TTAB Issued 46 Precedential Rulings in 2020

• Precedential No. 4: TTAB Affirms 2(a) False Association and 2(c) Consent Refusals of TRUMP-IT Logo for Utility Knives

Section 2(b) – Simulation of Flag:

• Precedential No. 18: TTAB Upholds 2(b) Refusal of “Civil Rights Trail” Logo Containing Simulation of U.S. Flag

• Precedential No. 4: TTAB Affirms 2(a) False Association and 2(c) Consent Refusals of TRUMP-IT Logo for Utility Knives

• Precedential No. 31: Laches, Acquiescence, and No Inevitable Confusion Doom Attack on BROOKLYN BREW SHOP for Beer Making Kits
• Precedential No. 21: Oral Intra-Family License With Informal Control Sufficient to Qualify Licensee as Related Company
• Precedential No. 20: TTAB Rejects “ERA” Family of Marks Claim, but Finds PRO ERA Confusable With NEW ERA for Caps
• Precedential No. 19: TTAB FInds “REAL MICHIGAN” for Hard Cider Confusable With “MICHIGAN APPLES” Geographic Certification Mark
• Presidential No.17: TTAB Affirms Section 2(d) and Disclaimer Refusals of INFORMATION BUILDERS & Design
• Precedential No. 15: TTAB Dismisses MOKE Opposition Due to Failure to Prove Priority
• Precedential No. 14: On Remand from CAFC, TTAB Considers 8th DuPont Factor, Affirms Section 2(d) Refusal of GUILD MORTGAGE COMPANY
• PRECEDENTIAL No. 13: TTAB Finds Two Different Shades of Green Not Confusable for Medical Gloves
• Precedential No. 12: Finding Clothing and Books Related, TTAB Sustains 2(d) Opposition to ENGIRLNEER

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

• Precedential No. 39: TTABlog Test: Is “CO-OP” Merely Descriptive of Bicycles Sold by a Co-op? [No]
• Precedential No. 16: TTAB Rules that Disclaimer of a Term Is Required as to All Services in a Class If Descriptive As to Any

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

• Precedential No. 45: TTAB Finds CITY OF LONDON Geographically Descriptive for Gin, Grants Motion to Amend to Supplemental Register
• Precedential No. 2: TTAB Finds CHARLESTON HARBOR TOURS Geographically Descriptive of . . . Guess What?

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

• Precedential No. 41: TTAB Affirms Bifusal of TAPIO for Software: Section 2(e)(4) Surname and Indefinite Identification of Goods
• Precedential No. 3: TTABlog Test: Is “J HUTTON” Primarily Merely a Surname for Eyewear? [Yes]

Section 2(e)(5) – Functionality:

• Precedential No. 25: TTAB Affirms Section 2(e)(5) Functionality Refusal of Saw Blade Configuration

Section 2(f) – Acquired Distinctiveness:

• Precedential No. 26: TTAB Rejects 2(f) Acquired Distinctiveness Claim for GUARANTEED RATE for Mortgage Lending Services

Abandonment:

• Precedential No. 46: Registrant Proves Intent to Resume Use; TTAB Dismisses A.W. SHUCK’S Cancellation Petition
• Precedential No. 10: Section 66(a) Registrant With No Use of Mark Defeats Abandonment Claim

Bona Fide Intent:

• Precedential No. 29: TTAB Sustains Opposition to Section 66(a) Application due to Lack of Bona Fide Intent
• Precedential No. 7: TTAB Grants Cancellation Petition, Respondent Did Not Individually Have Bona Fide Intent to Use the Mark

Genericness:

• Precedential No. 30: TTAB Finds “GRUYERE” to be Generic for … Guess What?

Ownership:

• Precedential No. 21: Oral Intra-Family License With Informal Control Sufficient to Qualify Licensee as Related Company

Unlawful Use:

• Precedential No.24: Finding a Per Se Violation of the FDCA, TTAB Affirms Unlawful Use Refusal of “CW” for Hemp Oil Extracts

Nonuse/Specimen of Use/Failure to Function:

• Precedential No. 44: TEAM JESUS Fails to Function as a Source Indicator for Clothing and Religion-Related Services, Says TTAB
• Precedential No. 42: TTAB Affirms Bifusal (TM) of GOD BLESS THE USA for Pillows: Failure-to-Function and Mutilation
• Precedential No. 38: Floyd Mayweather t.k.o.’d: TTAB Affirms Failure-to-Function Refusal of PAST PRESENT FUTURE for T-shirts
• Precedential No. 37: “.SUCKS” gTLD Fails to Function as Service Mark, Says TTAB
• Precedential No. 36: TTAB Affirms Failure-to-Function Refusal of TEXAS LOVE for T-Shirts, Rejects Equal Protection Argument
• Precedential No. 35: Bad Specimen of Use and Mere Descriptiveness Sink THERMAL MATRIX for Dental Appliance Liner
• Precedential No. 34: TTAB Rules That gTLD “.CAM” is Incapable of Functioning as a Source Indicator
• Precedential No. 11: TTAB Affirms Refusal Based on Applicant’s Failure to Pay Sufficient Fees
• Precedential No 1: TTAB Affirms Trifusal of Motion Mark for Sightseeing Tour Service

Concurrent Use:

• Precedential No. 8: TTAB Dissolves Concurrent Use Proceeding Because Plaintiff’s Proposed Territory Overlapped With Defendant’s Use

Discovery/Evidence/Procedure:

• Precedential No. 43: TTAB Dismisses Major League Soccer’s Section 2(d) Claim Due to Lack of Prior Rights in INTER mark
• Precedential No. 40: TTAB Denies Summary Judgment Motion on “Standing” Issues in PURISIMA Cancellation Proceeding
• Precedential No. 33: TTAB Explains Safer Rule for Internet Evidence
• Precedential No. 32: TTAB Strikes Untimely Supplemental Expert Report
• Precedential No. 28: TTAB Rejects Amendment to Goods First Made in Applicant’s Appeal Brief
• Precedential No.27: TTAB Grants FRCP 56(d) Motion for Discovery to Avoid Summary Judgment Ambush
• Precedential No. 23: TTAB Says Rule 30(b)(6) Corporate Deponent Must Travel to Corporation’s Principal Place of Business
• Precedential No. 22: TTAB Denies Motion for Leave to Take More Than Ten Discovery Depositions
• Precedential No. 15: TTAB Dismisses MOKE Opposition Due to Failure to Prove Priority
• Precedential No. 9: TTAB Dismisses Faulty Counterclaim and Affirmative Defense Based on the Pan-American Convention
• Precedential No. 6: Canadian Party Must Have a U.S. Attorney Despite Reciprocity, Says TTAB
• Precedential No. 5: Opposer Proves Standing Through Trade Name Use by Its Wholly Owned Subsidiary

Laches/Acquiescence/Estoppel:

• Precedential No. 31: Laches, Acquiescence, and No Inevitable Confusion Doom Attack on BROOKLYN BREW SHOP for Beer Making Kits

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Text Copyright John L. Welch 2020-2021.