TTABlog Quarterly Index: July - September 2021

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Section 2(a) - False Suggestion of a Connection:

• TTAB Denies Fraud Claim But Grants Petition to Cancel SEYIDOGLU Registration on Section 2(a) False Connection Ground

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?
• 13th DuPont Factor (Prior Registration) Saves AXION From Section 2(d) Refusal Over AXEON LABS for Clothing
• Third-Party Uses and Registrations Show Weakness of Cited Mark ASCENT; TTAB Reverses 2(d) Refusal of ASCENT FEDERAL CREDIT UNION
• TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?
• TTABlog Test: Is MICHELLE MAE for Wholesale Clothing Confusable With MICHELLE MAY NEW YORK for Jewelry? [Yes]
  
• "NAMX" Not Confusable with "NYMEX" for Electronic Financial Services, Says TTAB
• TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?
• TTABlog Test: Are These Two Alligator Designs Confusingly Similar for Clothing? [Yes]
• TTABlog Test: Is "R RADIAL YOKOHAMA G.T. SPECIAL & Design" Confusable With RADIALWEAR for Clothing? [Yes]
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?
• TTAB Dismisses HUDL Opposition to HUDL BREWING COMPANY: Proof of Dilution Fame Fails and Goods/Services Too Different for Section 2(d)
• TTABlog Test: Three Recent Section 2(d) Appeals - How Did They Come Out?
• TTABlog Test: Is "GENRESTORE" Confusable With "RESTOREGEN" for Dietary Supplements? [Yes]
  
• WYHA? TTAB Affirms Section 2(d) Refusal of "BRUNO AND THE HOOLIGANS" in view of "THE HOOLIGANS," Both For Live Musical Entertainment
• TTABlog Test: Are Protective Clothing and Sporting Gear Related to Underwear and Loungewear for Section 2(d) Purposes? [No]
• TTAB Dismisses TREK Bicycle's Opposition to RANGER TREK for Overlapping, Non-Bicycle Goods

• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?
• TTABlog Test: Is KING'S RANSOM for Scotch Whiskey Sold by Invitation Confusable With the Identical Mark for Wines? [No]
  
• TTABlog Test: Is "ONE GREEN" Confusable With "8GREENS" for Nutritional Supplements? [Yes]
• Two Prior Registrations and DuPont Factor 13 Save "ELDORADO RESORT CASINO RENO" From a Section 2(d) Refusal
• TTABlog Test: Which of These Three Section 2(d) Refusals Was/Were Reversed?

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

• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Is FAST DRINK Merely Descriptive of Nutritional Meal Replacement Drinks? [No]
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Must AQUACHAR be Disclaimed in AQUACHAR & Design for Water Filtration Products? [No]
  
• TTABlog Test: Must "BARK" Be Disclaimed in "BIG BARK" for Tree Care Services? [No]

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

• TTABlog Test: Is PARMA COFFEE Primarily Geographically Descriptive of Coffee and Other Food Items? [Yes]
• Updated TTAB Collection of Section 2(e)(2) "Primarily Geographically Descriptive" Cases
• TTABlog Test: Is "BEAUTY SG" Primarily Geographically Descriptive of Cosmetics and Supplements?

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

• Updated TTABlog Collection of Section 2(e)(3) "Primarily Geographically Deceptively Misdescriptive" Cases

Section 2(e)(5) - Functionality:

• TTAB Affirms Section 2(e)(5) Functionality Refusal of Mark Consisting of the Transparency of Plastic Food Packaging Trays
• TTAB Affirms Section 2(e)(5) Functionality Refusal of Iconic Eames Chair Design

Abandonment/Nonuse:

• E.D. Va. Upholds TTAB Dismissal of SHUSTOV Cancellation Petition: Registrant Overcame Prima Facie Case of Abandonment
• TTAB Denies Petition to Cancel "ONEPACKET" Registration: Failure to Prove Nonuse

Dilution:

