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Delson Group, Inc. v. GSMA Ltd. GSMA Ltd. v. Delson Group, Inc.

No. 91207134 (T.T.A.B. Sep. 30, 2015)
Delson Group, Inc. v. GSMA Ltd. GSMA Ltd. v. Delson Group, Inc.

23 Cited authorities

  1. Parklane Hosiery Co. v. Shore

    439 U.S. 322 (1979)   Cited 4,324 times   8 Legal Analyses
    Holding that district courts have discretion to refuse to apply offensive non-mutual collateral estoppel against a defendant if such an application of the doctrine would be unfair

  2. Mingus Constructors, Inc. v. U.S.

    812 F.2d 1387 (Fed. Cir. 1987)   Cited 376 times   1 Legal Analyses
    Finding that letters indicating an intent to file a claim in the future for an unspecified amount were not claims as defined by the contract where the contractual definition of claim was substantially the same as the FAR definition: "a written demand or assertion by one of the parties seeking, as a legal right, the payment of money, adjustment or interpretation of contract terms, or other relief, arising under or relating to this contract"

  3. 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

  4. Jet, Inc. v. Sewage Aeration Systems

    223 F.3d 1360 (Fed. Cir. 2000)   Cited 79 times   2 Legal Analyses
    Concluding that the same cause of action can exist in two cases only where the same set of transactional facts are involved in those cases and that, where the transactional facts differ, the doctrine of claim preclusion does not apply

  5. On-Line Careline, Inc. v. America Online

    229 F.3d 1080 (Fed. Cir. 2000)   Cited 78 times
    Applying Recot in analyzing the similarity of services

  6. Cunningham v. Laser Golf Corp.

    222 F.3d 943 (Fed. Cir. 2000)   Cited 76 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"

  7. Imperial Tobacco v. Philip Morris, Inc.

    899 F.2d 1575 (Fed. Cir. 1990)   Cited 88 times   5 Legal Analyses
    Finding that promotional use of a mark on “incidental products” like whiskey, pens, watches, sunglasses, and food did not constitute use of mark for cigarettes

  8. Nasalok Coat v. Nylok

    522 F.3d 1320 (Fed. Cir. 2008)   Cited 42 times   1 Legal Analyses
    Holding that petition for cancelation of trademark that had been awarded through default judgment was precluded because the petition's effect was to collaterally attack a judgment in an infringement action

  9. Kearns v. General Motors Corp.

    94 F.3d 1553 (Fed. Cir. 1996)   Cited 49 times   1 Legal Analyses
    Concluding res judicata did not bar patent infringement claims that were not before court in earlier case dismissed by court

  10. Crash Dummy v. Mattel

    601 F.3d 1387 (Fed. Cir. 2010)   Cited 28 times   3 Legal Analyses
    Explaining that owner's "enter[ing] into discussions" with third party about selling products bearing the mark could support an intent to resume use, even where no agreement resulted

  11. Rule 12 - Defenses and Objections: When and How Presented; Motion for Judgment on the Pleadings; Consolidating Motions; Waiving Defenses; Pretrial Hearing

    Fed. R. Civ. P. 12   Cited 367,528 times   969 Legal Analyses
    Granting the court discretion to exclude matters outside the pleadings presented to the court in defense of a motion to dismiss

  12. Rule 56 - Summary Judgment

    Fed. R. Civ. P. 56   Cited 340,444 times   164 Legal Analyses
    Holding a party may move for summary judgment on any part of any claim or defense in the lawsuit

  13. Section 1127 - Construction and definitions; intent of chapter

    15 U.S.C. § 1127   Cited 3,049 times   99 Legal Analyses
    Granting standing under § 1114 to the legal representative of the registrant of a trademark

  14. Section 1121 - Jurisdiction of Federal courts; State and local requirements that registered trademarks be altered or displayed differently; prohibition

    15 U.S.C. § 1121   Cited 1,459 times   4 Legal Analyses
    Granting federal courts original and appellate jurisdiction over claims arising under the Lanham Act

  15. 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

  16. Section 1063 - Opposition to registration

    15 U.S.C. § 1063   Cited 149 times   19 Legal Analyses
    Identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"