TTABlog Quarterly Index: January – March 2016

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Section 2(a) – Deceptiveness:

• TTAB Affirms Section 2(a) Deceptiveness Refusal of EMDROPS for Liquid Supplements
• TTAB Test: Is “DIAMONDESS” Deceptive for Simulated Diamonds? [No]

Section 2(d) – Likelihood of Confusion:

• TTAB Test: Are These Logo Marks for Coffee Confusingly Similar?
• Precedential No. 5: Fame of Movie “JAWS” Supports 2(d) Refusal of Cooking Show Marks
• TTAB Accepts Morehouse Defense! Dismisses Opposition to FB FRESH BODY for Cosmetics
• Family Feud: TTAB Dismisses Opposition to EARNHARDT COLLECTION for Furniture and Home Construction
• Precedential No. 3: Despite Consent Agreement, TTAB Finds TIME TRAVELER BLONDE Confusable With TIME TRAVELER for Beer
• WYHA? MUTT Confusable with LAZY MUTT for Beer, Says TTAB
• TTAB Test: Is HAMMER for Skateboard Clothing Confusable with HAMMER & Design for Jackets and Hats? [Yes]
• STYLEHOUSE & Design For Clothing Confusable With STYLEHAÜS For Clothing Boutiques, Says TTAB
• TTAB Test: Are FAVAZZA’S and LAVAZZA Confusable for Restaurant Services? [Yes]
• TTAB Test: Which One of these Three Section 2(d) Refusals Was Reversed?
• TTAB Renders Split Decision in MONSTER v. MONSTERFISHKEEPERS Double-Header
• TTAB Dismisses CIGAR SNOB Cancellation For Failure to Prove Priority, Fraud
• Divided TTAB Panel Dismisses Oppositions: No Priority Based on Title of Single Work
• WYHA? MAGIC SNOWBALL and SNOWBALL Confusable for Stuffed Toys, Says TTAB
• TTABlog Test: Are “THE WORLDS PAGEANTS” and “MISS WORLD” Confusable for Beauty Pageants? [Yes]

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

• Precedential No. 6: IMÁGENES ESCONDIDAS and HIDDEN PICTURES Not the Same Mark, TTAB Affirms Mere Descriptiveness Refusal
• TTAB Test: Which One of these Mere Descriptiveness Refusals Was Reversed?
• BUCK Merely Descriptive of Kentucky Bourbon, Says TTAB
• “NAG CHAMPA” Merely Descriptive of Incense Sticks, Says TTAB
• “WEEPING ANGEL” Merely Descriptive of Funerary Urns, Says TTAB
• WYHA? “HEALTHY HEMP” Merely Descriptive of Hemp-Containing Baked Goods, Says TTAB
• WYHA? CARBON ELIMINATOR Merely Descriptive of Fuel Additive, Says TTAB
• Test Your TTAB Judge-Ability On These Three Mere Descriptiveness Appeals
• WYHA? “PALMS FREE” Merely Descriptive of Phone Holders, Says TTAB
• TTABlog Test: Is “E GAR” Merely Descriptive of Electronic Cigars? [Yes]

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

• TTAB Reverses 2(e)(3) Geographical Deceptiveness Refusal of “AUX ETAT UNIS” for Luggage

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

• TTAB Enters Summary Judgment on Res Judicata Ground in SKIPPY Cancellation
• Family Feud: TTAB Dismisses Opposition to EARNHARDT COLLECTION for Furniture and Home Construction

Section 2(e)(5) – Functionality:

• TTAB Finds Monster’s Flat Cable Design Functional and Generic

Fraud:

• TTAB Dismisses CIGAR SNOB Cancellation For Failure to Prove Priority, Fraud

Genericness:

• TTAB Finds “BOOKING.COM” Generic for Travel Agency Services
• TTAB Finds Monster’s Flat Cable Design Functional and Generic

Ownership:

• TTAB Orders Cancellation of Supplemental Registration Due to Non-Ownership

Section 14(3) – Cancellation for Misrepresentation of Source:

• Fourth Circuit Vacates FLANAX Decision and Remands to E.D. Va.

Use/Specimen of Use/Failure to Function:

• Precedential No. 1: TTAB Clarifies Statement of Use Timing Requirement
• Single Location Restaurant Not Operating in Interstate Commerce, Says TTAB

Discovery/Evidence/Procedure:

• TTAB Enters Summary Judgment on Res Judicata Ground in SKIPPY Cancellation
• Tam files Petition for Writ of Mandamus at CAFC, demanding USPTO action on THE SLANTS application
• USPTO Examination Guide 01-16: Suspension for Section 2(a) Disparagement and Scandalousness Cases
• TTAB Vacates HOUNDSTOOTH MAFIA Decision, Following District Court Order
• Precedential No. 4: Documents Must Be Produced in Unredacted Form, Says TTAB
• Alabama Federal Court Orders TTAB to Vacate HOUNDSTOOTH MAFIA Precedential Decision
• Precedential No. 41: TTAB Refuses Reconsideration of its Denial of Rule 12(b)(6) Motion to Dismiss
• Precedential No. 2: TTAB Denies Protective Order Motion and Sanctions Movant

CAFC decisions:

• Supreme Court Denies Certiorari Petition in Shammas Attorney Fees Case
• CAFC Corrects SLANTS Opinion Regarding Cybersquatting Protection

Recommended Reading:

• The Trademark Reporter’s 2016 “Annual Review of U.S. Trademark Cases”
• Professor Rebecca Tushnet Says the CAFC’s Reasoning in In re Tam Was Wrong
• Recommended Reading: Marc J. Randazza, “Freedom of Expression and Morality Based Impediments to the Enforcement of Intellectual Property Rights”

Other:

• TTAB Posts April 2016 Hearing Schedule [Part 2]
• TTAB Posts April 2016 Hearing Schedule [Part 1]
• TTAB Seeks Applicants for Attorney Advisor (Interlocutory Attorney) Positions
• TTAB Posts March 2016 Hearing Schedule
• George C. Pologeorgis Named TTAB Administrative Trademark Judge
• Report on February 15th Meeting of TPAC (Trademark Public Advisory Committee)
• IP Cases on Supreme Court Docket: October 2015 Term
• How Often Did the TTAB Affirm a Section 2(d) Refusal in 2015? a 2(e)(1) Mere Descriptiveness Refusal?
• TTAB Posts February 2016 Hearing Schedule
• The Top Ten TTAB Decisions of 2015 [Part 2]
• The Top Ten TTAB Decisions of 2015 [Part 1]
• Which Law Firms Filed the Most Oppositions in 2015 (and 2014)?
• Matthew Swyers (The Trademark Company) Sues USPTO For Harassment
• TTAB Posts January 2016 Hearing Schedule”