Performance Open Wheel Racing, Inc. v. United States Auto Club Inc.

30 Cited authorities

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
Enzo Biochem, Inc. v. Gen-Probe Inc.
424 F.3d 1276 (Fed. Cir. 2005) Cited 62 times 1 Legal Analyses
Finding that attorney argument did not demonstrate a genuine issue of material fact sufficient to avoid summary judgment
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
Princeton Vanguard, LLC v. Frito-Lay North America, Inc.
786 F.3d 960 (Fed. Cir. 2015) Cited 32 times 5 Legal Analyses
Explaining that although the "Board is not required to discuss every piece of evidence," it cannot "disregard [evidence] without explanation" or "short-cut its consideration of the factual record before it"
In re Cordua Rests., Inc.
823 F.3d 594 (Fed. Cir. 2016) Cited 30 times 7 Legal Analyses
Holding that certain words referring to key aspects of a genus of services were generic for those services
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.”
Royal Crown Co. v. Coca-Cola Co.
892 F.3d 1358 (Fed. Cir. 2018) Cited 21 times 2 Legal Analyses
Recognizing that indirect evidence, including of "competitive use, evidence that other companies use [a term] in combination with their own . . . marks, third-party registrations and applications for such combined marks," may be relevant for genericness
In re Steelbuilding.com
415 F.3d 1293 (Fed. Cir. 2005) Cited 26 times 2 Legal Analyses
Affirming the refusal of the Patent and Trademark Office to register the mark STEELBUILDING.COM, because the mark was descriptive of online services for the design of steel buildings, and lacked secondary meaning
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
Cai v. Diamond Hong, Inc.
901 F.3d 1367 (Fed. Cir. 2018) Cited 10 times
2018-1688 08-27-2018 ZHENG CAI, DBA Tai Chi Green Tea Inc., Appellant v. DIAMOND HONG, INC., Appellee Zheng Cai, Vernon Hills, IL, pro se. Jonathan E. Moskin, Foley & Lardner LLP, New York, NY, for appellee. Also represented by Diane Grace Elder, Chicago, IL. Wallach, Circuit Judge. Zheng Cai, Vernon Hills, IL, pro se. Jonathan E. Moskin, Foley & Lardner LLP, New York, NY, for appellee. Also represented by Diane Grace Elder, Chicago, IL. Before Prost, Chief Judge, Wallach and Hughes, Circuit Judges
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 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"

Performance Open Wheel Racing, Inc. v. United States Auto Club Inc.

30 Cited authorities

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

Finding that attorney argument did not demonstrate a genuine issue of material fact sufficient to avoid summary judgment

Holding party must prove design acquired secondary meaning before first infringement

Explaining that although the "Board is not required to discuss every piece of evidence," it cannot "disregard [evidence] without explanation" or "short-cut its consideration of the factual record before it"

Holding that certain words referring to key aspects of a genus of services were generic for those services

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

Recognizing that indirect evidence, including of "competitive use, evidence that other companies use [a term] in combination with their own . . . marks, third-party registrations and applications for such combined marks," may be relevant for genericness

Affirming the refusal of the Patent and Trademark Office to register the mark STEELBUILDING.COM, because the mark was descriptive of online services for the design of steel buildings, and lacked secondary meaning

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

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 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"