TTAB Quarterly Index: July - September 2018

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Section 2(a) - Scandalous:

• USPTO Files Petition for Writ of Certiorari in Brunetti "FUCT" Case

Section 2(d) - Likelihood of Confusion:

• TTAB Test: How Did These Three Section 2(d) Appeals Turn Out?
• TTAB Test: Is HUSKY for Beer Confusable with HUSKY for Vodka?
• TTAB Test: Is TACOLAND for Music Concerts Confusable With TACO TIERRA & Design for Restaurant Services?
• TTAB Test: Is “LUNACYCLE” for Electric Bicycles Confusable with “LUNA & Design” for Women’s Bicycle Clothing and Accessories?
• TTAB Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• PHILLIP GAVRIEL for Jewelry Fails to Prove Priority Over and Likelihood of Confusion With MANSUR GAVRIEL for Handbags, Says TTAB
• TTAB Finds BOYY Merely Descriptive and Confusable with BOY, Both for Clothing
• TTAB Test: Are these Two Word + Design Marks Confusable for Food Kits and Delivery Services?
• WYHA? TTAB finds AMERICA’S HOMETOWN PIZZA PLACE Confusable with HOMETOWN PIZZA for Restaurant Services
• ASKBOT for Collaboration Software Not Confusable with ASK for Search Engine Services, Says TTAB
• Invoking 13th duPont Factor, TTAB Reverses 2(d) Refusal of LA CHULA & Design over CHULA BRAND for Fruit Products
• Precedential No. 28: TTAB Test - Is I'M SMOKING HOT Confusable With SMOKIN' HOT SHOW TIME for Cosmetics?
• TTAB Reverses 2(d) Refusal of SQUEEZE JUICE COMPANY In View Of 12 Third-Party SQUEEZE Registrations
• Precedential No. 27: TTAB Affirms 2(d) Refusal of #WILLPOWER - Hashtag Has No Trademark Significance
• WYHA? COLORGANICS for Hair Care Products Confusable With KOLORGANICS for Cosmetics, Says TTAB
• WYHA? TTAB Finds "OPTIMUM BENEFITS PACKAGE" Confusable With "OPTIMUM" for Insurance Underwriting Services
• WYHA? TTAB Finds FREESTYLE for Comforters Confusable With FREESTYLE for Pillows
• WYHA? LEGION OF GOOD WILL Confusable with GOODWILL for Charitable Services, Say TTAB
• Finding PILLOW PODS Confusable With PILLOW PAWS for Socks, TTAB Grants Cancellation Petition, Dismisses Section 18 Counterclaim
• TTAB Finds MASTERMIND for Beer Confusable with MASTERMIND VODKA for Spirits
• Univ. of Oklahoma Fails to Score in Opposition to "OUcare" for Medical Apparatus
• Opposer Proves Priority by Use Analogous to Trademark Use and by Shipment of Two Samples
• TTAB Test: Is "TAMAL TAMAYO" for Tamales Confusable with "TAMAYO" for Restaurant Services?
• Precedential No. 25: "I LOVE YOU" Fails to Function as a Trademark for Bracelets AND is Confusable with "I LUV U" for Jewelry, Says TTAB
• Finding the JACKSON 5 Trademark Famous, TTAB Tosses Out Siggy's J5 Registration and Application
• "12TH MAN HANDS" for Handmade Soap Confusable With Texas A&M'S "12TH MAN" for Towels, Says TTAB
• TTAB Grant MLB's Section 2(d) Petition for Cancellation of Registration for MAJOR LEAGUE ZOMBIE HUNTER & Design for Clothing
• “CODE” Confusable With “CODE2040” for Educational Services, Says TTAB
• TTAB Test: Are Fruit-Based Beverages Related to Nutritional Supplements? [Yes]
• Finding GUCCI Marks Exceedingly Famous, TTAB Sustains Opposition to UBERTO GUCCI Marks for E-Cigarettes
• Finding Clothing Related to Athletic Training Services, TTAB Affirms 2(d) Refusal of MAVA

