Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA1063345
`06/22/2020
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`ESTTA Tracking number:
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`Filing date:
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`Proceeding
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91255498
`
`Plaintiff
`Sony Pictures Television Inc.
`
`RICHARD S MANDEL
`COWAN LIEBOWITZ & LATMAN PC
`114 WEST 47TH STREET
`NEW YORK, NY 10036
`UNITED STATES
`trademark@cll.com, jyc@cll.com, rsm@cll.com, lsf@cll.com
`212-790-9200
`
`Motion to Strike
`
`Jeffrey Chery
`
`trademark@cll.com, jyc@cll.com, rsm@cll.com, lsf@cll.com
`
`/Jeffrey Chery/
`
`06/22/2020
`
`Attachments
`
`Motion to Strike Aff Defenses Pollo Regio.pdf(344281 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`In re Application Serial No. 88/336,253
`Filed: March 12, 2019
`For Mark: POLLO REGIO Design
`Published in the Official Gazette of January 7, 2020
`---------------------------------------------------------------X
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`SONY PICTURES TELEVISION INC.,
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`:
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`:
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`Opposer,
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`Opposition No. 91255498
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`:
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`- against -
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`:
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`EL POLLO REGIO IP, LLC,
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`:
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`Applicant.
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`---------------------------------------------------------------X
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`
`
`OPPOSER’S MOTIONS TO STRIKE
`APPLICANT’S FOURTH, FIFTH AND SIXTH
`AFFIRMATIVE DEFENSES AND TO SUSPEND PROCEEDING
`
`
`
`MOTIONS
`
`
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`Opposer Sony Pictures Television Inc. ("Opposer") hereby moves, pursuant
`
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`to Fed. R. Civ. P. 12(f) and TBMP § 506.01, to strike the fourth, fifth and sixth affirmative
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`defenses in the Answer of Applicant El Pollo Regio IP, LLC (“Applicant”). As grounds for the
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`motion, Opposer states that the defenses are insufficient and improper as a matter of law.
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`Additionally, as the Board’s determination of Opposer’s foregoing motion to strike will
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`affect the scope of discovery in this proceeding, Opposer moves that this proceeding be
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`suspended pending consideration of its motion and that, after the Board decides the motion, the
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`deadlines for the initial discovery conference, discovery and trial be reset.
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`
`
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` 13078/149/3491706.1
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`
`
`

`

`PROCEDURAL HISTORY
`
`Opposer timely instituted this opposition proceeding, claiming damage based on
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`Applicant’s attempted registration of Applicant’s POLLO REGIO Design Mark (U.S. Ser. No.
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`88/336,253) (“Applicant’s Mark”). Applicant’s Mark was published for opposition on January
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`7, 2020. Opposer promptly filed a request for extension of time to oppose on January 30, 2020,
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`and it received an extension up to and including May 6, 2020. After repeated unsuccessful
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`attempts to engage Applicant in discussions during the extension period, Opposer timely filed
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`its Notice of Opposition on April 27, 2020. 1 TTABVUE. Opposer based its claim on a
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`likelihood of confusion between Applicant’s mark and Opposer’s LOS POLLOS HERMANOS
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`Design Mark, while also alleging a likelihood of dilution by blurring and a false association
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`under section 2(a) of the Lanham Act. Id.
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`On June 5, 2020, Applicant filed its Answer. 4 TTABVUE. Opposer now timely moves
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`to strike certain affirmative defenses in the Answer, namely, the fourth, fifth and sixth
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`affirmative defenses of waiver, acquiescence and laches. See TBMP § 506.02.
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`MEMORANDUM IN SUPPORT OF OPPOSER’S MOTIONS
`
`I.
`
`APPLICANT’S WAIVER, ACQUIESCENCE AND LACHES DEFENSES
`SHOULD BE STRICKEN AS INSUFFICIENT
`
`
`
`
`
`
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`Section 506.01 of the TBMP provides that “the Board may order stricken from a pleading
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`any insufficient defense….” See also Fed. R. Civ. P. 12(f). As set forth below, Applicant’s
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`fourth, fifth and sixth defenses of waiver, acquiescence and laches are all legally deficient and
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`should therefore be stricken.
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`
` 13078/149/3491706.1
`
`2
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`

