TTABlog Quarterly Index: October-December 2011

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Section 2(a) - Immoral or Scandalous:

• Anne Gilson Lalonde: Scandalousness Refusal Affirmed for Chocolate Candy Trademark [Warning: Post Rated NC-17]

Section 2(a) - False Association:

• TTAB Tosses Out CAVERN CLUB Fraud and 2(a) False Association Claims

Section 2(d) - Likelihood of Confusion:

• WYHRR? TTAB Reverses 2(d) Refusal of MLOCKER Over "M" Designs for Differentials
• Test Your TTAB Judge-Ability: Which of These Three Section 2(d) Refusals Did the Board Reverse?
• Test Your TTAB Judge-Ability on Three Section 2(d) Appeals
• Despite Identity of Marks, TTAB Dismisses 2(d) Opposition for Lack of Proof That Pet Food and Organic/Natural Food Products Are Related
• Applying Doctrine of Foreign Equivalents, TTAB Finds TATTOO and TATUAJE Confusingly Similar for Cigars
• Finding Cat, Dog, and Human Supplements Related, TTAB Sustains ENSURE Opposition to CATSURE and DOGSURE
• Precedential No. 32: CLASSIC AMERICAN BLEND Confusingly Similar to CLASSIC CANADIAN for Tobacco, Says TTAB
• Test Your TTAB Judge-Ability: Are "RETHINKING YOUR FUTURE" and "CREATING YOUR FUTURE" Confusingly Similar for Self-Help Goods/Services?
• TTAB Finds Restaurant Services and Food and Beverage Items Related, Affirms 2(d) Refusal of ST. JOE'S COFFEE
• Test Your TTAB Judge-Ability: How Confident Are You About Deciding This Section 2(d) Gardening Case?
• Test Your TTAB Judge-Ability on These Two House Marks for Construction Services
• Test Your TTAB Judge-Ability on this Section 2(d) Refusal
• TTAB Turns Up Nose at NASACORT Opposition to LAZACOR for Rhinitis Remedies
• TTAB Dismisses BLACKBERRY's 2(d) Opposition to FASHIONBERRY for Online Fashion Magazines
• Summary Judgment: TTAB Dismisses "MUSCLE MILK" 2(d) Opposition to "NUTRI LECHE"
• Which of These Four Section 2(d) Refusals Did the TTAB Reverse?
• Precedential No. 27: TTAB Sustains 2(d) and Dilution Claims in MOTOWN Challenge to MOTOWN METAL for Toy Vehicles

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

• WYHA? TTAB Affirms Refusal of TEAM GEORGIA MARKETPLACE Without Disclaimer of MARKETPLACE
• Precedential No. 31: TTAB Affirms Mere Descriptiveness Refusal of ".MUSIC" for Domain-Related Services
• WYHA? TTAB Finds SMARTRASTER Merely Descriptive of Oil and Gas Data Logging Services
• Test Your TTAB Judge-Ability: Is MEGA-SAMPLER Merely Descriptive of Cigars?

Section 2(e)(1) - Deceptively Misdescriptive:

• Test Your TTAB Judge-Ability: Is GREEN BANK Merely Descriptive of Banking Services?
• TTAB Affirms 2(e)(1) Deceptively Misdescriptive Refusal of BLACK FLEECE for Fleeceless Clothing

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

• TTAB Finds FIRE ISLAND Primarily Geographically Descriptive of Beer

Section 2(f) - Acquired Distinctiveness:

• PICROSS Has Acquired Distinctiveness for Nintendo's Video Games, According to TTAB
• TTAB Affirms Refusal to Register Shape of Temperature Control Device due to Lack of Acquired Distinctiveness

Section 10 - Illegal Assignment of ITU:

• TTAB Finds No Violation of Section 10 in Assignment of Intent-to-Use Application for YING YANG VODKA

Dilution:

• Precedential No. 33: TTAB Rejects ROLEX Dilution Claim for Failure to Prove Likely Impairment of the Distinctiveness of the Mark
• Precedential No. 27: TTAB Sustains 2(d) and Dilution Claims in MOTOWN Challenge to MOTOWN METAL for Toy Vehicles

Fraud::

• TTAB Tosses Out CAVERN CLUB Fraud and 2(a) False Association Claims

Genericness:

