TTAB Quarterly Index: April - June 2013

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Section 2(a) - Deceptiveness:

• TTABlog Collection of Section 2(a) Deceptiveness Cases
• TTAB Affirms 2(a) Deceptiveness Refusal of IRON-TEK CLEAN PERFORMANCE for Nutritional Supplements
• TTAB Affirms 2(a) and 2(e)(1) Refusals of GREEN SEAL for Non-Environmentally-Friendly Adhesive Tape

Section 2(a) - False Connection:

• TTABlog Collection of Section 2(a) False Connection Cases

Section 2(d) - Likelihood of Confusion:

• Finding Likely Confusion With REGISTERED MAIL, TTAB Cancels Registrations For REGISTERED E-MAIL and (R)EGISTERED E-MAIL
• Test Your TTAB Judge-Ability: Are Pet Apparel and Human Clothing Related?
• Precedential No. 23: CHEMIN DES PAPES Not Confusable with CHATEAUNEUF-DU-PAPE CONTROLE for Wine, Says TTAB
• TTAB Reverses 2(d) Refusal of BACIO: Not Confusable with KISS for Restaurant Services
• Test Your TTAB Judge-Ability: Are STELLA ROSSA PIZZA BAR and RED STAR TAVERN Confusable?
• Test Your TTAB Judge-Ability: Are ROUGH COUNTRY and WILD COUNTRY Confusable for Tires?
• TTAB Dismisses 2(d) Opposition: TAMAYA Not Confusable With MAYA, Both For Wine
• Test Your TTAB Judge-Ability: Which One of These Four Section 2(d) Refusals Did the Board Reverse?
• What is the Likelihood That the TTAB Will Affirm a Section 2(d) Refusal? 90%
• TTAB Finds "Translucent Blue" Color Confusable with "Blue" Color for Fuel Additives
• Precedential No. 16: TTAB Refuses to Consider File HIstory of Cited Registration in Section 2(d) Appeal
• TTABlog Uncorked: Collection of Section 2(d) Cases Involving Wine
• "IN & OUT CAR WASH" Not Confusable With, Nor Dilutive of, "IN-N-OUT" Burgers Marks, Says TTAB
• Precedential No. 14: Refusing to Read Cited Registration Narrowly, TTAB Affirms 2(d) Refusal of LOTUS for Casino Bar Services

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

• TTAB Affirms Disclaimer Requirement of MONOGRAM in BR MONOGRAM for Handbags and Clothing
• Test Your TTAB Judge-Ability: Must NATURALLY be Disclaimed in NATURALLY POWERED for All-Natural Beverages?
• WYHA? TTAB Affirms Mere Descriptiveness Refusal of PADPIVOT for Pad Computer Stands
• Divided TTAB Panel Finds OPEN SOURCE HARDWARE Merely Descriptive of Technology Website Services
• TTAB Affirms 2(a) and 2(e)(1) Refusals of GREEN SEAL for Non-Environmentally-Friendly Adhesive Tape
• What is the Likelihood of TTAB Affirmance of a Section 2(e) Refusal?
• Test Your TTAB Judge-Ability: Which One of These Five Section 2(e)(1) Mere Descriptiveness Refusals Was Reversed?
• Test Your TTAB Judge-Ability: Is "SOF" Merely Descriptive of Exercise Weights?

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

• TTAB Affirms Geographical Descriptiveness Refusal of NEWBRIDGE HOME for Household Goods
• TTAB Reverses 2(e)(2) Refusal: KAPALUA Not Geographically Descriptive of Retail Store Services

Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:

• Test Your TTAB Judge-Ability: Is "SW3 UK" Geographically Deceptively Misdescriptive of Clothing?

