TiVo Brands LLC v. Tivoli, LLC

18 Cited authorities

Tiffany (NJ) Inc. v. eBay Inc.
600 F.3d 93 (2d Cir. 2010) Cited 294 times 19 Legal Analyses
Holding that addressing specific notices of counterfeit Tiffany products was sufficient, even though eBay "knew as a general matter that counterfeit Tiffany products were listed and sold through its website."
Coach Services, Inc. v. Triumph Learning LLC
668 F.3d 1356 (Fed. Cir. 2012) Cited 108 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 190 times 32 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 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"
National Cable Television v. Am. Cinema
937 F.2d 1572 (Fed. Cir. 1991) Cited 82 times
Rejecting contention that “American Cinema Editors” did not have trademark rights in the acronym “ACE”
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.”
In re Dial-A-Mattress Operating Corp.
240 F.3d 1341 (Fed. Cir. 2001) Cited 38 times 3 Legal Analyses
Holding that 1–888–M–A–T–T–R–E–S–S “immediately conveys the impressions that a service relating to mattresses is available by calling the telephone number”
In re Chippendales USA, Inc.
622 F.3d 1346 (Fed. Cir. 2010) Cited 23 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"
Del Tabaco v. Gen. Cigar Co.
753 F.3d 1270 (Fed. Cir. 2014) Cited 14 times 5 Legal Analyses
Holding that appellant demonstrated entitlement to a "statutory cause of action" under the Lanham Act
Rule 12 - Defenses and Objections: When and How Presented; Motion for Judgment on the Pleadings; Consolidating Motions; Waiving Defenses; Pretrial Hearing
Fed. R. Civ. P. 12 Cited 359,986 times 954 Legal Analyses
Granting the court discretion to exclude matters outside the pleadings presented to the court in defense of a motion to dismiss
Rule 8 - General Rules of Pleading
Fed. R. Civ. P. 8 Cited 163,156 times 197 Legal Analyses
Holding that "[e]very defense to a claim for relief in any pleading must be asserted in the responsive pleading. . . ."
Rule 30 - Depositions by Oral Examination
Fed. R. Civ. P. 30 Cited 16,837 times 134 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 1125 - False designations of origin, false descriptions, and dilution forbidden
15 U.S.C. § 1125 Cited 15,715 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"
Section 2.52 - Types of drawings and format for drawings
37 C.F.R. § 2.52 Cited 29 times
Providing rules for applicants “who seek to register words, letters, numbers, or any combination thereof without claim to any particular font style, size, or color”

TiVo Brands LLC v. Tivoli, LLC

18 Cited authorities

Holding that addressing specific notices of counterfeit Tiffany products was sufficient, even though eBay "knew as a general matter that counterfeit Tiffany products were listed and sold through its website."

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"

Rejecting contention that “American Cinema Editors” did not have trademark rights in the acronym “ACE”

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

Holding that 1–888–M–A–T–T–R–E–S–S “immediately conveys the impressions that a service relating to mattresses is available by calling the telephone number”

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"

Holding that appellant demonstrated entitlement to a "statutory cause of action" under the Lanham Act

Granting the court discretion to exclude matters outside the pleadings presented to the court in defense of a motion to dismiss

Holding that "[e]very defense to a claim for relief in any pleading must be asserted in the responsive pleading. . . ."

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

Holding "the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional"

Providing rules for applicants “who seek to register words, letters, numbers, or any combination thereof without claim to any particular font style, size, or color”