Teledyne Tech-nologies, Inc.v.Western Skyways, Inc.

Trademark Trial and Appeal Board

Feb 2, 2006

No. 92041265 (T.T.A.B. Feb. 2, 2006)

Mailed: 2/2/06

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Teledyne Technologies, Inc.
v.
Western Skyways, Inc.
_____

Cancellation No. 92041265
_____

Ernest I. Gifford of Gifford, Krass, Groh, Sprinkle,
Anderson & Citkowski for Teledyne Technologies, Inc.

Scott H. Culley and Kimberly E. Lord of Johnson & Repucci
for Western Skyways, Inc.
_____

Before Quinn, Bucher and Zervas, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Teledyne Technologies, Inc. has petitioned to cancel a
registration owned by Western Skyways, Inc. of the mark
GOLD SEAL for “aircraft engines.”1 As grounds for
cancellation under Section 2(d) of the Trademark Act,
petitioner alleges that respondent’s mark, as used in
connection with respondent’s goods, so resembles
petitioner’s previously used and registered mark GOLD SEAL

1 Registration No. 2227392, issued March 2, 1999; Section 8 affidavit
filed and accepted.
THIS DECISION IS CITABLE
AS PRECEDENT OF THE
TTAB
Can. No. 92041265
2
for “airplane parts, namely ignition harnesses”2 as to be
likely to cause confusion.
Respondent, in its answer, denied the salient
allegations of petitioner’s claim of likelihood of
confusion. In addition, respondent set forth certain
affirmative defenses, including laches, and a Morehouse
defense.3
The record consists of the pleadings; the file of the
involved registration; trial testimony, with related
exhibits, taken by each party; respondent’s responses to
petitioner’s first set of interrogatories introduced by way
of petitioner’s notice of reliance;4 and petitioner’s
responses to certain of respondent’s interrogatories,
certified copies of two other registrations owned by
respondent, and photocopies of third-party registrations of
GOLD SEAL marks, all made of record in respondent’s notice
of reliance. The parties filed briefs. An oral hearing
was not requested.

2 Registration No. 1943566, issued December 26, 1995.
3 The affirmative defense is worded as follows: “[Respondent] has a
prior registration for the mark GOLD SEAL for similar goods.” The
parties have viewed this allegation as a Morehouse defense, and we will
consider it as such. See Morehouse Manufacturing Corp. v. Strickland &
Co., 407 F.2d 881, 160 USPQ 715 (CCPA 1969).
4 Given that the registration sought to be cancelled is automatically of
record pursuant to Trademark Rule 2.122(b), petitioner’s reliance on a
certified copy of respondent’s involved registration is superfluous.
Can. No. 92041265
3
The Parties
According to the testimony of Tim Davis, one of
petitioner’s senior project managers, petitioner is engaged
in the manufacturing and rebuilding of piston aircraft
engines through its Teledyne Continental Motors subsidiary.
Petitioner’s aircraft engines are sold under the mark
CONTINENTAL; the engines include a data plate bearing the
name “Continental Motors.” Among petitioner’s other
products is an ignition harness that is, according to Mr.
Davis, an essential part of an aircraft engine. In 1991,
petitioner began using the mark GOLD SEAL in connection
with its line of aircraft engine ignition harnesses.
According to Mr. Davis, petitioner’s ignition harness costs
$300-$500. The ignition harnesses are sold part and parcel
of an aircraft engine, and also as a separate part; the
harnesses are sold to original equipment manufacturers and
to distributors who then sell to aircraft owners and
operators. Petitioner promotes its harnesses in sales
brochures and at trade shows.
Respondent, as shown by the testimony of Allen Head,
applicant’s president, and David Leis, applicant’s vice
president, sales and marketing, is engaged in the
rebuilding and overhauling of piston aircraft engines.
Respondent took its name from a defunct entity, Western
Can. No. 92041265
4
Skyways, that operated out of Troutdale, Oregon. This
entity rebuilt and sold aircraft engines under the mark
GOLD SEAL from the mid-1950s until the company dissolved in
1986. Respondent was formed, in 1994, mainly by managers
and former employees of the dissolved company. Mr. Head
explained the adoption of respondent’s mark:
The--the Gold Seal has been an icon in
the industry for years, dating back to
Troutdale, and....it specifies that
it’s to some rigid standard and the
serviceability of it has certain
expectations and as well as
reliability.

