Principle Business Enterprises, Inc. v. DML Marketing Group, Ltd.

27 Cited authorities

In re E. I. DuPont DeNemours & Co.
476 F.2d 1357 (C.C.P.A. 1973) Cited 190 times 32 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 74 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"
Juice Generation, Inc. v. GS Enterprises LLC
794 F.3d 1334 (Fed. Cir. 2015) Cited 28 times 2 Legal Analyses
Determining that TTAB failed to adequately account for evidence of "a fair number of third-party uses" of similar marks by discounting the evidence for lack of "specifics regarding the extent of sales or promotional efforts surrounding the third-party marks"
Herbko Intern., Inc. v. Kappa Books, Inc.
308 F.3d 1156 (Fed. Cir. 2002) Cited 45 times
Explaining that proprietary rights are necessary to show priority of use when petitioning for cancellation under section 2(d)
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.”
Stone Lion Capital Partners, L.P. v. Lion Capital LLP
746 F.3d 1317 (Fed. Cir. 2014) Cited 25 times
Reviewing the weight given to the similarity-of-the-marks factor for legal error
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"
In re I.Am.Symbolic, LLC
866 F.3d 1315 (Fed. Cir. 2017) Cited 17 times
Finding that the similarity of the marks weighed heavily in favor of a likelihood of confusion
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.
797 F.3d 1363 (Fed. Cir. 2015) Cited 17 times 4 Legal Analyses
Holding that the Board erred in giving little weight to evidence of registered third-party marks in actual use
Section 1064 - Cancellation of registration
15 U.S.C. § 1064 Cited 918 times 50 Legal Analyses
Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services
Section 1058 - Duration, affidavits and fees
15 U.S.C. § 1058 Cited 242 times 25 Legal Analyses
Providing a ten-year duration for registered marks
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"

Principle Business Enterprises, Inc. v. DML Marketing Group, Ltd.

27 Cited authorities

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"

Determining that TTAB failed to adequately account for evidence of "a fair number of third-party uses" of similar marks by discounting the evidence for lack of "specifics regarding the extent of sales or promotional efforts surrounding the third-party marks"

Explaining that proprietary rights are necessary to show priority of use when petitioning for cancellation under section 2(d)

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

Reviewing the weight given to the similarity-of-the-marks factor for legal error

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"

Finding that the similarity of the marks weighed heavily in favor of a likelihood of confusion

Holding that the Board erred in giving little weight to evidence of registered third-party marks in actual use

Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services

Providing a ten-year duration for registered marks

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