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Rolex Watch U.S.A., Inc. v. PRL USA Holdings, Inc.

No. 91170868 (T.T.A.B. Jun. 7, 2012)
Rolex Watch U.S.A., Inc. v. PRL USA Holdings, Inc.

21 Cited authorities

  1. Union Carbide Corp. v. Ever-Ready Inc.

    531 F.2d 366 (7th Cir. 1976)   Cited 308 times
    Holding that the defendants' suddenly changing the name of one of its own products to include the plaintiff's mark created confusion and defeated a laches defense even after the defendants had been distributing the plaintiff's products that were labeled with that mark for nineteen years

  2. 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"

  3. Recot, Inc. v. Becton

    214 F.3d 1322 (Fed. Cir. 2000)   Cited 57 times
    Holding that the Board legally erred in not according sufficient weight to evidence of a mark's fame in a likelihood of confusion analysis, vacating, and remanding for further consideration

  4. 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"

  5. Kenner Parker Toys v. Rose Art Industries

    963 F.2d 350 (Fed. Cir. 1992)   Cited 51 times
    Holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks

  6. Bose Corp. v. QSC Audio Products, Inc.

    293 F.3d 1367 (Fed. Cir. 2002)   Cited 35 times   2 Legal Analyses
    In Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1375 (Fed.Cir.2002), this court held that the marks WAVE and ACOUSTIC WAVE have trademark strength independent of the Bose “house mark,” although the marks appear in the same sales literature.

  7. Hewlett-Packard Co. v. Packard Press, Inc.

    281 F.3d 1261 (Fed. Cir. 2002)   Cited 33 times
    Holding that a registration for “electronic transmission of data and documents via computer terminals” is “closely related” to a registration “covering facsimile machines, computers, and computer software”

  8. In re Mighty Leaf Tea

    601 F.3d 1342 (Fed. Cir. 2010)   Cited 22 times   3 Legal Analyses
    Rejecting an argument that the specific style of a registered mark could serve to distinguish the applicant's mark in standard character form

  9. J J Snack Foods Corp. v. McDonalds' Corp.

    932 F.2d 1460 (Fed. Cir. 1991)   Cited 45 times   1 Legal Analyses
    Ruling that McDonald's has established a family of marks in product names starting with the prefix "Me"

  10. Sharp Kabushiki Kaisha v. Thinksharp, Inc.

    448 F.3d 1368 (Fed. Cir. 2006)   Cited 20 times
    Describing the three requirements for claim preclusion

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

    15 U.S.C. § 1052   Cited 1,599 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"

  12. Section 1151 - Purpose of chapter

    15 U.S.C. § 1151   Cited 8 times

    The purpose of this chapter is to make the results of technological research and development more readily available to industry and business, and to the general public, by clarifying and defining the functions and responsibilities of the Department of Commerce as a central clearinghouse for technical information which is useful to American industry and business. 15 U.S.C. § 1151 Sept. 9, 1950, ch. 936, §1, 64 Stat. 823.