TTABlog Quarterly Index: January - March 2010

This past quarter brought a dozen precedential decisions, including a significant ruling on the admissibility of website evidence at trial, an unexpected decision regarding the ability of a foreign trademark owner to bring a dilution claim based on the fame of its mark - despite lack of use in this country, a helpful ruling on the proper pleading of a post-Bose fraud claim, and a somewhat controversial determination regarding the registrability of KHORAN for wines. [Note that E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the blog on Twitter (here). And don't forget to leave your comments! Finally, please report any broken or inoperative links, as well as any errors and omissions, to the TTABlogger at jwelch at ll-a.com. This month's photographs were taken at Boston's Museum of Fine Arts.]


Section 2(a) - disparagement:

• Precedential No. 9: Divided TTAB Panel Affirms 2(a) Disparagement Refusal of "KHORAN" for Wines

Section 2(d) - likelihood of confusion:

• Test Your TTAB Judge-Ability: Are "THE CLOSET GUY" and "THE CLOSET LADY" Confusingly Similar for Closet-Related Services?
• TTAB Reverses 2(d) Refusal of "FLEXILOGIC" for Noise Reduction Software over Same Mark for Software Design Services
• Glitch-Filled Battle Over "COMPUTER GEEKS" Mark Lurches to Split TTAB Decision
• "PAPERCLIP CLUB" for Office Supply Services Not Confusingly Similar to "PAPERCLIP" for Office Furniture, Says TTAB
• TTAB Dismisses 2(d) Opposition, "MILANZA" Too Different from "POTENZA" and "TURANZA" for Tires
• TTAB Affirms 2(d) Refusal of "CARMINE'S" Design for Restaurant Services in view of Two Other "CARMINE'S" Designs
• Precedential No. 5: TTAB Finds "CAPITAL CITY BANK" and "CITIBANK" Not Confusingly Similar, Dismisses 2(d) and Dilution-Based Opposition
• TTAB Sustains 2(d) Opposition, finding "SWEDISH LUXURY" and "SWEDISH SLEEP SYSTEM" Confusingly Similar for Mattresses
• Finding Suits, Handbags, and Footwear Related, TTAB Affirms 2(d) Refusal of "VABEENE" Over "VABENE"
• Finding Restaurant Services and Sauces Related, TTAB Affirms 2(d) Refusal of "BLACK HORSE"
• Precedential No. 4: TxDOT Wins TTAB 2(d) Tussle Over "DON'T MESS WITH TEXAS" for Clothing
• Bummer! TTAB Finds "PEACH CLAIRE" for Lingerie Not Confusingly Similar to "PEACH BUNS" for Clothing
• Weakness of "UNITED" Mark for Money-Transfer Services Leads to TTAB 2(d) Reversal
• Affirming 2(d) Refusal of "COMMANDER-IN- CHIEF," TTAB Finds Board Games and Playing Cards Related
• TTAB Finds "CATELLI" for Pasta Sauce Confusingly Similar to "LOCATELLI" for Cheese
• TTAB Enters Summary Judgment: "RED KAP" and "RED SNAP" for Clothing Too Dissimilar for Confusion or Dilution
• Precedential No. 1: TTAB Yawningly Affirms 2(d) Refusal of "MAX & Design" Over "MAX" for Overlapping Insurance Services

Section 2(e)(1) - merely descriptive:

• "GREEN CEMENT" Merely Descriptive of Environmentally-Friendly Cement Products, Says TTAB, Concretely
• E-BANDAGE" and "ELECTRONIC BANDAGE" Merely Descriptive of Bandages, Says TTAB, Unshockingly
• "USEFUL NETWORKS" Merely Descriptive of Location Software, Says TTAB, Questionably
• "HEALTHY HOME VACUUM" Not Merely Descriptive For Vacuum Cleaners, Says TTAB
• Applicant's Policing Efforts Lead to TTAB Reversal of Mere Descriptiveness Refusal of "PERFECTING SERUM" For Skin Moisturizer
• WYHA? TTAB Affirms Mere Descriptiveness Refusal of "TITANIUM" for Kitchen Applicances

Section 2(e)(2) - primarily geographically descriptive:

• TTAB Affirms 2(e)(2) Geographical Descriptiveness Refusal of "US PATIENT REGISTRY" for Medical Information Database

Section 2(e)(3) - primarily geographically deceptively misdescriptive:

• TTAB Sustains 2(d) Opposition, finding "SWEDISH LUXURY" and "SWEDISH SLEEP SYSTEM" Confusingly Similar for Mattresses

Section 2(e)(4) - primarily merely a surname:

• Test Your TTAB Judge-Ability: Does "VALVERDE" Have the Look and Sound of a Surname?
• WYHA? TTAB Affirms Section 2(e)(4) Surname Refusal of "WEIS" for Frozen Dairy Products
• Extreme Rareness of "RENATI" as Surname Leads to 2(e)(4) Reversal

Section 2(f) - acquired distinctiveness:

• Precedential No. 3: Denying 2(f) Tacking, TTAB Finds HOLLYWOOD and BOLLYWOOD Not Legal Equivalents

