Friday, January 18, 2019

TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?

I've heard it said (by a TTAB judge) that one can predict the outcome of a Section 2(d) appeal 95% of the time just by looking at the marks and the goods or services. Presented for your consideration are three recent TTAB decisions in Section 2(d) appeals. One was reversed. Which one? [Answer in first comment].

In re Iron Balls International, Serial No. 87299536 (January 16, 2019) [not precedential] (Opinion by Judge Albert Zervas) [Section 2(d) refusal to register the mark IRON BALLS ENGINEERED ALCOHOL & Design for "gin" [ENGINEERED ALCOHOL disclaimed] in view of the registered mark IRON BALLS for "beer"].

In re Reproductive Medicine Associates of New Jersey, LLC, Serial No. 87042698 (January 15, 2019) [not precedential] (Opinion by Judge Angela Lykos) [Section 2(d) refusal of ARTEMIS for “Computer software platforms for use by fertility healthcare providers for the purpose of accessing patient electronic medical records" in view of the registered mark ARTEMIS HEALTH for "Software as a service (SAAS) services featuring software, namely, for analysis, monitoring, report generation, planning, risk and expense management and decision making regarding health care information and utilization of employees" [HEALTH disclaimed].

In re HEG Inc, Serial No. 87061391 (January 16, 2019) [not precedential] (Opinion by Judge Susan J. Hightower) [Section 2(d) refusal to register the mark KICKSMART & Design for "retail convenience store services" in view of the registered mark KICKS for the identical services].

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2019.


At 6:23 AM, Blogger John L. Welch said...

The ARTEMIS decision was reversed.

At 10:41 AM, Blogger The Brand Lawyer said...

Good old fashioned trade channels for the win!

At 10:09 AM, Blogger Eddie said...

I don't get it. What's free speech got to do with it?

He can stand on a street corner and say it all day long and the govt. can't stop him---that's free speech. He can put it on a T-Shirt and wear it around town and the govt. can't arrest him, that's free speech.

But if he wants the govt. to say that he owns the word exclusively on his product--that's just commercial speech. Why should the govt. protect him against others who also want to use the word if the govt. doesn't want to? It's the govt.'s call.

Should be rational basis test only by the SCOTUS. And it's equal protection, not free speech.

At 12:11 PM, Anonymous GB said...

It may be free speech but they will have to find another attorney to file their trademark application. Not this one.

At 11:24 AM, Anonymous Robert Frank said...

Why did Kagen rely on a 1949 and 1947 dictionary (Webster’s New International Dictionary 1246 (2d ed. 1949) and Shorter Oxford English Dictionary 961 (3d ed. 1947) for her source for definitions of scandalous and immoral? Don't they have newer dictionaries to work with? It would seem to me that definitions could change over time.

At 8:05 AM, Blogger Unknown said...

TTAB and 2(e)(1)

It seems to me that the Board's application of 2(e)(1) is at odds with Federal Circuit law. If the standard is whether the term "immediately calls to mind" the nature of the goods to the consumer, then how can the Board say that the term has to be considered in the context of the goods? If the consumer already knows what the goods are, then yes, the term is more likely to be descriptive in the consumer's mind due to hindsight. It seems that the Board has largely eliminated the "suggestive" category from the spectrum by the standard it applies.


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