TTABlog Quarterly Index: April - June 2009
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Section 2(a) - deceptiveness:
Section 2(a) - disparagement:
- Steve Baird Thinks the Washington Redskins Need a Re-Branding
- Back to the Board: Is "REDSKINS" Disparaging or Not?
Section 2(a) - scandalous:
- TTAB Affirms Two More Section 2(a) Scandalous Refusal
- TTAB Affirms PTO's Latest Section 2(a) Scandalous Refusal
Section 2(a) - suggesting a false connection:
Section 2(b) - flag, coat of arms, insignia:
Section 2(d) - likelihood of confusion:
- Precedential No. 25: "VANTAGE TITAN" and "TITAN" Confusingly Similar for Related Medical Devices, Says TTAB
- Precedential No. 23: TTAB Refuses to Hear Belated Fraud Claim, Finding It Not Tried By Consent
- Fame of Gibson Guitar's "Dove Wing Peg Head" Design Brings TTAB 2(d) Victory
- Test Your TTAB Eyeball-Ability With These Five "CL" Stylized Marks for Jewelry
- "AMERICAN GIRL" Tops "AMERICAN BOY" in TTAB 2(d) Clothing Confrontation
- Appeal from a Section 2(d) Refusal: You Be the TTAB Judge!
- TTABlog WYHA: Would You Have Appealed This 2(d) Refusal?
- Teenie Weenie Wins Split Decision Over Paddington in TTAB 2(d) Battle-of-the-Bear-Designs
- Divided TTAB Panel Disagrees over Doctrine of Equivalents, Reverses 2(d) Refusal of "ALLEZ FILLES!" Over "GO GIRL"
- Precedential No. 21: TTAB Sustains “PALOMA” 2(d) Opposition to “PALOMITA” for Clothing, But Dismisses Claim for Fraudulent Misuse of ® Symbol
- Precedential No. 19: Family-of-Marks Argument Not Available to Overcome 2(d) Refusal; Sophisticated Purchaser Claim Fails Too
- Lacking Proof that Cosmetics and Medicated Lotions Are Related, TTAB Tosses Out 2(d) Refusal of "REVIVE WITH THI"
- TTABlog Challenge: Test Your TTAB Judgeability
- Precedential No. 18: Refusing to Read Limitations into Cited Registration, TTAB Affirms 2(d) Refusal of "WAVE" for Recreational Trailers
- "BIG O TIRES" TTAB Challenge to "BIGG WHEELS" for Automobile Wheels Goes Flat
- TTABlog Challenge: You Be The TTAB Judge!
- TTAB Says "So Longo, BADONGO" in 2(d) Opposition to "PODANGO"
Section 2(e)(1) - mere descriptiveness:
- TTAB Reverses Two Refusals of "CARPET TO CARPET" for Reclamation Services
- Precedential No. 22: Saying No-No to Double Entendre Argument, TTAB Deems "URBANHOUZING" Merely Descriptive of Real Estate Services
- TTAB Affirms Mere Descriptiveness Refusal of "AUTOPROBE" for Soil Sampling Machines and Related Services
- TTABlog 2(e)(1) Triple-Header: Mere Descriptiveness is Not a Guessing-Game!
- Tip from the TTABlog: Don't Use the Applied-For Mark Descriptively in the Identification of Goods
- TTABlog WYHA? TTAB Affirms Descriptivness Refusal of "SILICON ULTRASOUND" for Ultrasound Devices Utilizing ... Guess What?
