Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., Inc.

20 Cited authorities

Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc.
525 F.3d 8 (D.C. Cir. 2008) Cited 399 times 1 Legal Analyses
Holding that, in a cancellation proceeding, "an intent-to-use applicant prevails over any opposer who began using a similar mark after the intent-to-use filing date"
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"
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"
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
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"
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.
Han Beauty, Inc. v. Alberto-Culver Co.
236 F.3d 1333 (Fed. Cir. 2001) Cited 33 times
Finding no error because, "while the Board did not make explicit findings about the strength of the [opposer’s mark], the Board’s opinion reveals that the Board considered this factor"
In re Dixie Restaurants, Inc.
105 F.3d 1405 (Fed. Cir. 1997) Cited 33 times
Holding that DELTA is the dominant portion of the mark THE DELTA CAFÉ where the disclaimed word CAFÉ is descriptive of applicant's restaurant services
In re Majestic Distilling Co., Inc.
315 F.3d 1311 (Fed. Cir. 2003) Cited 12 times 1 Legal Analyses
Holding that malt liquor and tequila sold under the same mark would cause a likelihood of confusion
Swatch Watch, S.A. v. Taxor, Inc.
785 F.2d 956 (11th Cir. 1986) Cited 21 times
No. 85-5989. April 2, 1986. Jonathan D. Wallace, Meatto, Russo, Burke Wallace, New York City, for plaintiffs-appellants. Edward F. McHale, Malin Haley McHale, P.A., Miami, Fla., for defendants-appellees. Appeal from the United States District Court for the Southern District of Florida. Before JOHNSON and HATCHETT, Circuit Judges, and ALAIMO, District Judge. Honorable Anthony A. Alaimo, Chief U.S. District Judge for the Southern District of Georgia, sitting by designation. HATCHETT, Circuit Judge:
Rule 30 - Depositions by Oral Examination
Fed. R. Civ. P. 30 Cited 16,623 times 132 Legal Analyses
Upholding a district court's decision not to consider the plaintiff's deposition errata sheets in opposition to a motion for summary judgment when they were untimely
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,843 times 125 Legal Analyses
Requiring a filing of a Statement of Use to register a mark
Rule 902 - Evidence That Is Self-Authenticating
Fed. R. Evid. 902 Cited 2,181 times 35 Legal Analyses
Stating that "[p]rinted material purporting to be a newspaper or periodical" is self-authenticating
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"

Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., Inc.

20 Cited authorities

Holding that, in a cancellation proceeding, "an intent-to-use applicant prevails over any opposer who began using a similar mark after the intent-to-use filing date"

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 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

Considering "corporate studies tracking awareness of the CITIBANK mark"

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.

Finding no error because, "while the Board did not make explicit findings about the strength of the [opposer’s mark], the Board’s opinion reveals that the Board considered this factor"

Holding that DELTA is the dominant portion of the mark THE DELTA CAFÉ where the disclaimed word CAFÉ is descriptive of applicant's restaurant services

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

Upholding a district court's decision not to consider the plaintiff's deposition errata sheets in opposition to a motion for summary judgment when they were untimely

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

Stating that "[p]rinted material purporting to be a newspaper or periodical" is self-authenticating

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"