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  • Section 19 of the Lanham Acct provides for the equitable principle of laches.
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • Section 19 of the Lanham Act provides that the equitable principle of laches "where applicable may be considered and applied." 15 U.S.C. Section 1069.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • By statute, laches is available as a defense in cancellation proceedings. 15 U.S.C. § 1069.
  • Laches and acquiescence are affirmative defenses, not grounds for opposition to registration of a mark.
    • 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).
  • Elements of a prima facie defense of laches.
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • A prima facie defense of laches requires a showing of (1) unreasonable delay in asserting one's rights against another, and (2) material prejudice to the latter as a result of the delay. Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462 (Fed. Cir. 2001); and Lincoln Logs Ltd. v. Lincoln Pre-cut Log Homes, Inc., 971 F.2d 732, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992).
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • "To prevail on its affirmative defense [of laches, respondent] was required to establish that there was undue or unreasonable delay by [petitioner] in asserting its rights, and prejudice to [respondent] resulting from the delay." Id. at 1462.
  • A discussion of the concept of laches.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • The concept of laches, thus, essentially acts as an exception for issuing a judgment in favor of a party that has proved its case; that is, although "at law" the plaintiff would be entitled to judgment, the defendant has shown special circumstances that would make the application of strictly formulated rules of law unacceptable. The defense of laches is not determined by adherence to rigid legal rules; rather, we analyze laches by a consideration of the specific facts and a balancing of the respective interests and equities of the parties, as well as of the general public.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • In this connection, Professor McCarthy quotes the Restatement:
        "The doctrine [of laches] is not intended to encourage precipitous litigation, and a trademark owner is not required to take action at the first indication of a possible infringement. The plaintiff is not ordinarily chargeable with delay prior to an actual intrusion upon its rights." Restatement (Third) of Unfair Competition, § 31, comment c (1995). See Tandy Corp. v. Malone & Hyde, Inc., 769 F.2d 362, 226 USPQ 703 (6th Cir. 1985), cert. denied, 476 U.S. 1158, 106 C. Ct. 2277 (1986) ["A reasonable businessman should be afforded some latitude to assess both the impact of another's use of an allegedly infringing trademark as well as the wisdom of pursuing litigation on the issue."].
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • As stated above, to establish a laches defense, a defendant must show undue or unreasonable delay by plaintiff in asserting its rights, and prejudice to defendant from the delay. Bridgestone/Firestone Research supra at 1462 and Lincoln Logs supra at 1703. On summary judgment, respondent must establish that there is no genuine issue of material fact as to either element. Gasser Chair Co. Inc. v. Infanti Chair Manufacturing Corp., 60 F3d 770, 34 USPQ2d 1822, 1824 (Fed. Cir. 1995). With regard to delay, the focus is on reasonableness and the Board must consider any excuse offered for the delay. A. C. Aukerman Co. v. R. L. Chaides Construction Co., 960 F.2d 1020, 22 USPQ2d 1321, 1329 (Fed. Cir. 1992). With regard to prejudice, there must also have been some detriment due to the delay such as evidentiary prejudice or economic prejudice, and respondent must show that its prejudice resulted from the delay. 7 Id.
  • Laches is principally a question of the inequity of permitting the claim to be enforced — an inequity founded upon some change in the condition or relations of the property or the parties.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • As noted by our primary reviewing court, "[l]aches is ‘principally a question of the inequity of permitting the claim to be enforced — an inequity founded upon some change in the condition or relations of the property or the parties.'" Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, 58 USPQ2d at 1463 [citation omitted].
  • Laches is applied at the informed discretion of the TTAB and applied in an atmosphere of common sense with an eye to basic fairness.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Laches is applied at the informed discretion of the Board and, in the words of Professor McCarthy, equitable defenses "must be applied in an atmosphere of common sense with an eye to basic fairness." McCarthy on Trademarks and Unfair Competition at § 20:73.
  • Registrant's laches or acquiescence defense is an equitable one.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • To quote the predecessor of our primary reviewing court: "Registrant's [laches or acquiescence] defense is, after all, an equitable one. We do not scan petitioner's history for one fatal misstep. We sustain petitioner's rights in the absence of a showing that to do so would work injustice." Ralston Purina Co. v. Midwest Cordage Co., Inc., 373 F.2d 1015, 153 USPQ 73, 77 (CCPA 1967) [emphasis in original].
  • Equity does not seek for general principles, but weighs the opposed interests in the scales of conscience and fair dealing.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Further, "equity does not seek for general principles, but weighs the opposed interests in the scales of conscience and fair dealing." Nark, Inc. v. Noah's, Inc., 212 USPQ 934, 944-45 (TTAB 1981), quoting Dwinell-Wright Co. v. White House Milk Co., Inc., 132 F.2d 822, 56 USPQ 120, 122 (2d Cir. 1943).
  • Mere delay in asserting a trademark-related right does not necessarily result in changed conditions sufficient to support the defense of laches. There must also have been some detriment to the defendant due to the delay.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • "Mere delay in asserting a trademark-related right does not necessarily result in changed conditions sufficient to support the defense of laches. There must also have been some detriment due to the delay." Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, supra at 1463.
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • As petitioner points out, however, mere delay in asserting a trademark-related right does not necessarily result in changed conditions sufficient to support the defense of laches. There must also have been some detriment to the defendant due to the delay. Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, supra at 1463. Prejudice is generally shown by the fact that in reliance on petitioner's silence, respondent built up a valuable business and good will around the mark during the time petitioner never objected. Turner v. Hops Grill and Bar Inc., 52 USPQ2d 1310 (TTAB 1999). See generally: J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §20:76 (4th ed. 2004).
