American Academy of Family Physicians

14 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"
Converse, Inc. v. Int'l Trade Comm'n
907 F.3d 1361 (Fed. Cir. 2018) Cited 39 times 3 Legal Analyses
Holding party must prove design acquired secondary meaning before first infringement
Royal Crown Co. v. Coca-Cola Co.
892 F.3d 1358 (Fed. Cir. 2018) Cited 21 times 2 Legal Analyses
Recognizing that indirect evidence, including of "competitive use, evidence that other companies use [a term] in combination with their own . . . marks, third-party registrations and applications for such combined marks," may be relevant for genericness
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 Dial-A-Mattress Operating Corp.
240 F.3d 1341 (Fed. Cir. 2001) Cited 38 times 3 Legal Analyses
Holding that 1–888–M–A–T–T–R–E–S–S “immediately conveys the impressions that a service relating to mattresses is available by calling the telephone number”
In re La. Fish Fry Prods., Ltd.
797 F.3d 1332 (Fed. Cir. 2015) Cited 15 times 1 Legal Analyses
Discounting advertising expenditures concerning FISH FRY PRODUCTS where the evidence relied on included ads promoting another mark
In re Steelbuilding.com
415 F.3d 1293 (Fed. Cir. 2005) Cited 26 times 2 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 Jobdiva, Inc.
843 F.3d 936 (Fed. Cir. 2016) Cited 5 times 2 Legal Analyses
2015-1960 12-12-2016 IN RE: JOBDIVA, INC., Appellant Daniel I. Schloss, Greenberg Traurig LLP, New York, NY, argued for appellant. Also represented by Masahiro Noda. Mary Beth Walker, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for intervenor Michelle K. Lee. Also represented by Thomas W. Krause, Christina Hieber. Stoll, Circuit Judge. Daniel I. Schloss , Greenberg Traurig LLP, New York, NY, argued for appellant. Also represented by Masahiro Noda . Mary
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
In re Boston Beer Co. Ltd. Partnership
198 F.3d 1370 (Fed. Cir. 1999) Cited 14 times 1 Legal Analyses
Holding that the claim "The Best Beer in America" amounted to mere puffery
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,910 times 126 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 1,607 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"

American Academy of Family Physicians

14 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 party must prove design acquired secondary meaning before first infringement

Recognizing that indirect evidence, including of "competitive use, evidence that other companies use [a term] in combination with their own . . . marks, third-party registrations and applications for such combined marks," may be relevant for genericness

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 1–888–M–A–T–T–R–E–S–S “immediately conveys the impressions that a service relating to mattresses is available by calling the telephone number”

Discounting advertising expenditures concerning FISH FRY PRODUCTS where the evidence relied on included ads promoting another mark

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

Holding that the claim "The Best Beer in America" amounted to mere puffery

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"