TTABlog Quarterly Index: January-March 2019

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Section 2(a) - Deceptiveness:

• TTABlog Test: Is "NEW SILK ROAD" Deceptive for Clothing Not Made of Silk? [No]

Section 2(a) - False Association:

• WYHA? TTAB Affirms Section 2(a) False Association Refusal of TSA-KIT for "Bottles, sold empty"

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Are These Two Male Torso-Shaped Perfume Bottles Confusingly Similar [Yes]?
• TTABlog Test: Is ALACRAN Confusable with SCORPION for Mezcal? [Yes]
• TTABlog Test: Is "A MOTHER'S TOUCH MOVERS" Confusable with "A WOMAN'S TOUCH MOVING" for Moving Services? [Yes]
• TTABlog Test: Is TEMPUS for Beer Confusable With TEMPUS TWO for WInes? [Yes]
• JUST SAY IT for Books Confusable with and Dilutive of Nike's JUST DO IT, Says TTAB
• TTABlog Test: Is DAILY FILL Confusable with DAILY'S For Gas Station Convenience Store Services? [Yes]
• TTABlog Test: Are These "ALL STAR" Logo Marks Confusable for Auto Part Services? [Yes]
• TTABlog Test: Are Snack Bars Related to Energy Drink Powder and Bicycles? [Yes]
• TTAB Finds GNARLY MARLEY'S Confusable With BOB MARLEY and MARLEY for Clothing and Retail Services
• Finding Clothing and Energy Drinks Related to Coffee, TTAB Grants KICK ASS Cancellation Petition
• Rejecting Estoppel and Parody Defenses, TTAB Finds CRABS ADJUST HUMIDITY Confusable with CARDS AGAINST HUMANITY for Card Games
• TTABlog Test: Is NABOSO (Czech) Confusable With BAREFOOT for Foot Orthotics and Yoga Mats? [No]
• TTABlog Test: Is SKYRIZI Confusable with IZIRIZE for Pharmaceuticals? [No]
TTABlog Test: Is "PINK COW & Design" Confusable With "RED BULL & Design" for Soft Drinks [Yes]?
• TTAB Dismisses 2(d) Opposition to "M" Mark for Medication Costing Software
• TTABlog Test: Are These Two "I-10" Marks Confusable for Beer?
• TTABlog Test: Are Automobile Dealerships and Car Washing Services Related? [Yes]
• TTABlog Test: Is "THE OFFICIAL SEXIFIT & Design" Confusable with "IFIT" for Fitness Services? [Yes]
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• In 2018, What was the Rate of TTAB Affirmance of Section 2(d) Refusals to Register?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?
• TTABlog Test: Is "INCOGNITO" for Footwear Confusable with "STS INCOGNITO & Wolf Design" for Clothing? [No]
• On Remand, TTAB Reverses Course, Finds ALEC BRADLEY STAR INSIGNIA for Cigars Confusable with INSIGNIA for Wine

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

• TTABlog Test: Is BIKESTYLE Merely Descriptive of Cycling Apparel? [Yes]
• WYHA? TTAB Affirms Disclaimer Requirement of “PETITS” in NUTELLA PETITS & Design for Pastry Related Goods
• TTAB Reverses Descriptiveness Refusal of “CANNABIS CANNIBALS” for Cartoons Featuring Cannabis-Smoking Cannibals
• WYHA? TTAB Finds CREATINE GUMMIES Merely Descriptive of Supplements Containing Creatine
• In 2018, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals?

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

• TTABlog Test: Precedential No. 3: TTAB Reverses Section 2(e)(2) Geographical Descriptiveness Refusal of BA BEEF for Beef

Section 2(e)(5) - Functionality:

• Finding Aesthetic Functionality, TTAB Affirms Refusal to Register Copper Color for Irrigation Drip Tubes

Section 2(f) - Acquired Distinctiveness:

• TTAB Affirms Refusals of Color Pink for Tour Guide Services Due to Unacceptable Drawing and Lack of Acquired Distinctiveness
• TTAB Reverses Refusal to Register Starbucks' Green-Circle-on-White-Cup, but Green Circle Alone Lacks Acquired Distinctiveness

Abandonment:

• Finding No Fraud and Naked Licensing Barred by Licensee Estoppel, TTAB Denies TREE'S WINGS & RIBS Cancellation Petition
• Precedential No. 38: TTAB Finds Allegations of Abandonment Legally Sufficient Under Iqbal/Twombly

