STK LLC v. Backrack, Inc.

32 Cited authorities

Rescuecom Corp. v. Google Inc.
562 F.3d 123 (2d Cir. 2009) Cited 234 times 8 Legal Analyses
Holding that Google's use of the plaintiff's trademark as a keyword to trigger the display of the advertiser's copy on Google's search results page and as a suggestion to advertisers as a keyword they might purchase were sufficient to satisfy the “use in commerce” requirement
Rosetta Stone Ltd. v. Google, Inc.
676 F.3d 144 (4th Cir. 2012) Cited 214 times 7 Legal Analyses
Holding that where "17 percent of consumers demonstrate actual confusion ... result is clear evidence of actual confusion for purposes of summary judgment."
Kellogg Co. v. Nat. Biscuit Co.
305 U.S. 111 (1938) Cited 552 times 6 Legal Analyses
Holding that Kellogg's sharing in the goodwill of the unprotected "Shredded Wheat" market was "not unfair"
Ty Inc. v. Softbelly's, Inc.
353 F.3d 528 (7th Cir. 2003) Cited 72 times 2 Legal Analyses
Holding that discriminators' sanctions imposed on one party for a minor violation were an abuse of discretion
Blinded Vet. v. Blinded Am. Vet. Foundation
872 F.2d 1035 (D.C. Cir. 1989) Cited 106 times 3 Legal Analyses
Holding "blinded veterans association" generic
Colt Defense v. Bushmaster Firearms
486 F.3d 701 (1st Cir. 2007) Cited 44 times
Holding that a registered, contestable mark creates a rebuttable presumption that may be overcome "where the alleged infringer demonstrates genericness by a preponderance of the evidence"
Beckwith v. Commr. of Patents
252 U.S. 538 (1920) Cited 177 times 1 Legal Analyses
Defining “composite marks” as those which “contain both registerable and nonregisterable matter”
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.”
Pilates, Inc. v. Current Concepts, Inc.
120 F. Supp. 2d 286 (S.D.N.Y. 2000) Cited 45 times
Holding that "sporadic uses" of a mark for equipment over a three-year period, including "two or three" sales and the distribution of a brochure advertising the equipment, did not defeat a finding of nonuse
CES Publishing Corp. v. St. Regis Publications, Inc.
531 F.2d 11 (2d Cir. 1975) Cited 95 times
Holding that "Consumer Electronics," as the name of a magazine in that industry, is generic
Rule 34 - Producing Documents, Electronically Stored Information, and Tangible Things, or Entering onto Land, for Inspection and Other Purposes
Fed. R. Civ. P. 34 Cited 13,656 times 154 Legal Analyses
Finding that the rules related to electronic discovery were "not meant to create a routine right of direct access to a party's electronic information system, although such access may be justified in some circumstances."
Section 1064 - Cancellation of registration
15 U.S.C. § 1064 Cited 917 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 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"

STK LLC v. Backrack, Inc.

32 Cited authorities

Holding that Google's use of the plaintiff's trademark as a keyword to trigger the display of the advertiser's copy on Google's search results page and as a suggestion to advertisers as a keyword they might purchase were sufficient to satisfy the “use in commerce” requirement

Holding that where "17 percent of consumers demonstrate actual confusion ... result is clear evidence of actual confusion for purposes of summary judgment."

Holding that Kellogg's sharing in the goodwill of the unprotected "Shredded Wheat" market was "not unfair"

Holding that discriminators' sanctions imposed on one party for a minor violation were an abuse of discretion

Holding "blinded veterans association" generic

Holding that a registered, contestable mark creates a rebuttable presumption that may be overcome "where the alleged infringer demonstrates genericness by a preponderance of the evidence"

Defining “composite marks” as those which “contain both registerable and nonregisterable matter”

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

Holding that "sporadic uses" of a mark for equipment over a three-year period, including "two or three" sales and the distribution of a brochure advertising the equipment, did not defeat a finding of nonuse

Holding that "Consumer Electronics," as the name of a magazine in that industry, is generic

Finding that the rules related to electronic discovery were "not meant to create a routine right of direct access to a party's electronic information system, although such access may be justified in some circumstances."

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"