Hole In 1 Drinks, Inc. v. Michael Lajtay

17 Cited authorities

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"
Ritchie v. Simpson
170 F.3d 1092 (Fed. Cir. 1999) Cited 48 times 1 Legal Analyses
Finding “real interest” is shown by “a direct and personal stake in the outcome” or a “legitimate personal interest.”
Del Tabaco v. Gen. Cigar Co.
753 F.3d 1270 (Fed. Cir. 2014) Cited 15 times 5 Legal Analyses
Holding that appellant demonstrated entitlement to a "statutory cause of action" under the Lanham Act
M.Z. Berger & Co. v. Swatch AG
787 F.3d 1368 (Fed. Cir. 2015) Cited 13 times 8 Legal Analyses
Noting that while an application may be made for registration based on a bona fide intent to use the mark in commerce, actual commercial use must be shown before registration
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"
Lyons v. Am. Coll. of Veterinary Sports Med.
859 F.3d 1023 (Fed. Cir. 2017) Cited 7 times 1 Legal Analyses
Upholding decision of USPTO Trademark Trial and Appeal Board that defendant, rather than plaintiff, owned disputed trademark, even though plaintiff had registered the trademark and defendant had not, because defendant was first to use trademark in commerce
Holiday Inn v. Holiday Inns, Inc.
534 F.2d 312 (C.C.P.A. 1976) Cited 25 times
Holding that the USPTO had properly limited a national chain's marks to a particular geographic area on the basis of a district court's judgment to that effect
Selfway, Inc. v. Travelers Petroleum, Inc.
579 F.2d 75 (C.C.P.A. 1978) Cited 14 times
In Selfway, the Court of Customs and Patent Appeals interpreted the Lanham Act as permitting concurrent rights to be adjudicated only in a concurrent use proceeding, not in a cancellation proceeding.
Chien Ming Huang v. Tzu Wei Chen Food Co.
849 F.2d 1458 (Fed. Cir. 1988) Cited 4 times 1 Legal Analyses
Holding that a trademark is void when the application was filed in the name of an entity that did not own the mark.
Rule 15 - Amended and Supplemental Pleadings
Fed. R. Civ. P. 15 Cited 94,896 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
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,904 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 1,605 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 2.116 - Federal Rules of Civil Procedure
37 C.F.R. § 2.116 Cited 50 times
Making the federal rules of civil procedure generally applicable in TTAB proceedings
Section 2.120 - Discovery
37 C.F.R. § 2.120 Cited 23 times 5 Legal Analyses
Providing that the TTAB "in its discretion, may refuse to consider the additional written disclosures or responses"
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"
Section 2.121 - Assignment of times for taking testimony and presenting evidence
37 C.F.R. § 2.121 Cited 6 times
(a) The Trademark Trial and Appeal Board will issue a trial order setting a deadline for each party's required pretrial disclosures and assigning to each party its time for taking testimony and presenting evidence ("testimony period"). No testimony shall be taken or evidence presented except during the times assigned, unless by stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board. The deadlines for pretrial disclosures and the testimony periods
Section 2.126 - Form of submissions to the Trademark Trial and Appeal Board
37 C.F.R. § 2.126 Cited 1 times
(a) Submissions must be made to the Trademark Trial and Appeal Board via ESTTA. (1) Text in an electronic submission must be filed in at least 11-point type and double-spaced. (2) Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission and must be clear and legible. (b) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, submissions may be filed in paper form. All submissions in paper

Hole In 1 Drinks, Inc. v. Michael Lajtay

17 Cited authorities

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"

Finding “real interest” is shown by “a direct and personal stake in the outcome” or a “legitimate personal interest.”

Holding that appellant demonstrated entitlement to a "statutory cause of action" under the Lanham Act

Noting that while an application may be made for registration based on a bona fide intent to use the mark in commerce, actual commercial use must be shown before registration

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

Upholding decision of USPTO Trademark Trial and Appeal Board that defendant, rather than plaintiff, owned disputed trademark, even though plaintiff had registered the trademark and defendant had not, because defendant was first to use trademark in commerce

Holding that the USPTO had properly limited a national chain's marks to a particular geographic area on the basis of a district court's judgment to that effect

In Selfway, the Court of Customs and Patent Appeals interpreted the Lanham Act as permitting concurrent rights to be adjudicated only in a concurrent use proceeding, not in a cancellation proceeding.

Holding that a trademark is void when the application was filed in the name of an entity that did not own the mark.

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

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"

Making the federal rules of civil procedure generally applicable in TTAB proceedings

Providing that the TTAB "in its discretion, may refuse to consider the additional written disclosures or responses"

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"