Concurrent Use:

• Precedential No. 39: TTAB Denies Concurrent Use Registrations For Wine Because Applicant Failed to Prove Prior Lawful Use in Commerce

Dilution:

• JUST SAY IT for Books Confusable with and Dilutive of Nike's JUST DO IT, Says TTAB
• Precedential No. 40: TIVOTAPE and TIVOBAR for Lighting Fixtures Dilute Famous TIVO Mark, Says TTAB

Fraud:

• Finding No Fraud and Naked Licensing Barred by Licensee Estoppel, TTAB Denies TREE'S WINGS & RIBS Cancellation Petition

Genericness:

• Fourth Circuit Affirms E.D. Va: BOOKING.COM is not Generic, USPTO Gets Attorneys' Fees
• TTAB Finds COMBAT ROSARY Generic for . . . Guess What?

Lawful Use:

• Precedential No. 39: TTAB Denies Concurrent Use Registrations For Wine Because Applicant Failed to Prove Prior Lawful Use in Commerce

Mark/Drawing Issues:

• TTAB Affirms Refusals of Color Pink for Tour Guide Services Due to Unacceptable Drawing and Lack of Acquired Distinctiveness
• TTAB Reverses Refusal to Register Starbucks' Green-Circle-on-White-Cup, but Green Circle Alone Lacks Acquired Distinctiveness

Nonuse/Specimen of Use/Failure to Function:

• TTAB Affirms Refusals of SOUTHFACE VILLAGE for Applicant's Internet Portal: Not a Registrable Service
• Finding a Bearded Skull Design Merely Ornamental for Clothing, TTAB Affirms Failure-to-Function Refusal
• In view of Applicant's 11 Existing Registrations, TTAB Reverses 4 Failure-to-Function Refusals of RANDOM ACTS OF KINDNESS
• "OOPS! WRONG ANSWER" Fails to Function as a Mark for a Trivia Website, Says TTAB
• Denying Cancellation Petition, TTAB Finds that Roman Atwood's "SMILE MORE" Functions as a Mark
• Precedential No. 2: #MAGICNUMBER108 Fails to Function as a Trademark for Shirts, Says TTAB
• #COVFEFE Fails to Function as a Trademark for Clothing, says TTAB
• Precedential No. 1: Wal-Mart's "INVESTING IN AMERICAN JOBS" Fails to Function as a Service Mark, Says TTAB

Standing:

• Precedential No. 37: Dismissing "NAKED" Condoms Cancellation, TTAB Finds Lack of Standing Due To Contractual Estoppel

Discovery/Evidence/Procedure:

• WYHA? TTAB Rejects Applicant's Attack on Cited Registration That Was "Wrongly Issued"
• On Summary Judgment, TTAB Dismisses Cancellation Petition Predicated on Respondent's Untimely Section 8 Declaration
• Precedential No. 4: Finding Excusable Neglect Based on Attorney's Medical Issues, TTAB Re-opens Petitioner's Testimony Period
• Precedential No. 38: TTAB Finds Allegations of Abandonment Legally Sufficient Under Iqbal/Twombly
• Precedential No. 37: Dismissing "NAKED" Condoms Cancellation, TTAB Finds Lack of Standing Due To Contractual Estoppel

CAFC Opinions:

• CAFC Vacates and Remands Guild Mortgage Decision: TTAB Failed to Consider 8th DuPont Factor

Other:

• TTAB Posts April 2019 Hearing Schedule
• Current Roster of TTAB Judges
• Three New Judges Appointed to TTAB
• The Trademark Reporter's 2019 "Annual Review of U.S. Trademark Cases"
• TTAB Schedules Seven (7) Oral Hearings for March 2019
• E.D. Va. Dismisses Bayer's Section 43(a) Claims but Affirms TTAB's Cancellation of Belmora's FLANAX Registration
• TTAB Schedules Three (3) Oral Hearings for February 2019
• In 2018, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals?
• In 2018, What was the Rate of TTAB Affirmance of Section 2(d) Refusals to Register?
• TTABlog Jobs: Uber Seeks Trademark Paralegal for its San Francisco Office
• The Top Ten TTAB Decisions of 2018 (Part II)
• The Top Ten TTAB Decisions of 2018 (Part I)

Text Copyright John L. Welch 2019.