TTABlog Quarterly Index: October - December 2007

This past quarter saw many of the TTAB Rule changes go into effect, although reportedly the first discovery conference with Board participation will not occur until January 2008. The flow of decisions from the TTAB seemed to slow in the fourth quarter, perhaps because the Board was focusing on getting ready for implementation of the new Rules package. As of this writing, the tally for precedential decisions is at 65, which exceeds the last calendar year but is perhaps fewer than expected. Accompanying the listing are photos from my November trip to New Mexico, where we were treated to warm weather and lots of sunshine.

the Rio Grande(click on photo for larger picture)
Section 2(a) - Deceptiveness:

• TTAB Affirms Refusal of "ECODOWN" for Pillows Under 2(a), 2(d), and 2(e)(1)

Section 2(a) - Immoral or Scandalous:

• Randazza Returns: His Thoughts on the TTAB's "CUMBRELLA" Section 2(a) Reversal

Section 2(d) - Likelihood of Confusion:

• TTAB Dismisses 2(d) "INSPIRATION" Opposition: Marks Dissimilar, Goods/Services Unrelated
• "B.V.D." and "DVD EMPIRE" Confusingly Similar for Clothing? No Way!
• TTAB Affirms Refusal of "ECODOWN" for Pillows Under 2(a), 2(d), and 2(e)(1)
• "PECORA NERA" and "BLACK SHEEP" Confusingly Similar for Clothing, Says TTAB
• TTAB Dismisses "SPAM ARREST" Cancellation Petition
• TTAB Finds "QUESTIONARY" and "PICTIONARY" Confusingly Similar for Board Games
• Bose Wins 2(d) "WAVE" Opposition Despite Losing One Registration to Applicant's Fraud Claim
• "MONSTER" Mistake: 2(d) Opposer Fails to Get Registrations Into Record, Loses on Priority
• "SPRITE QUENCH" Not Confusingly Similar to "QUENCH" for Beverages, Says TTAB
• Finding Cheese and Olives Related, TTAB Affirms 2(d) Refusal of "NAPOLEON BRIE"
• New York Fails to Prove Standing and Priority, TTAB Dismisses "I ♥ NY" Opposition to "I ♥ SB"
• TTAB Finds "THE CHIPPER TRAVEL SERIES" and "CHIPPER CHAT" Confusingly Similar for Children's Recordings and Board Games
• TTAB Dismisses "VTECH" 2(d) Opposition for Failure to Show Relatedness of Semiconductor Seminars and Electronic Devices
• Opposer Fails to Prove Water and Wine Related; TTAB Dismisses 2(d) Opposition

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

• TTAB Affirms Refusal of "ECODOWN" for Pillows Under 2(a), 2(d), and 2(e)(1)

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

• TTAB Says "CLASSIC COLLECTION" Not Merely Descriptive of Cigars
• TTAB Affirms Mere Descriptiveness Refusal of "AUTOSTITCH" for Photography Software and Services
• TTAB Affirms Mere Descriptiveness Refusal of "E-WEAR" for Audio Devices
• TTAB Affirms Descriptiveness Refusal of "METABOLIC BALANCE" in Six Classes
• TTAB Reverses Descriptiveness Refusal of "YAK SAK" for Barf Bags: Double Entendre Argument Prevails

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

• Precedential No. 66: TTAB Finds "YOSEMITE BEER" Geographically Descriptive, Affirms 2(e)(2) Refusal

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

• TTAB Affirms 2(e)(3) Refusal of "FRENCH & FLIRTY" as Primarily Geographically Deceptively Misdescriptive of Lingerie

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

• TTAB Affirms 2(e)(4) Surname Refusal of "MARRIOTT" for Charitable Services; Judge Seeherman Concurs
• Precedential No. 62: TTAB Affirms Surname Refusal of "VOSE & SONS" for Pianos
• Precedential No. 60: "J. J. YELEY" Not Primarily Merely A Surname, Says TTAB

