JVMAX, Inc. v. ESR Performance Corp.

29 Cited authorities

Wal-Mart Stores, Inc. v. Samara Brothers, Inc.
529 U.S. 205 (2000) Cited 795 times 41 Legal Analyses
Holding that fanciful, arbitrary, and suggestive marks are inherently distinctive
Inwood Laboratories v. Ives Laboratories
456 U.S. 844 (1982) Cited 1,291 times 25 Legal Analyses
Holding that secondary liability for trademark infringement arises when a manufacturer or distributor intentionally induces another to infringe
Qualitex Co. v. Jacobson Products Co.
514 U.S. 159 (1995) Cited 573 times 51 Legal Analyses
Holding companies may not "inhibit[] legitimate competition" by trademarking desirable features to "put competitors at a significant non-reputation-related disadvantage"
In re Pacer Technology
338 F.3d 1348 (Fed. Cir. 2003) Cited 47 times 1 Legal Analyses
No. 02-1602. DECIDED: August 4, 2003. Appeal from the Court of Appeals, Gajarsa, Circuit Judge. Thomas E. Schatzel, Law Offices of Thomas E. Schatzel, of Los Gatos, California, argued for appellant. Raymond T. Chen, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, argued for appellee. With him on the brief were John M. Whealan, Solicitor; and Cynthia C. Lynch, Associate Solicitor. Before LOURIE, GAJARSA, and LINN, Circuit Judges. GAJARSA
L.D. Kichler Co. v. Davoil, Inc.
192 F.3d 1349 (Fed. Cir. 1999) Cited 52 times
Holding that “any” use by third parties does not preclude an applicant's use from being substantially exclusive
Cold War Museum v. Cold War Air Museum
586 F.3d 1352 (Fed. Cir. 2009) Cited 27 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 Owens-Corning Fiberglas Corp.
774 F.2d 1116 (Fed. Cir. 1985) Cited 61 times 4 Legal Analyses
Holding that the "pink" color of insulation was non-functional because it did not affect the quality of insulation in that the color used had no effect on the product's ability to regulate a building's temperature
Del Tabaco v. Gen. Cigar Co.
753 F.3d 1270 (Fed. Cir. 2014) Cited 14 times 5 Legal Analyses
Holding that appellant demonstrated entitlement to a "statutory cause of action" under the Lanham Act
Yamaha Intern. Corp. v. Hoshino Gakki Co.
840 F.2d 1572 (Fed. Cir. 1988) Cited 46 times 2 Legal Analyses
Finding secondary meaning for shape of guitar head always appearing in advertising and promotional literature
Cicena Ltd. v. Columbia Telecommunications
900 F.2d 1546 (Fed. Cir. 1990) Cited 36 times 1 Legal Analyses
Holding that use of eighteen months is "evidence point[ing] strongly away from a finding of secondary meaning"
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,603 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"
Rule 1002 - Requirement of the Original
Fed. R. Evid. 1002 Cited 1,129 times 8 Legal Analyses
Stating that "[t]o prove the content of a writing, recording, or photograph, the original writing, recording, or photograph is required"
Rule 1004 - Admissibility of Other Evidence of Content
Fed. R. Evid. 1004 Cited 488 times 7 Legal Analyses
Allowing other evidence of an original if the original is lost or destroyed or can't be obtained by judicial process
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"

JVMAX, Inc. v. ESR Performance Corp.

29 Cited authorities

Holding that fanciful, arbitrary, and suggestive marks are inherently distinctive

Holding that secondary liability for trademark infringement arises when a manufacturer or distributor intentionally induces another to infringe

Holding companies may not "inhibit[] legitimate competition" by trademarking desirable features to "put competitors at a significant non-reputation-related disadvantage"

Holding that “any” use by third parties does not preclude an applicant's use from being substantially exclusive

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 the "pink" color of insulation was non-functional because it did not affect the quality of insulation in that the color used had no effect on the product's ability to regulate a building's temperature

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

Finding secondary meaning for shape of guitar head always appearing in advertising and promotional literature

Holding that use of eighteen months is "evidence point[ing] strongly away from a finding of secondary meaning"

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"

Stating that "[t]o prove the content of a writing, recording, or photograph, the original writing, recording, or photograph is required"

Allowing other evidence of an original if the original is lost or destroyed or can't be obtained by judicial process

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"