TTABlog Quarterly Index: April - June 2023

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Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is BILT Confusable With BUILT TO INSPIRE for Non-metal Mailboxes? [Yes]
• TTABlog Test: Are Personal Training Services Related to Clothing For Section 2(d) Purpose? [Yes]
• TTABlog Test: Is KOKOMO for Fresh Fruits Confusable With KOKOMO for Wine? [Yes]
• TTABlog Test: Is BLACK INK for Coffee Beans Confusable With BLACK INK for Alcoholic Beverages? [Yes]
• TTABlog Test: How Did These Three Appeals from Section 2(d) Refusals Turn Out?
• TTAB Finds Supplements Related to CBD Cosmetics, But Not to Candles or Vape Pens
• TTABlog Test: Is EL BURRO BORRACHO Confusable WIth EL BURRO for Restaurant Services? [No]
• TTABlog Test: Is RAILROAD RUM for Distilled Spirits Confusable with RAILROAD RED for Wine? [Yes]
• TTABlog Test: How Did These Three Appeals from Section 2(d) Refusals Turn Out?
• TTABlog Test: Which of These Three Section 2(d) Oppositions Was/Were Dismissed?
• TTABlog Test: Is CLAIM WATCHER Confusable With CLAIM WATCH & Design for Certain Insurance Claim Services? [No]
• TTABlog Test: Which of These Three Section 2(d) Oppositions Was/Were Dismissed?

• In a Split Decision, TTAB Finds SIREN'S BLEND for Coffee Confusable With the Starbucks Logo, But Not Confusable for Clothing
• TTAB Denies Petition for Cancellation of LITTLE NOTES Registration: Petitioner Failed to Prove Rights in the Mark Via Acquired Distinctiveness
• TTABlog Test: Are Restaurant Services and Live Musical Entertainment Related for Section 2(d) Purposes? [Yes]
• TTABlog Test: Are Beer and Restaurant Services Related for Section 2(d) Purposes? [Yes]
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?
• TTABlog Test: Are Wine and Restaurant Services Related for Section 2(d) Purposes? [No]
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?
• TTABlog Test: Is "K2 MOTORCARS & Design" Confusable With "K2 MOTOR & Design" For Automobile-Related Services? [No]
• TTABlog Test: Is Puma's "PROCAT" Confusable with Caterpiller's "CAT" for Footwear? [Yes]
• Finding Third-Party Registration Evidence Insufficient to Weaken Cited Mark, TTAB Affirms Section 2(d) Refusal of IMAGINE for Early Childhood instruction
• TTAB Renders Split Decision in "ELECTRIC LAST MILE SOLUTIONS" Section 2(d) Appeal
• Precedential No. 12: TTAB Hands Win to MLBPA and Aaron Judge In Opposition to Judicial-Themed Trademarks for Clothing
• TTAB Reverses Two Refusals of BEAUTY POPS for Cosmetic Kits: Likelihood of Confusion and Mere Descriptiveness
• TTABlog Test: Is "FREEDOM X" Confusable With "OXLIFE FREEDOM" For Related Medical Products? [Yes]
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?

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

• TTABlog Test: How Did These Three Appeals from Section 2(e)(1) Mere Descriptiveness Refusals Turn Out?
• TTABlog Test: How Did These Three Appeals from Section 2(e)(1) Mere Descriptiveness Refusals Turn Out?
• TTABlog Test: How Did These Three Appeals from Section 2(e)(1) Mere Descriptiveness Refusals Turn Out?

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

• TTABlog Test: Is "JIGUANI" Primarily Geographically Deceptively Misdescriptive of Coffee? [No]

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

• TTABlog Test: Is CARLOW Primarily Merely a Surname for Real Estate Services? [No]

Section 2(e)(5) - Functionality:

• TTAB Affirms Section 2(e)(5) Functionality Refusal of Pen Holder Configuration
• TTAB Reverses Functionality Refusal of Rocking Chair Design But Finds Acquired Distinctiveness Lacking

Inherent/Acquired Distinctiveness:

• Precedential No. 16: TTAB Finds Guitar Shape for Hotel to be Inherently Distinctive
• Precedential No. 17: TTAB Finds Hotel Shape Not Inherently Distinctive and Lacking in Acquired Distinctiveness

Abandonment:

• TTAB Grants ARTNCRAFT Cancellation Petition: Respondent's Amazon Take-Down Notice Excused Petitioner's Subsequent Nonuse

Dilution:

• TTAB Sustains Opposition to "PET C COLA" for Animal Supplements, Finding Likely Diluton of . . . . Guess What Famous Mark?

Failure-to-Function:

• Precedential No. 18: BOYS WORLD Functions Not Only as the Name of a Musical Group, But Also as a Trademark
• TTABlog Test: Does "MAKE YOUR PASSION YOUR PAYCHECK" Function as a Source Indicator for T-Shirts? [Yes]

Genericness:

• Sustaining Tumblr's Opposition, TTAB Finds "TUMBLOG" Generic for .... Guess What?
• TTAB Affirms Genericness Refusal of COOKIEBOT for ..... Guess What?
• TTAB Finds "VETEMENTS" Generic for .... Guess What?

Goods in Trade:

• Precedential No. 11: TTAB Reverses Six "Goods In Trade" Refusals for NY Times Non-Syndicated Column Titles

Ownership:

• Precedential No. 13: TTAB Allows Cancellation Respondent to Correct Registration Ownership

Specimen of Use/Nonuse/Illegal Use:

• Precedential No. 15: Finding Essential Oil Dispensers to be Illegal Drug Paraphernalia, TTAB Affirms Refusal of Two Proposed Marks
• TTAB Grants Cancellation for Nonuse: ULTRA SUN Sunscreen Was Offered For Sale But Not Sold or Transported Before Critical Date

Entitlement to a Statutory Cause of Action:

• Precedential No. 14: TTAB Dismisses RAPUNZEL Opposition: Professor Failed to Prove Entitlement to a Cause of Action

Discovery/Evidence/Procedure:

• TTAB Issues a "Final Pretrial Conference Assignment Order" in Red Bull Opposition

CAFC Decisions:

• CAFC Reverses TTAB's "FL FLEX" Decision Due To Errors In Assessing the Strength of the Opposer's Marks
• CAFC Reverses TTAB's APPLE JAZZ Dismissal Due to Error in Awarding Priority to Apple Inc.
• CAFC Affirms TTAB: "SPARK LIVING" Confusable With "SPARK" for Related Real Estate Services

Recommended Reading:

• Recommended Reading: Professors Farley and Ramsey: "Raising the Threshold for Trademark Infringement to Protect Free Expression"
• Ted Davis Outline: "Recent Developments in United States Trademark and Unfair Competition Law"
• Recommended Reading: The Trademark Reporter's Annual Review of European Trademark Law

Other:

• TTAB Posts July 2023 Hearing Schedule
• USPTO Issues Notice of "Data Security Incident" Involving Applicant Domicile Information
• Parody at the TTAB: Does the Supreme Court's "Bad Spaniels" Ruling Change the Game?
• TTAB Posts June 2023 Hearing Schedule
• TTAB Posts May 2023 Hearing Schedule
• USPTO Proposes Increase in Trademark-Related Fees - Effective November 2024

Text © John L. Welch 2023.