Sunkist Growers, Inc. v. Sunkissed Families

22 Cited authorities

Coach Services, Inc. v. Triumph Learning LLC
668 F.3d 1356 (Fed. Cir. 2012) Cited 104 times 4 Legal Analyses
Holding that it is the opposer's burden to prove fame of its mark
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"
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"
Juice Generation, Inc. v. GS Enterprises LLC
794 F.3d 1334 (Fed. Cir. 2015) Cited 28 times 2 Legal Analyses
Determining that TTAB failed to adequately account for evidence of "a fair number of third-party uses" of similar marks by discounting the evidence for lack of "specifics regarding the extent of sales or promotional efforts surrounding the third-party marks"
In re Detroit Athletic Co.
903 F.3d 1297 (Fed. Cir. 2018) Cited 17 times
Finding "the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first"
In re I.Am.Symbolic, LLC
866 F.3d 1315 (Fed. Cir. 2017) Cited 17 times
Finding that the similarity of the marks weighed heavily in favor of a likelihood of confusion
Bose Corp. v. QSC Audio Products, Inc.
293 F.3d 1367 (Fed. Cir. 2002) Cited 34 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.
Kenner Parker Toys v. Rose Art Industries
963 F.2d 350 (Fed. Cir. 1992) Cited 49 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
In re Chippendales USA, Inc.
622 F.3d 1346 (Fed. Cir. 2010) Cited 22 times 5 Legal Analyses
Holding that whether the trade dress was "a common basic shape or design" was "inapplicable" because "there has been no showing that the [trade dress] is common generally"
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 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 1057 - Certificates of registration
15 U.S.C. § 1057 Cited 1,027 times 5 Legal Analyses
Providing that a certificate of registration is prima facie evidence of an owner's right to use the mark
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"
Section 2.120 - Discovery
37 C.F.R. § 2.120 Cited 22 times 5 Legal Analyses
Providing that the TTAB "in its discretion, may refuse to consider the additional written disclosures or responses"

Sunkist Growers, Inc. v. Sunkissed Families

22 Cited authorities

Holding that it is the opposer's burden to prove fame of its mark

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"

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"

Determining that TTAB failed to adequately account for evidence of "a fair number of third-party uses" of similar marks by discounting the evidence for lack of "specifics regarding the extent of sales or promotional efforts surrounding the third-party marks"

Finding "the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first"

Finding that the similarity of the marks weighed heavily in favor of a likelihood of confusion

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.

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

Holding that whether the trade dress was "a common basic shape or design" was "inapplicable" because "there has been no showing that the [trade dress] is common generally"

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"

Providing that a certificate of registration is prima facie evidence of an owner's right to use the mark

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"

Providing that the TTAB "in its discretion, may refuse to consider the additional written disclosures or responses"