Trek Bicycle Corporation v. Celestron Acquisition LLC

35 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"
Recot, Inc. v. Becton
214 F.3d 1322 (Fed. Cir. 2000) Cited 56 times
Holding that the Board legally erred in not according sufficient weight to evidence of a mark's fame in a likelihood of confusion analysis, vacating, and remanding for further consideration
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"
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)
In re Cordua Rests., Inc.
823 F.3d 594 (Fed. Cir. 2016) Cited 25 times 7 Legal Analyses
Holding that certain words referring to key aspects of a genus of services were generic for those services
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
Citigroup Inc. v. Capital City Bank Group
637 F.3d 1344 (Fed. Cir. 2011) Cited 27 times 3 Legal Analyses
Considering "corporate studies tracking awareness of the CITIBANK mark"
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,797 times 123 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 1,579 times 260 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 1,021 times 5 Legal Analyses
Providing that a certificate of registration is prima facie evidence of an owner's right to use the mark
Section 2.116 - Federal Rules of Civil Procedure
37 C.F.R. § 2.116 Cited 49 times
Making the federal rules of civil procedure generally applicable in TTAB proceedings
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"

Trek Bicycle Corporation v. Celestron Acquisition LLC

35 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"

Holding that the Board legally erred in not according sufficient weight to evidence of a mark's fame in a likelihood of confusion analysis, vacating, and remanding for further consideration

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"

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

Holding that certain words referring to key aspects of a genus of services were generic for those services

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

Considering "corporate studies tracking awareness of the CITIBANK mark"

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 a certificate of registration is prima facie evidence of an owner's right to use the mark

Making the federal rules of civil procedure generally applicable in TTAB proceedings

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"