Ava Ruha Corporation dba Mother’s Market & Kitchenv.Mother’s Nutritional Center, Inc.

Trademark Trial and Appeal Board

Jan 29, 2015

No. 92056067 (T.T.A.B. Jan. 29, 2015)

Goodman

Mailed: January 29, 2015

Cancellation No. 92056067 (Parent)
Cancellation No. 92056080

Ava Ruha Corporation dba Mother's
Market & Kitchen

v.

Mother's Nutritional Center, Inc.

Before Taylor, Wellington & Ritchie, Administrative Trademark
Judges.

By the Board:

Mother’s Nutritional Center Inc. (hereinafter “Respondent”) owns
Registration No. 3675027 for the mark and
Registration No. 3675056 for the standard character mark MOTHER’S
NUTRITIONAL CENTER1 for “Retail grocery stores that exclusively feature
foods authorized for purchase by pregnant women, new mothers and young
children participating in the federal Supplemental Food Program for Women,
Infants and Children (WIC)” in International Class 35.

1 Both marks were published for opposition on June 16, 2009 and both registrations
issued on September 1, 2009. “Nutritional Center” is disclaimed for Registration No.
3675056.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451 This Opinion is a Precedent
of the TTAB
Cancellation Nos. 92056067 and 92056080

2
On August 21, 2012, Petitioner Ava Ruha Corporation d/b/a Mother’s
Market & Kitchen (hereinafter “Petitioner”) filed petitions to cancel
Respondent’s registrations on the grounds of likelihood of confusion, fraud
and dilution. Petitioner has pleaded ownership of Registration No. 1440871
for the mark for “Restaurant and grocery
services directed toward natural and health products and food preparations”
in International Class 42.2
In its answer, Respondent denies the salient allegations in the
consolidated petition to cancel and has asserted affirmative defenses.3
This case now comes up on the following motions4:
1) Respondent’s motion for summary judgment on the affirmative defense
of laches;

2) Petitioner’s motion to file a second amended petition for cancellation5;

2 Issued May 26, 1987. Effective January 1, 2002, applications for food and beverage
services were placed in new International Class 43.
3 The proceedings were consolidated on February 14, 2013 and Cancellation No.
92056067 was designated as the parent case. A consolidated amended petition to
cancel was filed on February 25, 2013, and Respondent filed its answer on March 25,
2013.
4 Respondent’s counsel’s notice of name change, filed November 12, 2013, is noted.
5 The motion to amend was filed prior to suspension of proceedings for consideration
of the summary judgment motions.
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3) Petitioner’s cross-motion for summary judgment on Respondent’s
affirmative defense of laches;

4) Petitioner’s motion for Fed. R. Civ. P. 56(d) discovery;

5) Petitioner’s evidentiary objections to Respondent’s declaration of Juan-
Carlos Monnaco; and
6) Respondent’s evidentiary objections to Petitioner’s declaration of
Deborah Rubino.
Petitioner’s Motion to Amend
We turn first to the motion for leave to file a second amended petition for
cancellation to plead ownership of Registration No. 4351038 for the standard
character mark MOTHER’S MARKET & KITCHEN for “Retail grocery store
services featuring health food products” in International Class 35 and
“Restaurant services featuring natural and healthy food preparations,
namely, vegetarian, gluten-free, organic, vegan, low carbohydrate, low salt,
raw, dairy free, poultry, fish, and low glycemic foods and beverages” in
International Class 43.6 Inasmuch as Respondent has not filed a response
thereto, the motion to amend the petition to cancel is granted as conceded.
Trademark Rule 2.127(a).
The second amended petition to cancel is accepted and is now the
operative pleading in this consolidated case.
Cross-Motions for Summary Judgment on Respondent’s Laches Defense
As noted, the parties have cross-moved for summary judgment on
Respondent’s laches defense. Before dealing with the merits, we first address
some preliminary matters.

