TTAB Issued 45 Precedential Opinions in 2014

In calendar year 2014, the Board issued 45 precedential opinions - the same number as last year. [Note that the USPTO operates on a fiscal year that ends on September 30, and so its annual count of precedential opinions is likely different].  The REDSKINS and FLANAX decisions are currently the subject of district court actions for review under Section 1071(b). The appeals regarding the decisions in THE SLANTS and in the PRETZEL CRISPS cases were argued earlier this month at the CAFC.


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

• WYHA? Precedential No. 28: Finding "MOMSBANGTEENS" Scandalous for Adult Website, TTAB Affirms Section 2(a) Refusal
• Precedential No. 25: Finding ASSHOLE REPELLENT for Gag Gift to Be Vulgar, TTAB Affirms 2(a) Refusal

Section 2(a) - Disparagement:

• Precedential No. 26: In Split Decision, TTAB Orders Cancellation Of Six REDSKINS Registrations Due To Disparagement

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:

• Precedential No. 44: TTAB Test - Are "REDNECK RACEGIRL & Design" and "RACEGIRL" Confusable for Clothing?
• Precedential No. 40: TTAB Finds "MC" Family Famous, Sustains Dilution Opposition to MCSWEET for Pickled Vegetables
• Precedential No. 31: Fame of HARRY WINSTON Mark Crushes Son's BRUCE WINSTON Application for Jewelry
• Precedential No. 24: Finding Pepper Sauce and Agave Sweetener Related, TTAB Affirms 2(d) Refual of "CHANTICO & Design"
• Precedential No. 21: IKEA Gets Split Decision Against AKEA: Section 2(d), Yes in Part; Dilution, No
• Precedential No. 9: MINERS For Professional Baseball Goods Confusable With MINERS For Collegiate Sports Goods
• Precedential No. 5: "Family of Marks" Doctrine Inapplicable in Ex Parte Context, Says TTAB
• Precedential No. 1: Fame of SHAPE Magazine Yields 2(d) Opposition Victory over SHAPES for Beauty Salons

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

• Precedential No. 30: YOUR CLOUD Merely Descriptive of Cloud Computing-Related Services, Says TTAB
• Precedential No. 20: TTAB Affirms Mere Descriptiveness Refusal of TOURBILLON & Design for Jewelry and Watches
• Precedential No. 17: Is PERKS Generic For Volume Discount Buying Services? [No] Merely Descriptive? [Yes]

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(f) - Acquired Distinctiveness:

• Precedential No. 39: Toothbrush Base Design Lacks Acquired Distinctiveness, Says TTAB, Affirming Refusal

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:

• Precedential No. 42: Board Grants 12(b)(6) Motion to Dismiss Fraud, Nonuse, and Abandonment Counterclaims
• Precedential No. 41: Finding Fraud, TTAB Sustains Opposition to NATIONSTAR for Real Estate Brokerage Services

Genericness:

• Precedential No. 32: TTAB Finds CLOUDTV Generic for ... Guess What?
• Precedential No. 17: Is PERKS Generic For Volume Discount Buying Services? [No] Merely Descriptive? [Yes]
• Precedential No. 11: TTAB Affirms Genericness Refusal of CHURRASCOS (Stylized) for Restaurant Services
• Precedential No. 6: TTAB Finds PRETZEL CRISPS Generic for Pretzel Crackers

Lack of Bona Fide Intent:

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

Identification of Goods:

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

Ownership:

• Precedential No. 29: After Partnership Breakup, TTAB Declares FAIRWAY FOX Application Void Ab Initio
• Precedential No. 16: TTAB Orders Cancellation of Registration - Applicant not Owner of Underlying Foreign Registration

Nonuse/Specimen of Use:

• Precedential No. 38: TTAB Deems "BEAUTV" Use-Based Application Void Ab Initio Due To Non-Use
• Precedential No. 37: TTAB Affirms Rejection of Web Page Specimen for Computer Services
• Precedential No. 36: TTAB Reverses Refusal of Service Mark Specimen for Financial Services
• Precedential No. 8: Catalogs Lacked Necessary Ordering Information to Qualify as Trademark Specimen, Says TTAB

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
• 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. 45: TTAB Grants Motion to Amend Opposition to Section 66(a) Application
• Precedential No. 43: TTAB Dismisses XBOX 360 Cancellation Petition as Sanction for Misconduct
• Precedential No. 42: Board Grants 12(b)(6) Motion to Dismiss Fraud, Nonuse, and Abandonment Counterclaims
• Precedential No. 38: TTAB Deems "BEAUTV" Use-Based Application Void Ab Initio Due To Non-Use
• Precedential No. 35: Filing of Opposition by Foreign Attorney is Curable Defect, Says TTAB
• Precedential No. 34: TTAB Grants Motion to Strike Belated Supplemental Expert Report
• Precedential No. 33: Party Withdraws Designation of Testifying Expert Who Provided Report: No Deposition Allowed, Says TTAB
• Precedential No. 27: TTAB Rules that Notice of Reliance Must Indicate Relevance of Each Document by duPont Factor
• 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
• 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

Text Copyright John L. Welch 2015.