FY Assets LLC

17 Cited authorities

B&B Hardware, Inc. v. Hargis Indus., Inc.
575 U.S. 138 (2015) Cited 262 times 7 Legal Analyses
Holding proceeding before the PTO's Trademark Trial and Appeal Board can have preclusive effect
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
In re E. I. DuPont DeNemours & Co.
476 F.2d 1357 (C.C.P.A. 1973) Cited 193 times 33 Legal Analyses
Reciting thirteen factors to be considered, referred to as "DuPont factors"
Herbko Intern., Inc. v. Kappa Books, Inc.
308 F.3d 1156 (Fed. Cir. 2002) Cited 47 times
Explaining that proprietary rights are necessary to show priority of use when petitioning for cancellation under section 2(d)
Stone Lion Capital Partners, L.P. v. Lion Capital LLP
746 F.3d 1317 (Fed. Cir. 2014) Cited 26 times
Affirming TTAB's finding that the mark STONE LION CAPITAL was similar to the marks LION CAPITAL and LION, finding that little weight should be accorded to the addition of "Stone" because it did not distinguish the marks in the context of the parties' services
In re Detroit Athletic Co.
903 F.3d 1297 (Fed. Cir. 2018) Cited 18 times
Finding "the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first"
In re I.Am.Symbolic, LLC
866 F.3d 1315 (Fed. Cir. 2017) Cited 18 times
Finding that the similarity of the marks weighed heavily in favor of a likelihood of confusion
In re Chatam International Inc.
380 F.3d 1340 (Fed. Cir. 2004) Cited 24 times 1 Legal Analyses
Holding that appellant's JOSE GASPAR GOLD mark is "nearly identical" to registrant's GASPAR'S ALE mark once the descriptive and non-dominant terms JOSE, GOLD and ALE are properly discounted
In re Guild Mortg. Co.
No. 2017-2620 (Fed. Cir. Jan. 14, 2019) Cited 8 times 1 Legal Analyses
Vacating the Board's decision and remanding for the Board to reconsider one of the DuPont factors and "to reconsider its likelihood of confusion determination in the first instance in light of all the evidence"
M2 Software, Inc. v. M2 Communications, Inc.
450 F.3d 1378 (Fed. Cir. 2006) Cited 14 times 2 Legal Analyses
Upholding board's finding of no likelihood of confusion between marks after finding that parties' multimedia CD-Roms were not similar and had different channels of trade; one party's product was used strictly in the film and music industries and the other's was used in the fields of pharmacy and medicine.
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,921 times 127 Legal Analyses
Requiring a filing of a Statement of Use to register a mark
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"

FY Assets LLC

17 Cited authorities

Holding proceeding before the PTO's Trademark Trial and Appeal Board can have preclusive effect

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

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

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

Affirming TTAB's finding that the mark STONE LION CAPITAL was similar to the marks LION CAPITAL and LION, finding that little weight should be accorded to the addition of "Stone" because it did not distinguish the marks in the context of the parties' services

Finding "the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first"

Finding that the similarity of the marks weighed heavily in favor of a likelihood of confusion

Holding that appellant's JOSE GASPAR GOLD mark is "nearly identical" to registrant's GASPAR'S ALE mark once the descriptive and non-dominant terms JOSE, GOLD and ALE are properly discounted

Vacating the Board's decision and remanding for the Board to reconsider one of the DuPont factors and "to reconsider its likelihood of confusion determination in the first instance in light of all the evidence"

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

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"