Omega S.A. (Omega AG) (Omega Ltd.) v. Alliant Techsystems Inc.

21 Cited authorities

In re Bose Corp.
580 F.3d 1240 (Fed. Cir. 2009) Cited 161 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 104 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 188 times 30 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 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"
Cunningham v. Laser Golf Corp.
222 F.3d 943 (Fed. Cir. 2000) Cited 72 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"
National Cable Television v. Am. Cinema
937 F.2d 1572 (Fed. Cir. 1991) Cited 82 times
Rejecting contention that “American Cinema Editors” did not have trademark rights in the acronym “ACE”
Recot, Inc. v. Becton
214 F.3d 1322 (Fed. Cir. 2000) Cited 56 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
In re Nat. Data Corp.
753 F.2d 1056 (Fed. Cir. 1985) Cited 70 times 1 Legal Analyses
Holding that a "likelihood of confusion cannot be predicated on dissection of a mark"
Bose Corp. v. QSC Audio Products, Inc.
293 F.3d 1367 (Fed. Cir. 2002) Cited 34 times 2 Legal Analyses
In Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1375 (Fed.Cir.2002), this court held that the marks WAVE and ACOUSTIC WAVE have trademark strength independent of the Bose “house mark,” although the marks appear in the same sales literature.
Kenner Parker Toys v. Rose Art Industries
963 F.2d 350 (Fed. Cir. 1992) Cited 49 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
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,585 times 271 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 1068 - Action of Director in interference, opposition, and proceedings for concurrent use registration or for cancellation
15 U.S.C. § 1068 Cited 25 times 3 Legal Analyses
Stating that, in such proceedings, the Patent and Trademark Office may "modify the application or registration by limiting the goods or services specified therein"

Omega S.A. (Omega AG) (Omega Ltd.) v. Alliant Techsystems Inc.

21 Cited authorities

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

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"

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"

Rejecting contention that “American Cinema Editors” did not have trademark rights in the acronym “ACE”

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 a "likelihood of confusion cannot be predicated on dissection of a mark"

In Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1375 (Fed.Cir.2002), this court held that the marks WAVE and ACOUSTIC WAVE have trademark strength independent of the Bose “house mark,” although the marks appear in the same sales literature.

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

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"

Stating that, in such proceedings, the Patent and Trademark Office may "modify the application or registration by limiting the goods or services specified therein"