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  • Basis for unclean hands.
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • Although poorly articulated, we view applicant's pleading as an attempt to set up an affirmative defense that opposer has "unclean hands." Assertion of the defense of unclean hands, though often based on allegations of fraud, misrepresentation of source, or violation of antitrust laws, "may result from any imaginable immoral or illegal conduct." See 3 J. Gilson Trademark Protection and Practice §8.12[13] (1999).
  • Allegation of unclean hands regarding registration only applies to plaintiff's ability to rely on its registration.
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • Where the conduct alleged to have resulted in unclean hands relates to a plaintiff's acquisition, or attempt to acquire, a registration, the unclean hands defense goes only to the plaintiff's ability to rely on its registration, not to its common law rights. See, e.g., Gilbert/Robinson Inc. v. Carrie Beverage-Missouri Inc., 758 F.Supp. 512, 526, 19 USPQ2d 1481, 1489 (E.D. Mo. 1991) (Even though a jury found that plaintiff had obtained its trademark registration fraudulently, the court held, "[n]onetheless, plaintiff is still entitled to protect its common law rights, and the doctrine of unclean hands does not act as a bar to that right.").
  • Where allegation in support of defense of unclean hands is based on improper conduct, the affirmative defense may also be considered in relation to (common law) rights acquired through use.
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • When, however, the assertedly improper conduct relates to the use of the mark, the defense may be considered even in relation to rights acquired through use. See Independent Grocers' Alliance Distributing Co. v. Zayre Corporation, 149 USPQ 229 (TTAB 1966) (Though the Board did not find for applicant on the issue, it considered applicant's assertion that the opposer, relying not on a registration but on rights acquired through use, had unclean hands because it misused the statutory registration symbol.)
  • Unclean hands cannot be asserted as a ground for its notice of opposition.
    • Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha t/a/ Toyota Motor Corporation, Opposition No. 152,062, (TTAB 2003).
      • While a party may allege unclean hands as an affirmative defense in a Board proceeding, there is no authority for opposer's assertion thereof as a ground for its notice of opposition.5 See Trademark Rule 2.106(b)(1) and Fed. R. Civ. P. 8(b). See also Leatherwood Scopes International, Inc. v. James M. Leatherwood, 63 USPQ2d 1699 (TTAB 2002); and University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1401 n. 39 (TTAB 1994). FOOTNOTE 5 "Furthermore, to the extent that the allegations contained in the notice of opposition may be construed as asserting a cause of action grounded in unfair competition, it is well-settled that the Board is not authorized to determine the right to use, nor may it decide broader questions of infringement or unfair competition. See, for example, Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990); and Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994)."
  • Case Finding: Hornblower case concerns use of unlean hands defense regarding fraudulent trading on reputation of others.
    • Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001).
      • In this case, we find that there is no genuine dispute as to any material fact and that as a matter of law applicant cannot succeed on the unclean hands defense that opposer is fraudulently trading on the reputation of others, i.e., applicant and/or its shareholders.
  • The affirmative defense of unclean hands, based on its contention that opposer adopted its mark with knowledge of applicant's reputation overseas does not raise an unclean hands defense.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • Applicant also raised the affirmative defense of unclean hands, based on its contention that opposer adopted its mark with knowledge of applicant's reputation overseas. Such knowledge, even if proved, would not raise an unclean hands defense. See Person's Co, supra. On the other hand, applicant has neither pleaded nor established that its mark is well-known in the United States, within the meaning of Article 6bis of the Paris Convention. Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as rev. at Stockholm, July 14, 1967, 21 U.S.T. 1583, Art. 6bis, 828 U.N.T.S. 305. See Aktieselskabet af 21. November 2001 v. Fame Jeans Inc., 77 USPQ2d 1861, 1864 (TTAB 2006).
Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008) Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha t/a/ Toyota Motor Corporation, Opposition No. 152,062, (TTAB 2003) Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., Opposition No. 110,043, (TTAB 2001) Grand Total
Aktieselskabet af 21. November 2001 v. Fame Jeans Inc, 77 USPQ2d 1861 (TTAB 2006) 1
Leatherwood Scopes International Inc. v. James M. Leatherwood, 63 USPQ2d 1699 (TTAB 2002) 1
Paramount Pictures Corp. v. White, 31 USPQ2d 1768 (TTAB 1994) 1
University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385 (TTAB 1994) 1
Gilbert/Robinson Inc. v. Carrie Beverage-Missouri Inc., 758 F.Supp. 512, 19 USPQ2d 1481 (E.D. Mo. 1991) 1
Person's Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990) 2
Independent Grocers' Alliance Distributing Co. v. Zayre Corporation, 149 USPQ 229 (TTAB 1966) 1
Grand Total 2 4 2 8

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.