UKW Holding Company

27 Cited authorities

Armstrong Co. v. Nu-Enamel Corp.
305 U.S. 315 (1938) Cited 344 times
Holding that registration of a mark "does not create any substantive rights in the registrant"
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
Converse, Inc. v. Int'l Trade Comm'n
907 F.3d 1361 (Fed. Cir. 2018) Cited 38 times 3 Legal Analyses
Holding party must prove design acquired secondary meaning before first infringement
In re Cordua Rests., Inc.
823 F.3d 594 (Fed. Cir. 2016) Cited 27 times 7 Legal Analyses
Holding that certain words referring to key aspects of a genus of services were generic for those services
Royal Crown Co. v. Coca-Cola Co.
892 F.3d 1358 (Fed. Cir. 2018) Cited 20 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 Viterra Inc.
671 F.3d 1358 (Fed. Cir. 2012) Cited 26 times 3 Legal Analyses
Holding that "any minor differences in the sound of [X–Seed and XCEED marks for agricultural seeds] may go undetected by consumers and, therefore, would not be sufficient to distinguish the marks"
Duopross Meditech Corp. v. Inviro Med. Devices, Ltd.
695 F.3d 1247 (Fed. Cir. 2012) Cited 25 times 4 Legal Analyses
Holding that, although the Board may "ascertain the meaning and weight of each of the components that makes up the mark," it "ultimately must consider the mark as a whole and do so in the context of the goods or services at issue"
In re Dial-A-Mattress Operating Corp.
240 F.3d 1341 (Fed. Cir. 2001) Cited 38 times 3 Legal Analyses
Holding that 1–888–M–A–T–T–R–E–S–S “immediately conveys the impressions that a service relating to mattresses is available by calling the telephone number”
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
In re Oppedahl & Larson LLP
373 F.3d 1171 (Fed. Cir. 2004) Cited 30 times 1 Legal Analyses
Holding that courts "may weigh the individual components of the mark" to assess its overall distinctiveness
Section 1051 - Application for registration; verification
15 U.S.C. § 1051 Cited 3,904 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 1,605 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"

UKW Holding Company

27 Cited authorities

Holding that registration of a mark "does not create any substantive rights in the registrant"

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

Holding party must prove design acquired secondary meaning before first infringement

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

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

Holding that "any minor differences in the sound of [X–Seed and XCEED marks for agricultural seeds] may go undetected by consumers and, therefore, would not be sufficient to distinguish the marks"

Holding that, although the Board may "ascertain the meaning and weight of each of the components that makes up the mark," it "ultimately must consider the mark as a whole and do so in the context of the goods or services at issue"

Holding that 1–888–M–A–T–T–R–E–S–S “immediately conveys the impressions that a service relating to mattresses is available by calling the telephone number”

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 courts "may weigh the individual components of the mark" to assess its overall distinctiveness

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"