TTABlog Quarterly Index: April 2008 - June 2008

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ICC Berlin
Section 2(a) - False Connection:

• Finding PTO Evidence Inadequate, TTAB Reverses 2(a) and 2(d) Refusals of "HEINEKEN" for Meat Juices
• Precedential No. 23: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing

Section 2(d) - Likelihood of Confusion:

• Affirming 2(d) Refusal of "SMOKEYS HOUSE OF BARBEQUE," TTAB Finds Clothing and Sauce Related to Restaurant Services
• TTAB Affirms 2(d) Refusal Despite Sophistication of Customers for Computer Software and Services
• TTAB FInds "LUZ DE ESTRELLA" and "STARLITE WINERY" Confusingly Similar for Wine
• "SLURP-EZE" for Pet Bowls Confusingly Similar to "SLURPEE" for Frozen Drinks, Says TTAB
• Tip from the TTABlog: Hands Off the Playboy Bunny!
• TTAB Reverses 2(d) Refusal: "GRIP-RITE" for Industrial Gloves Not Confusing With "GRIPRITE" for Shoes and Boots
• Mueller's Bests Barilla in TTAB 2(d) Food-Fight Over "AMERICA'S FAVORITE PASTA"
• TTAB Says "No Way" to "JOSE," Finds it Confusingly Similar to "JOSE CORTEZ" for Tequila
• Finding PTO Evidence Inadequate, TTAB Reverses 2(a) and 2(d) Refusals of "HEINEKEN" for Meat Juices
• PTO Proves Wine and Restaurant Services Related, TTAB Affirms 2(d) Refusal of "BRICKSTONE CELLARS"
• Precedential No. 21: TTAB Finds "LA PEREGRINA" and "THE PILGRIM" Confusingly Similar for Jewelry Per Doctrine of Foreign Equivalents
• "CINQUANTE-CINQ" and "55" Confusingly Similar for Wine, Says TTAB, Equivalently
• Finding No Cultural Significance for "HONEYSUCKLE ROSE," TTAB Affirms 2(d) Refusal over "HONEYSUCKLE" For Clothing
• Precedential No. 18: TTAB Dismisses "SPORTSMAN'S WAREHOUSE" Cancellation Petition, Finding No Likelihood of Confusion and No Fraud
• Precedential No. 17: Finding the Marks Entirely Different, TTAB Grants Judgment on the Pleadings in 2(d) Opposition

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

• Precedential No. 32: Double Entendre Argument Remedies "THE FARMACY" 2(e)(1) Refusal, Says TTAB
• "WWW.BOTMAG.COM ROBOT" Merely Descriptive of Robot Magazines, Says TTAB
• Precedential No. 29: TTAB Affirms 2(e)(1) Refusal of Japanese Term Meaning "Walking" for Footwear
• TTAB Reverses Mere Descriptiveness Refusal of "PETIT-PETITE" for Wine
• "REPTILE SAUSAGE" Merely Descriptive of Food for Reptiles, Says TTAB

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

• Despite Claim that "MERROW" Means "Mermaid," TTAB Affirms 2(e)(4) Surname Refusal
• TTAB Affirms Surname Refusal of "HARRINGTON OAK" for Flooring

Section 2(e)(5) - Functionality:

• TTAB Finds Toilet Plunger Designs De Jure Functional

Abandonment:

• TTAB Cancels "JONATHAN LOGAN" Clothing Registrations: Trade Name Use is not Trademark Use
• Precedential No. 22: Finding Old "LASALLE" Automobile Mark Abandoned, TTAB Dismisses General Motors' Opposition for Lack of Priority

Bona Fide Intent:

• Precedential No. 16: TTAB Sustains Opposition to ITU Application, Applicant Lacked Bona Fide Intent

Failure to Function:

• Precedential No. 31: TTAB Reviews Specimen Brochure, Affirms Failure-to-Function Refusal
• Precedential No. 26: Specimens of Use Display Web Address, Not Service Mark Use
• Precedential No. 20: TTAB Finds Stitching Design on Jean Pockets Merely Ornamental

