City of London Distillery, Ltd. v. Hayman Group Limited

28 Cited authorities

Converse, Inc. v. Int'l Trade Comm'n
907 F.3d 1361 (Fed. Cir. 2018) Cited 39 times 3 Legal Analyses
Holding party must prove design acquired secondary meaning before first infringement
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.”
Royal Crown Co. v. Coca-Cola Co.
892 F.3d 1358 (Fed. Cir. 2018) Cited 21 times 2 Legal Analyses
Recognizing that indirect evidence, including of "competitive use, evidence that other companies use [a term] in combination with their own . . . marks, third-party registrations and applications for such combined marks," may be relevant for genericness
Duopross Meditech Corp. v. Inviro Med. Devices, Ltd.
695 F.3d 1247 (Fed. Cir. 2012) Cited 25 times 4 Legal Analyses
Holding that, although the Board may "ascertain the meaning and weight of each of the components that makes up the mark," it "ultimately must consider the mark as a whole and do so in the context of the goods or services at issue"
Bose Corp. v. QSC Audio Products, Inc.
293 F.3d 1367 (Fed. Cir. 2002) Cited 36 times 2 Legal Analyses
Finding that product marks, ACOUSTIC WAVE and WAVE, were famous in addition to their house mark, BOSE
Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc.
906 F.3d 965 (Fed. Cir. 2018) Cited 14 times 1 Legal Analyses
2017-1959, 2017-2009 09-21-2018 REAL FOODS PTY LTD., Appellant v. FRITO-LAY NORTH AMERICA, INC., Cross-Appellant Jeanne M. Hamburg, Norris, McLaughlin & Marcus, PA, New York, NY, argued for appellant. Also represented by Stephanie Spangler ; Kelly Watkins, Allentown, PA. William G. Barber, Pirkey Barber LLP, Austin, TX, argued for cross-appellant. Also represented by Tyson David Smith, David Armendariz. Wallach, Circuit Judge. Jeanne M. Hamburg, Norris, McLaughlin & Marcus, PA, New York, NY, argued
Australian Therapeutic Supplies Pty. v. Naked TM, LLC
965 F.3d 1370 (Fed. Cir. 2020) Cited 12 times 1 Legal Analyses
Concluding that a petitioner did not have a valid cause of action because it was precluded by a prior settlement agreement
In re La. Fish Fry Prods., Ltd.
797 F.3d 1332 (Fed. Cir. 2015) Cited 15 times 1 Legal Analyses
Discounting advertising expenditures concerning FISH FRY PRODUCTS where the evidence relied on included ads promoting another mark
Corcamore, LLC v. SFM, LLC
978 F.3d 1298 (Fed. Cir. 2020) Cited 10 times 3 Legal Analyses
Holding that Lexmark controls the statutory cause of action analysis under § 1064
In re Steelbuilding.com
415 F.3d 1293 (Fed. Cir. 2005) Cited 26 times 2 Legal Analyses
Affirming the refusal of the Patent and Trademark Office to register the mark STEELBUILDING.COM, because the mark was descriptive of online services for the design of steel buildings, and lacked secondary meaning
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,914 times 126 Legal Analyses
Requiring a filing of a Statement of Use to register a mark
Section 1127 - Construction and definitions; intent of chapter
15 U.S.C. § 1127 Cited 3,039 times 99 Legal Analyses
Granting standing under § 1114 to the legal representative of the registrant of a trademark
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"
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"

City of London Distillery, Ltd. v. Hayman Group Limited

28 Cited authorities

Holding party must prove design acquired secondary meaning before first infringement

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

Recognizing that indirect evidence, including of "competitive use, evidence that other companies use [a term] in combination with their own . . . marks, third-party registrations and applications for such combined marks," may be relevant for genericness

Holding that, although the Board may "ascertain the meaning and weight of each of the components that makes up the mark," it "ultimately must consider the mark as a whole and do so in the context of the goods or services at issue"

Finding that product marks, ACOUSTIC WAVE and WAVE, were famous in addition to their house mark, BOSE

Concluding that a petitioner did not have a valid cause of action because it was precluded by a prior settlement agreement

Discounting advertising expenditures concerning FISH FRY PRODUCTS where the evidence relied on included ads promoting another mark

Holding that Lexmark controls the statutory cause of action analysis under § 1064

Affirming the refusal of the Patent and Trademark Office to register the mark STEELBUILDING.COM, because the mark was descriptive of online services for the design of steel buildings, and lacked secondary meaning

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

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

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"