- TTAB Chops Down Evasive "SILVER BIRCH" Applicant with Three Well-Aimed Strokes
Section 2(e)(2) - primarily geographically descriptive:
Section 2(e)(3) - primarily geographically deceptively misdescriptive:
Section 2(e)(4) - primarily merely a surname:
Section 2(e)(5) - functionality:
- TTAB Finds Design of "MOI" Putter Head Functional Under Section 2(e)(5)
- Applicant's Own Boastful Advertising Leads TTAB to Find Tray Design Functional
Section 2(f) - acquired distinctiveness:
- Precedential No. 24: TTAB Finds Another Motorola "Chirp" Sound Unregistrable
- Applicant's Own Boastful Advertising Leads TTAB to Find Tray Design Functional
- TTAB Finds Religious Habit Not Registrable: Lacks Distinctiveness, Inherent or Acquired
- Precedential No. 13: TTAB Axes Fender Guitar Shapes, Finding Them Generic or Lacking Acquired Distinctiveness
Section 14(3) Misrepresentation:
Abandonment:
Costumes/Habits:
Drawing Requirement:
Failure to Function/Non-distinctiveness:
Famous Marks Doctrine:
Fraud:
- Precedential No. 23: TTAB Refuses to Hear Belated Fraud Claim, Finding It Not Tried By Consent
- Precedential No. 21: TTAB Sustains “PALOMA” 2(d) Opposition to “PALOMITA” for Clothing, But Dismisses Claim for Fraudulent Misuse of ® SYMBOL
- TTAB Re-Designates Zanella v. Nordstrom Fraud Ruling As Precedential
- TTABlog Comment: Fraud and the Digital Camera
- CAFC Hears Oral Argument in Bose Fraud Appeal
- TTAB Rules, Non-Precedentially, that Fraud May be "Cured" Post-Registration
- Precedential No. 12: TTAB Again Says False Statement of First Use Date is not Fraud
Genericness:
- TTAB Finds "SPEEDOMETER" Generic for ... You'll Never Guess What
- TTAB Finds "X-PIPE" Generic for ... Guess What?
- Precedential No. 13: TTAB Axes Fender Guitar Shapes, Finding Them Generic or Lacking Acquired Distinctiveness
Lack of Bona Fide Intent:
Ownership:
- Pam Chestek Ponders the Transfer of Common Law Trademarks under State Law
- TTAB Affirms Rejection of SOU filed by Assignor After Assignment
- TTAB Resolves Santana's Ownership Dispute, But Pamela Chestek is Dissatisfied
- TTAB Finds No Trademark Rights in OEM Who Applied "WASTEMAID" Mark at Others' Direction
Priority:
Procedural Issues:
- Precedential No. 23: TTAB Refuses to Hear Belated Fraud Claim, Finding It Not Tried By Consent
- On Remand from CAFC, TTAB Re-Jettisons Bishop v. Flournoy Oppositions
- Precedential No. 20: TTAB Enters Judgment Due to Defendant's Blatant Failure to Comply with Board Order
- Lost and Found: 2007 TTAB Precedential Decision Rejects Belated Supplemental Discovery Responses
- TTAB Says "So Longo, BADONGO" in 2(d) Opposition to "PODANGO"
Res Judicata:
Rule 2.61(b) Request for Information:
- TTAB Referees PTO Translator Tussle, Accepts Applicant's Translation of "FIOR DI GRANO"
- TTAB Chops Down Evasive "SILVER BIRCH" Applicant with Three Well-Aimed Strokes
Single Creative Work:
Sound marks:
Specimen of Use/Mutiliation:
- "DUNES" on Slot Machines not a Proper Specimen for Casino Services, Says TTAB
- TTAB Says a Principle is not a Service, Affirms PTO Rejection of Specimens of Use
- TTAB Affirms Single Creative Work and Mutilation Refusals of "CHOOSE TO BE RICH"
Use/Use in Commerce
- Precedential No. 17: TTAB Dismisses Bayer "FLANAX" Cancellation Claims - No Famous Marks Exception in US Law
- CAFC Affirms TTAB's "AIRFLITE" Cancellation: Preparations for Use Not Enough for Service Mark Registration
Courts of Appeal:
- D.C. Circuit Affirms Laches Ruling Dismissing "REDSKINS" Cancellation
- CAFC Vacates TTAB's "MOSKOVSKAYA" Vodka Ruling, Clarifies 2(e)(3) Materiality Test
- CAFC Affirms TTAB's "AIRFLITE" Cancellation: Preparations for Use Not Enough for Service Mark Registration
Recommended Reading:
- More Recommended Reading: Jordan Weinstein's TTAB Year in Review
- Recommended Reading: Sandra Edelman on Proving Bona Fide Intent
- Recommended Reading: Glenn Gundersen's Annual Report on Trademark Trends
- Recommended Reading: Ted Davis on "Recent Developments in U.S Trademark Practice"
Other:
- TTAB Posts June 2009 Hearing Schedule
- TTABlog Comment: Fraud and the Digital Camera
- TTABlogger and Jeremy Phillips on IP Think Tank Podcast
- TTAB Posts May 2009 Hearing Schedule
- TTAB Posts April 2009 Hearing Schedule
Text and photos ©John L. Welch 2009.
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