ATB Indústria e Comércio de Adesivos LTDA

25 Cited authorities

Coach Services, Inc. v. Triumph Learning LLC
668 F.3d 1356 (Fed. Cir. 2012) Cited 109 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 33 Legal Analyses
Reciting thirteen factors to be considered, referred to as "DuPont factors"
On-Line Careline, Inc. v. America Online
229 F.3d 1080 (Fed. Cir. 2000) Cited 77 times
Applying Recot in analyzing the similarity of services
Cunningham v. Laser Golf Corp.
222 F.3d 943 (Fed. Cir. 2000) Cited 74 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 57 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
Herbko Intern., Inc. v. Kappa Books, Inc.
308 F.3d 1156 (Fed. Cir. 2002) Cited 47 times
Explaining that proprietary rights are necessary to show priority of use when petitioning for cancellation under section 2(d)
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"
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"
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"
In re Detroit Athletic Co.
903 F.3d 1297 (Fed. Cir. 2018) Cited 18 times
Finding "the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first"
Section 1126 - International conventions
15 U.S.C. § 1126 Cited 185 times 29 Legal Analyses
Stating that an application under § 44 "must state the applicant's bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration"

ATB Indústria e Comércio de Adesivos LTDA

25 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"

Applying Recot in analyzing the similarity of services

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

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

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"

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"

Considering "corporate studies tracking awareness of the CITIBANK mark"

Finding "the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first"

Stating that an application under § 44 "must state the applicant's bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration"