TTABlog Quarterly Index: April - June 2010

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Tremont Street, Boston(click on photos for larger picture)
Section 2(a) - deceptiveness:

• Finding "ORGANIC ASPIRIN" Deceptively Misdescriptive of and Deceptive for Dietary Supplements, TTAB Sustains Bayer Opposition
• "ILEX" Not Deceptive or Deceptively Misdescriptive for Medicated Skin Paste, Says TTAB

Section 2(d) - likelihood of confusion:

• Precedential No. 23: Finding Third-Party Registrations Not Probative, TTAB Reverses 2(d) Refusal
• TTAB Reverses 2(d) Refusal As Waste of Everyone's Time
• Test Your TTAB Judge-Ability: Are These Two Marks Confusingly Similar?
• Fame of Coach's "Signature C" Design Mark Leads TTAB to Sustain 2(d) Opposition
• In Stinging Reversal, TTAB Finds "SOLIGA FOREST HONEY" Not Confusingly Similer to "FOREST HONEY" Design Mark
• Finding "BORN=OFFICIAL & Design" and "BØRN" Too Dissimilar, TTAB Dismisses 2(d) Opposition
• TTAB Reverses 2(d) Refusal, Finds "AQ" and "PARADISE MAKEUP AQ" Not Confusingly Similar for Cosmetics
• TTAB Finds "SMIC" And "TSMC" Wafer Grid Logos Confusingly Similar for Identical Goods and Services
• TTAB Reverses 2(d) Refusal, Finds "PANTECH BREEZE" and "BREEZE ACCESS" Too Different for Wireless Products
• WYHA? TTAB Finds "THE ORIGINAL CHUBBYS MEXICAN FOOD" and "EL CHUBBY'S" Confusingly Similar for Restaurant Services
• Test Your TTAB Judge-Ability: Are "ARTEHOUSE" and "ART HOUSE GREETINGS" Confusingly Similar for Greeting Cards?
• Precedential No.13: Divided TTAB Panel Dismisses "VIGILANZ" Opposition, Finding Purchasers Sophisticated and Goods Not Related
• WYHA? TTAB Affirms 2(d) Refusal of "USWEAR" for Boys Clothing Over "US WEAR" for Adult's Clothing
• Real World Aside, TTAB Affirms 2(d) Refusal of "CARRERA" for Welding Helmets
• Test Your TTAB Judge-Ability: Are Condoms and Vibrators Related for 2(d) Purposes?
• Finding Transportation of Natural Gas Related to Freight Forwarding, TTAB Affirms 2(d) Refusal of "CGL"
• Test Your TTAB Judge-Ability: Is "EMIDIO TUCCI" Confusingly Similar to "EMILIO PUCCI" for Overlapping Goods?
• Sophistication of Purchasers Leads to TTAB Reversal of 2(d) Refusal of "TITAN" for Commercial Coffee Brewers
• Finding Clothing and Fountain Pens Related, TTAB Sustains "Le TIGRE" 2(d) Opposition

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

• Test Your TTAB Judge-Ability: Is "LEMONADE" Merely Descriptive of Restaurant Services?
• Test Your TTAB Judgeability: Is "BLUECAR" Merely Descriptive of Electric Vehicles?
• Test Your TTAB Judge-Ability: Is This Mark, With Disclaimer, Stylized Enough for the Principal Register?
• SEARCH ENGINE OPTIMIZATION" Merely Descriptive of Marketing Services, Says TTAB
• Test Your TTAB Judge-Ability on this Section 2(e)(1) Mere Descriptiveness Refusal of "CLUB DANCE" for Restaurant and Bar Services.

Section 2(e)(1) - deceptive misdescriptiveness:

• Finding "ORGANIC ASPIRIN" Deceptively Misdescriptive of and Deceptive for Dietary Supplements, TTAB Sustains Bayer Opposition
• "ILEX" Not Deceptive or Deceptively Misdescriptive for Medicated Skin Paste, Says TTAB

Section 2(e)(4) - Primarily merely a surname:

• Precedential No. 22: Reversing 2(e)(4) Refusal, TTAB Finds "P.J. FITZPATRICK, INC." Not Primarily Merely a Surname

Bona Fide Intent:

• TTAB Enters Summary Judgment: Applicant Lacked Bona Fide Intent to Use "FEAR THE FRIARS" for Clothing

Dilution:

