Klise Manufacturing Companyv.Braided Accents, L.L.C.

Trademark Trial and Appeal Board

Jul 3, 2008

No. 92045607 (T.T.A.B. Jul. 3, 2008)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Mailed: July 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Klise Manufacturing Company
v.
Braided Accents, L.L.C.
_____

Cancellation No. 92045607
_____

Leslie C. Ruiter of Stokes Lawrence, P.S. for Klise
Manufacturing Company

Muriel M. Burke of Owens & Crandall for Braided Accents,
L.L.C.
______

Before Quinn, Rogers, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Klise Manufacturing Company has petitioned to cancel
Registration No. 2438164, owned by Braided Accents, L.L.C.,
for the following mark:

for “building materials made of wood, namely, moldings, door
frames, window frames, rails and wainscotting” in
International Class 19. The registration issued on March
Cancellation No. 92045607
27, 2001. On March 31, 2007, the Office accepted
respondent’s Section 8 declaration of use.
Petitioner filed this cancellation on the ground of
priority of use and likelihood of confusion, pleading
ownership of a registration for the mark ACCENT (in typed
letters) for “decorative trim mouldings made of wood or
wood-substitutes”1; and an application for the same mark for
“Non-metal decorative mouldings and decorative trim for use
on built-in cabinetry, building construction, and
manufactured housing; multi-layered wood, namely, wood trim;
non-metal cove bases; non-metal door frames; and window
mullions and muntins made of wood” in International Class
19, and “Non-metal decorative mouldings and decorative trim
for use on furniture, picture frames, toys, caskets, boats,
musical instruments, and store fixtures” in International
Class 20.2 Petitioner alleges that “long prior to the date
registrant claims it first used [registrant’s mark],”
petitioner has been and is now using its mark and that it
will be damaged if respondent is “permitted to retain the
registration sought to be cancelled...on goods which are
substantially identical to those offered by Petitioner,

1 Registration No. 1158106 issued June 23, 1981, with a claimed
date of first use on August 31, 1975. Sections 8 and 15
affidavits have been accepted and, in 2001, it was renewed.
2 Application Serial No. 78808873 matured into Registration No.
3186944 on December 19, 2006; the goods recited above reflect the
identification of goods in the registration. The registration
contains a claim of first use on all goods of August 31, 1975.
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Cancellation No. 92045607
[and] confusion in the trade is likely to result from any
concurrent use of Petitioner’s mark and that of Registrant.”
Respondent denied the pertinent allegations of the
petition for cancellation. As an affirmative defense,
respondent asserted that petitioner is precluded by laches
from canceling respondent’s registration.
Both parties filed briefs.
The Record
By operation of the rules, the record includes the
pleadings and the subject registration file.
Neither party took testimony. However, both parties
introduced evidence by way of notices of reliance filed
during their respective testimony periods. In its trial
brief, petitioner specifically recited the materials
identified in both parties’ notices of reliance as being of
record. Respondent, in its trial brief, “concur[red] with
the description of the record as contained in [petitioner’s
brief} and finds it to be accurate and satisfactory….”
Brief, p. 4. We construe these statements in the parties’
briefs as a stipulation to the complete record.
That evidence includes: a status and title copy of
petitioner’s pleaded registration and a certified copy of
its pleaded application3; copies of various responses to

3 At the time of filing of the notice of reliance, petitioner’s
pleaded application had already matured into a registration for
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Cancellation No. 92045607
admission and interrogatory answers from both parties;4
copies of documents produced by both parties during
discovery;5 and copies of excerpts from petitioner’s own
website.6
Standing

Because petitioner has properly made its pleaded
registration (Registration No. 1158106) of record,
petitioner has established its standing to cancel
respondent’s registration. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982).
Respondent argues that petitioner does not have
standing because petitioner “has abandoned its ACCENT mark”

nearly eight months (see footnote 2). Because a status and title
copy of this registration has not been filed, we will not
consider this registration. Cf., DC Comics v. Pan American Grain
Mfg. Co., 77 USPQ2d 1220 (TTAB 2005) (Opposer’s pleaded
application matured into a registration during course of
proceeding; pleadings deemed amended to include reliance upon a
pleaded registration and opposer properly made the newly-issued
registration of record.)
4 First respondent and then petitioner (in its rebuttal testimony
period) relied on several of their own answers to
interrogatories, pursuant to Rule 2.120(j)(5), each doing so
because they were not submitted previously by the other party and
should have been as a matter of fairness. Neither party objected
to the other’s inclusion of these answers or reliance thereon.
5 Both parties admitted via mutual admission requests (introduced
via notices of reliance) that all documents produced are genuine
and authentic. See TBMP § 704.11 (2d ed. rev. 2004).
6 Internet website printouts generally may not be introduced by
way of a notice of reliance alone. See TBMP § (2d ed. rev. 2004)
and authorities cited therein. However, because the parties have
stipulated to the record, we consider any possible objection to
this evidence as waived.

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Cancellation No. 92045607
and it otherwise has “failed to show continuous use in
commerce, [and] there is prima facie evidence that the
ACCENT [mark] fell to the public domain.” Brief, pp. 14-15.
Because respondent has not counterclaimed to cancel
petitioner’s pleaded registration, this argument is
essentially an improper collateral attack on the pleaded
registration and, as such, has not been considered.
Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385,
1387, 165 USPQ 515, 517 (CCPA 1970)(“As long as the
registration relied upon … remains uncanceled, it is treated
as valid and entitled to the statutory presumptions.”).
Priority
Where both petitioner and respondent are owners of
registrations, petitioner must prove priority of use. Henry
Siegel Co. v. M & R Mfg. Co., 4 USPQ2d 1154, 1160 n.9 (TTAB
1987); American Standard Inc. v. AQM Corp., 208 USPQ 840,
841-842 (TTAB 1980); SCOA Industries Inc. v. Kennedy &
Cohen, Inc., 188 USPQ 411, 413 (TTAB 1975). In proving its
priority of use, petitioner may rely upon the filing date of
the application resulting in issuance of its pleaded
registration as evidence of its first use of the mark.
Henry Siegel Co. v. M & R Mfg. Co., supra; American Standard
Inc. v. AQM Corp., supra. Thus, at the very least,
petitioner may claim a priority date of June 24, 1977.
Respondent, on the other hand, admits that it did not begin
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Cancellation No. 92045607
use of its mark until 1998. Response to Pet.’s
Interrogatory No. 1. In view thereof, petitioner has proven
that it has priority of use.
Likelihood of confusion
Our determination of likelihood of confusion under
Section 2(d) of the Lanham Act is based on an analysis of
all the facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). The relevant du Pont factors in this
proceeding are discussed below.
We turn first to the similarity of the parties’ goods.
Here, the goods are identical inasmuch as petitioner’s
pleaded registration covers decorative wood (and wood-
substitute) trim molding and the subject registration covers
wood molding building materials. Also, the other goods
identified in the subject registration, i.e., wood building
materials such as door frames, window frames, rails and
wainscotting, are closely related to petitioner’s wood
molding.
Respondent attempts to distinguish the parties’ goods
by arguing that its products are not related “in style,
design, appearance or use.” Brief, p. 9. However, neither
petitioner’s nor respondent’s identified goods are
restricted to a certain style or appearance. Likewise,
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Cancellation No. 92045607
although respondent’s identification of goods is prefaced as
“building materials,” petitioner’s goods are not so limited
and could also include building materials. And, we must
make our findings based on the goods as they are recited in
the registrations. See Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992); In re Elbaum, 211 USPQ 639 (TTAB 1981).
Because there are no restrictions as to the channels of
trade for the molding in either party's registration, we
must presume that the parties’ respective goods are marketed
in all of the normal trade channels for such goods, and that
the goods are bought by the usual classes of purchasers.
Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
supra; Toys R Us v. Lamps R Us, 219 USPQ 340, 343 (TTAB
1983). In other words, given that the parties’ goods are,
in part, identical, it is presumed that they move in the
same trade channels to the same classes of purchasers.
The du Pont factors of the similarity of the goods and
trade channels weigh in favor of a finding of likelihood of
confusion.
We now turn our attention to the level of similarity or
dissimilarity in the parties’ marks. In considering the
marks, we initially note that when they are used in
connection with identical goods, as they are here, “the
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Cancellation No. 92045607
degree of similarity [between the marks] necessary to
support a conclusion of likely confusion declines.” Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Under this du Pont factor, we look to the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
The test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in their overall
commercial impressions that confusion as to the source of
the goods offered under the respective marks is likely to
result. The focus is on the perception and recollection of
the average purchaser of the involved goods, who normally
retains a general rather than specific impression of
trademarks. See Chemetron Corp. v. Morris Coupling & Clamp
Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). In this case, the
average purchaser would include members of the general
public engaged in home repair or remodeling.
We begin our analysis by pointing out that although
respondent’s mark essentially incorporates petitioner’s
entire mark, ACCENT, the term “accent” itself is suggestive
inasmuch as the parties’ goods, e.g. decorative crown
molding or wainscotting, may be used to provide “accent” to
8
Cancellation No. 92045607
a room.7 Thus, we cannot say that petitioner’s mark is
arbitrary and that respondent’s adoption of the term for its
composite mark falls within the line of cases holding that
when one incorporates the entire arbitrary mark of another
into a composite mark, inclusion in the composite mark of a
significant, nonsuggestive element will not necessarily
preclude a likelihood of confusion. See, e.g., Wella Corp.
v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419,
422 (CCPA 1977) (CALIFORNIA CONCEPT with a surfer design is
similar to CONCEPT for hair products).
As indicated above, likelihood of confusion must be
determined by analyzing the marks in their entireties;
nevertheless, “there is nothing improper in stating that,
for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). In this regard, with
respect to respondent’s mark, the literal portion BRAIDED