• TTAB Dismisses HUDL Opposition to HUDL BREWING COMPANY: Proof of Dilution Fame Fails and Goods/Services Too Different for Section 2(d)

Fraud:

• Another Fraud Claim Fails to Clear the "Deceptive Intent" Hurdle
• Precedential No. 21: TTAB Upholds Fraud Claim Against Distributor of Massage Chairs Who Registered Manufacturer's Mark FUJIIRYOKI
• TTAB Denies Fraud Claim But Grants Petition to Cancel SEYIDOGLU Registration on Section 2(a) False Connection Ground

Genericness:

• TTABlog Test: Is "MULTI-GRIP" Generic for Exercise Stretch Bands? [Yes]
• TTABlog Test: Is "THE TAILORY" Generic for Custom Tailoring or Dressmaking? [No]
• TTAB Affirms Genericness Refusal of CRANIAL/STRUCTURAL for Medical Massage Services, Rejecting "Mixed Evidence" Argument

Unlawful Use:

• TTAB Affirms Unlawul Use Refusal of ITU Application for "FOR JOY" for CBD-Containing Tea

Section 14(3) Misuse of a Registration:

• Precedential No. 18: TTAB Orders Cancellation of Two Registrations Under Section 14(3) Due to Registrant's Misrepresentation of Source

Procedural Issues:

• Third Circuit Rules That TTAB Decision Has No Claim Preclusive Effect on "THE EBONYS" Section 43(a) Claim
• Precedential No. 23: TTAB Refuses to Allow Withdrawal of Express Abandonment of Opposed Application
• Precedential No. 22: TTAB Allows Withdrawal of Cancellation Petition Prior to Answer, Without Prejudice, Despite Federal Court Ruling Adverse to Petitioner
• Precedential No. 20: Claim Preclusion and Issue Preclusion Inapplicable in VALVOLINE Opposition to MAXVOLINE, Says TTAB
• Precedential No. 19: Does Eastern Standard Time Control the Timeliness of Discovery Requests? TTAB Says No
• TTAB Denies Motion for Relief From Default Judgment Issued in December 2018
• GOYA Fails to Submit Evidence On Time, TTAB Dismisses Opposition to GOLA FOODS for Health Food Supplements
• District Court Grants Stay of Recently-Filed Infringement Suit in Favor of TTAB Proceeding Nearing Completion
• TTAB Gives District Court Judgment Only Partial Res Judicata Effect, Strikes 8 of 10 Affirmative Defenses in EASYLING Cancellation Proceeding

CAFC Rulings:

• CAFC Rejects Constitutionality Challenge to Appointment of Administrative Trademark Judges, Affirms TTAB's "SCHIEDMAYER" False Association Decision
• CAFC Rules that the USPTO is not Entitled to Expert Witness Fees in a Civil Action for Review of a PTAB Decision. What about the TTAB?

Recommended Reading:

• Trademark Reporter: July–August 2021 (Vol. 111 No. 4) issue
• Ted Davis Article: "Recent Developments in Trademark and Unfair Competition Law"
• TTABlog Article: "Decisions of the Federal Circuit and the Trademark Trial and Appeal Board on Registrability Issues July 2020 to June 2021"
• Recommended Reading: The Trademark Reporter, May-June 2021 Issue

Other:

• TTAB Posts October 2021 (Video) Hearing Schedule
• Martha B. Allard Appointed to Trademark Trial and Appeal Board
• TTAB Posts September 2021 (Video) Hearing Schedule
• "Advanced Practice Before the TTAB," IP Institute, USC Gould School of Law, September 22, 2021 (11:30 AM (PST))
• Belmora Files Petition for Writ of Cetiorari in Long-Running FLANAX Battle with Bayer
• What Firms/Lawyers Represent Opposed Applicants Most Frequently (2018-2021)?
• TTAB Posts August 2021 (Video) Hearing Schedule
• TTAB Posts July 2021 (Video) Oral Hearing Schedule

Text Copyright John L. Welch 2021.