TTABlog Quarterly Index: January - March 2018

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Section 2(b) - Flag, Coat of Arms, or Other Insignia:

• TTAB Vacates Prince of Wales Section 2(b) Decision and Remands Application to the Examining Attorney

Section 2(d) - Likelihood of Confusion:

• TTAB Test: Are Nutritional Supplements Related to Skin and Hair Care Products Under Section 2(d)? [Yes]
• TTAB Test: Is NONSTOP KNIGHT Confusable With NONSTOP GAMES for Computer Game Software? [Yes]
• TTAB Dismisses Petition for Cancellation: No Proof of Relatedness of Services or Overlapping Trade Channels
• TTAB Sustains HONEY PIG Opposition Despite Ten Years of Parties' Coexistence
• Precedential No. 8: Webpages Alone Insufficient to Prove Priority, Says TTAB
• TTAB Test: Is "S-LON" Confusable With "C-LON" for Thread? [Yes]
• TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?
• Playboy Bunny Fails to Save GND Logo Mark From Section 2(d) Refusal, Says TTAB
• TTAB Test: Is CREATE PAINT Confusable With PAINT 'N CREATE for Paints?
• Precedential No. 5: Opposer Fails to Prove Priority, Apple's IPAD Mark Survives Opposition
• TTAB Test: Are These Two Marks for Fruit Preserves Confusingly Similar?
• TTAB Test: Which of These Three Section 2(d) Refusals Was Reversed?
• TTAB Test: Are Nutritional Supplements And Fruit Beverages Related Under Section 2(d)? [Yes]
• TTAB Test: Is "PEACEFUL PIRANHA" Confusable With "PIRAÑA" for Snack Foods? [Yes]
• TTAB Test: Are Cigars Related to Alcoholic Beverages for Section 2(d) Purposes? [Yes]
• Louis Vuitton's APOGÉE for Perfume Confusable with APHOGEE for Hair Products, Says TTAB
• Precedential No. 3: TTAB Refuses to Limit Goods in Cited Software Registration, Affirms Section 2(d) Refusal

• TTAB Finds Two Puppy Marks Confusable for Bathroom Tissue
• TTAB Test: Are These Two Marks Confusable For Weight Loss Programs?
• What is the Likelihood of TTAB Affirmance of a Section 2(d) Refusal?
• TTAB Test: Are These Two Stylized "P" Marks Confusingly Similar for Cigars?
• TTAB Dismisses "DONQ" Opposition, Finding Applicant's Goods and Services Unrelated to "DON Q" Rum

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

• TTAB Test: Is "ALL IN ONE" Merely Descriptive of Electric Wall-Mounted Hand Dryers? [Yes]>/a>
• WHITE SANGRIIIA Merely Descriptive of Cocktails, Lacks Acquired Distinctiveness, Says TTAB
• In 2017, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals?

Section 2(e)(5) - Functionality:

• TTAB Grants Summary Judgment Motion, Finding Fusible Link Configuration De Jure Functional

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 9: TTAB Finds "SERIAL" Generic for Podcasts, But Logo Forms Registrable With Disclaimer
• WHITE SANGRIIIA Merely Descriptive of Cocktails, Lacks Acquired Distinctiveness, Says TTAB
• Two Product Configurations Fail to Clear Section 2(f) Hurdle, Says TTAB

Dilution:

• CC & Design for Accounting Services Dilutes Chanel's Famous CC Monogram, says TTAB

Fraud:

• TTAB Grants Summary Judgment Re Bogus Fraud Counterclaim
  

Genericness:

• Precedential No. 9: TTAB Finds "SERIAL" Generic for Podcasts, But Logo Forms Registrable With Disclaimer
• Precedential No. 6: TTAB FInds MECHANICALLY FLOOR-MALTED Generic for ... Guess What?
• TTAB Test: Is TWEEDS Generic for Shirts and Sweaters? [Yes]

Nonuse/Abandonment/Specimen of Use/Failure to Function:

• TTAB Affirms Rejection of Applicant's Own Magazine As Specimen for Publishing Services
• TTAB Sustains Opposition to "REMEMBER THIS NAME" - Fails to Function as a Mark for Legal Services
• WYHA? TTAB Affirms Requirement for Specificity of Cable Clip Composition to Allow Proper Classification
• TTAB Affirms Failure-to-Function Refusal of Ribbon/Banner Background Design for Horse Tail Cleaners
• Precedential No. 4: TTAB Reverses Rejection of Downloadable Software Specimen Showing Mark in On-Screen Display
• Precedential No. 1: TTAB Okays Service Mark Specimen of Use Thanks to Applicant's Clarifying Information

Discovery/Evidence/Procedure::

• TTAB Vacates Prince of Wales Section 2(b) Decision and Remands Application to the Examining Attorney
• Precedential No. 8: Webpages Alone Insufficient to Prove Priority, Says TTAB
• Precedential No. 7: TTAB Denies Motion to Strike Disclosure Notice and Preclude Expert Testimony
• Applying Claim Preclusion, TTAB Summarily Dismisses Petition for Cancellation of "THE EBONYS" Registration Despite Added Claim
• Precedential No. 2: TTAB Again Lets Party off the Hook Based on January 2017 Rule Changes
• Precedential No. 39: TTAB Again Cuts Some Procedural Slack Due to 2017 Rule Changes
• Precedential No. 38: TTAB Excuses Failure to Plead Compulsory Counterclaim in Answer
• Precedential No. 37: Applying Revised Rules, TTAB Denies Motion for Judgment on the Pleadings as Untimely

Recommended Reading:

• Ladas Memorial Award Winner: Michelle B. Smit, "(Un)Common Law Protection of Certification Marks"
• Recommended Reading: Prof. Eric Goldman, "Emojis and the Law"
• The Trademark Reporter's 2018 "Annual Review of U.S. Trademark Cases"
• Recommended Reading: Prof. Ouellette, "Does Running Out Of (Some) Trademarks Matter?"
• Recommended Reading: Professors Beebe and Fromer, "Are We Running Out of Trademarks?"

Other:

• Meet The Bloggers XIV: Garage Billiards, Tuesday, May 22, 8-10 PM
• Roster of TTAB Interlocutory Attorneys
• TTAB Posts March 2018 Hearing Schedule
• TTAB Posts February 2018 Hearing Schedule
• Current Roster of TTAB Administrative Trademark Judges
• Transcript of Public Meeting Regarding Proposed Streamlined Cancellation Proceeding
• In 2017, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals?
• What is the Likelihood of TTAB Affirmance of a Section 2(d) Refusal?
• TTAB Issued 39 Precedential Rulings in 2017
• The Top Ten TTAB Decisions of 2017 [Part II]
• The Top Ten TTAB Decisions of 2017 [Part I]
• TTAB Posts January 2018 Hearing Schedule

Text Copyright John L. Welch 2018.