6 Issued June 11, 2013.
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The Operative Complaint is the Second Amended Petition
Although Respondent’s motion for summary judgment was filed prior to the
second amended petition, the Board deems the motion to refer to the
allegations in the second amended petition to cancel. Hartung v. Cae Newnes,
Inc., 229 F. Supp. 2d 1093, 1096 (D. Or. 2002) (deeming motion for summary
judgment as a motion against allegations in the amended complaint when the
amended complaint was filed after defendant’s motion for summary
judgment).
Petitioner’s Fed. R. Civ. P. 56(d) Discovery Request is Moot
Along with its opposition to the motion for summary judgment, Petitioner
filed a motion for Fed. R. Civ. P. 56(d) discovery. Inasmuch as Petitioner has
filed a substantive response to Respondent’s motion for summary judgment,
the motion for Rule 56(d) discovery is denied as moot. See Ron Cauldwell
Jewelry, Inc. v. Clothestime Clothes, Inc., 63 USPQ2d 2009, 2012 n.8 (TTAB
2002) (denying motion for Rule 56(f) (now Rule 56(d))7 discovery where
responsive brief on merits to summary judgment filed).
The Parties’ Evidentiary Objections
Petitioner has interposed objections to Respondent’s declaration of Juan-
Carlos Monnaco, its Chief Financial Officer, (hereinafter “Monnaco
declaration”) submitted in support of Respondent’s motion for summary
judgment. In particular, Petitioner argues that Mr. Monnaco lacks the

7 Effective December 1, 2010, Rule 56(f) was reclassified as Rule 56(d) with no
substantial change.
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requisite personal knowledge under Fed. R. Evid. 602 with regard to the
statements made in the declaration, and his testimony is incompetent and
inadmissible as there is no evidence indicating when he became associated
with Respondent, what his responsibilities were at different points and time,
and the functional basis for his knowledge.8
In response, Respondent argues that Petitioner’s objections should be
overruled as Mr. Monnaco is an officer and competent to testify on
Respondent’s behalf.
Affidavits or declarations may be submitted in support of, or in opposition
to, a motion for summary judgment provided that they are “made on personal
knowledge, set out facts that would be admissible in evidence, and show that
the affiant or declarant is competent to testify on the matters stated.” Fed. R.
Civ. P. 56(c)(4). Pursuant to the rule, an affiant or declarant may testify
based on his or her personal knowledge from a review of the contents of files
and records. Londrigan v. Federal Bureau of Investigation, 670 F.2d 1164,
1174-75 (D.C. Cir. 1981); Washington Cent. R. Co., Inc. v. National Mediation
Bd., 830 F. Supp. 1343, 1353 (E.D. Wash. 1993) (same). In addition, an
affidavit or declaration can adequately support a motion for summary
judgment when the affiant or declarant’s position with the employer renders
him or her competent to provide the testimony on the particular issues which
the affidavit concerns. See, e.g., In re DBC, 545 F.3d 1373, 89 USPQ2d 1123,

8 The Federal Rules of Evidence and the Federal Rules of Civil Procedure generally
apply to proceedings before the Trademark Trial and Appeal Board. Trademark
Rules 2.116 and 2.122.
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1131 (Fed. Cir. 2008) (officer and employee declarations may be based on
discussions concerning the subject matter with other knowledgeable officers,
employees, or contractors); Sheet Metal Workers' Int’l. Assoc. Local Union v.
Madison Indus., Inc., 84 F.3d 1186, (9th Cir. 1996) (personal knowledge of
party’s general manager could be inferred from his position within the
company). To the extent some portions of the declaration may not be based
on personal knowledge, the proper remedy is to simply disregard those
portions. Ridenour v. Collins, 692 F. Supp. 2d 827, 846 (S.D. Ohio 2010).
In this case, Mr. Monnaco’s declaration states he is Respondent’s Chief
Financial Officer and is testifying based on his personal knowledge and
review of company files on the relevant matters. Because Mr. Monnaco is
competent to testify, based on his status as Respondent’s Chief Financial
Officer, his personal knowledge, and his personal knowledge of the records,
Petitioner’s objections based on lack of personal knowledge under Fed. R.
Evid. 602 are overruled.
We also overrule Petitioner’s hearsay objections. Petitioner has objected
to Mr. Monnaco’s statements regarding the receipt and sending of letters
between the parties’ counsel. However this testimony does not constitute
hearsay as it does not go to the factual content of the letters but as to their
sending and receipt.9 Pfizer Inc. v. Cody John Cosmetics, Inc. 211 USPQ 64
(TTAB 1981) (letters are not hearsay in the first instance of corroborating

