Airboss of America, Corp.

15 Cited authorities

Park 'N Fly, Inc. v. Dollar Park & Fly, Inc.
469 U.S. 189 (1985) Cited 949 times 7 Legal Analyses
Holding that an incontestable mark cannot be challenged as merely descriptive
Qualitex Co. v. Jacobson Products Co.
514 U.S. 159 (1995) Cited 573 times 51 Legal Analyses
Holding companies may not "inhibit[] legitimate competition" by trademarking desirable features to "put competitors at a significant non-reputation-related disadvantage"
In re E. I. DuPont DeNemours & Co.
476 F.2d 1357 (C.C.P.A. 1973) Cited 190 times 32 Legal Analyses
Reciting thirteen factors to be considered, referred to as "DuPont factors"
Herbko Intern., Inc. v. Kappa Books, Inc.
308 F.3d 1156 (Fed. Cir. 2002) Cited 45 times
Explaining that proprietary rights are necessary to show priority of use when petitioning for cancellation under section 2(d)
Stone Lion Capital Partners, L.P. v. Lion Capital LLP
746 F.3d 1317 (Fed. Cir. 2014) Cited 25 times
Reviewing the weight given to the similarity-of-the-marks factor for legal error
Citigroup Inc. v. Capital City Bank Group
637 F.3d 1344 (Fed. Cir. 2011) Cited 27 times 3 Legal Analyses
Considering "corporate studies tracking awareness of the CITIBANK mark"
In re I.Am.Symbolic, LLC
866 F.3d 1315 (Fed. Cir. 2017) Cited 17 times
Finding that the similarity of the marks weighed heavily in favor of a likelihood of confusion
In re Guild Mortg. Co.
No. 2017-2620 (Fed. Cir. Jan. 14, 2019) Cited 7 times 1 Legal Analyses
Vacating the Board's decision and remanding for the Board to reconsider one of the DuPont factors and "to reconsider its likelihood of confusion determination in the first instance in light of all the evidence"
In re Shell Oil Co.
992 F.2d 1204 (Fed. Cir. 1993) Cited 35 times 2 Legal Analyses
Finding a correlation based on evidence of “overlap of consumers”
M2 Software, Inc. v. M2 Communications, Inc.
450 F.3d 1378 (Fed. Cir. 2006) Cited 14 times 2 Legal Analyses
Upholding board's finding of no likelihood of confusion between marks after finding that parties' multimedia CD-Roms were not similar and had different channels of trade; one party's product was used strictly in the film and music industries and the other's was used in the fields of pharmacy and medicine.
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,600 times 274 Legal Analyses
Granting authority to refuse registration to a trademark that so resembles a registered mark "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive"

Airboss of America, Corp.

15 Cited authorities

Holding that an incontestable mark cannot be challenged as merely descriptive

Holding companies may not "inhibit[] legitimate competition" by trademarking desirable features to "put competitors at a significant non-reputation-related disadvantage"

Reciting thirteen factors to be considered, referred to as "DuPont factors"

Explaining that proprietary rights are necessary to show priority of use when petitioning for cancellation under section 2(d)

Reviewing the weight given to the similarity-of-the-marks factor for legal error

Considering "corporate studies tracking awareness of the CITIBANK mark"

Finding that the similarity of the marks weighed heavily in favor of a likelihood of confusion

Vacating the Board's decision and remanding for the Board to reconsider one of the DuPont factors and "to reconsider its likelihood of confusion determination in the first instance in light of all the evidence"

Finding a correlation based on evidence of “overlap of consumers”

Granting authority to refuse registration to a trademark that so resembles a registered mark "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive"