Marc Fisher LLC v. Bottega Veneta

24 Cited authorities

Wal-Mart Stores, Inc. v. Samara Brothers, Inc.
529 U.S. 205 (2000) Cited 800 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 1,296 times 25 Legal Analyses
Holding that secondary liability for trademark infringement arises when a manufacturer or distributor intentionally induces another to infringe
Belden Inc. v. Berk-Tek LLC
805 F.3d 1064 (Fed. Cir. 2015) Cited 114 times 21 Legal Analyses
Holding that a declaration appended to a reply brief "fairly respond[ed] only to arguments made in ... [the patent owner]'s response," as required by § 42.23(b), and that the patent owner had "a meaningful opportunity to respond," as required by the APA
Perry v. Cable News Network, Inc.
854 F.3d 1336 (11th Cir. 2017) Cited 44 times
Holding that a violation of Video Privacy Protection Act, which prohibits wrongful disclosure by a video tape service provider of video tape rental or sale records, would be a concrete injury since it was analogous to the well-established torts of invasion of privacy and intrusion upon seclusion
Converse, Inc. v. Int'l Trade Comm'n
907 F.3d 1361 (Fed. Cir. 2018) Cited 39 times 3 Legal Analyses
Holding party must prove design acquired secondary meaning before first infringement
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 28 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 Chippendales USA, Inc.
622 F.3d 1346 (Fed. Cir. 2010) Cited 23 times 5 Legal Analyses
Holding that whether the trade dress was "a common basic shape or design" was "inapplicable" because "there has been no showing that the [trade dress] is common generally"
Del Tabaco v. Gen. Cigar Co.
753 F.3d 1270 (Fed. Cir. 2014) Cited 16 times 5 Legal Analyses
Holding that appellant demonstrated entitlement to a "statutory cause of action" under the Lanham Act
In re Nett Designs, Inc.
236 F.3d 1339 (Fed. Cir. 2001) Cited 28 times
Finding that prior registrations of marks including the term ULTIMATE "do not conclusively rebut the Board's finding that ULTIMATE is descriptive in the context of this mark"
Rule 801 - Definitions That Apply to This Article; Exclusions from Hearsay
Fed. R. Evid. 801 Cited 19,768 times 77 Legal Analyses
Holding that such a statement must merely be made by the party and offered against that party
Rule 701 - Opinion Testimony by Lay Witnesses
Fed. R. Evid. 701 Cited 5,993 times 28 Legal Analyses
Limiting lay testimony to "one that is rationally based on the witness's perception" (cleaned up)
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,915 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 1,611 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 1126 - Acceptance of plan
11 U.S.C. § 1126 Cited 951 times 22 Legal Analyses
Providing that impaired claim and interest holders are entitled to vote on plan approval
Section 2.122 - Matters in evidence
37 C.F.R. § 2.122 Cited 24 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 2.41 - Proof of distinctiveness under section 2(f)
37 C.F.R. § 2.41 Cited 13 times 4 Legal Analyses
(a)For a trademark or service mark - (1)Ownership of prior registration(s). In appropriate cases, ownership of one or more active prior registrations on the Principal Register or under the Trademark Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods or services in the application; however, further evidence may be required. (2)Five years substantially exclusive and continuous use in commerce. In appropriate

Marc Fisher LLC v. Bottega Veneta

24 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 that a declaration appended to a reply brief "fairly respond[ed] only to arguments made in ... [the patent owner]'s response," as required by § 42.23(b), and that the patent owner had "a meaningful opportunity to respond," as required by the APA

Holding that a violation of Video Privacy Protection Act, which prohibits wrongful disclosure by a video tape service provider of video tape rental or sale records, would be a concrete injury since it was analogous to the well-established torts of invasion of privacy and intrusion upon seclusion

Holding party must prove design acquired secondary meaning before first infringement

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 whether the trade dress was "a common basic shape or design" was "inapplicable" because "there has been no showing that the [trade dress] is common generally"

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

Finding that prior registrations of marks including the term ULTIMATE "do not conclusively rebut the Board's finding that ULTIMATE is descriptive in the context of this mark"

Holding that such a statement must merely be made by the party and offered against that party

Limiting lay testimony to "one that is rationally based on the witness's perception" (cleaned up)

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"

Providing that impaired claim and interest holders are entitled to vote on plan approval

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"