• TTAB Finds HANGBOARD Not Generic for ... Guess What?
• TTAB Affirms Genericness Refusal of THREE CARD POKER for Gaming Services
• TTAB Affirms Genericness Refusal of "GRIND N BREW" for ... Guess What?
• Precedential No. 29: TTAB Affirms Genericness Refusal of "Person2Person Payment" For Electronic Funds Transfers
• Precedential No. 28: TTAB Reverses Genericness Refusal of COUNTRY MUSIC ASSOCIATION for Country Music Association Services
• Finding PAVEWAY Generic for Laser-Guided Bombs, TTAB Sustains Lockheed Opposition Versus Raytheon

Goods in Trade:

• Precedential No. 35: Finding Applicant's Medical Reports not to be Goods In Trade, TTAB Affirms Refusal to Register

Concurrent Use:

• Precedential No. 34: TTAB Approves Geographic Restriction in Concurrent Use Proceeding Despite Overlap of Parties' Territories

Discovery/Evidence/Procedure:

• Mattel Seeks Review of TTAB's "MOTOWN METAL" Decision
• TTAB's CAVERN CLUB Ruling Heads to Federal Court
• Precedential No. 30: TTAB Refuses to Compel Sweeping E-Discovery
• TTAB Dismisses Cancellation Petition On Contractual Estoppel Ground
• Court Rules That 1071(b) Civil Action For Review of TTAB Decision Was Timely Filed
• Precedential No. 26: TTAB Grants Motion to Exclude 26 Belatedly-Identified Trial Witnesses

Ownership:

• Who Owns the Mark "WORLD CHAMPIONSHIP CABBAGE CHUCK"? Pam Chestek Knows

Use in Commerce/Drawing/Specimen of Use:

• Test Your TTAB Judge-Ability: Is This Descriptive Mark Sufficiently Stylized To Merit a Principal Registration?
• TTAB Affirms Refusal to Register Rectangular Background Design Due to Failure to Function as a Trademark
• Test Your TTAB Judge-Ability on this Trademark Specimen of Use
• Test Your TTAB Judge-Ability on this Specimen of Use for Financial Advisory Services
• Test Your TTAB Judge-Ability: Is This a Case of Trademark Mutilation?

CAFC Oral Arguments/Decisions:

• CAFC Affirms TTAB Default Judgment Cancelling Registration Due to Failure to Comply with Discovery Orders
• CAFC Hears Oral Argument in MILANZA versus POTENZA and TURANZA Tire Appeal
• CAFC Affims TTAB Decision Sustaining "TELMEX" 2(d) Opposition
• CAFC Hears Oral Argument in Mag Instrument v. Brinkmann Appeal Re Functionality

Recommended Reading:

• TTABlog Holiday Gift: The Entire Nov-Dec 2011 Issue of The Trademark Reporter
• "Fame Law: Requiring Proof of National Fame in Trademark Law," by Xuan-Thao Nguyen
• Reccommended Reading: Sandra L. Rierson, "The Myth and Reality of Dilution"
• Recommended Reading: Lalonde and Gilson, "Trademarks Laid Bare: Marks That May Be Scandalous Or Immoral"
• Recommended Reading: Casagrande on the Role of Intent in Likelihood of Confusion Analysis
• Recommended Reading: Measuring Consumer Confusion through Online Surveys - Practical Guide to Survey Acceptance
• TTABlogger Article: "The Top Ten TTAB Decisions in 2010-2011" Plus 10% Discount on The IP Book

Other:

• New PTO "TSDR " System Will Put "Feathers" Database Program in Jeopardy
• USPTO Issues FY 2011 Performance and Accountability Report
• TTAB Posts December 2011 Hearing Schedule
• Prof. Gordon Thompson Questions TTAB's CAVERN CLUB Decision
• USPTO News: TEAS Version 4.9 to be Deployed on November 19th
• TTABlog Job Posting: Experienced IP Attorney Seeks Position in Massachusetts/Rhode Island
• TTAB Posts November 2011 Hearing Schedule
• TTAB New Filings and Performance Measures for FY 2011
• USPTO Issues 8th Edition of TMEP
• TTABlog Update: TTAB Judge Carlisle Walters Retired On October 3, 2011
• TTAB Posts October 2011 Hearing Schedule
• Current Roster of TTAB Administrative Trademark Judges

Text and Photographs (of First Encounter Beach) Copyright John L. Welch 2011.