TTABlog Quarterly Index: January - March 2007

Well, there goes another quarter down the drain. The Board pumped out about two dozen precedential decisions during the quarter, which suggests that it will issue nearly 100 precedentials this year. That is more than the number issued in the past three years combined. Perhaps the most interesting decision was Hurley v. Volta on the issue of fraud, for the reasons set out here. The worst decision? GREEN BRANCH not merely descriptive for banking services. The most exciting development? The availability of e-mail subscriptions to the TTABlog. Just enter your e-mail address in the box on the right to receive a daily update.

Kendall Generating PlantCambridge, MA

Section 2(a) - Suggesting a False Connection:

• Precedential No. 22: TTAB Cancels Registration of "MARC CHAGALL" for Vodka, under Section 2(a)

Section 2(d) - Likelihood of Confusion:

• Precedential No. 23: Nike Blocks WNBA's Shot at Registration of "S and Star Design"
• Precedential No. 21: LEADING JEWELERS Bests JEWELERS GUILD in TTAB 2(d) Tussle
• Addition of Applicant's House Mark to Registered Mark Avoids Confusion with Latter, Says TTAB
• Third-Party Registrations Insufficient to Prove Clothing and Restaurant Services Related, Says TTAB
• Differences in Marks Inspire TTAB to Grant Summary Judgment in 2(d) Opposition
• Precedential No. 20: Chicago Bears Rebound, De-Claw "12th BEAR" in 2(d) Opposition
• Precedential No. 19: TTAB Finds "BODYMAN" Cartoon Mark Not Confusingly Similar to "BOD MAN" for Men's Fragrances
• Precedential No. 16: "BHD & Design" for Clothing Confusingly Similar to Famous "BVD" Mark, Says TTAB
• Precedential No. 14: Strength of "PROQUEST" Mark Leads to Conquest of "INQUEST" in 2(d) Opposition
• Precedential No. 13: Peruvian Owner of "PARDO'S CHICKEN" Invokes Pan American Convention to Establish Priority in 2(d) Opposition
• TTAB Grapples with "MONSTER" Marks in Massive Consolidated 2(d) Proceeding
• Precedential No. 11: TTAB Finds "ARDENBEAUTY" for Cosmetics Confusingly Similar to "ARDEN B" for Clothing
• Precedential No. 10: TTAB Sustains Opposition of "MISS UNIVERSE" to "MR. GAY UNIVERSE"
• Dentist Drills Holes in PTO's 2(d) Refusal of "SMILEWATER" for Dental Mineral Water
• Precedential No. 7: "BARBARA'S" Bests "BARB'S BUNS BAKERY, INC." in TTAB 2(d) Bake-Off
• "QUAKER COFFEE" Fights Its Way to TTAB 2(d) Reversal
• Precedential No. 5: TTAB Reverses 2(d) Refusal Due to Weakness of Marks and Differences in Goods
• 7-Eleven Craps Out in TTAB 2(d) Opposition to "CLASSIC SELECTIONS" for Frozen Entrees
• Precedential No. 4: Petitioner's Prior Use Analogous to Trademark Use Leads to TTAB Cancellation of "THE CRAFTSMAN ALS IK KAN" Registrations
• Precedential No. 2: Finding Door Hardware and Toilets Related, TTAB cancels “DEVONSHIRE” Registration
• Citable No. 1: Finding Hotels and Casinos Related, TTAB Grants 2(d) Summary Judgment in "CABANA BAR" Case
• CAFC Reverses TTAB's "First Niagara" Ruling re Use Required to Support 2(d) Opposition
• Unsatisfied by Applicant's Half-Baked Arguments, TTAB Affirms 2(d) Refusal of "TIRAMISU BY ISABELLA"
• TTAB Waves Good-bye to "COLOR WAVE" in Colorless 2(d) Appeal

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

• "SHAREMUSIC" Not Merely Descriptive of Audio Equipment, Says TTAB
• Precedential No. 9: TTAB Says "Hail, No" to "CAESAR!CAESAR!" for Salad Dressings
• "IPHARMACIST" Not Merely Descriptive of PDA Software, Says TTAB
• Out on a Limb? TTAB Says "GREEN BRANCH" Not Merely Descriptive of Banking Services
• Precedential No. 3: TTAB Finds “THEATL” Merely Descriptive of Publications About Atlanta
• Citable No. 57: "ARMED ANTIBODIES" Merely Descriptive of Biopharmaceutical Goods and Services, Says TTAB

