Randall A. Terry v. Troy Newman

11 Cited authorities

Waits v. Frito-Lay, Inc.
978 F.2d 1093 (9th Cir. 1992) Cited 248 times 9 Legal Analyses
Holding that § 43 claims based on voice are cognizable
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.”
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"
Pro-Football, Inc. v. Harjo
284 F. Supp. 2d 96 (D.D.C. 2003) Cited 20 times 6 Legal Analyses
Finding economic prejudice if a trademark registration were cancelled where a defendant had invested money in marketing and brand development
Motschenbacher v. R. J. Reynolds Tobacco Co.
498 F.2d 821 (9th Cir. 1974) Cited 59 times
Holding that slightly altered picture of well-known driver's race car was distinctive enough to suggest the plaintiff's identity, although the driver could not be seen
Electronic Design Sales v. Electronic Sys
954 F.2d 713 (Fed. Cir. 1992) Cited 28 times
Holding that purchaser confusion is the "primary focus" and, in case of goods and services that are sold, "the inquiry generally will turn on whether actual or potential `purchasers' are confused"
Bongrain Intern. v. Delice de France, Inc.
811 F.2d 1479 (Fed. Cir. 1987) Cited 15 times
Assigning "great weight" to the parties' trademark co-existence agreement, "which would give both of them the advantages of registration"
University of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co.
703 F.2d 1372 (Fed. Cir. 1983) Cited 19 times 2 Legal Analyses
In University of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 1376, 217 USPQ 505, 509 (Fed. Cir. 1983), the court added that section 2(a) embraces concepts of the right to privacy which may be violated even in the absence of likelihood of confusion.
Section 1052 - Trademarks registrable on principal register; concurrent registration
15 U.S.C. § 1052 Cited 1,599 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 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"

Randall A. Terry v. Troy Newman

11 Cited authorities

Holding that § 43 claims based on voice are cognizable

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

Finding economic prejudice if a trademark registration were cancelled where a defendant had invested money in marketing and brand development

Holding that slightly altered picture of well-known driver's race car was distinctive enough to suggest the plaintiff's identity, although the driver could not be seen

Holding that purchaser confusion is the "primary focus" and, in case of goods and services that are sold, "the inquiry generally will turn on whether actual or potential `purchasers' are confused"

Assigning "great weight" to the parties' trademark co-existence agreement, "which would give both of them the advantages of registration"

In University of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 1376, 217 USPQ 505, 509 (Fed. Cir. 1983), the court added that section 2(a) embraces concepts of the right to privacy which may be violated even in the absence of likelihood of confusion.

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"