7 In this regard, we rely on the following applicable defined
meaning of the term “accent”: “A distinctive feature or quality,
such as a feature that accentuates, contrasts with, or
complements a decorative style.” The American Heritage
Dictionary of the English Language: Fourth Edition. 2000. It is
well settled that the Board may take judicial notice of
dictionary definitions. See, e.g., Hancock v. American Steel &
Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953); University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc.
v. American Can Co., 212 USPQ 852, 860 n.7 (TTAB 1981).
9
Cancellation No. 92045607
ACCENTS is accorded greater weight than the design element
because it is the word portion of the mark that consumers
use to request and to identify respondent’s products. In re
Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 2001);
In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987); Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228
USPQ 461, 462 (TTAB 1985). Also, within the literal
portion, the term ACCENTS makes a greater impression than
the term BRAIDED because the latter term is disclaimed and
its meaning is reinforced by the image of braided rope in
the design. Disclaimed or descriptive matter is generally
viewed as a less dominant or significant feature of the
mark. In re Code Consultants, Inc., 60 USPQ2d 1699, 1702
(TTAB 2001). See also Cunningham, 55 USPQ2d at 1846,
quoting In re National Data Corp., 224 USPQ at 750
(“Regarding descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion’”).
Accordingly, respondent’s adoption of the term BRAIDED and
the braided rope-like design have less significance in
distinguishing the marks.
In sum, we find the marks in their entireties to be
more similar than dissimilar. This is a factor that favors
a finding of likelihood of confusion.
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Cancellation No. 92045607
As to the du Pont factor involving instances of actual
confusion, there have been no known instances.8 To
determine whether the absence of actual confusion is
relevant, we must consider the length of time and conditions
under which the parties have concurrently used their marks
without any reported instances of confusion. And, in this
regard, we note that at the time of trial the parties had
concurrently used their marks in commerce for approximately
nine years, i.e., since 1998. Respondent’s goods are “sold
throughout the U.S.A. by approximately 140 qualified
dealers/distributors”9 and its “typical or targeted
customers” are “qualified dealers/distributors,
architectural, hardwood moulding suppliers and large
manufacturers of architectural products.”10 Respondent has
also used “all available means for advertising throughout
the U.S.A., including trade shows,” but “has not used radio
or [television].”11 On the other hand, petitioner, by its
own estimates for the years 2001-2005, had sales for goods
bearing the ACCENT mark ranging from $ 15-23,000.00 per
year.12 Petitioner has “marketed and sold goods using the

8 “Petitioner responds that it has not confirmed that instances
of actual confusion have occurred yet.” (petitioner’s response to
respondent’s Interrog. No. 19); “There have been no instances of
confusion.” (respondent’s response to petitioner’s Interrog. No.
11).
9 Respondent’s response to petitioner’s Interrogatory No. 9.
10 Respondent’s response to petitioner’s Interrogatory No. 5.
11 Respondent’s response to petitioner’s Interrogatory No. 6.
12 Petitioner’s response to respondent’s interrogatory no. 12.

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Cancellation No. 92045607
ACCENT mark to small cabinet shops...[and] for the last two
years [between 2004-2006], petitioner has marketed and sold
goods using the ACCENT mark predominantly to kitchen cabinet
manufacturers or distributors.”13 In addition, petitioner
“markets goods using the ACCENT mark on the Internet, in
nationally distributed magazines, by direct mail, through
trade shows, and through a national network of independent
sales representatives.”14 Based on these facts, we find
there has been some overlap of concurrent use of the
parties’ marks on their goods inasmuch as both parties sell
their goods to distributors and have advertised their goods
nationally, including at trade shows. However, there is no
evidence that the parties share common distributors for
their goods or that they advertised in the same publications
or attended the same trade shows. We therefore find that
the lack of actual confusion weighs only slightly in favor
of respondent and against a finding of likelihood of
confusion. Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d
200, 22 USPQ2d 1542 (Fed. Cir. 1992).
In conclusion, we have considered all relevant evidence
in this case bearing on the du Pont factors and conclude
that there is a likelihood of confusion between petitioner’s
ACCENT mark and respondent’s BRAIDED ACCENTS (with design)

13 Petitioner’s response to respondent’s interrogatory no. 14.
14 Petitioner’s response to respondent’s interrogatory no. 21.

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Cancellation No. 92045607
mark. Notwithstanding the lack of any instances of actual
confusion, we conclude so principally because the goods are
identical, the trade channels are presumptively the same,
and the marks are similar.
Laches
Having found a likelihood of confusion, we now turn to
respondent’s asserted laches defense.
By statute, laches is available as an affirmative
defense. Section 19 of the Lanham Act, 15 U.S.C. §1069. In
order to 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.”
Bridgestone/Firestone Research Inc. v. Automobile Club de
l’Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462-
1463 (Fed. Cir. 2001). See also Lincoln Logs Ltd. v.
Lincoln Pre-Cut Log Homes Inc., 971 F.2d 732, 23 USPQ2d
1701, 1703 (Fed. Cir. 1992). The laches defense, if
successful, will serve as a bar against a petition for
cancellation grounded on likelihood of confusion unless
confusion is inevitable. Ultra-White Co., Inc. v. Johnson
Chemical Industries, Inc., 465 F.2d 891, 175 USPQ 166, 167
(CCPA 1972).
First, we look at the length of delay between a
petitioner’s notice of defendant and its mark and
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Cancellation No. 92045607
petitioner’s filing of a petition for cancellation, as this
is a critical factor when considering a laches defense.
See, e.g., Teledyne Technologies, Inc. v. Western Skyways,
Inc., 78 USPQ2d 1203, 1210 (TTAB 2006), aff'd unpublished
opinion, Appeal Nos. 2006-1366 and 1367 (Fed. Cir. Dec. 6,
2006) [3 years, 8 months of unexplained delay held
sufficient for laches]; and Charrette Corp. v. Bowater
Communication Papers, Inc., 13 USPQ2d 2040 (TTAB 1989) [14
months of delay held not sufficient for defense of laches].
Here, petitioner states that it “first became aware that
[respondent] was promoting products using [respondent’s]
mark in similar marketing channels in early 2005.
Approximately seven or eight years ago [in December of 1999
or 1998], Petitioner had previously searched for other
companies that offered rope moulding and encountered
[respondent] but believed [respondent] was selling to a very
small market and not competing with Petitioner.”15
Therefore, petitioner had actual notice of respondent’s use
of its mark as early as 1998 or 1999, both dates preceding
the publication date of the application for the subject
registration. In such situations, our principal reviewing
court has held that in a cancellation proceeding, “...
laches begins to run from the time action could be taken
against the acquisition by another of a set of rights to

15 Petitioner’s response to respondent’s Interrogatory No. 22.
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Cancellation No. 92045607
which objection is later made. In an opposition or
cancellation proceeding the objection is to the rights which
flow from registration of the mark.” National Cable
Television Association Inc. v. American Cinema Editors Inc.,
937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991). See also,
Teledyne Technologies, Inc., 78 USPQ2d at 1210. Therefore,
laches begins to run in this case from the date the
application for the subject registration was published for
opposition, and that date is January 2, 2001. Petitioner
filed the instant petition for cancellation on March 20,
2006, thus creating a period of delay of approximately five
years and two months.
Respondent’s reliance on petitioner’s delay in filing a
petition for cancellation is not a requirement for laches.
In other words, petitioner does not have to overtly or
covertly lull respondent into believing that petitioner
would not act. “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 Technologies Inc. v. Western Skyways Inc., supra at
1211. See also Trans Union Corp. v. Trans Leasing
International, Inc., 200 USPQ 748, 756 (TTAB 1978)(prejudice
occurs where senior user takes action after the junior user
builds up its business and goodwill around a mark).
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Cancellation No. 92045607
It is not disputed that “registrant has greatly
expanded its operations in recent years,” prior to
petitioner commencing this proceeding. Petitioner’s Brief,
p. 3. Petitioner acknowledges that respondent “opened a new
manufacturing building and showroom with much larger
capacity and increased resources.” Id. Specifically,
petitioner itself relies on an article from “The Merchant
Magazine” (January 2006) describing respondent’s activity
shortly before the date of the article.16 During this time,
respondent acquired a new 22,000 square foot plant and
expended $450,000.00 for new equipment that includes a
moulder, dentil machine, laser-guided ripsaw and a
computerized template maker.
In view of the above, we find that the length of delay
is significant and that prejudice to respondent would result
should its registration be cancelled because, during this
time of delay, respondent continued to invest in and expand
its business. Petitioner argues, however, that its reason

