Implus Footcare LLC v. Cozy Cabin Clothing LLC

18 Cited authorities

Lexmark Int'l, Inc. v. Static Control Components, Inc.
572 U.S. 118 (2014) Cited 3,044 times 74 Legal Analyses
Holding that the respondent could not "obtain relief" under § 1125 "without evidence of injury proximately caused by [the petitioner's] alleged misrepresentations"
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 Google Tech.
980 F.3d 858 (Fed. Cir. 2020) Cited 60 times 1 Legal Analyses
Explaining that courts and litigants often use the term "waiver" when applying the doctrine of forfeiture
Interactive Prod. v. A2Z Mobile Off. Solution
326 F.3d 687 (6th Cir. 2003) Cited 97 times
Finding that defendant's use of plaintiff's mark in post-domain path name of defendant's website did not constitute "use in commerce" as it did not identify source of goods and was not used with intent to confuse or mislead consumers
Australian Therapeutic Supplies Pty. v. Naked TM, LLC
965 F.3d 1370 (Fed. Cir. 2020) Cited 10 times 1 Legal Analyses
Concluding that a petitioner did not have a valid cause of action because it was precluded by a prior settlement agreement
Corcamore, LLC v. SFM, LLC
978 F.3d 1298 (Fed. Cir. 2020) Cited 9 times 3 Legal Analyses
Holding that Lexmark controls the statutory cause of action analysis under § 1064
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
In re Sones
590 F.3d 1282 (Fed. Cir. 2009) Cited 11 times 5 Legal Analyses
Holding that "a picture is not a mandatory requirement for a website-based specimen of use" and disapproving of the "rigid, bright-line rule" the PTO applied
West Florida Seafood, Inc. v. Jet Restaurants
31 F.3d 1122 (Fed. Cir. 1994) Cited 21 times
Recognizing that separate corporate, business and personal entities that operate as a single entity in the eyes of the consuming public may be treated as such for trademark purposes
McDermott v. Francisco
240 F. App'x 865 (Fed. Cir. 2007) Cited 2 times
Finding no standing to oppose registration of DYKE mark
Rule 901 - Authenticating or Identifying Evidence
Fed. R. Evid. 901 Cited 5,343 times 53 Legal Analyses
Holding that "[t]estimony that a matter is what it is claimed to be" is sufficient authentication
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 1064 - Cancellation of registration
15 U.S.C. § 1064 Cited 921 times 51 Legal Analyses
Allowing a petition to cancel a certification mark if the registered owner "discriminately refuses to certify" qualifying goods or services
Section 1063 - Opposition to registration
15 U.S.C. § 1063 Cited 148 times 19 Legal Analyses
Identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"
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"

Implus Footcare LLC v. Cozy Cabin Clothing LLC

18 Cited authorities

Holding that the respondent could not "obtain relief" under § 1125 "without evidence of injury proximately caused by [the petitioner's] alleged misrepresentations"

Holding that it is the opposer's burden to prove fame of its mark

Explaining that courts and litigants often use the term "waiver" when applying the doctrine of forfeiture

Finding that defendant's use of plaintiff's mark in post-domain path name of defendant's website did not constitute "use in commerce" as it did not identify source of goods and was not used with intent to confuse or mislead consumers

Concluding that a petitioner did not have a valid cause of action because it was precluded by a prior settlement agreement

Holding that Lexmark controls the statutory cause of action analysis under § 1064

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

Holding that "a picture is not a mandatory requirement for a website-based specimen of use" and disapproving of the "rigid, bright-line rule" the PTO applied

Recognizing that separate corporate, business and personal entities that operate as a single entity in the eyes of the consuming public may be treated as such for trademark purposes

Finding no standing to oppose registration of DYKE mark

Holding that "[t]estimony that a matter is what it is claimed to be" is sufficient authentication

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

Identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"

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"