B&B Hardware, Inc. v. Sealtite Building Fasteners

20 Cited authorities

Park 'N Fly, Inc. v. Dollar Park & Fly, Inc.
469 U.S. 189 (1985) Cited 949 times 7 Legal Analyses
Holding that an incontestable mark cannot be challenged as merely descriptive
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 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"
Mothers Restaurant, v. Mama's Pizza, Inc.
723 F.2d 1566 (Fed. Cir. 1983) Cited 82 times 2 Legal Analyses
Holding collateral estoppel may foreclose relitigation of issues that were "actually litigated" and determined in a prior law suit.
Kenner Parker Toys v. Rose Art Industries
963 F.2d 350 (Fed. Cir. 1992) Cited 51 times
Holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks
Bose Corp. v. QSC Audio Products, Inc.
293 F.3d 1367 (Fed. Cir. 2002) Cited 35 times 2 Legal Analyses
In Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1375 (Fed.Cir.2002), this court held that the marks WAVE and ACOUSTIC WAVE have trademark strength independent of the Bose “house mark,” although the marks appear in the same sales literature.
Lipton Industries, Inc. v. Ralston Purina
670 F.2d 1024 (C.C.P.A. 1982) Cited 58 times
Holding that admission contained in an answer was binding, despite the fact that it was made "on information and belief"
Sunrise Jewelry Mfg. Corp. v. Fred S.A
175 F.3d 1322 (Fed. Cir. 1999) Cited 19 times
Finding that Duraco and Knitwaves are consistent with the principle that a trade dress which does not indicate source is generic and unprotectable
B.V.D. Licensing Corp. v. Body Action Design
846 F.2d 727 (Fed. Cir. 1988) Cited 22 times
Relying on fourteen registrations issued between 1906 to 1983 and stating that dictionaries defined "B.V.D." as a trademark used for underwear
Rule 15 - Amended and Supplemental Pleadings
Fed. R. Civ. P. 15 Cited 94,403 times 92 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
Rule 702 - Testimony by Expert Witnesses
Fed. R. Evid. 702 Cited 27,629 times 281 Legal Analyses
Adopting the Daubert standard
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,600 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"
Section 1064 - Cancellation of registration
15 U.S.C. § 1064 Cited 918 times 50 Legal Analyses
Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services
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"

B&B Hardware, Inc. v. Sealtite Building Fasteners

20 Cited authorities

Holding that an incontestable mark cannot be challenged as merely descriptive

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 collateral estoppel may foreclose relitigation of issues that were "actually litigated" and determined in a prior law suit.

Holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks

In Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1375 (Fed.Cir.2002), this court held that the marks WAVE and ACOUSTIC WAVE have trademark strength independent of the Bose “house mark,” although the marks appear in the same sales literature.

Holding that admission contained in an answer was binding, despite the fact that it was made "on information and belief"

Finding that Duraco and Knitwaves are consistent with the principle that a trade dress which does not indicate source is generic and unprotectable

Relying on fourteen registrations issued between 1906 to 1983 and stating that dictionaries defined "B.V.D." as a trademark used for underwear

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

Adopting the Daubert standard

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"

Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services

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"