16 For hearsay reasons, magazine articles are generally only
probative for what they show on their face, not for the truth of
the matters contained therein, unless a competent witness has
testified to the truth of such matters. See TBMP § 704.08 (2d
ed. rev. 2004) and authorities cited therein. However, in this
case, we note that both parties have set forth arguments based on
the truth of the matters asserted in the article and neither
party has objected to the content as hearsay in their trial
briefs. Accordingly, we have weighed the evidence without regard
to any theoretical hearsay objection. Akro Corp. v. Luker, 45
F.3d 1541, 1546, 33 USPQ2d (BNA) 1505 (Fed. Cir. 1995) (hearsay
objections will not be heard later if the objections were not
raised at the time evidence was presented to the trial court).

16
Cancellation No. 92045607
for delay was justified and not “undue,” and, “we cannot
determine that respondent has established the defense of
laches until we examine whether petitioner has, as it
contends, an adequate excuse for the delay.” Jansen
Enterprises Inc. v. Rind, 85 USPQ2d 1104 (TTAB 2007), citing
Leinoff v. Louis Milona & Sons, Inc., 726 F.2d 734, 220 USPQ
845 (Fed. Cir. 1984).
Petitioner’s argument for why it did not act sooner is
essentially that:
[Petitioner] never sat on its rights. Registrant fails
to disclose that until late 2005, it was a much smaller
enterprise. Registrant greatly expanded its operations
at that time. Almost immediately after learning of
this expansion, and realizing that Registrant was
encroaching on [petitioner’s] markets, [petitioner]
filed this action. It is irrelevant that [petitioner]
knew of Registrant’s existence a few years earlier. A
trademark holder is not required to immediately
challenge each and every infringing use, especially
those that do not pose economic threats.

[Reply Brief, p. 5]

In support of its argument, petitioner cites the
decision by our primary reviewing court’s predecessor in
Wallpaper Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d
755, 214 USPQ 327 (CCPA 1982), and Professor McCarthy from
his treatise, McCarthy on Trademarks and Unfair Competition.
In essence, the argument put forth by petitioner is a
request for the Board to apply the doctrine of ‘progressive
encroachment’ in this cancellation proceeding. As to laches
17
Cancellation No. 92045607
and the doctrine of progressive encroachment, Professor
McCarthy has stated:
[l]aches should not necessarily always be measured from
defendant's very first use of the contested mark, but
from the date that defendant's acts first significantly
impacted on plaintiff's good will and business
reputation … any change in the format or method of use
of the mark or expansion into new product lines or
territories should be sufficient to excuse a prior
delay.

And that:

[u]nder the doctrine of “progressive encroachment,” a
trademark owner is not forced by the rule of laches to
sue until the likelihood of confusion caused by the
accused use presents a significant danger to the mark.
A relatively low level infringement or use of a similar
mark in a different product or service line or in a
different territory does not necessarily trigger an
obligation to immediately file suit. But when the
accused use moves closer or increases in quantity, the
doctrine of progressive encroachment requires the
trademark owner to remain alert and to promptly
challenge the new and significant acts of infringement.
Thus, there may be no obligation to sue until the
accused use progressively encroaches on the trademark.

McCarthy on Trademarks and Unfair Competition, §§ 31:19 and
31:20, respectively, (4th ed. updated 2006).

