Tatuaje Cigars, Inc.v.Nicaragua Tobacco Imports, Inc.

Trademark Trial and Appeal Board

Aug 30, 2010

No. 91185180 (T.T.A.B. Aug. 30, 2010)

coggins Mailed: August 30, 2010

Opposition No. 91185180

Tatuaje Cigars, Inc.

v.

Nicaragua Tobacco Imports, Inc.

Before Walters, Grendel, and Bergsman,
Administrative Trademark Judges.

By the Board:

This case comes up on opposer's second motion for summary
judgment (filed December 18, 2009) on applicant's pleaded
defense of unclean hands.
Background
Opposer filed a notice of opposition against the
registration of applicant's mark on the ground of priority and
likelihood of confusion pursuant to Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d). In the notice of
opposition, opposer asserted ownership of Registration No.
2836665 for the mark TATUAJE, in typed form, for "cigars," in
Class 34.
As an affirmative defense in the answer, applicant
pleaded, inter alia, that:
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91185180
2
On information and belief, [o]pposer uses packaging
for its goods that include the mark "TATUAJE" along
with and in proximity to markings that are
deceptive or deceptively misdescriptive regarding
the geographic origin, character, quality,
composition, and/or source of those goods, and is
therefore barred from relief by having unclean
hands.

On January 28, 2009, opposer filed a motion for summary
judgment on the sole pleaded ground of priority and likelihood
of confusion. In an order dated September 17, 2009, the Board
granted opposer's motion for summary judgment, in part, as to
standing, priority, the similarity of parties' goods, the
channels of trade, and the classes of purchasers.
In the September 17, 2009 order, the Board noted that the
parties had devoted much of their arguments in their briefs (on
the first motion for summary judgment) to discussing each
other's conduct, unclean hands, and fraud. The Board also
noted that "a discussion of opposer's use of other terms on
packaging for opposer's goods appears to be immaterial to this
proceeding." (Order at pp. 4-5.) The Board resumed proceedings
and reset the trial schedule. Opposer then filed the second
motion for summary judgment.
Motion for Summary Judgment
As the Board stated in the September 17, 2009 order, a
party is entitled to summary judgment when it has demonstrated
that there are no genuine issues as to any material facts, and
that it is entitled to judgment as a matter of law. Fed. R.
Opposition No. 91185180
3
Civ. P. 56(c). The evidence must be viewed in a light
favorable to the nonmoving party, and all justifiable
inferences are to be drawn in the nonmovant's favor. Opryland
USA Inc. v. The Great American Music Show, Inc., 970 F.2d 847,
23 USPQ2d 1471 (Fed. Cir. 1992).
By way of its second motion for summary judgment, opposer
argues that it is entitled to judgment as a matter of law on
applicant's affirmative defense of unclean hands.
Specifically, opposer argues that the misconduct alleged by
applicant (i.e., opposer's use of markings other than the
TATUAJE mark) is unrelated to opposer's pleaded ground of
priority and likelihood of confusion with opposer's TATUAJE
mark.
In opposition to the motion, applicant argues that opposer
developed its trademark rights in the pleaded TATUAJE mark
while using other deceptive or deceptively misdescriptive marks
adjacent to and in conjunction with the TATUAJE mark; during
examination of the application which matured into Registration
No. 2836665, opposer submitted a specimen which did not show
use of the other deceptive or deceptively misdescriptive marks
even though opposer was at the time using those other marks on
other packaging for its goods; and during the pendency of this
opposition proceeding, opposer filed a new application for
registration of the mark TATUAJE in a bad faith attempt to
create further dispute between the parties.
Opposition No. 91185180
4
Applicant supported its motion with various exhibits
including photographs of one of opposer's cigar boxes and the
specimen opposer submitted during examination of the
application which matured into Registration No. 2836665.
As noted above, opposer pleaded ownership of Registration
No. 2836665 for the mark TATUAJE, in typed form for cigars.
Opposer's registered mark is entitled to all of the
presumptions of Trademark Act Section 7(b), 15 U.S.C. §
1057(b), including its validity and opposer's exclusive right
to use the registered mark in commerce on the goods specified
in the registration. As a matter of procedure, we note that in
the absence of a counterclaim, applicant may not attack the
validity of the registration. See Gor-Ray Limited v. Garay &
Co., Inc., 167 USPQ 694, 695 (TTAB 1970); and Trademark Rule
2.106(b)(2)(ii), 37 C.F.R. § 2.106(b)(2)(ii). Moreover, as a
matter of substance, even if applicant had filed a
counterclaim, applicant's allegations do not support any
cognizable ground for cancelling opposer's pleaded
