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Bernatello's Pizza, Inc. v. Colmont Restaurant Group, LLC

91241107 (T.T.A.B. Dec. 16, 2020)
Bernatello's Pizza, Inc. v. Colmont Restaurant Group, LLC

29 Cited authorities

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

    572 U.S. 118 (2014)   Cited 3,083 times   74 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. In re E. I. DuPont DeNemours & Co.

    476 F.2d 1357 (C.C.P.A. 1973)   Cited 191 times   33 Legal Analyses
    Reciting thirteen factors to be considered, referred to as "DuPont factors"

  3. Palm Bay Imp. v. Veuve Clicquot Ponsardin

    396 F.3d 1369 (Fed. Cir. 2005)   Cited 73 times   4 Legal Analyses
    Finding similarity between "VEUVE ROYALE" and "VEUVE CLICQUOT" because "VEUVE ... remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label"

  4. Cunningham v. Laser Golf Corp.

    222 F.3d 943 (Fed. Cir. 2000)   Cited 76 times   3 Legal Analyses
    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"

  5. In re Cordua Rests., Inc.

    823 F.3d 594 (Fed. Cir. 2016)   Cited 30 times   7 Legal Analyses
    Holding that certain words referring to key aspects of a genus of services were generic for those services

  6. Juice Generation, Inc. v. GS Enterprises LLC

    794 F.3d 1334 (Fed. Cir. 2015)   Cited 29 times   2 Legal Analyses
    Determining that TTAB failed to adequately account for evidence of "a fair number of third-party uses" of similar marks by discounting the evidence for lack of "specifics regarding the extent of sales or promotional efforts surrounding the third-party marks"

  7. In re Nat. Data Corp.

    753 F.2d 1056 (Fed. Cir. 1985)   Cited 73 times   1 Legal Analyses
    Holding that a "likelihood of confusion cannot be predicated on dissection of a mark"

  8. In re Viterra Inc.

    671 F.3d 1358 (Fed. Cir. 2012)   Cited 26 times   3 Legal Analyses
    Holding that "any minor differences in the sound of [X–Seed and XCEED marks for agricultural seeds] may go undetected by consumers and, therefore, would not be sufficient to distinguish the marks"

  9. In re Detroit Athletic Co.

    903 F.3d 1297 (Fed. Cir. 2018)   Cited 18 times
    Finding "the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first"

  10. In re Chippendales USA, Inc.

    622 F.3d 1346 (Fed. Cir. 2010)   Cited 23 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"

  11. Rule 30 - Depositions by Oral Examination

    Fed. R. Civ. P. 30   Cited 17,073 times   136 Legal Analyses
    Upholding a district court's decision not to consider the plaintiff's deposition errata sheets in opposition to a motion for summary judgment when they were untimely

  12. Rule 602 - Need for Personal Knowledge

    Fed. R. Evid. 602   Cited 3,667 times   13 Legal Analyses
    Stating that " witness may testify only if evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter"

  13. Section 1052 - Trademarks registrable on principal register; concurrent registration

    15 U.S.C. § 1052   Cited 1,610 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 1057 - Certificates of registration

    15 U.S.C. § 1057   Cited 1,053 times   5 Legal Analyses
    Providing that a certificate of registration is prima facie evidence of an owner's right to use the mark

  15. Section 1063 - Opposition to registration

    15 U.S.C. § 1063   Cited 148 times   19 Legal Analyses
    Identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"