United States: TTAB Issued 38 Precedential Opinions In 2022

The Board issued 38 precedential opinions in calendar 2022, a number that is consistent with recent yearly totals. Some practitioners clamor for more precedential opinions, but given the fact that many decisions are based on established principles applied to the particular facts of the case (especially in Section 2(d) cases), I don't see the value in more precedential opinions. In fact, I wonder whether making more decisions precedential would only confuse things.

Section 2(a) - False suggestion of a connection

• Precedential No. 24: "PURPLE RAIN" for Dietary Supplements Falsely Suggests a Connection with Prince, Says TTAB

Section 2(b) - Governmental Insignia:

• Precedential No. 19: TTAB Affirms Section 2(b) Refusals of Orange County "Unofficial" Insignia

Section 2(c) - Consent of living individual

• Precedential No. 36: TTAB Sustains Section 2(c) Opposition to DANA DESIGN Due to Lack of Consent

Section 2(d) - Likelihood of Confusion:

• Precedential No. 37: TTAB Rejects DC Comics Opposition: No Likely Confusion or Dilution vis-a-vis Superman "S-Shield" Marks
• Precedential No. 31: "SMOKES & Design" for Cannabis Cigarettes Not Confusable with "SMOK" for Electronic Cigarettes, Says TTAB

• Precedential No. 29: Finding Applicant's Period of Nonuse Excusable, TTAB Dismisses EUCALIN Opposition for Failure to Prove Priority
• Precedential No. 28: Nunc Pro Tunc Assignment Confirming Oral Agreement Suffices to Establish Priority
• Precedential No. 26: TTAB Denies "HAPPIEST HOUR" Cancellation Petition for Failure to Prove Priority Via Technical or Analogous TM Use
• Precedential No. 16: TTAB Unsurprisingly Finds "NATURE MADE" Confusable With "MADE IN NATURE" for Fruit and Snack Products
• Precedential No. 14: TTAB Allows Amendment to Applicant's Goods, Dismisses 2(d) Opposition to LUX ENHANCER
• Precedential No. 11: TTAB Dismisses SKËNDERBEU Brandy Opposition for Failure to Prove Priority and Fraud
• Precedential No. 9: TTAB Overturns RAINCOAST DIP Section 2(d) Refusal in Light of Coexistence Agreement Pooh-poohed by USPTO

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

• Precedential No. 20: TTAB Finds "SMART BEZEL" Merely Descriptive of Electronic Sensor Modules for Home Automation Systems
• Precedential No. 13: TTAB Reverses Disclaimer Requirement of "KID" in two Lego Marks Found to be Unitary

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

• Precedential No. 5: TTABlog Test - Is ATWELL SUITES Primarily Merely a Surname for Hotel Services?

Section 2(e)(5) - Functionality

• Precedential No. 4: TTAB Finds Pastel Colors for Disposable Pipette Tips Both Nondistinctive and Functional

Section 2(f) - Acquired Distinctiveness

• Precedential No. 10: TTAB Affirms Refusal to Register Handbag Shape: Generic and (Alternatively) Lacking Acquired Distinctiveness

Abandonment:

• Precedential No. 21: TTAB Orders Cancellation of OLD SCHOOL Registrations Due to Abandonment - Intent to Sell Mark Is Not Intent to Use

Dilution:

• Precedential No. 37: TTAB Rejects DC Comics Opposition: No Likely Confusion or Dilution vis-a-vis Superman "S-Shield" Marks
• Precedential No. 1: TTAB Sustains Spotify's Dilution-By-Blurring Claim Against POTIFY for Clothing and Marijuana-Related Software and Services

Failure to Function/Specimens of Use:

• Precedential No. 34: "IFG" Fails to Function as a Trademark For Live Plants Because It's a Varietal Name
• Precedential No. 33: #LAW Fails to Function as a Source Indicator for Legal Referral Services, Says TTAB
• Precedential No. 23: FUCK Fails to Function As a Source Indicator for Jewelry, Bags, and Retail Services, Says TTAB
• Precedential No. 6: Title of Single Work "STRONGHOLDS & FOLLOWERS" Fails to Function as a Trademark, Says TTAB

Fraud:

• Precedential No. 11: TTAB Dismisses SKËNDERBEU Brandy Opposition for Failure to Prove Priority and Fraud

Genericness

• Precedential No. 10: TTAB Affirms Refusal to Register Handbag Shape: Generic and (Alternatively) Lacking Acquired Distinctiveness

Nonownership:

• Precedential No. 22: TTAB Grants Petition to Cancel CHENOA FUND Registration for Mortgage Services Due to Non-Ownership
• Precedential No. 15: TTAB Dismisses Opposition to Section 66(a) Application: Nonownership Claim Unavailable

Nonuse:

• Precedential No. 29: Finding Applicant's Period of Nonuse Excusable, TTAB Dismisses EUCALIN Opposition for Failure to Prove Priority

Pan American Convention:

• Precedential No. 38: TTAB Orders Cancellation of COHIBA Registrations Under Pan American Convention, Rejects Issue Preclusion Defense

Procedural Issues/Discovery/Sanctions:

• Precedential No. 38: TTAB Orders Cancellation of COHIBA Registrations Under Pan American Convention, Rejects Issue Preclusion Defense
• Precedential No. 35: In a Real Snoozer, TTAB Rules on Several Discovery-Related Issues
• Precedential No. 32: In an "Unusual Situation," TTAB Opts to Consider Summary Judgment Motion on Unpleaded Claim
• Precedential No. 30: Finding No Error, TTAB Rejects Reconsideration Request Re "DEEP OPTO PROFILING" Descriptiveness Affirmance
• Precedential No. 27: TTAB Dismisses PepsiCo's "TORTRIX" Opposition Due to Inadequate Pleading of Misrepresentation of Source, Lack of Bona Fide Intent, and Fraud
• Precedential No. 25: TTAB Applicant's 41-Page ACR Brief Stricken As Too Long, But Re-Filing of 25-Page Brief Allowed
• Precedential No. 18: TTAB Denies LAGUNA CANDLES Cancellation Petition, Finding Acquired Distinctiveness and No Claim Preclusion
• Precedential No. 17: TTAB Dismisses "HUNGRY" Section 2(d) Opposition Due to False Testimony and Spoliation of Evidence
• Precedential No. 12: TTAB Delivers Up a Nothingburger to Applicant Seeking to Strike Testimony and Evidence
• Precedential No. 7: TTAB Sanctions Party for Flagrant Violation of the Standard Protective Order
• Precedential No. 3: TTAB Grants Motion to Supplement Notice of Opposition to Add Post-Filing Trademark Applications
• Precedential No. 2: TTAB Rejects Summary Judgment Motion Filed Three Days Too Late

Prosecution Issues:

• Precedential No. 8: TTAB Upholds Refusal Based on Applicant's Noncompliance with Domicile Address Requirement

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