TTABlog Quarterly Index: October - December 2022

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Section 2(a) - false suggestion of a connection

• Precedential No. 36: TTAB Sustains Section 2(c) Opposition to DANA DESIGN Due to Lack of Consent
• Updated TTABlog Collection of Section 2(a) False Connection Cases

Section 2(c) - consent of living individual

• Precedential No. 36: TTAB Sustains Section 2(c) Opposition to DANA DESIGN Due to Lack of Consent

Section 2(d) - likelihood of confusion:

• Precedential No. 37: TTAB Rejects DC Comics Opposition: No Likely Confusion or Dilution vis-a-vis Superman "S-Shield" Marks
• TTAB Finds Two "MAGIC CITY" Logos Confusable for Overlapping Clothing Items>/a>
• "ENDURE" for Fire-Resistant Fabrics Confusable WIth "ENDURE by Acend" & Design for Textile Fibers, Says TTAB
• WYHA? TTAB Affirms Section 2(d) Refusal of "NATURES STAR HEMP" Over "NATURES-STAR & Design" for Personal Care Products
• TTAB Dismisses STATUS SYMBOL Section 2(d) Opposition: Failure to Prove Priority
• TTABlog Test: Which One of These Three Section 2(d) Refusals Was Reversed?
• TTAB Sustains Wrangler's Section 2(d) Opposition to "W DENIM" Logo Mark for Denim Goods and Marketing Services
• TTABlog Test: Is "SMALL WINS" Confusable with "BIG WIN" for Candy? [Yes]
• TTABlog Test: Is CUSHION COMFORT for Footwear Confusable With DIAMOND CUSHION COMFORT for Socks? [No]
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• TTABlog Test: Is THREEGUN Confusable With THERAGUN For Massage Apparatus? [Yes]
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?

• TTAB Sustains DUTCH BROS. Section 2(d) Opposition to DUTCH4LIFE Marks for Energy Drinks and Alcoholic Beverages
• TTABlog Test: How Did These Three Recent Section 2(d) Appeals Turn Out?
• Precedential No. 31: "SMOKES & Design" for Cannabis Cigarettes Not Confusable with "SMOK" for Electronic Cigarettes, Says TTAB
• TTAB Reverses Section 2(d) Refusal of EPIGENE Due to Failure to Prove Relatedness of Gene Databases to Diagnostic Preparations and Apparatus
• WYHA? TTAB Affirms Section 2(d) Refusal of "B & Design" in View of Identical Mark, Both for Headphones
• APEX 3D for Ankle Implant Materials and Instruments Confusable With APEX for Bone Pins and Screws, Says TTAB
• TTAB Finds "VIVA MAUDE" for Television Comedy Production Services Confusable with "MAUDE" for a Continuing Comedy Television Series
• Although "WIRED" Magazine Lacks Dilution Fame, TTAB Sustains Section 2(d) Claim Against WIRED for Clothing, but Not For Fitness Services
• TTABlog Test: How Did These Three Section 2(d) Oppositions Turn Out?

Section 2(e)(1) - mere descriptiveness:

• TTAB Affirms Mere Descriptiveness Refusal of HUMAN DATA MARKETPLACE for Online Sale of Data Assets
• TTABlog Test: Is BEST KNIGHT GAMES Merely Descriptive of Board Games? [Yes]
• TTABlog Test: Is "SMART TECH" Merely Descriptive of RFID-Controlled Model Trains? [Yes]
• TTABlog Test: Is "LICKMAT" Merely Descriptive of Pet Feeding Receptacles and Pet Amusement Mats? [Yes]
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

Section 2(e)(2) - primarily geographically descriptive:

• TTABlog Test: Is CALIHEMP Geographically Descriptive of Skin Care Products? [Yes]
• TTABlog Test: Is CHIPPEWA VALLEY FARMS Geographically Descriptive of Canned Vegetables? [Yes]

Section 2(e)(4) - primarily merely a surname:

• TTABlog Test: Is "BORRELLO'S" Primarily Merely a Surname for Cell Phone Accessories?