9 We note that these letters are also exhibits to the declaration of Deborah Rubino,
Petitioner’s secretary, provided by Petitioner in opposition to Respondent’s summary
judgment motion and in support of its cross-motion for summary judgment.
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testimony of receipt of the letters and the address of those letters). To the
extent any other objected to statement constitutes inadmissible hearsay that
is not subject to a hearsay exception, it has not been considered.
Petitioner has further argued that to the extent the statements in the
Monnaco declaration are admissible, their prejudicial effect outweighs their
probative value under Fed. R. Evid. 403.
However, we need not exclude evidence for danger of unfair prejudice. See
e.g., Woods v. United States, 200 F. App’x 848, 853 (11th Cir. 2006) (“the part
of Rule 403 that authorizes exclusion of evidence because of its unfair
prejudicial impact ‘has no logical relationship to bench trials . . . .’”) quoting
Gulf States Utilities Co. v. Ecodyne Corp., 635 F.2d 517, 519 (5th Cir. 1981).
This is so because “Rule 403 assumes a trial judge is able to discern and
weigh the improper inferences that a jury might draw from certain evidence,
and then balance those improprieties against probative value and necessity. .
. . [as well as] exclude those improper inferences from his mind in reaching a
decision.” Gulf States Utilities, 635 F.2d at 519.
Accordingly, Petitioner’s objection based on Fed. R. Evid. 403 is overruled.
In view of the above, we have considered the Monnaco declaration in
connection with Respondent’s motion for summary judgment.
Respondent has interposed evidentiary objections to portions of
statements in the declaration of Deborah Rubino, Petitioner’s secretary.
Respondent also has interposed hearsay objections. For the most part,
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Respondent’s objections are essentially arguments regarding the probative
value of the objected-to statements, and not objections as to admissibility.
Weatherford/Lamb, Inc. v. C&J Energy Servs., Inc., 96 USPQ2d 1834, 1836-
37 (TTAB 2010). We overrule the objections but have considered whether Ms.
Rubino’s statements are sufficiently probative to raise a genuine dispute of
material fact or support judgment in Petitioner’s favor. To the extent any
objected to statements constitute inadmissible hearsay that is not subject to a
hearsay exception, they have not been considered.
The Merits of Respondent’s Laches Defense
We now consider the merits of the parties’ cross-motions for summary
judgment on the affirmative defense of laches.10
Summary judgment is an appropriate method of disposing of cases in
which there are no genuine disputes of material fact and the moving party is
entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). In
reviewing a motion for summary judgment, the evidentiary record and all
reasonable inferences to be drawn from the undisputed facts must be viewed
in the light most favorable to the nonmoving party. Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The
Board may not resolve issues of material fact; it may only ascertain whether
such issues are present. See Lloyd’s Food Prods. Inc. v. Eli’s Inc., 987 F.2d
766, 25 USPQ2d 2027 (Fed. Cir. 1993). When cross-motions for summary

10 Although styled as an opposition and cross-motion, Petitioner’s cross-motion is
essentially a request for judicial determination as non-movant that it is entitled to
judgment in its favor.
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judgment are presented, the Board evaluates each motion on its own merits
and resolves all doubts and inferences against the party whose motion is
being considered. Mingus Constructors, Inc. v. United States, 812 F.2d 1387,
1390–91 (Fed. Cir. 1987)). To defeat summary judgment, the evidence must
be sufficiently probative to create a genuine dispute of material fact to be
tried. Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 77 USPQ2d
1161, 1177 (Fed. Cir. 2005).
We first note that the laches defense is an available defense for likelihood
of confusion and dilution claims.11 15 U.S.C. § 1069; National Cable Tel.
Ass'n, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d
1424, 1431 (Fed. Cir. 1991); Hornby v. TJX Cos., 87 USPQ2d 1411, 1419
(TTAB 2008). However, the laches defense is not available for fraud claims
because it is in the public interest to prohibit registrations procured or
maintained by fraud. Hornby, 87 USPQ2d at 1419; see also La Republique
Francaise v. Saratoga Vichy Spring Co., 191 U.S. 427, 439 (1903) (laches
unavailable in the case of actual fraud or in case where there is a conscious
attempt to mislead the public as to sponsorship). Therefore, we do not
consider the motion in regard to the fraud claim.
The party raising the affirmative defense of laches has the burden of proof.
Bridgestone/Firestone Research Inc. v. Automobile Club de l’Ouest de la
France, 245 F.3d 1359, 58 USPQ2d 1460, 1462 (Fed. Cir. 2001). In order to

