TTABlog Quarterly Index: July - September 2023

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Section 2(a) - Deceptiveness:

• TTAB Deems "THE OFFICIAL WEBSITE OF JEKYLL ISLAND" Deceptive for Promoting Tourism and Recreation

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Are Mugs, Pastries, and Coffee Shops Related to Tote Bags and Shirts for Section 2(d) Purposes?
• TTABlog Test: Is "DEATH FROM ABOVE" Confusable With "HUNT FROM ABOVE" for Hunting Stands?
• Precedential No. 27: TTAB Renders Split Decision in Appeal From Section 2(d) Refusal of IMPACT for Various Healthcare Services
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTABlog Test: Which of These Section 2(d) Refusals Was/Were Reversed?
• MAD MONSTER PARTY for Horror and Pop Culture Conventions and Magazines Not Confusable with MONSTER ENERGY, Says TTAB
• TTABlog Test: How Did These Three Appeals from Section 2(d) Refusals Turn Out?

• "ICE MONSTER" for Electronic Cigarette Liquid Not Confusable With MONSTER ENERGY, Says TTAB
• "DARK DECEPTION: MONSTERS & MORTALS" for Game Software Not Confusable with MONSTER ENERGY, Says TTAB
• TTABlog Test: Which of These Section 2(d) Refusals Was/Were Reversed?
• TTAB Sinks Nautica's Confusion and Dilution Claims Against NAUTICA for Motor Homes
• TTABlog Test: Which of these Section 2(d) Refusals Was/Were Reversed?
• TTABlog Test: Is "S!MPLY" for EVA FOOTWEAR Confusable With "SIMPLY" for Dresses, Jumpsuits, and Rompers? [Yes]
• BRAINY ACTS Not Confusable With BRAINY BABY for Children's Activity Books, Says TTAB
• TTABlog Test: Which of These Three Section 2(d) Oppositions Was/Were Dismissed?
• TTABLog Test: Is "SUNSET SUSHI & Design" Confusable with "BANSHOO SUSHI BAR & Design" for Restaurant Services? [No]

• TTABlog Test: How Did These Three Likelihood of Confusion Cases Come Out?
• TTABlog Test: Is MOSSY OAK Confusable with ROYAL OAK for Watches? [Yes]
• TTABlog Test: Is "EL BANDIDO YANKEE" for Blue Agave Liquor (Tequila) Confusable with BANDIT for Alcoholic Beverages? [Yes]
• TTABlog Test: Are MERCADO LIBRE and MERCADO LIVRE Confusable With FREEMARKET for Online Marketplace Services? [No]
• TTABlog Test: Is "LOCH MOOSE MONSTER" Confusable With "MONSTER ENERGY" for Clothing, Bags, Beverageware? [No]
• TTABlog Test: Is BLACK BELT Confusable with KURO-OBI for Restaurant Services? [Yes]
• TTABlog Test: Is PLAYBOOK for Sports Trading Cards Confusable With PLAYBOOK for Sports Magazines? [No]
• TTABlog Test: How Did These Three Appeals from Section 2(d) Refusals Turn Out?

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

• TTABlog Test: Which of These Three Section 2(e)(1) Mere Descriptiveness Refusals Was/Were Reversed?
• TTABlog Test: How Did These Three "Colorful" Section 2(e)(1) Mere Descriptiveness Cases Turn Out?
• TTABlog Test: Is QONSENT Merely Descriptive of Consent Management Services? [Yes]

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

• TTAB Finds AUSTRALIAN BOTANICAL SOAP (Stylized) Geographically Descriptive of . . . SOAP
• TTABlog Test: Is "WHALEHEAD BREWERY" Primarily Geographically Descriptive of Beer? [No]
• TTAB Reverses Geographical Descriptiveness Refusal of CASINOLA for Game Software and Related Retail Services

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

• Not Precedential: TTABlog Test - Is WEALE Primarily Merely a Surname for Body Care Products? [Yes]
• Rejecting Urban Dictionary Definition, TTAB Affirms 2(e)(4) Surname Refusal of LAFOND for Jellies and Jams

Section 2(f) - Acquired Distinctiveness:

• Affirming Refusal to Register, TTAB Finds "WindyWings" Product Configuration Lacking in Acquired Distinctiveness

Failure-to-Function:

• A NEW KIND OF SODA Fails to Function as a Trademark for Beverages, Says TTAB
• Precedential No. 23: As Used on Applicant's Specimen, Depiction of Computer Game Character Fails to Function as a Trademark
• "WHEN THERE ARE NINE" Fails to Function as a Source Indicator for Scholarship Services, Says TTAB
• Precedential No. 22: TTAB Affirms "Single Work" Refusal of Book Title, Finding Translation Not a Separate Work
• TTAB Upholds Failure-to-Function Refusals of "15" and "377" for Air Intake Filters"

Genericness:

• TTABlog Test: Which of These Three Genericness Refusals Was/Were Reversed on Appeal?
• TTAB Rules That PARKING.COM Is Generic and Ineligible for Both the Principal and the Supplemental Register
• TTABlog Test: Is "SNKRS" Generic for or Merely Descriptive of Nike's Sneaker-Related Services?

Specimen of Use/Nonuse/Illegal Use:

• TTAB Affirms Rejection of Specimen (Slide Presentation) for Oil Drilling Equipment as "Mere Advertising"
• Precedential No. 20: Deeming Duracell's In-Store Sound Mark a Display Associated With the Goods, TTAB Reverses Specimen Refusal

Laches:

• Precedential No. 19: Laches Based on Expired Registration Saves EVOGUE from Part of VOGUE's Confusion and Dilution Claims

Discovery/Evidence/Procedure:

• Applying Contractual Estoppel, TTAB Grants Motion for Partial Summary Judgment in BYLT Oppositions
• Precedential No. 26: Listing of Application on ESTTA Cover Sheet Suffices for Claim of Common Law Rights in Opposition to Section 66(a) Application
• Precedential No. 25: TTAB Deems Grace Period Petition for Cancellation Moot When Registrant Failed to Renew
• Precedential No. 24: Claim for Violation of Section 10 "Anti-Assignment" Provision Is Time-Barred by Section 14
• Precedential No. 21: TTAB Rules That Sur-Sur-Rebuttal Expert Reports Are Never Permitted
• LEGO Attacker Hits Brick Wall: TTAB Denies Genericness Petitioner's Motion for Judgment or Other Sanctions

CAFC Decisions:

• CAFC Sends Another "FLEX" Decision Back to the Board to Re-Consider Strength-of-Mark Analysis

Recommended Reading:

• Recommended Reading: The Trademark Reporter, July-August 2023 Issue
• Recommended Reading: "FIFTY YEARS OF McCARTHY ON TRADEMARKS"
• Professor McCarthy: "Some Thoughts on the Supreme Court Jack Daniel's Case"
• Recommended Reading: The Trademark Reporter, May-June 2023 Issue

Other:

• TTAB Posts September 2023 Hearing Schedule
• USPTO Issues Examination Guide 3-23: "Examination Procedures for Reviewing Domicile Addresses"
• Current Roster of TTAB Administrative Trademark Judges (Corrected)
• TTAB Posts August 2023 Hearing Schedule
• TTAB Adds Three New Administrative Trademark Judges, One Departs

Text © John L. Welch 2023.