Section 2(e)(5) - functionality:

• E.D. Va. Affirms TTAB: Timberland Boot Design is Functional and Lacks Acquired Distinctiveness
• TTAB Grants Petitions for Cancellation of Registrations for the Color Pink for Hip Joint Implants on the Ground of Functionality

Section 2(f) - acquired distinctiveness:

• E.D. Va. Affirms TTAB: Timberland Boot Design is Functional and Lacks Acquired Distinctiveness
• TTAB Affirms Refusal to Register the Color Orange for Tool Accessory Trays Due to Lack of Acquired Distinctiveness

Lack of Bona Fide Intent

• Finding Lack of Bona Fide Intent, TTAB Sustains Opposition to NEW YORKER FINE LAGER BEER & Design for Beer-Based Cocktails

Dilution:

• Precedential No. 37: TTAB Rejects DC Comics Opposition: No Likely Confusion or Dilution vis-a-vis Superman "S-Shield" Marks
• "SoniStream" For Music-Related Software Dilutes Famous "SONY" Mark, Says TTAB
• Although "WIRED" Magazine Lacks Dilution Fame, TTAB Sustains Section 2(d) Claim Against WIRED for Clothing, but Not For Fitness Services

Failure-to-Function:

• "TACO TUESDAY" Fails to Function as a Trademark for Beer, Says TTAB
• Precedential No. 34: "IFG" Fails to Function as a Trademark For Live Plants Because It's a Varietal Name
• Precedential No. 33: #LAW Fails to Function as a Source Indicator for Legal Referral Services, Says TTAB

Fraud:

• On Second Remand from CAFC, TTAB Denies Fraud Claim in GALPERTI Cancellation Proceeding

Genericness:

• TTABlog Test: How Did These Three Genericness Appeals Turn Out?

Nonuse:

• Precedential No. 29: Finding Applicant's Period of Nonuse Excusable, TTAB Dismisses EUCALIN Opposition for Failure to Prove Priority

Ownership:

• TTAB Decides Ownership Dispute Over THE COWBOY ARMS HOTEL AND RECORDING SPA for Recording Studio Service

Use in Commerce/Drawing/Specimen of Use:

• TTAB Reverses Another Specimen Refusal: On Fourth Try, Webpage Specimen Suffices for CAPSIMOPS for Downloadable Software
• TTAB Reverses "10HUNDRED" Specimen Refusal, Finding that Legal Services Include Providing Legal Information
• Screen Shot Suffices as Specimen of Use for Downloadable Software, Says TTAB

Discovery/Evidence/Procedure:

• TTAB Affirms Trifusal of POSITIVE ONLINE PRESENCE for Marketing Consulting Services
• Precedential No. 35: In a Real Snoozer, TTAB Rules on Several Discovery-Related Issues
• USPTO Refuses to Institute Reexamination of Registration, But Allows Petitioner to Re-file
• Precedential No. 32: In an "Unusual Situation," TTAB Opts to Consider Summary Judgment Motion on Unpleaded Claim
• Precedential No. 30: Finding No Error, TTAB Rejects Reconsideration Request Re "DEEP OPTO PROFILING" Descriptiveness Affirmance

Recommended Reading:

• Recommended Reading: The Trademark Reporter, November-December 2022 Issue
• Recommended Reading: The Trademark Reporter, September-October 2022 Issue

Other:

• TTAB Posts January 2023 Hearing Schedule
• TTAB Posts December 2022 Hearing Schedule
• TTAB Posts November 2022 Hearing Schedule
• C.D. Cal. Dismisses "GREEN GOO" Infringement Action Due to Incontestability of Defendant's Right to Use the Mark
• TTAB Posts October 2022 Hearing Schedule: Nine Virtual and Three In-Person Hearings

Text ©John L. Welch 2023.