No summary, proceed to other tabs.

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

  • Federal Rule 8(c) enumerates standard trademark affirmative defenses.
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • The threshold question is whether applicant has properly pleaded its affirmative defense. Federal Rule 8(c) specifies, inter alia, some "standard trademark …defenses, such as estoppel, laches, fraud, license, and res judicata, but it [allows] 'any other matter constituting an avoidance or affirmative defense.'" See 3 J. Gilson Trademark Protection and Practice §8.12[1] at 8-249-250 (1999). Compare Section 33 of the Lanham Act, 15 U.S.C. §1115.
  • Lack of standing is not an affirmative defense.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • Contrary to petitioner's argument, respondent did not waive its right to challenge petitioner's standing by waiting until its brief on the case to do so. "Lack of standing" is not an affirmative defense; rather, standing is an essential element of petitioner's case which, if it is not proved at trial, defeats petitioner's claim. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982); No Nonsense Fashions, Inc. v. Consolidated Foods Corporation, 226 USPQ 502 (TTAB 1985).8 FOOTNOTE 8""Lack of standing" might be the basis for a defendant's motion to dismiss for failure to state a claim, under Fed. R. Civ. P. 12(b)(6), but the "defense" of failure to state a claim is not one which is waived if it is not asserted by motion. See Fed. R. Civ. P. 12(h)(2), which is applicable to Board proceedings under Trademark Rule 2.116(a), 37 C.F.R. 2.116(a)."
  • "Tacking" is a defense that must be pleaded to put opposer on notice of new matter that applicant is placing at issue.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Where, as here, applicant effectively denied opposer's allegation of prior use, opposer must prove that element of its claim. However, "tacking" is a defense that must be pleaded to put opposer on notice of new matter that applicant is placing at issue (i.e., a mark previously used by applicant that is the legal equivalent of applicant's opposed mark, and that provides the basis for applicant to claim prior use).
  • An unpleaded defense cannot be relied upon by the defendant unless the defendant's pleading is amended (or deemed amended), pursuant to Fed. R. Civ. P. 15(a) or 15(b), to assert the matter.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • "[A]n unpleaded defense cannot be relied upon by the defendant unless the defendant's pleading is amended (or deemed amended), pursuant to Fed. R. Civ. P. 15(a) or 15(b), to assert the matter." TBMP §§311.02 and 314 (2nd ed. rev. 2004).
  • Definition of Affirmative Defense
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • "An affirmative defense is defined as follows: ""A defendant's assertion raising new facts and arguments that, if true, will defeat the plaintiff's or prosecution's claim, even if all allegations in the complaint are true.16"" FOOTNOTE 16 ""Black's Law Dictionary, p. 430 (7th ed. 1999); and "An answer may contain any defense, including the affirmative defenses of unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior judgment, or any other matter constituting an avoidance or affirmative defense." Trademark Rule 2.106(b)(1)."""
  • Mere denial by applicant of opposer's allegation of priority of use is sufficient to put opposer on notice that it must prove its pleaded priority, but it is insufficient to put opposer on notice that any priority opposer will attempt to prove will have to predate the priority that applicant will attempt to prove through tacking.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Mere denial by applicant of opposer's allegation of priority of use is sufficient to put opposer on notice that it must prove its pleaded priority, but it is insufficient to put opposer on notice that any priority opposer will attempt to prove will have to predate the priority that applicant will attempt to prove through tacking.
  • Tacking is a defense that must be pleaded to put opposer on notice of new matter that applicant is placing at issue.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • Where, as here, applicant effectively denied opposer's allegation of prior use, opposer must prove that element of its claim. However, "tacking" is a defense that must be pleaded to put opposer on notice of new matter that applicant is placing at issue (i.e., a mark previously used by applicant that is the legal equivalent of applicant's opposed mark, and that provides the basis for applicant to claim prior use).
  • The allegation of no likelihood of confusion is not an affirmative defense; rather, it is an amplification of applicant's defense to opposer's likelihood of confusion claim.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • FOOTNOTE 2 "As an "affirmative defense," applicant alleged that there is no likelihood of confusion. That allegation is not an affirmative defense; rather, it is an amplification of applicant's defense to opposer's likelihood of confusion claim."
  • The reason for requiring an affirmative defense to be pleaded is to give the plaintiff notice of the defense and an opportunity to respond.
    • The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008)
      • The reason for requiring an affirmative defense to be pleaded is to give the plaintiff notice of the defense and an opportunity to respond.17 FOOTNOTE 17 "Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 350 (1971)."
  • Affirmative defenses may be waived for failing to maintain them in trial brief.
    • Benjamin J. Giersch v. Scripps Networks, Inc., Cancellation No. 92045576 (TTAB 2009)
      • FOOTNOTE 4 "Respondent did not maintain its affirmative defenses in its trial brief. Accordingly, we consider the defenses to have been waived, and we give them no further consideration."
The H.D. Lee Company, Inc. v. Maidenform, Inc., Opposition No. 91168309 (TTAB 2008) Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003) Grand Total
No Nonsense Fashions Inc. v. Consolidated Foods Corporation, 226 USPQ 502 (TTAB 1985) 1
Lipton Industries Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982) 1
Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313 (1971) 1
Grand Total 1 2 3

Sec. 1115. Registration on principal register as evidence of exclusive right to use mark; defenses

  1. (a) Evidentiary value; defenses
    Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a mark registered on the principal register provided by this chapter and owned by a party to an action shall be admissible in evidence and shall be prima facie 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 on or in connection with the goods or services specified in the registration subject to any conditions or limitations stated therein, but shall not preclude another person from proving any legal or equitable defense or defect, including those set forth in subsection (b) of this section, which might have been asserted if such mark had not been registered.
  2. (b) Incontestability; defenses
    To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be 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. Such conclusive evidence shall relate to the exclusive right to use the mark on or in connection with the goods or services specified in the affidavit filed under the provisions of section 1065 of this title, or in the renewal application filed under the provisions of section 1059 of this title if the goods or services specified in the renewal are fewer in number, subject to any conditions or limitations in the registration or in such affidavit or renewal application. Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the following defenses or defects:
    1. (1) That the registration or the incontestable right to use the mark was obtained fraudulently; or
    2. (2) That the mark has been abandoned by the registrant; or
    3. (3) That the registered mark is being used by or with the permission of the registrant or a person in privity with the registrant, so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or
    4. (4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; or
    5. (5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 1057(c) of this title, (B) the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved; or
    6. (6) That the mark whose use is charged as an infringement was registered and used prior to the registration under this chapter or publication under subsection (c) of section 1062 of this title of the registered mark of the registrant, and not abandoned: Provided, however, That this defense or defect shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant's mark; or
    7. (7) That the mark has been or is being used to violate the antitrust laws of the United States; or
    8. (8) That the mark is functional; or
    9. (9) That equitable principles, including laches, estoppel, and acquiescence, are applicable.