  • The mere passage of time does not constitute laches.
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • The mere passage of time does not constitute laches. Aquion, supra at 1373, citing Advanced Cardiovascular Systems v. SciMed Life Systems, 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed.Cir. 1993).
  • The trademark holder is usually expected to provide an explanation for delay that appears to cause prejudice.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Petitioner is conspicuously silent regarding its reasons for the delay. See J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, supra at § 31:14 ["The trademark owner is usually expected to give some reason for delay which appears to cause prejudice. It is dangerous to simply stand mute and take the position that there is no obligation to explain apparent lethargy."].
  • The laches defense, if successful, will serve as a bar against a petition for cancellation grounded on a likelihood of confusion unless confusion is inevitable.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • The laches defense, if successful, will serve as a bar against a petition for cancellation grounded on a likelihood of confusion unless confusion is inevitable.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • The laches defense, if successful, will serve as a bar against a petition for cancellation grounded on likelihood of confusion unless confusion is inevitable. See Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131 (TTAB 1990) (equitable defenses such as laches and acquiescence would not preclude a judgment for plaintiff if it is determined that confusion is inevitable); Feed Flavors Inc. v. Kemin Industries, Inc., 214 USPQ 360, 364 (TTAB 1982).
  • One cannot be guilty of laches until his right ripens into one entitled to protection.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • One court stated that the senior user has no obligation to sue until "the likelihood of confusion looms large" and that "[O]ne cannot be guilty of laches until his right ripens into one entitled to protection. For only then can his torpor be deemed inexcusable." Johanna Farms, Inc. v. Citrus Bowl, Inc., 468 F.Supp. 866, 199 USPQ 16, 28 (EDNY 1978).
  • It is well established that equitable defenses such as laches and estoppel will not be considered and applied where the marks of the parties are identical and the goods are the same or essentially the same.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Although we have determined that laches does not apply in this case, we shall turn our attention, for the sake of completeness, to the matter of whether the confusion between the parties' marks is inevitable because, if it is, then the defense of laches in not applicable under any circumstances. Ultra-White Co., Inc. v. Johnson Chemical Industries, Inc., 465 F.2d 891, 175 USPQ 166 (CCPA 1972); and Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131 (TTAB 1990) ["It is not necessary to discuss this theory because it is well established that equitable defenses such as laches and estoppel will not be considered and applied where, as here, the marks of the parties are identical and the goods are the same or essentially the same."].
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • This is so because any injury to respondent caused by petitioner's delay is outweighed by the public's interest in preventing confusion in the marketplace. Turner v. Hops Grill & Bar, Inc., 52 USPQ2d 1310, 1313 (TTAB 1999), citing Coach House Restaurant Inc. v. Coach and Six Restaurants, Inc., 934 F.2d 1551, 19 USPQ2d 1401, 1409 (11th Cir. 1991).
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • The final point to consider is whether the confusion between the parties' marks is inevitable because, if it is, then the defense of laches is not applicable. Ultra-White Co., Inc. v. Johnson Chemical Industries, Inc., 465 F.2d 891, 175 USPQ 166 (CCPA 1972); and Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131 (TTAB 1990) ["It is not necessary to discuss this theory because it is well established that equitable defenses such as laches and estoppel will not be considered and applied where, as here, the marks of the parties are identical and the goods are the same or essentially the same."].
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • This is so because any injury to respondent caused by petitioner's delay is outweighed by the public's interest in preventing confusion in the marketplace. Turner v. Hops Grill & Bar, Inc., 52 USPQ2d 1310, 1313 (TTAB 1999), citing Coach House Restaurant Inc. v. Coach and Six Restaurants, Inc., 934 F.2d 1551, 19 USPQ2d 1401, 1409 (11th Cir. 1991).
  • In the context of a trademark opposition or cancellation proceeding, a laches defense must be tied to a party's registration of a mark rather than to its use of the mark.
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • In the context of a trademark opposition or cancellation proceeding, this defense must be tied to a party's registration of a mark rather than to its use of the mark. National Cable Television Ass'n, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 1581, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991) (laches runs from the time from which action could be taken against the trademark rights inhering upon registration). Id., 19 USPQ2d at 1432.
  • Although the laches defense must be tied to a party's registration, a laches defense may be based upon opposer's failure to object to an applicant's earlier registration of the same mark for substantially the same goods.
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • Although the laches defense must be tied to a party's registration, in circumstances similar to these (although in the context of an opposition proceeding), the Board stated that a laches defense "may be based upon opposer's failure to object to an applicant's earlier registration of the same mark for substantially the same goods." Aquion Partners L.P. v. Envirogard Products Ltd., 43 USPQ2d 1371, 1371 (TTAB 1997), citing Lincoln Logs, 23 USPQ2d at 1703, which in turn cited Copperweld Corp. v. Astralloy-Vulcan Corp., 196 USPQ 585, 591 (TTAB 1971).
  • Respondent may assert, and attempt to prove, the defense of laches, even though respondent's registration has expired.
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • The Board further stated that "opposer's failure to object to applicant's prior registration during the existence thereof was not wiped out by the expiration of the registration, albeit the period of delay ended with the expiration of that registration." Aquion, supra, n. 8.6 For the same reason, in the present case respondent may assert, and attempt to prove, the defense of laches, even though respondent's registration has expired.
