TTAB Quarterly Index: January - March 2024

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

• Despite Applicant's Bad Intent, TTAB Dismisses Oppositions to EVSFOOD for Beverages

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is OTTO'S for Soda Pops Confusable With OTTO'S OATMEAL STOUT for Beer? [Yes]
• TTABlog Test: Are Pizza and Bakery Goods Related Under Section 2(d)? [Yes]
• TTABlog Test: Are These Two Stylized "X" Marks Confusable for Footwear? [Yes]
• TTABlog Test: Are Gummy Vitamins Related to Personal Care Products Under Section 2(d)? [yes]
• TTABlog Test: Is VEUVE OLIVIER for Sparkling Wines Confusable with VEUVE CLICQUOT for Champagne? [Yes]
• Despite Applicant's Bad Intent, TTAB Dismisses Oppositions to EVSFOOD for Beverages
• Stock Ticker Symbol HIG Confusable with H.I.G. for Financial Services, Says TTAB
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTABlog Test: Which of These Three Section 2(d) Oppositions Was/Were Dismissed?
• TTABlog Test: Which of These Three Recent 2(d) Appeals Was/Were Reversed?
• First DuPont Factor Brings TTAB Dismissal of Monster Energy's Opposition to LAIKABEAST & Design for Mugs and Plates
• TTABlog Test: Is TABLEAU for Wine Confusable with TABLEAU for Bar Services? [Yes]
• TTABlog Test: Are Nail Polish Strengtheners Related to Dietary Supplements? [Yes]
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTAB Sustains eBay's Section 2(d) Opposition to AFREBAY & Design for Advertising and Payment Processing Services
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTABlog Test: Is UNFORGETTABLE TRIPS Confusable With UNFORGETTABLE HONEYMOONS for Travel Agency Services? [No]
• TTABlog Test: Is CHILL for Hard Seltzer Confusable with CHILL for Beer? [Yes]
• TTABlog Test: Is CROSSFIRST BANK & Circle Design Confusable with Banc of California's RIng Design?
• In 2023, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• Precedential No. 1: TTAB Orders Cancellation of CAPTAIN CANNABIS Registration for Comic Books: Petitioner Proved Priority By Use Analogous to Trademark Use

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

• Precedential No. 4: TTAB Finds "ZPILE" Merely Descriptive of Metal Sheet Piles
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: Is MOTO CLUB INTERNATIONAL Merely Descriptive of Bumper Stickers and T-Shirts? [No]
• TTABlog Test: Is FOOTWARE Merely Descriptive of Footwear with Integrated Technology? [Yes]
• TTABlog Test: Is MENSTRUATION CRUSTACEON Merely Descriptive of Microwavable Heating Pads?
• TTABlog Test: Is "UNRIVALED LUXURY" Merely Descriptive of Cruise Ship Services?
• In 2023, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals?

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

• CUESZ Is Deceptively Misdescriptive of Cue-less Fitness Training Services, Says TTAB [Yes]

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

• TTABlog Test: Is CANTU for Vehicle Tires Primarily Merely a Surname? [Yes]

Section 2(e)(5) - Functionality:

• TTAB Affirms Section 2(e)(5) Functionality Refusal of Holster Configuration

Section 2(f) - Acquired Distinctivenss:

• TTAB Affirms Refusal to Register Blue Bundle of Dental Floss Due to Lack of Acquired Distinctiveness
• Precedential No. 2: TTAB Affirms Refusal to Register Proposed Multi-Color Mark for Breakfast Cereals

Abandonment:

• TTAB Denies Bertini's Petition for Cancellation of APPLE Registration Due to Failure of Proof of Abandonment

Failure-to-Function/Specimen of Use:

• WE’RE HERE TO HELP WITH YOUR LEGAL NEEDS! Fails to Function as a Source Indicator for . . . Guess What?
• TTAB Affirms Refusal to Register Blue Bundle of Dental Floss Due to Lack of Acquired Distinctiveness
• Precedential No. 2: TTAB Affirms Refusal to Register Proposed Multi-Color Mark for Breakfast Cereals

Nonownership:

• In a Unanimous Decision, TTAB Dismisses SPLIT DECISION Opposition: Billy Stott Failed to Prove Ownership of the Band Name
• TTAB Orders Cancellation of FREEDOM PARTY Registration: Application Was Void Ab Initio Due to Nonownership

Nonuse:

• Finding MRS. COLORADO Use-less, TTAB Grants Petition for Cancellation
• Trade Name Use is not Trademark Use, Says TTAB
• Three Recent TTAB Oppositions Sustained on the Ground of Non-use

Discovery/Evidence/Procedure:

• TTAB Dismisses AMERICAN APPAREL Cancellation Petition: Claims Should Have Been Raised as Counterclaims in Pending Opposition
• TTAB Denies Request for Reconsideration of TORPEDO JUICE Cancellation Denial
• Despite Respondent's Bogus Legal Citations, TTAB Denies BRONX NATIVE Cancellation Petition on Contractual Estoppel Ground
• District Court Refuses to Enforce Subpoena for TTAB Case: Must Be Issued by the Court, Contrary to TBMP
• Precedential No. 3: TTAB Rules that a Cancellation Petition Filed During Grace Period is Mooted If Section 8 Declaration Is Not Filed
• Precedential No. 35: TTAB Grants Motion to Sever Permissive Counterclaim from Cancellation Proceeding

CAFC Decisions:

• CAFC Vacates and Remands BABIES' MAGIC TEA Cancellation Denial: TTAB Misapplied the DuPont Factors
• CAFC Affirms TTAB: USPTO'S Domicile Address Requirement for Applicants Was Not Improperly Promulgated
• At USPTO's Request, CAFC Re-designates as Precedential Its EVERYBODY VS RACISM Failure-to-Function Affirmance
• CAFC Slighlty Modifies Chutter Fraud Opinion Per USPTO Request

Recommended Reading:

• The Trademark Reporter's 2024 "Annual Review" of U.S. Trademark Cases
• Guest Article by Michael Hall: "A Few Recommendations for the Office and Those Practicing Before the Office"
• Recommended Reading: Michael P. Goodyear, "Queer Trademarks."
• J. Michael Keyes: "TTAB Goes "Bamm-Bamm" To Fruity Pebbles' Consumer Surveys"

Other:

• TTAB Posts April 2024 Hearing Schedule
• USPTO Proposes Trademark Fee Hike for FY 2025
• TTAB Posts March 2024 Hearing Schedule
• Another TTAB Footnote on Legal Citations Says USPQ Still Acceptable
• TTAB is Considering Dropping Citations to USPQ in favor of Westlaw
• TTAB Posts February 2024 Hearing Schedule
• In 2023, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness/Disclaimer Refusals?
• In 2023, What Was The Rate of TTAB Affirmance of Section 2(d) Refusals to Register?
• The Top Ten TTAB Decisions of 2023 (Part II)
• Precedential No. 35: TTAB Grants Motion to Sever Permissive Counterclaim from Cancellation Proceeding
• The TTAB Issued 35 Precedential Opinions in 2023

Text © John L. Welch 2024.