TTABlog Quarterly Index: October - December 2013

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Section 2(a) - Deceptiveness:

• Test Your TTAB Judge-Ability: Is BLAZING SILKS Deceptive for Non-Silk Clothing?

Section 2(a) - Disparagement:

• Precedential No. 38: TTAB Affirms Section 2(a) Disparagement Refusal of "THE SLANTS" for Musical Band

Section 2(a) - Scandalous or Immoral:

• Test Your TTAB Judge-Ability: Is This "Statue of Liberty" Design Mark Scandalous Under Section 2(a)?

Section 2(b) - Governmental Insignia:

• CAFC Affirms TTAB: DC and Houston Seals Properly Refused Registration Under Section 2(b)

Section 2(d) - Likelihood of Confusion:

• Different Trade Channels Preclude Confusion of BENTLEY marks, Says TTAB
• TTAB Affirms 2(d) Refusal of ZERO EMISSIONS in View of Supplemental Registration
• PRIDER Confusable With PRIDE for Scooters, Says TTAB, Affirming 2(d) Refusal
• Test Your TTAB Judge-Ability: Are Socks Related to Jackets? How About Sunglass Lenses and Sunglasses?
• WYHA? TTAB Finds WINERY DOGS Confusable With WINE DOGS for Books About Dogs
• TTAB Sustains 2(d) Opposition: ACTRX for Supplements Confusable with ACT for Anti-Cavity Mouthwash
• TTAB Refuses to Take Judicial Notice of WIkipedia Entry, Affirms Section 2(d) Refusal of FREEBIRD BY STEVEN for Shoes
• Test Your TTAB Judge-Ability: Which One of these Section 2(d) Refusals Was Reversed?
• WYHA? TTAB Finds FLUTTER FAERIES for Dolls Confusable with FLITTER FAIRIES for Fantasy Toy Characters
• Test Your TTAB Judge-Ability: Is there a Reversal in these Four Section 2(d) Appeals?
• Test Your TTAB Judge-Ability: Are CARESTAT and STATCARE Confusable for Health Services?
• Finding Applicant's Proof of Analogous Use Inadequate, TTAB Enters Summary Judgment in SPENDOLOGY Opposition
• WYHA? TTAB Affirms 2(d) Refusal of "GAME GENIE & Design" for Video Game Cheat Software
• Test Your TTAB Judge-Ability: Are These Two "Marvelous" Marks Confusable for Movie Production Services?
• Test Your TTAB Judge-Ability on these Four Section 2(d) Appeals
• BOTULEX Confusable With Famous BOTOX Mark, Says TTAB
• TTAB Dismisses 2(d) Opposition Due to Lack of Proof That Wine and Apple Beverages Are Related
• WYHA? TTAB Affirms Section 2(d) Refusal: STORM CANDLE Confusable With STORM WATCH for Candles
• Test Your TTAB Judge-Ability on These Three Section 2(d) Appeals
• Test Your TTAB Judge-Ability: Is "ME SO HUNGRY" Confusable with "MISOFISHY" for Catering Services?

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

• Test Your TTAB Judge-Ability: Is SUPER-PHARM Merely Descriptive of Drug Store Services?
• District Court Reverses TTAB: INTELLIGENT QUARTZ Not Merely Descriptive of Watches
• Test Your TTAB Judge-Ability: Is THE COOLER COMPANY Merely Descriptive of Coolers?
• Test Your TTAB Judge-Ability: Which One Of These Three Mere Descriptiveness Refusals Was Reversed?
• TTAB Affirms Requirement to DIsclaim HOLISTIC in EARTHBORN HOLISTIC for Cat Food
• "PRESERVATION CLOUD" Merely Descriptive of Data Preservation Services, Says TTAB
• Test Your TTAB Judge-Ability: Is MAMMOCAT Merely Descriptive of Medical Imaging Devices?
• WYHA? TTAB Affirms Disclaimer Requirement: ARMOUR PIERCING Merely Descriptive of Archery Arrows
• TTAB Affirms Disclaimer Requirement; "4D" Merely Descriptive of Medical Monitoring Devices
• Test Your TTAB Judge-Ability: Is "KNOW YOUR SCORE" Merely Descriptive of Credit Reporting Services?
• Test Your TTAB Judge-Ability: Is JIN-JA Merely Descriptive of Herbal Tea?
• Precedential No. 37: TTAB Affirms Mere Descriptiveness Refusal of SUPERJAWS for Machine and Hand Tools

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

• Test Your TTAB Judge-Ability: Is ASHBURN Geographically Descriptive of Blankets?
• TTAB Sustains Opposition to LAGUNA CANDLES: Geographically Descriptive of Candles
• Test Your TTAB Judge-Ability: Is ACHOUFFE Primarily Geographically Descriptive of Beer?

