JIPC Management, Inc. v. Incredible Pizza Co., Inc.

39 Cited authorities

Parklane Hosiery Co. v. Shore
439 U.S. 322 (1979) Cited 4,251 times 8 Legal Analyses
Holding that district courts have discretion to refuse to apply offensive non-mutual collateral estoppel against a defendant if such an application of the doctrine would be unfair
Morris v. Jones
329 U.S. 545 (1947) Cited 266 times
Holding that a default judgment constitutes a decision on the merits for res judicata purposes
Coach Services, Inc. v. Triumph Learning LLC
668 F.3d 1356 (Fed. Cir. 2012) Cited 104 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 188 times 30 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"
Jet, Inc. v. Sewage Aeration Systems
223 F.3d 1360 (Fed. Cir. 2000) Cited 78 times 2 Legal Analyses
Concluding that the same cause of action can exist in two cases only where the same set of transactional facts are involved in those cases and that, where the transactional facts differ, the doctrine of claim preclusion does not apply
Juice Generation, Inc. v. GS Enterprises LLC
794 F.3d 1334 (Fed. Cir. 2015) Cited 28 times 2 Legal Analyses
Determining that TTAB failed to adequately account for evidence of "a fair number of third-party uses" of similar marks by discounting the evidence for lack of "specifics regarding the extent of sales or promotional efforts surrounding the third-party marks"
Ritchie v. Simpson
170 F.3d 1092 (Fed. Cir. 1999) Cited 48 times 1 Legal Analyses
Finding “real interest” is shown by “a direct and personal stake in the outcome” or a “legitimate personal interest.”
Stone Lion Capital Partners, L.P. v. Lion Capital LLP
746 F.3d 1317 (Fed. Cir. 2014) Cited 24 times
Reviewing the weight given to the similarity-of-the-marks factor for legal error
In re Viterra Inc.
671 F.3d 1358 (Fed. Cir. 2012) Cited 26 times 3 Legal Analyses
Holding that "any minor differences in the sound of [X–Seed and XCEED marks for agricultural seeds] may go undetected by consumers and, therefore, would not be sufficient to distinguish the marks"
Rule 54 - Judgment; Costs
Fed. R. Civ. P. 54 Cited 41,543 times 143 Legal Analyses
Holding party seeking fees may additionally seek "nontaxable expenses"
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,806 times 124 Legal Analyses
Requiring a filing of a Statement of Use to register a mark
Section 1057 - Certificates of registration
15 U.S.C. § 1057 Cited 1,026 times 5 Legal Analyses
Providing that a certificate of registration is prima facie evidence of an owner's right to use the mark
Section 1064 - Cancellation of registration
15 U.S.C. § 1064 Cited 888 times 48 Legal Analyses
Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services
Section 1119 - Power of court over registration
15 U.S.C. § 1119 Cited 810 times 13 Legal Analyses
Granting the court the power in an action involving a registered mark to order the cancellation of a registration
Section 2.122 - Matters in evidence
37 C.F.R. § 2.122 Cited 23 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"

JIPC Management, Inc. v. Incredible Pizza Co., Inc.

39 Cited authorities

Holding that district courts have discretion to refuse to apply offensive non-mutual collateral estoppel against a defendant if such an application of the doctrine would be unfair

Holding that a default judgment constitutes a decision on the merits for res judicata purposes

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"

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"

Concluding that the same cause of action can exist in two cases only where the same set of transactional facts are involved in those cases and that, where the transactional facts differ, the doctrine of claim preclusion does not apply

Determining that TTAB failed to adequately account for evidence of "a fair number of third-party uses" of similar marks by discounting the evidence for lack of "specifics regarding the extent of sales or promotional efforts surrounding the third-party marks"

Finding “real interest” is shown by “a direct and personal stake in the outcome” or a “legitimate personal interest.”

Reviewing the weight given to the similarity-of-the-marks factor for legal error

Holding that "any minor differences in the sound of [X–Seed and XCEED marks for agricultural seeds] may go undetected by consumers and, therefore, would not be sufficient to distinguish the marks"

Holding party seeking fees may additionally seek "nontaxable expenses"

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

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

Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services

Granting the court the power in an action involving a registered mark to order the cancellation of 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"