Westchester Women's Bar Association

Opposition and Cancellation Proceedings - Defenses

If a party has grounds to believe a trademark application should not register or if a party has a basis to believe a trademark registration should be cancelled, a proceeding can be initiated with the Trademark Trial and Appeal Board (the "Board" or the "TTAB"). See our webpage entitled, Trademark Trial And Appeal Board Proceedings for general information regarding this administrative tribunal. Either a Notice of Opposition or a Petition to Cancel can be filed with the Board. These documents are similar to a Complaint in a civil litigation. In response, the party in the position of defendant may file an Answer.

The Lanham Act provides that the defendant may assert equitable defense in all inter partes proceedings. In addition to equitable defenses, multiple other defenses can be asserted in the Answer. Some affirmative defenses include: (1) unclean hands; (2) laches; (3) estoppel; (4) acquiescence; (4) fraud; (5) mistake; (6) prior judgment; (7) third parties have used similar marks for similar goods, thus the mark is weak and entitled to a narrow scope of protection; or (8) any other matter that constitutes an avoidance. Affirmative defenses should be asserted in the Answer. The Board may deny acknowledging a defense that was not raised in a timely matter. An Answer may contain any defense.

No reply is required to an affirmative defense, however a reply is necessary with respect to a counterclaim. Additional defenses include but are not limited to: (1) prior registration (the Morehouse Defense); (2) abandonment; (3) genericness; (4) functionality; (5) absence of likelihood of confusion; (6) priority; (7) lack of secondary meaning; (8) development of secondary meaning; (9) claim preclusion; (10) issue preclusion; (11) contractual estoppel; (12) license estoppel; or (13) a challenge to the validity of plaintiff's registration can be part of a defense, but additional action is also required. It should be noted that if a party wishes to attack the plaintiff's registration, a counterclaim should be asserted or a separate Petition to Cancel should be filed with the TTAB.

There are some specific rules to keep in mind for certain defenses. Regarding fraud, it is important to keep in mind that the circumstances of fraud must be pleaded with particularity and the Federal Rules of Civil Procedure must be followed. With respect to laches, the defense in TTAB proceedings must be tied to a party's registration of a trademark not to use of a mark. The elements of laches are (1) unreasonable delay in assertion of a party's rights against another; and (2) material prejudice to another attributable to that delay. There are two categories of prejudice, loss of evidence or memory of witnesses due to delay and (2) economic prejudice. Typically, the party asserting prejudice shows continued use of the mark and continued investment of the trademark, increasing business value and goodwill during the time the other party remained silent. Laches will not apply in certain circumstances such as: (1) in likelihood of confusion cases where confusion is inevitable; (2) if the grounds asserted allege genericness, merely descriptiveness, fraud, or abandonment; or (3) if the claim is the mark is deceptive or deceptively misdescriptive.

The defense of acquiescence is similar to laches. It has been said that laches is passive assent while acquiescence is active assent. To prove acquiescence one must show behavior that demonstrates apparent consent to the registration of the mark. Similar to the defense of laches, acquiescence is also tied to registration of the mark and not use and will not apply under some of the same circumstances listed in the previous paragraph for laches. The prior registration defense also known as the Morehouse defense is a newer defense. If an applicant has registered a substantially identical mark or identical mark for the same or substantially identical goods, then the opposition or cancellation will be dismissed because no further damage can result to the plaintiff. There are special circumstances when the prior registration defense will not apply similar to the defenses of laches and acquiescence. Choosing the defenses to assert in an Answer is a critical decision and if you have questions regarding Board proceedings, please feel free to contact our office for a courtesy consultation.

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