TTAB Issued 52 Precedential Decisions in 2009

The TTAB issued fifty-two (52) precedential opinions in 2009, a slight drop-off from last year's total of 55. Its post-Bose fraud decisions in Enbridge and Asian and Western (Nos. 40 and 42) and its finding of a lack of bona fide intent on the part of the Section 44(e) applicant in Honda v. Winkelmann (No. 15) were among the most noteworthy. And in a dozen or so procedural rulings, it dealt with various nuances of TTAB practice, with an emphasis on the TTAB rules as amended in 2007.

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Section 2(a) - False Association:

• Precedential No. 27: U.S. CUSTOMS Logo Barred by Sections 2(a) and 2(b)

Section 2(b) - US Flag, Coat of Arms, or Insignia:

• Precedential No. 27: U.S. CUSTOMS Logo Barred by Sections 2(a) and 2(b)

Section 2(d) - Likelihood of Confusion:

• Precedential No. 46: TTAB Finds Two "ANTHONY'S" Marks Confusingly Similar for Pizza Restaurants
• Precedential No. 44: TTAB Decides "CAB CALLOWAY" Priority Dispute, Rules that Personal Names Are Inherently Distinctive
• Precedential No. 43: TTAB Enters Partial Summary Judgment in 2(d) "VUDU" Opposition
• Precedential No. 41: Applicant Loses Third-Party Registration Battle, TTAB Finds Floor Tiles and Roof Tiles Related
• Precedential No. 39: TTAB Reverses 2(d) Refusal of "VOLTA" for Caffeine-Laced Vodka
• Precedential No. 36: "MTOWN CLOTHING" and "MOTOWN" Confusingly Similar for Clothing, Croons TTAB
• Precedential No. 34: Applicant's Cancelled Registration for Identical Mark No Help, TTAB Affirms 2(d) Refusal of "DAVEY" for Water Pumps
• Precedential No. 33: TTAB Designates Section 2(d) Alligator Decision as Precedential
• Precedential No. 31: In an Accelerated Decision, TTAB Sustains Schick Opposition to "SLICK ULTRA PLUS" for Disposable Razors
• Precedential No. 25: "VANTAGE TITAN" and "TITAN" Confusingly Similar for Related Medical Devices, Says TTAB
• Precedential No. 23: TTAB Refuses to Hear Belated Fraud Claim, Finding It Not Tried By Consent
• Precedential No. 21: TTAB Sustains “PALOMA” 2(d) Opposition to “PALOMITA” for Clothing, But Dismisses Claim for Fraudulent Misuse of ® Symbol
• Precedential No. 19: Family-of-Marks Argument Not Available to Overcome 2(d) Refusal; Sophisticated Purchaser Claim Fails Too
• Precedential No. 18: Refusing to Read Limitations into Cited Registration, TTAB Affirms 2(d) Refusal of "WAVE" for Recreational Trailers
• Precedential No. 11: Section 2(d) Opposer Fails to Submit Registration Properly, Loses on Priority Issue
• Precedential No. 9: TTAB Dismisses 2(d) Petition to Cancel "DESIGNED TO SELL" Registration

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

• Precedential No. 38: Expert Testimony Alone Not Sufficient to Prove Mere Descriptiveness of "BEER 1" Marks
• Precedential No. 26: TTAB Affirms Descriptiveness Refusal of "BATTLECAM" for Computer Game Software
• Precedential No. 22: Saying No-No to Double Entendre Argument, TTAB Deems "URBANHOUZING" Merely Descriptive of Real Estate Services

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

• Precedential No. 14: TTAB Finds "THE MONTECITO DIET" Not Primarily Geographically Descriptive of Diet Publications

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

• Precedential No. 49: TTAB Affirms Surname Refusal of "BINION"; Renown of Binion Family Does Not Equal Acquired Distinctiveness

Section 2(e)(5) - Functionality:

• Precedential No. 28: TTAB Affirms 2(e)(5) Functionality Refusal of Bicycle Spoke Design
• Precedential No. 6: TTAB Affirms Section 2(e)(5) Functionality Refusal of Shape of Metal Spray Nozzle
• Precedential No. 4: TTAB Rules that a Sound Emitted by Goods in Normal Course of Operation Cannot Be Inherently Distinctive

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 45: "TIRES TIRES TIRES" Generic for, or Merely Descriptive of, Tire Store Services
• Precedential No. 13: TTAB Axes Fender Guitar Shapes, Finding Them Generic or Lacking Acquired Distinctiveness

Section 14(3) Misrepresentation:

• Precedential No. 17: TTAB Dismisses Bayer "FLANAX" Cancellation Claims - No Famous Marks Exception in US Law

Drawing Unacceptable

• Precedential No. 27: U.S. CUSTOMS Logo Barred by Sections 2(a) and 2(b)

