Fidelity National Information Services

28 Cited authorities

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
Am-Pro Protective Agency, Inc. v. U.S.
281 F.3d 1234 (Fed. Cir. 2002) Cited 95 times 2 Legal Analyses
Holding that clear and convincing evidence is required to overcome the presumption that the government acted in good faith
Converse, Inc. v. Int'l Trade Comm'n
907 F.3d 1361 (Fed. Cir. 2018) Cited 39 times 3 Legal Analyses
Holding party must prove design acquired secondary meaning before first infringement
Princeton Vanguard, LLC v. Frito-Lay North America, Inc.
786 F.3d 960 (Fed. Cir. 2015) Cited 32 times 5 Legal Analyses
Explaining that although the "Board is not required to discuss every piece of evidence," it cannot "disregard [evidence] without explanation" or "short-cut its consideration of the factual record before it"
In re Cordua Rests., Inc.
823 F.3d 594 (Fed. Cir. 2016) Cited 30 times 7 Legal Analyses
Holding that certain words referring to key aspects of a genus of services were generic for those services
L.D. Kichler Co. v. Davoil, Inc.
192 F.3d 1349 (Fed. Cir. 1999) Cited 52 times
Holding that “any” use by third parties does not preclude an applicant's use from being substantially exclusive
Royal Crown Co. v. Coca-Cola Co.
892 F.3d 1358 (Fed. Cir. 2018) Cited 21 times 2 Legal Analyses
Recognizing that indirect evidence, including of "competitive use, evidence that other companies use [a term] in combination with their own . . . marks, third-party registrations and applications for such combined marks," may be relevant for genericness
Cold War Museum v. Cold War Air Museum
586 F.3d 1352 (Fed. Cir. 2009) Cited 28 times
Holding that registration per 15 U.S.C. § 1057(b) creates a rebuttable presumption of validity, rebuttal of which requires a preponderance of the evidence showing
In re Merrill Lynch, Pierce, Fenner, Smith
828 F.2d 1567 (Fed. Cir. 1987) Cited 58 times 4 Legal Analyses
Holding applicant's incontestable registration of a service mark for "cash management account" did not automatically entitle applicant to registration of that mark for broader financial services
In re Hotels.com
573 F.3d 1300 (Fed. Cir. 2009) Cited 24 times 4 Legal Analyses
Finding that the TTAB did not err in determining that the term was generic, citing in part concerns arising from the methodology of the applicant's consumer survey
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,920 times 127 Legal Analyses
Requiring a filing of a Statement of Use to register a mark
Section 1127 - Construction and definitions; intent of chapter
15 U.S.C. § 1127 Cited 3,044 times 99 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 1,612 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"

Fidelity National Information Services

28 Cited authorities

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

Holding that clear and convincing evidence is required to overcome the presumption that the government acted in good faith

Holding party must prove design acquired secondary meaning before first infringement

Explaining that although the "Board is not required to discuss every piece of evidence," it cannot "disregard [evidence] without explanation" or "short-cut its consideration of the factual record before it"

Holding that certain words referring to key aspects of a genus of services were generic for those services

Holding that “any” use by third parties does not preclude an applicant's use from being substantially exclusive

Recognizing that indirect evidence, including of "competitive use, evidence that other companies use [a term] in combination with their own . . . marks, third-party registrations and applications for such combined marks," may be relevant for genericness

Holding that registration per 15 U.S.C. § 1057(b) creates a rebuttable presumption of validity, rebuttal of which requires a preponderance of the evidence showing

Holding applicant's incontestable registration of a service mark for "cash management account" did not automatically entitle applicant to registration of that mark for broader financial services

Finding that the TTAB did not err in determining that the term was generic, citing in part concerns arising from the methodology of the applicant's consumer survey

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

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"