Joe Van Gogh, Inc. v. Vincent Van Gogh Cafe, LLC

26 Cited authorities

Lexmark Int'l, Inc. v. Static Control Components, Inc.
572 U.S. 118 (2014) Cited 3,068 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"
Brookfield Communications, Inc. v. West Coast Entertainment Corp.
174 F.3d 1036 (9th Cir. 1999) Cited 1,116 times 10 Legal Analyses
Holding that use of competitor's trademark in metatags, which are not visible on a website, is actionable under the Lanham Act
Star Scientific v. R.J. Tobacco
537 F.3d 1357 (Fed. Cir. 2008) Cited 398 times 8 Legal Analyses
Holding that intent may be proven circumstantially, "[b]ut such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement"
In re Bose Corp.
580 F.3d 1240 (Fed. Cir. 2009) Cited 175 times 13 Legal Analyses
Holding that an applicant commits fraud when it knowingly makes false, material representations of fact with an intent to deceive the PTO
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
Cunningham v. Laser Golf Corp.
222 F.3d 943 (Fed. Cir. 2000) Cited 75 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"
Herbko Intern., Inc. v. Kappa Books, Inc.
308 F.3d 1156 (Fed. Cir. 2002) Cited 47 times
Explaining that proprietary rights are necessary to show priority of use when petitioning for cancellation under section 2(d)
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.”
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
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
Rule 60 - Relief from a Judgment or Order
Fed. R. Civ. P. 60 Cited 55,913 times 153 Legal Analyses
Granting relief from the operation of a judgment
Rule 36 - Requests for Admission
Fed. R. Civ. P. 36 Cited 6,377 times 13 Legal Analyses
Noting that facts admitted pursuant to a Rule 36 discovery request are "conclusively established unless the court, on motion, permits the admission to be withdrawn or amended"
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,911 times 126 Legal Analyses
Requiring a filing of a Statement of Use to register a mark
Section 1063 - Opposition to registration
15 U.S.C. § 1063 Cited 148 times 19 Legal Analyses
Identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"
Section 2.120 - Discovery
37 C.F.R. § 2.120 Cited 23 times 5 Legal Analyses
Providing that the TTAB "in its discretion, may refuse to consider the additional written disclosures or responses"
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"

Joe Van Gogh, Inc. v. Vincent Van Gogh Cafe, LLC

26 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 use of competitor's trademark in metatags, which are not visible on a website, is actionable under the Lanham Act

Holding that intent may be proven circumstantially, "[b]ut such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement"

Holding that an applicant commits fraud when it knowingly makes false, material representations of fact with an intent to deceive the PTO

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

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"

Explaining that proprietary rights are necessary to show priority of use when petitioning for cancellation under section 2(d)

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

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

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

Granting relief from the operation of a judgment

Noting that facts admitted pursuant to a Rule 36 discovery request are "conclusively established unless the court, on motion, permits the admission to be withdrawn or amended"

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

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

Providing that the TTAB "in its discretion, may refuse to consider the additional written disclosures or responses"

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"