When we were sitting around the table,
deciding what to call this company, I
had three gentlemen sitting around the
table with me that worked at Troutdale
at Western Skyways, and they had a lot
of pride in that company, pride as much
as they were let down by the fact that
the corporate headquarters closed them
down, and so, recognizing this pride,
we decided to call this company Western
Skyways. And I checked with the
Secretary of State, the corporate name
was available, and I checked with the
Trademark Office, and the trademark had
been abandoned, so we decided to call
the company Western Skyways and the
Gold Seal Engine. (Head dep., pp. 15-
16).

Respondent began its use of the mark GOLD SEAL in
connection with rebuilt and overhauled aircraft engines in
1994. Mr. Head indicated that other manufacturers make all
of the replacement parts used in respondent’s rebuilt and
Can. No. 92041265
5
overhauled engines. Engines originally manufactured by
petitioner are among the engines rebuilt by respondent and
then branded with respondent’s GOLD SEAL mark. According
to Mr. Head, respondent also is an authorized distributor
to sell petitioner’s products, and respondent has used
petitioner’s parts in respondent’s GOLD SEAL rebuilt
engines. In this connection, respondent carries
petitioner’s GOLD SEAL ignition harnesses in its parts
inventory. Respondent is also able to service petitioner’s
engines. Respondent’s rebuilt engines cost $20,000-
$40,000, and are sold to aircraft owners, aircraft fleet
operators and charter operators. Respondent’s engines are
advertised in trade publications (the same ones used by
petitioner to promote its products), and at trade shows.
Respondent’s annual advertising budget is approximately
$40,000. Respondent also owns incontestable registrations
of the mark for GOLD SEAL for aircraft logbooks and
aircraft engine overhaul and reconditioning services.
Evidentiary Issue
Respondent has objected to the inclusion of
petitioner’s pleaded Registration No. 1943566 in the
record, contending that petitioner’s registration was not
properly made of record. Although petitioner had an
Can. No. 92041265
6
opportunity to respond in its reply brief, no mention was
made of respondent’s objection.
Attached to the petition for cancellation is a
photocopy of petitioner’s pleaded Registration No. 1943566,
identified as “Exhibit B.” In paragraph 3 of the petition,
petitioner alleged that it is the owner of this
registration, and that a copy was attached to the petition.
Respondent, in paragraph 3 of the answer, admitted only
that Exhibit B is a copy of the referenced registration;
respondent indicated that it “denies the remaining
allegations of paragraph 3 of the petition.”
With one exception, exhibits attached to a pleading
are not evidence on behalf of the party to whose pleading
they are attached unless they are thereafter, during the
time for taking testimony, properly identified and
introduced in evidence as exhibits. Trademark Rule
2.122(c). The one exception to this rule is a current
status and title copy, prepared by the Office, of a
plaintiff’s pleaded registration. Trademark Rule 2.122(d).
Inasmuch as the copy attached to the petition is not a
status and title copy prepared by the Office, the
submission does not conform to Rule 2.122(d). Further,
respondent, in its answer, did not admit either that
petitioner was the owner of the registration or that the
Can. No. 92041265
7
registration was valid and subsisting; respondent merely
admitted that Exhibit B was a copy of a registration
setting forth certain information.
The pleaded registration likewise was not properly
introduced at trial. Firstly, the registration was not
included in petitioner’s notice of reliance. Trademark
Rule 2.122(d)(1). Secondly, Mr. Davis’ testimony is devoid
of any testimony relating to the status and title of
petitioner’s registration. Respondent, during the cross-
examination of Mr. Davis, identified and introduced, as
Exhibit 32, a photocopy of the file history of Registration
No. 1943566. Although respondent asked various questions
regarding information in the file history, nothing was
asked about current status and title of the pleaded
registration. (Davis dep., pp. 72-77).
Finally, although petitioner also points to its
reliance on respondent’s response to interrogatory no. 13
as making the pleaded registration of record, that is
certainly not the case. Respondent’s answer to the
interrogatory relates to its first knowledge of petitioner
(in respondent’s underlying application when petitioner’s
pleaded registration was cited as a Section 2(d) bar), and
in no way bears on the current status and title of the
pleaded registration.
Can. No. 92041265
8
In view of the above, we agree with respondent that
petitioner failed to properly make its pleaded registration
of record. In the absence of evidence of the current
status and title of Registration No. 1943566, the
registration will not be considered. Thus, for purposes of
the likelihood of confusion analysis, petitioner must rely
on its common law rights as shown by the record.
Priority
Notwithstanding the absence of petitioner’s pleaded
registration from the record, Mr. Davis’s testimony
establishes petitioner’s use of the mark GOLD SEAL in
connection with ignition harnesses for piston aircraft
engines. According to Mr. Davis, petitioner began using
its mark GOLD SEAL in connection with ignition harnesses in
1991, a fact acknowledged by respondent. Respondent, on
the other hand, did not commence use of its mark in
connection with aircraft engines until 1994. Respondent
has not claimed and, in view of the facts, cannot claim any
prior rights accruing from the use of the abandoned GOLD
SEAL mark by the earlier Western Skyways operating out of
Oregon.
As shown by the record, petitioner has priority of use
of the mark GOLD SEAL as established by its prior use of
Can. No. 92041265
9
the mark on ignition harnesses for piston aircraft engines,
and respondent does not contend otherwise.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of 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 (CCPA 1973). Petitioner must establish
that there is a likelihood of confusion by a preponderance
of the evidence. The relevant du Pont factors in the
proceeding now before us are discussed below.
The Marks
There is no issue with respect to the similarity
between the parties’ marks; the marks are identical, both
are GOLD SEAL. Respondent’s mark is registered in standard
character form, and petitioner’s common law mark, as
actually used, is displayed in a similar block form.
This factor heavily favors petitioner.
Third-Party Use
The sixth du Pont factor requires consideration of any
evidence pertaining to “the number and nature of similar
marks in use on similar goods.” In an attempt to show that
petitioner’s mark is less distinctive and is entitled to a
narrow scope of protection, respondent relied upon three
Can. No. 92041265
10
third-party registrations of GOLD SEAL marks.5 These GOLD
SEAL registrations cover tires, hose clamps and spring
brake actuators for air braked vehicles.
This evidence is entitled to little probative value in
determining likelihood of confusion. Olde Tyme Foods Inc.
v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992); and Carl Karcher Enterprises, Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995). The
registrations are not evidence that the marks are in use,
much less that purchasers are familiar with them. Further,
contrary to the gist of respondent’s remarks, the probative
value of this evidence is greatly diminished by the fact
that the goods covered in the third-party registrations are
not specifically identified for use for aircraft (as are
the goods herein), and are, in any event, distinctly
different from aircraft engines and ignition harnesses for
aircraft engines.
This factor is neutral or weighs slightly in
petitioner’s favor.

