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Duramax Marine, LLC v. R.W. Fernstrum & Company

No. 91119899 (T.T.A.B. Aug. 4, 2006)
Duramax Marine, LLC v. R.W. Fernstrum & Company

23 Cited authorities

  1. Inwood Laboratories v. Ives Laboratories

    456 U.S. 844 (1982)   Cited 1,297 times   25 Legal Analyses
    Holding that secondary liability for trademark infringement arises when a manufacturer or distributor intentionally induces another to infringe

  2. Traffix Devices, Inc. v. Marketing Displays, Inc.

    532 U.S. 23 (2001)   Cited 606 times   29 Legal Analyses
    Holding that the dual-spring design was not protectable because it had a purpose “beyond serving the purpose of informing consumers that the sign stands are made by” the plaintiff

  3. Qualitex Co. v. Jacobson Products Co.

    514 U.S. 159 (1995)   Cited 580 times   52 Legal Analyses
    Holding companies may not "inhibit[] legitimate competition" by trademarking desirable features to "put competitors at a significant non-reputation-related disadvantage"

  4. United States v. Armour Co.

    402 U.S. 673 (1971)   Cited 660 times   1 Legal Analyses
    Holding that consent decree must be enforced as written, and enforcing defendant's waiver of right to litigate particular issue

  5. Brennan's Inc. v. Dickie Brennan Co.

    376 F.3d 356 (5th Cir. 2004)   Cited 95 times
    Holding expert testimony of hypothetical damages for breach of contract, based on putting plaintiff in position it would have occupied but for breach, is one proper measure of damages

  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. Windsurfing International Inc. v. AMF Inc.

    828 F.2d 755 (Fed. Cir. 1987)   Cited 76 times   2 Legal Analyses
    Holding that a mere desire to use a mark does not create a justiciable controversy, and that the mark must actually be in use before the Court can consider infringement

  8. Yamaha Intern. Corp. v. Hoshino Gakki Co.

    840 F.2d 1572 (Fed. Cir. 1988)   Cited 46 times   2 Legal Analyses
    Finding secondary meaning for shape of guitar head always appearing in advertising and promotional literature

  9. Novamedix, Ltd. v. NDM Acquisition Corp.

    166 F.3d 1177 (Fed. Cir. 1999)   Cited 30 times
    Concluding the UCC did not apply to a settlement agreement that provided for the delivery of certain inventory because its primary purpose was to settle patent infringement claims

  10. Brunswick Corp. v. British Seagull LTD

    35 F.3d 1527 (Fed. Cir. 1994)   Cited 28 times
    Holding color black for outboard motors was functional because, while it had no utilitarian effect on the mechanical working of the engines, it nevertheless provided other identifiable competitive advantages, for example ease of coordination with a variety of boat colors and reduction in the apparent size of the engines

  11. 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"

  12. 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

  13. 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"

  14. Section 2.120 - Discovery

    37 C.F.R. § 2.120   Cited 23 times   5 Legal Analyses
    Providing that the TTAB "in its discretion, may refuse to consider the additional written disclosures or responses"

  15. Section 2.41 - Proof of distinctiveness under section 2(f)

    37 C.F.R. § 2.41   Cited 13 times   4 Legal Analyses

    (a)For a trademark or service mark - (1)Ownership of prior registration(s). In appropriate cases, ownership of one or more active prior registrations on the Principal Register or under the Trademark Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods or services in the application; however, further evidence may be required. (2)Five years substantially exclusive and continuous use in commerce. In appropriate