`

`A.
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`To The Extent Applicant’s Defenses are Based on Any Alleged Delay by
`Opposer, The Defenses Fail as a Matter of Law
`
`
`
`
`
`
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`The equitable defenses of laches, acquiescence and waiver are severely limited in
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`opposition proceedings. Barbara’s Bakery, Inc. v. Landesman, 82 U.S.P.Q.2d 1283, 1292 n.14
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`(T.T.A.B. 2007) (“defenses of laches, acquiescence or estoppel . . . generally are not available in
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`an opposition proceeding”). The reason for this limitation is that the relevant time period for the
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`purposes of these defenses is not measured from when an applicant begins using its mark, but
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`rather from when a mark is published for opposition, because that is the first time that an opposer
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`could challenge the registration of the mark. See TBMP §311.02(b) (acquiescence and laches
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`“start to run . . . from the time the mark is published for opposition”); Nat’l Cable Television
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`Assoc., Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1582, 19 U.S.P.Q.2d 1424, 1432 (Fed.
`
`Cir. 1991) (measure for laches runs no earlier than publication for opposition); Krause v. Krause
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`Publ’ns Inc., 76 U.S.P.Q.2d 1904, 1914 (T.T.A.B. 2005) (acquiescence in an opposition
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`proceeding does not start running until publication of mark).
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`Here, Opposer timely filed a request for an extension of time to oppose Applicant’s
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`POLLO REGIO Design Mark on January 30, 2020 and filed a notice of opposition within the
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`extended period provided for such actions. 1 TTABVUE. Applicant does not, and cannot,
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`allege that Opposer failed to file its opposition before the relevant filing deadline. The short time
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`period between the publication of the Application (January 7, 2020) and the timely filing of the
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`opposition (April 27, 2020) is insufficient as a matter of law to constitute an unreasonable delay
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`for the purposes of laches, waiver and/or acquiescence. See, e.g., Sunkist Growers, Inc., Opp.
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`No. 91176970 (27 TTABVUE)1 at 7 (T.T.A.B. Dec. 2, 2009) (finding defenses of laches and
`
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`1 http://ttabvue.uspto.gov/ttabvue/v?pno=91176970&pty=OPP&eno=27
`3
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`
` 13078/149/3491706.1
`
`

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`acquiescence did not apply because short period of delay between publication and institution of
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`the opposition cannot be viewed as unreasonable); Ironman Magazine v. World Triathlon Corp.,
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`Opp. No. 91167894 (46 TTABVUE) 2 at 15 (T.T.A.B. Jan. 12, 2009) (because proceeding was
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`brought during opposition period, laches did not apply); Nicholson v. Gott Bros. Dev., LLC, Opp.
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`No. 91171444 (20 TTABVUE)3 at 10-11 (T.T.A.B. May 21, 2008) (short four month period of
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`time between publication and institution of opposition does not constitute unreasonable delay for
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`purposes of acquiescence); Callaway Vineyard & Winery v. Endsley Capital Group Inc., 63
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`U.S.P.Q.2d 1919, 1923 (T.T.A.B. 2002) (since opposer promptly opposed registration of
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`applicant’s mark within four months of publication, there was no basis for applicant’s defenses
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`of laches, estoppel, or acquiescence). Because Opposer did not delay in opposing the application
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`at issue, Applicant’s fourth, fifth and sixth defenses fail as a matter of law.
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`In an earlier pending proceeding between these parties (Opp. No. 91254690), Applicant
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`asserted the same defenses and Opposer filed the same motion to strike, which remains sub
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`judice. Applicant there contended that Opposer’s delay should be measured from when it
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`learned of Applicant’s Mexican application based on Applicant’s other opposed U.S. application.
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`7 TTABVUE. Putting aside the fact that a delay of less than a year and a half from November
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`2018 would itself be insufficient to establish Applicant’s equitable defenses, the more pertinent
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`point is that Applicant’s U.S. application was not published until January 7, 2020, more than a
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`year later. Until that time, it was literally impossible for Opposer to have challenged the
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`application. It is nonsensical and directly contrary to established law to charge Opposer with
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`delay in bringing an opposition proceeding during a time period when such a proceeding could
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`
`2 http://ttabvue.uspto.gov/ttabvue/v?pno=91167894&pty=OPP&eno=46
`3 http://ttabvue.uspto.gov/ttabvue/v?pno=91171444&pty=OPP&eno=20
`4
`
`
` 13078/149/3491706.1
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`