5 In addition to the third-party registrations, respondent also pointed
to its ownership of two other registrations of the mark GOLD SEAL
covering “aircraft log books” and “aircraft engine overhaul and
reconditioning services.” (See discussion of Morehouse defense,
infra).
Can. No. 92041265
11
The Goods
With respect to the goods, it is well established that
the goods of the parties need not be similar or
competitive, or even that they are offered through the same
channels of trade, to support a holding of likelihood of
confusion. It is sufficient that the respective goods of
the parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See
Hilson Research, Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telephone Corp., 197 USPQ 910,
911 (TTAB 1978). The issue, of course, is not whether
purchasers would confuse the goods, but rather whether
there is a likelihood of confusion as to the source of the
goods. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
In comparing the goods, we initially note that where
identical marks are involved, as is the case here, the
degree of similarity between the parties’ goods that is
required to support a finding of likelihood of confusion
declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
Can. No. 92041265
12
1687, 1688-1689 (Fed. Cir. 1993); Time Warner Entertainment
Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re
Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).
As described by Mr. Davis, an ignition harness
“transmits electrical energy from the magneto, which is a
special electrical generator, and carries the electrical
energy to the sparkplugs for the ignition event as the
engine runs.” (Davis dep., p. 9). Mr. Davis testified
that petitioner’s ignition harnesses may be sold both as a
part of the engine or separate from the engine. Id. It is
possible, according to Mr. Head, respondent’s president,
that respondent’s rebuilt or overhauled engines may include
petitioner’s ignition harnesses as a component part
thereof. (Head dep., p. 44). Mr. Head testified that
“[w]e have an ignition harness in our Parts department that
is from [petitioner]” that carries the GOLD SEAL mark. Mr.
Head responded affirmatively to the following question:
“So it’s a possibility, then, that an engine manufactured--
remanufactured by you, by Western Skyways, would have on
it, in addition to ‘Western Skyways Gold Seal’ mark, label,
it could also have a Continental or Teledyne Continental
mark as well as Gold Seal on the ignition harness; is that
a possibility?” (Head dep., p. 45). Thus, it is possible
Can. No. 92041265
13
for petitioner’s GOLD SEAL ignition harness to be part of
respondent’s GOLD SEAL rebuilt/overhauled aircraft engine.
Lest there be any doubt on this du Pont factor, Mr.
Head testified that “[a]n ignition harness is a part of an
engine, it’s an important part of the engine as the
carburetor or the cylinders.” (Head dep., p. 15).
Although the goods are distinctly different, we find
that petitioner’s ignition harnesses for piston aircraft
engines and respondent’s aircraft engines are commercially
related. Again, the test is not whether purchasers would
confuse an ignition harness, a part for an aircraft engine,
with the engine itself, but rather whether purchasers would
be confused as to the source of these goods. See In re
Jeep Corp., 222 USPQ 333 (TTAB 1984).
This factor favors petitioner.
Trade Channels
Aircraft engines and ignition harnesses for aircraft
engines, as shown by the record, travel in the same or
similar channels of trade. (Davis dep., p. 10). As
indicated earlier, respondent carries petitioner’s
harnesses in its parts inventory, and it is possible for
petitioner’s harness to be used in one of respondent’s
rebuilt or overhauled engines. In addition, as indicated
Can. No. 92041265
14
earlier, the parties advertise in the same trade
publications.
The similar trade channels favor petitioner.
Conditions of Sale and Classes of Purchasers
Petitioner’s evidence shows that its ignition
harnesses are sold to distributors who in turn sell to the
end users, namely, owners and operators of aircraft.
Petitioner also sells to original equipment manufacturers
(Davis dep., p. 9) and to engine overhaul shops. (Davis
dep., p. 58). Among petitioner’s other customers are
“fixed base operators” that Mr. Davis analogizes to an
“old-fashioned service station.” According to Mr. Davis,
these entities exist at airports and they perform
maintenance on aircraft.
Respondent’s aircraft engines are sold to aircraft
owners, including private individuals, fleet operators,
flight schools, air ambulance operators and charter
operators.
In view of the above, we find that there is an overlap
in the classes of purchasers for the goods. Although this
factor weighs in petitioner’s favor, the weight is
significantly reduced by the conditions of sale and
sophistication of the purchasers, factors weighing in favor
of respondent.
Can. No. 92041265
15
The inherent nature of aircraft engines dictates that
purchasers will be sophisticated. As shown by Mr. Leis’
testimony, respondent’s engines range in price between