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

• TTAB Test: Is "PURSE SIZED" Merely Descriptive of Tampons?
• TTAB Test: Is "BIRTHPLACE OF THE AMERICAN BIKER" Merely Descriptive of Clothing?
• TTAB Test: Is THE HALAL SHACK Merely Descriptive of Restaurant Services?
• WYHA? LYNKD Merely Descriptive of Security Devices Controllable by Mobile Phone, Says TTAB
• "COPPER 88" Merely Descriptive of Clothing Made of Fabric Containing Copper, Says TTAB
• BUYER ENGINE Merely Descriptive of Real Estate Marketing Services, Says TTAB

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

• TTAB Test: Is EAST END Geographically Descriptive of a Houston Applicant's Alcoholic Beverages? [No]

Section 2(e)(5) - Functionality:

• On Summary Judgment, TTAB Orders Cancellation of 3-Concentric-Loop Wastewater Ditch Registration on Functionality Ground
• Bullet-Shaped Antenna Not Aesthetically Functional, But Lacks Acquired Distinctiveness, Says TTAB

Section 2(f) - Acquired Distinctiveness:

• Bullet-Shaped Antenna Not Aesthetically Functional, But Lacks Acquired Distinctiveness, Says TTAB

Abandonment:

• Finding No Abandonment Despite 6 Years of Nonuse, TTAB Dismisses NEW MAN Cancellation Petitions
• Applicant's Renunciation of Underlying International Registration Results in Judgment for Opposer

Color Marks:

• Precedential No. 29: Multiple Colors Applied to Product Packaging Cannot Be Inherently Distinctive, Says TTAB

Genericness:

• TTAB Test: Is "SECOND OPINION" Generic for Cancer Testing Services?

Nonuse/Specimen of Use/Failure to Function:

• TTAB Test: Does the Drawing of this Stylized "M" Mark Match the Specimen of Use?
• TTAB Affirms Refusals of SOUTHFACE VILLAGE for Building Construction Services: Specimens Fail to Show Use by Applicant
• Precedential No. 25: "I LOVE YOU" Fails to Function as a Trademark for Bracelets AND is Confusable with "I LUV U" for Jewelry, Says TTAB
• TTAB Affirms Refusal to Register EARTHBORN REBORN for Pet Food Due to Faulty Specimens of Use

Phantom Mark:

• Precedential No. 26: TTAB Affirms Phantom Mark Refusal of "SHAPE XXXX" for Educational Journals

Ownership:

• TTAB Orders Cancellation of KLIQUE CAR CLUB Registration Due to Non-Ownership
• Precedential No. 23: TTAB Sidesteps Court Order to Transfer Pending Application, Provides Alternatives

Discovery/Evidence/Procedure::

• Precedential No. 30: Rejecting Opposer's Over-Counting of Interrogatories, TTAB Grants Motion to Compel Responses
• Precedential No. 40 (2017): TTAB Strikes Evidence of Common Law Rights Not Listed By Madrid Opposer On ESTTA Cover Sheet
• Applicant's Renunciation of Underlying International Registration Results in Judgment for Opposer
• Precedential No. 24: Finding Good Cause (Puerto Rico Hurricane), TTAB Extends Discovery Period to Allow Written Discovery
• Precedential No. 23: TTAB Sidesteps Court Order to Transfer Pending Application, Provides Alternatives
• Precedential No. 22: Failure to Plead Compulsory Counterclaim Leads to Claim Preclusion in Second Proceeding

CAFC Opinions:

• CAFC Affirms TTAB: DETROIT ATHLETIC CO. for Sports Apparel Retail Services Confusable with DETROIT ATHLETIC CLUB for Clothing
• CAFC Affirms TTAB in TAI CHI Cancellation, Giving Deference to TBMP on Evidentiary Issues

Recommended Reading:

• Decisions of the TTAB and the CAFC on Registrability Issues July 2017 to August 2018
• Trademark Reporter Commentary: Raustiala and Sprigman, "Rethinking Post-Sale Confusion"

Other:

• TTAB Posts September 2018 Hearing Schedule
• Clarification: TTAB's Consideration of Streamlined Cancellation Proceeding Continues
• TTAB Posts August 2018 Oral Hearing Schedule
• Erik Pelton Reports on the July 26, 2018 TPAC Meeting

Text Copyright John L. Welch 2018.