• Precedential No. 21: TTAB Sustains Dilution Claim For the First Time in Seven Years
• Precedential No. 14: Noncommercial Use Defense to a Dilution Claim Unavailable in a TTAB Proceeding

Fraud:

• Fraud and Lack of Bona Fide Intent: Some Thoughts on Remedies
• Precedential No. 16: Fraud Claim Survives Motion to Dismiss; Facts Pleaded with Sufficient Particularity
• Another TTABlogger Article: "Fraud and the TTAB: What Hath Bose Wrought?"
• TTABlogger Article: "TTAB developments: Bose and beyond"
• CAFC Turns Its Attention From Trademark Fraud to Patent Inequitable Conduct

Genericness:

• TTAB Finds "THREE-STRAND FLOSS" Generic for ... Guess What?
• TTAB Finds "FULLY COOKED" Generic for ... Guess What?
• TTAB Finds "ToeSox" Generic for ... Guess What?

Lack of Bona Fide Intent:

• Fraud and Lack of Bona Fide Intent: Some Thoughts on Remedies
• Finding Lack of Bona Fide Intent, TTAB Sustains "MIDDLE EARTH JEWELRY" Oppositions

Use in Commerce/Drawing/Specimen of Use:

• TTAB Affirms Rejection of Catalogue Specimen for "CELLAR 360" for Wine
• Test Your TTAB Judgeability: Do You Know Trademark Mutilation When You See It?
• Precedential No. 18: TTAB Affirms Rejection of Trademark Specimen as Mere Advertising and not Point-of-Sale Display
• TTAB Cancels "CITYSTAY HOTELS" Registration as Void Ab Initio: Hotel Lodging Services Not Rendered as of Filing Date
• SEARCH ENGINE OPTIMIZATION" Merely Descriptive of Marketing Services, Says TTAB
• Test Your TTAB Judge-Ability on this Rejected Amendment and Specimen of Use
• Precedential No. 15: TTAB Affirms Rejection of Website Specimen for Goods, Ordering Information Lacking
• Test Your TTAB Judge-Ability on This Specimen of Use Question

TTAB Discovery/Evidence/Procedure:

• Precedential No. 24: TTAB Says Reference to Documents (in Russian) Does Not Satisfy FRCP 33(d)
• Precedential No. 20: Per Rule 2.107(b), TTAB Denies Motion to Amend Madrid Opposition
• Precedential No. 19: TTAB Snoringly Rules on Motions to Compel Production and to Exclude Trial Witness
• Precedential No. 17: TTAB Says Section 18 Not Available for Requiring Disclaimer of Generic Part of Mark Registered for More Than 5 Years
• TTAB Vacates "WAL-VERT" Decision Per District Court Order
• TTAB Resumes Proceedings in Oldest Pending Case

CAFC Decisions:

• CAFC Reverses TTAB's "FRED" Ruling: Fee Not Needed With Motion for Leave to Amend Cancellation Petition to Add Classes
• CAFC Affirms TTAB Ruling in "ML" Skin Care Products Case

CAFC Oral Arguments:

• CAFC Affirms TTAB's "CRASH DUMMIES" No Abandonment Decision
• CAFC Hears Oral Argument In Fred Beverages Fee Payment Case

Recommended Reading:

• Daniel Kegan: "The grammar of intellectual property: Copyright is a noun, trademark is an adjective"
• Recommended Reading: "A Comparative Empirical Analysis of Online Versus Mall and Phone Methodologies for Trademark Surveys"
• Recommended Reading: "Bona Fide Intent to Use in the United States and Canada"
• TTABlog Recommended Reading: Ted Davis on Recent Developments in Trademark and Unfair Competition Law

Other:

• TTAB Posts June 2010 Hearing Schedule
• USPTO Seeks Comments on Proposed Revision of Madrid Protocol
• TTABlogger Article: "TTAB developments: Bose and beyond"
• Summary of TPAC May 7th Public Meeting
• Trademark Public Advisory Committee (TPAC) Webcast Tomorrow
• TTAB Posts May 2010 Hearing Schedule
• Transcript of February 2010 TPAC Meeting Now Available
• Reminder: "TTAB Comes to Boston" - April 9th at Boston University School of Law
• TTABlog Newsflash: Stress Balls Are Smash Hit!
• TTAB Posts April 2010 Hearing Schedule

Text and photos ©John L. Welch 2010.