11 By statute, laches is available as an affirmative defense. Section 19 of the
Lanham Act, 15 U.S.C. § 1069.
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prevail on the 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.”
Id. at 1462-63; Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes Inc., 971 F.2d
732, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992). The two foundational inquiries
of undue or unreasonable delay and prejudice are questions of fact. SCA
Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 112 USPQ2d
1198, 1202 (Fed. Cir. 2014). Respondent must establish that there is no
genuine dispute of material fact as to either element. Fishking Processors Inc.
v. Fisher King Seafoods Ltd., 83 USPQ2d 1762, 1765 (TTAB 2007) (citing
Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 34 USPQ2d 1822,
1824 (Fed. Cir. 1995)). On the other hand, Petitioner, as plaintiff cross-
moving for summary judgment on Respondent’s affirmative defense, may
point to an absence of evidence in the record to support an essential element
of the defense. Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). We will
determine first, if Respondent has sufficiently established the existence of
each element of its asserted defense or if any genuine disputes of material
fact exist as to each element of the defense; and, if the facts are undisputed,
whether Petitioner is entitled to summary judgment in its favor or whether
Respondent is entitled to summary judgment in its favor.
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Was There an Unreasonable Delay?
We turn first to a calculation of the length of delay between the time when
a petitioner first has notice of a defendant and its mark and the time when
petitioner files the petition for cancellation. 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 delay can be measured. Loma
Linda Food Co. v. Thomson & Taylor Spice Co., 279 F.2d 522, 126 USPQ 261,
263 (CCPA 1960); Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1114 (TTAB
2007); Teledyne Tech., Inc. v. Western Skyways, Inc., 78 USPQ2d 1203, 1210
(TTAB), aff'd, 208 F. App’x 886 (Fed. Cir. Dec. 6, 2006). “In the absence of
actual knowledge [of trademark use] prior to the close of the opposition
period, the date of registration is the operative date for laches,” as it provides
constructive notice to petitioner of the registrant’s claim of ownership.
Teledyne, 78 USPQ2d at 1210, n.10 and the authorities cited therein; see also
Jansen Enterprises, 85 USPQ2d at 1114 (publication in Official Gazette does
not provide constructive notice). If there is actual knowledge of a defendant
and its mark prior to publication for opposition, the date of publication is the
operative date for laches. National Cable Tel. Ass’n, 19 USPQ2d at 1432 (“in
this case laches, with respect to protesting the issuance of the registration for
the mark, could not possibly start to run prior to October 16, 1984, when
Cable's application for registration was published for opposition”). Thus, in a
cancellation proceeding, laches begins to run no earlier than the date the
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involved mark was published for opposition (if there was actual knowledge),
and no later than the issue date of the registration (when Plaintiff is put on
constructive notice, see 15 U.S.C. § 1072).
In this case, the petitions for cancellation were filed on August 21, 2012.
The earliest dates for determining whether there has been undue delay are
the June 16, 2009, publication date for both of Respondent’s registrations
(when based on prior actual knowledge of trademark use) and the September
1, 2009, issue date for both registrations (when there is no prior actual
knowledge of trademark use). It is not subject to genuine dispute that
Petitioner had actual knowledge of Respondent’s trademark use at least as
early as February 5, 1998.12 There is also no genuine dispute of material fact
that Petitioner’s actual knowledge of Respondent’s marks precedes the
publication dates of the applications which resulted in both of Respondent’s
registrations.
Although Petitioner argues that laches runs from the date of registration,
in view of Petitioner’s actual notice of Respondent’s trademark use prior to
the close of the opposition period, we find as a matter of law that laches runs

