TTAB Quarterly Index: January - March 2020

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Section 2(a) - Deceptiveness:

• DENIM & CO. Is Deceptive for Non-Denim Clothing, Says TTAB Panel Majority

Section 2(a) - False Association:

• Precedential No. 4: TTAB Affirms 2(a) False Association and 2(c) Consent Refusals of TRUMP-IT Logo for Utility Knives

Section 2(c) - Consent to Register:

• Precedential No. 4: TTAB Affirms 2(a) False Association and 2(c) Consent Refusals of TRUMP-IT Logo for Utility Knives

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: At Least One of These Three Section 2(d) Refusals Was Reversed!
• PRECEDENTIAL No. 13: TTAB Finds Two Different Shades of Green Not Confusable for Medical Gloves
• "FULL OF FLAVOR FREE OF GUILT" for Vegetable-Based Snacks Not Confusable WIth "GUILT FREE" for Frozen Confections, Says TTAB
• TTABlog Test: Three Recent Section 2(d) Appeals - How Did They Come Out?
• JUSTICE NETWORK Confusable With JUSTICE CENTRAL For Television Services, Says TTAB
• Precedential No. 12: Finding Clothing and Books Related, TTAB Sustains 2(d) Opposition to ENGIRLNEER
• TTAB Rejects Fraud Claim, Finds SHADI.COM Confusable With SHAADI.COM For Marriage Matchmaking Services
• TTABlog Test: Is "MONFRÈRE FASHION" Confusable With "MY BROTHER" for Clothing?
• TTABlog Test: Are Phonograph Records and Audio Equipment Related Under Section 2(d)?
• TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• MANIMAL Not Confusable With GARANIMAL for Children's Clothing, Says TTAB
• TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• LIBERTY BANKERS LIFE INSURANCE COMPANY Not Confusable With BANKERS LIFE, Says TTAB
• TTABlog Test: Are Flavored Gelatins Related to Wine-Based Aperitifs? [Yes]
• TTAB Finds PATIO BY THE SPADES Confusable With KATE SPADE for Clothing and Handbags
• Despite Purchaser Sophistication, TTAB Upholds Section 2(d) Refusal of HARDROK EQUIPMENT INC.
• Despite Weakness of Opposer's Mark, TTAB Finds SHARED SPACE Confusable WIth SHARED for Coworking Spaces
• "M" for Mattresses Confusable with Three Stylized "M" Marks for Furniture, Says TTAB
• TTAB Reverses "GROW WITH US" Refusal, Finding Live Plants Not Related to Horticulture Supplies

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

• TTABlog Test: Is "PERFORMANCE" Merely Descriptive of Dietary Supplements?
• TTABlog Test: Is FETAL LIFE Merely Descriptive of Fetal Health Signal Monitors?
• TTABlog Test: How Did These Four Appeals From Mere Descriptiveness Refusals Turn Out?
• TTABlog Test: Is MOBILIZER Merely Descriptive of Massage Apparatus?
• Divided TTAB Panel Reverses 2(e)(1) Refusal of Double Entendre "LEDGERDOMAIN" for Blockchain Software
• TTABlog Test: Is ORIGINAL GRAIN Merely Descriptive of Restaurant Services? [No]
• WYHA? TTAB Finds "APPLE SUGAR" Merely Descriptive of Sweeteners Including Fruit Skins

Section 2(e)(1) - Deceptive Misdescriptiveness:

• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• DENIM & CO. Is Deceptive for Non-Denim Clothing, Says TTAB Panel Majority

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

• Precedential No. 2: TTAB Finds CHARLESTON HARBOR TOURS Geographically Descriptive of . . . Guess What?
• TTAB Finds "SMITHFIELD" Primarily Geographically Descriptive of Meat, Lard, and Offals

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:

• TTAB Affirms 2(e)(3) Geographical Deceptiveness Refusal of EMPORIO ITALIA for Bedding

