Automattic, Inc. v. Pearson, Chris

9 Cited authorities

Ritchie v. Simpson
170 F.3d 1092 (Fed. Cir. 1999) Cited 48 times 1 Legal Analyses
Finding “real interest” is shown by “a direct and personal stake in the outcome” or a “legitimate personal interest.”
In re Chippendales USA, Inc.
622 F.3d 1346 (Fed. Cir. 2010) Cited 22 times 5 Legal Analyses
Holding that whether the trade dress was "a common basic shape or design" was "inapplicable" because "there has been no showing that the [trade dress] is common generally"
Lipton Industries, Inc. v. Ralston Purina
670 F.2d 1024 (C.C.P.A. 1982) Cited 57 times
Holding that admission contained in an answer was binding, despite the fact that it was made "on information and belief"
Jewelers Vigilance Comm. v. Ullenberg Corp.
823 F.2d 490 (Fed. Cir. 1987) Cited 24 times
Finding a “real interest” in a mark's registration can be shown “without proprietary rights in the mark or without asserting that it has a right or has an interest in using the alleged mark”
Midwest Plastic v. Underwriters Laboratories
906 F.2d 1568 (Fed. Cir. 1990) Cited 13 times
In Midwest Plastic Fabricators, Inc. v. Underwriters Labs. Inc., 906 F.2d 1568, 1571 (Fed. Cir. 1990), the Federal Circuit—on an appeal discussing a different subsection than the one FCA asserts here—explained that "if a certification mark's owner also allowed the mark to be used as a trademark, there would be a basis for cancellation of the registration."
Books on Tape, Inc. v. Booktape Corp.
836 F.2d 519 (Fed. Cir. 1987) Cited 4 times
Discussing the Board's erroneous reliance on Otto Roth
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,585 times 271 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"
Section 1064 - Cancellation of registration
15 U.S.C. § 1064 Cited 888 times 48 Legal Analyses
Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services
Section 2.122 - Matters in evidence
37 C.F.R. § 2.122 Cited 23 times 1 Legal Analyses
Providing that in inter partes proceeding, "[t]he allegation in an application for registration, or in a registration, of a date of use is not evidence on behalf of the applicant or registrant" but, rather, "a date of use of a mark must be established by competent evidence"

Automattic, Inc. v. Pearson, Chris

9 Cited authorities

Finding “real interest” is shown by “a direct and personal stake in the outcome” or a “legitimate personal interest.”

Holding that whether the trade dress was "a common basic shape or design" was "inapplicable" because "there has been no showing that the [trade dress] is common generally"

Holding that admission contained in an answer was binding, despite the fact that it was made "on information and belief"

Finding a “real interest” in a mark's registration can be shown “without proprietary rights in the mark or without asserting that it has a right or has an interest in using the alleged mark”

Discussing the Board's erroneous reliance on Otto Roth

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"

Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services

Providing that in inter partes proceeding, "[t]he allegation in an application for registration, or in a registration, of a date of use is not evidence on behalf of the applicant or registrant" but, rather, "a date of use of a mark must be established by competent evidence"