TTABlog Quarterly Index: April - June 2011

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Section 2(a) - deceptiveness:

• TTAB Finds AMERICAN HERITAGE Neither Merely Descriptive of, Nor Deceptive for, Wines

Section 2(d) - likelihood of confusion:

• WYHA? TTAB Affirms Trifusal of NATIONAL QUICK SALE for Real Estate Services
• Test Your TTAB Judge-Ability: Which of these Three Section 2(d) Refusals Did the TTAB Reverse?
• Test Your TTAB Judge-Ability: Are "LION GLOBAL INVESTORS" and "LION" Confusingly Similar for Financial Services?
• Test Your TTAB Judge-Ability: Which One of these Four Section 2(d) Refusals Did the TTAB Reverse?
• TTAB Sustains GAME BOY v. FLASHBOY Opposition: Likelihood of Confusion and Lack of Bona Fide Intent
• Test Your TTAB Judge-Ability: Are GRAN SOL for Tequila and GRAN VINÃ SOL for Wine Confusingly Similar?
• Precedential No. 13: In Issue-Packed 2(d) Decision, TTAB Cancels "LA INDITA MICHOACANA" Registration for Ice Cream
• Parties Choose ACR, TTAB Finds SOLARIN Not Confusingly Similar to SOLARCAINE for Sun/Tanning Products
• Differences in Financial Goods/Services, Sophistication of Customers Lead TTAB to Reverse 2(d) HOMER Refusal
• Test Your TTAB Judge-Ability: Are GIFTERGO and GIFTANGO Confusingly Similar for Gift Card Services?
• Test Your TTAB Judge-Ability: Are Flowers and Flower Pots Related Goods?
• Precedential No. 11: TTAB Limits Madrid Opposition to Goods Listed on ESTTA Form, But Opposer Wins Anyway
• Another Test of Your TTAB Judge-Ability: Are CLOUDBANKS and FOGBANK Confusingly Similar for Wine?
• WYHO? TTAB Finds BRAIN FUEL for Fresh Fruit Not Confusingly Similar to BRAINFUEL for Dietary Supplements
• Test Your TTAB Judge-Ability: Are "ITOWNS" and "IVILLAGE" Confusingly Similar for Related News Services?
• TTAB Reverses 2(d) Refusal of FUJITECH: Third-Party Registrations Insufficient to Show Relatedness of Various Electronic Goods
• TTAB Reverses 2(d) Refusal of "S9" Over Stylized ".9S" Mark for Computer Goods
• Despite Fame of "BEAUTYREST" Mark, TTAB Dismissses Opposition to "BEST REST" for Mattresses
• Test Your TTAB Judge-Ability: Are "ROOTER, MD" and "ROOTER-MAN & Design" Confusingly Similar for Plumbing Services?
• Finding TOVARICH Confusingly Similar to TVARSCKI for Vodka, TTAB Grants 2(d) Petition for Cancellation
• TTAB Finds WAGGIN' STRIPS Confusingly Similar to BEGGIN' STRIPS for Pet Treats, But No Dilution or Lack of Bona Fide Intent
• Test Your TTAB Judge-Ability: Is "RALPH LAUREN STIRRUP COLLECTION" for Watches Confusingly Similar to "STIRRUP" for Jewelry?
• Precedential No. 9: Finding Wine and Beer Related, TTAB Affirms 2(d) Refusal of "HB" over "HB & Crown Design"
• WYHA? TTAB Affirms 2(d) Refusal of LOWFARES.COM over LOWESTFARE.COM for Travel-Related Services
• Test Your TTAB Judge-Ability On This Section 2(d) Refusal of "EZ DOG & Design" for Animal Toothbrushes
• Test Your TTAB Judge-Ability: Is BUDDY'S NATURAL CHICKEN Confusingly Similar to BUDDIES?
• TTAB Dismisses "ALPHA KITTY" Section 2(d) Opposition: Opposer Failed to Prove Standing, Priority

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

• SOLARWINDOW Merely Descriptive of Solar Energy Devices, Says TTAB
• Test Your TTAB Judge-Ability: Is MOTIONPOWER Merely Descriptive of Electrical Generation?
• WYHA? TTAB Affirms Trifusal of NATIONAL QUICK SALE for Real Estate Services
• WYHA? TTAB Affirms Mere Descriptiveness Refusal of ATHEROABZYME for Diagnostic Test Kits
• TTAB Affirms Mere Descriptiveness Refusal of JEWELRYSUPPLY.COM: No Tacking and Not Enough 2(f)
• TTAB Finds AMERICAN HERITAGE Neither Merely Descriptive of, Nor Deceptive for, Wines
• No Need to Disclaim "RED" in VICTORY RED for Golf Equipment, Says TTAB
• WYHP? Petition to Cancel Backfires When TTAB Finds "SNAP" Merely Descriptive of Syringes
• WYHA? TTAB Affirms Section 2(e)(1) Mere Desciptiveness Refusal of STRETCH FIT for Incontinence Briefs

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

• NORTH AMERICAN RANGE Primarily Geographically Descriptive of Beef, Says TTAB
• Test Your TTAB Judge-Ability: Is This "HOT SPRINGS NATIONAL PARK ARKANSAS" Logo Primarily Geographically Descriptive?
• TTAB Affirms 2(e)(2) Refusal of EAST COAST for Vehicle Towing Services
• WYHA? TTAB Finds CALIFORNIA GREEN CLEAN Primarily Geographically Descriptive of Janitorial Services

