TTABlog Quarterly Index: July - September 2008

Here's the latest quarterly index. Prior indices are available via the links in the right-hand column. The TTABlog will celebrate its fourth anniverary in the next quarter. The very first posting appeared on November 8, 2004, and featured the inimitable Leo Stoller. I think we'll be hearing more about Leo soon, what with his numerous pending CAFC appeals and petitions for certiorari. Oh, and by the way, e-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update from Feedblitz.

Boston Public Garden(click on photo for larger picture)
Section 2(a) - Deceptiveness:

• TTAB Affirms Section 2(e)(1) and 2(a) Refusals of "NEUROBOTICS" for Augmented Surgical Goods and Services
• TTAB Agrees that "BIOSILK" is Deceptive for Clothing

Section 2(a) - Disparagement:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Section 2(a) - False Association:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Section 2(a) - Scandalous:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Section 2(d) - Likelihood of Confusion:

• "HAIR OF THE DOG" and "LES CHEVEUX DU CHIEN" for Clothing Not Confusingly Similar, Says TTAB
• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging
• Affirming 2(d) Refusal of "17" for Clothing, TTAB Rejects Attempt to Limit Goods in Cited Registration
• Precedential No. 40: "SAM EDELMAN" Confusingly Similar to "EDELMAN" for Handbags, Says TTAB
• TTAB Finds "BOYD'S" and "BOYDS" Confusingly Similar for Clothing, Despite Applicant's Attempt to Limit Its Trade Channels
• TTAB Affirms 2(d) Refusal of "PROTIVA" for Smart Cards over "PROTEVA" for Computers
• Finding "BELL'S & Design" and "OLA BELL'S" Confusingly Similar for Stuffing, TTAB Affirms 2(d) Refusal
• Applying Doctrine of Foreign Equivalents, TTAB Finds "AMMIRAGLIA" and "FLAGSHIP" Confusingly Similar for Booze
• Divided TTAB Panel Finds "ALAVERT" and "WAL-VERT" Confusingly Similar for Antihistamines
• TTAB Rules that Registration and Use of "GOGAMERS.COM" as a Domain Name Does Not Establish Priority
• TTAB Finds "RAMBLER" Mark Abandoned for Autos, but Sustains 2(d) Opposition to "RAMBLER" for Autos
• USC Bests USC in TTAB 2(d) Confusion Bowl
• TTAB Reverses 2(d) Refusal, Finds "CLIMAX" and "JELLY CLIMAX MAXIMIZER" Not Confusingly Similar for Vibrators
• TTAB Affirms 2(d) Refusal of "CINDERELLA" for Peanut Butter over Disney Registration for Related Goods
• "SEXY 'N SASSY" Confusingly Similar to "SEXY HAIR" for Hair Care Products, Says TTAB, Unconvincingly
• TTAB Finds "ZABA'S" for Restaurant Services Confusingly Similar to "ZABAR'S" for Catering and Retail Store Services
• Fame Factor Fuels Victory in TTAB 2(d) Opposition Against "ROAD RUNNER" for Batteries

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

• TTAB Affirms Section 2(e)(1) and 2(a) Refusals of "NEUROBOTICS" for Augmented Surgical Goods and Services

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

• My Goodness? TTAB Reverses Mere Descriptiveness Refusal of "MY HORSE PLAYER" for Handicapping Software
• "GANGA" Merely Descriptive of Department Store Services, Says TTAB, Equivalently
• TTAB Quickly Affirms Mere Descriptiveness Refusal of "7SECONDS" for Hair Detangler
• "DISPENSE-A-PILL" Merely Descriptive of Pill Dispenser, Says TTAB, Painlessly
• TTAB Affirms Section 2(e)(1) and 2(a) Refusals of "NEUROBOTICS" for Augmented Surgical Goods and Services
• "SPICE SHOT" Merely Descriptive of Ammunition, Says TTAB, Affirmingly
• TTAB Affirms Mere Descriptiveness Refusal of "ITALIAN SUSHI" for ... Guess What?
• "LIFETIME WARRANTY" Merely Descriptive of Clothing, Says TTAB, Not Surprisingly
• TTAB Reverses Mere Descriptiveness Refusal of "SAFETY JOGGER" for Work Shoes
• Divided TTAB Panel Reverses Mere Descriptiveness Refusal of "CRAZY GOOD" for Toaster Pastries

