Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 TREADWELL'S DRIFTERS, INC.
v.
LARRY MARSHAK
Cancellation No. 17,958
March 11, 1991
Before Sams, Quinn and Hohein
Members
Opinion by Quinn
Member
The Board, on December 13, 1990, ruled that, inter alia, respondent's equitable defenses of laches and estoppel are available against petitioner's claim of "false suggestion of a connection" under Section 2(a). The Board reasoned that while there are overriding public policy reasons to preclude a defendant's raising equitable defenses against claims such as abandonment and fraud, there are no similar public policy reasons in the context of a Section 2(a) false suggestion of a connection claim.
This case now comes up on petitioner's request for reconsideration filed on January 14, 1991. Petitioner essentially argues that there is an overriding public policy against misleading consumers by a false suggestion of a connection between a particular entity and the goods or services of another entity. Respondent has objected to petitioner's request.
We can add little to our discussion of the ruling set forth in the original order. As the Board pointed out earlier, equitable defenses are not available against the claims of abandonment and fraud because it is in the public interest to remove abandoned registrations from the register and to prohibit registrations procured or maintained by fraud. There is no similar overriding public policy in likelihood of confusion cases, involving claims under Section 2(d), [FN1] and cases involving claims of false suggestion of a connection, under Section 2(a), both of which claims are predominantly assertions of exclusive commercial or personal rights which, if not seasonably asserted, may be deemed waived or diminished, if fairness demands. We accordingly conclude that equitable defenses are available to respondent against that portion of the petition grounded on false suggestion of a connection under Section 2(a).
In view of the above, petitioner's request for reconsideration is denied.
The joint motion to extend, filed January 14, 1991, is noted and granted. Trial dates, including the period for discovery, are rescheduled as indicated in the accompanying trial order.
J. D. Sams,
T. J. Quinn,
G. D. Hohein,
Members, Trademark Trial and Appeal Board
FN1. There is an exception, of course, which precludes, in the public interest, the availability of equitable defenses when the record at trial (or the evidence on summary judgment) shows that likelihood of confusion is inevitable and not in doubt. See: The Ultra-White Co., Inc. v. Johnson Chemical Industries, Inc., 465 F.2d 891, 175 USPQ 166 (CCPA 1972). We know of no case that has discussed whether such an exception exists in the case of a Section 2(a) claim where the proofs show that the false suggestion of a connection is inevitable and not in doubt.