AMERICAN ORT, INC. v. ISRAEL

7 Citing cases

  1. Solid 21, Inc. v. Breitling U.S.A. Inc.

    3:19-cv-00514 (MPS) (D. Conn. Sep. 27, 2021)   Cited 1 times

    are afforded a presumption of validity.” Am. Ort, Inc. v. Israel, No. 07-2332, 2007 WL 2049733, at *4 (S.D.N.Y. July 17, 2007). Further, “[a] registered mark becomes incontestable if it has been in continuous use for five consecutive years subsequent to its registration and is still in use.”

  2. Threeline Imports, Inc. v. Vernikov

    239 F. Supp. 3d 542 (E.D.N.Y. 2017)   Cited 15 times
    Recognizing that first use is "sufficient to overcome the presumption of validity created by the plaintiff's registration of the trademark"

    The registration of a trademark creates a presumption that the mark is valid. De Beers LV Trademark v. DeBeers Diamond Syndicate , 440 F.Supp.2d 249, 266 (S.D.N.Y. 2006) (citing Wal–Mart Stores, Inc., v. Samara Brothers, Inc. , 529 U.S. 205, 209, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000) ); Tiffany and Co. v. Costco Wholesale Corp. , 994 F.Supp.2d 474, 479 (S.D.N.Y. 2014) ("[T]he fact that the USPTO accepted [a] mark for registration creates a presumption that the mark is valid.") (quoting American Ort, Inc. v. Israel , No. 07 Civ. 2332, 2007 WL 2049733, at *4 (S.D.N.Y. Jul. 17, 2007) ); see also 15 U.S.C. § 1115. Indeed, an owner's rights in a registered trademark "will trump those of anyone who, prior to filing, had not (1) used the mark, (2) filed an application with the PTO to register the mark, which is pending or has resulted in registration, or (3) filed a foreign application to register the mark and filed an application under Section 44(d) to register the mark in the United States, which is pending or has resulted in registration." De Beers LV , 440 F.Supp.2d at 266 (citing 15 U.S.C. § 1057(c) ).

  3. Mister Softee, Inc. v. Tsirkos

    No. 14 CV 1975-LTS-RLE (S.D.N.Y. Nov. 23, 2015)   Cited 11 times
    Finding irreparable harm because "Plaintiffs have no actual control over the quality of Defendant's products or services"

    Here, Plaintiffs' Mister Softee trademarks are registered on the Principal Register of the United States Patent and Trademark Office ("USPTO"), and thus are presumptively valid. American Ort, Inc. v. Israel, No. 07CV2332, 2007 WL 2049733, at *4 (S.D.N.Y. Jul. 17, 2007). Defendant has not challenged Plaintiffs' ownership of the Mister Softee trademarks, nor rebutted the presumption that they are valid.

  4. Tiffany & Co. v. Costco Wholesale Corp.

    127 F. Supp. 3d 241 (S.D.N.Y. 2015)   Cited 19 times   2 Legal Analyses
    Holding that defendant's attacks on methodology of survey went to weight, not admissibility, of testimony, and attacks were insufficient to raise an issue of material fact on summary judgment where defendant did not offer any evidence that affirmatively disputed the findings of plaintiff's expert

    The Lanham Act provides that registration of a mark is regarded as “conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce.” 15 U.S.C.S. § 1115 (LexisNexis 2006); see also Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir.1999) (“[a] certificate of registration with the PTO is prima facie evidence that the mark is registered and valid (i.e., protectible), that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce”); American Ort, Inc. v. Israel, No. 07CV2332–KMK, 2007 WL 2049733, at *4 (S.D.N.Y. July 17, 2007) (“the fact that the USPTO accepted [a] mark for registration creates a presumption that the mark is valid.”). A defendant contesting the validity of a registered mark bears the burden of demonstrating either that the mark is invalid or that the use of its own mark is not likely to confuse consumers.

  5. Mister Softee, Inc. v. Tsirkos

    No. 14 Civ. 1975 (LTS)(RLE) (S.D.N.Y. Jun. 5, 2014)   Cited 8 times   2 Legal Analyses
    Considering the defendant's rescission argument in evaluating the likelihood of success of the plaintiff's breach of covenant not to compete claim

    "[T]he fact that the USPTO accepted [a] mark for registration creates a presumption that the mark is valid." American Ort, Inc. v. Israel, No. 07 Civ. 2332(KMK), 2007 WL 2049733, at *4 (S.D.N.Y. July, 17, 2007). Defendant has offered no evidence to rebut the presumption, therefore the Court finds that MSI has the legal, exclusive right to the Mister Softee mark, the cone head figure that Mister Softee has registered with the Patent and Trademark Office, and the registered trade dress for the trucks.

  6. Tiffany & Co. v. Costco Wholesale Corp.

    994 F. Supp. 2d 474 (S.D.N.Y. 2014)   Cited 16 times
    Listing surveys as one of the five primary types of evidence in determining genericness

    “[T]he fact that the USPTO accepted [a] mark for registration creates a presumption that the mark is valid.” American Ort, Inc. v. Israel, No. 07 Civ. 2332(KMK), 2007 WL 2049733, at *4 (S.D.N.Y. July, 17, 2007). “[T]he fact of registration thus confers a procedural advantage on the registrant in an infringement action the opposing party must overcome the presumption that the purchasing public perceives the mark to be inherently distinctive.

  7. Operation Able of Greater Boston v. National Able

    646 F. Supp. 2d 166 (D. Mass. 2009)   Cited 7 times
    Concluding that because eBay "was confined to permanent injunctions issued under the Patent Act," the plaintiff was "entitled to a presumption of irreparable harm" in a trademark infringement case

    This Court is not persuaded by the plaintiff's contention that defendant's right to use the marks was conditioned on it remaining "affiliated" with Operation ABLE. There was no formal affiliation between National Able and Operation ABLE but rather a simple contractual relationship. Cf. U.S. Jaycees v. Phil. Jaycees, 639 F.2d 134, 136 (3d Cir. 1981) (local chapter of national organization had its charter revoked); Am. ORT, Inc. v.ORT Israel, No. 07-cv-2332, 2007 WL 2049733, at *2 (S.D.N.Y. July, 17, 2007); Kappa Sigma Fraternity v. Kappa Sigma Gamma Fraternity, 654 F. Supp. 1095, 1097 (D.N.H. 1987). Nor can the Subgrant Agreement be read as an express or implicit license permitting National Able to use its name and marks only in collaboration with Operation ABLE. Cf. Jaycees, 639 F.2d at 139 n. 7 (finding arrangement to be a license agreement); Kappa Sigma, 654 F. Supp. at 1100 (same).