Treadwell Original Drifters, LLC v. Original Drifters, Inc.

20 Cited authorities

Marshak v. Treadwell
595 F.3d 478 (3d Cir. 2009) Cited 107 times
Holding that the trial court abused its discretion in refusing to award profits gained as a result of contempt of an injunction and that there was no need to prove actual damages if an award of profits was needed to deter infringement or defendant was unjustly enriched
Marshak v. Treadwell
240 F.3d 184 (3d Cir. 2001) Cited 131 times
Holding that laches could not bar cancellation claim brought more than five years after registration
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"
Herbko Intern., Inc. v. Kappa Books, Inc.
308 F.3d 1156 (Fed. Cir. 2002) Cited 45 times
Explaining that proprietary rights are necessary to show priority of use when petitioning for cancellation under section 2(d)
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.”
Cold War Museum v. Cold War Air Museum
586 F.3d 1352 (Fed. Cir. 2009) Cited 27 times
Holding that registration per 15 U.S.C. § 1057(b) creates a rebuttable presumption of validity, rebuttal of which requires a preponderance of the evidence showing
Cerveceria Centroamericana v. Cerveceria
892 F.2d 1021 (Fed. Cir. 1989) Cited 50 times 1 Legal Analyses
Holding that in the absence of evidence of intent to resume use during the period of non-use, the TTAB "may conclude the registrant has . . . failed to rebut the presumption of abandonment," even when there is evidence of intent to resume after the period of nonuse
Lipton Industries, Inc. v. Ralston Purina
670 F.2d 1024 (C.C.P.A. 1982) Cited 57 times
Holding that admission contained in an answer was binding, despite the fact that it was made "on information and belief"
Marshak v. Treadwell
58 F. Supp. 2d 551 (D.N.J. 1999) Cited 19 times
In Marshak, the district court cancelled the plaintiffs trademark after the jury determined that the plaintiffs assignors had invalidly procured a trademark that they subsequently assigned to the plaintiff Id. at 561.
Rick v. Buchansky
609 F. Supp. 1522 (S.D.N.Y. 1985) Cited 27 times
Holding that, in the absence of written contracts, the manager of a singing group may own the rights to the name if he or she remains continuously involved with the group and is in a position to control the quality of its services
Rule 803 - Exceptions to the Rule Against Hearsay-Regardless of Whether the Declarant Is Available as a Witness
Fed. R. Evid. 803 Cited 12,727 times 85 Legal Analyses
Recognizing exception to rule against hearsay for records of regularly conducted activities
Rule 901 - Authenticating or Identifying Evidence
Fed. R. Evid. 901 Cited 5,185 times 51 Legal Analyses
Holding that "[t]estimony that a matter is what it is claimed to be" is sufficient authentication
Rule 902 - Evidence That Is Self-Authenticating
Fed. R. Evid. 902 Cited 2,136 times 35 Legal Analyses
Stating that "[p]rinted material purporting to be a newspaper or periodical" is self-authenticating
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,585 times 271 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 1,026 times 5 Legal Analyses
Providing that a certificate of registration is prima facie evidence of an owner's right to use the mark

Treadwell Original Drifters, LLC v. Original Drifters, Inc.

20 Cited authorities

Holding that the trial court abused its discretion in refusing to award profits gained as a result of contempt of an injunction and that there was no need to prove actual damages if an award of profits was needed to deter infringement or defendant was unjustly enriched

Holding that laches could not bar cancellation claim brought more than five years after registration

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"

Explaining that proprietary rights are necessary to show priority of use when petitioning for cancellation under section 2(d)

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

Holding that registration per 15 U.S.C. § 1057(b) creates a rebuttable presumption of validity, rebuttal of which requires a preponderance of the evidence showing

Holding that in the absence of evidence of intent to resume use during the period of non-use, the TTAB "may conclude the registrant has . . . failed to rebut the presumption of abandonment," even when there is evidence of intent to resume after the period of nonuse

Holding that admission contained in an answer was binding, despite the fact that it was made "on information and belief"

In Marshak, the district court cancelled the plaintiffs trademark after the jury determined that the plaintiffs assignors had invalidly procured a trademark that they subsequently assigned to the plaintiff Id. at 561.

Holding that, in the absence of written contracts, the manager of a singing group may own the rights to the name if he or she remains continuously involved with the group and is in a position to control the quality of its services

Recognizing exception to rule against hearsay for records of regularly conducted activities

Holding that "[t]estimony that a matter is what it is claimed to be" is sufficient authentication

Stating that "[p]rinted material purporting to be a newspaper or periodical" is self-authenticating

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