TTAB Issued 66 Precedential Decisions in 2007 (Make That 67!)

The TTAB issued 66 precedential decision in calendar 2007, topping last year's total by nine. Set out below is a compilation of those precedential rulings, categorized according to subject matter. [The accompanying photographs were taken in the vicinity of my office; they are not meant as commentary on the Board or its decisions, precedential or otherwise.] [TTABlog explanatory note: the 67th decision came to my attention in February 2008, necessitating a revision of the heading to this posting].


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. 58: TTAB Affirms Disclaimer Requirement of "TOGGS" and 2(d) Refusal of "ZOGGS TOGGS" over "TOG & Design" for Swimsuits
• Precedential No. 54: TTAB Finds "VTUNES.NET" Confusingly Similar to Famous "ITUNES" Mark, Enters Judgment Summarily
• Precedential No. 48: Based on Third-Party Registrations, TTAB Finds Banking and Real Estate Brokerage to be Related
• Precedential No. 45: TTAB Finds "DR. AIR" Confusingly Similar to "DR. SCHOLL'S" and "AIR-PILLO" in Combination
• Precedential No. 36: TTAB Finds Paper Towel Designs Confusingly Similar, Sustains 2(d) Opposition
• Precedential No. 34: Section 2(d) Opposer Fails to Prove Priority as TTAB Rejects Analogous Use Argument
• Precedential No. 31: TTAB Finds "RATED R SPORTSWEAR" Confusingly Similar to the Famous "RATED R" Movie Certification Mark
• Precedential No. 29: TTAB Finds "ASSOCIATION OF THE UNITED STATES ARMY" Logo Confusingly Similar to "U.S. ARMY" Logo, Sustains 2(d) Refusal
• Precedential No. 28: "CLUB PALMS MVP" Confusingly Similar to "MVP" for Casino Services, TTAB Rules
• Precedential No. 27: Board Finds Family of "HOG" Marks, Sustains 2(d) Opposition to "DIRT HAWG" and "WATER HAWG" for Wet and Dry Vacuums
• 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
• 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
• 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"
• Precedential No. 7: "BARBARA'S" Bests "BARB'S BUNS BAKERY, INC." in TTAB 2(d) Bake-Off
• Precedential No. 5: TTAB Reverses 2(d) Refusal Due to Weakness of Marks and Differences in Goods
• 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

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

• Precedential No. 58: TTAB Affirms Disclaimer Requirement of "TOGGS" and 2(d) Refusal of "ZOGGS TOGGS" over "TOG & Design" for Swimsuits
• Precedential No. 9: TTAB Says "Hail, No" to "CAESAR!CAESAR!" for Salad Dressings
• Precedential No. 3: TTAB Finds “THEATL” Merely Descriptive of Publications About Atlanta

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:

• Precedential No. 50: Section 2(f) Grandfather Clause Does Not Shield Geographically Deceptive Mark from Section 2(a) Refusal
• Precedential No. 8: TTAB Finds "YBOR GOLD" Primarily Geographically Deceptively Misdescriptive of Cigars

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

• 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
• Precedential No. 56: TTAB Reverses Surname Refusal of "BAIK" for Vodka
• Precedential No. 24: TTAB Rejects Historical Figure Contention, Affirms Surname Refusal of "WATSON"

Section 2(f)- Acquired Distinctiveness:

• Precedential No. 65: Parties Stipulate to Record, TTAB Finds "ULTIMATE POLO" Lacking in Acquired Distinctiveness for Shirts
• Precedential No. 39: Proof of Acquired Distinctiveness Falls Short for "ALPINE SPRING WATER"
• Precedential No. 26: TTAB Finds Certification Mark Specimens Adequate, but "CRNA" Lacking in Acquired Distinctiveness
• Precedential No. 12: Kellogg Fails to Rebut 2(f) Claim in "CINNAMON TOAST CRUNCH" Opposition