12 The Rubino declaration states that Petitioner became aware of Respondent’s use
of Mother’s Nutritional Center “[i]n early 1998” and “concluded that Respondent’s
use of the name ‘Mother’s Nutritional Center’ might create a likelihood of confusion
in the marketplace with Petitioner’s Mother’s Market & Kitchen registered service
mark . . . .” Rubino Decl. ¶ 4, 17 TTABVUE at 28. The record includes a February
5, 1998 letter from Petitioner’s counsel to Respondent, which states that his client
became aware of Respondent’s use and requested “written assurance” that
Respondent “cease all use of Mother’s.” It appears that based on the petition for
cancellation, Petitioner’s broad objections to Respondent’s services in connection
with the use of the term Mother’s has not changed. Rubino Decl. Exhibit A, 17
TTABVUE at 34.
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from the date the applications for the subject registrations were published for
opposition, June 16, 2009. Therefore, based on the August 21, 2012,
commencement date of the cancellation actions, it is not subject to genuine
dispute that the length of delay is a little over three years and two months.
Although this delay is not extreme, time periods shorter than, or only slightly
longer than this, have supported a laches defense. See, e.g., Teledyne, 78
USPQ2d at 1203 (3 years, 8 months of unexplained delay held sufficient for
laches); Trans Union Corp. v. Trans Leasing Int’l, Inc., 200 USPQ 748, 756
(TTAB 1978) (finding laches based on a two and half year period of delay).
Having concluded that the length of the delay could support a defense of
laches, we now determine whether the delay was undue or unreasonable.
Here, Petitioner argues there are genuine disputes of material fact as to
whether its delay was justified and not “undue,” or alternatively, that
summary judgment should be found in its favor because as a matter of law,
the delay was reasonable or excusable.
In particular, Petitioner argues the doctrine of progressive encroachment,
namely, that it had no reason to seek cancellation until after Respondent
redirected its business so that it more squarely competed with Petitioner.
Petitioner points to one instance of actual confusion arising as a result of
Respondent’s use of MOTHER’S on grocery store services; Petitioner’s lack of
knowledge, until 2011, of Respondent’s use of the MOTHER’S
NUTRITIONAL CENTER or MOTHER’S marks on more than one store
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location;13 Respondent’s “promotion of healthy and nutritional food products
[including organic food products] which are a focus of grocery services offered
under Petitioner’s marks,” as evidencing a “change in focus of Respondent’s
services”; and Respondent’s “admission of likelihood of confusion between a
highly similar mark to Petitioner’s and Respondent’s mark” in third party
litigation as a reversal of Respondent’s “position regarding the issue of
likelihood of confusion.” Pet. Br. p.11-12, 17 TTABVUE at 15-17; Rubino
Decl. ¶¶ 11, 10, 13, 17 TTABVUE at 28, 30-31.
In response and reply, Respondent argues that its business remains
grocery stores that, as identified in the subject registrations, exclusively offer
for sale food identified on the authorized WIC food list. Respondent points to
the Monnaco declaration which states that “Respondent has continuously
used its MOTHER’S and MOTHER’S NUTRITIONAL CENTER
(“‘Respondent’s Marks’”) for its chain of retail grocery stores focused on the
federal supplemental Food Program for Women, Infants and Children (WIC)
since 1995.” Monnaco Decl. ¶ 2, 14 TTABVUE at 9.

13 In connection with its argument of progressive encroachment, Petitioner points to
Respondent’s use in commerce dates asserted in the involved registrations as
“noteworthy” and evidencing “an absence of significant use (if any)” of Respondent’s
marks so as to excuse Petitioner’s delay in filing the petitions for cancellation. Pet.
Br. p. 11, 17 TTABVUE at 16. However, dates of use in a registration are not
evidence of use, Trademark Rule 2.122(b)(2), and, in any event, the unchallenged
Monnaco declaration declares that Respondent operated 13 stores under the
MOTHER’S and MOTHER’S NUTRITIONAL CENTER marks in 1998 and had
expanded to 55 stores by July 2009. Monnaco Decl. ¶¶ 7-8, 14 TTABVUE at 9-10.