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

• TTAB Affirms 2(e)(2) Refusal of "CONFERENCE AMERICA" as Geographically Descriptive

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

• Precedential No. 8: TTAB Finds "YBOR GOLD" Primarily Geographically Deceptively Misdescriptive of Cigars

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

• Precedential No. 24: TTAB Rejects Historical Figure Contention, Affirms Surname Refusal of "WATSON"
• Elves Lose Appeal: TTAB Affirms Surname Refusal of "KEEBLER" for Snacks

Section 2(e)(5) - Functionality:

• TTAB Affirms Eight Functionality Refusals for Elevator Roller Guide Configurations
• TTAB Affirms Refusals to Register the Reversing Motion of a Watchcase

Kendall Boiler and Tank Co.
Section 2(f)- Acquired Distinctiveness:

• Precedential No. 12: Kellogg Fails to Rebut 2(f) Claim in "CINNAMON TOAST CRUNCH" Opposition
• Citable No. 55: Baldwin Key Head Shape Has Acquired Distinctiveness, Says TTAB

Capability of Functioning as Mark:

• TTAB Finds "DPOF" Capable of Functioning as a Trademark for Digital Cameras

Fraud/Nonuse:

• TTABlog Special Report: Some Comments on Fraud after Hurley v. Volta
• "KRAUSE" Application Void for Non-Use, But Opposer's Fraud Claim Fails
• Precedential No. 6: TTAB Finds Fraud, Grants Summary Judgment in "THE SIGN" Opposition

Procedural Matters:

• Precedential No. 18: TTAB Interlocutory Ruling Re Amendment of Opposed Application
• TTAB Issues Notice Re Citation of Its Decisions, Both Precedential and Non-Precedential
• Citable No. 56: TTAB Refuses to Review Procedural Propriety of PTO's Belated 2(d) Refusal

Specimen of Use/Mutilation:

• Precedential No. 17: TTAB Reverses Another Mutilation Refusal
• Precedential No. 15: "CONDOMTOY CONDOM" Fails TTAB Specimen Test
• Applicant Hits Appellate Jackpot: Convinces TTAB that an Arcade Game is a Slot Machine

Lechmere MBTA Station
CAFC Decisions:

• CAFC Affirms TTAB Denial of Motion to Re-open and Dismissal of Counterclaim in "FIRSTCAROLINACARE" Opposition
• CAFC Affirms TTAB's Res Judicata Ruling re Functionality of Bose Speaker Design
• CAFC Reverses TTAB's "First Niagara" Ruling re Use Required to Support 2(d) Opposition

Leo Stoller:

• USPTO Receives Court Order to Cancel 34 "STEALTH" Registrations Owned by Stoller's Company
• Chicago Judge Enters Permanent Injunction in Google RICO Action Against Stoller Companies
• Google Sues Leo Stoller's Companies for RICO violations

Other:

• TTAB Posts April 2007 Hearing Schedule
• TTABlog Special Report: Some Comments on Fraud after Hurley v. Volta
• USPTO Will Remove Paper Collection of Registered Word Marks
• TTAB Sets March 2007 Hearing Schedule
• PTO Proposes Shortened Time Period for Filing Reconsideration Requests
• TTABlog On Tour: John Marshall IP Law Conference - February 23rd
• TTAB Posts Hearing Schedule for February 2007
• The Ten Worst TTAB Decisions of 2006? [Part 2 of 2]
• The Ten Worst TTAB Decisions of 2006? [Part 1 of 2]
• The Top Ten TTAB Decisions of 2006® [Part 2 of 2]
• The Top Ten TTAB Decisions of 2006® [Part 1 of 2]
• TTABlog Report: TTAB Issued 57 Citable Decisions in 2006
• TTAB Posts January 2007 Hearing Schedule

Text and photographs Copyright John L. Welch 2007.