Ibrahim M. Nasser v. Kevin A. Broten

23 Cited authorities

Lexmark Int'l, Inc. v. Static Control Components, Inc.
572 U.S. 118 (2014) Cited 3,116 times 74 Legal Analyses
Holding that the respondent could not "obtain relief" under § 1125 "without evidence of injury proximately caused by [the petitioner's] alleged misrepresentations"
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 194 times 33 Legal Analyses
Reciting thirteen factors to be considered, referred to as "DuPont factors"
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"
Australian Therapeutic Supplies Pty. v. Naked TM, LLC
965 F.3d 1370 (Fed. Cir. 2020) Cited 12 times 1 Legal Analyses
Concluding that a petitioner did not have a valid cause of action because it was precluded by a prior settlement agreement
Corcamore, LLC v. SFM, LLC
978 F.3d 1298 (Fed. Cir. 2020) Cited 10 times 3 Legal Analyses
Holding that Lexmark controls the statutory cause of action analysis under § 1064
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 15 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 1125 - False designations of origin, false descriptions, and dilution forbidden
15 U.S.C. § 1125 Cited 15,947 times 330 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 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,922 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 1,616 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"
Section 1057 - Certificates of registration
15 U.S.C. § 1057 Cited 1,057 times 5 Legal Analyses
Providing that a certificate of registration is prima facie evidence of an owner's right to use the mark
Rule 603 - Oath or Affirmation to Testify Truthfully
Fed. R. Evid. 603 Cited 161 times
Setting out the oath requirement
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"
Section 2.122 - Matters in evidence
37 C.F.R. § 2.122 Cited 24 times 1 Legal Analyses
Providing that in inter partes proceeding, "[t]he allegation in an application for registration, or in a registration, of a date of use is not evidence on behalf of the applicant or registrant" but, rather, "a date of use of a mark must be established by competent evidence"

Ibrahim M. Nasser v. Kevin A. Broten

23 Cited authorities

Holding that the respondent could not "obtain relief" under § 1125 "without evidence of injury proximately caused by [the petitioner's] alleged misrepresentations"

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"

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"

Concluding that a petitioner did not have a valid cause of action because it was precluded by a prior settlement agreement

Holding that Lexmark controls the statutory cause of action analysis under § 1064

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"

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

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"

Providing that a certificate of registration is prima facie evidence of an owner's right to use the mark

Setting out the oath requirement

Identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"

Providing that in inter partes proceeding, "[t]he allegation in an application for registration, or in a registration, of a date of use is not evidence on behalf of the applicant or registrant" but, rather, "a date of use of a mark must be established by competent evidence"