A Piece of Federal Circuit History: It’s a Little Cheesy

One of the most cited decisions issued by the Federal Circuit is University of Notre Dame Du Lac v. J.C. Gourmet Food Co., Inc., 703 F.2d 1372 (Fed. Cir. 1983). In that case, the University of Notre Dame appealed the Trademark Trial and Appeal Board’s dismissal of the university’s opposition to the food importer’s application for registration for the wordmark NOTRE DAME and a design mark for use with imported cheeses. In its decision, the Federal Circuit affirmed the Board’s holding that despite the public’s ability to recall the famous mark, the differences between the goods and services being offered by the university and food importer were sufficient to preclude a likelihood of confusion, there was no false association being made by the food importer with the university, and the university was not entitled to preclude the food importer from registering its trademark for cheeses. Since this opinion was published, it has been cited nearly 3,000 times for issues related to trademark registration preclusion.