Fraud:

• Precedential No. 27: Correction of Error in Goods Prior to Publication Creates Rebuttable Presumption of No Fraud, Says TTAB
• Precedential No. 23: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing
• Precedential No. 18: TTAB Dismisses "SPORTSMAN'S WAREHOUSE" Cancellation Petition, Finding No Likelihood of Confusion and No Fraud

Genericness:

• On Summary Judgment, TTAB Finds "BRIDGELOAN.COM" to be Generic for Commercial Lending Services
• TTAB Affirms Genericness Refusal of "BEADCHIP" for .... Guess What?
• Precedential No. 24: TTAB Affirms Genericness Refusal of "BOND-OST" for Cheese
• TTAB Reverses Genericness Refusal of "DIGITAL OILFIELD" for B-to-B E-Commerce Services

Ownership:

• TTAB Summary Judgment: Applicant Admittedly Was Not the Owner of the Mark at Filing

Phantom Mark:

• Precedential No. 25: TTAB Affirms Refusal of Mark Having a Phantom Element

Procedural Issues:

• TTABlog Practice Pointer: Failure to Answer Admission Requests May Be Harmful to Your Application's Health
• Precedential No. 17: Finding the Marks Entirely Different, TTAB Grants Judgment on the Pleadings in 2(d) Opposition

Res Judicata/Collateral Estoppel:

• CAFC Bars Cancellation Petition as Collateral Attack on Prior Federal Court Judgment
• Precedential No. 19: TTAB Grants Summary Judgment Against Applicant Enjoined From Use and Registration of His Mark

Single Artistic Work:

• Precedential No. 33: TTAB Affirms Refusal of "FREEDOM STONE" for Cornerstones as Title of a Single Work

Specimens of Use/Drawing:

• Precedential No. 33: TTAB Affirms Refusal of "FREEDOM STONE" for Cornerstones as Title of a Single Work
• Precedential No. 28: TTAB Finds Drawings OK, But Packing Label Specimen Fails to Show Service Mark Use
• TTAB Overturns PTO Refusal, Finds "LAY'S GET YOUR SMILE ON" to be Unitary Mark

Use in Commerce:

• Precedential No. 30: TTAB Grants Summary Judgment in Opposition Because Applicant Was Contractually Prohibited From Using Subject Mark
• Precedential No. 19: TTAB Grants Summary Judgment Against Applicant Enjoined From Use and Registration of His Mark

CAFC Decisions:

• CAFC Bars Cancellation Petition as Collateral Attack on Prior Federal Court Judgment

Leo Stoller:

• Supreme Court Says Stoller Abused Its Process
• Seventh Circuit Vacates Google's Judgment Against Stoller Companies

Other:

• Thilo C. Agthe Comments on Proposed New Rule 2.85(f)
• PTO Proposes Potpourri of Trademark Rule Changes
• TTAB Posts June 2008 Hearing Schedule
• Could Annual "MEET THE BLOGGERS" Event Lead to World Peace?
• Marty Schwimmer's Trademark Blog Turns Six
• Ten TTABlog Questions About Fraud
• Wednesday in Berlin
• Unfriendly Shores? Recent Developments in U.S. Law May Trouble Foreign Trademark Owners
• TTABlogger Arrives at INTA Berlin
• "MEET THE BLOGGERS IV" Set for May 19th in Berlin
• DC Circuit Rules TTAB Party May Raise New Issues in 21(b) Civil Action for Review
• TTAB Posts May 2008 Hearing Schedule
• Have TTAB Judges Been Appointed Unconstitutionally?
• TTABlogger Receives Refusable Offer From "Patent Trademark Register"
• Guest Comment: Pamela Chestek on the TTAB's Bose v. Hexawave Ruling re "Use in Commerce"
• PTO Proposes Rule Changes Regarding Express Mail and Certificate of Mailing Filings
• TTAB Posts April 2008 Hearing Schedule

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Text and last two photographs copyright John L. Welch 2008.