TTABlog Quarterly Index: October - December 2010

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Section 2(a) - false association:

• Finding USPS Blue Mailbox Famous, TTAB Sustains 2(d) and 2(a) Opposition

Section 2(a) - scandalous:

• TTAB Reverses 2(a) Scandalousness Refusal of "BIG EFFIN GARAGE" for Music Website
• Test Your TTAB Judge-Ability: Is "AUDIOTURD & Design" Scandalous Under Section 2(a)?

Section 2(c) - lack of consent from living individual:

• Presidential No. 44: In Rare Section 2(c) Ruling, TTAB Affirms Refusal of "OBAMA BAHAMA PAJAMAS"

Section 2(d) - likelihood of confusion:

• Baja Humbug? Affirming 2(d) Refusal, TTAB Finds Confusion Likely Between "BAJA" for Camping Trailers and Automobiles
• Test Your TTAB Judge-Ability: Are "CORVOLTTE" and "CORVETTE" Confusingly Similar for Automobiles?
• Test Your TTAB Judge-Ability: Are "B.C. PIZZA" and "B&C PIZZA" Confusingly Similar?
• Applicant's Bad Faith a Factor in TTAB's Sustaining "AFROS TO SHELLTOES" 2(d) Opposition
• Test Your TTAB Judge-Ability: Why Are "ECSTA LX PLATINUM" and "PLATINUM" Not Confusingly Similar for Tires?
• TTAB Finds "LAGUNA" Logo on T-Shirt Merely Ornamental, Affirms Refusal
• Test Your TTAB Judge-Ability: Are "ISLAND TROPICAL" and "TROPICAL ISLAND BLAST" Confusingly Similar For Fruit-Based Snack Food?
• Fur Flies at TTAB: Playboy Wins Cancellation of "BUNNY" Registration for Clothing and Handbags
• WYHO? TTAB Finds "GORILLA LOFT" Not Confusingly Similar to "HYLOFT" for Storage Racks and Shelving
• Parties Opt For ACR: TTAB Finds "AETNA ONE" Not Confusingly Similar to "HUMANA ONE" for Health Care-Related Services
• Precedential No. 40: TTAB Reverses 2(d) Refusal: Differing Trade Channels and Customers Trump Third-Party Registrations
• "INVENT! INVENT! INVENT! PATENT IT! Confusingly Similar to "PATENT IT!," Says TTAB
• Parties Go ACR: TTAB finds "FREDERICK WILLIAM" and "FREDERICK WILDMAN logo" Not Confusingly Similar for Wine
• WYHA? TTAB Affirms 2(d) Refusal of "VICCINO'S & Design" Over "IL VICINO" for Restaurant Services

Section 2(e)(1) - mere descriptiveness:

• TTAB Affirms Refusal of "MTS TESTSUITE" - Applicant Failed to Comply with Disclaimer Requirement
• "AGAVERITA" Merely Descriptive of Non-Alcoholic Cocktail Mixes, Says TTAB

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

• TTAB Finds "ROC USA" to be Primarily Geographically Descriptive but Registrable Under Section 2(f)

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

• Emphasizing Rareness of the Surname, TTAB Reverses Section 2(e)(4) Refusal of "BOVIS FOODS"

Section 2(f) - acquired distinctiveness:

• TTAB Finds "ROC USA" to be Primarily Geographically Descriptive but Registrable Under Section 2(f)
• Precedential No. 42: TTAB Affirms Refusal to Register Shape of Chevron's "Pole Spanner Sign" as Non-Distinctive
• Internet Survey Evidence Contributes to TTAB Reversal of Refusal to Register Shape of Walther PPK Handgun
• TTAB Sustains Opposition to Registration of Carroll Shelby's "Cobra 427 S/C Vehicle Shape" Due to Lack of Acquired Distinctiveness
• TTAB Cancels "EQUINE BODY WORKER" Registration For Lack of Acquired Distinctiveness

Abandonment:

• TTAB Says Nevermind to Abandonment Claim in "NIRVANA" Bottled Water Cancellation

Failure to Function

• TTAB Reverses Refusal to Register Weldebrau Beer Bottle Design, Finding it Inherently Distinctive
• Precedential No. 42: TTAB Affirms Refusal to Register Shape of Chevron's "Pole Spanner Sign" as Non-Distinctive

Fraud:

• Fraud? TTAB Denies Another Summary Judgment Motion as Defendant Claims Innocence, Non-Falsity
• Frivolous Fraud Claims: A Suggested Sanction

Genericness:

• Precedential No. 45: TTAB Finds "NANDRIVE" Generic for Electronic Integrated Circuits
• "FIRSTAIDE" Generic for Bandages and Kits, Says TTAB, Affirmingly
• Precedential No. 43: TTAB Reverses Genericness Refusal of "THUMBDRIVE" for Portable Storage Devices
• TTAB Affirms Genericness Refusal of "JOC" For ... Guess What?

