Double Coin Holdings Ltd. v. Tru Development

51 Cited authorities

SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC
137 S. Ct. 954 (2017) Cited 206 times 27 Legal Analyses
Holding that laches cannot be invoked as a defense against a claim for patent infringement damages brought within the 35 U.S.C. § 286 six-year limitations period
A.C. Aukerman Co. v. R.L. Chaides Const. Co.
960 F.2d 1020 (Fed. Cir. 1992) Cited 655 times 37 Legal Analyses
Holding that equitable estoppel is a cognizable defense against patent infringement
Ford Motor Co. v. Summit Motor Products, Inc.
930 F.2d 277 (3d Cir. 1991) Cited 630 times
Holding that reviewing court would not consider an issue raised on appeal but not considered by jury at trial
Advanced Cardiovascular v. Scimed Life
988 F.2d 1157 (Fed. Cir. 1993) Cited 202 times 2 Legal Analyses
Holding that in a Section 256 claim, laches cannot be decided at the pleading stage "based solely on presumptions"
Coach Services, Inc. v. Triumph Learning LLC
668 F.3d 1356 (Fed. Cir. 2012) Cited 104 times 4 Legal Analyses
Holding that it is the opposer's burden to prove fame of its mark
State Contract Eng. v. Condotte America
346 F.3d 1057 (Fed. Cir. 2003) Cited 115 times
Finding issue of material fact precluding summary judgment given conflicting expert testimony as to whether a prior art reference was analogous
In re E. I. DuPont DeNemours & Co.
476 F.2d 1357 (C.C.P.A. 1973) Cited 188 times 30 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 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"
On-Line Careline, Inc. v. America Online
229 F.3d 1080 (Fed. Cir. 2000) Cited 76 times
Applying Recot in analyzing the similarity of services
National Cable Television v. Am. Cinema
937 F.2d 1572 (Fed. Cir. 1991) Cited 82 times
Rejecting contention that “American Cinema Editors” did not have trademark rights in the acronym “ACE”
Rule 15 - Amended and Supplemental Pleadings
Fed. R. Civ. P. 15 Cited 91,447 times 91 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
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,806 times 124 Legal Analyses
Requiring a filing of a Statement of Use to register a mark
Rule 602 - Need for Personal Knowledge
Fed. R. Evid. 602 Cited 3,528 times 13 Legal Analyses
Stating that " witness may testify only if evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter"
Section 1127 - Construction and definitions; intent of chapter
15 U.S.C. § 1127 Cited 2,954 times 96 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 1,585 times 272 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 1126 - International conventions
15 U.S.C. § 1126 Cited 184 times 29 Legal Analyses
Stating that an application under § 44 "must state the applicant's bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration"
Section 1069 - Application of equitable principles in inter partes proceedings
15 U.S.C. § 1069 Cited 47 times 1 Legal Analyses
Providing in the Lanham Act context that "[i]n all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable may be considered and applied"
Section 1141f - Effect of filing a request for extension of protection of an international registration to the United States
15 U.S.C. § 1141f Cited 7 times 3 Legal Analyses
Requiring a declaration of "bona fide intention to use the mark in commerce"
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"

Double Coin Holdings Ltd. v. Tru Development

51 Cited authorities

Holding that laches cannot be invoked as a defense against a claim for patent infringement damages brought within the 35 U.S.C. § 286 six-year limitations period

Holding that equitable estoppel is a cognizable defense against patent infringement

Holding that reviewing court would not consider an issue raised on appeal but not considered by jury at trial

Holding that in a Section 256 claim, laches cannot be decided at the pleading stage "based solely on presumptions"

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

Finding issue of material fact precluding summary judgment given conflicting expert testimony as to whether a prior art reference was analogous

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"

Applying Recot in analyzing the similarity of services

Rejecting contention that “American Cinema Editors” did not have trademark rights in the acronym “ACE”

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

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

Stating that " witness may testify only if evidence is introduced sufficient to support a finding that the witness has personal knowledge of the matter"

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"

Stating that an application under § 44 "must state the applicant's bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration"

Providing in the Lanham Act context that "[i]n all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable may be considered and applied"

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

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"