        FOOTNOTE 6 "The Board in Aquion noted that such a finding was not inconsistent with a decision of our primary reviewing court in the case of Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307 (Fed.Cir. 1989), involving a concurrent use proceeding and the question of lawful use. In Action, the Court held that "a canceled registration cannot prevent a party from being a lawful user of a mark when that party's use is subsequent to the cancellation of the federal registration," noting that "constructive notice, pursuant to section 22 of the Lanham Act, exists, and lasts, only as long as the federal registration giving rise to that constructive notice remains in effect." Id. The Court also noted, however, that constructive notice during the pendency of the registration was not extinguished by the later cancellation, stating that "Action's use of the mark during the pendency of Labor's federal registration cannot be deemed 'lawful use'" and holding that "the constructive notice effects of Labor's federal registration prevented Action from being a lawful user only during the existence of that registration." Id. In distinguishing Action, the Board concluded that:
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • "It is clear therefrom that in the Action Temporary Services case, the cancellation of Labor's registration did not, in the Court's view, retroactively render lawful the use made by Action during the existence of Labor's registration. To the contrary, even after the cancellation of the registration, the use made by Action during the registration's existence continued to carry the taint of unlawfulness, and only the use made subsequent to the cancellation of the registration was considered lawful by the Court. Just as the illegality of Action's use during the existence of Labor's registration was not wiped out by the cancellation of that registration, so here too we believe that opposer's failure to object to applicant's prior registration during the existence thereof was not wiped out by the expiration of the registration."
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • Thus, we find that respondent is not precluded, as a matter of law, from asserting a laches defense despite the fact that the FISHER KING SEAFOODS registration has been cancelled. The expiration of the registration does not extinguish either actual notice or constructive notice during the term of the registration.
  • A petitioner must be shown to have had actual knowledge or constructive notice of a registrant's trademark use to establish a date of notice from which a delay for purposes of laches can be measured.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • A petitioner must be shown to have had actual knowledge or constructive notice of a registrant's trademark use to establish a date of notice from which a delay for purposes of laches can be measured.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • A petitioner must be shown to have had actual knowledge or constructive notice of a registrant's trademark use to establish a date of notice from which a delay of laches can be measured. Loma Linda Food Co. v. Thomson & Taylor Spice Co., 279 F.2d 522, 126 USPQ 261 (CCPA 1960).
  • To prevail on its affirmative defense of laches, respondent is required to establish that there was undue or unreasonable delay by petitioner in asserting its rights, and prejudice to respondent resulting from the delay.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • In order to prevail on its affirmative defense of laches, respondent is required "to establish that there was undue or unreasonable delay [by petitioner] in asserting its rights, and prejudice to [respondent] resulting from the delay." Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462-1463 (Fed. Cir. 2001). See Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes Inc., 971 F.2d 732, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992).
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • In order to prevail on his affirmative defense of laches, respondent is required "to establish that there was undue or unreasonable delay [by petitioner] in asserting its rights, and prejudice to [respondent] resulting from the delay." Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462-63 (Fed. Cir. 2001). See Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes Inc., 971 F.2d 732, 23 USPQ2d 1701 (Fed. Cir. 1992).
  • Registration on the principal register is constructive notice of the registrant's claim of ownership of the trademark.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • The Federal Circuit, in Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462-63 (Fed. Cir. 2001) stated the following: "The Trademark Act establishes various events in the life of a registered trademark which impact upon an adverse claimant, from which events action could be taken and thus from which the period of delay may be measured. Thus 15 U.S.C. § 1072 provides that registration on the principal register is constructive notice of the registrant's claim of ownership of the trademark; § 1065 states the conditions of incontestability of the registrant's right to use the trademark; and § 1115 provides that registration is evidence of the registrant's exclusive right to use the trademark." See Willson v. Graphol Products Co., 188 F.2d 498, 89 USPQ 382 (CCPA 1951) ["We are of the opinion that registrations under the 1905 Act are public records and that as such they constitute such constructive notice as will preclude a cancellation petitioner from pleading ignorance of the existence of a particular mark."].
  • In the absence of actual knowledge prior to the close of the opposition period, the date of registration of the trademark is the operative date for calculating laches.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Thus, the length of petitioner's delay in filing the petition for cancellation is approximately three years and eight months.10 FOOTNOTE 10 "In reviewing the Board's case law in the wake of National Cable, we recognize that there have been some discrepancies regarding the point in time when the laches clock for cancellations begins to run. See, e.g., Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310, 1312 (TTAB 1999) ["In an opposition or cancellation proceeding, where the objection is to the issuance of a registration of a mark, laches starts to run when the mark in question is published for opposition....In this case, there is no genuine issue of material fact that laches started to run in 1992, when the registration issued to respondent's predecessor-ininterest."]; and Aquion Partners L.P. v. Envirogard Products Ltd., 43 USPQ2d 1371, 1373 n. 7 (TTAB 1997) ["The trademark statute, unlike the patent law, specifically provides that registration of a mark on the principal register shall be constructive notice of the registrant's claim of ownership thereof....the U.S. Court of Appeals for the Federal Circuit has held that in trademark opposition and cancellation proceedings, laches begins to run when the mark in question is published for registration."]. Our decision herein is intended to clarify this point. That is, in the absence of actual knowledge prior to the close of the opposition period, the date of registration is the operative date for calculating laches. Bridgestone/Firestone Inc. v. Automobile Club de l'Ouest de la France, supra at 1463, citing National Cable (laches runs from the time from which action could be taken against the trademark rights inhering upon registration). See generally J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §§ 20:75 and 31:40 (4th ed. 2005) ["Because of the constructive notice provisions of § 22 of the Lanham Act, it seems clear that the constructive notice that is triggered by registration should serve to put potential petitioners for cancellation on notice as a matter of law. Because a petition to cancel cannot be filed until a registration exists, the laches clock for cancellations should not begin running until registration and, because of constructive notice, not begin to run at any point after registration."]."