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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.” Jansen
Enterprises, 85 USPQ2d at 1116 (quoting 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)). For example, “where a defendant
begins use of a trademark or trade dress in the market, and then directs its
marketing or manufacturing efforts such that it is placed more squarely in
competition with the plaintiff, the plaintiff's delay is excused.” Chattanoga
Mfg., Inc. v. Nike Inc., 301 F.3d 789, 64 USPQ2d 1140, 1143 (7th Cir. 2002) .
Respondent has identified its services in its registration as “Retail grocery
stores that exclusively feature foods authorized for purchase by pregnant
women, new mothers and young children participating in the federal
Supplemental Food Program for Women, Infants and Children (WIC).” This
recitation of services clearly indicates that the services cover a specific type of
grocery services directed to specific consumers, namely those participating in
the federal WIC program.
Petitioner did not submit any evidence in its response and cross-motion to
suggest that Respondent was ever “put on notice” by Petitioner as to any
possible encroachment upon Petitioner’s business. Petitioner’s evidence of
Respondent’s encroachment is a printout of certain webpages from
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Respondent’s website which shows that Respondent provides “locally grown
fresh produce that is in season,” offers “a wide selection of the best quality
fresh produce,” now carries organic baby food, and provides “Great tasting
and refreshing recipes for a Healthy Family.” Rubino Decl., ¶13 exhibit E,
17 TTABVUE at 31, 57-60. However, this evidence is not sufficiently
probative of a change in the nature of Respondent’s services such that
Respondent has expanded into retail grocery store services not connected
exclusively with the federally funded WIC program or that Respondent is
marketing its retail grocery store services to non-WIC program participants.
Registration provides constructive nationwide notice of the Respondent’s
claim of ownership of the marks in connection with the services specified in
the registration certificates, see 15 U.S.C. §§ 1057(b) and 1072, and the types
of foods Petitioner points to as evidence of progressive encroachment are
subsumed within the description of the retail store services in the
Registrations. For purposes of an attack on a registration, there can be no
“progressive encroachment” where the alleged encroachment is within the
scope of the registration at issue.
As further evidence of encroachment, Petitioner has also provided
Respondent’s October 28, 2011, complaint against a third party for
trademark infringement, common law trademark, trade name infringement
and unfair trade practices.14 The complaint states in paragraphs 7 and 8

14 Mother’s Nutritional Center v. Mother Market, Case no. CV11-9030, United States
District Court, Central District of California, Southern Division.
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that Respondent’s “grocery stores sell groceries exclusively as part of the
federally funded Special Supplemental Program for Women, Infants and
Children (“‘WIC’”)” and that “[t]he WIC program is a federally funded
program, similar to the food stamp program . . . . Qualified participants may
obtain vouchers which can be redeemed for specific food items at licensed and
designated WIC vendors such as MNC.” Rubino Decl., ¶ 11, Exhibit C, 17
TTABVUE at 30-31, 38-49. The allegations, too, are consistent with the
description of Respondent’s services set forth in Respondent’s registrations.
The complaint does not include any allegations which state that Respondent
is providing services other than grocery services in connection with the
federally funded WIC program, nor has Petitioner pointed to any such
allegations, much less evidence.
To bolster its progressive encroachment argument, Petitioner offered what
it characterized as an instance of actual confusion, namely, an e-mail from an
unnamed customer which was sent via the “contact us” portion of Petitioner’s
website. We think that one anonymous e-mail is far too weak a reed to
support Petitioner’s progressive encroachment argument. Porta-Tool,
Incorporated v. DND Corporation, 196 USPQ 643, 649 (TTAB 1977) (with
respect to evidence of actual confusion, anonymous letter is not entitled to
much weight). On the record before us, we hold that the evidence provided by
Petitioner in its response and cross-motion is not sufficiently probative to
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raise a genuine dispute of fact as to whether progressive encroachment
excused what would otherwise be an unreasonable delay.15
Economic Prejudice
Respondent argues that it suffered prejudice as a result of the delay
asserting that it “expended tens of millions of dollars growing its business,”
investing in stores and “steadily built up goodwill in Respondent’s marks.”
Resp. Br. p.2, 14 TTAVUE at 3. In particular, Respondent states that it
added at least 15 stores and spent over $7 million on promoting
“Respondent’s Marks and its services offered thereunder” since the
publication date for the involved registrations through the end of 2012. Resp.
Br. p.4, 14 TTABVUE at 5; Monnaco Decl. ¶¶ 8-10, 14 TTABVUE at 10.
Petitioner, on the other hand, argues genuine disputes exist as to whether
any prejudice was due to Petitioner’s delay, or alternatively, the undisputed
facts establish that there was no prejudice due to Petitioner’s delay.
With regard to the question of prejudice, a respondent's reliance on a
petitioner’s failure to file a petition for cancellation sooner is not a
requirement for laches. That is, a petitioner does not have to overtly or
covertly lull a respondent into believing that petitioner would not act.
Bridgestone/Firestone Research, 58 USPQ2d at 1463 (citing A.C. Aukerman

