Starbucks v. Wolfe's Borough

Holding that § 1125 claim requires same showing under Polaroid factors

Coach Services, Inc. v. Triumph Learning LLC

Holding that it is the opposer's burden to prove fame of its mark

Sweats Fashions v. Pannill Knitting Co.

Finding that, on review of a grant of summary judgment in a USPTO opposition proceeding, "[opposer] would have us infer bad faith because of [registrant's] awareness of [opposer's] marks. However, an inference of 'bad faith' requires something more than mere knowledge of a prior similar mark. That is all the record here shows."

In re E. I. DuPont DeNemours & Co.

Reciting thirteen factors to be considered, referred to as "DuPont factors"

Palm Bay Imp. v. Veuve Clicquot Ponsardin

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"

Cunningham v. Laser Golf Corp.

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"

Recot, Inc. v. Becton

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

Juice Generation, Inc. v. GS Enterprises LLC

Determining that TTAB failed to adequately account for evidence of "a fair number of third-party uses" of similar marks by discounting the evidence for lack of "specifics regarding the extent of sales or promotional efforts surrounding the third-party marks"

Herbko Intern., Inc. v. Kappa Books, Inc.

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

Ritchie v. Simpson

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

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

Granting the court discretion to exclude matters outside the pleadings presented to the court in defense of a motion to dismiss

Rule 801 - Definitions That Apply to This Article; Exclusions from Hearsay

Holding that such a statement must merely be made by the party and offered against that party

Section 1125 - False designations of origin, false descriptions, and dilution forbidden

Holding "the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional"

Section 1052 - Trademarks registrable on principal register; concurrent registration

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"

Rule 1002 - Requirement of the Original

Stating that "[t]o prove the content of a writing, recording, or photograph, the original writing, recording, or photograph is required"

Rule 1004 - Admissibility of Other Evidence of Content

Allowing other evidence of an original if the original is lost or destroyed or can't be obtained by judicial process

Section 1058 - Duration, affidavits and fees

Providing a ten-year duration for registered marks

Section 1141f - Effect of filing a request for extension of protection of an international registration to the United States

Requiring a declaration of "bona fide intention to use the mark in commerce"

Section 2.116 - Federal Rules of Civil Procedure

Making the federal rules of civil procedure generally applicable in TTAB proceedings

Section 2.122 - Matters in evidence

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 2.120 - Discovery

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

Section 2.106 - Answer

Defining compulsory counterclaim as "defense attacking the validity of any one or more of the registrations pleaded in the opposition"

Section 2.123 - Trial testimony in inter partes cases

Section 2.133 - Amendment of application or registration during proceedings