Poly-America, L.P. v. API Industries, Inc. API Industries, Inc. v. Poly-America, L.P. [Proceedings Consolidated]

31 Cited authorities

Inwood Laboratories v. Ives Laboratories
456 U.S. 844 (1982) Cited 1,293 times 25 Legal Analyses
Holding that secondary liability for trademark infringement arises when a manufacturer or distributor intentionally induces another to infringe
Traffix Devices, Inc. v. Marketing Displays, Inc.
532 U.S. 23 (2001) Cited 604 times 29 Legal Analyses
Holding that the dual-spring design was not protectable because it had a purpose “beyond serving the purpose of informing consumers that the sign stands are made by” the plaintiff
Park 'N Fly, Inc. v. Dollar Park & Fly, Inc.
469 U.S. 189 (1985) Cited 957 times 7 Legal Analyses
Holding that an incontestable mark cannot be challenged as merely descriptive
Qualitex Co. v. Jacobson Products Co.
514 U.S. 159 (1995) Cited 576 times 51 Legal Analyses
Holding companies may not "inhibit[] legitimate competition" by trademarking desirable features to "put competitors at a significant non-reputation-related disadvantage"
Erbe Elektromedizin GmbH & ERBE USA v. Canady Technology LLC
629 F.3d 1278 (Fed. Cir. 2010) Cited 64 times 1 Legal Analyses
Holding that the color blue for endoscopic probes was functional because its contrast with human tissue made the probe more visible through an endoscopic camera
In re Morton-Norwich Products, Inc.
671 F.2d 1332 (C.C.P.A. 1982) Cited 110 times 2 Legal Analyses
Holding that configuration of "Glass Plus" spray-bottle warranted trademark protection
Valu Engineering, Inc. v. Rexnord Corp.
278 F.3d 1268 (Fed. Cir. 2002) Cited 60 times 4 Legal Analyses
Holding that a consideration in determining whether a particular product feature is functional is the existence of "advertising materials in which the originator of the design touts the design's utilitarian advantages"
In re Int'l Flavors Fragrances Inc.
183 F.3d 1361 (Fed. Cir. 1999) Cited 60 times 4 Legal Analyses
Noting that "[t]he federal registration of a trademark does not create an exclusive property right in the mark."
Princeton Vanguard, LLC v. Frito-Lay North America, Inc.
786 F.3d 960 (Fed. Cir. 2015) Cited 31 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"
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.”
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"
Section 1057 - Certificates of registration
15 U.S.C. § 1057 Cited 1,052 times 5 Legal Analyses
Providing that a certificate of registration is prima facie evidence of an owner's right to use the mark
Section 1091 - Supplemental register
15 U.S.C. § 1091 Cited 80 times
Stating that marks registered on the Supplemental Register "must be capable of distinguishing the applicant's goods or services"
Section 1092 - Publication; not subject to opposition; cancellation
15 U.S.C. § 1092 Cited 21 times
Providing for cancellation of marks on USPTO's Principal and Supplemental Registers
Section 2.116 - Federal Rules of Civil Procedure
37 C.F.R. § 2.116 Cited 50 times
Making the federal rules of civil procedure generally applicable in TTAB proceedings
Section 2.52 - Types of drawings and format for drawings
37 C.F.R. § 2.52 Cited 29 times
Providing rules for applicants “who seek to register words, letters, numbers, or any combination thereof without claim to any particular font style, size, or color”
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"

Poly-America, L.P. v. API Industries, Inc. API Industries, Inc. v. Poly-America, L.P. [Proceedings Consolidated]

31 Cited authorities

Holding that secondary liability for trademark infringement arises when a manufacturer or distributor intentionally induces another to infringe

Holding that the dual-spring design was not protectable because it had a purpose “beyond serving the purpose of informing consumers that the sign stands are made by” the plaintiff

Holding that an incontestable mark cannot be challenged as merely descriptive

Holding companies may not "inhibit[] legitimate competition" by trademarking desirable features to "put competitors at a significant non-reputation-related disadvantage"

Holding that the color blue for endoscopic probes was functional because its contrast with human tissue made the probe more visible through an endoscopic camera

Holding that configuration of "Glass Plus" spray-bottle warranted trademark protection

Holding that a consideration in determining whether a particular product feature is functional is the existence of "advertising materials in which the originator of the design touts the design's utilitarian advantages"

Noting that "[t]he federal registration of a trademark does not create an exclusive property right in the mark."

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"

Finding “real interest” is shown by “a direct and personal stake in the outcome” or a “legitimate personal interest.”

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"

Providing that a certificate of registration is prima facie evidence of an owner's right to use the mark

Stating that marks registered on the Supplemental Register "must be capable of distinguishing the applicant's goods or services"

Providing for cancellation of marks on USPTO's Principal and Supplemental Registers

Making the federal rules of civil procedure generally applicable in TTAB proceedings

Providing rules for applicants “who seek to register words, letters, numbers, or any combination thereof without claim to any particular font style, size, or color”

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"