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`not be initiated. Opposer promptly filed the opposition in April 2020, and Applicant cannot
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`dispute that the four-month period from publication to opposition is too short to support its
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`defenses.
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`Moreover, even if the situation in Mexico had any bearing on this opposition proceeding
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`– and it is legally irrelevant since it relates to rights in a foreign country – the fact that Opposer
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`objected in Mexico and persuaded Applicant to abandon an application directly undermines the
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`asserted defenses. Thus, far from establishing any kind of acquiescence, Opposer’s conduct with
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`respect to Applicant’s Mexican trademark highlighted Opposer’s objections and foreshadowed
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`what was to come later in the U.S. once the application was published here. Opposer has acted
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`diligently in opposing such application, and the undisputed facts establish that there is no
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`plausible legal basis on which to assert the defenses of laches, acquiescence and waiver in this
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`opposition proceeding.
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`Nor can Applicant credibly claim that the defenses cause no burden to Opposer.
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`Applicant has already asserted that it intends to take discovery of Opposer’s pre-filing
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`knowledge (see Opp. No. 91254690, 7 TTABVUE 6). Applicant’s intent to use the discovery
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`process to explore irrelevant issues that cannot as a matter of law form any plausible defense to
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`an opposition proceeding demonstrates the burden to Opposer of keeping legally deficient
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`defenses in the case. Accordingly, Applicant’s fourth, fifth and sixth affirmative defenses should
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`be stricken.
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` 13078/149/3491706.1
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`5
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`

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`B.
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`Applicant Has Failed to Allege Any Facts Supporting the Fourth, Fifth or
`Sixth Affirmative Defenses
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`1.
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`Applicant Cannot Allege that Opposer Represented or Otherwise
`Clearly Indicated to Applicant that It Would Not Assert Its
`Trademark Rights and Therefore Has Not Properly Alleged Waiver
`and/or Acquiescence
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`
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`Applicant has not alleged, and cannot possibly meet, the requirements for establishing its
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`fourth affirmative defense of waiver. The Board interprets a defense of “waiver” as an assertion
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`of an “‘estoppel by agreement’ or ‘contractual estoppel,’ [defense] i.e., that a prior agreement
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`between the parties estops the plaintiff from filing the present opposition or cancellation
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`proceeding.” Rangers Baseball LLC v. Deutsche Telekom AG, Opp. No. 91182241 (66
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`TTABVUE)4 at 3 n.3 (T.T.A.B. Mar. 31, 2018). “Waiver is the intentional relinquishment of a
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`known right with knowledge of its existence and the intent to relinquish it.” United States v.
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`King Features Entm’t, Inc., 843 F.2d 394, 399, 6 U.S.P.Q.2d 1873, 1876 (9th Cir. 1988); see,
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`e.g., Conolty v. Conolty O’Connor NYC LLC, 111 U.S.P.Q.2d 1302, 1310 (T.T.A.B. 2014)
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`(rejecting waiver defense where applicant failed to show that opposer agreed to applicant’s use
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`or registration of opposed mark). “[F]ailure to act, without more, is insufficient evidence of a
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`trademark owner’s intent to waive its right to claim infringement.” Novell, Inc. v. Weird Stuff,
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`Inc., Case No. C92-cv-20467, 1993 U.S. Dist. LEXIS 6674, at *41 (N.D. Cal. May 14, 993),
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`adopted, 1993 U.S. Dist. LEXIS 21483 (N.D. Cal. Aug. 2, 1993).5
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`Here, there is no allegation of any prior agreement between the parties. No allegations
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`support, nor could they, a claim that Opposer provided “‘clear, decisive and unequivocal’
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`conduct” indicating that it would waive its trademark rights. See Duncan v. Office Depot, 973 F.
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`4 http://ttabvue.uspto.gov/ttabvue/v?pno=91182241&pty=OPP&eno=66
`5 The unpublished court opinions in this memorandum are appended hereto as
` Exhibit A.
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`6
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` 13078/149/3491706.1
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`

