Gilead Sciences, Inc. v. Gilead Capital LP

62 Cited authorities

Daubert v. Merrell Dow Pharmaceuticals, Inc.
509 U.S. 579 (1993) Cited 27,583 times 244 Legal Analyses
Holding that a trial judge must ensure that all admitted expert testimony "is not only relevant, but reliable"
B&B Hardware, Inc. v. Hargis Indus., Inc.
575 U.S. 138 (2015) Cited 265 times 7 Legal Analyses
Holding proceeding before the PTO's Trademark Trial and Appeal Board can have preclusive effect
Squirtco v. Seven-Up Co.
628 F.2d 1086 (8th Cir. 1980) Cited 287 times 2 Legal Analyses
Holding that the failure to make formal findings of fact may be excusable error where the facts are uncontroverted
Union Carbide Corp. v. Ever-Ready Inc.
531 F.2d 366 (7th Cir. 1976) Cited 309 times
Holding that the defendants' suddenly changing the name of one of its own products to include the plaintiff's mark created confusion and defeated a laches defense even after the defendants had been distributing the plaintiff's products that were labeled with that mark for nineteen years
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
James Burrough Ltd. v. Sign of Beefeater, Inc.
540 F.2d 266 (7th Cir. 1976) Cited 246 times 2 Legal Analyses
Finding that a confusion rate of 15% was evidence of more than de minimis confusion
In re E. I. DuPont DeNemours & Co.
476 F.2d 1357 (C.C.P.A. 1973) Cited 195 times 33 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 73 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"
Cunningham v. Laser Golf Corp.
222 F.3d 943 (Fed. Cir. 2000) Cited 77 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"
Hypnotic Hats, Ltd. v. Wintermantel Enters., LLC
335 F. Supp. 3d 566 (S.D.N.Y. 2018) Cited 31 times
Finding that although both parties sell athletic socks, the types of socks as well as the customer bases differ
Rule 702 - Testimony by Expert Witnesses
Fed. R. Evid. 702 Cited 28,221 times 301 Legal Analyses
Adopting the Daubert standard
Rule 403 - Excluding Relevant Evidence for Prejudice, Confusion, Waste of Time, or Other Reasons
Fed. R. Evid. 403 Cited 23,773 times 88 Legal Analyses
Adopting a similar standard, but requiring the probative value to be "substantially outweighed" by these risks
Rule 401 - Test for Relevant Evidence
Fed. R. Evid. 401 Cited 14,202 times 36 Legal Analyses
Stating that evidence is relevant if it has "any tendency to make a fact more or less probable than it would be without the evidence" and "the fact is of consequence in determining the action"
Rule 402 - General Admissibility of Relevant Evidence
Fed. R. Evid. 402 Cited 7,126 times 13 Legal Analyses
Stating that relevant evidence is generally admissible at trial
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,924 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 1,617 times 276 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"

Gilead Sciences, Inc. v. Gilead Capital LP

62 Cited authorities

Holding that a trial judge must ensure that all admitted expert testimony "is not only relevant, but reliable"

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

Holding that the failure to make formal findings of fact may be excusable error where the facts are uncontroverted

Holding that the defendants' suddenly changing the name of one of its own products to include the plaintiff's mark created confusion and defeated a laches defense even after the defendants had been distributing the plaintiff's products that were labeled with that mark for nineteen years

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

Finding that a confusion rate of 15% was evidence of more than de minimis confusion

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"

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"

Finding that although both parties sell athletic socks, the types of socks as well as the customer bases differ

Adopting the Daubert standard

Adopting a similar standard, but requiring the probative value to be "substantially outweighed" by these risks

Stating that evidence is relevant if it has "any tendency to make a fact more or less probable than it would be without the evidence" and "the fact is of consequence in determining the action"

Stating that relevant evidence is generally admissible at trial

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"