URL Holdings Group LLC

13 Cited authorities

Patent and Trademark Office v. Booking.com B. V.
140 S. Ct. 2298 (2020) Cited 63 times 8 Legal Analyses
Holding that whether a term is generic "depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class"
Sweats Fashions v. Pannill Knitting Co.
833 F.2d 1560 (Fed. Cir. 1987) Cited 163 times
Finding that, on review of a grant of summary judgment in a USPTO opposition proceeding, "[opposer] would have us infer bad faith because of [registrant's] awareness of [opposer's] marks. However, an inference of 'bad faith' requires something more than mere knowledge of a prior similar mark. That is all the record here shows."
Duopross Meditech Corp. v. Inviro Med. Devices, Ltd.
695 F.3d 1247 (Fed. Cir. 2012) Cited 25 times 4 Legal Analyses
Holding that, although the Board may "ascertain the meaning and weight of each of the components that makes up the mark," it "ultimately must consider the mark as a whole and do so in the context of the goods or services at issue"
Cold War Museum v. Cold War Air Museum
586 F.3d 1352 (Fed. Cir. 2009) Cited 28 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
In re Hotels.com
573 F.3d 1300 (Fed. Cir. 2009) Cited 24 times 4 Legal Analyses
Finding that the TTAB did not err in determining that the term was generic, citing in part concerns arising from the methodology of the applicant's consumer survey
In re Steelbuilding.com
415 F.3d 1293 (Fed. Cir. 2005) Cited 26 times 3 Legal Analyses
Affirming the refusal of the Patent and Trademark Office to register the mark STEELBUILDING.COM, because the mark was descriptive of online services for the design of steel buildings, and lacked secondary meaning
In re Nett Designs, Inc.
236 F.3d 1339 (Fed. Cir. 2001) Cited 28 times
Finding that prior registrations of marks including the term ULTIMATE "do not conclusively rebut the Board's finding that ULTIMATE is descriptive in the context of this mark"
In re 1800Mattress.Com IP, LLC
586 F.3d 1359 (Fed. Cir. 2009) Cited 12 times 2 Legal Analyses
Finding "MATTRESS.COM" generic in relation to online retail store services in the field of mattresses was supported by substantial evidence
In re Reed
482 F.3d 1376 (Fed. Cir. 2007) Cited 14 times 2 Legal Analyses
Holding that the Board properly considered websites containing "lawyer.com" or "lawyers.com" in their domain names to determine what the relevant public would understand LAWYERS.COM to mean
In re Chamber of Commerce of the United States
675 F.3d 1297 (Fed. Cir. 2012) Cited 8 times 2 Legal Analyses
No. 2011–1330. 2012-04-3 In re The CHAMBER OF COMMERCE OF THE UNITED STATES of America. William M. Merone, Kenyon & Kenyon, LLP, of Washington, DC, argued for appellant. With him on the brief was Edward T. Colbert. Christina J. Hieber, Associate Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With her on the brief were Raymond T. Chen, Solicitor, and Sydney O. Johnson, Jr., Associate Solicitor. Of counsel was Thomas V. Shaw, Associate Solicitor
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,922 times 127 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 1,616 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"

URL Holdings Group LLC

13 Cited authorities

Holding that whether a term is generic "depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class"

Holding that, although the Board may "ascertain the meaning and weight of each of the components that makes up the mark," it "ultimately must consider the mark as a whole and do so in the context of the goods or services at issue"

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

Finding that the TTAB did not err in determining that the term was generic, citing in part concerns arising from the methodology of the applicant's consumer survey

Affirming the refusal of the Patent and Trademark Office to register the mark STEELBUILDING.COM, because the mark was descriptive of online services for the design of steel buildings, and lacked secondary meaning

Finding that prior registrations of marks including the term ULTIMATE "do not conclusively rebut the Board's finding that ULTIMATE is descriptive in the context of this mark"

Finding "MATTRESS.COM" generic in relation to online retail store services in the field of mattresses was supported by substantial evidence

Holding that the Board properly considered websites containing "lawyer.com" or "lawyers.com" in their domain names to determine what the relevant public would understand LAWYERS.COM to mean

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"