Abandonment:

• Petitioner North Face Falls Flat in Attempted Cancellation on Abandonment and Fraud Grounds

Dilution:

• Precedential No. 11: Foreign Mark's Fame in US Plus ITU Application Provides Dilution Cause of Action, Says TTAB
• Precedential No. 5: TTAB Finds "CAPITAL CITY BANK" and "CITIBANK" Not Confusingly Similar, Dismisses 2(d) and Dilution-Based Opposition

Disclaimer practice:

• Finding Applicant's 2(f) Evidence Misdirected, TTAB Affirms Requirement for Disclaimer of CHILDREN'S in "THE CHILDREN'S PLACE"

Fraud:

• Petitioner North Face Falls Flat in Attempted Cancellation on Abandonment and Fraud Grounds
• TTAB Vacates 2008 Fraud Ruling in Xel Pharmaceuticals Case
• TTABlog Bonus: Your Very Own FRAUD-O-METER™
• Thinking About Fraud (Part III): After Bose, Can Fraud Be Cured?
• Thinking About Fraud (cont.): Why Look to Patent Law for the Trademark Fraud Standard?
• Thinking About Fraud: Where Does "Inadvertence" End and "Reckless Disregard" Begin?
• Precedential No. 2: TTAB Okays Fraud Pleading But Denies Summary Judgment on Intent Issue

Genericness:

• Precedential No. 9: TTAB Finds "ELECTRIC CANDLE COMPANY" Generic for Light Bulbs
• TTAB Finds "JOJOBA BUTTER BEADS" Generic for ... Guess What?
• WYHA? TTAB Finds "INFUSED CIGARS" Generic for ... Guess What?

Lack of bona fide intent:

• Precedential No. 12: TTAB Sustains "HERE'S JOHNNY" Portable Toilets Opposition on Two Grounds: Res Judicata and No Bona Fide Intent

Non-Use:

• TTAB Finds Service Mark Application Void ab initio for Non-Use Because Services Were Not Rendered Prior to Filing

Res Judicata:

• Precedential No. 12: TTAB Sustains "HERE'S JOHNNY" Portable Toilets Opposition on Two Grounds: Res Judicata and No Bona Fide Intent

Use in Commerce/Drawing/Specimen of Use:

• Test Your TTAB Judge-Ability on this Specimen of Use

TTAB Discovery/Evidence/Procedure:

• Will the TTAB Follow the 4th Circuit's Rosenruist Ruling?
• Appellee Removes CAFC Appeal to Federal District Court Under 15 USC 1071
• Precedential No. 8: You Can't Move for Summary Judgment Until After Serving Initial Disclosures, Says TTAB
• Precedential No. 7: TTAB Deems Internet Printouts Admissible Via Notice of Reliance
• Precedential No. 52 (2009): TTAB Rules That Objection to Discovery For Failure to Provide Initial Disclosures Must Be Made Specifically
• Precedential No. 6: TTAB Spanks Opposer Who Failed to Serve Initial Disclosures
• Precedential No. 51: TTAB Denies Sanctions But Orders Parties to Hold Discovery Conference with Board Participation

CAFC Decisions:

• CAFC Affirms TTAB Summary Judgment in 2(d) Farm Boy Design Dispute
• CACF Affirms TTAB Ruling: "X-PIPE" is Generic for Engine Exhausts
• Thinking About Fraud (cont.): Why Look to Patent Law for the Trademark Fraud Standard?
• CAFC Favors USC Trojans Over USC Gamecocks in "SC" Logo Fracas

CAFC Oral Arguments:

• CAFC Hears Argument in "ODOM'S PRIDE" 2(d) Summary Judgment Appeal
• CAFC Hears Oral Argument Regarding Distinctiveness of Religious Habit

Other:

• "TTAB Comes To Boston" - April 9th at Boston University School of Law
• Interesting TTAB Statistics in Report to February TPAC Meeting
• TTAB Posts March 2010 Hearing Schedule
• TTABlog Article: The Top Ten TTAB Decisions of 2009®
  
• Trademark Public Advisory Committee (TPAC) Webcast Today
• Which Law Firms Filed the Most Petitions for Cancellation in 2009?
• Parties Respond to TTAB Order in Oldest Pending Case
• Which Law Firms Filed the Most Oppositions in 2009?
• From the TTAB Website: Everything You Ever Wanted to Know About Accelerated Case Resolution (ACR)
• TTAB Posts February 2010 Hearing Schedule
• Senate Passes Bill to Provide Usual Grace Periods for Section 71 Declarations of Use
• TTAB Issues New Order in Oldest Pending TTAB Case
• Oldest Pending TTAB Case Continues in Suspension
• TTAB Issued 52 Precedential Decisions in 2009
• Current Roster of TTAB Administrative Trademark Judges
• TTAB Posts January 2010 Hearing Schedule
• "CAB CALLOWAY" TTAB Ruling Goes to Southern District of New York for 1071(b) Review

Text and photos ©John L. Welch 2009-2010.