TTABlog Quarterly Index: October - December 2021

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Section 2(a) - Deceptiveness:

• TTAB Affirms Section 2(a) Deceptiveness Refusal of SMART SUTURE for Bandages

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

• Precedential No. 31: TTAB Affirms Section 2(a) Refusal of "NATO" for Tents, for Falsely Suggesting a Connection With ... Guess What?

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Are Hockey Sticks Related to Sports Gloves Under Section 2(d)? [Yes]
• Precedential No. 35: TTAB Grants MIRAGE BRANDS Cancellation Petition Due To Likelihood of Reverse Confusion
• On Remand from the CAFC, TTAB Denies Petition for Cancellation of "NAKED" Registration for Condoms
• TTABlog Test: Three Recent Section 2(d) Inter Partes Cases - How Did They Come Out?
• TTABlog Test: Are Glass Ornaments Related to Dried Flower Arrangements Under Section 2(d)? [Yes]
• TTABlog Test: How Did These Three Section 2(d) Oppositions Come Out?
• TTABlog Test: Is "SAMSUNG WIZ" for Smartphones Confusable with "THE WIZ" for Consumer Electronics Retail Services? [Yes]
• TTABlog Test: Are Dietary Supplements Related to Skincare Products Under Section 2(d)? [Yes]
• TTABlog Test: How Did These Recent Section 2(d) Appeals Turn Out?
• Crowded Field of Third-Party Registrations and Uses Leads to TTAB Reversal of "MATCH STUDIO" Over "MATCH" for Clothing
• Licensee's Prior Common Law Use Established Priority for "SNORE MD" Mark
• TTABlog Test: Is "BEDLAM VODKA & Design" for Vodka Confusable With "BEDLAM! & Design" for Beer? [Yes]
• TTABlog Test: Which of These Three Section 2(d) Oppositions Was Dismissed?
• TTABlog Test: Is "ICY (Stylized)" Confusable With "ICEE" for Clothing? [No]
• TTABlog Test: How Did These Recent Section 2(d) Appeals Turn Out?
• TTABlog Test: Which of These Three Section 2(d) Refusals Was Reversed?

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

• TTABlog Test: Is ZERO MEAT Merely Descriptive of Animal, Fish, and Poultry Certification Services? [Yes]
• TTABlog Test: Is "GOAT GREATEST OF ALL TIME" Merely Descriptive of Vodka? [Yes]
  
• WYHA? TTAB Finds "5 DAY FASTING DIET" Merely Descriptive of Nutritionally Balanced Prepared Meals [Yes]
• Precedential No. 30: TTAB Reverses Descriptiveness Refusal of TAVERNA COSTERA, Declining to Apply Doctrine of Foreign Equivalents
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Is "VOTESAPP" Merely Descriptive of a Social Networking App? [No]
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

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

• Precedential No. 27: TTABlog Test: Is "REPUBLIC OF LONDON" Primarily Geographically Deceptively Misdescriptive of Clothing? [No]

> Section 2(f) - Acquired Distinctiveness:

• Precedential No. 32: Color "Cream" for Guitar Pickups Lacks Acquired Distinctiveness, Says TTAB

Fraud:

• Precedential No. 24: TTAB Rules that Reckless Disregard for the Truth Is Sufficient for Proving Fraud

Genericness:

• TTAB Affirms Genericness Refusal of "LETTERS & NUMBERS" for . . . . Guess What?
• TTABlog Test: Is "SPECTACLES" Generic for Computer Hardware and Peripherals Wearable as Glasses?

Lack of Bona Fide Intent:

• Precedential No. 33: "LOCH MOOSE MONSTER" Fends Off Monster Energy's Lack-of-Bona-Fide-Intent Summary Judgment Motion

Nonuse/Specimen of Use:

• USPTO Issues Examination Guide 1-21: Expungement and Reexamination Proceedings Under the Trademark Modernization Act of 2020
• Precedential No. 34: TTAB Affirms Nonuse Refusal - Service Mark Use Requires Rendering of the Services, Not Just Preparation
• TTAB Affirms Refusal of "MADE FOR MORE" for Employee Recruitment: Not Rendered for the Benefit of Others
• Precedential No. 29: TTAB Affirms Refusal of "DRINK MORE BEER" For Bottle Caps: Not Used as a Source Indicator
• Precedential No. 28: TTAB Sustains Opposition to "I AM THE MARS GENERATION" for Licensing Services on Ground of Nonuse
• TTAB Reverses Refusal of SPEED EZ for Cleaning Brushes, Finding Specimen of Use Acceptable

Procedural Issues/discovery:

• TTAB Bifurcates "RAPUNZEL" Doll Opposition; Will Re-Visit "Standing" Issue Before Considering Merits of Professor Curtin's Claims
• Precedential No. 26: Claim Preclusion Inapplicable in Concurrent Use Proceeding After Cancellation or Opposition Proceeding
• Precedential No. 25: TTAB Rejects Proposed Modification of Standard Protective Order, Refuses to Apply EU Privacy Regulation

Recommended Reading:

• Recommended Reading: The Trademark Reporter, November-December 2021 Issue
• Recommended Reading: Germain and Sitler, "The Constitution Commandeth: Thou Shalt Not Protect the Same Subject Matter Under Design Patent and Trade Dress Laws"
• Recommended Reading: "Trademark Injury in Law and Fact: A Standing Defense to Modern Infringement"
• Ted Davis: 2021 Annual Review of U.S. Federal Case Law and TTAB Developments
• Holiday Reading: The Trademark Modernization Act of 2020 and Newly-Issued Implementing Regulations
• Recommended Reading: The Trademark Reporter, September-October 2021 Issue

CAFC Rulings:

• CAFC Affirms TTAB's Dismissal of SKY CINEMAS Opposition: Not Confusable with SKY NEWS for News Reporting Services
• CAFC Affirms TTAB: "BF-7" Registration for Nutritional Supplements Invalid Due to Non-Ownership
• CAFC Reverses TTAB's "MONEY MART" Decision Due to Error in Assessing Priority
• CAFC Again Remands GALPERTI Case to TTAB Due To Legal Errors in Assessing Falsity of Claim of Acquired Distinctiveness
• CAFC Largely Affirms TTAB's "BROOKLYN BREW SHOP" Decision Finding that Laches Barred Brooklyn Brewery's Section 2(d) Claims
• CAFC Vacates andRemands TTAB's IBKÜL Decision: The KÜHL Registration It Relied On Was Cancelled
• CAFC Upholds TTAB: GM's "SUPER CRUISE" Driving System Not Related to "SUPERCRUISE" Computer Components for Section 2(d) Purposes

Other:

• TTAB Posts January 2022 (Video) Final Hearing Schedule
• TTABlog Test: How Well Do You Know Your TTAB "Factors"?
• TTAB Posts December 2021 (Video) Hearing Schedule
• USPTO Issues Regulations Implementing the Trademark Modernization Act of 2020 (TMA)
• New Nonuse Provisions of Trademark Modernization Act May Significantly Impact Non-US Trademark Owners
• TTAB Posts November 2021 (Video) Hearing Schedule
• District Court Finds Lack of Personal Jurisdiction Over Defendant in TTAB Appeal, Transfers Case Rather Than Dismissing It
• Three Recent TTAB Inter Partes Decisions Among the End-of-Fiscal-Year Flurry
• TTABlog Quarterly Index: July - September 2021

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Text Copyright John L. Welch 2021.