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Paul S. Doran v. Wet Holdings (Global) Ltd.

91239701 (T.T.A.B. Feb. 25, 2021)
Paul S. Doran v. Wet Holdings (Global) Ltd.

23 Cited authorities

  1. Lexmark Int'l, Inc. v. Static Control Components, Inc.

    572 U.S. 118 (2014)   Cited 3,068 times   74 Legal Analyses
    Holding that the respondent could not "obtain relief" under § 1125 "without evidence of injury proximately caused by [the petitioner's] alleged misrepresentations"

  2. Coach Services, Inc. v. Triumph Learning LLC

    668 F.3d 1356 (Fed. Cir. 2012)   Cited 109 times   4 Legal Analyses
    Holding that it is the opposer's burden to prove fame of its mark

  3. In re E. I. DuPont DeNemours & Co.

    476 F.2d 1357 (C.C.P.A. 1973)   Cited 190 times   33 Legal Analyses
    Reciting thirteen factors to be considered, referred to as "DuPont factors"

  4. 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"

  5. Cunningham v. Laser Golf Corp.

    222 F.3d 943 (Fed. Cir. 2000)   Cited 75 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"

  6. In re Viterra Inc.

    671 F.3d 1358 (Fed. Cir. 2012)   Cited 26 times   3 Legal Analyses
    Holding that "any minor differences in the sound of [X–Seed and XCEED marks for agricultural seeds] may go undetected by consumers and, therefore, would not be sufficient to distinguish the marks"

  7. Australian Therapeutic Supplies Pty. v. Naked TM, LLC

    965 F.3d 1370 (Fed. Cir. 2020)   Cited 12 times   1 Legal Analyses
    Concluding that a petitioner did not have a valid cause of action because it was precluded by a prior settlement agreement

  8. Corcamore, LLC v. SFM, LLC

    978 F.3d 1298 (Fed. Cir. 2020)   Cited 10 times   3 Legal Analyses
    Holding that Lexmark controls the statutory cause of action analysis under § 1064

  9. Cai v. Diamond Hong, Inc.

    901 F.3d 1367 (Fed. Cir. 2018)   Cited 10 times

    2018-1688 08-27-2018 ZHENG CAI, DBA Tai Chi Green Tea Inc., Appellant v. DIAMOND HONG, INC., Appellee Zheng Cai, Vernon Hills, IL, pro se. Jonathan E. Moskin, Foley & Lardner LLP, New York, NY, for appellee. Also represented by Diane Grace Elder, Chicago, IL. Wallach, Circuit Judge. Zheng Cai, Vernon Hills, IL, pro se. Jonathan E. Moskin, Foley & Lardner LLP, New York, NY, for appellee. Also represented by Diane Grace Elder, Chicago, IL. Before Prost, Chief Judge, Wallach and Hughes, Circuit Judges

  10. Century 21 Real Estate Corp. v. Century Life of America

    970 F.2d 874 (Fed. Cir. 1992)   Cited 39 times
    Finding similarity between "CENTURY 21" and "CENTURY LIFE OF AMERICA" in part because "consumers must first notice th[e] identical lead word"

  11. Section 1051 - Application for registration; verification

    15 U.S.C. § 1051   Cited 3,911 times   126 Legal Analyses
    Requiring a filing of a Statement of Use to register a mark

  12. Section 1052 - Trademarks registrable on principal register; concurrent registration

    15 U.S.C. § 1052   Cited 1,608 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"

  13. Section 1064 - Cancellation of registration

    15 U.S.C. § 1064   Cited 926 times   51 Legal Analyses
    Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services

  14. Section 1063 - Opposition to registration

    15 U.S.C. § 1063   Cited 148 times   19 Legal Analyses
    Identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"

  15. 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"

  16. Section 2.121 - Assignment of times for taking testimony and presenting evidence

    37 C.F.R. § 2.121   Cited 6 times

    (a) The Trademark Trial and Appeal Board will issue a trial order setting a deadline for each party's required pretrial disclosures and assigning to each party its time for taking testimony and presenting evidence ("testimony period"). No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. The deadlines for pretrial disclosures and the testimony periods