TTABlog Quarterly Index: July-September 2015

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Section 2(a) - Disparagement:

• E.D. Va. Affirms TTAB: REDSKINS Marks Found Disparaging of Native Americans

Section 2(d) - Likelihood of Confusion:

• Precedential No. 34: MMMBop! TTAB FInds C.H. HANSON Confusable with HANSON for Hand Tools
• Precedental No. 33: North Face Gets Split Decision In Multi-Class Section 2(d) Opposition
• TTAB Test: Are Jams and Jellies Related to Beer for Section 2(d) Purposes? [Yes]
• Precedential No. 32: Orange Bang Wins "OLÉ" Section 2(d) Beverage Bullfight
• ASHCON Confusable With ASHCORE AND ASHCOLITE for Ash-Hauling Goods and Services, Says TTAB
• TTAB Test: Are Airline Services Related to Model Airplanes Under Section 2(d)? [Yes]
• Opposer Fails to Prove Acquired Distinctivess in MATTRESS OVERSTOCK, TTAB Dismisses Opposition
• TTAB Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• Yet Another TTAB Test: Must "CLUB" Be Disclaimed for Vehicle Reservation Services? [Yes]
• Another TTAB Test: Is PURPLE HAZE for Guitar Pickups Confusable With HAZE for Amplifiers? [Yes]
• TTAB Test: How Would You Decide These Four Recent Appeals?
• TTAB Test: Which Two of These Four Section 2(d) Refusals Were Reversed?
• Precedential No. 27: Fame of BUD for Beer Brings Victory over WINEBUD for Wine
• TTAB Test: Are "THE PERFECT FACE" and "PARFAIT VISAGE" Confusable for Skin Care Products? [No]
• WYHA?" LOVE IS MY RELIGION" Confusable With "LOVE IS RELIGION" for Clothing, Says TTAB
• TTAB Test: Are MAYARI and MAYA Confusable for Wine? [No]
• Forget Parody: GOTHAM BATMEN Confusable with Famous BATMAN, Says Split TTAB Panel
• TTAB Test: Which of These Four Section 2(d) Refusals Was/Were Reversed?
• Precedential No. 20: 13th du Pont Factor Yields TTAB 2(d) Reversal
• TTAB Test: Which One of These Four Section 2(d) Refusals Was Reversed?
• Precedential No. 16: MARAZUL and BLUE SEA Confusable for Seafood, Says TTAB

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

• Precedential No. 35: TTABang! SMART SERIES Merely Descriptive of Firearm Safes
• TTAB Test: Which One of These Four Mere Descriptiveness Refusals Was Reversed?

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

• Precedential No. 31: "THCTea" Deceptively Misdescriptive of Tea-Based Beverages, Says TTAB
• "INDICES" Not Deceptively Misdescriptive of Healthcare Data Reporting, Says TTAB

Section 2(e)(2) - Geographical Descriptiveness:

• TTAB Reverses Geographical Descriptiveness Refusal of MONTUSSAN for Wine

Section 2(f) - Acquired Distinctiveness:

• Teardrop Design Mark is Product Shape, Needs Acquired Distinctiveness, Says TTAB
• TTAB Deflates Feeble Attacks on SWISSBIKE Application and SWISS MILITARY Registration for Bicycles

Failure to Function/Specimen of Use:

• TTAB Test: Are Jams and Jellies Related to Beer for Section 2(d) Purposes? [Yes]
• TTAB Test: Which One of these Three Refusals Was Reversed?
• TTAB Test: Is This Display of "SmartDGA" Inherently Distinctive? [No]
• TTAB Precedential No. 25: "WALK-IN-SHOPPER" Not Used As Source Indicator for Applicant's Services
• TTAB Affirms Refusal of Deer Logo with "Phantom" Antlers, for Coffee, on Four Grounds

Genericness:

• TTAB Reverses Genericness Refusal of SKINSLEEVES, Finds Acquired Distinctiveness
  

Lack of Bona Fide Intent:

• Precedential No. 30: Finding Lack of Bona Fide Intent, TTAB Sustains SWISS GRILLS Opposition

Non-use:

• Finding Lack of Use in Commerce, TTAB Orders Cancellation of "ADD A ZERO" Registrations

Ownership:

• Precedential No. 21: TTAB Sides With Band in "WONDERBREAD 5" Ownership Dispute
• Precedential No. 18: U.S. Seller, Not Foreign Manufacturer, Owns Trademark, TTAB Rules

Concurrent Use:

• Precedential No. 29: TTAB Dissolves Concurrent Use Proceeding, Plaintiff Fails to Prove Prior Use

Discovery/Evidence/Procedure:

• Eighth Circuit Directs District Court to Apply Preclusion in B&B v. Hargis
• Precedential No. 28: TTAB Denies Motion to Add Claim Preclusion Defense As Futile
• Precedential No. 26: TTAB Dismisses Opposition As Untimely, Denying Opposer Benefit of Another's Extension of Time
• Precedential No. 24: TTAB Summarily Dismisses Cancellation Petition Due to Claim Preclusion
• TTAB Grants Partial Summary Judgment in Cancellation Proceeding Based on Claim Preclusion
• Precedential No. 23: Abandonment and Opposition Filed on Same Day, TTAB Dismisses Opposition Without Prejudice
• Precedential No. 22: Unreasonable Party Loses Right to Substantive Objections to Document Requests
• Applying Claim Preclusion, TTAB Affirms 2(e)(1) Refusal of Re-filed RESTORE LIFT Application
• TTAB Deflates Feeble Attacks on SWISSBIKE Application and SWISS MILITARY Registration for Bicycles
• Precedential No. 19: PTO "Clear Error" Determination Not Reviewable by Petition or Appeal
• Precedential No. 17: TTAB Refuses to Vacate HOUNDSTOOTH MAFIA Decision

CAFC Decisions:

• CAFC Reverses TTAB: Paw Print Marks Not Confusingly Similar
• CAFC Affirms TTAB: FISH FRY PRODUCTS Lacks Acquired Distinctiveness, Disclaimer Required
• CAFC Reverses and Remands TTAB 2(d) Decision Due to Inadequate Appreciation of PEACE & LOVE

Recommended Reading:

• Latest Version of TTAB's "Advanced Practice Tips"
• Recommended Reading: Alexandra Bistline, Trademark LItigation After B&B v. Hargis"
• Recommended Reading: Ted Davis, Federal Registration and the Constitutional Right to Petition
• Recommended Reading: Peter Karol, "The Constitutional Limitation on Trademark Propertization"
• Recommended Reading: William McGeveran, "The Imaginary Trademark Parody Crisis (And The Real One)"

Other:

• TTABlogger Article: "The Top Ten TTAB Decisions of 2014-2015" - Plus 40% Discount on "The IP Book"
• TTAB Posts September 2015 Hearing Schedule
• Two TTAB Administrative Trademark Judges Appointed
• USPTO/TTAB Seek Comments on Proposed Revision of Standard Protective Order
• TTAB Posts August 2015 Hearing Schedule
• TTAB Posts July 2015 Hearing Schedule

Text and photos Copyright John L. Welch 2015.