Lack of bona fide intent:

• Precedential No. 46: Applicant Lacked Bona Fide Intent, TTAB Sustains "AQUAJETT" Opposition

Non-use:

• Fur Flies at TTAB: Playboy Wins Cancellation of "BUNNY" Registration for Clothing and Handbags

Ownership:

• Pamela Chestek, IP Ownership Guru, on Koolatron and Wella
• Pamela Chestek Explains the TTAB's Recent "NITELIFE" Ownership Decision

Procedural issues:

• Precedential No. 47: TTAB Dismisses Opposition for Lack of Standing, Finds No Excusable Neglect Warranting Re-Opening of Case
• Precedential No. 41: Parties File Cross-Motions for Summary Judgment, then Opt for TTAB's ACR Procedure to Resolve Cancellation

Use in Commerce/Drawing/Specimen of Use:

• Test Your TTAB Judge-Ability on these Two Service Mark Specimens of Use
• Test Your TTAB Judge-Ability on this Specimen of Use for Health-Care Administration Services
• Test Your TTAB Judge-Ability on this Trademark Mutilation Case

CAFC Decisions:

• CAFC Affirms TTAB's Decision in "ANTHONY'S" Pizza 2(d) Brouhaha
• CAFC Affirms TTAB: Chippendales' "Cuffs & Collar" Mark Not Inherently Distinctive

Recommended Reading:

• Recommended Reading: Anthony Fletcher, "The Product with the Parody Trademark: What's Wrong with CHEWY VUITON?"
• TTABlogger Article: The Top Ten TTAB Decisions of 2009-2010

Other:

• TTABlog Podcast: Trademark Fraud – The Impact of In re Bose on Trademark Owners, Practitioners, and the USPTO
• INTA's TM Topics Email List: If It Ain't Broke, Don't Fix It
• PTO Announces Change to TEAS e-Signature Approach
• Subscribe to USPTO E-mail News Updates
• Transcript of September 2, 2010 TPAC Meeting Now Available
• TTAB Posts December 2010 Hearing Schedule
• TTABlog Named to ABA Journal Blawg 100
• USPTO Webcast: "Roundtable on Best Practices for Trademark Prosecution in the Current Electronic Environment"
• Erik Pelton's Summary of This Week's TPAC Public Meeting
• TTAB Hot Stove League: Five MLB Teams Oppose the Mark "B." for Children's Books
• USPTO Issues Performance and Accountability Report for Fiscal Year 2010
• More TTABlog Tweets and Re-Tweets
• TTAB Bully Watch: What About NFL's Challenging "SOUPER BOWLS SOUPS SALADS SANDWICH WRAPS?"
• Check Out Towergate Software's New "2(d) Citation Watch" Service
• Commissioner for Trademarks Lynne Beresford to Retire on December 30
• Fraud and Lack of Bona Fide Intent: Some Thoughts on Remedies
• Recent TTABlog Tweets and Re-Tweets
• TTAB Bully Watch: Major League Baseball Opposes Design Mark Comprising a Head Wearing a Reversed Baseball Cap
• TTABlog Reaches Sixth Anniverary
• Trademark Bullying: Birth of a TTAB Affirmative Defense?
• TTAB Hot Stove League Opener: LA Dodgers Oppose BROOKLYN BURGER logo
• TTAB Posts November 2010 Hearing Schedule
• Current Roster of TTAB Administrative Trademark Judges
• TTAB Judge Paula T. Hairston Retires
• USPTO Seeks Comments on Trademark Bullies You Have Known
• Edge Games Crashes in Trademark Suit Against Electronic Arts
• Mark Your TTAB Calendar: Webinar on Fraud, November 10, 2010
• Updated Case Book: "Fundamentals of Intellectual Property Law" by Prof. Thomas G. Field, Jr.
• Place Your Bets: TTAB Posts October 2010 Hearing Schedule

Text and photos ©John L. Welch 2010.