Rise Above Fitness LLC v. Rise Above Performance Training

30 Cited authorities

Star Scientific v. R.J. Tobacco
537 F.3d 1357 (Fed. Cir. 2008) Cited 391 times 8 Legal Analyses
Holding that intent may be proven circumstantially, "[b]ut such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement"
Starbucks v. Wolfe's Borough
588 F.3d 97 (2d Cir. 2009) Cited 276 times 2 Legal Analyses
Holding that § 1125 claim requires same showing under Polaroid factors
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
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"
On-Line Careline, Inc. v. America Online
229 F.3d 1080 (Fed. Cir. 2000) Cited 76 times
Applying Recot in analyzing the similarity of services
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.”
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"
Citigroup Inc. v. Capital City Bank Group
637 F.3d 1344 (Fed. Cir. 2011) Cited 27 times 3 Legal Analyses
Considering "corporate studies tracking awareness of the CITIBANK mark"
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"
Rule 36 - Requests for Admission
Fed. R. Civ. P. 36 Cited 6,145 times 12 Legal Analyses
Noting that facts admitted pursuant to a Rule 36 discovery request are "conclusively established unless the court, on motion, permits the admission to be withdrawn or amended"
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,806 times 124 Legal Analyses
Requiring a filing of a Statement of Use to register a mark
Section 1127 - Construction and definitions; intent of chapter
15 U.S.C. § 1127 Cited 2,954 times 96 Legal Analyses
Granting standing under § 1114 to the legal representative of the registrant of a trademark
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,585 times 272 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 1064 - Cancellation of registration
15 U.S.C. § 1064 Cited 888 times 48 Legal Analyses
Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services
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"

Rise Above Fitness LLC v. Rise Above Performance Training

30 Cited authorities

Holding that intent may be proven circumstantially, "[b]ut such evidence must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement"

Holding that § 1125 claim requires same showing under Polaroid factors

Holding that an applicant commits fraud when it knowingly makes false, material representations of fact with an intent to deceive the PTO

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"

Applying Recot in analyzing the similarity of services

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

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"

Considering "corporate studies tracking awareness of the CITIBANK mark"

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

Noting that facts admitted pursuant to a Rule 36 discovery request are "conclusively established unless the court, on motion, permits the admission to be withdrawn or amended"

Requiring a filing of a Statement of Use to register a mark

Granting standing under § 1114 to the legal representative of the registrant of a trademark

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"

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

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"