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American Marriage Ministries v. Universal Life Church Monastery Storehouse

91237315 (T.T.A.B. Feb. 17, 2022)
American Marriage Ministries v. Universal Life Church Monastery Storehouse

29 Cited authorities

  1. Lexmark Int'l, Inc. v. Static Control Components, Inc.

    572 U.S. 118 (2014)   Cited 3,011 times   73 Legal Analyses
    Holding that the respondent could not "obtain relief" under § 1125 "without evidence of injury proximately caused by [the petitioner's] alleged misrepresentations"

  2. Converse, Inc. v. Int'l Trade Comm'n

    907 F.3d 1361 (Fed. Cir. 2018)   Cited 38 times   3 Legal Analyses
    Holding party must prove design acquired secondary meaning before first infringement

  3. Royal Crown Co. v. Coca-Cola Co.

    892 F.3d 1358 (Fed. Cir. 2018)   Cited 20 times   2 Legal Analyses
    Recognizing that indirect evidence, including of "competitive use, evidence that other companies use [a term] in combination with their own . . . marks, third-party registrations and applications for such combined marks," may be relevant for genericness

  4. RXD Media, LLC v. IP Application Dev. LLC

    986 F.3d 361 (4th Cir. 2021)   Cited 15 times   1 Legal Analyses

    No. 19-1461 01-21-2021 RXD MEDIA, LLC, Plaintiff - Appellant, v. IP APPLICATION DEVELOPMENT LLC ; Apple, Inc., Defendants - Appellees. ARGUED: Cecil E. Key, Jr., DIMURO GINSBERG, P.C.-DGKEYIP GROUP, Alexandria, Virginia, for Appellant. Dale Margaret Cendali, KIRKLAND & ELLIS, LLP, New York, New York, for Appellees. ON BRIEF: Bernard J. Dimuro, DIMUROGINSBURG, PC, Alexandria, Virginia, for Appellant. Johanna Schmitt, Nathan S. Mammen, Jordan Miner Romanoff, KIRKLAND & ELLIS, LLP, New York, New York

  5. Duopross Meditech Corp. v. Inviro Med. Devices, Ltd.

    695 F.3d 1247 (Fed. Cir. 2012)   Cited 24 times   4 Legal Analyses
    Holding that, although the Board may "ascertain the meaning and weight of each of the components that makes up the mark," it "ultimately must consider the mark as a whole and do so in the context of the goods or services at issue"

  6. In re La. Fish Fry Prods., Ltd.

    797 F.3d 1332 (Fed. Cir. 2015)   Cited 15 times   1 Legal Analyses
    Discounting advertising expenditures concerning FISH FRY PRODUCTS where the evidence relied on included ads promoting another mark

  7. In re Steelbuilding.com

    415 F.3d 1293 (Fed. Cir. 2005)   Cited 26 times   2 Legal Analyses
    Affirming the refusal of the Patent and Trademark Office to register the mark STEELBUILDING.COM, because the mark was descriptive of online services for the design of steel buildings, and lacked secondary meaning

  8. Australian Therapeutic Supplies Pty. v. Naked TM, LLC

    965 F.3d 1370 (Fed. Cir. 2020)   Cited 10 times   1 Legal Analyses
    Concluding that a petitioner did not have a valid cause of action because it was precluded by a prior settlement agreement

  9. Corcamore, LLC v. SFM, LLC

    978 F.3d 1298 (Fed. Cir. 2020)   Cited 9 times   3 Legal Analyses
    Holding that Lexmark controls the statutory cause of action analysis under § 1064

  10. In re Nett Designs, Inc.

    236 F.3d 1339 (Fed. Cir. 2001)   Cited 28 times
    Finding that prior registrations of marks including the term ULTIMATE "do not conclusively rebut the Board's finding that ULTIMATE is descriptive in the context of this mark"

  11. Section 1051 - Application for registration; verification

    15 U.S.C. § 1051   Cited 3,886 times   126 Legal Analyses
    Requiring a filing of a Statement of Use to register a mark

  12. Section 1127 - Construction and definitions; intent of chapter

    15 U.S.C. § 1127   Cited 3,016 times   98 Legal Analyses
    Granting standing under § 1114 to the legal representative of the registrant of a trademark

  13. 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"

  14. Section 1064 - Cancellation of registration

    15 U.S.C. § 1064   Cited 918 times   50 Legal Analyses
    Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services

  15. Section 1063 - Opposition to registration

    15 U.S.C. § 1063   Cited 147 times   19 Legal Analyses
    Identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"

  16. Section 2.123 - Trial testimony in inter partes cases

    37 C.F.R. § 2.123   Cited 10 times

    (a) (1) The testimony of witnesses in inter partes cases may be submitted in the form of an affidavit or a declaration pursuant to § 2.20 and in conformance with the Federal Rules of Evidence, filed during the proffering party's testimony period, subject to the right of any adverse party to elect to take and bear the expense of oral cross-examination of that witness as provided under paragraph (c) of this section if such witness is within the jurisdiction of the United States, or conduct cross-examination

  17. Section 2.125 - Filing and service of testimony

    37 C.F.R. § 2.125   Cited 1 times

    (a) One copy of the declaration or affidavit prepared in accordance with § 2.123 , together with copies of documentary exhibits and duplicates or photographs of physical exhibits, shall be served on each adverse party at the time the declaration or affidavit is submitted to the Trademark Trial and Appeal Board during the assigned testimony period. (b) One copy of the transcript of each testimony deposition taken in accordance with § 2.123 or § 2.124 , together with copies of documentary exhibits