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`Supp. 1171, 1177 (D. Or. 1997); United States v. Amwest Surety Ins. Co., 54 F.3d 601, 602-03
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`(9th Cir. 1995) (citation omitted). Nor could Applicant allege silence or inaction on the part of
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`Opposer where Opposer promptly and timely requested an extension of time to oppose,
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`attempted to negotiate a resolution during the extension period and filed its opposition before the
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`expiration of the deadline set by the Board. Accordingly, the fourth affirmative defense should
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`be stricken.
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`Applicant’s fifth affirmative defense of acquiescence is similarly deficient.
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`“Acquiescence is a type of estoppel that is based upon the plaintiff’s conduct that expressly or by
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`clear implication consents to, encourages, or furthers the activities of the defendant that is not
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`objected to.” Christian Broad. Network, Inc. v. ABS-CBN Int’l, 84 U.S.P.Q.2d 1560, 1573
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`(T.T.A.B. 2007). Acquiescence requires an allegation that opposer made a representation to
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`applicant—either expressly or impliedly—that opposer would not assert its trademark rights
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`against applicant. See Prairie Island Indian Cmty. v. Treasure Island Corp., Opp. No. 91115866
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`(99 TTABVUE)6 at 24-25 (T.T.A.B. May 15, 2008); see also Coach House Rest., Inc. v. Coach
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`& Six Rests., Inc., 934 F.2d 1551, 1558, 19 U.S.P.Q.2d 1401, 1404 (11th Cir. 1991)
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`(acquiescence requires active consent to registration). Acquiescence also requires “that the delay
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`between the active representation and assertion of the right or claim was not excusable” and “that
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`the delay caused applicant undue prejudice.” 2323 N. Milwaukee LLC v. Winery Exch., Inc.,
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`Opp. No. 91221974 (21 TTABVUE)7 at 6 (T.T.A.B. Feb. 12, 2016).
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`Applicant has failed to allege any of these required elements. Applicant has not and
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`cannot allege that Opposer made an active or implied representation that it would not assert its
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`6 http://ttabvue.uspto.gov/ttabvue/v?pno=91115866&pty=OPP&eno=99
`7 http://ttabvue.uspto.gov/ttabvue/v?pno=91221974&pty=OPP&eno=21
`7
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` 13078/149/3491706.1
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`

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`trademark rights against Applicant. Moreover, as stated above, Applicant’s acquiescence
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`defense fails because the timing of the filing of the opposition proceeding cannot, as a matter of
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`law, support the defense of acquiescence. Accordingly, the fifth affirmative defense must also
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`be dismissed.
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`2.
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`Applicant Has Also Failed to Allege Any Facts Supporting Its Sixth
`Affirmative Defense of Laches
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`
`
`
`
`
`
`
`
`
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`Applicant has also failed to allege any facts supporting its laches defense. “The defense
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`of laches in a trademark proceeding recognized under 15 U.S.C. § 1069 requires a showing of
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`undue delay in asserting rights against a claimant to a conflicting mark and prejudice resulting
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`therefrom.” Nat’l Cable Television Assoc., 937 F.2d at 1580, 19 U.S.P.Q.2d at 1431. As
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`discussed above, because Applicant has not and cannot establish that Opposer delayed in
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`asserting its rights by bringing this opposition, Applicant’s sixth affirmative defense for laches
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`should be stricken.
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`THE BOARD SHOULD SUSPEND THIS PROCEEDING PENDING ITS
`DETERMINATION OF OPPOSER’S MOTION TO STRIKE
`
`
`
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`II.
`
`
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`If allowed to stand, the fourth, fifth and sixth affirmative defenses could significantly
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`affect the scope of discovery in this proceeding. The motion should therefore be resolved before
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`discovery opens, which is currently scheduled to occur on July 7, 2020. Such an approach will
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`prevent the parties from having to move forward with discovery without knowing whether the
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`challenged affirmative defenses are part of the case or not. Accordingly, Opposer moves that the
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`proceeding be suspended pending consideration of its motion to strike, and that the schedule for
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`the initial discovery conference, discovery and trial periods be reset after the motion is decided
`
`
`
`
`
`
`8
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` 13078/149/3491706.1
`
`

