TTABlog Quarterly Index: January - March 2011

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Section 2(d) - likelihood of confusion:

• TTAB Sustains 2(d) Opposition to LIFE FOR THE LIVING over LIFE INSURANCE FOR LIVING, Rejects Genericness and Abandonment Counterclaims
• WYHA? ALLENS NATURALLY Refused Registration over ALEN AMERICAS for Cleaning Preparations
• Test Your TTAB Judge-Ability: Do You Have a Beef with This Section 2(d) Decision?
• TTAB Decides Priority Dispute in ZORLAC Skateboard Clash
• TTAB Dismisses HOT POCKETS 2(d) Opposition Due to Weakness of POCKETS Formative
• TTAB Dismisses CAKE DIVAS Opposition as Applicant Proves Priority Via Analogous Trademark Use
• Precedential No. 7: ZU ELEMENTS Not Confusingly Similar to ELEMENT for Overlapping Goods, Says TTAB
• Rejecting Opposer's CD-ROM Testimony, TTAB Dismisses SWATCH Opposition to SWAP for Watch Bands
• Precedential No. 6: With Proof of "Something More" Lacking, TTAB Finds Barbecue Sauce and Catering Services Not Related
• WYHA? TTAB Affirms Refusal Of "LUVD G & Design" over "THE LOVED DOG" for Clothing
• Snack on This: TTAB Sustains 2(d) Opposition to MYCHEW over HI-CHEW for Candy
• Test Your TTAB Judge-Ability: Two Cases of Beer and Wine
• Test Your TTAB Judge-Ability: Is Candy Related to Chocolate Drink Mix? Cookies?
• TTAB Allows Applicant to Amend I.D., But Still Sustains 2(d) Opposition to FINISHPRO for Professional Paint Sprayers
• Despite Strength of "ALARIS" and Identity of Marks, Board Dismisses 2(d) Proceedings Due to Lack of Evidence that Medical Goods/Services are Related
• Finding Bricks Related to Mortar and Grout, TTAB Sustains 2(d) Opposition to STONEL over STONFIL
• Precedential No. 50: TTAB Says Consent and License from Registrant Require Reversal of 2(d) Refusal of WACKER NEUSON over NEUSON for Machinery

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

• Test Your TTAB Judge-Ability: Must OUTFITTERS Be Disclaimed for Retail Cosmetics and Jewelry Services?
• Test Your TTAB Judge-Ability: Is "MONSTER" Merely Descriptive of Automotive Accessories?
• Test Your TTAB Judge-Ability: Must "SERVICE CREW" be Disclaimed for Retail Store Services?

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

• WYHA? TTAB finds NAPA FOODS Primarily Geographically Deceptively Misdescriptive for Food
• Test Your TTAB Judge-Ability: Two 2(e)(3) Refusals for Your Perusal
• Precedential No. 3: Finding KUBA KUBA Primarily Geographically Deceptively Misdescriptive for Cigars, TTAB Affirms 2(e)(3) Refusal

Section 2(e)(5) - Functionality:

• Precedential No. 2: TTAB Cancels Supplemental Registration for Shape of Culvert Unit Due To Functionality
• Precedential No. 1: TTAB Affirms 2(e)(5) Functionality Refusal of Motorcycle Stand Design

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 4: TTAB Finds That "NKJV" Has Acquired Distinctiveness for Bibles

Failure to Function:

• Test Your TTAB Judge-Ability on This "Fur Rondy" Jewelry Design

Fraud:

• TTAB Dismisses Fraud Claim Based on Fabricated Specimen of Use: Opposer Failed to Prove Fraud "to the Hilt"
• TTAB Refuses to Cancel ATL'S BADDEST CHICKS Registration: Petitioner Failed to Prove Ownership or Fraud

Non-use:

• P. Diddy Wins TTAB Summary Judgment Over "IDIDDY" For Headphones Due to Non-Use

Genericness:

• TTAB Deems FREEDEMOGRAPHICS.COM Generic for ... Guess What?

