CBS Broadcasting Inc. v. New Line Media Solutions, Inc.

16 Cited authorities

Coach Services, Inc. v. Triumph Learning LLC
668 F.3d 1356 (Fed. Cir. 2012) Cited 108 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 190 times 32 Legal Analyses
Reciting thirteen factors to be considered, referred to as "DuPont factors"
Palm Bay Imp. v. Veuve Clicquot Ponsardin
396 F.3d 1369 (Fed. Cir. 2005) Cited 72 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"
Recot, Inc. v. Becton
214 F.3d 1322 (Fed. Cir. 2000) Cited 57 times
Holding that the Board legally erred in not according sufficient weight to evidence of a mark's fame in a likelihood of confusion analysis, vacating, and remanding for further consideration
Herbko Intern., Inc. v. Kappa Books, Inc.
308 F.3d 1156 (Fed. Cir. 2002) Cited 45 times
Explaining that proprietary rights are necessary to show priority of use when petitioning for cancellation under section 2(d)
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.”
Bose Corp. v. QSC Audio Products, Inc.
293 F.3d 1367 (Fed. Cir. 2002) Cited 35 times 2 Legal Analyses
In Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1375 (Fed.Cir.2002), this court held that the marks WAVE and ACOUSTIC WAVE have trademark strength independent of the Bose “house mark,” although the marks appear in the same sales literature.
Hewlett-Packard Co. v. Packard Press, Inc.
281 F.3d 1261 (Fed. Cir. 2002) Cited 33 times
Holding that a registration for “electronic transmission of data and documents via computer terminals” is “closely related” to a registration “covering facsimile machines, computers, and computer software”
Lipton Industries, Inc. v. Ralston Purina
670 F.2d 1024 (C.C.P.A. 1982) Cited 58 times
Holding that admission contained in an answer was binding, despite the fact that it was made "on information and belief"
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
Rule 36 - Requests for Admission
Fed. R. Civ. P. 36 Cited 6,310 times 13 Legal Analyses
Noting that facts admitted pursuant to a Rule 36 discovery request are "conclusively established unless the court, on motion, permits the admission to be withdrawn or amended"
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,882 times 126 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 1,599 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"
Section 2.120 - Discovery
37 C.F.R. § 2.120 Cited 23 times 5 Legal Analyses
Providing that the TTAB "in its discretion, may refuse to consider the additional written disclosures or responses"

CBS Broadcasting Inc. v. New Line Media Solutions, Inc.

16 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 "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"

Holding that the Board legally erred in not according sufficient weight to evidence of a mark's fame in a likelihood of confusion analysis, vacating, and remanding for further consideration

Explaining that proprietary rights are necessary to show priority of use when petitioning for cancellation under section 2(d)

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

In Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1375 (Fed.Cir.2002), this court held that the marks WAVE and ACOUSTIC WAVE have trademark strength independent of the Bose “house mark,” although the marks appear in the same sales literature.

Holding that a registration for “electronic transmission of data and documents via computer terminals” is “closely related” to a registration “covering facsimile machines, computers, and computer software”

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

Noting that facts admitted pursuant to a Rule 36 discovery request are "conclusively established unless the court, on motion, permits the admission to be withdrawn or amended"

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"

Providing that the TTAB "in its discretion, may refuse to consider the additional written disclosures or responses"