  • Publication of a trademark in the Official Gazette does not provide constructive notice of a trademark registration.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Contrary to the gist of respondent's argument that petitioner had constructive notice of respondent's "registration" when his underlying application was published for opposition, publication of a mark in the Official Gazette does not provide such constructive notice.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • FOOTNOTE 9 "Contrary to respondent's assertion that petitioner had constructive notice of respondent's "registration" when its underlying application was published for opposition, publication of a mark in the Official Gazette does not provide constructive notice."
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • "[L]aches, with respect to protesting the issuance of the registration for the mark, could not possibly start to run prior to when...[the] application for registration was published for opposition." National Cable Television Association, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991).
  • In the absence of actual notice prior to the close of the opposition period, the date of registration is the operative date for calculating laches.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • The Board recently ruled that, in the absence of actual notice prior to the close of the opposition period, the date of registration is the operative date for calculating laches. Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 USPQ2d 1203, 1210 (TTAB 2006), aff'd unpublished op., Appeal Nos. 2006-1366, -1367 (Fed. Cir. Dec. 6, 2006).
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • In the absence of actual notice before the close of the opposition period, the date of registration is the operative date for calculating laches. Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 USPQ2d 1203, 1210 (TTAB 2006), aff'd unpublished opinion, Appeal Nos. 2006-1366 and 1367 (Fed. Cir. Dec. 6, 2006).
  • The length of delay between notice and filing a petition for cancellation is a factor when considering a laches defense.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • The length of delay between notice and filing a petition for cancellation is a factor when considering a laches defense.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • The length of delay between notice and filing a petition for cancellation is a factor when considering a laches defense. Teledyne Technologies, Inc. v. Western Skyways, Inc., supra at 1210 (3 years, 8 months of unexplained delay held sufficient for laches).
  • Respondent's reliance on petitioner's delay in filing a petition for cancellation is not a requirement for laches.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Respondent's reliance on petitioner's delay in filing a petition for cancellation is not a requirement for laches. In other words, petitioner does not have to overtly or covertly lull respondent into believing that petitioner would not act.
  • Prejudice may be as simple as the development of goodwill built around a mark during petitioner's delay.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • Prejudice, however, may be as simple as the development of goodwill built around a mark during petitioner's delay.
  • Prejudice is generally shown by the fact that in reliance on petitioner's silence, respondent built up a valuable business and goodwill around the mark during the time petitioner never objected.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • "Prejudice is generally shown by the fact that in reliance on petitioner's silence, respondent built up a valuable business and goodwill around the mark during the time petitioner never objected. [Citation omitted]." Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1307 (TTAB 2004).
  • Economic prejudice arises from investment in and development of the trademark, and the continued commercial use and economic promotion of a mark over a prolonged period adds weight to the evidence of prejudice.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • "Economic prejudice arises from investment in and development of the trademark, and the continued commercial use and economic promotion of a mark over a prolonged period adds weight to the evidence of prejudice." Teledyne Technologies Inc. v. Western Skyways Inc., supra at 1211. See also Trans Union Corp. v. Trans Leasing International, Inc., 200 USPQ 748, 756 (TTAB 1978)(prejudice occurs where senior user takes action after the junior user builds up its business and goodwill around a mark).
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Economic prejudice arises from investment in and development of the trademark, and the continued commercial use and economic promotion of a mark over a prolonged period adds weight to the evidence of prejudice. Id.
  • Discussion concerning the establishment of economic prejudice.
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • Economic prejudice arises when a defendant suffers the loss of monetary investments or incurs damage that likely would have been prevented by an earlier suit. A.C. Aukerman Co. v. R. L. Chaides Construction Co., 960 F.2d 1020, 22 USPQ2d 1321 (Fed. Cir. 1992). A nexus must be shown between the delay in filing suit and the expenditures; the alleged infringer must change his position because of and as a result of the plaintiff's delay. The essential inquiry is to determine if there was a change in the economic position of the alleged infringer during the period of delay. State Contracting & Engineering Corp. v. Condotte America, Inc., 346 F.3d 1057, 68 USPQ2d 1481 (Fed. Cir. 2003).
  • When there has been an unreasonable period of delay by a plaintiff, economic prejudice to the defendant may ensue whether or not the plaintiff overtly lulled the defendant into believing that the plaintiff would not act, or whether or not the defendant believed that the plaintiff would have grounds for action.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • When there has been an unreasonable period of delay by a plaintiff, economic prejudice to the defendant may ensue whether or not the plaintiff overtly lulled the defendant into believing that the plaintiff would not act, or whether or not the defendant believed that the plaintiff would have grounds for action. Id. citing A.C. Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2d 1020, 22 USPQ2d 1321, 1336 (Fed. Cir. 1992)(en banc) ["reliance is not a requirement of laches"].
  • Accordingly, the essential inquiry herein is to determine if there was a change in the economic position of respondent during the period of petitioner's delay.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Accordingly, the essential inquiry herein is to determine if there was a change in the economic position of respondent during the period of petitioner's delay. State Contracting & Engineering Corp. v. Condotte America, Inc., 346 F.3d 1057, 68 USPQ2d 1481 (Fed. Cir. 2003).
  • Economic damage may be a direct function of the delay involved. The record demonstrates economic prejudice to respondent if its registration were to be cancelled at this point in time.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Economic damage may be a direct function of the delay involved. The record demonstrates economic prejudice to respondent if its registration were to be cancelled at this point in time. Ralston Purina Co. v. Midwest Cordage Co., 373 F.2d 1015, 153 USPQ 73, 76 (CCPA 1967) ["It is probably true that long acquiescence in the use of a trademark by a successful business, even without an expansion of trade, may provide a basis for a valid inference of prejudice....Logically, we suppose, it must be admitted that each day sees some incremental aggrandizement of goodwill--each advertising dollar expended adds in some sense to registrant's equity."].
  • Evidence: Discussion of failed efforts to establish economic prejudice.
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • Although respondent contends that its investment in the ONCASE brand product has been extensive, it is difficult to gauge, in the absence of dollar amounts or other specific information relative to its promotional efforts, the degree to which there has been any detriment. We also lack any testimony or other evidence which would shed light on the effect and success of respondent's promotional efforts. Further, respondent's testimony regarding its appearances at conferences, trade shows and presentations is diminished by the fact that it was promoting other drugs at the same time. For example, exhibit no. 11 to Dr. Hoffman's depostion is a photograph of one of respondent's booths at a trade show; no fewer than four of respondent's other drugs are being promoted under different marks. Thus, in all likelihood, respondent's expenditures in connection with the promotion of its ONCASE brand drug would appear to be little more than what it was spending in any event to promote its other drugs. That is to say, respondent might very well have attended the various trade shows and conferences to promote its other drugs even if its ONCASE brand drug had not been developed. Again, in the absence of details relating to the specific economic prejudice suffered, we are unable to say that respondent has established a meritorious laches defense.
  • Under normal circumstances, petitioner's undue delay, coupled with respondent's detriment based on petitioner's inaction, would compel a finding of laches; however, there may exist extenuating circumstances that significantly impact the equities in considering laches.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Under normal circumstances, petitioner's undue delay, coupled with respondent's detriment based on petitioner's inaction, would compel a finding of laches in this case. However, this case involves extenuating circumstances that significantly impact the equities in considering laches, namely, respondent expanded his menu in September 2003 to add pizza. Petitioner promptly filed its petition thereafter.
  • Although the TTAB found undue delay by petitioner in taking action, and prejudice to respondent resulting from the delay, the TTAB cannot determine that respondent has established the defense of laches until the TTAB examines whether petitioner has, as it contends, an adequate excuse for the delay.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Thus, although we have found undue delay by petitioner in taking action, and prejudice to respondent resulting from the delay, we cannot determine that respondent has established the defense of laches until we examine whether petitioner has, as it contends, an adequate excuse for the delay. See Leinoff v. Louis Milona & Sons, Inc., 726 F.2d 734, 220 USPQ 845 (Fed. Cir. 1984).
  • A common reason given for delay is "other litigation."
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • A common reason given for delay is "other litigation." See Cuban Cigar Brands N. V. v. Upmann International, Inc., 457 F.Supp. 1090, 199 USPQ 193 (SDNY 1978), aff'd without op., 607 F.2d 995 (2d Cir. 1979).
  • For other litigation to excuse a delay in bringing suit there must be adequate notice of the proceeding...The notice must inform the alleged infringer of the other proceeding and of the patentee's intention to enforce its patent upon completion of that proceeding.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Moreover, the record is devoid of evidence that petitioner gave notice to respondent that it was delaying a petition to cancel until conclusion of the other proceeding. See Hottel Corp. v. Seaman Corp., 833 F.2d 1570, 4 USPQ2d 1939, 1940-41 (Fed. Cir. 1987), overruled in part, A.C. Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2d 1020, 22 USPQ2d 1321 (Fed. Cir. 1992) ["For other litigation to excuse a delay in bringing suit there must be adequate notice of the proceeding...The notice must inform the alleged infringer of the other proceeding and of the patentee's intention to enforce its patent upon completion of that proceeding."].
  • Laches should not necessarily always be measured from defendant's very first use of the contested mark, but from the date that defendant's acts first significantly impacted on plaintiff's good will and business reputation...any change in the format or method of use of the mark or expansion into new product lines or territories should be sufficient to excuse a prior delay.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Professor McCarthy indicates that "[l]aches should not necessarily always be measured from defendant's very first use of the contested mark, but from the date that defendant's acts first significantly impacted on plaintiff's good will and business reputation...any change in the format or method of use of the mark or expansion into new product lines or territories should be sufficient to excuse a prior delay." McCarthy on Trademarks and Unfair Competition, § 31:19 (4th ed. updated 2006).
  • Doctrine of Progressive Encroachment.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Professor McCarthy further explains: "Under the doctrine of "progressive encroachment," a trademark owner is not forced by the rule of laches to sue until the likelihood of confusion caused by the accused use presents a significant danger to the mark. A relatively low level infringement or use of a similar mark in a different product or service line or in a different territory does not necessarily trigger an obligation to immediately file suit. But when the accused use moves closer or increases in quantity, the doctrine of progressive encroachment requires the trademark owner to remain alert and to promptly challenge the new and significant acts of infringement. Thus, there may be no obligation to sue until the accused use progressively encroaches on the trademark." McCarthy on Trademarks and Unfair Competition at § 31:20.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • The Court, in ProFitness Physical Therapy Center v. Pro-Fit Orthopedic and Sports Physical Therapy P.C., 314 F.3d 62, 65 USPQ2d 1195, 1199-1200 (2d Cir. 2002), explained the doctrine:
        "By using the mark in a different manner or in a new geographic area, a defendant may exceed the scope of the plaintiff's consent and be exposed to liability for that extra-consensual use...The doctrine of progressive encroachment...focuses the court's attention on the question of whether the defendant, after beginning its use of the mark, redirected its business so that it more squarely competed with plaintiff and thereby increased the likelihood of public confusion of the marks." See also Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 55 USPQ2d 1225 (5th Cir. 2000) [Ralph Lauren, owner of the POLO mark for clothing and accessories, was not guilty of laches in suing POLO magazine when the magazine began featuring mainstream fashion news, despite the fact that it took no action against the magazine during the twenty years when it was an insider's publication devoted to the sport of polo: "The new POLO Magazine's emphasis on fashion, affluent lifestyle and travel can plausibly lead consumers to believe that Ralph Lauren is associated with the new POLO Magazine."]; Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 38 USPQ2d 1449 (4th Cir. 1996) [defense of laches is not appropriate where defendant expanded from sales in upscale department stores to sales in food, drug and mass merchandising outlets; because plaintiff only sold in the latter category, it was doubtful that likely confusion could have been proven prior to defendant's expansion into plaintiff's marketing environment]; and Sun Microsystems v. SunRiver Corp., 36 USPQ2d 1266, 1271 (N.D. Cal. 1995) [defense of laches is not available to a defendant who expanded its use of the mark to product lines that are competitive with plaintiff; this is "a fact which dramatically increases the likelihood of confusion"; preliminary injunction granted].
  • Rule of Encroachment.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • As Professor McCarthy further explains, the rule of "encroachment" allows a "plaintiff to tolerate de minimis or low-level infringements and act promptly when a junior user either gradually edges into causing serious harm or suddenly expands or changes its mark. The law should not require a trademark owner to make a headlong rush to litigation." McCarthy on Trademarks and Unfair Competition at § 31:21.
  • The encroachment doctrine applies in cancellation proceedings.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • All of the above discussion and case law pertain to common law rights and trademark infringement actions. Therefore, we must consider the applicability of the "encroachment" doctrine in cancellation proceedings.
  • Evidence: Evidentiary prejudice" may occur when the defendant's ability to raise a defense has been hampered due to the passing of time.
    • Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007)
      • FOOTNOTE 7 ""Evidentiary prejudice" may occur when the defendant's ability to raise a defense has been hampered due to the passing of time (e.g., the loss of documents, unavailability of witnesses, fading memory of witnesses, etc.)."
  • Burden of Proof: Respondent, as the party raising the affirmative defense of laches, bears the burden of proof.
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • Respondent, as the party raising the affirmative defense of laches, bears the burden of proof. To prevail on laches, respondent is required to establish that there was undue or unreasonable delay by petitioner in asserting its rights, and prejudice to respondent resulting from the delay. Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460 (Fed. Cir. 2001). 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 upon registration].
  • Case Finding: A five-year delay between delay between the issuance of the registration and the filing of the petition for cancellation constitutes undue or unreasonable delay.
    • The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007)
      • In the context of this case, we find that the almost five-year period of delay between the issuance of the registration and the filing of the petition for cancellation constitutes undue or unreasonable delay. We find this based on petitioner's actual knowledge of respondent's use of its mark by virtue of petitioner contracting with respondent to broadcast on its network shortly after the ABS-CBN mark registered and petitioner's testimony that it purportedly actively policed its mark.
  • 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).
  • Case Finding: Respondent's change in his offered services constitutes a change in circumstances that petitioner's previous failure to take action against the registration does not preclude petitioner from taking action against the registration when it learned of the change.
    • Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007)
      • Because respondent changed the nature of his "restaurant services featuring bagels as a main entrée" in September 2003, he is not entitled to rely on petitioner's inaction prior to that time. Essentially, the change in respondent's services, from "restaurant services featuring bagels as a main entrée" to restaurants that also serve pizza and other Italian food, constituted such a change in circumstances that petitioner's previous failure to take action against the registration does not preclude petitioner from taking action against the registration when it learned of the change. That is, respondent may have reasonably relied on petitioner's prior inaction against his registration when he was providing only restaurant services featuring bagels as a main entrée so that, in justice, laches would lie as a defense against petitioner's claim of likelihood of confusion. However, when respondent changed his services to include offering pizza and other Italian food, a change petitioner could not have reasonably foreseen, petitioner cannot be said to have unreasonably delayed in taking action during the period commencing with the issuance of the registration until 2003, when that change occurred. Respondent not only made a change in his services, but the change was to add pizza, the specific food item that is the focal point of petitioner's restaurant services. Because petitioner brought this cancellation proceeding in January 2004, shortly after learning about the changes in respondent's activities, petitioner's earlier delay in taking action is excused, and petitioner therefore is not guilty of laches.18 Given respondent's change in the nature of his services, granting petitioner a remedy on its likelihood of confusion claim works no injustice as respondent's actions do not merit protection through application of equitable principles.