15 We note that progressive encroachment, which occurs when one party comes more
closely into competition with another, such that confusion from similar marks is
rendered more likely, would not seem applicable to excuse a tardy claim of dilution.
That is because the presence of competition between the parties is irrelevant to a
claim of dilution, as defined in 15 U.S.C. § 1125(c). But we need not definitively so
hold here because, as discussed infra, we find, as a matter of law, that Petitioner has
failed to offer sufficient facts to support a progressive encroachment excuse.
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Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 22 USPQ2d 1321, 1336 (Fed.
Cir. 1992) (en banc) [“reliance is not a requirement of laches”]). “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, 78
USPQ2d at 1211. See also Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310,
1313 (TTAB 1999) (“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”); Trans Union,
200 USPQ at 756 (prejudice occurs where senior user takes action after the
junior user builds up its business and goodwill around a mark).
It is not subject to genuine dispute that from June 16, 2009, through
August 21, 2012, Respondent continued to use, invest in, and promote its
MOTHER’S and MOTHER’S NUTRITIONAL CENTER marks and expanded
its business by adding fifteen additional stores and spending $7.5 million on
advertising and promotions.
We are not persuaded by Petitioner’s arguments that a genuine dispute
exists as to whether the prejudice was “due to, the result of, or caused by
Petitioner’s ‘delay’” or that no prejudice can be found as there is “no nexus
between Respondent’s opening of stores, marketing expenditures and
Petitioners’ ‘delay.’” Pet. Br. p.12, 17 TTABVUE at 20. Reliance by
Respondent on Petitioner’s delay is not necessary to find economic prejudice.
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Bridgestone/Firestone Research, 58 USPQ2d at 1463 (“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.”). The
question is whether there has been “a change in the economic position . . .
during the period of delay.” Aukerman, 22 USPQ2d at 1329. “Economic
damage may be a direct function of the delay involved.” Teledyne, 78 USPQ2d
at 1212. Here, it is undisputed that Respondent changed its economic
position during the period of Petitioner’s delay by Respondent’s continued
use, promotion, and development of its MOTHER’S and MOTHER’S
NUTRITIONAL CENTER trademarks. Therefore, we find as a matter of law
that Respondent would be subject to economic prejudice if its registrations
were to be cancelled at this point in time.
We hold that, as a matter of law, Petitioner’s delay was unreasonable and
prejudiced Respondent. Accordingly, laches has been shown.
Dilution and Laches
Laches may apply to claims of dilution in opposition and cancellation
proceedings. See 15 U.S.C. § 1069. Cf. Pharmacia Corp. v. Alcon Labs., Inc.
201 F. Supp. 2d 335, 381 n.17 (D.N.J. 2002) (“Dilution does not implicate any
public interest against consumer deception because, by definition, it protects
only a trademark owner’s private interest.”); TCPIP Holding Co. v. Haar
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Communications Inc., 244 F.3d 88, 95 (2d Cir. 2001) (“The Dilution Act offers
no benefit to the consumer public—only to the owner”); Hornby, 87 USPQ2d
at 1419 (“the claim of dilution relates to a personal right of petitioner, rather
than being in the interest of the general public”). See also 4 J. Thomas
McCarthy on Trademarks and Unfair Competition, § 24:130 (4th ed. 2014)
(“Unlike cases of traditional trademark infringement, in dilution cases there
is no strong policy of consumer confusion to weigh against dismissal or
narrowing of relief due to the equities created by delay or acquiescence”).
Inasmuch as the affirmative defense of laches is applicable to the dilution
claim, and we have found that Respondent has established a valid laches
defense, Petitioner’s dilution claim is barred by this equitable defense.
Likelihood of confusion and laches
Even when a laches defense has been proven, it will not serve as a bar
against a petition for cancellation on a likelihood of confusion ground when
confusion is inevitable. Ultra-White Co., Inc. v. Johnson Chem. Indus., Inc.,
465 F.2d 891, 175 USPQ 166, 167 (CCPA 1972) (laches not applicable when
confusion is inevitable; “notwithstanding the equities between the parties
and the equitable principles of § 1069 [of the Trademark Act], the public
interest expressed in § 1052 [of the Trademark Act] is the dominant
consideration”). Hornby, 87 USPQ2d at 1419, n. 9 (“The only exception [to
application of laches] is when confusion is inevitable, because any injury to
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the defendant caused by the plaintiff’s delay is outweighed by the public’s
interest in preventing confusion”) (citation omitted).
Petitioner in the case at hand, in its combined response to Respondent’s
