line Game, Says TTAB
• TTAB Finds "PHYSICIAN ENDORSED" Merely Descriptive of Sunglasses, Hats, and Caps
• PTO Denies Reconsideration Request Re "THE TTABLOG." Appeal Filed

Section 2(e)(2) - primarily geographically descriptive:

• TTAB Squashes "NEW YORK CURRANTS," Finding It Primarily Geographically Descriptive

Section 2(e)(3) - primarily geographically deceptively misdescriptive:

• Citable No. 53: TTAB Deals "VEGAS" Playing Card Applicant Winning Hand in 2(a), 2(e)(2), and 2(e)(3) Opposition

Section 2(e)(4) - primarily merely a surname:

• TTAB Affirms 2(e)(4) Surname Refusals of "ABANTE" and "RUXTON PHARMACEUTICALS"
• "DR. BRANDT" Primarily Merely a Surname for Skin Care Products, Says TTAB
• TTAB Rules "CHISHOLM" Primarily Merely a Surname for Smokeless Tobacco

Genericness:

• Citable No. 54: "ESERVER" Generic for Computer Network Products, Says TTAB
• Citable No. 52: TTAB Finds "OUTDOOR PRODUCTS" Generic for ... Guess What?
• TTAB Reverses Genericness Refusal of "AVENA" for ... Guess What?
• TTAB Finds "PERMANENT BALLOON PUMP" Generic for ... Guess What?
• "CERTIFIED THERAPEUTIC RECREATION SPECIALIST" Not Generic, Says TTAB
• TTAB Finds "THE PRODUCT DEVELOPMENT COMPANY" Generic for Services But Not for Software
• CAFC Affirms TTAB Ruling that Plant Varietal Names are Generic and Unregistrable
• "HOTELS.COM" Generic for Temporary Lodging Reservation Services, Says TTAB

Specimens of Use/Mutilation:

• TTAB Affirms Service Mark Refusal: Specimen Failed to Show Service Mark Use
• Citable No. 51: TTAB Upholds 2(d) Refusal of "PSYCHO" for Clothing, But Overturns Mutilation Refusal
• Citable No. 46: TTAB Reverses Mutilation Refusal (Again)

Procedural Issues:

• TTAB Remands "COCAINE" Energy Drink Application to Examining Attorney
• TTAB Snuffs Out "CAZADORES" 2(d) and Descriptiveness Opposition for Failure to State Proper Claims
• Opposer's Failure to Introduce Evidence Leads to TTAB Dismissal of "PEACH BUNS" Opposition
• Citable No. 47: TTAB Sets Aside Cancellation Default Judgment for Lack of Service on Respondent
• CAFC Okays TTAB's Exclusion of Two Registrations Improperly Submitted, Affirms Opposition Dismissal
• US District Court Dismisses Cancellation Respondent's DJ Action: No Justiciable Controversy

CAFC decisions:

• CAFC Affirms TTAB "GOLD SEAL" Laches Decision
• CAFC Affirms TTAB Ruling that Plant Varietal Names are Generic and Unregistrable
• Stoller Wins One: CAFC Reverses TTAB's "STEALTH" Lawn Mower Decision
• CAFC Okays TTAB's Exclusion of Two Registrations Improperly Submitted, Affirms Opposition Dismissal
• CAFC Lacks Jurisdiction, Dismisses Stoller Appeal from PTO Sanctions Order

Leo Stoller:

• Stoller Trustee Consents to Dismissal of "GOOGLE" Cancellation, With Prejudice
• TTAB Denies Stoller Motion to Block Trustee's Stipulated Dismissal of STEALTH Opposition
• Stoller Bankruptcy Trustee Willing to Dismiss Pending Proceedings
• Stoller Wins One: CAFC Reverses TTAB's "STEALTH" Lawn Mower Decision
• Stoller Bankruptcy Judge Issues Findings and Conclusions
• CAFC Lacks Jurisdiction, Dismisses Stoller Appeal from PTO Sanctions Order
• Chicago Federal Court Orders Cancellation of 35 Stoller "STEALTH" Registrations

Recommended Reading:

• More Recommended Reading: Prof. Beebe's Empirical Study of the Multifactor Likelihood of Confusion Test(s)
• Recommended Reading: The Protection of Sound Marks
• Recommended Reading: Prof. Barton Beebe on the Trademark Dilution Revision Act
• TTABlog Special Report: "The TTAB and Foreign Website Evidence: Quo Vadis?"

Other:

• USPTO Issues Annual Report for FY 2006
• Google Introduces New Patent Search Engine
• PTO Plans Modifications to Design Search Codes
• TTAB Posts December Hearing Schedule
• PTO Issues Notice Re TARR Publication Date Errors
• Three New Judges Appointed to TTAB as TTABlog Celebrates 2nd Anniversary
• TTABlog Adds Second Google Search Box, Suggested by DDIP Blogger
• TTAB Posts November Hearing Schedule
• TTABlogger On The Move: Bound For Cambridge, MA
• Two Weeks Away! BPLA "Trademark Year in Review"
• President Bush Signs Trademark Dilution Revision Act into Law
• District Court Skewers PTO, Grants Summary Judgment in "THE LAST BEST PLACE" Lawsuit
• TTAB Posts Hearing Schedule for October 2006
• TTABlog Looks Ahead: You're On Notice!

Text and photographs ©John L. Welch 2006.