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

Holding that the respondent could not "obtain relief" under § 1125 "without evidence of injury proximately caused by [the petitioner's] alleged misrepresentations"

Doeblers' Pennsylvania Hybrids v. Doebler

Holding that a trademark was not abandoned because "[t]he simple fact is that the use of [the trademark] never ceased"

Vuitton Malletier v. Haute Diggity

Holding "Chewy Vuiton" dog toys not to infringe on the venerable handbag maker's trademark

New York Stock Exchange v. New York Hotel LLC

Holding "New York," plus generic term "stock exchange" was descriptive

In re E. I. DuPont DeNemours & Co.

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

Electro Source v. Brandess-Kalt-Aetna Group

Holding that "unless the trademark use is actually terminated, the intent not to resume use prong of abandonment does not come into play."

Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc.

Holding "that the Rogers balancing approach is generally applicable to Lanham Act claims against works of artistic expression"

On-Line Careline, Inc. v. America Online

Applying Recot in analyzing the similarity of services

Cunningham v. Laser Golf Corp.

Finding similarity between LASER for golf clubs and golf balls and LASERSWING for golf practice devices, and noting that "the term ‘swing’ is both common and descriptive" and therefore "may be given little weight in reaching a conclusion on likelihood of confusion"

Starbucks Corp. v. Wolfe's Borough Coffee, Inc.

Finding the survey question showing 30% of consumers associated the names was flawed, because it was unlikely the Charbucks name would be presented outside the context of Black Bear coffee

Rule 403 - Excluding Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons

Adopting a similar standard, but requiring the probative value to be "substantially outweighed" by these risks

Rule 801 - Definitions That Apply to This Article; Exclusions from Hearsay

Holding that such a statement must merely be made by the party and offered against that party

Section 1125 - False designations of origin, false descriptions, and dilution forbidden

Holding "the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional"

Section 1051 - Application for registration; verification

Requiring a filing of a Statement of Use to register a mark

Section 1127 - Construction and definitions; intent of chapter

Granting standing under § 1114 to the legal representative of the registrant of a trademark

Section 1052 - Trademarks registrable on principal register; concurrent registration

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 1057 - Certificates of registration

Providing that a certificate of registration is prima facie evidence of an owner's right to use the mark

Section 1063 - Opposition to registration

Identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"

Section 24 - Subpoenas, witnesses

Providing for the issuance of subpoenas in contested cases before the PTO

Section 2.122 - Matters in evidence

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"

Section 2.123 - Trial testimony in inter partes cases