TTABlog Quarterly Index: January 2008 - March 2008

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Section 2(a) - Deceptiveness:

• TTAB Affirms 2(a) Deceptiveness Refusal of "MINK BIKINI" for Minkless Clothing
• Finding "MINK" Deceptive and Deceptively Misdescriptive for Clothing, TTAB Affirms 2(a) and 2(e)(1) Refusals

Section 2(a) - False Connection:

• TTAB Reverses 2(a) Refusal of "L'OREAL PARIS" for Aloe Vera Drinks: PTO Fails to Show False Connection with French Cosmetics Company

Section 2(d) - Likelihood of Confusion:

• TTAB Grants 2(d) Summary Judgment: "MEIER'S" and "MEYER VINEYARD" for Wine Confusingly Similar
• TTAB Finds Design Marks for Motorcycles Confusingly Similar: What Say You?
• Fame Dominates as TTAB Sustains "PLAYBOY" Opposition to "PLAY BODY" for Clothing
• Precedential No. 10: TTAB Sustains "VITAMILK" 2(d) Opposition, Again Rejects a Morehouse Defense
• TTAB Dubiously Finds "SOCK-UM" for a Parlor Game Confusingly Similar to "ROCK'EM SOCK'EM ROBOTS" for Action Games
• TTAB Reverses 2(d) Refusal: "ROYALE" for Camping Trailers Not Confusingly Similar to "ROYAL CARGO" for Cargo Trailers
• TTAB Finds "HERBAL REPUBLIC" and "THE REPUBLIC OF TEA" Confusingly Similar for Tea
• TTAB Dimisses 2(d) Opposition for Lack of Evidence: Opposer's Notice of Reliance Mailed to Wrong PTO Address
• Mesmerized by Fame of "VANITY FAIR" Mark, TTAB Sustains 2(d) Opposition to "VANITY INSANITY" for Clothing
• TTAB Rule of Thumb: Introduce No Evidence, Lose Your Opposition
• TTAB Finds "OLD TIMER" and "OLD TIMERS' HOCKEY CHALLENGE" for Clothing Too Dissimilar, Reverses 2(d) Refusal
• TTAB Finds "FYBY" for Silkscreening Services Confusingly Similar to "FUBU" Clothing Mark
• "LEGSTICK" Confusingly Similar to Famous "L'EGGS" Mark for Hosiery, Says TTAB
• Sophisticated Purchasers, Differences in Financial Services Lead TTAB to Reverse 2(d) Refusal of "BRIDGER CAPITAL" over "BRIDGER COMMERCIAL FUNDING"
• TTAB Rejects Parody Claim; Finds "IVY LEAGRO" Confusingly Similar to Famous "IVY LEAGUE" Marks
• "KIDS INN" and "CHILDREN'S INN" Confusingly Similar, At Least According to the TTAB

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

• TTAB Reverses Mere Descriptiveness Refusal of "THE UNDERWEAR AFFAIR" for Charitable Fundraising Services
• TTAB Affirms Refusal of "FRESHHERBS.COM" for Herbs, Finding Mark Merely Descriptive and Specimen Faulty
• Precedential No. 1: TTAB Reverses Mere Descriptiveness Refusal of "SUGAR No. 11" For Futures Exchange Services and Finds Specimen of Use Acceptable

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

• Finding "MINK" Deceptive and Deceptively Misdescriptive for Clothing, TTAB Affirms 2(a) and 2(e)(1) Refusals

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

• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese
• "AMERICAN MASALA" Geographically Descriptive of Food Products, Says TTAB

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

• Precedential No. 12: TTAB Sustains 2(e)(3) Opposition to "GUANTANAMERA" for Non-Cuban Cigars, Folk Song Notwithstanding
• Precedential No. 6: TTAB Clarifies Doctrine of Equivalents, Affirms 2(e)(3) Refusal of "MOSKOVSKAYA" for Vodka
• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

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

• TTAB Reverses Surname Refusal of "CURLIN" for Medical Devices

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 8: Applicant Fails to Prove Acquired Distinctiveness for Sunglass Frame Product Design
• Finding Acquired Distinctiveness and Substantial Exclusivity Lacking, TTAB Cancels Registration for the Color Gold for Fluorescent Lamps

Disclaimers:

• Deeming "CREATINE-D2T" a Unitary Mark, TTAB Dismisses Opposition Demanding Disclaimer of "CREATINE"

