TTABlog Quarterly Index: October - December 2023

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Section 2(d) - Likelihood of Confusion:

• TTAB Dismisses Opposition: Applicant Proved Priority Through Assignment of Common Law Mark After Proceeding Commenced
• Declining to Apply the Doctrine of Foreign Equivalents, TTAB Reverses Section 2(d) Refusal of "EVERYDAY HEROES" Over "HEROES COTIDIANOS"
• TTABlog Test: Are These Two Bird Design Marks Confusingly Similar for Clothing? [Yes]

• TTABlog Test: Are Candy and Nuts Related for Section 2(d) Purposes? [Yes]
• Lack of Actual Actual Confusion Leads to Dismissal of FICO Challenge to FIDO for Fraud Prevention Software and Services
• TTABlog Test: Are these Two Design Marks Confusable (for Rice)?
• Precedential No. 34: TTAB Dismisses Monster Energy's Section 2(d) Claim On Summary Judgment Due to DIssimilarity of Design Marks
• Which of These Three Section 2(d) Refusals Was/Were Reversed?
• TTABlog Test: Is METAL HEADS for Headwear Confusable With METAL for Jeans and Shirts? [No]

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

• REALITY COMPOSER and REALITY CONVERTER Merely Descriptive of Augmented Reality Software, Says TTAB
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• Cancellation Attack on THE EDUCATION LAWYERS Flunks Genericness and Mere Descriptiveness Tests
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

Section 2(e)(1) - Deceptive Misdescriptiveness:

• TTAB Finds "4:20" Deceptively Misdescriptive of Tobacco and Cigarette-Related Products Not Containing or Used With Cannabis

Section 2(e)(5) - Functionality:

• TTAB Orders Cancellation of Registration for Configuration of Glass-Breaking Device on the Ground of Section 2(e)(5) Functionality

Section 2(f) - Acquired Distinctivenss:

• TTAB Finds "GIGANTOSAURUS" Descriptive of Cartoon Dissemination Services, but Registrable Under Section 2(f)

Abandonment:

• Precedential No. 31: De Minimis Sales of Amplifiers Over Six-Year Period Leads to Cancellation of "CS" Registration for Abandonment

Bona Fide Intent:

• Lack of Bona Fide Intent Sinks Application to Register JUICY FRUIT & Design for T-shirts

Dilution:

• VOGUE VEGAN for Cosmetics Dilutes Famous VOGUE Marks, Says TTAB

Failure-to-Function/Specimen of Use:

• TTAB Affirms Refusal of CONCRETE PORN for Advertising Services Due to Inadequate Specimen of Use
• TTABlog Test: Do You Recognize Trademark Mutilation When You See It?

• KEEP AMERICA GREAT! Fails to Function as a Trademark for Ornamental Novelty Pins, Says TTAB
• Precedential No. 33: TTAB Reverses Failure-to-Function Refusal of "FOLLOW THE LEADER" for Credit Card and Travel Services

Genericness:

• TTAB Finds "STREAM THEATERS" Generic For .... Guess What?
• Cancellation Attack on THE EDUCATION LAWYERS Flunks Genericness and Mere Descriptiveness Tests

Discovery/Evidence/Procedure:

• Precedential No. 32: No Preclusive Effect in Cancellation Proceeding if Challenged Registration Survives Reexamination or Expungement
• TTAB Issues Protective Order Excluding Petitioner's Executive Director from Taking or Attending the Depositions of Two Witnesses, Due to Past Harassment
• Precedential No. 30: TTAB Grants Motion for Leave to Take Foreign Discovery Depositions by Videoconference

CAFC Decisions:

• CAFC Hears Oral Argument in In Re Chestek PLLC, the "Where Do You Sleep at Night?" Case
• CAFC Upholds TTAB's Judgment on the Pleadings Based on Dissimilarity of Marks in VERITÉ Opposition
• CAFC Sends Back TTAB's "GET ORDAINED" Decision: Board Ignored Its Own Policy Regarding Waiver of Unargued Claims
• CAFC Affirms TTAB's Dismissal of RANGER TREK Opposition: Not Confusable With TREK for Non-Bicycle Goods
• CAFC Affirms TTAB: "EVERYBODY VS. RACISM" Fails to Function as a Source Indicator for Bags, Clothing, and Public Interest Services

Recommended Reading:

• Recommended Reading: The Trademark Reporter, November-December 2023 Issue
• Recommended Reading: "Welcome To The Land Of Trademark Cancellation -- Where Not All Fraud Is Created Equal"
• J. Michael Keyes: "Getting Your Teflon Survey to 'Stick' at the TTAB"
• Recommended Reading: The Trademark Reporter, September-October 2023 Issue

Other:

• TTAB Posts January 2024 Hearing Schedule
• TTAB Posts December 2023 Hearing Schedule
• And the INTA President's Award Goes to . . . Guess Who?
• TTABlog Test: How Well Do You Know Your TTAB Precedents?
• TTABlog Test: TTAB Rules in Three Recently Argued Ex Parte Appeals

Text © John L. Welch 2023.