Declaration/Oath:

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

Dilution:

• Precedential No. 35: GULP! 7-11 Loses 2(d)/Dilution Opposition to "GULPY" for Animal Water Dishes

Fraud/Nonuse:

• Precedential No. 55: Wine Not? TTAB Gives Registrant a Break, Denies Fraud Claim
• Precedential No. 41: Service Mark Application with False Use Claim is Void ab initio
• Precedential No. 30: Registrant's Misunderstanding No Excuse, TTAB Finds Fraud and Cancels "ELLE BELLE" Registration for Clothing
• Precedential No. 6: TTAB Finds Fraud, Grants Summary Judgment in "THE SIGN" Opposition

Functionality:

• Precedential No. 57: TTAB Finds the Color Purple to be Functional for Sandpaper

Genericness:

• Precedential No. 33: "DORSAL NIGHT SPLINT" Generic For Orthopedic Splints Worn at Night, Says TTAB
• Precedential No. 32: "LENS" Generic for Internet Sale of Contact Lenses, Says TTAB

Goods in Trade:

• Precedential No. 52: TTAB Affirms Refusal of Product Configuration Mark for Boxes as Mere Packaging and Not Goods in Trade

Identification of Goods:

• Precedential No. 63: "Park Trailers" Sufficiently Definite for Identification of Goods
• Precedential No. 49: TTAB Reverses Indefiniteness Refusal, Affirms 2(d) Refusal of "PAPER DOLL PROMOTIONS" for Custom Costumes

Laches/Estoppel/Acquiescence:

• Precedential No. 47: TTAB Dismisses Cancellation Petition on Laches and Acquiescence Grounds
• Precedential No. 37: Cancellation Respondent's Laches Claim Survives Section 8 Cancellation of its Registration
• Precedential No. 25: Is IZZY'S Cancellation Petition Barred By Laches? It Isn't, Says TTAB

Ownership:

• Precedential No. 43: TTAB Cancels Registration on the Ground of Non-ownership

Procedural Matters:

• Lost and Found: 2007 TTAB Precedential Decision Rejects Belated Supplemental Discovery Responses
• Precedential No. 67 (2007): Finding Two-Days' Notice Insufficient, TTAB Strikes Opposer's Testimony and Dismisses Opposition
• 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
• Precedential No. 53: TTAB Strikes "Wayback Machine" Evidence, Enters Summary Judgment Okaying Amendment of "AQUA STOP" Registration
• Precedential No. 44: TTAB Says Wikipedia Evidence is Admissible, but Should Be Corroborated
• Precedential No. 42: TTAB Lets Respondent off the Hook, Accepts Late-Served Admission Responses
• Precedential No. 40: Petition to Cancel Registration on Ground that Portion of Mark is Generic is Time-Barred by Section 14(3)
• Precedential No. 38: TTAB Dismisses Cancellation Petitioner's Inadequately Pleaded Section 14(3) "Misrepresentation of Source" Claim
• Precedential No. 18: TTAB Interlocutory Ruling Re Amendment of Opposed Application

Specimen of Use/Mutilation:

• Precedential No. 53: TTAB Strikes "Wayback Machine" Evidence, Enters Summary Judgment Okaying Amendment of "AQUA STOP" Registration
• Precedential No. 51: TTAB Affirms Rejection of Specimen of Use and 2(d) Refusal of "CORAZON BY CHICA" for Jewelry
• Precedential No. 46: Following Dell, TTAB Says Website Printouts Suffice as Trademark Specimens
• Precedential No. 26: TTAB Finds Certification Mark Specimens Adequate, but "CRNA" Lacking in Acquired Distinctiveness
• Precedential No. 17: TTAB Reverses Another Mutilation Refusal
• Precedential No. 15: "CONDOMTOY CONDOM" Fails TTAB Specimen Test

Text and photographs Copyright John L. Welch 2007-08.