TTAB Quarterly Index: January - March 2017

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Section 2(b) - Flag, coat of arms, insignia:

• Precedential No. 3 = TTAB Test: Does this Mark Include a Simulation of the Swiss Flag?

Section 2(d) - Likelihood of confusion:

• Despite Applicant's Prior Registrations, TTAB Affirms 2(d) Refusal of SWIRL WORLD & Design for Frozen Yogurt
• TTAB Test: Which of These Four Section 2(d) Refusals Was Reversed?
• TTAB Test: Are These Flying Bird Marks Confusingly Similar?
• CITY OF HEROES for Clothing Confusable with Same Mark for Video Games, Says TTAB
• TTAB Test: Is "THE GREEN PEPPER" Confusable With "GREEN BURRITO" For Restaurant Services? [Yes]
• TTAB Test: Which Two of These Four Section 2(d) Refusals Were Reversed?
• TTAB Test: Is PLUM Confusable With BLACKPLUM and/or PLUMDOG for Financial Services?
• TTAB Test: Is 100 PERCENT WINE Confusable with CENTO PER CENTO for Wine? [Yes]
• TTAB Test: Is MERLIN for Watches Confusable with MERLIN for Clothing?
• Fame of adidas 3-Stripes Mark Yields Section 2(d) Summary Judgment
• TTAB Test: Is BEACH HUGGY for Pillows Confusable With HUGGY PETS for Decorative Pillowcases? [Yes]
• TTAB Orders Cancellation of PORTÓN Registration, Confusable with PATRON
• TTAB Test: Which Of These Four Section 2(d) Refusals Was Reversed?
• Precedential No. 35: Third-Party Evidence Keys Dismissal of ROSE SENIOR LIVING Section 2(d) Opposition

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

• SOCIAL SECURITY ANNUITY Merely Descriptive of Retirement Planning Services, Says TTAB
• TTAB Test: Is "CERTIFIED GORILLA FRIENDLY" Merely Descriptive of Honey and Hotel Services?
• TTAB Test: Is "THE BOX" Merely Descriptive of Packaged Charcoal?
• TTAB Test: Is KRISMAS Merely Descriptive of Holiday Store Services? [Yes]
• TTAB Test: Which Two of These Four Mere Descriptiveness Refusals Were Reversed?
• CORN THINS and RICE THINS Merely Descriptive But Not Generic, Says TTAB
• HONEYFILE Merely Descriptive of Security Software, Specimen Unacceptable, Says TTAB
• TTAB Test: Is RAINSCAPES Merely Descriptive of Irrigation Services? [Yes]
• TTAB Test: Is "DEUTSCHER FUSSBALL-BUND" Merely Descriptive of Clothing and Soccer Gear? [Yes]
• TTAB Test: Which Of These Three Mere Descriptiveness Refusals Was Reversed?

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

• TTAB Affirms Rejection of New Drawing, Reverses Geographical Refusal of OAK PARK Design Mark for Beer
• TTAB Test: Is DEEP SOUTH Geographically Descriptive of Movie Studio Services? [Yes]

Section 2(e)(4) - Primarily Merely a Surname:

• TTAB Affirms Surname Refusal of ATWATER SPIRITS for Distilled Spirits
• Judge Seeherman Offers Different Approach to Section 2(e)(4) Surname Refusals

Section 2(f) - Acquired Distinctiveness:

• TTAB Okays Amendment of "IBOOKSTORE" to "IBOOKS STORE," Finds Acquired Distinctiveness
• CHICAGO STAGEHAND Supplemental Registration Cancelled by Prior User Despite No Acquired Distinctiveness
• TTAB Finds the Color Green Functional for Lawn Sprinklers
• Precedential No. 36: DEEP! DEEP! DISH PIZZA Lacks Acquired Distinctiveness for Pizza, Says TTAB

Abandonment:

• "I BELIEVE THAT WE WILL WIN" Fails to Function as a TM for Clothing, Says TTAB

Failure to Function:

• TTAB Finds Cosmetic Kit Bag Packaging Nondistinctive
• TTAB Affirms Refusal to Register Container Shape on Principal Register

Fraud:

• Finding Misuse of "R" Symbol But No Intent To Deceive, TTAB Dismisses FACETS Opposition
• TTAB Dismisses CHRISTIAN LACROIX Fraud Claim: No Intent to Deceive

Functionality:

• TTAB Affirms Section 2(e)(5) Functionality Refusal of Container Pull-Tab
• TTAB Finds the Color Green Functional for Lawn Sprinklers

Genericness:

• TTAB Finds "THE LAUNDRY CAFE" Generic for ..... Guess What?
• Precedential No. 1: TTAB Dismisses Opposition to TEQUILA Certification Mark Application

Use/Specimen of Use/Drawing:

• Can't Amend VINA DEL PASO to VINO DEL PASO for Wine, Says TTAB
• Precedential No. 4: Despite Amendment of Drawing to "SharpIN," TTAB Treats Mark as Standard Characters and Affirms Descriptiveness Refusal
• TTAB Dismisses Multi-Pronged Petition to Cancel ROYAL RITA Registration for Frozen Cocktails
• Office Door Sign Not Adequate Specimen of Use for Real Estate Services, Says TTAB
• TTAB Affirms Rejection of New Drawing, Reverses Geographical Refusal of OAK PARK Design Mark for Beer
• HONEYFILE Merely Descriptive of Security Software, Specimen Unacceptable, Says TTAB
• Precedential No. 2: TTAB Affirms Rejection of Specimen of Use for CONEY ISLAND BOARDWALK CUSTARD

Discovery/Evidence/Procedure:

• TTAB Dismisses 2(d) Opposition to ANTARCTIC ICE MARATHON Due to Failure to Prove Priority

Certification Mark:

• Precedential No. 1: TTAB Dismisses Opposition to TEQUILA Certification Mark Application

CAFC decisions:

• CAFC Affirms TTAB: EMPORIUM Is Descriptive of Arcade and Bar Services
• CAFC Reverses TTAB's "DOTBLOG" Mere Descriptiveness Decision

Recommended Reading:

• The Trademark Reporter's 2017 "Annual Review of U.S. Trademark Cases"
• Recommended Reading: Jeanne C. Fromer, "The Unregulated Certification Mark(et)"
  

Other:

• Morgan Lewis Seeks TM/Copyright Associate for Wash., DC Office
• TTAB Posts April 2017 Hearing Schedule
• TTABlog Jobs: Uber Seeks Trademark Associate Counsel for San Francisco Office
• TTAB Posts March 2017 Hearing Schedule
• Supreme Court Denies Belmora's Petition for Certioriari in the FLANAX Case
• Matthew Swyers (The Trademark Company) Excluded from Practice Before USPTO
• Effective Date of New Post-Registration Proof-of-Use Rule Delayed Until March 21st
• New Post-Registration Proof-of-Use Rule Goes Into Effect February 17th
• TTAB Posts February 2017 Hearing Schedule
• Webcast Replay: "Friendly Shores - A Guide to TTAB Practice for Foreign Trademark Owners"
• The Top Ten TTAB Decisions of 2016 [Part 2]
• The Top Ten TTAB Decisions of 2016 [Part 1]
• Current Roster of TTAB Administrative Trademark Judges
• Robert H. Coggins Appointed As TTAB Administrative Trademark Judge; Ellen J. Seeherman Retires
• In 2016, How Often Did the TTAB Affirm Section 2(d) Refusals? 2(e)(1) Mere Descriptiveness Refusals?
• TTAB Issued 36 Precedential Opinions in 2016

Text John L. Welch 2017.