TTABlog Quarterly Index: April to June 2014

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Section 2(a) - Deceptiveness:

• TTAB Reverses 2(a) Deceptiveness Refusal of "BODY MINT & Design" for Dietary Supplements

Section 2(a) - Disparagement:

• Precedential No. 26: In Split Decision, TTAB Orders Cancellation Of Six REDSKINS Registrations Due To Disparagement
• CAFC Affirms TTAB's "STOP THE ISLAMISATION OF AMERICA" Disparagement Decision

Section 2(a) - Immoral or Scandalous or Immoral:

• Precedential No. 25: Finding ASSHOLE REPELLENT for Gag Gift to Be Vulgar, TTAB Affirms 2(a) Refusal
• TTAB Affirms Section 2(a) Scandalousness Refusal of "FOK'N HURTS" for Stun Guns

Section 2(d) - Likelihood of Confusion:

• Test Your TTAB Judge-Ability: Is GLOBAL-SP for O-Rings Confusable with SP DIRECT for Gaskets? [Yes]
• BOMBER GEAR for Dry Clothing Confusable With BOMBER(S) for Hats and Shirts, Says TTAB
• Fame of NAUTICA Mark Yields 2(d) Opposition Victory over NAUTI LIFE for Clothing
• OPROSHIELD and SHIELD Confusingly Similar for Mouth Guards, Says TTAB
• TTAB Finds Confusing Similarity Between "Paw" Design and "KELME & Paw Design" For Clothing
• Test Your TTAB Judge-Ability: Are READR and READER Confusable for Software for Reading Digital Magazines?
• Test Your TTAB Judge-Ability On This Section 2(d) Refusal of ORGASMIC for Sex Education Books
• Precedential No. 24: Finding Pepper Sauce and Agave Sweetener Related, TTAB Affirms 2(d) Refual of "CHANTICO & Design"
• Test Your TTAB Judge-Ability: Are SUN SOUL ORCHESTRA and SOUL SUN Confusable for Musical Recordings? [Yes]
• Test Your TTAB Judge-Ability: Is INDIGO VANITY for T-Shirts Confusable With VANITY FAIR for Camisoles? [No]
• Test Your TTAB Judge-Ability on these Two Design Marks for Keyboards and Computer
• Test Your TTAB Judge-Ability: Are LEN and LENS Confusable for Clothing Store Services? [Yes]
• Precedential No. 21: IKEA Gets Split Decision Against AKEA: Section 2(d), Yes in Part; Dilution, No
• CAN DEW for Nutritional Drink Mixes Confusable With Pepsico's Famous DEW Mark, Says TTAB
• CITIAIR for Travel Agency Confusable With Famous "CITI" Family of Marks, Says TTAB

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

• Test Your TTAB Judge-Ability: Is DIAMOND Merely Descriptive of Paper-Cutting Dies? [Yes}
• WYHA? TTAB Affirms Mere Descriptiveness Refusal of "TEA QUILA" for Alcoholic Beverages
• TTAB Overrules Disclaimer Requirement for BENEDIKTINER for Beer and Food Services
• Test Your TTAB Judge-Ability: Is "O-RING CONDOM" Merely Descriptive of Condoms?
• Test Your TTAB Judge-Ability: Is LINKED SYSTEM Merely Descriptive of Power Tools With Interchangeable Batteries? [No]
• SPIDERGRAPH Merely Descriptive of Printed Graphs and Charts, Says TTAB
• Divided TTAB Panel Reverses Mere Descriptiveness Refusal of "GLOBAL MINING HOLDING COMPANY, LLC"
• Precedential No. 20: TTAB Affirms Mere Descriptiveness Refusal of TOURBILLON & Design for Jewelry and Watches
• Test Your TTAB Judge-Ability: Is "N2WINES" Merely Descriptive of Wine Sold in Kegs? {No]
• Precedential No. 17: Is PERKS Generic For Volume Discount Buying Services? [No] Merely Descriptive? [Yes]
• Test Your TTAB Judge-Ability: Is "ÓGRA" (Irish Gaelic) Merely Descriptive of Beauty Care Services? [No]

