TTAB Quarterly Index: July-September 2016

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Section 2(a) – Deceptiveness:

• TTAB Finds Stylized “É” Deceptive or Deceptively Misdescriptive for Supplements

Section 2(a) – False Association:

• TTAB Affirms 2(a) False Association Refusal of SEAL TEAM PHYSICAL TRAINING, INC.

Section 2(d) – Likelihood of Confusion:

• TTAB Test: Is “HOPNOTIC” for Beer Confusable With “HPNOTIQ” for Liqueur? [Yes]
• TTAB Test: How Did These Four Section 2(d) Appeals Turn Out?
• TTAB Test: Are These Design Marks Confusable for Jewelry?
• Precedential No. 24: TTAB Affirms 2(d) Refusal of MT RAINIER Logo, But Reverses on 2(e)(3)
• Split Board Panel Reverses 2(d) Refusal of “THE RAIL & Design” for Restaurant Services
• TTAB Test: Is FLOSSBONE Confusable With FLOSSIES for Dog Treats? [Yes]
• TTAB Test: Is “DUFFY” Confusable With “PETER DUFFY” For Clothing? [Yes]
• TTAB Test: Are These Two “K4K & Design” Marks Confusable for Clothing? [No]
• Double WYHA? RENTED.COM Merely Descriptive and Confusable with RENT.COM for Real Estate Services
• TTAB Test: Which of These Three Section 2(d) Refusals Was Reversed?
• Finding Institutional Chicken Related to Frozen Fish, TTAB Affirms RED LABEL 2(d) Refusal
• TTAB Test: Are These Ice Cube Marks Confusable for Soft Drinks? [Yes]
• TTAB Test: Which Of These Three Section 2(d) Refusals Was Reversed?
• Not Precedential: MISS G-STRING INTERNATIONAL Not Confusable With MISS NUDE INTERNATIONAL, Says TTAB
• TTAB Reverses 2(d) Refusal of Salvation Army Mark, Finding Unity of Control
• BOXME Not Confusable With BOX for Data Storage Services, Says TTAB
• TTAB Test: Which One Of These Three Section 2(d) Refusals Was Reversed?
• Precedential No. 20: TTAB Dismisses 2(d) Opposition, Opposer Fails to Prove Rights in SEXSTROLOGY
• TTAB Test: Is DUO for Beer Confusable with DUO for Wine [Yes]?

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

• TTAB Test: Is PROBOKNOW Merely Descriptive of a Legal Services Website? [Yes]
• TTAB Test: Is “CAT & CO.” Merely Descriptive of Cat Litter? [No]
• TTAB Test: Is “PRO.” (Stylized) Merely Descriptive of Architectural Services? [Yes]
• Double WYHA? RENTED.COM Merely Descriptive and Confusable with RENT.COM for Real Estate Services
• TTAB Test: Three Mere Descriptiveness Refusals For Your Perusal
• TTAB Test: Is “AMERICAN BARRISTER” Descriptive of Legal Services? [No]
• TTAB Test: Is “GUINEA” Merely Descriptive of Collectible Coins? [Yes]
• TTAB Test: Is “TOON KICKER” Merely Descriptive of Pontoon Motor Mounts? [Yes]
• TTAB Test: Should the Stylization of This Descriptive Term Support a Principal Registration?
• TTAB Test: Is “HOME BREWING CO.” Merely Descriptive of Beer? [Yes]
• TTAB Test: Is FIRST TUESDAY Merely Descriptive of Lottery Services? [Yes]
• WYHA? BEST PROTEIN Merely Descriptive of Nutritional Supplements, Says TTAB

Section 2(e)(1) – Deceptive Misdescriptivenss:

• TTAB Snuffs Out Two (Non-)Marijuana TM Applications
• TTAB Finds Stylized “É” Deceptive or Deceptively Misdescriptive for Supplements

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

• “BJNI” Not Geographically Descriptive of Mineral Waters, Says TTAB

Section 2(e)(3) – Geographically Deceptively Misdescriptive:

• EURO for Paint Spray Guns Made in Taiwan is Deceptive, Says TTAB
• Precedential No. 24: TTAB Affirms 2(d) Refusal of MT RAINIER Logo, But Reverses on 2(e)(3)

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

• TTABlog Test: Is “CARUSO HOTELS AND RESORTS” Primarily Merely a Surname? [Yes]

Section 2(e)(5) – Functionality:

• Precedential No. 19: TTAB Affirms Functionality Refusal of Motion Mark for Hand Tool

Section 2(f) – Acquired Distinctiveness:

• Finding Acquired Distinctiveness, TTAB Reverses 2(e)(1) Refusal of WATERCRAFT SUPERSTORE
• TTAB Dismisses Surname Oppositions to SCHLAFLY for Beer, Finding Acquired Distinctiveness
• Precedential No. 18: TTAB Reverses Refusal of the Color White for Gunpowder Charges

Abandonment:

• Rejecting Abandonment by Naked Licensing, TTAB Sustains 2(d) Opposition to LUCKY DILL for Restaurant Services

Application Requirements/Lawful Use/Specimen of Use:

• Precedential No. 23: TTAB Affirms Refusal Of “pitchingsmart” Due To Faulty I.D. And Specimen
• Precedential No. 21: Marijuana Sale Illegal, TTAB Affirms HERBAL ACCESS Refusal for Retail Services

Concurrent Use:

• TTABlog Note: Converting an Opposition to a Concurrent Use Proceeding

Dilution:

• Further Comments of Professor McCarthy Regarding TTAB Dilution Analysis
• Professor McCarthy Criticizes the TTAB’s Dilution Analysis

Failure to Function:

• Precedential No. 26: Finding a Repeating Pattern Not Distinctive, TTAB Affirms Failure To Function Refusal of Hookah Ornamentation

Fraud:

• Precedential No. 27: TTAB Rejects Fraud Claim in QUIRK Cancellation Proceeding

Genericness:

• TTAB Finds “THE CORPORATE LAW GROUP” Generic for … Guess What?
• TTAB Test: Is SKINNIBELT Generic for Belts?
• TTAB Finds 1.0, 1.25, and 1.5 Generic For Cigarette Rolling Papers

Unclean Hands:

• TTAB Denies Unclean Hands Defense, Grants AACHI Cancellation Petition

Discovery/Evidence/Procedure:

• Precedential No. 28: Claim Preclusion Inapplicable To Fraud Claim Due To Different Transactional Facts
• Precedential No. 25: Issue Preclusion Applies to Standing, Says TTAB
• Precedential No. 22: Appellants Fail To Address PTO Refusals, TTAB Affirms
• TTAB Dismisses Opposition, Rejecting Opposer’s Improper Declaration Evidence
• TTAB Test: Can the TTAB Order the Parties to Mediate?
• TTAB Enters Judgment as Sanction For Non-Compliance With Its Orders
• Supplemental Registrations and Acquired Distinctiveness: Did The TTAB Get This Right?
• Precedential No. 20: TTAB Dismisses 2(d) Opposition, Opposer Fails to Prove Rights in SEXSTROLOGY

Recommended Reading:

• Recommended Reading: Rebecca Tushet – “Registering Disagreement: Registration in Modern Trademark Law”

Other:

• Christopher Larkin Appointed As TTAB Administrative Trademark Judge
• Erik Pelton’s Report on Sept. 16th TPAC Meeting
• TTABlog Tweets and Re-Tweets
• TTAB Posts September 2016 Hearing Schedule
• TTAB Posts August 2016 Hearing Schedule
• NYIPLA Seminar: “Hot Topics In Intellectual Property Law” – July 20th in NYC