Creel Abogados, S.C. and Carlos Creel Carrerav.Creel, Garcia-Cuellar, Aiza y Enriquez, S.C.

Trademark Trial and Appeal Board

Jun 22, 2015

No. 91217047 (T.T.A.B. Jun. 22, 2015)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB wbc Mailed: June 22, 2015 Opposition No. 91217047 Creel Abogados, S.C. and Carlos Creel Carrera v. Creel, García-Cuéllar, Aiza y Enríquez, S.C. Before Kuhlke, Kuczma and Adlin, Administrative Trademark Judges. By the Board: Creel Abogados, S.C. and Carlos Creel Carrera (“Opposers”) oppose Creel, García-Cuéllar, Aiza y Enríquez, S.C.’s (“Applicant”) applications for the marks CREEL and CREEL, GARCÍA-CUÉLLAR, AIZA Y ENRÍQUEZ, both in standard characters and both for “legal services” in International Class 45, on the grounds of deceptiveness pursuant to Section 2(a), false suggestion of a connection pursuant to Section 2(a), that the marks consist of or comprise a name, portrait, or signature of a living individual without written consent pursuant to Section 2(c), that the marks are deceptively misdescriptive pursuant to Section 2(e)(1), and that the marks are primarily merely a surname under Section 2(e)(4). UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 General Contact Number: 571-272-8500 Opposition No. 91217047 2 In its amended answer,1 Applicant denied the salient allegations of Opposers’ amended notice of opposition2 and raised four affirmative defenses - contractual estoppel, waiver, acquiescence and unclean hands. This case now comes up on Opposers’ motion for partial summary judgment, filed February 17, 2015, on Applicant’s affirmative defense of unclean hands. Opposers’ motion is fully briefed. Opposers argue, inter alia, that Applicant’s affirmative defense of unclean hands is collateral to and does not relate to the matter in controversy. Specifically, Opposers argue that their alleged misconduct is pleaded in the abstract because the purported misconduct, consisting of email announcements and website content, is not evidence of deceptive conduct related to the trademarks at issue, but rather, is related to advertising and promotion of their legal services. Further, Opposers assert that given the Board’s limited jurisdiction, the unclean hands defense should be dismissed because “[t]he Board is simply not the appropriate forum for addressing the complex questions of advertising and unfair competition law raised by Applicant’s [unclean hands defense].” Motion at p. 8. Alternatively, Opposers argue that if summary judgment is not entered on the unclean hands defense, the defense should be limited to Opposers’ claims of false suggestion of a connection under Section 2(a) and name of a living 1 Applicant filed an amended answer September 11, 2014 which was accepted by the Board as the operative pleading on October 22, 2104. 2 Opposers’ amended notice of opposition was filed August 15, 2014 and was accepted by the Board as the operative pleading on August 23, 2015. Opposition No. 91217047 3 individual under Section 2(c). Opposers argue that the defense does not apply to the claims of deceptiveness or deceptive misdescriptiveness and primarily merely a surname, because these claims all involve the protection of the public interest and “equitable defenses may not prevail when the public interest is at stake.” Motion at pp. 9-10. Applicant argues that its defense of unclean hands is “grounded in Opposers’ deceptive misuse of the very trademark they both rely on and seek to protect through this Opposition proceeding”; that because the mark is central to Opposers’ standing and their interest in bringing this opposition, it is not collateral; and that “the right of the public to be protected from an opposer’s unclean hands in the form of deceptive conduct remains a valid interest that must be considered by the Board notwithstanding the purported public interest nature of Opposers’ claims.” Response at pp. 7 and 12. Summary judgment is an appropriate method of disposing of cases in which there are no genuine disputes as to material facts, thus allowing the case to be resolved as a matter of law. See Fed. R. Civ. P. 56(c). In deciding motions for summary judgment, the Board must follow the well-established principles that, in considering the propriety of summary judgment, all evidence must be viewed in a light favorable to the non-movant, and all justifiable inferences are to be drawn in the non-movant’s favor. The Board may not resolve disputes of material fact; it may only ascertain whether such disputes are present. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d Opposition No. 91217047 4 766, 25 USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). Unclean hands is an affirmative defense that is available in Board proceedings. See Trademark Rule 2.106(b)(1) and Fed. R. Civ. P. 8(b); Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha, 66 USPQ2d 1154, 1157-58 (TTAB 2003); Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1738 (TTAB 2001); See also Duffy-Mott Company v. Cumberland Packing Company, 424 F2d 1095, 165 USPQ 422, 425 (CCPA 1972) (“Trademark rights under the statute are no longer divorced from equitable principles.”). To make out an unclean hands defense, a trademark defendant must show the defense is related to a plaintiff's claim; that is, misconduct unrelated to the claim to which it is asserted as a defense does not constitute unclean hands. Tony Lama Company, Inc. v. Anthony Di Stefano, 206 USPQ 176, 179 (TTAB 1980); VIP Foods, Inc. v. V.I.P. Food Products, 200 USPQ 105, 112-13 (TTAB 1978). Here, the alleged misconduct is related to Opposers’ claim and standing in that it is, as Applicant asserts, “grounded in Opposers’ deceptive misuse of the very trademark they both rely on and seek to protect through this Opposition proceeding.” The courts and the Board have routinely held that where there is a broader public policy concern at issue, certain equitable defenses such as Opposition No. 91217047 5 laches, bad faith and unclean hands do not apply. See Ultra-White Co. v. Johnson Chem. Indus., Inc., 465 F.2d 891, 175 USPQ 166, 167 (CCPA 1972) (public interest in preventing likelihood of confusion prevails over a laches defense); Linville v. Rivard, 41 USPQ2d 1731, 1733 n. 5 (TTAB 1997), aff’d on other grounds, 133 F.3d 1446, 45 USPQ 1374 (Fed. Cir. 1998) (laches is unavailable against abandonment); Bausch & Lomb, Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497, 1499 (TTAB 1986) (laches is not available against a claim of descriptiveness or fraud); Int’l Assn. of Fire Chiefs, Inc. v. H. Marvin Ginn Corp., 225 USPQ 940, 947 (TTAB 1985), rev’d on other grounds, 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (laches is not available where the petition to cancel is based on genericness of the registered matter because it would frustrate Section 14(c) of the Trademark Act that a registered mark may be cancelled at any time on the ground that it is generic); W.D. Byron & Sons, Inc. v. Stein Bros. Mfg. Co., 146 USPQ 313, 316 (TTAB 1965), aff’d, 377 F.2d 1001, 153 USPQ 749 (CCPA 1967) (“laches is not available to a defendant in a proceeding wherein, as here, the adverse party is claiming in essence that the mark in question inherently cannot function as a trademark” because “it is within the public interest to have registrations which are void ab initio stricken from the register and this interest or concern cannot be waived by the inaction of a single person or concern, no matter how long the delay persists.”); In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514, 1515 (TTAB 1993); TBC Corp. v. Grand Prix Ltd., 12 USPQ2d Opposition No. 91217047 6 1311, 1313 (TTAB 1989); Midwest Plastic Fabricators, Inc. v. Underwriters Laboratories, Inc., 5 USPQ2d 1067, 1069 (TTAB 1987) (laches does not apply against a claim that respondent does not control the use of a certification mark because of the public interest in making sure that certification marks are properly controlled); compare Bridgestone/Firestone Research Inc. v. Auto. Club, 245 F.3d 1359, 58 USPQ2d 1460, 1463-64 (Fed. Cir. 2001) (laches may be an affirmative defense against a Section 2(a) false suggestion of a connection claim because it is designed to protect a single person or institution from exploitation of their persona, not to protect the public or a broader group). It follows that equitable defenses, including unclean hands, should not be available against a claim that a party’s mark violates Section 2(a) because it is deceptive, Section 2(e)(1) deceptive misdescriptiveness and/or Section 2(e)(4) primarily merely a surname, since these claims involve a broader public interest. The test applied to determine if a mark is primarily merely a surname is its primary significance to the purchasing public. In re Isabella Fiore, LLC, 75 USPQ 1564, 1565 (TTAB 2005); Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1136 (TTAB 2000); In re Champion International Corp., 229 USPQ 550 (1985). “[T]he purpose behind Section 2(e)(4) is to keep surnames available for people who wish to use their own surnames in their businesses, in the same manner that merely descriptive terms are prohibited from registration because competitors should be able to use a descriptive Opposition No. 91217047 7 term to describe their own goods or services.” In re Joint-Stock Co. “Baik,” 84 USPQ2d 1921, 1924 (TTAB 2007) (Seeherman, J., concurring) citing Kimberly-Clark Corp. v. Marzall, Comr. Pats., 94 F. Supp 254, 88 USPQ 277, 279 (D.D.C. 1950) (“The spirit and the intent of the entire Act indicate that Congress intended to codify the law of unfair competition in regard to the use of personal names as it has been developed by the courts. … At common law it was held that every man had an absolute right to use his own name.”). Likewise, whether a mark is deceptive or deceptively misdescriptive involves a discussion of whether the public is deceived. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 (TTAB 2013); In re Peter S. Herrick P.A., 91 USPQ2d 1505, 1506 n.1 (TTAB 2009). Where a party is arguing that a mark is deceptive or deceptively misdescriptive or is a surname, there is a broader public interest at stake that cannot be waived by any single party regardless of any purported misconduct. Here, Opposers’ purported unclean hands would not prevent Opposers from prevailing on the claims that Applicant’s marks are deceptive or deceptively misdescriptive or a surname because there is a broader public interest at stake, namely preventing the registration of a mark that may deceive the public or which is a surname that should be available for others to use in their businesses. However, Applicant’s unclean hands allegations (as opposed to affirmative defense) are pertinent insofar as they amplify Applicant’s denials. See Order of Sons of Italy in America v. Profumi Fratelli Opposition No. 91217047 8 Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995); Harsco Corp. v. Electrical Sciences, Inc., 9 USPQ2d 1570 (TTAB 1988). Opposers’ false suggestion of a connection under Section 2(a) and name of a living individual under Section 2(c) claims are conversely claims which primarily involve an individual interest. False suggestion of a connection looks to whether the proposed mark is the same or a close approximation of the name or identity of a particular person. In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1643-44 (TTAB 2015). The rationale for the statutory prohibition is that the person identified in the mark loses the right to control her identity. Id. at 1643; citing Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505, 509 (Fed. Cir. 1983). Similarly, a claim under Section 2(c) that the mark consists of or comprises the name of a living individual is to protect the rights of privacy and publicity that living persons have in the designations that identify them. In re Nieves & Nieves LLC, 113 USPQ2d at 1650; citing In re Hoefflin, 97 USPQ2d 1174, 1176 (TTAB 2010); Martin v. Carter Hawley Hale Stores, Inc., 206 USPQ 931, 933 (TTAB 1979). Because the prevailing interest implicated by the defense to these claims is that of the individual, not the public, the defense of unclean hands is applicable to these two claims. Cf. Bridgestone/Firestone Research Inc. v. Auto. Club, 58 USPQ2d at 1463-64 (laches may be an affirmative defense against a Section 2(a) false suggestion of a connection claim because it is Opposition No. 91217047 9 designed to protect a single person or institution from exploitation of their persona, not to protect the public or a broader group). On this record and upon careful consideration of the parties’ arguments and the evidence submitted, Opposers’ motion for summary judgment on Applicant’s unclean hands defense as unavailable in this proceeding is denied. Opposers’ motion to limit Applicant’s unclean hands defense to Opposers’ claims of false suggestion of a connection under Section 2(a) and name of a living individual under Section 2(c) is granted.3 In view of the potential for the allegations in the pleadings to lead the parties and this case astray, and to distract their focus from issues within the Board’s jurisdiction, and pursuant to the Board’s inherent authority to control its docket, the parties must contact the assigned Board interlocutory attorney no later than July 15, 2015 to schedule a case management conference. The parties should be prepared to discuss focusing discovery and trial on the issues which the Board is empowered to decide, strategies for keeping this case focused and on track, and the timing of follow-up conferences.4 3 The evidence submitted in connection with the motion for summary judgment is of record only for consideration of that motion. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983); Am. Meat Inst. v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981). 4 Discussions of the scope of the Board’s jurisdiction, and whether some or all of the parties’ dispute is being litigated in a court of general jurisdiction may also be appropriate, at the initial case management conference or in follow-up conferences. Opposition No. 91217047 10 Proceedings are resumed and dates are reset as follows: Expert Disclosures Due 7/25/2015 Discovery Closes 8/24/2015 Plaintiff's Pretrial Disclosures 10/8/2015 Plaintiff's 30-day Trial Period Ends 11/22/2015 Defendant's Pretrial Disclosures 12/7/2015 Defendant's 30-day Trial Period Ends 1/21/2016 Plaintiff's Rebuttal Disclosures 2/5/2016 Plaintiff's 15-day Rebuttal Period Ends 3/6/2016 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 taking of testimony. Trademark Rule 2.125. Briefs shall be filed in accordance with Trademark Rule 2.128(a) and (b). An oral hearing will be set only upon request filed as provided by Trademark Rule 2.129. The parties are reminded of their responsibility to immediately notify the Board of any related litigation, whether in court or any form of arbitration.