TTAB Issued 55 Precedential Decisions in 2008

The TTAB issued fifty-five (55) precedential decsions in 2008, a slight drop-off from last year's total of 67. Its fraud ruling in University Games (No. 27) and its rulings on the applicant's lack of bona fide intent in the ENYCE (16) and SEX ROD (41) cases may have been the most noteworthy. In the MOSKOVSKAYA vodka case (6), the Board clarified the meaning of "ordinary American purchaser" under the doctrine of foreign equivalents. And in a half-dozen or so procedural rulings, it dealt with various aspects of the TTAB rules as amended in 2007.


Section 2(a) - Disparagement:

• Precedential No. 52: TTAB Affirms 2(a) Disparagement Refusal of "HEEB" for Clothing and Entertainment Services
• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Section 2(a) - Suggesting a False Connection:

• Precedential No. 42: TTAB Reverses 2(a) False Connection Refusal of "MARIA CALLAS" for Jewelry
• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging
• Precedential No. 23: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing

Section 2(a) - Scandalous:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging

Section 2(d) - Likelihood of Confusion:

• Precedential No. 46: TTAB Affirms 2(d) Refusals of "RSI" Design Mark for Ink Jet Printers
• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging
• Precedential No. 23: Finding a (2)(a) False Connection, TTAB Cancels "TWIGGY" Registration for Clothing
• Precedential No. 40: "SAM EDELMAN" Confusingly Similar to "EDELMAN" for Handbags, Says TTAB
• Precedential No. 37: Judge Rogers Beams as Section 2(d) Case is Tried Without Discovery
• Precedential No. 21: TTAB Finds "LA PEREGRINA" and "THE PILGRIM" Confusingly Similar for Jewelry Per Doctrine of Foreign Equivalents
• Precedential No. 18: TTAB Dismisses "SPORTSMAN'S WAREHOUSE" Cancellation Petition, Finding No Likelihood of Confusion and No Fraud
• Precedential No. 17: Finding the Marks Entirely Different, TTAB Grants Judgment on the Pleadings in 2(d) Opposition
• Precedential No. 16: TTAB Sustains Opposition to ITU Application, Applicant Lacked Bona Fide Intent
• Precedential No. 10: TTAB Sustains "VITAMILK" 2(d) Opposition, Again Rejects a Morehouse Defense

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

• Precedential No. 54: "DEC" Merely Descriptive of Nuclear Decay Batteries, Says TTAB
• Precedential No. 47: "BOBBLE POPS" Merely Descriptive of Candy, Says TTAB, Colorfully
• Precedential No. 32: Double Entendre Argument Remedies "THE FARMACY" 2(e)(1) Refusal, Says TTAB
• Precedential No. 29: TTAB Affirms 2(e)(1) Refusal of Japanese Term Meaning "Walking" for Footwear
• Precedential No. 1: TTAB Reverses Mere Descriptiveness Refusal of "SUGAR No. 11" For Futures Exchange Services and Finds Specimen of Use Acceptable

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

• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

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

• Precedential No. 44: TTAB Sustains 2(e)(3) Opposition to "HAVANA CLUB" for Cigars Made From Cuban Seed Tobacco
• Precedential No. 12: TTAB Sustains 2(e)(3) Opposition to "GUANTANAMERA" for Non-Cuban Cigars, Folk Song Notwithstanding
• Precedential No. 6: TTAB Clarifies Doctrine of Equivalents, Affirms 2(e)(3) Refusal of "MOSKOVSKAYA" for Vodka
• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 8: Applicant Fails to Prove Acquired Distinctiveness for Sunglass Frame Product Design

Abandonment:

• Precedential No. 22: Finding Old "LASALLE" Automobile Mark Abandoned, TTAB Dismisses General Motors' Opposition for Lack of Priority

Failure to Function:

• Precedential No. 31: TTAB Reviews Specimen Brochure, Affirms Failure-to-Function Refusal
• Precedential No. 26: Specimens of Use Display Web Address, Not Service Mark Use
• Precedential No. 20: TTAB Finds Stitching Design on Jean Pockets Merely Ornamental

Fraud:

• Precedential No. 35: Despite Amendment of Application, TTAB Sustains Fraud Claim in "GRAND CANYON WEST" Opposition
• Precedential No. 27: Correction of Error in Goods Prior to Publication Creates Rebuttable Presumption of No Fraud, Says TTAB
• Precedential No. 18: TTAB Dismisses "SPORTSMAN'S WAREHOUSE" Cancellation Petition, Finding No Likelihood of Confusion and No Fraud
• Precedential No. 13: FRAUD! TTAB Cancels Four Registrations on Summary Judgment: Attorney Signed False Statements of Use

