TTABlog Quarterly Index: July - September 2007

It was a hot summer in Boston, but sunshine brings good photographs, sometimes. It also brought the new TTAB Rules package in August and practitioners are now chewing over the new rules, wondering just how much more difficult life will be for those who till the soil before our favorite tribunal. The Board cranked out just over a dozen precedential decisions this quarter: in two of the more interesting rulings, it gave a lukewarm welcome to Wikipedia evidence, but the back of its hand to the Wayback Machine. And Leo Stoller saw his trademark portfolio pass into the hands of the Society for the Prevention of Trademark Abuse, or SPTA, seemingly closing a troublesome chapter in Board history.

Boston's South End
Section 2(a) - Immoral or Scandalous:

• Marc Randazza on the TTAB's "YOU CUM LIKE A GIRL" 2(a) Affirmance

Section 2(d) - Likelihood of Confusion:

• Precedential No. 58: TTAB Affirms Disclaimer Requirement of "TOGGS" and 2(d) Refusal of "ZOGGS TOGGS" over "TOG & Design" for Swimsuits
• Precedential No. 54: TTAB Finds "VTUNES.NET" Confusingly Similar to Famous "ITUNES" Mark, Enters Judgment Summarily
• Fame of "BOTOX" Mark Yields 2(d) Opposition Victory over "SEATOX" for Cosmetics
• Finding Vinegar and Olive Oil Unrelated to Cigars, TTAB Dismisses "MONTECRISTO" Opposition
• Fame and Scope of "VIRGIN" Mark Yields 2(d) Opposition Victory over Auto Dealer
• Precedential No. 48: Based on Third-Party Registrations, TTAB Finds Banking and Real Estate Brokerage to be Related
• Finding Restaurant Services and Rice Related, TTAB Sustains "EL MAGO" 2(d) Opposition
• TTAB Reverses 2(d) Refusal of "KID TENNIS" Design for Clothing: Too Different from "TENNISKIDS"
• No Second Bite of Pineapple: TTAB Denies Request for Reconsideration of "KAMEHAMA" 2(d) Decision
• TTAB Dismisses "EVOLUTION BENEFITS" 2(d) Opposition: Relevant Purchasers Are Sophisticated and Not Likely Confused
• Finding Faucets and Cocks Related, TTAB Affirms 2(d) Refusal of "HANCOCK"
• TTAB Dismisses "PERMA-SHIELD" 2(d) Cancellation Petition: Goods Too Different and Confusion Claim Too Tenuous
• TTAB Again Finds Water and Soy-Based Products Related, Sustains 2(d) Opposition
• TTAB Finds "UNDERDOG" Design Marks Too Dissimilar, Dismisses 2(d) Opposition
• Nebraska Firm Bests Oklahoma Firm in 2(d) Fracas over "FS" Logos for Legal Services
• Precedential No. 45: TTAB Finds "DR. AIR" Confusingly Similar to "DR. SCHOLL'S" and "AIR-PILLO" in Combination

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

• Precedential No. 58: TTAB Affirms Disclaimer Requirement of "TOGGS" and 2(d) Refusal of "ZOGGS TOGGS" over "TOG & Design" for Swimsuits
• TTAB Deems "iPOSTAGE" Merely Descriptive of Internet Postage
• TTAB Reverses 2(e)(1) Descriptiveness Refusal of "FOLDOVER" for Web-Based Marketing Software
• TTAB Affirms 2(e)(1) Descriptiveness Refusal of "THE TTABLOG"
• Precedential No. 44: TTAB Says Wikipedia Evidence is Admissible, but Should Be Corroborated

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

• "ROMANTIC ROAD" 2(e)(2) Cancellation Proceeding Hits Dead End: Summary Judgment to Registrant

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

• TTAB Finds "PARIS BAGUETTE" Geographically Deceptively Misdescriptive of Bread
• Precedential No. 50: Section 2(f) Grandfather Clause Does Not Shield Geographically Deceptive Mark from Section 2(a) Refusal

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

• Precedential No. 56: TTAB Reverses Surname Refusal of "BAIK" for Vodka

The First Church of Christ, Scientist
Dilution:

• Federal Court Reverses TTAB's "NIKEPAL" Decision on "NIKE" Dilution Claim

Fraud:

• Precedential No. 55: Wine Not? TTAB Gives Registrant a Break, Denies Fraud Claim
• Submitting Bogus Specimen of Use is Fraud, Says TTAB, Not Surprisingly