Section 2(f) - Acquired distinctiveness:

• TTAB Affirms Mere Descriptiveness Refusal of JEWELRYSUPPLY.COM: No Tacking and Not Enough 2(f)
• TTAB Affirms Mere Descriptiveness Refusal of JEWELRYSUPPLY.COM: No Tacking and Not Enough 2(f)
• Finding 2(f) Evidence Insufficient, TTAB Affirms Mere Descriptiveness Refusal of "eCopy" for Electronic Copying Software

Dilution:

• TTAB Finds WAGGIN' STRIPS Confusingly Similar to BEGGIN' STRIPS for Pet Treats, But No Dilution or Lack of Bona Fide Intent

Failure to function:

• TTAB Reverses Refusal to Register Lacquered Pet Food Container Design, Finding it Inherently Distinctive
• TTAB Affirms Refusal of the "Eddie Bauer Guarantee" for Failure to Function as a Service Mark

Fraud:

• TTAB Dismisses Fraud-Based Opposition for Failure to Prove Intent to Deceive

Genericness:

• TTAB Finds RADIO-INFO.COM to be Generic for ... Guess What?
• "LOCKBACK" Generic for Foldable Utility Knives, Says TTAB
• Test Your TTAB Judge-Ability on Two More Genericness Cases: MOCCA and SMOKELESS LOG
• Test Your TTAB Judge-Ability on These Two Genericness Cases: APPLICATIONSONLINE and BUBBLESEAL

Lack of Bona Fide Intent:

• TTAB Sustains GAME BOY v. FLASHBOY Opposition: Likelihood of Confusion and Lack of Bona Fide Intent
• TTAB Rules that Registrant May Challenge Cancellation Petitioner's Standing, Threatens Sanctions
• TTAB Finds WAGGIN' STRIPS Confusingly Similar to BEGGIN' STRIPS for Pet Treats, But No Dilution or Lack of Bona Fide Intent

Ownership:

• Precedential No. 13: In Issue-Packed 2(d) Decision, TTAB Cancels "LA INDITA MICHOACANA" Registration for Ice Cream
• TTAB Decides "KUZ" Ownership Dispute: a Manufacture/Distributor Family Feud
• TTAB Decides "100 BLACKS IN LAW ENFORCEMENT WHO CARE" Ownership Dispute

Procedural issues:

• Alpha Kitty Roars: Seeks District Court Review of TTAB Dismissal of 2(d) Opposition
• TTAB Rules that Registrant May Challenge Cancellation Petitioner's Standing, Threatens Sanctions
• Precedential No. 13: In Issue-Packed 2(d) Decision, TTAB Cancels "LA INDITA MICHOACANA" Registration for Ice Cream
• Precedential No. 12: TTAB Issues Pre-Trial Order in New REDSKINS Disparagement Case
• Precedential No. 11: TTAB Limits Madrid Opposition to Goods Listed on ESTTA Form, But Opposer Wins Anyway
• Precedential No. 10: TTAB Okays Opposer's Pre-Trial Disclosures, Denies Motion to Strike Trial Testimony

Res Judicata:

• Precedential No. 14: Applying Collateral Estoppel to the Ownership Issue, TTAB Enters Summary Judgment in "WINNIE THE POOH" Trademark Dispute

Specimen of use/Use in commerce:

• TTAB Affirms Refusal of FNBSECURE for Financial Services Due to Inadequate Specimens of Use
• TTAB Rules That Kappa Alpha Fraternity Logo Does Not Violate Red Cross Statute
• Test Your TTAB Judge-Ability on this Service Mark Specimen of Use

CAFC Oral Arguments/Decisions:

• CAFC Affirms TTAB's "DEALERDASHBOARD" Mere Descriptiveness Decision
• CAFC Hears Oral Argument in "LE TIGRE" Appeal from TTAB Decision Sustaining 2(d) Claim

Recommended Reading:

• Recommended Reading: The Trademark Reporter's Annual Review of U.S. Trademark Cases

Other:

• New Orleans Snowball Fight Rages On: SnoWizard Seeks Review of TTAB Mere Descriptiveness Rulings
• INTA and ABA Sections Comment on Proposed TTAB Involvement in Settlement Discussions
• More Comments on TTAB Settlement Involvement: AIPLA, IPO, and John Farmer
• Paul Reidl Files Comments Re Proposal for TTAB Involvement in Settlement Discussions
• TTAB Dismisses Oldest Pending Case, Filed in 1982
• TTABlog Flotsam and Jetsam: TPAC, TTAB Dashboard, and Disclaimer Webcast
• TTABlog Job Posting: DC Area Internet Consultancy Seeks Trademark Attorney
• TTAB Posts June 2011 Hearing Schedule
• June 21st Deadline for Comments on TTAB Involvement in Settlement Discussions
• TTAB Posts May 2011 Hearing Schedule
• Swatch Seeks District Court Review of "SWAP" Opposition Dismissal
• TTAB Seeks Comments on Its Possible Involvement in Settlement Discussions
• TTABlogger Makes World Trademark Review 1000 List
• Transcript of December 3, 2010 USPTO "Trademark E-Gov Best Practices Roundtable"
• Watch for these Trademark CLE Events in April
• TTAB Posts April 2011 Hearing Schedule

Text and photographs © John L. Welch 2011.