First Republic Real Estate, Inc.

16 Cited authorities

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 73 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"
Giant Food, Inc. v. Nation's Foodservice
710 F.2d 1565 (Fed. Cir. 1983) Cited 87 times
Holding that the shared term GIANT is the dominant portion of the marks, which supports a finding that there would be a likelihood of confusion between them
In re Nat. Data Corp.
753 F.2d 1056 (Fed. Cir. 1985) Cited 73 times 1 Legal Analyses
Holding that a "likelihood of confusion cannot be predicated on dissection of a mark"
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"
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"
In re Guild Mortg. Co.
No. 2017-2620 (Fed. Cir. Jan. 14, 2019) Cited 7 times 1 Legal Analyses
Vacating the Board's decision and remanding for the Board to reconsider one of the DuPont factors and "to reconsider its likelihood of confusion determination in the first instance in light of all the evidence"
In re Majestic Distilling Co., Inc.
315 F.3d 1311 (Fed. Cir. 2003) Cited 12 times 1 Legal Analyses
Holding that malt liquor and tequila sold under the same mark would cause a likelihood of confusion
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,597 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"

First Republic Real Estate, Inc.

16 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 shared term GIANT is the dominant portion of the marks, which supports a finding that there would be a likelihood of confusion between them

Holding that a "likelihood of confusion cannot be predicated on dissection of a mark"

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"

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

Vacating the Board's decision and remanding for the Board to reconsider one of the DuPont factors and "to reconsider its likelihood of confusion determination in the first instance in light of all the evidence"

Holding that malt liquor and tequila sold under the same mark would cause a likelihood of confusion

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"