TTABlog Quarterly Index: October - December 2015

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Section 2(a) - Disparagement:

• CAFC Deems Section 2(a) Disparagement Provision Unconstitutional
• TTAB Test: Is "DIAMONDS IN THE TROUGH" Deceptive for Diamond-less Jewelry? [Yes]

Section 2(a) - False Association:

• Precedential No. 39: TTAB Dismisses 2(a) False Association Claim: MARATHON MONDAY vs. BOSTON MARATHON
• Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims

Section 2(a) - Scandalous and Immoral:

• TTAB Test: Is "NUT SACK DOUBLE BROWN ALE" Scandalous for Beer? [No]
• TTAB Test: Is "F**K PROJECT" Scandalous for Handbags and Clothing? [Yes]

Section 2(c) - Consent to Register:

• Precedential No. 36: TTAB Gives the Boot to Nike's Inadequate Section 2(a) and 2(c) Claims

Section 2(d) - Likelihood of Confusion:

• WYHA? "COLDTOUCH" for Mattress Pads Confusable with "COOL TOUCH" for Mattresses, Says TTAB
• TTAB Test: Is VITA for Tea Confusable With VITA for Coffee [Yes]?
• TTAB Test: Which One of these Three Section 2(d) Refusals Was Reversed?
• WYHA? TTAB Finds CAOS for Tequila Confusable with CHAOS COCKTAILS for Alcoholic Mixed Beverages
• Parody "Defense" Fails to Stop Section 2(d) Refusal of "MY OTHER BAG ..." for Parodic Tote Bags
• TTAB Test: Are "DASH NEIGHBORHOOD" and "DASH IN" Confusable for Convenience/Gasoline Stores? [No]
• TTAB Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• WYHA? TTAB Finds "THE KITCHEN" Confusable with "DA KITCHEN" for Restaurant Services
• Customer Sophistication For Expert Witness Services Yields Section 2(d) Reversal
• "NAUTIGIRL & Design" Not Confusable With or Dilutive of NAUTICA, Says TTAB
• TTAB Test: Is "MONTERO & Design" Confusable With "MONTECRISTO" for Cigars? [Yes]
• TTAB Test: Is "REUBEN'S BREWS & Design" for Beer Confusable with "RUBENS (Stylized)" For Wine? [No]
• "EVADE OFFSHORE ARMOR (Stylized)" Mark Survives Under Armour's Section 2(d) Attack
• TTAB Grants Petition to Cancel MEN'S DIVORCE Supplemental Registration for Legal Services
• TTAB Test: Are "M WEBB" and "MAPPIN & WEBB" Confusable for Wallets and Purses?
• TTAB Test: Are "1-888-SU-ABOGADO" and "YOURLAWYER" Confusable for Legal Services? [Yes]
• TTAB Test: Is "MAC NET WIRELESS MONITORING" Confusable With "MAXNET" For Same Services? {No]
• Precedential No. 38: Fame of "will.i.am" Can't Save "I AM" Trademark Applications From 2(d) Bar
• Another TTAB Test: Are "FLUFF IT UP" and "FLUFFY STUFF" Confusable for Cotton Candy? [Yes]

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

• WYHA? TTAB Finds MULTI-BINGO Merely Descriptive of Gaming Devices
• TTAB Test: Is MEAT CANDY Merely Descriptive of Food Kiosk Services? [Yes}
• WYHA? TTAB Finds "SOL-R" Merely Descriptive of Solar Panel Brackets
• TTAB Test: Is PREGNANCY TEXT Merely Descriptive of Simulated Pregnancy Messages? [Yes]

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

• WYHA?: "STRETCH LA" Geographically Descriptive of Therapeutic Stretching Services, Says TTAB
• SUGARLANDS DISTILLING COMPANY Not Geographically Descriptive of Moonshine, But Confusable with SUGARLAND CELLARS for Wine
• TTAB Finds CAROLINA'S SUMMER HUMMER Geographically Descriptive of Alcoholic Beverages

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

• TTAB Affirms 2(e)(3) Refusal of GRAN HABANO for Cigars

Section 2(e)(5) - Functionality:

• Rifle Barrel Configuration Unregistrable Due to Functionality, Says TTAB
• Precedential No. 37: TTAB Affirms Functionality Refusal of Hot Bonder Product Design

Bona Fide Intent:

• TTAB Enters Summary Judgment: Applicant Lacked Bona Fide Intent

Fraud:

• TTAB Tosses Out Yet Another Bogus Fraud Claim
• TTAB Tosses Out Another Bogus Fraud Claim, Dismisses RESCUE ROOTER Cancellation Petition
• E.D. Va. Gives Preclusive Effect to TTAB Finding of Fraud in NATIONSTAR Case
• TTAB Dismisses Bogus Fraud Claim: No Proof of False Statement

Specimen of Use/Failure to Function:

• TTAB Affirms Refusal of IPOD for User Manuals: Not Goods in Trade

Concurrent Use:

• Concurrent Use Applicant Carves Out Utah For Its Restaurant Services

Discovery/Evidence/Procedure:

• Precedential No. 40: TTAB Refuses to Allow Witness to Change Testimony in HOLLYWOOD HOTEL Opposition
• Hell Freezes Over: TTAB Reverses NETCLOUD Decision on Reconsideration
• TTAB Dismisses Cancellation, Petitioner Failed to Prove Standing
• Applying B&B Hardware, District Court Gives Preclusive Effect to TTAB Priority Finding
• Unpleaded Morehouse Defense Sacked by Terry Hoage Vineyards

CAFC Decisions:

• CAFC Deems Section 2(a) Disparagement Provision Unconstitutional
• CAFC Hears En Banc Oral Argument in THE SLANTS Appeal

Recommended Reading:

• Recommended Reading: John M. Murphy, "Famous and Well-Known Marks in Mexico: Past, Present, and Future"
• Recommended Reading: John L. Brennan, "Determining Trademark Standing in the Wake of Lexmark"
• Recommended Reading: McCarthy and Roumiantseva, "Divert All Trademark Appeals to the Federal Circuit? We Think Not"

Other:

• Decisions of the Supreme Court, the CAFC, and the TTAB on Registrability Issues: July 2014 to Date
• Judge David E. Bucher Retires from the TTAB
• ALI Webinar Dec 8th: "Trademarks, Trade Dress, and False Advertising 2015: Recent Developments for Business and IP Lawyers"
• TTAB Posts December 2015 Hearing Schedule
• TTAB Posts November 2015 Hearing Schedule
• Current Roster of TTAB Administrative Trademark Judges
• TTABlog Quarterly Index: July-September 2015
• TTAB Posts October 2015 Hearing Schedule

Text and photos Copyright John L. Welch 2015.