Hormel Foods Corporation and Hormel Foods, LLC v. Spam Arrest, LLC

19 Cited authorities

Moseley v. Secret Catalogue, Inc.
537 U.S. 418 (2003) Cited 252 times 9 Legal Analyses
Holding that such evidence is sufficient to meet the heightened standard of actual dilution
Sporty's Farm L.L.C. v. Sportsman's Mar., Inc.
202 F.3d 489 (2d Cir. 2000) Cited 225 times
Holding that an injunction requiring the defendant to relinquish a domain name it registered because the defendant's registration of the domain name violated the ACPA was not impermissibly retroactive since the injunction provided only prospective relief
TCPIP Holding Co., Inc. v. Haar Communications, Inc.
244 F.3d 88 (2d Cir. 2001) Cited 208 times
Holding that trademark holder's annual sales of $280 million were not enough to constitute fame
In re E. I. DuPont DeNemours & Co.
476 F.2d 1357 (C.C.P.A. 1973) Cited 190 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 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"
Cunningham v. Laser Golf Corp.
222 F.3d 943 (Fed. Cir. 2000) Cited 74 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"
National Cable Television v. Am. Cinema
937 F.2d 1572 (Fed. Cir. 1991) Cited 83 times
Rejecting contention that “American Cinema Editors” did not have trademark rights in the acronym “ACE”
Kenner Parker Toys v. Rose Art Industries
963 F.2d 350 (Fed. Cir. 1992) Cited 51 times
Holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks
Hasbro, Inc. v. Clue Computing, Inc.
66 F. Supp. 2d 117 (D. Mass. 1999) Cited 32 times
Finding no similarity between the game CLUE and consulting services offered by Clue Computing even in light of Hasbro's intended use of its web site for technical support of the CD-ROM version of CLUE
Lipton Industries, Inc. v. Ralston Purina
670 F.2d 1024 (C.C.P.A. 1982) Cited 58 times
Holding that admission contained in an answer was binding, despite the fact that it was made "on information and belief"
Rule 15 - Amended and Supplemental Pleadings
Fed. R. Civ. P. 15 Cited 94,831 times 92 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 1125 - False designations of origin, false descriptions, and dilution forbidden
15 U.S.C. § 1125 Cited 15,774 times 327 Legal Analyses
Holding "the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional"
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,605 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"

Hormel Foods Corporation and Hormel Foods, LLC v. Spam Arrest, LLC

19 Cited authorities

Holding that such evidence is sufficient to meet the heightened standard of actual dilution

Holding that an injunction requiring the defendant to relinquish a domain name it registered because the defendant's registration of the domain name violated the ACPA was not impermissibly retroactive since the injunction provided only prospective relief

Holding that trademark holder's annual sales of $280 million were not enough to constitute fame

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"

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

Holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks

Finding no similarity between the game CLUE and consulting services offered by Clue Computing even in light of Hasbro's intended use of its web site for technical support of the CD-ROM version of CLUE

Holding that admission contained in an answer was binding, despite the fact that it was made "on information and belief"

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

Holding "the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional"

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"