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William P. Thomas, III and Carolyn Thomas Walters v. Robert E. Auxier

91221893 (T.T.A.B. Sep. 27, 2019)
William P. Thomas, III and Carolyn Thomas Walters v. Robert E. Auxier

45 Cited authorities

  1. Harris v. Rivera

    454 U.S. 339 (1981)   Cited 466 times
    Holding that "[i]nconsistency in a verdict is not a sufficient reason for setting it aside" in a federal habeas corpus proceeding

  2. Starbucks v. Wolfe's Borough

    588 F.3d 97 (2d Cir. 2009)   Cited 276 times   2 Legal Analyses
    Holding that § 1125 claim requires same showing under Polaroid factors

  3. 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

  4. 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."

  5. 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"

  6. 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"

  7. 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"

  8. 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

  9. 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"

  10. 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)

  11. Rule 15 - Amended and Supplemental Pleadings

    Fed. R. Civ. P. 15   Cited 91,447 times   91 Legal Analyses
    Finding that, per N.Y. C.P.L.R. § 1024, New York law provides a more forgiving principle for relation back in the context of naming John Doe defendants described with particularity in the complaint

  12. Rule 801 - Definitions That Apply to This Article; Exclusions from Hearsay

    Fed. R. Evid. 801   Cited 19,208 times   75 Legal Analyses
    Holding that such a statement must merely be made by the party and offered against that party

  13. Section 1051 - Application for registration; verification

    15 U.S.C. § 1051   Cited 3,806 times   124 Legal Analyses
    Requiring a filing of a Statement of Use to register a mark

  14. Section 1127 - Construction and definitions; intent of chapter

    15 U.S.C. § 1127   Cited 2,954 times   96 Legal Analyses
    Granting standing under § 1114 to the legal representative of the registrant of a trademark

  15. Section 1052 - Trademarks registrable on principal register; concurrent registration

    15 U.S.C. § 1052   Cited 1,585 times   272 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"

  16. 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"

  17. Section 2.106 - Answer

    37 C.F.R. § 2.106   Cited 12 times
    Defining compulsory counterclaim as "defense attacking the validity of any one or more of the registrations pleaded in the opposition"