Ocean Technology, Inc.

22 Cited authorities

America Online, Inc. v. AT&T Corp.
243 F.3d 812 (4th Cir. 2001) Cited 92 times
Holding that trademark "registrant obtains prima facie evidence that its mark is not generic in the eyes of the relevant public, and that its mark is not merely descriptive, but at a minimum is descriptive and has obtained secondary meaning"
Star Fruits S.N.C. v. U.S.
393 F.3d 1277 (Fed. Cir. 2005) Cited 52 times 3 Legal Analyses
Upholding examiner demand, under 37 C.F.R. § 1.105, for “information that the applicant is in the best position to most cheaply provide”
Princeton Vanguard, LLC v. Frito-Lay North America, Inc.
786 F.3d 960 (Fed. Cir. 2015) Cited 30 times 5 Legal Analyses
Explaining that although the "Board is not required to discuss every piece of evidence," it cannot "disregard [evidence] without explanation" or "short-cut its consideration of the factual record before it"
In re Cordua Rests., Inc.
823 F.3d 594 (Fed. Cir. 2016) Cited 25 times 7 Legal Analyses
Holding that certain words referring to key aspects of a genus of services were generic for those services
Cosmetically Sealed Industries, Inc. v. Chesebrough-Pond's USA Co.
125 F.3d 28 (2d Cir. 1997) Cited 51 times
Holding that phrase "Sealed With a Kiss" was a non-trademark, descriptive use because it conveyed an instruction
Duopross Meditech Corp. v. Inviro Med. Devices, Ltd.
695 F.3d 1247 (Fed. Cir. 2012) Cited 24 times 4 Legal Analyses
Holding that, although the Board may "ascertain the meaning and weight of each of the components that makes up the mark," it "ultimately must consider the mark as a whole and do so in the context of the goods or services at issue"
In re Steelbuilding.com
415 F.3d 1293 (Fed. Cir. 2005) Cited 26 times 2 Legal Analyses
Affirming the refusal of the Patent and Trademark Office to register the mark STEELBUILDING.COM, because the mark was descriptive of online services for the design of steel buildings, and lacked secondary meaning
In re Northland Aluminum Products, Inc.
777 F.2d 1556 (Fed. Cir. 1985) Cited 49 times
Holding "[e]vidence of the public's understanding of term," for purposes of establishing if mark is descriptive, "may be obtained from any competent source, including .^.^. dictionaries"
In re Boston Beer Co. Ltd. Partnership
198 F.3d 1370 (Fed. Cir. 1999) Cited 14 times 1 Legal Analyses
Holding that the claim "The Best Beer in America" amounted to mere puffery
In re Chemical Dynamics, Inc.
839 F.2d 1569 (Fed. Cir. 1988) Cited 14 times
Concluding that generalized sales and advertising figures do not establish secondary meaning where the alleged mark is not promoted by itself but instead as part of a larger mark or with other designs or marks
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,806 times 124 Legal Analyses
Requiring a filing of a Statement of Use to register a mark
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,585 times 272 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 1053 - Service marks registrable
15 U.S.C. § 1053 Cited 99 times 1 Legal Analyses
Applying same requirement to registration of service marks
Section 2.61 - Action by examiner
37 C.F.R. § 2.61 Cited 6 times 3 Legal Analyses
(a) Applications for registration, including amendments to allege use under section 1(c) of the Act, and statements of use under section 1(d) of the Act, will be examined and, if the applicant is found not entitled to registration for any reason, applicant will be notified and advised of the reasons therefor and of any formal requirements or objections. (b) The Office may require the applicant to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may

Ocean Technology, Inc.

22 Cited authorities

Holding that trademark "registrant obtains prima facie evidence that its mark is not generic in the eyes of the relevant public, and that its mark is not merely descriptive, but at a minimum is descriptive and has obtained secondary meaning"

Upholding examiner demand, under 37 C.F.R. § 1.105, for “information that the applicant is in the best position to most cheaply provide”

Explaining that although the "Board is not required to discuss every piece of evidence," it cannot "disregard [evidence] without explanation" or "short-cut its consideration of the factual record before it"

Holding that certain words referring to key aspects of a genus of services were generic for those services

Holding that phrase "Sealed With a Kiss" was a non-trademark, descriptive use because it conveyed an instruction

Holding that, although the Board may "ascertain the meaning and weight of each of the components that makes up the mark," it "ultimately must consider the mark as a whole and do so in the context of the goods or services at issue"

Affirming the refusal of the Patent and Trademark Office to register the mark STEELBUILDING.COM, because the mark was descriptive of online services for the design of steel buildings, and lacked secondary meaning

Holding "[e]vidence of the public's understanding of term," for purposes of establishing if mark is descriptive, "may be obtained from any competent source, including .^.^. dictionaries"

Holding that the claim "The Best Beer in America" amounted to mere puffery

Concluding that generalized sales and advertising figures do not establish secondary meaning where the alleged mark is not promoted by itself but instead as part of a larger mark or with other designs or marks

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

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"

Applying same requirement to registration of service marks