`

`CONCLUSION
`
`
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`For the foregoing reasons, Applicant’s fourth, fifth and sixth affirmative defenses should
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`be stricken, and the proceeding should be suspended pending disposition of Opposer’s motion to
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`strike.
`
`Dated: New York, New York
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`June 22, 2020
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`
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`
`
` Respectfully submitted,
` COWAN LIEBOWITZ & LATMAN, P.C.
` Attorneys for Opposer
`
`
`By:
`/Richard S. Mandel/
` Richard S. Mandel
`114 West 47th Street
`New York, New York 10036
`(212)790-9200
`
`
`
` 13078/149/3491706.1
`
`9
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`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`Novell, Inc. v. Weird Stuff, Inc.
`
`United States District Court for the Northern District of California
`
`May 14, 1993, Decided ; May 14, 1993, Filed
`
`NO. C92-20467 JW/EAI
`
`Reporter
`1993 U.S. Dist. LEXIS 6674 *
`
`NOVELL, INC., a Delaware Corporation, Plaintiff, v.
`WEIRD STUFF, INC., a California Corporation,
`CHARLES SCHUETZ, an individual, MARK GOLD, an
`individual, RICK GOLD, an individual, et al.,
`Defendants.
`
`Subsequent History: Adopted by, Summary judgment
`granted by Novell, Inc. v. Weird Stuff, Inc., 1993 U.S.
`Dist. LEXIS 21483 (N.D. Cal., Aug. 2, 1993)
`
`Core Terms
`
`disks, disputed, trademark, software, upgrades,
`dumpster, packages, genuine, products, serialized,
`scrap, trademark infringement, rework, infringement,
`customers, manufacturing, discarded, lone,
`abandonment, asserts, distributed, copyright
`infringement, quality control, estoppel, manuals, no
`evidence, envelopes, licensing, false designation, right
`to claim
`
`Case Summary
`
`Procedural Posture
`Plaintiff computer development corporation moved for
`summary judgment and sought a permanent injunction
`against defendant software resell company and against
`defendant used equipment company in plaintiff's action
`for trademark infringement, false designation of origin,
`and copyright infringement.
`
`Overview
`
`The computer development corporation was a leader in
`the business of distributing software on floppy disks for
`use on personal computers. The alleged infringement
`occurred
`through
`the unauthorized sale of 1700
`serialized system disks that were retrieved from a
`dumpster by the software resell company. The disks
`taken from the dumpster were labeled with the computer
`development corporation's
`trademarks and product
`serial numbers. The disks were sold to the used
`equipment company, who sold them to consumers. The
`court first held that a reasonable jury could not find for
`the
`two companies on
`the
`issue of
`trademark
`infringement under 15 U.S.C.S. § 1114. The disputed
`disks were genuine goods, sold without consent, and
`likely to cause confusion. The computer development
`corporation also established that the sale of the disks
`involved a false designation of origin, under 15 U.S.C.S.
`§ 1125(a). The sale falsely implied or represented the
`computer development corporation's approval and the
`entitlement of the consumers to upgrades. Finally, the
`court held that the computer development corporation
`established copyright infringement because the "first
`sale" doctrine was inapplicable.
`
`Outcome
`The court granted the summary judgment in favor of the
`computer development corporation and held that a
`permanent injunction was appropriate. The computer
`development corporation presented sufficient evidence
`that
`the software resell company and
`the used
`equipment company engaged in past and imminent
`trademark and copyright infringement.
`
`

