Tommie Copper IP, Inc. v. Gcool-Tech Usa LLC

19 Cited authorities

In re Bose Corp.
580 F.3d 1240 (Fed. Cir. 2009) Cited 172 times 13 Legal Analyses
Holding that an applicant commits fraud when it knowingly makes false, material representations of fact with an intent to deceive the PTO
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"
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 Viterra Inc.
671 F.3d 1358 (Fed. Cir. 2012) Cited 26 times 3 Legal Analyses
Holding that "any minor differences in the sound of [X–Seed and XCEED marks for agricultural seeds] may go undetected by consumers and, therefore, would not be sufficient to distinguish the marks"
In re Mighty Leaf Tea
601 F.3d 1342 (Fed. Cir. 2010) Cited 22 times 3 Legal Analyses
Rejecting an argument that the specific style of a registered mark could serve to distinguish the applicant's mark in standard character form
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
Century 21 Real Estate Corp. v. Century Life of America
970 F.2d 874 (Fed. Cir. 1992) Cited 39 times
Finding similarity between "CENTURY 21" and "CENTURY LIFE OF AMERICA" in part because "consumers must first notice th[e] identical lead word"
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,886 times 126 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 1,600 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 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"
Section 2.35 - Adding, deleting, or substituting bases
37 C.F.R. § 2.35 Cited 2 times 5 Legal Analyses
(a) In an application under section 66(a) of the Act, an applicant may not add, substitute or delete a basis, unless the applicant meets the requirements for transformation under section 70(c) of the Act and § 7.31 of this chapter. (b) In an application under section 1 or section 44 of the Act: (1) Before publication for opposition, an applicant may add or substitute a basis, if the applicant meets all requirements for the new basis, as stated in § 2.34 , § 2.44 , or § 2.45 . The applicant may delete

Tommie Copper IP, Inc. v. Gcool-Tech Usa LLC

19 Cited authorities

Holding that an applicant commits fraud when it knowingly makes false, material representations of fact with an intent to deceive the PTO

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"

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

Holding that "any minor differences in the sound of [X–Seed and XCEED marks for agricultural seeds] may go undetected by consumers and, therefore, would not be sufficient to distinguish the marks"

Rejecting an argument that the specific style of a registered mark could serve to distinguish the applicant's mark in standard character form

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

Finding similarity between "CENTURY 21" and "CENTURY LIFE OF AMERICA" in part because "consumers must first notice th[e] identical lead word"

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"