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

• "CHINATOWN BRASSERIE" Not Primarily Geographically Deceptively Misdescriptive for Restaurant Not in NYC's Chinatown, Says TTAB

Section 2(e)(5) - Functionality:

• TTAB Reverses Functionality Refusal of Shape of Traffic Signal Bracket, but Affirms Nondistinctiveness Refusal

Section 2(f) - Acquired Distinctiveness:

• TTAB Reverses Functionality Refusal of Shape of Traffic Signal Bracket, but Affirms Nondistinctiveness Refusal
• Transferred Distinctiveness Leads TTAB to Reverse Mere Descriptiveness Refusal of "NANOCRYSTAL COLLOIDAL DISPERSION"

Section 10: Illegal Assignment of ITU:

• TTAB Holds "NEW MEXICO RAILRUNNER" ITU Application Void Under Section 10 Due To Improper Assignment

Fraud:

• TTAB Finds Fraud in Section 8 Declaration, Cancels Registration of Italian Wine Company
• Precedential No. 35: Despite Amendment of Application, TTAB Sustains Fraud Claim in "GRAND CANYON WEST" Opposition

Genericness:

• "OIL FREE JOJOBA" Generic for Cosmetics, Says TTAB
• TTAB Deems "Ultra Violet Devices" Generic for ... Guess What?
• TTAB Affirms Two Genericness Refusals: "CONFERENCECALL.COM" and "CORPORATE PRO BONO" for ... Guess What?

Goods in Trade:

• Finding Customized Tapestry Ordering Kits Not to be Goods in Trade, TTAB Affirms Refusal to Register "WOVEN MOMENTS"

George Washington(click on photo for larger picture)
Laches:

• Finding Laches in 62-Month Delay, TTAB Dismisses 2(d) Cancellation Petition

Lack of Bona Fide Intent:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Procedural Issues:

• TTABlog Practice Pointer: Properly Submit Evidence or Lose Your Opposition
• Precedential No. 39: Evidentiary Errors Lead to Dismissal of 2(d) Opposition for Failure to Prove Priority
• Appellant Petitions Commissioner for New Hearing, Claims PTO Argument Was Inaudible and Unintelligible
• Precedential No. 38: TTAB Dismisses Opposition as Untimely - Electronic Payment Incomplete and Faxed Filing Ineffective
• Precedential No. 37: Judge Rogers Beams as Section 2(d) Case is Tried Without Discovery
• Precedential No. 34: TTAB Okays Stipulation Between Red Sox and "RAD SEX" Applicant to Waive Initial Disclosures

Res Judicata:

• "DAYTONA" Trademark Licensee Denied Second Bite at TTAB Apple

Specimen of Use:

• Specimens Don't Match Drawing, So TTAB Affirms Refusal to Register "AT C-LEVEL" for Magazines
• TTAB Finds "DIGITALBOOK" Trademark Specimen Unacceptable
• Precedential No. 36: Finding Specimen Doesn't Match Drawing, TTAB Affirms Refusal of "UPPER 90" for Clothing
• TTAB Affirms Rejection of Catalog Page as Trademark Specimen of Use

(click on photo for larger picture)
Other:

• Design Patent Owners Will Worship CAFC's Egyptian Goddess Decision
• TTAB Comes to Boston: October 24, 2008
• Supreme Court To Consider Certiorari Petition Re Constitutionality of PTO Judicial Appointments
• Genericness Survey Results Posted at Pamela Chestek's Blog
• TTABlog Test Time: So You Think You Know Genericness?
• TTAB Posts September 2008 Hearing Schedule
• Heavner and Luepke Review "The Top Fifteen Mistakes of Foreign Applicants"
• New Legislation Aims to Cure Possible Defect in Appointment of Some TTAB Judges
• TTAB Posts August 2008 Hearing Schedule
• Tenth Circuit Applies MedImmune in Trademark Declaratory Judgment Action
• TTAB Posts July 2008 Hearing Schedule

Text and Photographs Copyright John L. Welch 2008.