`

`1993 U.S. Dist. LEXIS 6674, *6674
`
`Page 2 of 21
`
`as a matter of law. The test to determine whether a
`motion
`for summary
`judgment should be granted
`"mirrors" that applied to a motion for a directed verdict.
`The trial judge must direct the verdict if, under governing
`law, there can be but one reasonable conclusion as to
`the verdict.
`
`LexisNexis® Headnotes
`
`Civil Procedure > Trials > Judgment as Matter of
`Law > Directed Verdicts
`
`Civil Procedure > ... > Summary
`Judgment > Motions for Summary
`Judgment > General Overview
`
`Civil Procedure > ... > Summary
`Judgment > Entitlement as Matter of Law > Genuine
`Disputes
`
`Evidence > Burdens of Proof > Allocation
`
`Civil Procedure > ... > Summary
`Judgment > Burdens of Proof > General Overview
`
`Civil Procedure > ... > Summary
`Judgment > Entitlement as Matter of Law > General
`Overview
`
`Civil Procedure > ... > Summary
`Judgment > Burdens of Proof > Movant Persuasion
`& Proof
`
`Civil Procedure > ... > Summary
`Judgment > Entitlement as Matter of
`Law > Appropriateness
`
`Civil Procedure > ... > Summary
`Judgment > Entitlement as Matter of Law > General
`Overview
`
`Civil Procedure > ... > Summary
`Judgment > Entitlement as Matter of Law > Genuine
`Disputes
`
`Civil Procedure > ... > Summary
`Judgment > Entitlement as Matter of Law > Legal
`Entitlement
`
`Civil Procedure > ... > Summary
`Judgment > Entitlement as Matter of
`Law > Materiality of Facts
`
`Civil Procedure > ... > Summary
`Judgment > Supporting Materials > General
`Overview
`
`Civil Procedure > Trials > Judgment as Matter of
`Law > General Overview
`
`]
`HN1[
`Verdicts
`
` Judgment as Matter of Law, Directed
`
`Fed. R. Civ. P. 56(c) provides that summary judgment
`shall be entered against the non-moving party if the
`pleadings, depositions, answers to interrogatories, and
`admissions on file, together with the affidavits, if any,
`show that there is no genuine issue as to any material
`fact and that the moving party is entitled to a judgment
`
`Civil Procedure > Trials > Judgment as Matter of
`Law > General Overview
`
`Civil Procedure > Trials > Judgment as Matter of
`Law > Directed Verdicts
`
`] Entitlement as Matter of Law, Genuine
`HN2[
`Disputes
`
`Where the record taken as a whole can not lead a
`rational trier of fact to find for the non-moving party,
`there is no genuine issue for trial under Fed. R. Civ. P.
`56(c). The burden of establishing the nonexistence of a
`genuine issue as to any material fact is initially on the
`party moving for summary judgment. In addition, where
`the moving party will bear the burden of persuasion at
`trial, that party must support its motion with credible
`evidence that would entitle it to a directed verdict if not
`controverted at trial. However, the moving party has no
`burden to negate or disprove matters on which the
`opponent will have the burden of proof at trial. Indeed,
`the moving party need not produce any evidence at all
`on
`those matters:
`the moving party's burden of
`demonstrating that it is entitled to judgment as a matter
`of law may be satisfied by showing that there is an
`absence of evidence to support the nonmoving party's
`case.
`
`

`

`1993 U.S. Dist. LEXIS 6674, *6674
`
`Page 3 of 21
`
`based on the applicable evidentiary standards.
`
`Civil Procedure > ... > Summary
`Judgment > Opposing Materials > General
`Overview
`
`Evidence > Weight & Sufficiency
`
`Civil Procedure > ... > Summary
`Judgment > Burdens of Proof > General Overview
`
`Civil Procedure > ... > Summary
`Judgment > Burdens of Proof > Movant Persuasion
`& Proof
`
`Civil Procedure > ... > Summary
`Judgment > Evidentiary Considerations > Scintilla
`Rule
`
`Civil Procedure > Judgments > Summary
`Judgment > Evidentiary Considerations
`
`Civil Procedure > ... > Summary
`Judgment > Motions for Summary
`Judgment > General Overview
`
`Civil Procedure > ... > Summary
`Judgment > Entitlement as Matter of Law > General
`Overview
`
`Civil Procedure > ... > Summary
`Judgment > Entitlement as Matter of Law > Genuine
`Disputes
`
`Civil Procedure > ... > Summary
`Judgment > Supporting Materials > General
`Overview
`
`HN3[
`
`] Summary Judgment, Opposing Materials
`
`Once the moving party properly supports its motion
`showing that it is entitled to judgment as a matter of law,
`the party opposing the motion must present affirmative
`evidence to establish a genuine dispute of material fact.
`Fed. R. Civ. P. 56 mandates the entry of summary
`judgment against a party who fails to make a showing
`sufficient to establish the existence of an element
`essential to that party's case, and on which that party
`will bear the burden of proof at trial. In addition, the
`mere existence of a scintilla of evidence is insufficient to
`defeat the motion for summary judgment. Rather,
`sufficient evidence must be produced upon which the
`jury could reasonably find for the nonmoving party
`
`International Trade Law > General Overview
`
`Trademark Law > Causes of Action Involving
`Trademarks > Infringement Actions > Burdens of
`Proof
`
`Trademark Law > Conveyances > General
`Overview
`
`Trademark Law > Causes of Action Involving
`Trademarks > Infringement Actions > General
`Overview
`
`Business & Corporate Compliance > ... > Causes of
`Action Involving Trademarks > Infringement
`Actions > Determinations
`
`HN4[
`
`] International Trade Law
`
`Pursuant to the Lanham Act, 15 U.S.C.S. § 1114, to
`prevail on a trademark infringement claim, the plaintiff
`must show that (1) defendants used the plaintiff's
`registered trademarks in interstate commerce without its
`consent; (2) in connection with the sale of goods; (3) in
`a manner that is likely to cause confusion or to deceive
`purchasers as to the source or origin of the goods.
`
`Business & Corporate Compliance > ... > Causes of
`Action Involving Trademarks > Infringement
`Actions > Determinations
`
`Trademark Law > Conveyances > General
`Overview
`
`Business & Corporate Compliance > ... > Types of
`Commercial Transactions > Sales of
`Goods > General Overview
`
`HN5[
`
`] Infringement Actions, Determinations
`
`The general rule is that trademark law does not reach
`the sale of genuine goods bearing a true mark even
`though the sale is not authorized by the mark owner.
`The reason is that trademark law is designed to prevent
`sellers from confusing or deceiving consumers about
`the origin or make of a product, which confusion
`ordinarily does not exist when a genuine article bearing
`a true mark is sold.
`
`

