TTABlog Quarterly Index: January - March 2023

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Section 2(a) - Deceptiveness:

• TTAB Affirms Two Refusals of "ROSE PETALS" for Supplements Not Containing Rose Petals

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is EVERWILD For Distilled Spirits Confusable With EVERCLEAR for Alcoholic Beverages? [Yes]
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?"
• TTABlog Test: Is CAMP WALDO for Summer Camps Confusable with THE WALDO SCHOOL for Primary Schools? [Yes]
• TTABlog Test: How Did These Three Section 2(d) Oppositions Turn Out?
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?
• Precedential No. 10: TTAB Confirms that Once Opposer's Mark is Registered, Priority is No Longer an Issue
• TTABlog Test: How Did These Three Section 2(d) Oppositions Turn Out?
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTAB Sustains Section 2(d) Opposition to RAMEN HOOD & Design for Asian-Themed Restaurant Services
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?

• Weakness of "LAGUNA" for Clothing Leads to Dismissal of Opposition to LB LAGUNA BEACH FOOTBALL CLUB & Design
• Super Bowl Special: Is TOUCHDOWN TIMEOUT for Sports Programming Confusable With TIME OUT for Event Production Services? [Yes]
• TTABlog Test: Is AGI2 for Lighting Fixtures Confusable With AGI & Design for Architectural Signage Lighting? [Yes]
• TTABlog Test: How Did These Three Section 2(d) Oppositions Turn Out?
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• Precedential No. 5: TTAB Finds ICE MONSTER & Design Confusable With MONSTER ENERGY for Restaurant Services
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?

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

• TTABlog Test: Which of These Three Section 2(e)(1) Mere Descriptiveness Refusals Was/Were Reversed?
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Is "SOUL FOOD MARKET" Merely Descriptive of Grocery Store Services? [Yes[
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• Precedential No. 1: TTAB Affirms Mere Descriptiveness Refusal of "DXPORTAL" for an Internet Portal Providing Drug Prescription Information

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

• TTAB Affirms Geographical Descriptiveness Refusal of "SOHO INK" for Tattoo Ink

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

• TTABlog Test: Is "THE HARRIMAN HOTEL" Primarily Merely a Surname for Hotel Services? [Yes]
• TTABlog Test: Is "REMO" Primarily Merely a Surname for Telecommunication Services?

Section 2(f) - Acquired Distinctiveness:

• TTAB Orders Cancellation of Safety Helmet Registrations Due to Lack of Acquired Distinctiveness

Failure-to-Function:

• Precedential No. 7: TTAB Reverses Failure-to-Function Refusal of Lizzo's "100% THAT BITCH" for Clothing Items
• "ASSHOLES LIVE FOREVER" Fails to Function as a Trademark, Says TTAB

Genericness:

• Fourth Circuit Affirms ED Va., Which Upheld TTAB Decision: GRUYERE is Generic for Cheese
• Precedential No. 8: TTAB Affirms Genericness Refusal of "NF-LIGHT" for Specimen Analysis Kits For Detecting Neurological Markers
• TTAB Affirms Genericness Refusal of the Color Dark Green for Medical Examination Gloves
• Granting Cancellation Petition, TTAB Finds SMART WALLET Generic for ..... Guess What?

Specimen of Use/Nonuse:

• Precedential No. 9: Business Card Specimen Does Not Prove Use of Collective Membership Mark, Says TTAB
• Precedential No. 3: Rejecting Motion to Expand Identification of Goods, TTAB Sustains EN-D-FENDER Opposition for Nonuse

Pan American Convention:

• Precedential No. 38: TTAB Orders Cancellation of COHIBA Registrations Under Pan American Convention, Rejects Issue Preclusion Defense

Discovery/Evidence/Procedure:

• Precedential No. 10: TTAB Confirms that Once Opposer's Mark is Registered, Priority is No Longer an Issue
• TTAB Summarily Sustains BITVISION Opposition Due to Offensive Claim Preclusion
• TTAB Grants Motion for Judgment on the Pleadings Due to Vast Dissimilarity Between Marks
• Precedential No. 6: TTAB Requires Explanation of Cancellation Respondent's Deletion of Goods
• TTAB Sustains PRINCESS ROYAL Opposition as a Sanction for Non-Compliance with Discovery Order
• E.D. Texas Denies Motion to Stay Infringement Action in Favor of TTAB Proceeding
• Precedential No. 38: TTAB Orders Cancellation of COHIBA Registrations Under Pan American Convention, Rejects Issue Preclusion Defense

Entitlement to a Statutory Cause of Action:

• Precedential No. 4: Foreign Cancellation Petitioner Fails to Meet Lexmark Test for "Standing" But TTAB Allows Time to Amend Petition
• TTAB Tosses Out "BURNERWATER" Opposition Due to Failure to Plead and Prove Standing

Prosecution Issues:

• Precedential No. 2: TTAB Upholds Refusal to Register ZHIMA Absent an English Translation ("Sesame")

CAFC Decisions:

• Guest Post by Michael Hall: "Ignoring Federal Circuit Precedent, the Board Toes the Line on the Burden of Proof for Genericness Refusals"
• The Trademark Reporter's 2023 "Annual Review" of U.S. Trademark Cases
• Bob Cumbow: "The Most Important Trademark Fact You Probably Don’t Know"
• Prof. Christine Haight Farley Explains the Pan American Convention and the COHIBA Decision

Other:

• TTAB Posts April 2023 Hearing Schedule
• TTAB Launches Pilot Program for Final Pretrial Conferences, Requiring Detailed Joint Pretrial Order
• TTABlog Test: Three Recent Affirmances - Guess What Grounds ....
• Three Recent TTAB Inter Partes Decisions, Briefly Noted
• TTAB Posts March 2023 Hearing Schedule
• TTABlog Flotsam and Jetsam, Issue No. 16: COHIBA Appeal (Again); TM Guide for 2(c) Refusals; LeBron Deposition
• TTAB Posts February 2023 Hearing Schedule
• In 2022, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals?
• In 2022, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?

Text © John L. Welch 2023.