The H.D. Lee Company, Inc. v. Maiden-form, Inc.

21 Cited authorities

Blonder-Tongue v. University Foundation
402 U.S. 313 (1971) Cited 2,236 times 13 Legal Analyses
Holding issue preclusion inappropriate when "without fault of his own the [party to be precluded] was deprived of crucial evidence or witnesses in the first litigation"
In re E. I. DuPont DeNemours & Co.
476 F.2d 1357 (C.C.P.A. 1973) Cited 190 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 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"
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
Bose Corp. v. QSC Audio Products, Inc.
293 F.3d 1367 (Fed. Cir. 2002) Cited 35 times 2 Legal Analyses
Finding that product marks, ACOUSTIC WAVE and WAVE, were famous in addition to their house mark, BOSE
Hewlett-Packard Co. v. Packard Press, Inc.
281 F.3d 1261 (Fed. Cir. 2002) Cited 33 times
Holding that a registration for “electronic transmission of data and documents via computer terminals” is “closely related” to a registration “covering facsimile machines, computers, and computer software”
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 12 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.
Otto Roth Co. v. Universal Foods Corp.
640 F.2d 1317 (C.C.P.A. 1981) Cited 20 times
Recognizing importance of "free use of the language" in commercial speech context
Rule 15 - Amended and Supplemental Pleadings
Fed. R. Civ. P. 15 Cited 95,193 times 92 Legal Analyses
Finding that, per N.Y. C.P.L.R. § 1024, New York law provides a more forgiving principle for relation back in the context of naming John Doe defendants described with particularity in the complaint
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,607 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"
Section 1057 - Certificates of registration
15 U.S.C. § 1057 Cited 1,051 times 5 Legal Analyses
Providing that a certificate of registration is prima facie evidence of an owner's right to use the mark
Section 2.120 - Discovery
37 C.F.R. § 2.120 Cited 23 times 5 Legal Analyses
Providing that the TTAB "in its discretion, may refuse to consider the additional written disclosures or responses"
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"

The H.D. Lee Company, Inc. v. Maiden-form, Inc.

21 Cited authorities

Holding issue preclusion inappropriate when "without fault of his own the [party to be precluded] was deprived of crucial evidence or witnesses in the first litigation"

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 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

Finding that product marks, ACOUSTIC WAVE and WAVE, were famous in addition to their house mark, BOSE

Holding that a registration for “electronic transmission of data and documents via computer terminals” is “closely related” to a registration “covering facsimile machines, computers, and computer software”

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.

Recognizing importance of "free use of the language" in commercial speech context

Finding that, per N.Y. C.P.L.R. § 1024, New York law provides a more forgiving principle for relation back in the context of naming John Doe defendants described with particularity in the complaint

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

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"