TTABlog Quarterly Index: July - September 2011

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Section 2(a) - Immoral or Scandalous:

• Precedential No. 25: TTAB Finds Raised Middle Finger Design for Bottle to be Scandalous or Immoral, Affirms 2(a) Refusal

Section 2(d) - Likelihood of Confusion:

• Fame Propels AUTOZONE to TTAB 2(d) Victory in DENT ZONE Cancellation
• Test Your TTAB Judge-Ability: Are PARK LANE and PARK AVENUE Confusingly Similar for Footwear?
• Precedential No. 24: Fame of TOTAL Mark Yields Near Total Victory in General Mills 2(d) Opposition to Fage Yogurt Applications
• Test Your TTAB Judge-Ability: Are ENCHANTED PRINCESS and DISENCHANTED PRINCESS Confusingly Similar For Stuffed Toys?
• Finding Prior Trade Identity Rights in PLATEFRAME, TTAB Cancels PRETTYPLATEFRAMES Registration for License Plate Frames
• Precedential No. 23: Sophistication of Buyers Leads to TTAB Dismissal of CALYPSO Section 2(d) Opposition and Cancellation Proceeding
• Precedential No. 22: TTAB Renders Split Decision in CURE4KIDS 2(d) Oppositions
• Test Your TTAB Judge-Ability on this "KICK ASS" 2(d) Coffee Opposition
• BEND SPORT COUTURE Confusingly Similar to BENDY and BENDYGIRL for Clothing, Says TTAB, Contingently
• Test Your TTAB Judge-Ability on this Quintet of 2(d) Refusals
• Test Your TTAB Judge-Ability Against This Opinion By New Judge Thomas Shaw
• Test Your TTAB Judge-Ability: Are "LES COLLINES" and "HILLS VINEYARD" Confusingly Similar for Viticulture Services?
• TTAB Sustains MOZY v. MOZIE Section 2(d) Opposition But Nixes Fraud Claim
• Test Your TTAB Judge-Ability on These Three Section 2(d) Appeals
• WYHA? TTAB Affirms 2(d) Refusal of "df & Design" Over "DF," Both for Clothing
  
• Rejecting Naked Consent, TTAB Affirms 2(d) Refusal of ONE-STEP for Glucose Monitoring Gear
• Precedential No. 19: "JUST JESU IT" Likely to Cause Confusion With and Dilute Nike's "JUST DO IT," Says TTAB
• Test Your TTAB Judge-Ability: Are AUTO BY RENT and AUTO-BY-TEL Confusingly Similar for Auto-Related Services
• Test Your TTAB Judge-Ability: Which One of These Three 2(d) Refusals Did the Board Reverse?
• Divided TTAB Panel Sustains Iowa's Opposition to Eagle's Head Design Mark of Southern Mississippi
• COLON CLEANSE for Laxative Confusingly Similar to COLON CLEANSE MOVE IT for Dietary Supplements, Says TTAB
• Test Your TTAB Judge-Ability: Are DYNATECH and DYNATEK Confusingly Similar for Auto Parts?
• WYHA? TTAB Affirms 2(d) Refuslal of "RIDE OR DIE" over "RIDE TILL I DIE" for Clothing
• TTAB 2(d) Reversal: "EPs 7630" Not Confusingly Similar to "EP" for Respiratory Drugs
• WYHA? TTAB Affirms 2(d) Refusal of DEALER FINANCIAL SERVICES over DEALERS FINANCE COMPANY
• Test Your TTAB Judge-Ability: Are TEKSTONE and STONTEC Confusingly Similar for Vinyl Flooring?
• Finding Household Linens and Furniture Related, TTAB Cancels LEXINGTON Registration Under Section 2(d)
• Fame of "PING" Mark Brings TTAB 2(d) Victory Over "PING WI FI"
• Test Your TTAB Judge-Ability: Which One of These Three Section 2(d) Refusals Did the TTAB Reverse?

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

• TTAB Affirms Mere Descriptiveness Refusal of "A BRAND NAME LAW FIRM," Finding Double Entendre Argument Unappealing
• Test Your TTAB Judge-Ability: Which One of These Four Mere Descriptiveness Refusals Did the Board Reverse?
• TTAB Recasts Genericness Opposition, Finds CHI Merely Descriptive of Electric Massagers
• WYHA? "TUBES" Merely Descriptive of Non-inflatable Mattresses, Says TTAB
• WYHA? "YELLOW EMERALD" Merely Descriptive of Golden Beryl Gemstones, Says TTAB
• Test Your TTAB Judge-Ability: Must "FRESH" Be Disclaimed for Frozen Desserts?
• WYHA? TTAB Affirms 2(e)(1) Mere Descriptiveness Refusal of MUSCLE MAIZE for Supplements
• WYHA? TTAB Affirms Mere Descriptiveness Refusal of STERNALVEST for Sternal Vests

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

• Reversing a 2(e)(2) Geographical Descriptiveness Refusal, TTAB Asks, Where The Heck Is WINDHOEK?

