Paul David Marotta

20 Cited authorities

Miller Brewing Co. v. G. Heileman Brewing Co.
561 F.2d 75 (7th Cir. 1977) Cited 157 times 1 Legal Analyses
Holding that "light" and "lite" are generic adjectives for beer and opining that "[o]therwise a manufacturer could remove a common descriptive word from the public domain by investing his goods with an additional quality, thus gaining the exclusive right to call his wine `rose,' his whisky `blended,' or his bread `white'"
In re Cordua Rests., Inc.
823 F.3d 594 (Fed. Cir. 2016) Cited 30 times 7 Legal Analyses
Holding that certain words referring to key aspects of a genus of services were generic for those services
In re Merrill Lynch, Pierce, Fenner, Smith
828 F.2d 1567 (Fed. Cir. 1987) Cited 58 times 4 Legal Analyses
Holding applicant's incontestable registration of a service mark for "cash management account" did not automatically entitle applicant to registration of that mark for broader financial services
In re Hotels.com
573 F.3d 1300 (Fed. Cir. 2009) Cited 23 times 4 Legal Analyses
Finding that the TTAB did not err in determining that the term was generic, citing in part concerns arising from the methodology of the applicant's consumer survey
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 Nett Designs, Inc.
236 F.3d 1339 (Fed. Cir. 2001) Cited 28 times
Finding that prior registrations of marks including the term ULTIMATE "do not conclusively rebut the Board's finding that ULTIMATE is descriptive in the context of this mark"
Yamaha Intern. Corp. v. Hoshino Gakki Co.
840 F.2d 1572 (Fed. Cir. 1988) Cited 46 times 2 Legal Analyses
Finding secondary meaning for shape of guitar head always appearing in advertising and promotional literature
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"
H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc.
782 F.2d 987 (Fed. Cir. 1986) Cited 46 times 8 Legal Analyses
Reversing decision of TTAB that "Fire Chief," as applied to monthly magazine circulated to fire departments, was generic
In re Reed
482 F.3d 1376 (Fed. Cir. 2007) Cited 14 times 2 Legal Analyses
Holding that the Board properly considered websites containing "lawyer.com" or "lawyers.com" in their domain names to determine what the relevant public would understand LAWYERS.COM to mean
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,610 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"

Paul David Marotta

20 Cited authorities

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

Holding applicant's incontestable registration of a service mark for "cash management account" did not automatically entitle applicant to registration of that mark for broader financial services

Finding that the TTAB did not err in determining that the term was generic, citing in part concerns arising from the methodology of the applicant's consumer survey

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

Finding that prior registrations of marks including the term ULTIMATE "do not conclusively rebut the Board's finding that ULTIMATE is descriptive in the context of this mark"

Finding secondary meaning for shape of guitar head always appearing in advertising and promotional literature

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"

Reversing decision of TTAB that "Fire Chief," as applied to monthly magazine circulated to fire departments, was generic

Holding that the Board properly considered websites containing "lawyer.com" or "lawyers.com" in their domain names to determine what the relevant public would understand LAWYERS.COM to mean

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"