registration. See Trademark Act Section 14, 15 U.S.C. § 1064.
Importantly, we note that applicant's affirmative defense
of unclean hands does not pertain to opposer's pleaded
registered mark TATUAJE or to opposer's claim of likelihood of
confusion. Rather, the proposed defense alleges misconduct in
connection with opposer's alleged use and registration of other
marks or designations and the propriety of the specimen
Opposition No. 91185180
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submitted in connection with the pleaded registration. The
defense of unclean hands must be related to opposer's claim
and, therefore, applicant has not asserted a viable affirmative
defense of unclean hands. See Tony Lama Company, Inc. v.
Anthony Di Stefano, 206 USPQ 176 (TTAB 1980). See also VIP
Foods, Inc. v. V.I.P. Food Products, 200 USPQ 105 (TTAB 1978),
and cases cited therein.
Opposer's claim does not depend on use of any mark other
than the TATUAJE mark as shown in Registration No. 2836665 and,
therefore, opposer's alleged use of other marks or
designations, the legality of such use, or whether such other
marks or designations were shown on opposer's specimens during
the prosecution of its underlying application has no bearing
upon the issue of likelihood of confusion with TATUAJE. We
note that use of multiple marks in relation to goods is not
precluded under the law. See General Foods Corporation v. Ito
Yokado, Ltd., 219 USPQ 822 (TTAB 1983). Packaging for a
product may contain multiple marks. See Safe-T Pacific Company
v. Nabisco, Inc., 204 USPQ 307, 315 (TTAB 1979).
As to applicant's argument that opposer's conduct during
this opposition proceeding has been inequitable because opposer
filed a new application for its TATUAJE mark, we note, first,
that the pleaded affirmative defense makes no reference to such
conduct and, second, that the conduct is unrelated to the
ground for opposition. Moreover, there is no prohibition
Opposition No. 91185180
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against filing an intent-to-use application for a mark already
used in commerce. According to Office practice, an applicant
filing under Section 1(b) of the Trademark Act may assert dates
of use that are earlier than the filing date of the application
in an amendment to allege use or a statement of use. See TMEP
§ 903. Further, to the extent that applicant views opposer's
later-filed application as an attempt to induce a prospective
refusal under Section 2(d) of the Trademark Act, based on
applicant's TATTOO application which is the subject of this
opposition proceeding, or that applicant emphasizes the fact
that the Examining Attorney did not cite applicant's TATTOO
application against opposer's later-filed application, we
remind applicant that the Board is not bound by an Examining
Attorney's prior determination as to registrability. See
McDonald's Corp. v. McClain, 37 USPQ2d 1274 (TTAB 1995).
Upon careful consideration of the arguments and evidence
presented by the parties, and drawing all inferences with
respect to the motion in favor of applicant as the nonmoving
party, we find that there is no genuine issue of material fact
in regard to applicant's affirmative defense of unclean hands,
and opposer is entitled to judgment in its favor on this
defense. Even if we were to deny the instant motion for
summary judgment in order to give applicant a chance to prove
the pleaded allegations at trial, the allegations would not be
material or sufficient to carry applicant's burden of proving
Opposition No. 91185180
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the affirmative defense of unclean hands. Accordingly,
opposer's second motion for summary judgment is granted as to
applicant's affirmative defense of unclean hands.1
Procedural Note
Inasmuch as the Board has determined two summary judgment
motions in this case, the parties may not file another motion
for summary judgment. This case will proceed to trial on the
remaining issue of the similarity of the marks.
Schedule
Proceedings are resumed. Discovery is closed. Trial
dates are reset on the following schedule.
Plaintiff's Pretrial Disclosures 9/27/2010
Plaintiff's 30-day Trial Period Ends 11/11/2010
Defendant's Pretrial Disclosures 11/26/2010
Defendant's 30-day Trial Period Ends 1/10/2011
Plaintiff's Rebuttal Disclosures 1/25/2011
Plaintiff's 15-day Rebuttal Period
Ends 2/24/2011

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)

1 The parties are reminded that evidence submitted in support of
or in opposition to a motion for summary judgment is of record
only for consideration of that motion. Any such evidence to be
considered at final hearing must be properly introduced during
the appropriate trial period. See, for example, Levi Strauss &
Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).

Opposition No. 91185180
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and (b). An oral hearing will be set only upon request
filed as provided by Trademark Rule 2.l29.