TTABlog Quarterly Index: October - December 2019

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Section 2(d) - Likelihood of Confusion:

• WYHA? ECHO 911 Confusable with ECHO112 for Emergency Location Software, Says TTAB
• TTABlog Test: Are AGUAMALA and ELECTRIC JELLYFISH Confusable for Beer? [Yes]
• TTABlog Test: Three More Appeals from Section 2(d) Refusals
• TTAB Sustains Section 2(d) Opposition to CRAFT BEARINGS Based on Opposer's Common Law Use of CRAFT BEARING COMPANY
• TTABlog Test: Three Recent Section 2(d) Appeals
• TTAB Dismisses Opposition to BLUE INDUSTRY for Clothing, Finding INDUSTRY to be a Weak Formative
• Finding Distilled Spirits and Malt Related, TTAB Sustains 2(d) Opposition to BLACKLAND DISTILLERY
• Precedential No. 32: Finding Bakery Shops and Bread Buns Related, TTAB Affirms 2(d) Refusal of COUNTRY OVEN
• Fame Plays Dominant Role in OLD NAVY and BACCARAT Section 2(d) Opposition Victories
• CAFC Affirms TTAB: BEAST MODE SOCCER Confusable with BEAST MODE for Clothing
• TTABlog Test: Are CRUCIBLE COOKWARE and LE CREUSET Confusable under the Doctrine of Foreign Equivalents? [Yes]
• TTABlog Test: Are ACCELETERM and LINCOLN TERMACCEL Confusable for Life Insurance Services?
• WYHA? "DIRTY LAUNDRY" for Clothing Confusable With "DIRTY LAUNDRY" for Footwear, Says TTAB
• TTABlog Test: Are "PUBLIC GOODS" and "PUBLIX" Confusable for Personal Care Products? [No]
• TTABlog Test: Are These Two Word+Design Marks Confusable for Food Items and Restaurant Services? [No]
• TTABlog Test: Are SIELLA’S and CIELA Confusable for Skin Care Products? [Yes]
• Divided TTAB Panel Reverses Section 2(d) Refusal of MINIBAR SMARTSNAX for Minibar Snack Food
• TTABlog Test: Is "RAINFOREST NUTRITION" Confusable With "RAINFOREST ANIMALZ" for Nutritional Supplements? [No]
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Come Out?
• TTABlog Test: Is INTEGRATED PERFORMANCE CARE SYSTEMS Confusable With This Word+Design Mark for Chiropractic Services? [No]
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Come Out?

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

• WYHA? Precedential No. 38: TTAB Rules that Patent Filings Are Probative Evidence of Descriptiveness
• Divided TTAB Panel Finds "19 CRIMES" Merely Descriptive of Videos and Entertainment Services
• WYHA? TTAB Affirms Mere Descriptiveness Refusal of CONSERVATIVE INSTITUTE for On-Line Information Services

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

• TTAB Affirms Section 2(e)(2) Geographical Descriptiveness Refusal of "SE VENDE FOR SALE AMERICA" for Marketing Consulting

Section 2(e)(5) - Functionality:

• WYHA? TTAB Affirms Section 2(e)(5) Functionality Refusal of Packaging for Cables and Wire

Abandonment:

• TTAB Orders Cancellation of Part of POLO GIRLS Registration Due to Nonuse
• On Remand, TTAB Denies Abandonment Claims But Finds That "ADD A ZERO" Fails to Function as a TM for Shirts and Caps
• Precedential No. 30: TTAB Denies Abandonment Counterclaim for Failure to Prove No Intent to Resume Use

Genericness:

• Precedential No. 37: TTAB Rules that the Color Red is Generic for Saw Blades
• Precedential No. 36: TTAB Deems ALLERGY CARE Generic for ... Guess What?
• TTAB Finds THE VITAMIN SHOPPE Generic for . . . . Guess What?
• Precedential No. 28: TTAB Affirms Genericness Refusal of Packaging Design for Socks

Nonuse/Specimen of Use/Failure to Function:

• TTAB Orders Cancellation of Part of POLO GIRLS Registration Due to Nonuse
• TTAB Affirms Refusal of USER FIRST for Software Tools: Specimen Doesn't Show Use of Mark
• TTAB Affirms Failure-to-Function Refusal of INTELLIGENCE OF THINGS for Supply Chain and Engineering Services
• Precedential No. 33: Another Failure-to-Function Refusal
• TTABlog Test: Does "HICCUP" Create a Separate Commercial Impression in These Specimens of Use?
• On Remand, TTAB Denies Abandonment Claims But Finds That "ADD A ZERO" Fails to Function as a TM for Shirts and Caps
• WYHA? TTAB Affirms Refusal of PREVENTION CHAIN for Swine Disease Prevention Services: Specimens Failed to Show Use as a Mark
• TTABlog Test: Does This Specimen of Use Support Registration of BOWL & STIX?"
• TTAB Affirms Failure-to-Function Refusal of Informational Phrase for Bumper Stickers

Ownership:

• Precedential No. 29: TTAB Dismisses Opposition to Section 1(b) Application, Ownership Is Not an Issue

Discovery/Evidence/Procedure:

• Ninth Circuit Reverses District Court: No Claim Preclusion from TTAB Dismissal of Cancellation Petition
• Precedential No. 35: TTAB Dismisses Appeal Because Applicant Did Not Address Drawing and Color Requirements
• Precedential No. 34: TTAB Denies Motion To Compel Production Of Metadata Because Opposer Didn't Ask For It
• Precedential No. 31: TTAB Enters Judgment as a Sanction for Willful Evasion of Discovery
• TTAB Denies Cancellation Petition Because Petitioner Failed to Prove Standing
• District Court Dismisses Section 18 Counterclaim for "Cancellation by Restriction"
• District Court Dismisses PRETZEL CRISPS Section 1071(b) Appeal for Lack of Subject Matter Jurisdiction
• TTAB Dismisses "OCALA HORSE PROPERTIES" Cancellation Petition Due to Lack of Standing

Recommended Reading:

• Recommended Reading: The Trademark Reporter, Nov.-Dec. 2019 Issue
• John B. Farmer: "Benefits of Mark Registration"
• Webcast of NUSL Panel Discussion: "The Original Sin of Trademark Law: Failure to Function" (Nov. 5, 2019)
• Schwimmer and Welch: "U.S. Law Inches Towards Protecting Trademark Reputation Without Use"

Schwimmer (left), Welch (right) CAFC Opinions:

• CAFC Upholds TTAB Dismissal of "Goats on a Roof" Cancellation Petition Due to Lack of Standing
• CAFC Remands GALPERTI Case to TTAB for Application of Proper Fraud Analysis
• CAFC Affirms TTAB: BEAST MODE SOCCER Confusable with BEAST MODE for Clothing

Other:

• Supreme Court Rejects USPTO Claim for Attorney's Fees in Patent Appeal via Civil Action
• TTAB Posts December 2019 Hearing Schedule
• TTABlog Test: How Did These Three Recent TTAB Appeals Come Out?
• TTAB Posts November 2019 Hearing Schedule
• TTABlog Test: How Did These Three Recent TTAB Appeals Come Out?

Text Copyright John L. Welch 2019.