No summary, proceed to other tabs.

Click the topic headings to navigate through the cases and quotes concerning that topic.
Expand All | Contract All

  • Acquiescence is a type of estoppel given that complainant's conduct furthers the objected to activities of the defendant.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007).
      • Acquiescence is a type of estoppel that is based upon the plaintiff's conduct that expressly or by clear implication consents to, encourages, or furthers the activities of the defendant, that is not objected to. Hitachi Metals International v. Yamakyu Chain Kabushiki, 209 USPQ 1057, 1067 (TTAB 1981); CBS, Inc. v. Man's Day Publishing Co., Inc., 205 USPQ 470, 473-474 (TTAB 1980). See also Coach House Restaurant Inc. v. Coach and Six Restaurants Inc., 934 F.2d 1551, 19 USPQ2d 1401, 1404 (11th Cir. 1991).
  • The defense of acquiescence does not begin to run until the mark is published for opposition.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • It is clear, therefore, that the equitable defense of acquiescence in an opposition or cancellation proceeding does not begin to run until the mark is published for opposition. See also National Cable Television Association, Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991) [laches runs from the time from which action could be taken against the trademark rights inhering from registration].
  • A relatively short period of time does not constitute unreasonable delay to bar Petitioner's Section 2 (c) claim by acquiescence.
    • Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005).
      • Petitioner brought this cancellation proceeding on November 22, 2002, approximately eight months after the publication date of the underlying application and six months after issuance of the registration. This relatively short period cannot be viewed as an unreasonable delay. Thus, we find that respondent has not demonstrated that petitioner's Section 2 (c) claim is barred by acquiescence.
  • A plaintiff cannot stop defendant's tolerated conduct if it results in prejudice to the defendant.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007).
      • A plaintiff will not be permitted to stop conduct that it fostered or tolerated, where the result would be prejudicial to the defendant. Id.
  • Acquiescence is not grounds for cancellation.
    • Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002).
      • Initially, to the extent that opposer is attempting to allege laches and acquiescence, per se, as grounds for opposition, the proposed amended pleading is legally insufficient because laches and acquiescence are affirmative defenses, not grounds for opposition to registration of a mark. See University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1401 n. 39 (TTAB 1994).
  • Acquiescence is not grounds for abandonment.
    • Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002).
      • Thus, because opposer's proposed amended pleading in the present case does not include any allegation that applicant's mark has lost all capacity to act as a source-indicator for applicant's goods, the proposed amended pleading fails to state a claim for relief. Opposer's allegations (in Paragraph nos. 19 and 20) that applicant's laches and acquiescence preclude applicant from challenging opposer's continued right to use the mark and that applicant accordingly does not have exclusive rights in the mark, even if accepted as true, are legally insufficient.
  • In cases where equitable defenses have been pleaded and proved, it is necessary to decide whether the question of likelihood of confusion is inevitable or reasonably debatable because the equitable defenses of laches and acquiescence are barred if confusion is inevitable.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • In cases such as this, where equitable defenses have been pleaded and proved, it is necessary to decide whether the question of likelihood of confusion is inevitable or reasonably debatable because the equitable defenses of laches and acquiescence are barred if confusion is inevitable. Ultra-White Co., Inc. v. Johnson Chemical Industries, Inc., 465 F.2d 891, 175 USPQ 166, 167 (CCPA 1972); Reflange Inc. v. R-Con International, supra; Hitachi Metals International v. Yamakyu Chain Kabushiki, 209 USPQ 1057, 1069 (TTAB 1981).
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • This is so because any injury to respondent caused by plaintiff's delay is outweighed by the public's interest in preventing confusion. Turner v. Hops Grill & Bar, Inc., 52 UPSQ2d 1310, 1313 (TTAB 1999), citing Coach House Restaurant Inc. v. Coach and Six Restaurants, Inc., 934 F.2d 1551, 19 UPSQ2d 1401, 1409 (11th Cir. 1991).
The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007) Chester L. Krause v. Krause Publications, Inc., Cancellation No. 92041171, (TTAB 2005) Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002) Grand Total
Turner v. Hops Grill and Bar Inc., 52 USPQ2d 1310 (TTAB 1999) 1
University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994) 1
Coach House Restaurant Inc. v. Coach and Six Restaurants Inc., 934 F.2d 1551, 19 USPQ2d 1401 (11th Cir. 1991) 2 2
National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991) 1
Reflange Inc. v. R-Con International, 17 USPQ2d 1125 (TTAB 1990) 1
Hitachi Metals International v. Yamakyu Chain Kabushiki, 209 USPQ 1057 (TTAB 1981) 2 2
CBS Inc. v. Man's Day Publishing Co. Inc., 205 USPQ 470 (TTAB 1980) 1
Ultra-White Co. Inc. v. Johnson Chemical Industries Inc., 465 F.2d 891, 175 USPQ 166 (CCPA 1972) 1
Grand Total 8 10
No Statutes Listed.