Failure to Function:

• Precedential No. 8: Divided TTAB Panel Affirms Refusal to Register Chippendales' "Cuffs & Collar Mark"
• Precedential No. 4: TTAB Rules that a Sound Emitted by Goods in Normal Course of Operation Cannot Be Inherently Distinctive

Famous Marks Doctrine:

• Precedential No. 17: TTAB Dismisses Bayer "FLANAX" Cancellation Claims - No Famous Marks Exception in US Law

Fraud:

• Precedential No 42: TTAB Denies Fraud Summary Judgment Motion Due to Inadequate Pleading of Claim
• Precedential No. 40: Applying Bose, TTAB Denies Fraud-Based Summary Judgment Motion Due to Factual Issues Regarding Intent
• Precedential No. 21: TTAB Sustains “PALOMA” 2(d) Opposition to “PALOMITA” for Clothing, But Dismisses Claim for Fraudulent Misuse of ® SYMBOL
• TTAB Re-Designates Zanella v. Nordstrom Fraud Ruling As Precedential
• Precedential No. 12: TTAB Again Says False Statement of First Use Date is not Fraud
• Precedential No. 2: TTAB Rules That, For a Multi-Class Registration, Fraud Must Be Considered Class-by-Class

Genericness:

• Precedential No. 45: "TIRES TIRES TIRES" Generic for, or Merely Descriptive of, Tire Store Services
• Precedential No. 13: TTAB Axes Fender Guitar Shapes, Finding Them Generic or Lacking Acquired Distinctiveness

Lack of Bona Fide Intent:

• Precedential No. 47: TARR Printouts of Pleaded Registrations Acceptable at Trial
• Precedential No. 15: Finding No Evidence of Bona Fide Intent to Use Mark in US, TTAB Sustains Opposition to 44(e) Application

Priority:

• Precedential No. 16: TTAB Throws New England Patriots for Another Loss in "19-0 THE PERFECT SEASON" Opposition
• Precedential No. 11: Section 2(d) Opposer Fails to Submit Registration Properly, Loses on Priority Issue
• Precedential No. 1: Section 66(a) Applicant Wins TTAB Priority Contest in "FRUITOLOGY" 2(d) Dispute

Procedural Issues:

• Precedential No. 52: TTAB Rules That Objection to Discovery For Failure to Provide Initial Disclosures Must Be Made Specifically
• Precedential No. 51: TTAB Denies Sanctions But Orders Parties to Hold Discovery Conference with Board Participation
• Precedential No. 50: TTAB Strikes Opposer's Documents Produced During Testimony Period
• Precedential No. 48: Rejecting Asserted "Newly Discovered Evidence," TTAB Refuses to Set Aside Judgment
• Precedential No. 47: TARR Printouts of Pleaded Registrations Acceptable at Trial
• Precedential No. 37: Board Grants Motion to Introduce at Trial, Discovery Deposition of Nonparty Taiwanese Witness
• Precedential No. 32: TTAB Okays Service of Opposition by Mail to Applicant's Address, Not the Correspondence Address of Record
• Precedential No. 29: TTAB Strikes Testimony of Witness Not Identified in Pre-Trial Disclosure
• Precedential No. 23: TTAB Refuses to Hear Belated Fraud Claim, Finding It Not Tried By Consent
• Precedential No. 20: TTAB Enters Judgment Due to Defendant's Blatant Failure to Comply with Board Order
• Precedential No. 10: Irked TTAB Sanctions Counsel for Filing Untenable Motion to Dismiss
• Precedential No. 7: TTAB Okays Amended Section 18 Petition for Partial Cancellation, if Amended a Bit More
• Precedential No. 5: Board Shows Mercy, Forgives Cancellation Petitioner Who Served Petition One Week after its Electronic Filing

Recitation of Services:

• Precedential No. 30: TTAB Okays Warranty Services for Applicant's Goods Sold Under Third-Party Marks

Res Judicata:

• Precedential No. 24: TTAB Finds Another Motorola "Chirp" Sound Unregistrable

Santiago Convention:

• Precedential No. 3: TTAB Dismisses Claim Invoking Unsatisfiable Santiago Trademark Convention

Sound Marks:

• Precedential No. 24: TTAB Finds Another Motorola "Chirp" Sound Unregistrable
• Precedential No. 4: TTAB Rules that a Sound Emitted by Goods in Normal Course of Operation Cannot Be Inherently Distinctive

Specimen of Use/Mutilation::

• Precedential No. 35: Finding Mutilation, TTAB Affirms Refusal of Applicant's Two Bottle Mark

Use/Use in Commerce

• Precedential No. 17: TTAB Dismisses Bayer "FLANAX" Cancellation Claims - No Famous Marks Exception in US Law

Text and photogaphs Copyright John L. Welch 2009.