        FOOTNOTE 18 "A different result might very well obtain if respondent's recitation of services had read simply "restaurant services." Such a broad recitation would encompass all types of restaurants, including ones that serve pizza. If that were the case herein, laches might be found based on petitioner's inaction against a registration covering services identical to its own "restaurant services.""
  • Case Finding: An unexplained delay of seven years found substantial.
    • Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004).
      • In the present case, respondent's mark was published for opposition on July 5, 1994; issuance of respondent's registration on the Principal Register occurred on July 16, 1996; and the petition for cancellation was filed on July 13, 2001. Thus, the delay comprises a little over seven years. Petitioner has been completely silent as to the reason for its delay, and we consider the unexplained delay of over seven years to be substantial.
  • Case Finding: Petitioner's delay of over three and one half years, and the complete absence of any reasonable excuse for its inaction, constitutes undue delay prior to filing the petition for cancellation.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • We find that petitioner's delay of over three and one half years, and the complete absence of any reasonable excuse for its inaction, constitutes undue delay prior to filing the petition for cancellation. J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, supra at § 20:76 ["The point is that laches is not an absolute time limit like a statute of limitations. It is an equitable defense measured by delay weighed against the resulting prejudice to registrant."].
  • Case Finding: Although respondent did not provide precise sales and advertising figures for the period constituting petitioner's delay, it is clear that, during petitioner's period of silence, respondent invested in and promoted its GOLD SEAL brand.
    • Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006).
      • Although respondent did not provide precise sales and advertising figures for the period constituting petitioner's delay, it is clear that, during petitioner's period of silence, respondent invested in and promoted its GOLD SEAL brand. Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 23 USPQ2d 1701, 1704 (Fed. Cir. 1992) ["Opposer's right to prevail in this proceeding arises from the particular provisions of the Lanham Act that are designed to encourage registration of marks. Opposer took advantage of those provisions. Applicant did not. Applicant, as the prior user, could and should have taken steps to prevent registration by Opposer of the mark LINCOLN. It had an opportunity to oppose or petition to cancel Opposer's registration during a period of more than five years and failed to avail itself of that opportunity."].
  • Laches begins to run from the time action could be taken. In an opposition, where the objection is to the issuance of a registration of a mark and the plaintiff had prior knowledge of applicant's use, laches starts to run when the mark in question is published for opposition.
    • Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009)
      • The laches defense does not apply. Laches begins to run from the time action could be taken. In an opposition, where the objection is to the issuance of a registration of a mark and the plaintiff had prior knowledge of applicant's use, laches starts to run when the mark in question is published for opposition. National Cable Television Association Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991); Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1210 n. 10 (TTAB 2006). Because opposer timely filed notices of opposition, there has been no undue delay by opposer or prejudice to applicant caused by opposer's delay.
  • To prove laches, in addition to showing unreasonable delay, the applicant must show it has suffered material prejudice as a result of the delay.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • To prove laches, in addition to showing unreasonable delay, the applicant must show it has suffered material prejudice as a result of the delay. Aquion Partners, 43 USPQ2d at 1373.
  • As a threshold matter, the constructive notice provisions of Section 22 of the Trademark Act benefit the registrant of the mark and its assignees.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • As a threshold matter, the constructive notice provisions of Section 22 of the Trademark Act benefit the registrant of the mark and its assignees.
  • The facts evidencing unreasonableness of the delay and material prejudice to the defendant cannot be decided against the plaintiff based solely on presumptions.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • The defense "usually requires factual development beyond the content of the pleadings. The facts evidencing unreasonableness of the delay and material prejudice to the defendant cannot be decided against the plaintiff based solely on presumptions." Id.
  • The defense may be asserted even if the prior registration has expired, although in such case, the period of delay ends with the expiration of the prior registration.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • The defense may be asserted even if the prior registration has expired, although in such case, the period of delay (beginning on the issue date of the prior registration) ends with the expiration of the prior registration. This is because, once it expires, the registration no longer serves as constructive notice of the registrant's claim of ownership thereof. Section 22 of the Trademark Act, 15 U.S.C. § 1072; see Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1210 fn. 10 (TTAB 2006); and Aquion Partners L.P. v. Envirogard Products ltd., 43 USPQ2d 1371, 1373 fn. 8 (TTAB 1997).
  • A claim of unreasonable delay by an opposer in asserting rights may be based on the opposer's failure to object to an applicant's earlier registration of the same mark for the same goods.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • However, a claim of unreasonable delay by an opposer in asserting rights may be based on the opposer's failure to object to an applicant's earlier registration of the same mark for the same goods.
  • Inasmuch as opposer timely filed this opposition, it would appear at first blush that applicant has no basis for a laches defense, since laches with respect to an opposition generally does not begin to run until publication of the application for opposition.
    • Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008)
      • Applicant contends that laches is applicable because opposer failed to object to applicant's earlier registration. Inasmuch as opposer timely filed this opposition, it would appear at first blush that applicant has no basis for a laches defense, since laches with respect to an opposition generally does not begin to run until publication of the application for opposition. See National Cable Television Ass'n, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1427 Fed. Cir. 1991).