`

`1993 U.S. Dist. LEXIS 6674, *6674
`
`Page 4 of 21
`
`Business & Corporate Compliance > ... > Causes of
`Action Involving Trademarks > Infringement
`Actions > Determinations
`
`Commercial Law (UCC) > ... > Subject
`Matter > Goods > General Overview
`
`Trademark Law > Causes of Action Involving
`Trademarks > Infringement Actions > General
`Overview
`
`HN6[
`
`] Infringement Actions, Determinations
`
`One of the most important protections of the Lanham
`Act, 15 U.S.C.S. § 1114, is the right to control the
`quality of the goods manufactured and sold under the
`holder's trademark; therefore, a trademark holder is
`entitled to require that no merchandise be distributed
`without first being inspected.
`
`Business & Corporate Compliance > ... > Causes of
`Action Involving Trademarks > Infringement
`Actions > Determinations
`
`Trademark Law > Causes of Action Involving
`Trademarks > Infringement Actions > Burdens of
`Proof
`
`Trademark Law > Causes of Action Involving
`Trademarks > Infringement Actions > General
`Overview
`
`Trademark Law > Likelihood of Confusion > General
`Overview
`
`Trademark Law > Likelihood of
`Confusion > Consumer Confusion > General
`Overview
`
`HN7[
`
`] Infringement Actions, Determinations
`
`Likelihood of confusion is a mixed question of law and
`fact, which is predominately factual in nature. Neither
`actual confusion nor intent to confuse is necessary to a
`finding of likelihood of confusion. Rather, the likelihood
`of confusion is the determinative factor.
`
`Business & Corporate Compliance > ... > Causes of
`
`Action Involving Trademarks > Infringement
`Actions > Determinations
`
`Trademark Law > Likelihood of
`Confusion > Consumer Confusion > General
`Overview
`
`Trademark Law > Causes of Action Involving
`Trademarks > Infringement Actions > General
`Overview
`
`HN8[
`
`] Infringement Actions, Determinations
`
`Falsely suggesting affiliation with the trademark owner
`in a manner likely to cause confusion as to source or
`sponsorship constitutes trademark infringement.
`
`Trademark Law > ... > Similarity of
`Marks > Appearance, Meaning & Sound > General
`Overview
`
`Business & Corporate Compliance > ... > Causes of
`Action Involving Trademarks > Infringement
`Actions > Determinations
`
`Trademark Law > Likelihood of
`Confusion > Consumer Confusion > General
`Overview
`
`Trademark Law > ... > Consumer
`Confusion > Circuit Court Factors > General
`Overview
`
`Trademark Law > ... > Consumer
`Confusion > Circuit Court Factors > 9th Circuit Court
`
`Trademark Law > ... > Factors for Determining
`Confusion > Intent of Defendant to
`Confuse > General Overview
`
`] Similarity of Marks, Appearance, Meaning &
`
`HN9[
`Sound
`
`Courts apply a five-factor test, a six-factor test, and an
`eight-factor test to determine the likelihood of confusion.
`Among the factors which have been considered are: (1)
`strength of the mark; (2) proximity of the goods; (3)
`similarity of the marks; (4) class of goods and marketing
`channels used; (5) evidence of actual confusion; (6)
`defendant's intent in adopting the mark; (7) the type of
`good and the degree of care likely to be exercised by
`the purchaser, including customer sophistication; and
`
`