Ownership:

• TTAB Decides Priority Dispute in ZORLAC Skateboard Clash
• TTAB Refuses to Cancel ATL'S BADDEST CHICKS Registration: Petitioner Failed to Prove Ownership or Fraud

Procedural issues:

• TTAB Issues Pre-Trial Order in New REDSKINS Cancellation Battle
• Rejecting Opposer's CD-ROM Testimony, TTAB Dismisses SWATCH Opposition to SWAP for Watch Bands
• Precedential No. 5: Prompt Supplementation of Expert Disclosure Defeats Motion to Exclude Testimony, Says TTAB
• TTAB Refuses to Cancel ATL'S BADDEST CHICKS Registration: Petitioner Failed to Prove Ownership or Fraud

Request for Information (Rule 2.61(b)):

• TTAB Affirms Refusal of BENCH VAC for Vacuum Cleaners Due to Applicant's Failure to Comply with Request for Information

Res Judicata:

• Precedential No. 8: Applying Claim Preclusion, TTAB Dismisses Two of Three "DVD & Design" Cancellation Petitions
• TTAB Applies Issue Preclusion, Grants Summary Judgment That "COCOA BUTTER FORMULA" Lacks Acquired Distinctiveness
• Applying Issue Preclusion, TTAB Grants Summary Judgment In Clash of the Star Registries
• Precedential No. 48: TTAB Enters Summary Judgment, Ruling That Res Judicata Bars Cancellation after Defaulted Opposition

Use in Commerce/Drawing/Specimen of Use:

• Use of Mark "BLUE TURF" on Blog Suffices as Service Mark Specimen for Sports Entertainment Services, Says TTAB, Unconvincingly
• Precedential No. 49: Following First Niagara, TTAB Rules That Foreign Owner Sufficiently Pleaded Use of Mark in USA

CAFC Decisions:

• CAFC Affirms TTAB's Dismissal of CITIBANK's Opposition to CAPITAL CITY BANK
• FRED Beverage TTAB Case Still Dormant Eight Months after CAFC Fee Ruling
• CAFC Hears Oral Argument inCitigroup v Capital City Bank

Recommended Reading:

• Recommended Reading: Theodore C. Max, "Trademarks in the Veldt: Do Virtual Lawyers Dream of Electric Trademarks"
• Recommended Reading: Andrew Beckerman-Rodau, "The Problem With Intellectual Property Rights: Subject Matter Expansion"
• Recommended Reading: Ann Gilson Lelonde and Jerome Gilson, "Getting Real with Nontraditional Trademarks"
• Recommended Reading: Mostert and Schwimmer, "Notice and Takedown for Trademarks"
• Recommended Reading: 100th Anniversary Issue of The Trademark Reporter
• Recommended Reading: "Ethical Issues in U.S. Trademark Prosecution and TTAB Practice"
• Serge Krimnus, "The Doctrine of Foreign Equivalents at Death's Door"

Other:

• Webinar on "Trademark Bullying: Emerging Legal Threat" - April 6th, 1PM EST
• E.D. La. District Court Upholds TTAB's "ORCHID CREAM VANILLA" Snowball Decision
• TTAB Comes to Boston: April 29th at Northeastern University School of Law
• Florida Bar IP Symposium: April 14-15 in Fort Lauderdale
• The Trademark Office Comes to California: April 11 (LA) and April 13 (SF)
• Duets Blog: View Free Webinar on "Strategies for Dealing With Trademark Bullies"
• TTAB Posts March 2011 Hearing Schedule
• INTA, ABA, AIPLA, IPO Respond to USPTO Request for Comments on "Trademark Bullying"
• TPAC Quarterly Meeting Summary – February 11, 2011
• USPTO Seeks Applicants for Two Vacancies on TTAB
• PTO Roundtable on Trademark Litigation Tactics: Is There a Bull in the Trademark Shop?
• Judge James Walsh Retires From TTAB
• TTAB Schedules Eight Final Hearings for February 2011
• The Top Ten TTAB Decisions of 2010 (Part II)
• The Top Ten TTAB Decisions of 2010 (Part I)
• Who Was the Most Frequent TTAB Opposer in 2010?
• TTAB Issued 50 Precedential Decisions in 2010
• TTAB Decides Fred Beverage's Motion to Amend, But Says It May Require Fee Before Deciding
• Has the Oldest Pending TTAB Case Reached the End of the Line?
• World Trademark Review: INTA under fire for ditching popular Trademark Topics email service
• Brand Geek: Censorship at the INTA
• Which Law Firms Filed the Most Oppositions in 2010?
• TTABlog Tweets and Re-Tweets
• TTAB Posts January 2011 Hearing Schedule
• 7th Circuit Rules That Sovereign Immunity Shields State from TM Infringement Counterclaim in Action for Review of TTAB Decision

Text ©John L. Welch 2011.