§

The B.V.D. Licensing Corporation v. Bosideng Co., Ltd.

No. 91173468 (T.T.A.B. Jan. 10, 2012)
The B.V.D. Licensing Corporation v. Bosideng Co., Ltd.

27 Cited authorities

  1. Thane International, Inc. v. Trek Bicycle Corp.

    305 F.3d 894 (9th Cir. 2002)   Cited 189 times   4 Legal Analyses
    Holding that a reasonable trier of fact could conclude that the marks "Orbi-Trek" and "TREK" were nearly identical

  2. I.P. Lund Trading ApS v. Kohler Co.

    163 F.3d 27 (1st Cir. 1998)   Cited 192 times   1 Legal Analyses
    Holding a mark nationally renowned in "the world of interior design and high-end bathroom fixtures" was not sufficiently famous

  3. Luigino's, Inc. v. Stouffer Corp.

    170 F.3d 827 (8th Cir. 1999)   Cited 107 times
    Holding the marks were dissimilar under the "sight, sound, and meaning" test such that dilution did not occur because the customers did not see the marks as essentially the same

  4. 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"

  5. 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"

  6. Cunningham v. Laser Golf Corp.

    222 F.3d 943 (Fed. Cir. 2000)   Cited 74 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"

  7. 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

  8. 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"

  9. Kenner Parker Toys v. Rose Art Industries

    963 F.2d 350 (Fed. Cir. 1992)   Cited 51 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

  10. 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.

  11. Rule 201 - Judicial Notice of Adjudicative Facts

    Fed. R. Evid. 201   Cited 29,609 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."

  12. Section 1125 - False designations of origin, false descriptions, and dilution forbidden

    15 U.S.C. § 1125   Cited 15,706 times   326 Legal Analyses
    Holding "the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional"

  13. Rule 36 - Requests for Admission

    Fed. R. Civ. P. 36   Cited 6,310 times   13 Legal Analyses
    Noting that facts admitted pursuant to a Rule 36 discovery request are "conclusively established unless the court, on motion, permits the admission to be withdrawn or amended"

  14. Section 1052 - Trademarks registrable on principal register; concurrent registration

    15 U.S.C. § 1052   Cited 1,599 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"

  15. Section 1063 - Opposition to registration

    15 U.S.C. § 1063   Cited 147 times   19 Legal Analyses
    Identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"

  16. 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"