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

• TTABlog Test: Is CHALLEN Primarily Merely a Surname for Musical Instruments?
• Precedential No. 3: TTABlog Test: Is "J HUTTON" Primarily Merely a Surname for Eyewear? [Yes]
• TTABlog Test: Is MAGNUS Primarily Merely a Surname for Whiskey? [Yes]

Section 2(e)(5) - Functionality:

• TTAB Affirms Section 2(e)(5) Functionality Refusal of Bathtub Drain Cap Configuration
• TTAB Orders Cancellation of Both Registrations in Trash Bag Trade Dress Clash

Abandonment:

• Precedential No. 10: Section 66(a) Registrant With No Use of Mark Defeats Abandonment Claim
• TTAB Denies Cancellation Petition: SHUSTOV Registrant Overcame Prima Facie Case of Abandonment

Bona Fide Intent:

• Precedential No. 7: TTAB Grants Cancellation Petition, Respondent Did Not Individually Have Bona Fide Intent to Use the Mark

Fraud:

• TTAB Rejects Fraud Claim, Finds SHADI.COM Confusable With SHAADI.COM For Marriage Matchmaking Services

Genericness:

• TTAB Orders Cancellation of Both Registrations in Trash Bag Trade Dress Clash
• TTAB Affirms Genericness Refusal of FIDGET CUBE for Stress Relief Exercise Toys
• AMERICAN UNIVERSITY Bests "AMERICAN UNIVERSITY OF KUWAIT" in TTABowl

Nonuse/Specimen of Use/Failure to Function:

• Precedential No. 11: TTAB Affirms Refusal Based on Applicant's Failure to Pay Sufficient Fees
• MR1109, MR1108, and MR1107 Fail to Function As Trademarks for Electric Motors, Says TTAB
• TTAB Affirms Ornamentality Refusal of Green Y-Shaped Design on Harvester Machines
• Precedential No 1: TTAB Affirms Trifusal of Motion Mark for Sightseeing Tour Services
• AMERICAN UNIVERSITY Bests "AMERICAN UNIVERSITY OF KUWAIT" in TTABowl
• TTAB Dismisses Appeal from Specimen Refusal Because Applicant Failed to Address the Refusal
• TTAB Affirms Nine Failure-to-Function Refusals for Geometric Shapes Displayed on Gaming Machines

Concurrent Use:

• Precedential No. 8: TTAB Dissolves Concurrent Use Proceeding Because Plaintiff's Proposed Territory Overlapped With Defendant's Use

Discovery/Evidence/Procedure:

• Precedential No. 9: TTAB Dismisses Faulty Counterclaim and Affirmative Defense Based on the Pan-American Convention
• Precedential No. 6: Canadian Party Must Have a U.S. Attorney Despite Reciprocity, Says TTAB
• Precedential No. 5: Opposer Proves Standing Through Trade Name Use by Its Wholly Owned Subsidiary
• TTAB Dismisses Appeal from Specimen Refusal Because Applicant Failed to Address the Refusal

CAFC Decisions:

• CAFC Affirms TTAB: "THE JOINT" Is Merely Descriptive of Restaurant and Nightclub Services

Recommended Reading:

• The Trademark Reporter's 2020 "Annual Review of U.S. Trademark Cases"

Other:

• Current Roster of TTAB Judges (March 2020)
• TTAB Posts March 2020 Hearing Schedule
• TTAB Issues Slightly Revised Standard Protective Order
• TTAB Posts February 2020 Hearing Schedule
• In 2019, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals?
• Three Attorneys Join TTAB Interlocutory Attorney Team
• In 2019, What was the Rate of TTAB Affirmance of Section 2(d) Refusals to Register?
• The Top Ten TTAB Decisions of 2019 (Part II)
• The Top Ten TTAB Decisions of 2019 (Part I)
• Griff Thomas Reports On "Drain Cap" TTAB Oral Hearing
• Two New Judges Appointed to Trademark Trial and Appeal Board
• TTAB Posts January 2020 Hearing Schedule

Text Copyright John L. Welch 2020.