BoxFox Group Inc. v. BoxFox Inc.

18 Cited authorities

Coach Services, Inc. v. Triumph Learning LLC
668 F.3d 1356 (Fed. Cir. 2012) Cited 104 times 4 Legal Analyses
Holding that it is the opposer's burden to prove fame of its mark
In re E. I. DuPont DeNemours & Co.
476 F.2d 1357 (C.C.P.A. 1973) Cited 188 times 30 Legal Analyses
Reciting thirteen factors to be considered, referred to as "DuPont factors"
Cunningham v. Laser Golf Corp.
222 F.3d 943 (Fed. Cir. 2000) Cited 72 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"
Stone Lion Capital Partners, L.P. v. Lion Capital LLP
746 F.3d 1317 (Fed. Cir. 2014) Cited 24 times
Reviewing the weight given to the similarity-of-the-marks factor for legal error
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"
Han Beauty, Inc. v. Alberto-Culver Co.
236 F.3d 1333 (Fed. Cir. 2001) Cited 33 times
Finding no error because, "while the Board did not make explicit findings about the strength of the [opposer’s mark], the Board’s opinion reveals that the Board considered this factor"
Del Tabaco v. Gen. Cigar Co.
753 F.3d 1270 (Fed. Cir. 2014) Cited 13 times 5 Legal Analyses
Holding that appellant demonstrated entitlement to a "statutory cause of action" under the Lanham Act
Octocom Systems v. Houston Computer Services
918 F.2d 937 (Fed. Cir. 1990) Cited 28 times
No. 90-1196. November 2, 1990. Brian M. Dingman, Law Offices of Joseph S. Iandiorio, Waltham, Mass., argued for appellant. With him on the brief was Joseph S. Iandiorio. J. Paul Williamson, Arnold, White Durkee, Arlington, Va., argued for appellee. Appeal from the Patent and Trademark Office, Trademark Trial and Appeal Board. Before NIES, Chief Judge, ARCHER and CLEVENGER, Circuit Judges. NIES, Chief Judge. Octocom Systems, Inc. (OSI), appeals from the final decision of the U.S. Patent and Trademark
Stock Pot Restaurant, Inc. v. Stockpot, Inc.
737 F.2d 1576 (Fed. Cir. 1984) Cited 32 times
In Stock Pot, the appellee was a dissolved Massachusetts corporation at the time it filed suit and therefore did not have capacity to sue under Massachusetts law.
In re Majestic Distilling Co., Inc.
315 F.3d 1311 (Fed. Cir. 2003) Cited 11 times 1 Legal Analyses
Holding that malt liquor and tequila sold under the same mark would cause a likelihood of confusion
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,806 times 124 Legal Analyses
Requiring a filing of a Statement of Use to register a mark
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,585 times 272 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 1063 - Opposition to registration
15 U.S.C. § 1063 Cited 146 times 19 Legal Analyses
Identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"
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"

BoxFox Group Inc. v. BoxFox Inc.

18 Cited authorities

Holding that it is the opposer's burden to prove fame of its mark

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

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"

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

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"

Finding no error because, "while the Board did not make explicit findings about the strength of the [opposer’s mark], the Board’s opinion reveals that the Board considered this factor"

Holding that appellant demonstrated entitlement to a "statutory cause of action" under the Lanham Act

In Stock Pot, the appellee was a dissolved Massachusetts corporation at the time it filed suit and therefore did not have capacity to sue under Massachusetts law.

Holding that malt liquor and tequila sold under the same mark would cause a likelihood of confusion

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

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"

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

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"