TTABlog Quarterly Index: July - September 2013

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Section 2(a) - Deceptiveness:

• Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine
  

Section 2(a) - Disparagement:

• Precedential No. 31: TTAB Dismisses U. Alabama Opposition to HOUNDSTOOTH MAFIA & Design for Clothing

Section 2(a) - False Connection:

• Precedential No. 31: TTAB Dismisses U. Alabama Opposition to HOUNDSTOOTH MAFIA & Design for Clothing

Section 2(a) - Scandalous of Immoral:

• Precedential No. 34: Findng "AWSHIT WORKS" to be Scandalous, TTAB Affirms Section 2(a) Refusal
• Test Your TTAB Judge-Ability: Is "I BANGED BETTY" Scandalous or Immoral Under Section 2(a)?

Section 2(c) - Consent to Register:

• TTAB Affirms Section 2(c) Refusal of MARTIN & WEYRICH ROSSO ALLEGRO for Wine

Section 2(d) - Likelihood of Confusion:

• Test Your TTAB Judge-Ability: Are REAL CHOICE and CLEARCHOICE DENTAL IMPLANTS Confusable for Implant Services?
• WYHA? Section 2(d) and Faulty Specimen Refusals Sink SCARLET Wine Application
• WYHA? TTAB Affirms Section 2(d) Refusal of BLUE STAR POWER SYSTEMS Over BLUE STAR for Generators
• Test Your TTAB Judge-Ability: Which Two of these Four Section 2(d) Refusals Were Reversed?
• Finding Living Plants Unrelated to Furniture Fabrics, TTAB Dismisses SUNBRELLA Opposition to SUN BRELLA'S
• Coach Loses Section 2(d) Design Mark Battle
• Test Your TTAB Judge-Ability on These Three Section 2(d) Appeals
• Test Your TTAB Judge-Ability: Are EWETOPIA and UTOPIA Confusable for Yarn?
• EDGECRAFT Proves Actual Confusion, TTAB Cancels EDGEWARE Registrations for Sharpeners
• Test Your TTAB Judge-Ability: Are NUTFFLES and P-NUTTLES Confusable for Candy?
• Precedential No. 31: TTAB Dismisses U. Alabama Opposition to HOUNDSTOOTH MAFIA & Design for Clothing
• TTABlog Uncorked: Collection of Section 2(d) Cases Involving Wine (Updated)
• Precedential No. 26: Finding Wine and Water Related, TTAB Sustains 2(d) Opposition
• FACEMAIL Falls on its Face When Faced with Famous FACEBOOK Mark
• Test Your TTAB Judge-Ability: Are C•PREME and SUPREME Confusingly Similar for Bicycles?
• Test Your TTAB Judge-Ability: Are Prepared Alcoholic Cocktails Related to Beer?
• Test Your TTAB Judge-Ability: Are "THE TEAM, THE TEAM, THE TEAM" And "TEAM" Confusable for Athletic Footwear?

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

• Test Your TTAB Judge-Ability: Is STACKED Merely Descriptive of Wine?
• Precedential No. 37: TTAB Affirms Mere Descriptiveness Refusal of SUPERJAWS for Machine and Hand Tools
• WORLD COIN NEWS Not Generic But Merely Descriptive for Coin-Related Magazines, Says TTAB
• Test Your TTAB Judge-Ability: Which One of these Four Mere Descriptiveness Refusals Was Reversed?
• Test Your TTAB Judge-Ability on These Three Mere Descriptiveness Refusals
• WYHA? TTAB Finds CASINO INFO Generic and/or Merely Descriptive of ... Guess What?
• Precedential No. 27: TTAB Rejects Genericness and Fraud Claims, But Cancels "ANNAPOLIS TOURS" Section 2(f) Registration for Mere Descriptiveness
• Test Your TTAB Judge-Ability: Is IPEN Merely Descriptive of Digital Pens?

Section 2(e)(1) - Deceptive Misdescriptiveness:

• Test Your TTAB Judge-Ability: Is "CARBON AUDIO" Merely Descriptive of Loudspeakers?
• Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine

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

• Test Your TTAB Judge-Ability: Is JAKEMANS Primarily Merely a Surname for Medicated Confectionery?