However, as the Board recently noted, the case law
cited by Professor McCarthy in support of the above-
mentioned sections from his treatise pertains to common law
rights and trademark infringement actions. Jansen
Enterprises, 85 USPQ2d at 1117. Accordingly, in the Jansen
decision, the Board examined the applicability of laches and
the progressive encroachment doctrine to inter partes
proceedings before the Board. The Board ultimately
concluded that “[t]he concept of laches, thus, essentially
18
Cancellation No. 92045607
acts as an exception for issuing a judgment in favor of a
party that has proved its case; that is, although ‘at law’
the plaintiff would be entitled to judgment, the defendant
has shown special circumstances that would make the
application of strictly formulated rules of law
unacceptable. The defense of laches is not determined by
adherence to rigid legal rules; rather, we analyze laches by
a consideration of the specific facts and a balancing of the
respective interests and equities of the parties, as well as
of the general public.” Id.
In applying the aforementioned principles to the facts
of this case and taking petitioner’s reason for delay into
consideration, we find that petitioner's petition to cancel
is barred by the equitable defense of laches. Since
adopting its mark in 1998 and being issued the subject
registration in 2001, respondent has acted as many other
small to mid-size businesses might, i.e., it expanded its
production capacity. Section 7(b) of the Trademark Act not
only provides that a certificate of registration on the
Principal Register is prima facie evidence of the validity
of the registration and of the registrant's ownership of the
mark, but it also accords the registrant the presumptive
exclusive right to use the mark in interstate commerce in
connection with the goods or services identified in the
certificate. And, as the owner of an unrestricted
19
Cancellation No. 92045607
registration on the Principal Register since March 2001,
respondent was presumed to have been well within its rights
to use its BRAIDED ACCENTS (with braided rope design) mark
throughout the United States. Petitioner’s argument that it
decided not to act until respondent “expanded its
operations” and encroached upon petitioner’s business rings
hollow. There is no evidence to suggest that respondent was
ever ‘put on notice’ by petitioner as to any limits to its
geographic areas of commerce, production capacity, or any
possible encroachment upon petitioner’s business. The
facts before us may be distinguished from those in the
Jansen case, wherein the Board found that a change in the
nature of respondent's services warranted or excused
petitioner's delay in bringing a petition for cancellation.
Jansen Enterprises, at p. 1118 [“Essentially, the change in
respondent's services, from ‘restaurant services featuring
bagels as a main entrée to restaurants that also serve pizza
and other Italian food, constituted such a change in
circumstances that petitioner's previous failure to take
action against the registration does not preclude petitioner
from taking action against the registration when it learned
of the change.”]. In this case, however, respondent did not
change the nature or type of its goods being sold under its
registered mark, but stayed within its rights accorded to it
by virtue of the subject registration. On the record before
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Cancellation No. 92045607
us, we do not find that respondent changed the ‘nature’ of
its business to warrant petitioner’s significant delay in
bringing the petition for cancellation.
Finally, while we have found that elements of laches
have been established in this case, we further note that
this equitable defense is not an available defense where
confusion is inevitable. In other words, laches is
applicable only in cases where there is reasonable doubt
that likelihood of confusion exists. Ultra-White Co., Inc.
v. Johnson Chemical Industries, Inc., 465 F.2d 891, 175 USPQ
166, 167 (CCPA 1972); CBS, Inc. v. Man’s Day Publishing Co.,
Inc., supra. This is so because any injury to respondent
caused by plaintiff’s delay is outweighed by the public’s
interest in preventing confusion. Turner v. Hops Grill &
Bar, Inc., 52 UPSQ2d 1310, 1313 (TTAB 1999), citing Coach
House Restaurant Inc. v. Coach and Six Restaurants, Inc.,
934 F.2d 1551, 19 UPSQ2d 1401, 1409 (11th Cir. 1991).
Although there is a likelihood of confusion between
petitioner’s ACCENT mark and respondent’s BRAIDED ACCENTS
(with braided rope design) mark, we find that the evidence
of record does not establish that confusion is inevitable.
Although the goods are identical in part, the marks are not
so similar that we can find confusion to be inevitable. The
marks are somewhat suggestive and may be entitled to a
narrower scope of protection than purely arbitrary or coined
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Cancellation No. 92045607
marks. In addition, there has been over nine years of
concurrent use of the marks without any reported instances
of actual confusion. In view thereof, we do not view
confusion between the parties’ marks to be inevitable.
Decision: When used in connection with their
respective identified goods, respondent’s BRAIDED ACCENT
(with braided rope design) so closely resembles petitioner’s
registered ACCENT mark, as to be likely to cause confusion.
However, respondent’s affirmative defense of laches is
applicable and, thus, petitioner’s likelihood of confusion
claim is barred by this equitable defense.
The petition for cancellation is dismissed.
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