McDonald's Corporation v. Joel D. Joseph

15 Cited authorities

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"
On-Line Careline, Inc. v. America Online
229 F.3d 1080 (Fed. Cir. 2000) Cited 78 times
Applying Recot in analyzing the similarity of services
Cunningham v. Laser Golf Corp.
222 F.3d 943 (Fed. Cir. 2000) Cited 76 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"
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
Bose Corp. v. QSC Audio Products, Inc.
293 F.3d 1367 (Fed. Cir. 2002) Cited 38 times 2 Legal Analyses
Finding that product marks, ACOUSTIC WAVE and WAVE, were famous in addition to their house mark, BOSE
Kenner Parker Toys v. Rose Art Industries
963 F.2d 350 (Fed. Cir. 1992) Cited 51 times
Holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks
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"
Specialty Brands v. Coffee Bean Distributors
748 F.2d 669 (Fed. Cir. 1984) Cited 48 times
Holding that "[w]hen an opposer's trademark is a strong, famous mark, it can never be of little consequence" in a likelihood-of-confusion analysis
In re Majestic Distilling Co., Inc.
315 F.3d 1311 (Fed. Cir. 2003) Cited 13 times 1 Legal Analyses
Holding that malt liquor and tequila sold under the same mark would cause a likelihood of confusion
King Candy Co. v. Eunice King's Kitchen
496 F.2d 1400 (C.C.P.A. 1974) Cited 8 times
Patent Appeal No. 9245. June 6, 1974. J. Timothy Hobbs, Washington, D.C. (Mason, Fenwick Lawrence, Washington, D.C.), attorney of record, for appellant. William B. Mason, Arlington, Va. (Mason, Mason Albright, Arlington, Va.), attorney of record, for appellee. Appeal from the Trademark Trial and Appeal Board. Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges. MARKEY, Chief Judge. This is an appeal from the decision of the Trademark Trial and Appeal Board, 178 USPQ 121 (1973)
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 1 - Trusts, etc., in restraint of trade illegal; penalty
15 U.S.C. § 1 Cited 3,331 times 80 Legal Analyses
Forbidding every "contract, combination . . . or conspiracy, in restraint of trade or commerce among the several States"
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 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 Corporation v. Joel D. Joseph

15 Cited authorities

Reciting thirteen factors to be considered, referred to as "DuPont factors"

Applying Recot in analyzing the similarity of services

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"

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

Finding that product marks, ACOUSTIC WAVE and WAVE, were famous in addition to their house mark, BOSE

Holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks

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

Holding that "[w]hen an opposer's trademark is a strong, famous mark, it can never be of little consequence" in a likelihood-of-confusion analysis

Holding that malt liquor and tequila sold under the same mark would cause a likelihood of confusion

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

Forbidding every "contract, combination . . . or conspiracy, in restraint of trade or commerce among the several States"

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"