TTABlog Quarterly Index: April - June 2024

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

• Precedential No. 11: TTAB Upholds 2(a) False Connection Refusal of LEATHERNECKS for Motorcycle Club Membership

Section 2(c) - Consent of Living Individual

• Supreme Court Upholds Constitutionality of the Trademark Act’s “Names Clause” in Affirming Refusal to Register TRUMP TOO SMALL

Section 2(d) - Likelihood of Confusion:

• TTABlog Test: Is HOLLYWOOD COFFEE CO. for Retail Store Services Confusable with HOLLYWOOD CAFÉ for Restaurant Services?
• TTABlog Test: Three More Section 2(d) Refusals For Your Review
• On Remand, TTAB Again Dismisses I-FIT FLEX Opposition Due to Difference in Goods and Services
• TTABlog Test: Three Recent Section 2(d) Appeals For Your Consideration
• TTAB Reverses Section 2(d) Refusal of "CREATIVE HOME IDEAS" in view of Weakness of Two Cited Marks
• TTAB Sustains Nike's Confusion and Dilution Claims Against "DON'T JUST DO IT, GET IT DONE" for Clothing
• TTABlog Test: Which of These Three Recent 2(d) Refusals Was/Were Reversed?
• TTAB Orders Cancellation of "THE PLIMSOULS" Registration on Ownership and Likelihood of Confusion Grounds, Rejects Abandonment Claim
• Another Section 2(d) Reversal: USPTO Fails to Prove Cosmetics Are Related to Flatware and Other Household Goods/li>
• BREAKING! TTAB Reverses Section 2(d) Refusals of FURY TIRES and FURY OFF-ROAD for Tires
• TTAB Affirms Section 2(d) Refusal of NUDE X for Cosmetics in view of NAKED X for Hair Care Products
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• CAFC Affirms TTAB: Opposer's Testimony Declaration Deemed Timely and Sufficient to Prove Priority
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTABlog Test: Is CROKO for Chocolates and Cookies Confusable with CROCO BERRY CRUNCH for Breakfast Cereals?

• TTABlog Test: Are Backpacks, Wallets, and Purses Related to Cake Under Section 2(d)? [Yes]
• TTABlog Test: Are Cigarettes and Cigars Related to Alcoholic Beverages Under Section 2(d)? [Yes]
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• Precedential No. 5: TTAB Finds SAGEFORTH Confusable With SAGE CENTRAL for Medical Information Services, Dismisses Section 18 Counterclaim Without Prejudice
• Summary Judgment Motion Backfires: C.D. Cal. Dismisses Kate Spade Appeal of TTAB Opposition Defeat
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?
• TTABlog Test: How Did These Three Recent 2(d) Appeals Turn Out?

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

• "ECOPRENEUR" Merely Descriptive of Environmental Awareness Software and Services, Says TTAB
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
• In a Split Decision, TTAB Reverses Mere Descriptiveness Refusal of ARBATA for Tea Despite the Word's Lithuanian Meaning
• TTAB Affirms Mere Descriptiveness Refusal of SPICED CHAI for Tobacco
• TTAB Sustains 2(e)(1) Opposition, Finding WOOLWAX Merely Descriptive of Lubricants

Section 2(e)(5) - Functionality:

• TTAB Says "No Dice" to Opposer's Claim of Functionality of Dice Box Configuration

Section 2(f) - Acquired Distinctiveness:

• TTAB Affirms Refusal to Register Muffler Configuration Due to Lack of Acquired Distinctiveness
• TTAB Affirms 2(e)(4) Surname Refusal of "BASQUIAT" for Alcoholic Beverages, Rejecting Transferred Distinctiveness Claim
• 4th Circuit Upholds District Court and TTAB: Timberland Boot Design Lacks Acquired Distinctiveness

Section 43(c) - Likelihood of Dilution:

• TTAB Sustains Nike's Confusion and Dilution Claims Against "DON'T JUST DO IT, GET IT DONE" for Clothing

Abandonment:

• TTAB Summarily Dismisses Monster Energy's Opposition to PREDATOR & Design: No Lack of Bona Fide Intent and No Abandonment

Failure-to-Function:

• "ASSHOLES LIVE FOREVER" Fails-to-Function as a Service Mark for Online Retail Store Services, Says TTAB
• "DREAM DECIDE DO" Fails to Function as a Trademark for Stationery and Printed Works, Says TTAB

Genericness:

• TTAB Deems STUDENT ALLY Generic for . . . . Guess What?
• TTAB Issues Correction of CINNAMON DONUT STOUT Opinion Regarding Genericness Burden of Proof
• TTAB Finds CINNAMON DONUT STOUT to be Generic for . . . Guess What?

