S Industries, Inc. and Central Mfg. Co. v. Casablanca Industries, Inc. and Hunter Fan Co.

26 Cited authorities

A.C. Aukerman Co. v. R.L. Chaides Const. Co.
960 F.2d 1020 (Fed. Cir. 1992) Cited 655 times 37 Legal Analyses
Holding that equitable estoppel is a cognizable defense against patent infringement
Hanover Milling Co. v. Metcalf
240 U.S. 403 (1916) Cited 544 times
Holding that "[i]n the ordinary case of parties competing under the same mark in the same market, it is correct to say that prior appropriation settles the question."
S Industries, Inc. v. Centra 2000, Inc.
249 F.3d 625 (7th Cir. 2001) Cited 90 times
Concluding that a decision is only clearly erroneous if "it strikes us as wrong with the force of a 5 week old, unrefrigerated, dead fish"
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"
Cunningham v. Laser Golf Corp.
222 F.3d 943 (Fed. Cir. 2000) Cited 72 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"
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.”
Cerveceria Centroamericana v. Cerveceria
892 F.2d 1021 (Fed. Cir. 1989) Cited 50 times 1 Legal Analyses
Holding that in the absence of evidence of intent to resume use during the period of non-use, the TTAB "may conclude the registrant has . . . failed to rebut the presumption of abandonment," even when there is evidence of intent to resume after the period of nonuse
Lipton Industries, Inc. v. Ralston Purina
670 F.2d 1024 (C.C.P.A. 1982) Cited 57 times
Holding that admission contained in an answer was binding, despite the fact that it was made "on information and belief"
S Industries, Inc. v. Stone Age Equipment, Inc.
12 F. Supp. 2d 796 (N.D. Ill. 1998) Cited 30 times
Holding deposition testimony failed to create fact issue because it was “internally inconsistent, flatly contradicted by documentary and physical evidence, and uncorroborated”
S Industries v. Diamond Multimedia
991 F. Supp. 1012 (N.D. Ill. 1998) Cited 28 times
Holding that Plaintiff had failed to establish use as to computers and related goods
Rule 15 - Amended and Supplemental Pleadings
Fed. R. Civ. P. 15 Cited 91,039 times 91 Legal Analyses
Finding that, per N.Y. C.P.L.R. § 1024, New York law provides a more forgiving principle for relation back in the context of naming John Doe defendants described with particularity in the complaint
Rule 9 - Pleading Special Matters
Fed. R. Civ. P. 9 Cited 39,048 times 320 Legal Analyses
Permitting "[m]alice, intent, knowledge, and other conditions of a person's mind [to] be alleged generally"
Rule 11 - Signing Pleadings, Motions, and Other Papers; Representations to the Court; Sanctions
Fed. R. Civ. P. 11 Cited 35,955 times 145 Legal Analyses
Holding an "unrepresented party" to the same standard as an attorney
Rule 201 - Judicial Notice of Adjudicative Facts
Fed. R. Evid. 201 Cited 28,448 times 26 Legal Analyses
Holding "[n]ormally, in deciding a motion to dismiss for failure to state a claim, courts must limit their inquiry to the facts stated in the complaint and the documents either attached to or incorporated in the complaint. However, courts may also consider matters of which they may take judicial notice."
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,580 times 260 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"

S Industries, Inc. and Central Mfg. Co. v. Casablanca Industries, Inc. and Hunter Fan Co.

26 Cited authorities

Holding that equitable estoppel is a cognizable defense against patent infringement

Holding that "[i]n the ordinary case of parties competing under the same mark in the same market, it is correct to say that prior appropriation settles the question."

Concluding that a decision is only clearly erroneous if "it strikes us as wrong with the force of a 5 week old, unrefrigerated, dead fish"

Reciting thirteen factors to be considered, referred to as "DuPont factors"

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"

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

Holding that in the absence of evidence of intent to resume use during the period of non-use, the TTAB "may conclude the registrant has . . . failed to rebut the presumption of abandonment," even when there is evidence of intent to resume after the period of nonuse

Holding that admission contained in an answer was binding, despite the fact that it was made "on information and belief"

Holding deposition testimony failed to create fact issue because it was “internally inconsistent, flatly contradicted by documentary and physical evidence, and uncorroborated”

Holding that Plaintiff had failed to establish use as to computers and related goods

Finding that, per N.Y. C.P.L.R. § 1024, New York law provides a more forgiving principle for relation back in the context of naming John Doe defendants described with particularity in the complaint

Permitting "[m]alice, intent, knowledge, and other conditions of a person's mind [to] be alleged generally"

Holding an "unrepresented party" to the same standard as an attorney

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"