Section 2(e)(5) - Functionality:

• TTAB Enters Summary Judgment Under Section 2(e)(5), Cancelling Registration for Baseball Training Glove Design Due to Functionality

Section 2(f) - Acquired Distinctiveness:

• Finding Apple's 2(f) Evidence Insufficient, TTAB Affirms Mere Descriptiveness Refusal of MULTI-TOUCH for Handheld Devices

Dilution:

• Precedential No. 19: "JUST JESU IT" Likely to Cause Confusion With and Dilute Nike's "JUST DO IT," Says TTAB

Failure to Function:

• Precedential No. 16: TTAB Finds That Orange-and-Green Color Combination Fails to Function as a Trademark For Newport Cigarettes

Fraud::

• TTABlog Special Report: List of Fraud Claims Sustained by TTAB Since In re Bose
• TTAB Sustains MOZY v. MOZIE Section 2(d) Opposition But Nixes Fraud Claim
• TTAB Non-Shocker: Summary Judgment Denied as to Fraud

Genericness:

• TTAB Affirms Genericness Refusal of FIREPOT for ... Guess What?
• WYHA? TTAB Affirms Genericness Refusal of DIGITAL RF for Communication Devices
• TTAB Affirms Genericness Refusal of CONSUMERAFFAIRS.COM for ... Guess What?
• TTAB Affirms Genericness Refusal of TREERADAR for ... Guess What?

Lack of Bona Fide Intent:

• TTABlog Query: What's the Remedy When a Party Proves Lack of Bona Fide Intent?
• On Rehearing, 7th Circuit Rules that Wisconsin Waived Sovereign Immunity by Seeking 1071(b) Review of TTAB Decision
• Precedential No. 15: Finding Lack of Bona Fide Intent, TTAB Sustains MOSKONISI Opposition

Discovery/Evidence/Procedure:

• Precedential No. 21: Two Cuban Corporations Have Standing to Bring Section 2(e)(3) Cancellation Petition
• Opposer Fails to Serve Proper and Timely Pre-Trial Disclosures, TTAB Strikes Testimony
• Precedential No. 20: Madrid Opposer Limited to Single Ground Designated in ESTTA Form
• Precedential No. 18: TTAB Denies Motion to Re-Open Testimony Period, Dismisses 2(d) Opposition for Shortage of Proof
• Precedential No. 17: TTAB Suspends NFL's "WHO DAT" Opposition In View of Pending Lawsuit

CAFC Oral Arguments:

• CAFC Hears Oral Argument in Appeal from TTAB Dismissal of COACH Opposition

Recommended Reading/Listening:

• Recommended Listening: Anne Gilson LaLonde on "Trademarks Laid Bare - Marks That May Be Scandalous or Immoral"

Other:

• TTABlog Job Posting: TTAB Seeks Senior Level Attorney Advisor
• Experienced IP Attorney Specializing in Trademarks and Computer/Internet Law Seeks Corporate Position in Chicagoland Area
• TTAB Posts September 2011 Hearing Schedule
• Experienced Trademark and Copyright Examiner Seeks Position, Preferably on East Coast
• Mark Donahey Reports on August 19th TPAC meeting
• TTAB Breaking News: Linda A. Kuczma Named TTAB Judge
• 8th Circuit Affirms Jury's Finding of Fraud on The PTO in Fair Isaac "300-850" Case
• Another TTABlog Follower Found!
• TTABlog Road Trip: Ohio Double-Header at AOAIOIP in Cleveland and Cincinnati
• USPTO Posts Comments on Notice of Inquiry re Settlement Discussions
• Breaking TTAB News! PTO Associate Solicitor Thomas Shaw Named Administrative Trademark Judge
• TTAB Posts August 2011 Hearing Schedule
• PTO Proposes New Rules Allowing Examining Attorneys to Request Additional Specimens of Use
• No Posting Today: Beach Day Yesterday
• TTAB Posts July 2011 Hearing Schedule

Text ©John L. Welch 2011.