motion and cross-motion, failed to raise the issue of inevitable confusion as a
basis for ultimately avoiding any indisputable showing of laches. Although
Petitioner could be deemed to have waived this issue, the public interest in
avoiding consumer confusion would not be served by finding waiver as to the
question of whether confusion is inevitable. Accordingly, in our discretion, we
do not find waiver. Woods v. DeAngelo Marine Exhaust Inc., 692 F.3d 1272,
104 USPQ2d 1169, 1174 (Fed. Cir. 2012) (trial court has discretion in
whether it finds waiver).
Therefore, we address the applicability of this issue. See e.g., Stahly, Inc.
v. M. H. Jacobs Co., 183 F.2d 914, 86 USPQ 131, 133 (7th Cir. 1950) (in
trademark and unfair competition case court sua sponte considered the
likelihood of public deception and afforded appropriate relief as plaintiff could
not waive the public’s right to be safeguarded against fraud and deception).
See also Broadcast Innovation LLC v. Charter Communications Inc., 420 F.3d
1364, 76 USPQ2d 1220, 1222 (Fed. Cir. 2005) (appellate courts may address
arguments beyond those originally presented by the parties to the district
court, particularly where the issue presents significant questions of general
impact or of great public concern). It follows, that if an appellate court can
sua sponte consider a public interest that was not presented to a trial court,
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then a trial court, and this Board, can sua sponte preserve for consideration
at final hearing an issue for which relevant evidence has not yet been
introduced.
Given the procedural posture of the motions for summary judgment,
specifically, the fact that Respondent moved for summary judgment on its
laches defense prior to trial and without Petitioner first having moved for
summary judgment on its likelihood of confusion claim, there was no
evidence on likelihood of confusion of record when we were called upon to
consider the question of laches. We would not have expected Petitioner to put
in all of its evidence on likelihood of confusion to defend against Respondent’s
motion, though it would have been preferable for Petitioner to at least
acknowledge in its response or cross-motion the possibility that the evidence
of confusion that it planned to produce at trial might show not a mere
likelihood of confusion but that confusion was inevitable, and that
determination of such issue should wait until all the evidence on confusion
was put in.
We rely on the public interest and the possibility that evidence of
confusion, when presented, might show that confusion is inevitable, as well
as the particular procedural posture in which the question of laches was
raised for consideration, to exercise our discretion not to find waiver.
However, because Respondent has shown that there is no genuine dispute on
the issue of laches, at trial Petitioner cannot prevail on a showing of mere
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likelihood of confusion. Rather, Petitioner will have to put in evidence of
confusion that shows confusion to be inevitable, which is “an increment
higher than that required for a finding of likelihood of confusion.” Turner, 52
USPQ2d at 1313 n.5 (citation omitted).
Accordingly, the parties’ cross-motions for summary judgment are
denied on the affirmative defense of laches with respect to the likelihood of
confusion ground.
* * *
In summary, Respondent’s motion for summary judgment on its
affirmative defense of laches is granted with respect to the dilution claims,
and to that extent Petitioner’s cross-motion is denied. We decline to enter
summary judgment on the affirmative defense of laches for either party with
respect to the likelihood of confusion claims. Petitioner’s claims of dilution in
the second amended consolidated petition to cancel in Cancellation Nos.
92056067 and 92056080 are dismissed with prejudice.
Proceedings are resumed as to the likelihood of confusion and fraud
claims. As to the former ground, we reiterate the burden is now for Petitioner
to show that confusion is inevitable, absent which the claim is barred by
Respondent’s affirmative defense of laches.
Dates are reset as follows:
Answer to second amended petition to cancel due 2/07/2015
Expert Disclosures Due 2/12/2015
Discovery Closes 3/14/2015
Plaintiff's Pretrial Disclosures Due 4/28/2015
Plaintiff's 30-day Trial Period Ends 6/12/2015
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Defendant's Pretrial Disclosures Due 6/27/2015
Defendant's 30-day Trial Period Ends 8/11/2015
Plaintiff's Rebuttal Disclosures Due 8/26/2015
Plaintiff's 15-day Rebuttal Period Ends 9/25/2015

In each instance, a copy of the transcript of testimony, together with
copies of documentary exhibits, must be served on the adverse party within
thirty days after completion of the taking of testimony. Trademark Rule
2.l25.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b).
An oral hearing will be set only upon request filed as provided by Trademark
Rule 2.l29.