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

• TTAB Affirms Surname Refusal of MOTT'S for Baby Food
• TTABlog Collection of Section 2(e)(4) "Primarily Merely A Surname" Cases

Section 2(e)(5) - Functionality:

• TTABlog Collection of Section 2(e)(5) Functionality Decisions
• Precedential No. 10: Finding Aesthetic Functionality, TTAB Affirms 2(e)(5) Refusal of Black Color for Floral Packaging

Failure to Function:

• TTAB Affirms Failure-to-Function Refusal of Universal Peace Symbol
• Precedential No. 22: WYHA? TTAB Affirms Failure-to-Function Refusal of "No More RINOs!" for Bumper Stickers, T-Shirts, and Buttons
• TTAB Affirms Refusal of Clear Cube Package for Parlor Games as Not Inherently Distinctive

Genericness:

• Test Your TTAB Judge-Ability on these Two Genericness Appeals
• TTAB Affirms Genericness Refusal of POMEGRANATEA for Tea-Based Beverages

Use in Commerce/Specimen of Use:

• Test Your TTAB Judge-Ability on this Trademark Specimen of Use
• Precedential No. 17: Use of TREASURYNET Mark Only Internally Results in Cancellation due to Abandonment
• Precedential No. 12: WYHA? TTAB Affirms Refusal of PLAQUE-ZAPPER for Pet Treats Due to Faulty Specimen of Use

Concurrent Use:

• Precedential No. 11: Junior User Awarded All of USA Except Arizona in "3 PALMS" Concurrent Use Battle

Fraud:

• TTAB Dismisses Fraud Claim for Lack of Proof of Intent to Deceive
• SDNY Orders Cancellation of NISA SANTIAGO Registration on the Ground of Fraud

Laches:

• TTAB Dismisses YENKO Cancellation Petition, Finding Laches Based On 14-Year Delay

Lack of Bona Fide Intent:

• Precedential No. 23: CHEMIN DES PAPES Not Confusable with CHATEAUNEUF-DU-PAPE CONTROLE for Wine, Says TTAB

Discovery/Evidence/Procedure:

• CAFC Reverses TTAB Dismissal, Finding No Issue or Claim Preclusion from Levi's Failed "Stitch Design" Lawsuit
• Precedential No. 21: TTAB Dismisses Belatedly-Filed Opposition, Rejects Claim of Privity With Extension Recipient
• Precedential No. 20: Cancellation Respondent Can't Undo Voluntary Surrender of Registration
• Precedential No. 19: TTAB Admits Disputed Documents, Denies Summary Judgment, Suggests ACR
• Precedential No. 18: Parties Opt for ACR, Foregoing Discovery, Trial, and Final Argument
• Divided 8th Circuit Panel Says TTAB 2(d) Decision Has No Preclusive Effect in Infringment Suit
• Precedential No. 17: Use of TREASURYNET Mark Only Internally Results in Cancellation due to Abandonment
• Precedential No. 15: TTAB Requires FRCP 26(a)(2)(B) Written Report of "Retained" Expert Witness
• Precedential No. 13: TTAB Nixes Stipulation for Service By E-Mail And Five Extra Mailing Days

CAFC Oral Aguments:

• CAFC Hears Oral Arguments in Houston and District of Columbia Section 2(b) Appeals

CAFC Decisions:

• CAFC Reverses TTAB Dismissal, Finding No Issue or Claim Preclusion from Levi's Failed "Stitch Design" Lawsuit

Recommended Reading:

• Anthony L. Fletcher: "Separating Descriptive Sheep From Generic Goats"
• Ted Davis: Annual Review of U.S. Federal and State Case Law
• INTA Outline: 2012-2013 Decisions of the Trademark Trial and Appeal Board and the Federal Circuit on Registrability Issues
• "Stolen Valor and the First Amendment: Does Trademark Infringement Law Leave Congress an Opening"

Other:

• TTAB Posts June 2013 Hearing Schedule
• TTAB Posts May 2013 Hearing Schedule
• What is the Likelihood of TTAB Affirmance of a Section 2(e) Refusal?
• TTAB Posts April 2013 Hearing Schedule

Text Copyright John L. Welch 2013.

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