The National Spiritual Assembly of the Baha’is of the United States v. Second International Baha’i Council

28 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"
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.
719 F.3d 1367 (Fed. Cir. 2013) Cited 28 times
Recognizing that voluntary dismissal with prejudice does not have issue preclusive effect
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.”
Stone Lion Capital Partners, L.P. v. Lion Capital LLP
746 F.3d 1317 (Fed. Cir. 2014) Cited 24 times
Reviewing the weight given to the similarity-of-the-marks factor for legal error
In re Nat. Data Corp.
753 F.2d 1056 (Fed. Cir. 1985) Cited 70 times 1 Legal Analyses
Holding that a "likelihood of confusion cannot be predicated on dissection of a mark"
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"
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 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 National Spiritual Assembly of the Baha’is of the United States v. Second International Baha’i Council

28 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"

Recognizing that voluntary dismissal with prejudice does not have issue preclusive effect

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

Reviewing the weight given to the similarity-of-the-marks factor for legal error

Holding that a "likelihood of confusion cannot be predicated on dissection of a mark"

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

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 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"