Section 2(e)(5) - Functionality:

• TTAB Reverses Refusal to Register Leather Strip Pattern: Not Aesthetically Functional, Has Acquired Distinctiveness

Section 2(f) - Acquired Distinctiveness:

• TTAB Reverses Refusal to Register Leather Strip Pattern: Not Aesthetically Functional, Has Acquired Distinctiveness

Failure to Function:

• TTAB Affirms Failure-to-Function Refusal of 668-Word "Mark" for Printed Matter
• TTAB Affirms Refusal to Register Bicycle Enclosure Shape Due to Lack of Distinctiveness

Fraud:

• TTAB Dismisses Fraud Counterclaims in "M & Design" Kerfuffle

Genericness:

• TTAB Reverses Genericness Refusal of "BOURGOGNE DES FLANDRES" for ... Guess What?
• Divided TTAB Panel Finds NEIGHBORHOOD RADIO Generic for ... Guess What?
• Precedential No. 36: TTAB Finds FOOTLONG To Be Generic for Sandwiches
• PRÊT À BOIRE Not Generic for Wine, Says TTAB

Lack of Bona Fide Intent:

• Polo Runs Roughshod over Pro Se Applicant with No Bona Fide Intent
• Precedential No. 39: TTAB Sustains Swatch Opposition to IWATCH, Finding Lack of Bona Fide Intent

Non-use:

• Precedential No. 40: TTAB Sustains Opposition to CLOROTEC & Design Due to Non-Use

Ownership:

• TTAB Sustains Opposition to KLYMAXX in Band Name Ownership Dispute

Discovery/Evidence/Procedure:

• TTABummer: Pro Se Opposer Fails To Get Registration, Other Evidence Into Record
• Precedential No. 42: TTAB Grants Applicant's Contested, Pre-Trial Motion to Narrow Its Identification of Goods
• TTAB Grants Petitioner STP's Summary Judgment Motion After Registrant Admits Everything
• Precedential No. 41: Genericness Counterclaim Survives Dismissal of Opposer's 2(d) Claim, Says TTAB
• TTAB Dismisses CAFE BARBERA Opposition: Pleaded Registration Not Properly Made of Record

CAFC Decisions:

• CAFC Affirms TTAB: DC and Houston Seals Properly Refused Registration Under Section 2(b)

Recommended Reading:

• PLI Publishes New Editions of Siegrun Kane and Richard Kirkpatrick Books

Other:

• Updated List of TTAB Opposition Decisions on Appeal to the CAFC
• Updated List of TTAB Ex Parte Decisions on Appeal to the CAFC
• New Book: Trademark Litigation - Jurisdictional Comparisons
• TTAB Posts December 2013 Hearing Schedule
• Three More District Court "Appeals" from TTAB Decisions
• Current List of TTAB Decisions on "Appeal" to District Courts
• Current List of TTAB Cancellation Decisions On Appeal to CAFC
• Current List of TTAB Opposition Decisions on Appeal to the CAFC
• Current List of TTAB Ex Parte Decisions on Appeal to the CAFC
• Tips for Effectively Searching the USPTO Database Using TESS - California IP Bar Webinar: Nov. 12 at Noon (PST)
• TTAB Posts November 2013 Hearing Schedule
• Erik Pelton's Summary of October 18th TPAC Meeting
• Columbia Law School Symposium: "Secondary Liability for Trademark Infringement on the Internet" - November 8th
• John Marshall Law School Symposium, Nov. 8th: The Intersection of IP and Public Health
• TTAB Posts October 2013 Hearing Schedule

Text Copyright John L. Welch 2013.