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New Jersey Turnpike Authority v. Boardwalk Pizza, Inc.

No. 92059657 (T.T.A.B. May. 15, 2018)
New Jersey Turnpike Authority v. Boardwalk Pizza, Inc.

39 Cited authorities

  1. Starbucks v. Wolfe's Borough

    588 F.3d 97 (2d Cir. 2009)   Cited 287 times   2 Legal Analyses
    Holding that § 1125 claim requires same showing under Polaroid factors

  2. 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

  3. Sweats Fashions v. Pannill Knitting Co.

    833 F.2d 1560 (Fed. Cir. 1987)   Cited 163 times
    Finding that, on review of a grant of summary judgment in a USPTO opposition proceeding, "[opposer] would have us infer bad faith because of [registrant's] awareness of [opposer's] marks. However, an inference of 'bad faith' requires something more than mere knowledge of a prior similar mark. That is all the record here shows."

  4. 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"

  5. 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"

  6. 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

  7. 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"

  8. 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"

  9. 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.”

  10. 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

  11. Section 1051 - Application for registration; verification

    15 U.S.C. § 1051   Cited 3,886 times   126 Legal Analyses
    Requiring a filing of a Statement of Use to register a mark

  12. Section 1127 - Construction and definitions; intent of chapter

    15 U.S.C. § 1127   Cited 3,016 times   98 Legal Analyses
    Granting standing under § 1114 to the legal representative of the registrant of a trademark

  13. Section 1115 - Registration on principal register as evidence of exclusive right to use mark; defenses

    15 U.S.C. § 1115   Cited 1,952 times   34 Legal Analyses
    Providing that registration of a mark "shall be prima facie evidence of the validity of the registered mark" but "shall not preclude another person from proving any legal or equitable defense or defect"

  14. Section 1064 - Cancellation of registration

    15 U.S.C. § 1064   Cited 918 times   50 Legal Analyses
    Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services

  15. Section 1071 - Appeal to courts

    15 U.S.C. § 1071   Cited 407 times   59 Legal Analyses
    Granting a right of appeal only to parties "dissatisfied with the decision" of the Board

  16. Section 1063 - Opposition to registration

    15 U.S.C. § 1063   Cited 147 times   19 Legal Analyses
    Identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"

  17. Section 27:23-5 - General grant of powers

    N.J. Stat. § 27:23-5   Cited 37 times

    The authority shall be a body corporate and politic and shall have perpetual succession and shall have the following powers: (a) To adopt bylaws for the regulation of its affairs and the conduct of its business; (b) To adopt an official seal and alter the same at pleasure; (c) To maintain an office at such place or places within the State as it may designate and to organize itself into such sub-departments, operating divisions or units as it deems appropriate; (d) To sue and be sued in its own name;

  18. Section 27:23-1 - Transportation projects

    N.J. Stat. § 27:23-1   Cited 32 times
    Authorizing NJTA

  19. Section 1152 - Clearinghouse for technical information; removal of security classification

    15 U.S.C. § 1152   Cited 3 times   1 Legal Analyses

    The Secretary of Commerce (hereinafter referred to as the "Secretary") is directed to establish and maintain within the Department of Commerce a clearinghouse for the collection and dissemination of scientific, technical, and engineering information, and to this end to take such steps as he may deem necessary and desirable- (a) To search for, collect, classify, coordinate, integrate, record, and catalog such information from whatever sources, foreign and domestic, that may be available; (b) To make

  20. Section 27:23-5.9 - Limitations relative to a transportation project

    N.J. Stat. § 27:23-5.9   Cited 1 times

    The authority shall not engage in the acquisition, construction or operation of any facility or activity not directly or indirectly related to the use of a transportation project except as may be specially authorized by law. N.J.S. § 27:23-5.9 Amended by L. 2003, c. 79, s. 15, effective on the transfer date of functions of the New Jersey Highway Authority to the New Jersey Turnpike Authority. L.1969, c.197, s.2; amended 1991, c.183, s.12.

  21. 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"

  22. 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"