TTAB Okays Amendment of “IBOOKSTORE” to “IBOOKS STORE,” Finds Acquired Distinctiveness

On February 27, 2017, in The TTABlog, by John L. Welch

In this consolidated appeal, the Board reversed the USPTO’s refusal to allow amendment of Apple’s mark from IBOOKSTORE to IBOOKS STORE (two words), and then found that Apple had established acquired distinctiveness for the amended mark based upon the “transfer” of inherent and acquired distinctiveness from two prior registrations for the mark IBOOKS. In re […]

TTAB Test: Which Two of These Four Mere Descriptiveness Refusals Were Reversed?

On February 24, 2017, in The TTABlog, by John L. Welch

Two of these four Section 2(e)(1) refusals were reversed. Put on your TTAB judicial robes and see if you can figure out how these recent appeals came out. [Answer will be found in first comment]. In re Blue Equity Int’l, LLC, Serial No. 86623172 (February 21, 2017) [not precedential]. [Requirement for disclaimer of BEST in […]

CORN THINS and RICE THINS Merely Descriptive But Not Generic, Says TTAB

On February 23, 2017, in The TTABlog, by John L. Welch

The Board sustained oppositions to registration of CORN THINS for popped corn cakes, and RICE THINS for rice cakes [CORN and RICE disclaimed], find the marks to be merely descriptive of the goods and lacking in acquired distinctiveness. However, the Board dismissed Opposer Frito-Lay’s claims that the marks are generic, or so descriptive as to […]

TTAB Test: Is PLUM Confusable With BLACKPLUM and/or PLUMDOG for Financial Services?

On February 22, 2017, in The TTABlog, by John L. Welch

The USPTO refused registration of the mark PLUM for various advisory and consulting services, including mortgage brokerage, finding the mark likely to cause confusion with the registered marks BLACKPLUM for financial advice and consultancy services, and PLUMDOG for mortgage brokerage. Applicant’s services overlap with those of the cited registrations, but what about the marks? How […]

TTAB Affirms Refusal to Register Container Shape on Principal Register

On February 21, 2017, in The TTABlog, by John L. Welch

Ouch! Well, you can’t win them all! The Board affirmed a refusal to register the container shape shown below, for “dairy products, namely, skyr,” on the ground that the applied-for mark comprises “a nondistinctive configuration of packaging for the goods.” The Examining Attorney had accepted Applicant’s amendment to the Supplemental Register in the alternative, and […]

Matthew Swyers (The Trademark Company) Excluded from Practice Before USPTO

On February 19, 2017, in The TTABlog, by John L. Welch

Michael E. McCabe, Jr. reports (here), at his IP Ethics and Insights blog, that Matthew Swyers, owner of The Trademark Company, has entered into an “exclusion on consent” agreement with the USPTO, by which Mr. Swyers has voluntarily given up the ability to provide U.S. trademark-related legal services for a minimum of five (5) years. […]

TTAB Affirms Rejection of New Drawing, Reverses Geographical Refusal of OAK PARK Design Mark for Beer

On February 16, 2017, in The TTABlog, by John L. Welch

The Board rejected applicant’s attempt to amend the drawing of the mark shown below to delete the words “SACRAMENTO CA,” finding that such an amendment would be a material alteration of the mark as filed. However, the Board reversed a Section 2(e)(2) refusal of the original mark for beer because Oak Park of Sacramento, California, […]

Effective Date of New Post-Registration Proof-of-Use Rule Delayed Until March 21st

On February 14, 2017, in The TTABlog, by John L. Welch

The USPTO has announced (here) that the effective date of the final rule entitled “Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases,” has been re-set to March 21, 2017. Under the new rule, briefly discussed here, the USPTO may require additional information to verify that a […]

HONEYFILE Merely Descriptive of Security Software, Specimen Unacceptable, Says TTAB

On February 14, 2017, in The TTABlog, by John L. Welch

The Board affirmed a Section 2(e)(1) refusal of the mark HONEYFILE, finding it merely descriptive of “computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence” and for related computer security services. The Board also affirmed the USPTO’s rejection of appicant’s specimen […]

Precedential No. 2: TTAB Affirms Rejection of Specimen of Use for CONEY ISLAND BOARDWALK CUSTARD

On February 13, 2017, in The TTABlog, by John L. Welch

The Board affirmed a refusal to register the mark CONEY ISLAND BOARDWALK CUSTARD, in standard character form, for frozen custards [CONEY ISLAND and CUSTARD disclaimed] due to applicant’s failure to submit an acceptable specimen of use. Applicant contended that its specimen qualified as a display closely associated with the goods offered for sale in a […]

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