Functionality:

• Precedential No. 57: TTAB Finds the Color Purple to be Functional for Sandpaper

Genericness:

"JUMBOZ" Generic for Sunflower Seeds, Says TTAB

Goods in Trade:

• Precedential No. 52: TTAB Affirms Refusal of Product Configuration Mark for Boxes as Mere Packaging and Not Goods in Trade

Identification of Goods:

• Precedential No. 49: TTAB Reverses Indefiniteness Refusal, Affirms 2(d) Refusal of "PAPER DOLL PROMOTIONS" for Custom Costumes

Laches/Estoppel/Acquiescence:

• Precedential No. 47: TTAB Dismisses Cancellation Petition on Laches and Acquiescence Grounds

Procedural Matters:

• Precedential No. 53: TTAB Strikes "Wayback Machine" Evidence, Enters Summary Judgment Okaying Amendment of "AQUA STOP" Registration
• Gotcha! No Certified Copy of Registration, So TTAB Denies Summary Judgment Motion
• Finding Lawyer's Office Relocation an Insufficient Excuse for Lack of Testimony, TTAB Dismisses Cancellation Petition
• Opposer Fails to Introduce Evidence of Priority, So TTAB Tosses Out Opposition
• Precedential No. 44: TTAB Says Wikipedia Evidence is Admissible, but Should Be Corroborated

Specimen of Use/Mutilation

• Precedential No. 53: TTAB Strikes "Wayback Machine" Evidence, Enters Summary Judgment Okaying Amendment of "AQUA STOP" Registration
• Precedential No. 51: TTAB Affirms Rejection of Specimen of Use and 2(d) Refusal of "CORAZON BY CHICA" for Jewelry
• Precedential No. 46: Following Dell, TTAB Says Website Printouts Suffice as Trademark Specimens
• TTAB Affirms Mutilation Refusal of "VIVE LA VIDA LOW CARB"

My office view
TTAB Rule Changes:

• Two Significant TTAB Rule Changes Already in Effect
• Teleconference on TTAB Rule Changes: October 11th
• TTAB Posts Chart Summarizing August 1st Rule Changes
• Merchant & Gould Offers Power Breakfast Meeting on New TTAB Rules
• TTABlog Special Bulletin: TTAB Publishes New Rules Package
• Revised TTAB Rules to be Published Next Week

CAFC Decisions:

• CAFC Affirms TTAB Decision Upholding PTO Requirement for More Particularized Identification of "Chronographs"
• CAFC Affirms TTAB Dismissal of "DYKES ON BYKES" Opposition for Lack of Standing

Leo Stoller:

• Sale of Stoller Trademark Assets to SPTA is Completed
• Letter from SPTA Provides More Detail re Leo Stoller Asset Sale
• Court Approves Sale of Leo Stoller Trademark Assets to the Society for the Prevention of Trademark Abuse, LLC
• Stoller Strikes Out: 7th Circuit Affirms Brett Brothers Non-Infringement Ruling

Recommended Reading:

• Recommended Reading: "Trademarks and the Internet: the United States' Experience," by Prof Glynn S. Lunney, Jr.

Other:

• The TTAB Comes to Boston: Friday, October 26, 2007
• Omission of Marks in August 28th Printed TM Official Gazette Does Not Affect Opposition Period
• TTAB Posts September 2007 Hearing Schedule
• Marty Schwimmer on Online Branding Issues
• Seattle Trademark Lawyer Reports on USPTO Anti-Counterfeiting Forum
• Rhode Island Federal Court Finds "MEMORY" to be Generic for a Card Game
• TTAB Posts August 2007 Hearing Schedule
• The Trademark Blog Reports on Suit to Oust PTO Deputy Director Peterlin
• Prof. McCarthy Calls Second Circuit's "BUKHARA" Decision a "Great Embarrassment"
• Ron Coleman on "The Defenestration of Bayport"
• July INTA Roundtable Focuses on Advanced TTAB Practice & Procedure
• Boston Duck Tours Wins Injunction Against Competitor's Use of "DUCK TOURS"
• Patently-O Launches Patent Law Jobs Website
• AIPLA Finds TTAB Fraud Standard Too Harsh
• TTAB Posts July Hearing Schedule

Text and photographs Copyright John L. Welch 2007.