TTABlog Quarterly Index: April - June 2012

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! [Note that E-mail subscribers must go to the blog to see comments]. Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at lalaw.com.

Meet The Bloggers VIII --photo by Will Maguire
Section 2(d) - Likelihood of Confusion:

• On Summary Judgment, TTAB Says No "CAN DEW" Due to Confusingly Similarity to "MOUNTAIN DEW" for Soft Drinks
• WYHA? TTAB Finds "FIREBIRD X" For Guitars Confusingly Similar to "FIREBIRD" for Amplifiers
• Test Your TTAB Judge-Ability: Are SOOGLE And GOOGLE Confusingly Similar for Travel Services?
• TTAB Finds LOUISIANA FAST START Not Confusingly Similar to QUICK START For Business Training Services
• Test Your TTAB Judge-Ability: Are NIKEA and IKEA Confusingly Similar for Candy?
• TTAB Finds RLX RALPH LAUREN Not Confusingly Similar to ROLEX for Watches
• Test Your TTAB Judge-Ability: Two "Skateboarder" Design Marks for Clothing
• Test Your TTAB Judge-Ability: Is GREEN DOOR for Sex Club Services Confusingly Similar to THE GREEN DOOR for Restaurant Services?
• Finding Fruit Juice and Coffee/Tea Related, TTAB Affirms 2(d) Refusal of COCO LOCO
• TTAB Finds GAME FACE for Sports Masks Confusingly Similar to GAME FACE for Paint Ball Goggles
• Test Your TTAB Judge-Ability: Are BODY FRUIT and FRUIT OF THE LOOM Confusingly Similar for Clothing?
• AMERICA'S STRONGEST MAN Not Confusingly Similar to WORLD'S STRONGEST MAN, Says TTAB
• Opposer Dodges Fraud Counterclaim, But Purchaser Care and Lack of Actual Confusion Lead to TTAB Dismissal
• Test Your TTAB Judge-Ability on These Five Section 2(d) Appeals
• "VIDEO POD" for Video Projectors Merely Descriptive and Confusingly Similar to "IPOD," Says TTAB
• Test Your TTAB Judge-Ability: Is DA VINCI Confusingly Similar to L'IL DAVINCI and DON DAVINCI for Clothing?
• PRL (Ralph Lauren) Rides Fame of "Polo Player" Design Mark to Victory in Section 2(d) Cancellation
• TTAB Finds Reverse Confusion Between KUTT CALHOUN and Supplementally-Registered CALHOUN for Clothing
• WYHA? TTAB Affirms 2(d) Refusal of AIRIA over AREA, Both for Night Clubs
• Test Your TTAB Judge-Ability: Are NETGARD and NETGATE Confusingly Similar for Security Software?
• WYHP? TTAB Denies Section 2(d) Petition to Cancel SCIENTIFIC SOLUTIONS Registration Due To Dissimilarity of Goods
• WYHA? TTAB Affirms 2(d) and Specimen Refusals of SONEX for Aircraft Engines
• Test Your TTAB Judge-Ability: Is Confusion Likely Between COSMETIC WORLD for Industry Newsletter and for Retail Store Services?
• Test Your TTAB Judge-Ability on these Four Section 2(d) Appeals
• Precedential No. 19: TTAB Finds Actual Confusion and Bad Faith, Sustains SUPER CHIRO TEA Opposition
• Precedential No. 18: Invoking 13th duPont Factor, TTAB Reverses 2(d) Refusal of ANYWEAR for Footwear
• Test Your TTAB Judge-Ability: Is INVISIBLE for Hair Care Preparations Confusable with INVISIBLE for Cosmetics?
• Test Your TTAB Judge-Ability: Is TEMPEST for Perfume Confusingly Similar to TEMPEST for Indoor Tanning Preparations?

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

• Test Your TTAB Judge-Ability on These Four Section 2(e)(1) Mere Descriptiveness Refusals
• WYHA? "THE BIG RIG MATTRESS" Merely Descriptive of Mattresses, Says TTAB
• TTAB Reverses Mere Descriptiveness Refusal of SURF COUTURE for Clothing
• "VIDEO POD" for Video Projectors Merely Descriptive and Confusingly Similar to "IPOD," Says TTAB
• Affirming Disclaimer Requirement, TTAB Finds RESPOSABLE Merely Descriptive of Patient Sensors
• Test Your TTAB Judge-Ability: Is "FANTRIP" Merely Descriptive of Travel Agency Services for Fan-Themed Destinations?

