TTABlog Quarterly Index: January - March 2014

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Section 2(a) - False Association:

• Precedential No. 43: TTAB Affirms Section 2(a) False Connection Refusal of "LAKOTA" for Herbal Remedies

Section 2(a) - Scandalous or Immoral:

• Test Your TTAB Judge-Ability: Is "no $#!+" Scandalous for an Entertainment Website? [Yes]

Section 2(c) - Consent of Living Individual:

• Precedential No. 12: TTAB Reverses Section 2(c) Refusal of FRANKNDODD for Legislative Information Services

Section 2(d) - Likelihood of Confusion:

• CAFC Affirms TTAB: STONE LION CAPITAL Confusable With LION and LION CAPITAL for Financial Services
• Test Your TTAB Judge-Ability On These Four Section 2(d) Appeals
• Precedential No. 9: MINERS For Professional Baseball Goods Confusable With MINERS For Collegiate Sports Goods
• Test Your TTAB Judge-Ability: Are PLATINUM SERIES and PLATINUM PAK Confusable for Supplements? [Yes]
• TTAB Rejects "CRAZY HORSE" Opposition, Finding No Likelihood of Confusion and No Fame for Dilution
• Test Your TTAB Judge-Ability: Are These Two "WELLS" Logos Confusable for Frozen Confections? [Yes]
• Test Your TTAB Judge-Ability: Are Trade Association Services Related to Motor Oil? [Yes]
• Precedential No. 5: "Family of Marks" Doctrine Inapplicable in Ex Parte Context, Says TTAB
• WYHA? "CHAMPION DENT CRAFT" Bumps Into "DENT CRAFT" and "CHAMPION AUTO STORES"
• WYHA? "ELISA B." Confusable With "LISA B." for Clothing, Says TTAB
• Test Your TTAB Judge-Ability: Are BUFFALO and BUFFALO BUCKS Confusable for Gaming Machines? [Yes]
• Test Your TTAB Judge-Ability: Are "ENDORPHINS" and "ENDORPHIN & Design" Confusable for Clothing? [Yes]
• Precedential No. 1: Fame of SHAPE Magazine Yields 2(d) Opposition Victory over SHAPES for Beauty Salons
• Test Your TTAB Judge-Ability: Is HAUTE MESS for Hair Products Confusable with HOT MESS for Sun Tan Products? [No]
• Test Your TTAB Judge-Ability: Are These Two Avian Design Marks Confusable for Clothing? [Yes]
• What is the Likelihood of TTAB Affirmance of a Section 2(d) Likelihood of Confusion Refusal?
• Test Your TTAB Judge-Ability: Are BOW and BOWPERF Confusable for Lighting Fixtures? [Yes]
• Rendering of Hair Styling Services for Free to 4 Customers Established Priority in BLAST BLOW DRY Opposition
• Test Your TTAB Judge-Ability on These Two "MOTHER EARTH" Design Marks for Beer [Yes]

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

• Test Your TTAB Judge-Ability On These Three Mere Descriptiveness Refusals
• Test Your TTAB Judge-Ability: Is the Initialism "ISCM" Merely Descriptive of These Monitoring Services? [No]
• TTAB Affirms Refusal of "4D" as Merely Descriptive or Deceptively Misdescriptive of Amusement Park Attraction
• WYHA? TTAB Affirms Mere Descriptiveness Refusal of ABDOMINAL ELEVATOR for Surgical Instruments
• Test Your TTAB Judge-Ability on These Three Mere Descriptiveness Refusals
• Test Your TTAB Judge-Ability: Is STORMWATER NEUTRAL Merely Descriptive of Environmental Consulting? [Yes]
• What is the Likelihood of TTAB Affirmance of a Section 2(e) Refusal?

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

• TTAB Says "NUCLEAR" Deceptively Misdescriptive of Health Care Services, Must Be Disclaimed
• TTAB Affirms Refusal of "4D" as Merely Descriptive or Deceptively Misdescriptive of Amusement Park Attraction

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:

• Test Your TTAB Judge Ability: Is "NY" Primarily Geographically Deceptively Misdescriptive for Cosmetics Made Elsewhere?