Failure to Function:

• TTAB Rules that Motorola's 911 Hz Chirp Fails to Function as a Trademark for Two-Way Radios

Fraud:

• Precedential No. 13: FRAUD! TTAB Cancels Four Registrations on Summary Judgment: Attorney Signed False Statements of Use
• TTAB Cancels "FEBAL USA" Registrations Obtained Fraudulently for U.S. Distributor

Functionality:

• TTAB Dismisses Opposition to Bottle Shape Trademark: Opposer Failed to Prove Functionality

Genericness:

• Precedential No. 15: TTAB Again Affirms Genericness of "HOTELS.COM" for ... Guess What?
• Precedential No. 11: TTAB Finds "REDUCER" Generic for Flow Meters
• TTAB Affirms Genericness Refusal of "PEPPERMINT BARK" for Candy

Ornamental/Failure to Function:

• TTAB Reverses Ornamental Refusal of Embossed Design on Tire; PTO Fails to Make Prima Facie Case

Ownership of Mark:

• TTAB Cancels "FEBAL USA" Registrations Obtained Fraudulently for U.S. Distributor

Procedural Issues:

• TTABlog Practice Pointer: Include a Certificate of Service When Filing a Notice of Opposition
• Precedential No. 9: TTAB Issues Non-Ultimate Sanctions for Failure To Comply With Board Order Compelling Document Production
• TTABlog Practice Pointer: Not Every Final Refusal Merits an Appeal
• TTAB Dimisses 2(d) Opposition for Lack of Evidence: Opposer's Notice of Reliance Mailed to Wrong PTO Address
• Precedential No. 7: TTAB Dismisses 2(d) and Dilution Opposition for Lack of Evidence and Inadequate Pleading
• Precedential No. 67 (2007): Finding Two-Days' Notice Insufficient, TTAB Strikes Opposer's Testimony and Dismisses Opposition
• Precedential No. 5: TTAB Dismisses Opposition for Opposer's Failure to Serve Prior to Filing
• Precedential No. 3: NFL Thrown for a Loss as TTAB Denies Request to Extend Discovery
• Precedential No. 2: TTAB Issues Sanctions For Discovery Abuses

Rule 2.61(b) - PTO Demand for Information:

• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

Specimens of Use:

• Software is Technology, Says TTAB: About Screen Language Suffices for Specimen of Use
• Precedential No. 14: TTAB Affirms Three Refusals: Website Specimens Fail to Show Trademark Use
• TTAB Affirms Refusal of "FRESHHERBS.COM" for Herbs, Finding Mark Merely Descriptive and Specimen Faulty
• Precedential No. 1: TTAB Reverses Mere Descriptiveness Refusal of "SUGAR No. 11" For Futures Exchange Services and Finds Specimen of Use Acceptable

Leo Stoller:

• He's Back!? Stoller Entity Files Application to Register "STEALTH" in Three Classes

Other:

• Petition for Certiorari Filed by Portuguese Company Rosenruist re 4th Circuit Subpoena Ruling
• USPTO Issues Service Mark Registration for "THE TTABLOG"
• New PTO Rules Require Applicant to Describe Mark if not in Standard Characters
• Guest Article: Carrie Webb Olson on Fraud
• Second Circuit Affirms Summary Judgment Award re Buhkara State Unfair Competition Claim
• TTAB Posts March 2008 Hearing Schedule
• Unfriendly Shores? Recent Developments in U.S. Law May Trouble Foreign Trademark Owners
• TTAB Posts February 2008 Hearing Schedule
• PTO Letters of Protest: Is "CYBERLAW" Registrable?
• The Ten Worst TTAB Decisions of 2007? [Part 2 of 2]
• The Ten Worst TTAB Decisions of 2007? [Part 1 of 2]
• TTABlog Flotsam and Jetsam: Issue No. 11
• The Top Ten TTAB Decisions of 2007® [Part 2 of 2]
• The Top Ten TTAB Decisions of 2007® [Part 1 of 2]
• TTAB Issued 66 Precedential Decisions in 2007 (Make That 67!)
  
• TTABlog Hat Tip: Two Blog Anniversaries
• Fourth Circuit Rules that Foreign Company Must Appear in the USA for TTAB Testimony Pursuant to E.D.Va. Subpoena
• TTAB Posts January 2008 Hearing Schedule