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

• Precedential No. 22: TTAB Affirms Geographical Descriptiveness Refusal of HOLLYWOOD LAWYERS ONLINE for Online Referral Services

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

• TTAB Affirms Section 2(e)(3) Refusal of KUBA KUBA BY DREW ESTATE for Cigars

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

• TTAB Reverses Section 2(e)(4) Surname Refusal of ROMANÓV for Decorative Eggs

Section 2(f) - Acquired Distinctiveness:

• Applicant Avoids Disclaimer of "EZ" Via Transferred Distinctiveness From Prior Registrations
• Finding Proof of Acquired Distinctiveness Insufficient, TTAB Affirms Refusals to Register Fence Post Configurations
• Machine Stand Configuration Lacked Acquired Distinctiveness, Says TTAB

Dilution:

• Precedential No. 23: CHANEL for Real Estate Services Dilutes Famous CHANEL Mark, Says TTAB
• Precedential No. 21: IKEA Gets Split Decision Against AKEA: Section 2(d), Yes in Part; Dilution, No

Fraud:

• TTAB Grants Leave to Add Fraud Claim, If Adequately Re-pleaded
• TTAB Tosses Out Fraud Claim - Insufficient Proof of Intent to Deceive the USPTO

Genericness:

• CAFC Affirms TTAB: CHILDREN'S DHA Generic for Nutritional Supplements Containing DHA
• Precedential No. 17: Is PERKS Generic For Volume Discount Buying Services? [No] Merely Descriptive? [Yes]

Lack of Bona Fide Intent:

• Precedential No. 13: Lack of Bona Fide Intent Dooms Two "FUTURE" Applications, Says TTAB

Ownership:

• Precedential No. 16: TTAB Orders Cancellation of Registration - Applicant not Owner of Underlying Foreign Registration

Specimen of Use:

• Test Your TTAB Judge-Ability On These Two Mutilation Cases

Non-use:

• Affirming Refusal, TTAB Says "HOURS OF ENERGY NOW" Not Being Used as a Trademark

Cancellation Under Section 14(3):

• Precedential No. 19: TTAB Grants Bayer's Petition for Cancellation Of FLANAX Registration Under Section 14(3)

Concurrent Use:

• Precedential No. 14: Junior User Awarded Concurrent Use Registration for Entire Country Except New Jersey and New York

Discovery/Evidence/Procedure:

• Reversing TTAB, CAFC Rules that Cubatabaco May Seek Cancellation of General Cigar's COHIBA Registrations
• PTO Publishes Precedential Director's Ruling Reversing Abandonment Refusals
• TTAB Denies Motion to Strike Late-Filed Final Brief
• Precedential No. 18: Identity of One Party's Trial Witnesses Cannot Be Kept Secret from Other Party
• Precedential No. 15: TTAB Dismisses Opposition Under Rule 2.132(a) For Failure To Prosecute

Erik Pelton, Yours Truly, Marty Schwimmer, Jeremy Phillips
Recommended Reading:

• Ted Davis: 2014 Annual Review of U.S. Federal and State Case Law
• Recommended Reading: Coleman and Price, Secondary Trademark Infringement

CAFC:

• CAFC Affirms TTAB: CHILDREN'S DHA Generic for Nutritional Supplements Containing DHA
• CAFC Affirms TTAB's "STOP THE ISLAMISATION OF AMERICA" Disparagement Decision
• CAFC Hears Oral Argument in ANNAPOLIS TOURS Cancellation Appeal
• Three CAFC Oral Arguments This Week in TTAB Appeals

Other:

• Decisions of the TTAB and the CAFC on Registrability Issues: July 2013 to June 2014
• TTABlogger on Two "IP Fridays" Podcasts
• TTAB Posts June 2014 Hearing Schedule
• Meet the Bloggers X - Royal Hong Kong Yacht Club
• TTABlog Challenge: Can You Find All 21 TTAB Judges?
• TTAB Posts May 2014 Hearing Schedule
• USPTO Roundtable, April 11: Amendments to Identifications of Goods and Services Due to Technology Evolution
• TTAB Posts April 2014 Hearing Schedule

Text Copyright John L. Welch 2014.