JKL IP Company, LLC v. C.W.F. Children Worldwide Fashion

21 Cited authorities

Coach Services, Inc. v. Triumph Learning LLC
668 F.3d 1356 (Fed. Cir. 2012) Cited 108 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 190 times 32 Legal Analyses
Reciting thirteen factors to be considered, referred to as "DuPont factors"
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"
Stone Lion Capital Partners, L.P. v. Lion Capital LLP
746 F.3d 1317 (Fed. Cir. 2014) Cited 25 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"
Cerveceria Centroamericana v. Cerveceria
892 F.2d 1021 (Fed. Cir. 1989) Cited 50 times 1 Legal Analyses
Holding that in the absence of evidence of intent to resume use during the period of non-use, the TTAB "may conclude the registrant has . . . failed to rebut the presumption of abandonment," even when there is evidence of intent to resume after the period of nonuse
Del Tabaco v. Gen. Cigar Co.
753 F.3d 1270 (Fed. Cir. 2014) Cited 14 times 5 Legal Analyses
Holding that appellant demonstrated entitlement to a "statutory cause of action" under the Lanham Act
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"
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.
In re St. Helena Hosp.
774 F.3d 747 (Fed. Cir. 2014) Cited 5 times 3 Legal Analyses
Affirming Board's determination that applicant's and registrant's marks have similar connotations where although "the [use] specimens refer to days and minutes, respectively, neither identification specifies a certain period of time or suggests any specific meaning of the word ‘TEN’ or the numeral ‘10’ " present in the applicant's and registrant's marks
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,600 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 1141 - Definitions
15 U.S.C. § 1141 Cited 51 times 2 Legal Analyses
In this subchapter: (1) Basic application The term "basic application" means the application for the registration of a mark that has been filed with an Office of a Contracting Party and that constitutes the basis for an application for the international registration of that mark. (2) Basic registration The term "basic registration" means the registration of a mark that has been granted by an Office of a Contracting Party and that constitutes the basis for an application for the international 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"

JKL IP Company, LLC v. C.W.F. Children Worldwide Fashion

21 Cited authorities

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 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"

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 that in the absence of evidence of intent to resume use during the period of non-use, the TTAB "may conclude the registrant has . . . failed to rebut the presumption of abandonment," even when there is evidence of intent to resume after the period of nonuse

Holding that appellant demonstrated entitlement to a "statutory cause of action" under the Lanham Act

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

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 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"