Coach/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC

49 Cited authorities

Park 'N Fly, Inc. v. Dollar Park & Fly, Inc.
469 U.S. 189 (1985) Cited 963 times 9 Legal Analyses
Holding that an incontestable mark cannot be challenged as merely descriptive
Permanent v. Lasting
543 U.S. 111 (2004) Cited 336 times 5 Legal Analyses
Holding defense available even where likelihood of confusion established
Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc.
43 F.3d 922 (4th Cir. 1995) Cited 923 times 1 Legal Analyses
Holding that a "valid, protectable trademark" is necessary to establish a claim of trademark infringement or unfair competition under the Lanham Act
Lang v. Retirement Living Publishing Co., Inc.
949 F.2d 576 (2d Cir. 1991) Cited 653 times
Holding that evidence of "actual confusion" in which the public thought the senior user was the origin of the junior user's products was irrelevant for a reverse confusion claim
In re E. I. DuPont DeNemours & Co.
476 F.2d 1357 (C.C.P.A. 1973) Cited 193 times 33 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 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"
In re Bayer
488 F.3d 960 (Fed. Cir. 2007) Cited 41 times 2 Legal Analyses
Endorsing the use of internet evidence as admissible and competent evidence for evaluating a trademark
In re Viterra Inc.
671 F.3d 1358 (Fed. Cir. 2012) Cited 27 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"
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"
Kenner Parker Toys v. Rose Art Industries
963 F.2d 350 (Fed. Cir. 1992) Cited 51 times
Holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks
Rule 803 - Exceptions to the Rule Against Hearsay-Regardless of Whether the Declarant Is Available as a Witness
Fed. R. Evid. 803 Cited 13,148 times 85 Legal Analyses
Recognizing exception to rule against hearsay for records of regularly conducted activities
Section 1115 - Registration on principal register as evidence of exclusive right to use mark; defenses
15 U.S.C. § 1115 Cited 1,970 times 34 Legal Analyses
Providing that registration of a mark "shall be prima facie evidence of the validity of the registered mark" but "shall not preclude another person from proving any legal or equitable defense or defect"
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,615 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 1065 - Incontestability of right to use mark under certain conditions
15 U.S.C. § 1065 Cited 1,135 times 16 Legal Analyses
Listing the requirements for incontestability
Section 1064 - Cancellation of registration
15 U.S.C. § 1064 Cited 934 times 51 Legal Analyses
Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services
Section 1058 - Duration, affidavits and fees
15 U.S.C. § 1058 Cited 245 times 25 Legal Analyses
Providing a ten-year duration for registered marks
Section 2.52 - Types of drawings and format for drawings
37 C.F.R. § 2.52 Cited 29 times
Providing rules for applicants “who seek to register words, letters, numbers, or any combination thereof without claim to any particular font style, size, or color”
Section 2.122 - Matters in evidence
37 C.F.R. § 2.122 Cited 24 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"
Section 2.134 - Surrender or voluntary cancellation of registration
37 C.F.R. § 2.134 Cited 2 times
(a) After the commencement of a cancellation proceeding, if the respondent applies for cancellation of the involved registration under section 7(e) of the Act of 1946 without the written consent of every adverse party to the proceeding, judgment shall be entered against the respondent. The written consent of an adverse party may be signed by the adverse party or by the adverse party's attorney or other authorized representative. (b) After the commencement of a cancellation proceeding, if it comes

Coach/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC

49 Cited authorities

Holding that an incontestable mark cannot be challenged as merely descriptive

Holding defense available even where likelihood of confusion established

Holding that a "valid, protectable trademark" is necessary to establish a claim of trademark infringement or unfair competition under the Lanham Act

Holding that evidence of "actual confusion" in which the public thought the senior user was the origin of the junior user's products was irrelevant for a reverse confusion claim

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"

Endorsing the use of internet evidence as admissible and competent evidence for evaluating a trademark

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"

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"

Holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks

Recognizing exception to rule against hearsay for records of regularly conducted activities

Providing that registration of a mark "shall be prima facie evidence of the validity of the registered mark" but "shall not preclude another person from proving any legal or equitable defense or defect"

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"

Listing the requirements for incontestability

Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services

Providing a ten-year duration for registered marks

Providing rules for applicants “who seek to register words, letters, numbers, or any combination thereof without claim to any particular font style, size, or color”

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"