Panda Travel, Inc. v. Resort Option Enterprises, Inc., Opposition No. 91174767 and 91174768 (TTAB 2009) Land O' Lakes, Inc. v. Jim Hugunin, Opposition No. 91182399 (TTAB 2008) Fishking Processors, Inc. v. Fisher King Seafoods Limited, Cancellation No. 92041493, (TTAB 2007) Jansen Enterprises, Inc. v. Israel Rind and Stuart Stone, Cancellation No. 92042871, (TTAB 2007) The Christian Broadcasting Network, Inc. v. ABS-CBN International, Cancellation No. 92044366, (TTAB 2007) Teledyne Technologies, Inc. v. Western Skyways, Inc., Cancellation No. 92041265, (TTAB 2006) Alfacell Corporation v. Anticancer, Inc., Cancellation No. 92032202, (TTAB 2004) Leatherwood Scopes International, Inc. v. James M. Leatherwood, Opposition No. 122,064, (TTAB 2002) Grand Total
Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1210 (TTAB 2006), aff'd unpublished opinion, Appeal Nos. 2006-1366 and 1367 (Fed. Cir. Dec. 6, 2006) 4
Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301 (TTAB 2004) 1
State Contracting & Engineering Corp. v. Condotte America Inc., 346 F.3d 1057, 68 USPQ2d 1481 (Fed. Cir. 2003) 2
ProFitness Physical Therapy Center v. Pro-Fit Orthopedic and Sports Physical Therapy P.C., 314 F.3d 62, 65 USPQ2d 1195 (2d Cir. 2002) 1
Bridgestone/Firestone Research Inc. v. Automobile Club de l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460 (Fed. Cir. 2001) 5
Westchester Media v. PRL USA Holdings Inc., 214 F.3d 658, 55 USPQ2d 1225 (5th Cir. 2000) 1
Turner v. Hops Grill and Bar Inc., 52 USPQ2d 1310 (TTAB 1999) 4
Aquion Partners L.P. v. Envirogard Products Ltd., 43 USPQ2d 1371 (TTAB 1997) 3
Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 38 USPQ2d 1449 (4th Cir. 1996) 1
Gasser Chair Co. Inc. v. Infanti Chair Manufacturing Corp., 60 F3d 770, 34 USPQ2d 1822 (Fed. Cir. 1995) 1
Sun Microsystems v. SunRiver Corp., 36 USPQ2d 1266 (N.D. Cal. 1995) 1
University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994) 1
Advanced Cardiovascular Systems Inc. v. SciMed Life Systems Inc., 988 F.2d 1157, 26 USPQ2d 1038 (Fed. Cir. 1993) 1
A.C. Aukerman Co. v. R. L. Chaides Construction Co., 960 F.2d 1020, 22 USPQ2d 1321 (Fed. Cir. 1992) 3
Hottel Corp. v. Seaman Corp., 833 F.2d 1570, 4 USPQ2d 1939, 1940-41 (Fed. Cir. 1987), overruled in part, A.C. Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2d 1020, 22 USPQ2d 1321 (Fed. Cir. 1992) 1
Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes Inc., 971 F.2d 732, 23 USPQ2d 1701 (Fed. Cir. 1992) 4
Coach House Restaurant Inc. v. Coach and Six Restaurants Inc., 934 F.2d 1551, 19 USPQ2d 1401 (11th Cir. 1991) 3
National Cable Television Association Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991) 5
Reflange Inc. v. R-Con International, 17 USPQ2d 1125 (TTAB 1990) 3
Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307 (Fed. Cir. 1989) 1
Charrette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040 (TTAB 1989) 1
Tandy Corp. v. Malone & Hyde Inc., 769 F.2d 362, 226 USPQ 703 (6th Cir. 1985), cert. denied, 476 U.S. 1158, 106 C. Ct. 2277 (1986) 1
Leinoff v. Louis Milona & Sons Inc., 726 F.2d 734, 220 USPQ 845 (Fed. Cir. 1984) 1
Feed Flavors Inc. v. Kemin Industries Inc., 214 USPQ 360 (TTAB 1982) 1
Hitachi Metals International v. Yamakyu Chain Kabushiki, 209 USPQ 1057 (TTAB 1981) 1
Nark Inc. v. Noah's Inc., 212 USPQ 934 (TTAB 1981) 1
Cuban Cigar Brands N. V. v. Upmann International Inc., 457 F.Supp. 1090, 199 USPQ 193 (SDNY 1978), aff'd without op., 607 F.2d 995 (2d Cir. 1979) 1
Johanna Farms Inc. v. Citrus Bowl Inc., 468 F.Supp. 866, 199 USPQ 16 (EDNY 1978) 1
Trans Union Corp. v. Trans Leasing International Inc., 200 USPQ 748 (TTAB 1978) 1
Ultra-White Co. Inc. v. Johnson Chemical Industries Inc., 465 F.2d 891, 175 USPQ 166 (CCPA 1972) 3
Copperweld Corp. v. Astralloy-Vulcan Corp., 196 USPQ 585 (TTAB 1971) 1
Ralston Purina Co. v. Midwest Cordage Co., 373 F.2d 1015, 153 USPQ 73 (CCPA 1967) 2
Loma Linda Food Co. v. Thomson & Taylor Spice Co., 279 F.2d 522, 126 USPQ 261 (CCPA 1960) 1
Willson v. Graphol Products Co., 188 F.2d 498, 89 USPQ 382 (CCPA 1951) 1
Dwinell-Wright Co. v. White House Milk Co. Inc., 132 F.2d 822, 56 USPQ 120 (2d Cir. 1943) 1
Grand Total 2 3 9 20 11 13 5 1 64

Sec. 1069. Application of equitable principles in inter partes proceedings

In all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable may be considered and applied.