`

`1993 U.S. Dist. LEXIS 6674, *6674
`
`Page 5 of 21
`
`(8) likelihood of expansion of the product lines.
`
`Business & Corporate Compliance > ... > Federal
`Unfair Competition Law > False Designation of
`Origin > Elements of False Designation of Origin
`
`Trademark Law > ... > Entertainment Industry
`Falsity & Performance Misattribution > Trade Dress
`Protection > General Overview
`
`Trademark Law > ... > Federal Unfair Competition
`Law > False Advertising > General Overview
`
`Trademark Law > ... > Federal Unfair Competition
`Law > False Designation of Origin > General
`Overview
`
`] False Designation of Origin, Elements of
`HN10[
`False Designation of Origin
`
`See 15 U.S.C.S. § 1125(a).
`
`Antitrust & Trade Law > Consumer
`Protection > Likelihood of Confusion > False
`Designation of Origin
`
`Trademark Law > ... > Similarity of
`Marks > Appearance, Meaning & Sound > General
`Overview
`
`Trademark Law > ... > Federal Unfair Competition
`Law > False Advertising > General Overview
`
`Trademark Law > ... > Federal Unfair Competition
`Law > False Designation of Origin > General
`Overview
`
`Business & Corporate Compliance > ... > Federal
`Unfair Competition Law > False Designation of
`Origin > Elements of False Designation of Origin
`
`Business & Corporate Compliance > ... > Federal
`Unfair Competition Law > False Designation of
`Origin > Palming Off
`
`Trademark Law > ... > Federal Unfair Competition
`Law > Lanham Act > General Overview
`
`Trademark Law > ... > Entertainment Industry
`Falsity & Performance Misattribution > Trade Dress
`Protection > General Overview
`
`Trademark Law > Causes of Action Involving
`Trademarks > Infringement Actions > General
`Overview
`
`]
`HN11[
` Likelihood
`Designation of Origin
`
`of Confusion,
`
`False
`
` 15 U.S.C.S. § 1125(a) creates a federal remedy against
`the deceptive use of unregistered
`trademarks
`to
`designate falsely the origin of goods. The test for false
`designation of origin is similar to that for infringement of
`a registered trademark under 15 U.S.C.S. § 1114. Both
`statutes preclude the use of another's trademark in a
`manner likely to confuse the public about the origin of
`goods. The purpose behind 15 U.S.C.S. § 1125(a) is to
`protect consumers against deceptive designations of the
`origin of goods and, conversely, to enable producers to
`differentiate their products from those of others.
`
`Trademark Law > ... > Federal Unfair Competition
`Law > False Designation of Origin > General
`Overview
`
`] Federal Unfair Competition Law, False
`HN12[
`Designation of Origin
`
`To prevail on its false designation of origin claim, a
`plaintiff must establish that (a) goods or services are
`involved; (b) interstate commerce is affected; and (3)
`there is a false designation of origin or a false
`description or representation.
`
`Trademark Law > Abandonment > General
`Overview
`
`Civil Procedure > ... > Responses > Defenses,
`Demurrers & Objections > Waiver & Preservation of
`Defenses
`
`Trademark Law > Conveyances > General
`Overview
`
`Trademark Law > Causes of Action Involving
`Trademarks > Infringement Actions > General
`Overview
`
`Trademark Law > ... > Infringement
`Actions > Defenses > General Overview
`
`HN13[
`
`] Trademark Law, Abandonment
`
`

`

`1993 U.S. Dist. LEXIS 6674, *6674
`
`Page 6 of 21
`
`trademark
`to
`recognized defense
`is a
`Waiver
`infringement. It is the intentional relinquishment of a
`known right with knowledge and the intent to relinquish
`it.
`
`trademark infringement. Where consent by the owner to
`the use of his trademark by another is to be inferred
`from his knowledge and silence merely, it lasts no
`longer than the silence from which it springs.
`
`Contracts Law > ... > Consideration > Enforcement
`of Promises > General Overview
`
`Copyright Law > Copyright Infringement
`Actions > Civil Infringement Actions > Burdens of
`Proof
`
`Trademark Law > ... > Infringement
`Actions > Defenses > General Overview
`
`Contracts Law > Contract
`Formation > Consideration > General Overview
`
`HN14[
`
`] Consideration, Enforceme