Genericness:

• Precedential No. 24: TTAB Affirms Genericness Refusal of "BOND-OST" for Cheese
• Precedential No. 15: TTAB Again Affirms Genericness Refusal of "HOTELS.COM" for ... Guess What?
• Precedential No. 11: TTAB Finds "REDUCER" Generic for Flow Meters

Lack of Bona Fide Intent:

• Precedential No. 41: Red Sox See No Humor in "SEX ROD" for Clothing; TTAB Finds Lack of Bona Fide Intent and Deems Mark Vulgar, Disparaging
• Precedential No. 16: TTAB Sustains Opposition to ITU Application, Applicant Lacked Bona Fide Intent

Ownership:

• Precedential No. 53: TTAB Decides Ownership Dispute over "JOYCE" for Dance Theater and Charitable Services

Pan American Convention:

• Precedential No. 44: TTAB Sustains 2(e)(3) Opposition to "HAVANA CLUB" for Cigars Made From Cuban Seed Tobacco

Phantom Mark:

• Precedential No. 25: TTAB Affirms Refusal of Mark Having a Phantom Element

Procedural Issues:

• Precedential No. 55: TTAB Denies Cross-Motions for Summary Judgment Because Briefs Exceeded Page Limit
• Precedential No. 51: TTAB Dismisses Morehouse and Laches Defenses, Denies Summary Judgment in 2(d) Opposition
• Precedential No. 50: TTAB Grants Motion to Compel Proper Initial Disclosures
• Precedential No. 49: Failure to Serve Notices of Opposition Leads to Swift TTAB Dismissal
• Precedential No. 48: TTAB Resolves Procedural Spat Over Discovery Conference
• Precedential No. 45: TTAB Denies Petitioner's Motion to Amend, Grants Respondent's Motion for Judgment on the Pleadings
• Precedential No. 43: Absent TTAB Order, No Sanction for Failure to Provide Initial Disclosures
• Precedential No. 39: Evidentiary Errors Lead to Dismissal of 2(d) Opposition for Failure to Prove Priority
• Precedential No. 38: TTAB Dismisses Opposition as Untimely - Electronic Payment Incomplete and Faxed Filing Ineffective
• Precedential No. 34: TTAB Okays Stipulation Between Red Sox and "RAD SEX" Applicant to Waive Initial Disclosures
• Precedential No. 17: Finding the Marks Entirely Different, TTAB Grants Judgment on the Pleadings in 2(d) Opposition
• Precedential No. 9: TTAB Issues Non-Ultimate Sanctions for Failure To Comply With Board Order Compelling Document Production
• Precedential No. 7: TTAB Dismisses 2(d) and Dilution Opposition for Lack of Evidence and Inadequate Pleading
• Precedential No. 5: TTAB Dismisses Opposition for Opposer's Failure to Serve Prior to Filing
• Precedential No. 3: NFL Thrown for a Loss as TTAB Denies Request to Extend Discovery
• Precedential No. 2: TTAB Issues Sanctions For Discovery Abuses

Res Judicata/Collateral Estoppel:

• Precedential No. 19: TTAB Grants Summary Judgment Against Applicant Enjoined From Use and Registration of His Mark

Rule 2.61(b) - PTO Demand for Information:

• Precedential No. 4: TTAB Affirms Triple Refusal of "NORMANDIE CAMEMBERT" for Cheese

Single Artistic Work:

• Precedential No. 33: TTAB Affirms Refusal of "FREEDOM STONE" for Cornerstones as Title of a Single Work

Specimens of Use/Drawing:

• Precedential No. 36: Finding Specimen Doesn't Match Drawing, TTAB Affirms Refusal of "UPPER 90" for Clothing
• Precedential No. 33: TTAB Affirms Refusal of "FREEDOM STONE" for Cornerstones as Title of a Single Work
• Precedential No. 28: TTAB Finds Drawings OK, But Packing Label Specimen Fails to Show Service Mark Use
• Precedential No. 14: TTAB Affirms Three Refusals: Website Specimens Fail to Show Trademark Use
• Precedential No. 1: TTAB Reverses Mere Descriptiveness Refusal of "SUGAR No. 11" For Futures Exchange Services and Finds Specimen of Use Acceptable

Use in Commerce:

• Precedential No. 30: TTAB Grants Summary Judgment in Opposition Because Applicant Was Contractually Prohibited From Using Subject Mark

Text and Photographs Copyright John L. Welch 2008-9.