Section 2(e)(5) - Functionality:

• Pennsylvania District Court Upholds TTAB Functionality Ruling On Plastic Suction Cup Configuration
• TTAB Affirms Section 2(e)(5) Functionality Refusal of Yellow Fan Winglet Design

Section 2(f) - Acquired Distinctiveness:

• Eighth Circuit Reverses District Court's Cancellation of Two Section 2(f) Registrations

Dilution:

• TTAB Rejects "CRAZY HORSE" Opposition, Finding No Likelihood of Confusion and No Fame for Dilution

Genericness:

• Precedential No. 11: TTAB Affirms Genericness Refusal of CHURRASCOS (Stylized) for Restaurant Services
• Precedential No. 6: TTAB Finds PRETZEL CRISPS Generic for Pretzel Crackers

Identification of Goods:

• Precedential No. 3: TTAB Applies Ordinary Meaning Test to Class Heading In Affirming Rejection of I.D. Amendment

Lack of bona fide Intent:

• Lack of Bona Fide Intent Dooms Two "FUTURE" Applications, Says TTAB

Non-use:

• TTAB Declares Registration Void Because Services Not Rendered Before Filing of Use-Based Application

Phantom Mark:

• WYHA? TTAB Affirms Refusal to Register Phantom Mark

Specimen of Use:

• Precedential No. 8: Catalogs Lacked Necessary Ordering Information to Qualify as Trademark Specimen, Says TTAB
• Test Your TTAB Judge-Ability On This Service Mark Specimen of Use

Concurrent Use:

• Precedential No. 2: In Concurrent Use Ruling, TTAB Okays Nationwide Registration Even Though Services Never Performed in NYC or CT

Discovery/Evidence/Procedure:

• Precedential No. 10: TTAB Denies Motion to Compel Due to Lack of Good Faith Effort to Resolve Dispute
• Precedential No. 7: TTAB Enters Judgment as Sanction For Intransigent Defendant's Failure to Attend Discovery Conference
• Precedential No. 4: Section 18 Available for Restriction of Color Mark to a Particular Shade, Says TTAB
• District Court Says Applicant Must Pay PTO Attorney's Fees in Section 1071(b) Civil Action, Win or Lose
• Precedential No. 45: Opposer Made Prima Facie Case Under Section 2(d), So TTAB Denies Applicant's Rule 2.132(b) Motion to Dismiss
• Precedential No. 44: Respondent Consents to Judgment on Abandonment Claim, TTAB Declines to Consider Fraud Claim

Other:

• TTABlog Flotsam and Jetsam: Issue No. 14
• Ninth Circuit Rules That Cancellation Is Not An Independent Cause of Action
• CAFC Hears Oral Argument in Appeal From "STOP THE ISLAMISATION OF AMERICA" Disparagement Refusal
• The Trademark Reporter's "Annual Review of U.S. Trademark Cases"
• TTAB Posts March 2014 Hearing Schedule
• Certiorari Petition Seeks Clarification of Preclusive Effect of TTAB Likelihood of Confusion Determination
• Updated List of TTAB Opposition Decisions on Appeal to the CAFC
• Updated List of TTAB Cancellation Decisions On Appeal to CAFC
• Updated List of TTAB Ex Parte Decisions on Appeal to the CAFC
• TTAB Posts February 2014 Hearing Schedule
• What is the Likelihood of TTAB Affirmance of a Section 2(e) Refusal?
• ABA Webinar: TTAB Tips on Motions for Summary Judgment
• Which Law Firms Filed the Most Oppositions in 2013?
• What is the Likelihood of TTAB Affirmance of a Section 2(d) Likelihood of Confusion Refusal?
• The Top Ten TTAB Decisions of 2013 [Part Two]
• The Top Ten TTAB Decisions of 2013 [Part One]
• Part 3: Tips for Effectively Searching the USPTO Database Using TESS - California IP Bar Webinar: Jan 14 at Noon (PST)
• Fourth Circuit Upholds District Court Affirmance of TTAB Dismissal of SWATCH Opposition versus SWAP
• District Court Says Applicant Must Pay PTO Attorney's Fees in Section 1071(b) Civil Action, Win or Lose
• The TTAB Issued 45 Precedential Decisions in 2013
• TTAB Posts January 2014 Hearing Schedule

Text and first two phoots Copyright John L. Welch 2014. Third photograph Copyright Peter D. Welch 2014.