Affirmative Defenses - Estoppel - Equitable Estoppel



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  • Conduct which occurs prior to the publication of the application for opposition generally cannot support a finding of equitable estoppel.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • Applicant's equitable estoppel argument is also unavailing. Conduct which occurs prior to the publication of the application for opposition generally cannot support a finding of equitable estoppel. See, Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 734, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992); National Cable Television Ass'n Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 1581, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991).
  • Case Finding: Equitable estoppel does not apply.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • Based on this evidence, we do not find that equitable estoppel applies. First, while opposer suggested a joint business venture based on the identity of the parties' names, we do not find that opposer agreed, or misled applicant into believing, that opposer would not object to the registration of applicant's marks. Second, there is no evidence that applicant relied on opposer's proposal as assurance that opposer would not object to the registration of applicant's marks. In fact, Mr. Torgerson contacted his attorney after receiving the e-mail from Mr. Person presumably to discuss legal issues presented by opposer's contact. Shortly thereafter, applicant filed its applications (the e-mail from Michael Person was in March 2005 and applicant filed its applications in May 2005). Furthermore, there is no testimony that applicant believed opposer was transitioning from PANDA TRAVEL to PANDA ONLINE, PANDA HAWAII, or any other mark. Finally, opposer did not delay in asserting its rights; it filed timely notices of opposition. Because opposer acted at its first opportunity to object to the registration of applicant's marks and opposer made no representation to applicant that it would not oppose applicant's marks, there is no basis for the equitable estoppel defense.
  • In an opposition proceeding, the equitable estoppel defense must be tied to the registration of applicant's marks, not applicant's use of its marks.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • In an opposition proceeding, the equitable estoppel defense must be tied to the registration of applicant's marks, not applicant's use of its marks. Id.
  • The elements of equitable estoppel.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • The elements of equitable estoppel are (1) misleading conduct, which may include not only statements and action but silence and inaction, leading another to reasonably infer that rights will not be asserted against it; (2) reliance upon this conduct; and (3) due to this reliance, material prejudice if the delayed assertion of such rights is permitted. Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992).
Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009) Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008) Grand Total
Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes Inc., 971 F.2d 732, 23 USPQ2d 1701 (Fed. Cir. 1992) 2
National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991) 1
Grand Total 1 2 3
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