McDonald's Corp. v. McSweet, LLC

29 Cited authorities

AM General Corp. v. DaimlerChrysler Corp.
311 F.3d 796 (7th Cir. 2002) Cited 279 times
Noting that a trademark owner can “ ‘tolerate de minimis or low level infringements' and still have the right to ‘act promptly’ ”
Avery Dennison Corp. v. Sumpton
189 F.3d 868 (9th Cir. 1999) Cited 186 times 1 Legal Analyses
Holding that the defendants did not make commercial use of the plaintiffs' registered trademarks because they "[did] not use trademarks qua trademarks," but instead "use[d] words that happen to be trademarks for their non-trademark value"
Union Carbide Corp. v. Ever-Ready Inc.
531 F.2d 366 (7th Cir. 1976) Cited 309 times
Holding that the defendants' suddenly changing the name of one of its own products to include the plaintiff's mark created confusion and defeated a laches defense even after the defendants had been distributing the plaintiff's products that were labeled with that mark for nineteen years
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 191 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 73 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"
On-Line Careline, Inc. v. America Online
229 F.3d 1080 (Fed. Cir. 2000) Cited 77 times
Applying Recot in analyzing the similarity of services
Recot, Inc. v. Becton
214 F.3d 1322 (Fed. Cir. 2000) Cited 57 times
Holding that the Board legally erred in not according sufficient weight to evidence of a mark's fame in a likelihood of confusion analysis, vacating, and remanding for further consideration
L.D. Kichler Co. v. Davoil, Inc.
192 F.3d 1349 (Fed. Cir. 1999) Cited 52 times
Holding that “any” use by third parties does not preclude an applicant's use from being substantially exclusive
Stone Lion Capital Partners, L.P. v. Lion Capital LLP
746 F.3d 1317 (Fed. Cir. 2014) Cited 26 times
Reviewing the weight given to the similarity-of-the-marks factor for legal error
Rule 30 - Depositions by Oral Examination
Fed. R. Civ. P. 30 Cited 17,073 times 136 Legal Analyses
Upholding a district court's decision not to consider the plaintiff's deposition errata sheets in opposition to a motion for summary judgment when they were untimely
Section 1125 - False designations of origin, false descriptions, and dilution forbidden
15 U.S.C. § 1125 Cited 15,876 times 329 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 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"

McDonald's Corp. v. McSweet, LLC

29 Cited authorities

Noting that a trademark owner can “ ‘tolerate de minimis or low level infringements' and still have the right to ‘act promptly’ ”

Holding that the defendants did not make commercial use of the plaintiffs' registered trademarks because they "[did] not use trademarks qua trademarks," but instead "use[d] words that happen to be trademarks for their non-trademark value"

Holding that the defendants' suddenly changing the name of one of its own products to include the plaintiff's mark created confusion and defeated a laches defense even after the defendants had been distributing the plaintiff's products that were labeled with that mark for nineteen years

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"

Applying Recot in analyzing the similarity of services

Holding that the Board legally erred in not according sufficient weight to evidence of a mark's fame in a likelihood of confusion analysis, vacating, and remanding for further consideration

Holding that “any” use by third parties does not preclude an applicant's use from being substantially exclusive

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

Upholding a district court's decision not to consider the plaintiff's deposition errata sheets in opposition to a motion for summary judgment when they were untimely

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

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"