St. Nicholas Music Inc. v. Lolly-Jolly, Inc.

15 Cited authorities

In re E. I. DuPont DeNemours & Co.
476 F.2d 1357 (C.C.P.A. 1973) Cited 191 times 33 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 76 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"
Giant Food, Inc. v. Nation's Foodservice
710 F.2d 1565 (Fed. Cir. 1983) Cited 89 times
Holding that the shared term GIANT is the dominant portion of the marks, which supports a finding that there would be a likelihood of confusion between them
In re Nat. Data Corp.
753 F.2d 1056 (Fed. Cir. 1985) Cited 73 times 1 Legal Analyses
Holding that a "likelihood of confusion cannot be predicated on dissection of a mark"
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"
Lipton Industries, Inc. v. Ralston Purina
670 F.2d 1024 (C.C.P.A. 1982) Cited 58 times
Holding that admission contained in an answer was binding, despite the fact that it was made "on information and belief"
In re Majestic Distilling Co., Inc.
315 F.3d 1311 (Fed. Cir. 2003) Cited 13 times 1 Legal Analyses
Holding that malt liquor and tequila sold under the same mark would cause a likelihood of confusion
University of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co.
703 F.2d 1372 (Fed. Cir. 1983) Cited 20 times 2 Legal Analyses
In University of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 1376, 217 USPQ 505, 509 (Fed. Cir. 1983), the court added that section 2(a) embraces concepts of the right to privacy which may be violated even in the absence of likelihood of confusion.
In re Martin's Famous Pastry Shoppe, Inc.
748 F.2d 1565 (Fed. Cir. 1984) Cited 18 times
Finding likelihood of confusion between "Martin's" for bread and "Martin's" for cheese, since the products "travel in the same channels of trade," are sold by the "same retail outlets," and are "often used in combination"
Action Temporary Services v. Labor Force
870 F.2d 1563 (Fed. Cir. 1989) Cited 10 times
No. 88-1446. March 23, 1989. J. Rodman Steele, Steele, Gould Fried, Philadelphia, Pa., argued for appellant. With him on the brief was Gregory A. Nelson. Jonathan E. Jobe, Jr., Hubbard, Thurman, Turner Tucker, Dallas, Tex., argued for appellee. With him on the brief was Molly Buck Richard. Appeal from the United States Patent and Trademark Office Trademark Trial and Appeal Board. Before RICH, SMITH and NEWMAN, Circuit Judges. EDWARD S. SMITH, Circuit Judge. In this concurrent use proceeding, the
Rule 12 - Defenses and Objections: When and How Presented; Motion for Judgment on the Pleadings; Consolidating Motions; Waiving Defenses; Pretrial Hearing
Fed. R. Civ. P. 12 Cited 366,511 times 968 Legal Analyses
Granting the court discretion to exclude matters outside the pleadings presented to the court in defense of a motion to dismiss
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,920 times 127 Legal Analyses
Requiring a filing of a Statement of Use to register a mark
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,612 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"

St. Nicholas Music Inc. v. Lolly-Jolly, Inc.

15 Cited authorities

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"

Holding that the shared term GIANT is the dominant portion of the marks, which supports a finding that there would be a likelihood of confusion between them

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

Ruling that McDonald's has established a family of marks in product names starting with the prefix "Me"

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

Holding that malt liquor and tequila sold under the same mark would cause a likelihood of confusion

In University of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 1376, 217 USPQ 505, 509 (Fed. Cir. 1983), the court added that section 2(a) embraces concepts of the right to privacy which may be violated even in the absence of likelihood of confusion.

Finding likelihood of confusion between "Martin's" for bread and "Martin's" for cheese, since the products "travel in the same channels of trade," are sold by the "same retail outlets," and are "often used in combination"

Granting the court discretion to exclude matters outside the pleadings presented to the court in defense of a motion to dismiss

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

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"