TTABlog Running Index: January - March 2022

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Section 2(a) - False Suggestion of a Connection

• TTAB Reverses Section 2(a) False Connection Refusal of SPACE COMMAND for Books, Clothing, and Toys

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Are These Two "MW" Design Marks Confusingly Similar for Metal Fabrication Services?
• Pro Se Intent-to-Use Applicant Wins TTAB Priority Battle in Section 2(d) Opposition to DRIPHOUSE CLOTHING & Design
• TTABlog Test: Are Water-Based Nonalcoholic Beverages Related to Beer for Likelihood-of-Confusion Purposes? [Yes]
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• Pro Se Applicant Bests Monster Energy in Section 2(d) and Dilution TTAB Battle
• TTABlog Test: Are "LE CHOCOLAT DES ILES" and "ISLAND CHOCOLATES" Confusable for Chocolate Candy? [Yes]
  
• TTABlog Test: Are Supplements and Cosmetics Related for Section 2(d) Purposes? [Yes]
  
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• Viacom Wins "DOUBLE DARE" Section 2(d) TTAB Battle, Survives Abandonment Attack
• TTABlog Test: How Did These Three Recent Section 2(d) Proceedings Come Out?
• TTABlog Test: How Did These Four Section 2(d) Appeals Turn Out?
• TTABlog Test: How Did These Four Section 2(d) Appeals Turn Out?
• TTABlog Test: Are Candy (Class 30) and Liquor (Class 33) Related Under Section 2(d)? [Yes]
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• TTABlog Test: How Did These Four Section 2(d) Appeals Turn Out?
• TTABlog Test: Is ROMA PIZZA for Restaurant Services Confusable with ROMA for Frozen Pizza? [No]
• TTABlog Test: How Did These Three Section 2(d) Appeals Turn Out?
• TTABlog Test: How Did These Four Section 2(d) Appeals Turn Out?
• Additional "GARANIMALS" Evidence Yields District Court Reversal Of TTAB's "MANIMAL" Opposition Dismissal
• TTABlog Test: Is "CRC BAKERY" Confusable with the "CRC" Kosher Certification Mark, Both for Food Products?
• TTABlog Test: Is SCOOPERFEST Confusable With SCOOPER BOWL for Ice Cream Festivals?
• TTABlog Test: Is PISSTERINE Confusable with LISTERINE for Mouthwash?

• TTABlog Test: Is FLOREO (Spanish) Confusable With FLOURISH HOMES & Design for Real Estate Services?
• In 2021, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTAB Sustains Section 2(d) Opposition to ALZHEIMER'S NEW JERSEY WALK TO FIGHT ALZHEIMER'S & Design for Charitable Fundraising

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

• TTABlog Test: Which of These Three Disclaimer Requirements Was/Were Reversed?
• TTAB Finds LUKUMADES (Stylized) Merely Descriptive of Donuts and Food Services, But Not Jams and Jellies
• In 2021, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals?

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

• TTABlog Test: Is "LUCKENBACH" Primarily Merely a Surname for Whiskey? [No]
• Precedential No. 5: TTABlog Test - Is ATWELL SUITES Primarily Merely a Surname for Hotel Services? [Yes]

Section 2(e)(5) - Functionality:

• TTAB Affirms Section 2(e)(5) Functionality Refusal of Serrated Knife Blade
• Precedential No. 4: TTAB Finds Pastel Colors for Disposable Pipette Tips Both Nondistinctive and Functional

Section 2(f) - Acquired Distinctiveness:

• Precedential No. 4: TTAB Finds Pastel Colors for Disposable Pipette Tips Both Nondistinctive and Functional
• TTAB Affirms Refusal to Register Handbag Shape: Generic and (Alternatively) Lacking Acquired Distinctiveness

Abandonment:

• TTAB Denies Cancellation Petition for Failure to Prove Nonuse or Abandonment

Dilution-by-blurring:

• Precedential No. 1: TTAB Sustains Spotify's Dilution-By-Blurring Claim Against POTIFY for Clothing and Marijuana-Related Software and Services

Failure-to-Function:

• Precedential No. 6: Title of Single Work "STRONGHOLDS & FOLLOWERS" Fails to Function as a Trademark, Says TTAB
• "MADE FOR YOU LAB-GROWN DIAMONDS" Fails to Function as a Trademark For Diamonds, Says TTAB
• "GET ORDAINED" Fails to Function as a Source Indicator for Ordination-Related Services, Says TTAB

Genericness:

• TTAB Affirms Refusal to Register Handbag Shape: Generic and (Alternatively) Lacking Acquired Distinctiveness
• E.D. Va. District Court Upholds TTAB Decision Finding "GRUYERE" Generic for Cheese

Nonuse/Unlawful Use/Specimen of Use:

• TTABlog Test: Is this MUTILATION? USPTO Says "THE VILLE" Specimen of Use Did not Match the Application Drawing
• TTAB Affirms Refusal of "WEGE": Specimens Fail to Show Use of Mark for Beer
• TTAB Affirms Unlawful Use Refusal of "PUREXXXCBD" for Plant Extracts and Supplements Containing CBD
• TTAB Affirms "Unlawful Use" Refusal of HARBOR HEMP COMPANY for Supplements "Containing Legally Produced Industrial Hemp Extract"

Procedural Issues/Discovery:

• Precedential No. 7: TTAB Sanctions Party for Flagrant Violation of the Standard Protective Order
• TTAB Default Judgment Has No Collateral Estoppel Effect, Says E.D. California District Court
• Precedential No. 3: TTAB Grants Motion to Supplement Notice of Opposition to Add Post-Filing Trademark Applications
• Precedential No. 2: TTAB Rejects Summary Judgment Motion Filed Three Days Too Late

Recommended Reading:

• Recommended Reading: "Navigating the Identity Thicket: Trademark's Lost Theory of Theory of Personality, The Right of Publicity, and Preemption"
• Recommended Reading: Prof. Robert A. Mikos, "Unauthorized and Unwise: The Lawful Use Requirement in Trademark Law"
• The Trademark Reporter's 2022 "Annual Review of U.S. Trademark Cases"
• USPTO 2021 Performance and Accountability Report
• Anne Gilson LaLonde Agrees with Professor McCarthy's Criticism of CAFC's Brooklyn Brewery Decision and Adds Her Own
• Professor McCarthy Criticizes CAFC's Stance on Article III Standing in Brooklyn Brewery Case

CAFC Rulings:

• CAFC Upholds TTAB: TEEN TINKER BELL Confusable With Disney's TINKER BELL for Dolls
• CAFC Deems Section 2(c) Unconstitional As-Applied in "TRUMP TOO SMALL" Refusal to Register
• CAFC Affirms TTAB: ETHIK CLOTHING CO. & Design Confusable With ETHIKA for Clothing
• CAFC Affirms TTAB: ".SUCKS" (Stylized) Fails to Function as a Source Indicator for Domain Registry Operator Services
• CAFC Denies Rehearing, Slightly Modifies Brooklyn Brewery Opinion; Professor McCarthy Not Impressed

Other:

• TTAB Posts March 2022 (Video) Hearing Schedule
• TTAB Posts February 2022 (Video) Final Hearing Schedule
• The Top Ten TTAB Decisions of 2021 (Part II)
• The Top Ten TTAB Decisions of 2021 (Part I)

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Text Copyright John L. Welch 2022.