Section 2(f) - Acquired Distinctiveness:

• Reversing Disclaimer Requirements, TTAB Finds "STEELBUILDING.COM" Has Acquired Distinctiveness for On-Line Building Sales
• Precedential No. 65: Parties Stipulate to Record, TTAB Finds "ULTIMATE POLO" Lacking in Acquired Distinctiveness for Shirts

Declaration/Oath:

• Precedential No. 59: Declaration Must be Signed by Declarant

Dilution:

• TTAB Dismisses "SPAM ARREST" Cancellation Petition

Failure to Function

• TTAB Affirms Refusal to Register Toilet Symbol for Nurse-Call Device: Fails to Function as a Trademark

Cane Cholla Cactus(click on photo for larger picture)
Fraud:

• Bose Wins 2(d) "WAVE" Opposition Despite Losing One Registration to Applicant's Fraud Claim

Genericness:

• TTAB Reverses Genericness Refusal of "PAYCLERK" for Payroll Services
• "THE TRADEMARK GROUP" Generic for Trademark Services, Says TTAB

Identification of Goods:

• Precedential No. 63: "Park Trailers" Sufficiently Definite for Identification of Goods

Ownership of Mark:

• Foreign Manufacturer, Not US Distributor, Owns "NITRO" Marks for Helmets, Says TTAB
• Distributor, Not Manufacturer, Owns "VISAGRAPH" Mark, Says TTAB

Procedural Matters:

• Precedential No. 65: Parties Stipulate to Record, TTAB Finds "ULTIMATE POLO" Lacking in Acquired Distinctiveness for Shirts
• Precedential No. 64: TTAB Finds Opposer's 2(d) and Lack of Bona Fide Intent Claims to be Adequately Pled
• Precedential No. 61: TTAB Finds Six-Days Notice of Testimony Deposition to be Reasonable

Specimen of Use/Mutilation:

• TTAB Affirms Refusal to Allow Amendment of "SILENT FIREMAN" to "YOUR SILENT FIREMAN"
• TTAB Says Amendment of Mark from "BARMACHÉ" to "BARMARCHÉ" is Material Alteration

near Madrid(click on photo for larger picture)
Leo Stoller:

• Return of the "Leo Stoller" Blog
• Where Has Leo Stoller Gone?
• TTABlog Report: Leo Stoller 2007 Update

Recommended Reading:

• Recommended Reading: "An Introduction to the New Trademark Trial and Appeal Board Rules"
• Recommended Reading: Scot Duvall on the The Trademark Dilution Revision Act of 2006
• Recommended Reading: Ted Davis on "Trade Dress Protection for Product Designs"
• TTABlog Special Report: TTAB 2007 Update

Other:

• New York Court of Appeals Says Yes and No to "Famous Marks" Doctrine
• USPTO Issues Annual Report for Fiscal 2007
• TTAB Posts December 2007 Hearing Schedule
• Commissioner Beresford Reviews Pending PTO Rulemaking Matters
• TTABlog Special Report: TTAB 2007 Update
• Proposed PTO Rule Change Would Require Description of All Non-Standard Character Marks
• TTABlog Celebrates Third Anniversary
• TTAB Begins Issuing "Institution Orders" Under New Rules
• TTAB Posts November 2007 Hearing Schedule
• TTABlogger to Speak at IPO's PTO Day: December 3rd
• Sample TTAB Timetable For Inter Partes Proceeding Under the New Rules
• 4th Circuit Reverses "THE LAST BEST PLACE" District Court Decision, Vindicates PTO
• Latest Roster of TTAB Judges
• TTAB Comes to Boston (October 26th): Revised Agenda
• 9th Circuit Rules that Primary Jurisdiction Doctrine Does Not Apply to TTAB Proceedings
• TMEP 5th Edition Now Available
• Reminder: The TTAB Comes to Boston on Friday, October 26, 2007
  
• TTAB Posts October 2007 Hearing Schedule

Text and photographs Copyright John L. Welch 2007.