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Combe Incorporated v. Marke Enterprises, LLC

91214779 (T.T.A.B. Mar. 31, 2021)
Combe Incorporated v. Marke Enterprises, LLC

49 Cited authorities

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

    572 U.S. 118 (2014)   Cited 3,048 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. Novartis Consumer Health v. Johnson Johnson

    290 F.3d 578 (3d Cir. 2002)   Cited 563 times   4 Legal Analyses
    Holding that the district court erred "in finding that a message of superior efficacy is necessarily implied" by defendant's advertising and "[i]nstead, [plaintiff] should have been required to prove through a consumer survey that the name and advertising actually misled or had a tendency to mislead consumers"

  3. Patent and Trademark Office v. Booking.com B. V.

    140 S. Ct. 2298 (2020)   Cited 62 times   8 Legal Analyses
    Holding that whether a term is generic "depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class"

  4. Sara Lee Corporation v. Kayser-Roth Corp.

    81 F.3d 455 (4th Cir. 1996)   Cited 266 times   1 Legal Analyses
    Holding that the trademark owner need not sue "until the likelihood of confusion looms large"

  5. Coach Services, Inc. v. Triumph Learning LLC

    668 F.3d 1356 (Fed. Cir. 2012)   Cited 109 times   4 Legal Analyses
    Holding that it is the opposer's burden to prove fame of its mark

  6. In re E. I. DuPont DeNemours & Co.

    476 F.2d 1357 (C.C.P.A. 1973)   Cited 190 times   33 Legal Analyses
    Reciting thirteen factors to be considered, referred to as "DuPont factors"

  7. 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"

  8. Cunningham v. Laser Golf Corp.

    222 F.3d 943 (Fed. Cir. 2000)   Cited 74 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"

  9. 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

  10. In re Cordua Rests., Inc.

    823 F.3d 594 (Fed. Cir. 2016)   Cited 28 times   7 Legal Analyses
    Holding that certain words referring to key aspects of a genus of services were generic for those services

  11. Rule 15 - Amended and Supplemental Pleadings

    Fed. R. Civ. P. 15   Cited 94,986 times   92 Legal Analyses
    Finding that, per N.Y. C.P.L.R. § 1024, New York law provides a more forgiving principle for relation back in the context of naming John Doe defendants described with particularity in the complaint

  12. Section 1051 - Application for registration; verification

    15 U.S.C. § 1051   Cited 3,905 times   126 Legal Analyses
    Requiring a filing of a Statement of Use to register a mark

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

    15 U.S.C. § 1052   Cited 1,606 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 1,048 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"

  16. 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"