Section 2(e)(5) - Functionality:

• Precedential No. 32: TTAB Sustains Opposition to Pipe Boot Design, Finding it De Jure Functional
• TTAB Reverses Section 2(e)(5) Functionality Refusal of "3-click" Sound Mark for Eyeglasses

Section 2(f) - Acquired Distinctiveness:

• FLOSS LOOPS Lacks Acquired Distinctiveness, Even Among Prison Inmates, Says TTAB

Failure to Function:

• Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine
• TTAB Affirms Refusal to Register Non-Distinctive Product Design/Packaging for Clothing

Fraud:

• TTAB Finds No Fraud in 2008 Specimen of Use for Section 1(a) Application Filed in 2007
• TTAB Summarily Dismisses Two Fraud Claims in INTELLOGY Fracas
• Precedential No. 27: TTAB Rejects Genericness and Fraud Claims, But Cancels "ANNAPOLIS TOURS" Section 2(f) Registration for Mere Descriptiveness
• Precedential No. 28: TTAB Denies 12(b)(6) Motion to Dismiss Fraud Counterclaim

Genericness:

• TTAB Denies Petition to Cancel MUMBO Registration for Barbeque Sauce
• CAFC Affirms TTAB: "PRASTERONE.ORG" Generic for Prasterone-Related Website
• WORLD COIN NEWS Not Generic But Merely Descriptive for Coin-Related Magazines, Says TTAB
• Precedential No. 36: TTAB Finds FOOTLONG To Be Generic for Sandwiches
• Precedential No. 27: TTAB Rejects Genericness and Fraud Claims, But Cancels "ANNAPOLIS TOURS" Section 2(f) Registration for Mere Descriptiveness
• Genericness Counterclaim Demolishes ROCKSCAPE Registration for Landscaping Stone

Identification of Goods:

• Precedential No. 25: TTAB Affirms Refusal to Register Due To Indefinite Identification of Goods

Lack of Bona Fide Intent:

• TTAB Grants Two Summary Judgment Motions Due To Lack of Bona Fide Intent

Morehouse Defense:

• TTAB Summarily Rejects Morehouse Defense

Ownership:

• Precedential No. 24: Foreign Manufacturer, Not U.S. Distributor, Owns the Mark, Says TTAB

Priority:

• TTAB Dismisses "GREAT SEATS" 2(d) Opposition Due to Failure to Prove Priority
• Sale to Single Foreign Customer Sufficient for Priority, Says TTAB

Rule 2.61(b) Compliance:

• Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine

Section 10 Assignability:

• Precedential No. 33: TTAB Cancels ZILLA Registration, Section 10 Violated by Assignment of ITU Application to Parent

Discovery/Evidence/Procedure:

• Precedential No.35: TTAB Denies Protective Order, Requires Opposer to Answer Hundreds of Admission Requests
• Precedential No. 28: TTAB Denies 12(b)(6) Motion to Dismiss Fraud Counterclaim
• Precedential No. 30: TTAB Re-Designates as Precedential Its Opinon Vacating ROLEX/ROLL-X

CAFC Decisions:

• CAFC Affirms TTAB: "PRASTERONE.ORG" Generic for Prasterone-Related Website

Recommended Reading:

• Recommended Reading: LaLonde and Gilson, "The United States Supplemental Register: Solace, Substance, or Just Extinct?"
• Jerre B. Swann, "The Evolution of Dilution in the United States from 1927 to 2013"
• TTABlogger Article: "The Top Ten TTAB Decisions of 2012-2013" - Plus 40% Discount on "The IP Book"

Other:

• USPTO Seeks Feedback Regarding Post-Registration Amendment of I.D.s Due to Evolving Technology
• TTAB Posts September 2013 Hearing Schedule
• TTABlog September Road Trip: Ohio Double-Header at AOAIOIP in Cincinnati and Cleveland
• TTAB Posts August 2013 Hearing Schedule
• TTAB Posts July 2013 Hearing Schedule

Text Copyright John L. Welch 2013.