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

• TTAB Affirms Section 2(e)(2) Geographical Descriptiveness Refusal of PITTSBURGH GLASS WORKS for Glass

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

• Test Your TTAB Judge-Ability: Is CROMWELL for Safety Helmets Primarily Merely a Surname?

Coleman, Schwimmer, Welch, Chicago, 2007
Section 2(e)(5) - Functionality:

• TTAB Reverses Functionality Refusal of 3M Hand Sanitizer Dispenser, But Affirms Failure-to-Function Refusal

Section 2(f) - Acquired Distinctiveness:

• TTAB Reverses Functionality Refusal of 3M Hand Sanitizer Dispenser, But Affirms Failure-to-Function Refusal
• On CAFC Remand, TTAB Again Finds COACH Has Acquired Distinctiveness for Test-Prep Software
• Finding Coke's "ZERO" Has Acquired Distinctiveness, TTAB Dismisses Opposition
• Section 2(f) Evidence for Backpack Design Falls Short, Says TTAB

Abandonment:

• TTAB Dismisses MODEL AMERICAN Cancellation Petition for Failure to Make Prima Facie Case of Abandonment

Dilution:

• On Summary Judgment, TTAB Says No "CAN DEW" Due to Confusingly Similarity to "MOUNTAIN DEW" for Soft Drinks

Fraud:

• Opposer Dodges Fraud Counterclaim, But Purchaser Care and Lack of Actual Confusion Lead to TTAB Dismissal
• FRAUD-O-METER Version 2.0 Released in Beta

Genericness:

• TTAB Finds "WHO'S WHO ONLINE" Generic for ... Guess What?
• TTAB Dismisses Petition to Cancel BACKRACK for Truck Headache Racks Due to Insufficient Proof of Genericness
• Test Your TTAB Judge-Ability: Is RECYCLED PAPER Generic for Greeting Cards?
• "DOG GAMES" for Pet Toys Clears Genericness and 2(f) Hurdles, Says Divided TTAB Panel

Discovery/Evidence/Procedure:

• Precedential No. 21: TTAB Excludes Opposer's Sole Trial Witness Due To Failure to Previously Identify Her
• Precedential No. 20: TTAB Says Partial Cancellation for Abandonment Governed by Section 14, not Section 18
• Three Motions to Amend Marks: How Would You Rule?

Use in Commerce/Drawing/Specimen of Use:

• Precedential No. 22: TTAB Re-designates Azteca Specimen-of-Use Decision as Precedential
• USPTO Amends Rules Regarding Specimens of Use, Launches Pilot "Deadwood" Project
• On Remand from CAFC, TTAB Affirms Failure-to-Function Refusal of ONE NATION UNDER GOD for Charity Bracelets
• Test Your TTAB Judge-Ability on this Trademark Specimen of Use
• WYHA? TTAB Affirms 2(d) and Specimen Refusals of SONEX for Aircraft Engines
• Test Your TTAB Judge-Ability on this Service Mark Specimen of Use

Meet the Bloggers I, San Diego, 2005Click on photo for larger picture
CAFC Decisions:

• Divided CAFC Panel Affirms TTAB's Becton, Dickinson Functionality Ruling
• Double WYHA? CAFC Affirms TTAB: "NATIONAL CHAMBER" Merely Descriptive of Chamber of Commerce Services

Recommended Reading:

• Recommended Reading: Anne Gilson LaLonde, "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law"
• INTA Meeting Reading: The Trademark Reporter's Annual Review of International Trademark Law

Other:

• TTABlog Tweets and Re-Tweets
• TTAB Posts June 2012 Hearing Schedule
• Ted Davis Outline From INTA 2012: Annual Review of U.S. Federal Case Law
• TTABlogger Road Trip: San Francisco IP Law Assn., June 1-3, Healdsburg, CA
• TTABlogger Written Materials for Wednesday's INTA Talk
• USPTO Seeks Nominations for Trademark Public Advisory Committee (TPAC)
• TTAB Posts May 2012 Hearing Schedule
• BARBIE v BARBIE GRIFFIN Final Argument at TTAB
• Former TTAB Nemesis Leo Stoller Pleads Guilty to Bankruptcy Fraud
• Meet the Bloggers VIII at INTA 2012: Have You Signed Up?
• TTABlogger in Person and in Print at INTA 2012 Annual Meeting
• TTAB Posts April 2012 Hearing Schedule

Text Copyright John L. Welch 2012.