Laches:

• TTAB Orders Cancellation of UBANK Registration for Banking Services, Rejects Laches Defense and Suggested Geographical Carve-Out

Lack of Bona Fide Intent:

• TTAB Summarily Dismisses Monster Energy's Opposition to PREDATOR & Design: No Lack of Bona Fide Intent and No Abandonment

Nonuse:

• TTAB Orders Cancellation of TEEN EARTH Registration Due to Nonuse With Intent Not to Resume Use

Ownership:

• TTAB Orders Cancellation of "THE PLIMSOULS" Registration on Ownership and Likelihood of Confusion Grounds, Rejects Abandonment Claim

Discovery/Evidence/Procedure:

• Fourth Circuit Rules that Bacardi May Challenge USPTO's Renewal of HAVANA CLUB Registration via Civil Action Under the APA
• Precedential No. 12: TTAB Rejects Sovereign Immunity Claim in Opposition to Virginia College System Marks
• Precedential No. 10: TTAB Denies Section 18 Petition to Restrict Beer Registration to Micro-Brewed Craft Beer
• Precedential No. 9: TTAB Denies HOLLYWOOD HOTEL Summary Judgment Motion, Finding No Claim Preclusion
• Precedential No. 8: TTAB Strikes "Trademark Bullying" Affirmative Defense in DOOR DABZ Opposition
• CAFC Affirms TTAB: Opposer's Testimony Declaration Deemed Timely and Sufficient to Prove Priority
• Precedential No. 7: TTAB Dismisses Cancellation Proceeding as Moot After Registrant Fails to File Section 8 Declaration
• Precedential No. 6: TTAB Denies Meta Platforms' Motion to Dismiss META Opposition on Timing and Standing Grounds

CAFC Decisions:

• CAFC Affirms TTAB Dismissal of Consolidated Cancellations Due to Lack of Entitlement to a Statutory Cause of Action
• Chestek PLLC Files Cert Petition for Supreme Court Review of CAFC Decision Upholding Domicile Address Requirement
• CAFC Remands I-FIT FLEX Opposition at Request of USPTO for Re-consideration of First and Second DuPont Factors
• CAFC Affirms TTAB: Opposer's Testimony Declaration Deemed Timely and Sufficient to Prove Priority
• CAFC Partially Remands "HERE COMES THE JUDGE" Appeal to TTAB for Production of AEO Materials

Recommended Reading:

• Recommended Reading: The Trademark Reporter, May-June 2024 Issue
• Five Amicus Briefs in Support of Chestek PLLC Petition for Writ of Certiorari
• Recommended Reading: Fromer and McKenna, "Amazon's Quiet Overhaul of the Trademark System"
• J. Michael Keyes:: "Just Do It" Doesn't Fly When Submitting Survey Evidence to the TTAB"
• Ted Davis: "Annual Review of U.S. Federal and State Case Law and T.T.A.B. Developments"
• The Trademark Reporter's "Annual Review of European Trademark Law"
• J. Michael Keyes: "Will Bad Spaniels' New 'Disclaimer' Keep VIP Products Out Of The Doghouse?"

Other:

• TTAB Posts June 2024 Hearing Schedule
• The Last Two Slides from My INTA Presentation>/a>
• "MEET THE BLOGGERS" Postponed Until 2025
• S.D. Ohio District Court, Despite Default, Stays Infringement Action in Favor of Pending TTAB Proceeding
• Divided 9th Circuit Says District Court Has Power to Adjudicate TM Applications
• Three Recent TTAB Inter Partes Decisions of Interest

Text © John L. Welch 2024.