Category Archives: Trademark

The 13th DuPont Factor

In a likelihood of confusion analysis under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), the thirteenth DuPont factor is a catch-all for “any other established fact probative of the effect of use.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). This thirteenth […]

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Trade Dress and Copyright for Functional Software Tool

The specific design elements of a software tool may be entitled to “look and feel” trade dress protection if it is nonfunctional. Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 309 (3d Cir. 2014). But even if the tools’ elements are functional, such non-protectable elements could still provide a plausible circumstantial basis to state […]

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Nunc Pro Tunc Assignment to Bridge Priority

A nunc pro tunc trademark assignment is one where the parties agree the assignment was granted on an earlier date in order to retroactively document a transfer of ownership. Latin for “now for then,” a nunc pro tunc document can be thought of as a backdated document. This often is used to correct an earlier oversight, such […]

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Testimony About Signage Contradicted by Google Street View

In an opposition or cancellation for likelihood of confusion under Section 2(d) that hinges on an earlier priority date of first use, “proof of such earlier date must be clear and convincing and oral testimony given long after the date sought to be proved must be carefully scrutinized.” Rockwood Chocolate Co. v. Hoffman Candy Co., […]

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Where the Place Meets the Spot

In a likelihood of confusion analysis under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), two key DuPont factors are the similarity or dissimilarity of the marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated […]

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