$14,000 and $40,000, with an average price of about
$20,000. Whether an aircraft owner, operator, or engine
overhaul shop, these sophisticated purchasers may be
expected to exercise a high degree of care in purchasing an
aircraft engine or an ignition harness therefor.
Electronic Design & Sales, Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992). As
petitioner itself acknowledged in a response to an Office
action in the underlying application for its pleaded
registration: “purchasers of ignition harnesses are
considered highly sophisticated where any goods used on
airplanes must be approved by the FAA,” and “any inference
that [petitioner’s] ignition harnesses may appropriately be
purchased and installed by other then [sic] sophisticated
purchasers is unwarranted.” (Davis dep., ex. no. 32).
Further, Mr. Davis, in one instance, recognized that
customers for the parties’ goods are often “pretty
knowledgeable” about the sources of the products they are
buying. (Davis dep., p. 66). In another instance, Mr.
Davis referred to petitioner’s customers as “highly
sophisticated.” (Davis dep., pp. 76-77).
Can. No. 92041265
16
The high cost of respondent’s aircraft engines,
coupled with the sophistication required in purchasing
these engines and parts therefor such as ignition
harnesses, weighs in favor of respondent.
Actual Confusion
At the time of trial in this case, the parties’ marks
had been in contemporaneous use for approximately ten
years. Neither of the parties is aware of any instances of
actual confusion.
Petitioner dismisses the absence of actual confusion,
contending that the factor “is not relevant given that
[respondent] had (at best) serviced a mere 3900 engines (40
engines/month x 12 months x 8 years rounded up) by the time
[petitioner] filed its petition to cancel in this case.”
(Brief, p. 10).
Respondent points, on the other hand, to the lack of
actual confusion as persuasive evidence that there is no
likelihood of confusion.
As indicated above, the record establishes
contemporaneous use of the parties’ respective marks
without any known instances of actual confusion for a
period of at least ten years. Mr. Davis testified that
petitioner is unaware of any misdirected phone calls,
Can. No. 92041265
17
invoices, billings or requests for service during that
time.
Although the record does not include any specifics
about the extent of use (sales, advertising expenditures,
etc.) of petitioner’s mark, we do not share petitioner’s
dismissive view of respondent’s use. We know the extent of
respondent’s use, and that use is not, in our view,
insignificant. There have been over ten years of
overlapping use in the same trade channels and among the
same or similar classes of purchasers without any known
instances of actual confusion.
Given that the goods travel in the same trade channels
to the same classes of purchasers, we find that the absence
of known actual confusion is a factor weighing in
respondent’s favor. See Olde Tyme Foods, Inc. v. Roundy’s,
Inc., supra at 1546 [the length of time and conditions
under which there has been concurrent use without evidence
of actual confusion is relevant evidence of the lack of a
likelihood of confusion]. So as to be clear, however, we
recognize that actual confusion is not necessary to show a
likelihood of confusion. See, e.g., Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002).
Can. No. 92041265
18
Conclusion: Likelihood of Confusion
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the parties’ arguments with respect thereto (including
any evidence and arguments not specifically discussed in
this opinion), and we conclude that petitioner has proved,
by a preponderance of the evidence, its Section 2(d) claim
of likelihood of confusion. The marks are identical, and
this factor weighs heavily in petitioner’s favor. The
goods of the parties are closely related, and the channels
of trade and purchasers overlap. These du Pont factors
outweigh, in our likelihood of confusion analysis, the
other factors of purchasers’ sophistication and absence of
actual confusion.
Any doubt on the issue of likelihood of confusion is
resolved in favor of the prior user and against the
newcomer. Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768 (TTAB 1992).
Morehouse Defense
Respondent has asserted a “Morehouse” defense based on
its ownership of two previously issued registrations.
Respondent essentially contends that petitioner cannot be
damaged by the existence of its registration of the mark
GOLD SEAL sought to be cancelled herein in light of its
Can. No. 92041265
19
other two, unchallenged, registrations of the same mark
that will continue to exist. Morehouse Manufacturing
Corporation v. Strickland & Co., supra.
Respondent’s two prior registrations that form the
bases of this defense are of the mark GOLD SEAL for
“aircraft log books”6 and “repair and maintenance services,
namely, aircraft engine overhaul and reconditioning
services.”7
The defense is proper where the existing registration
or registrations relied upon are for the same or
substantially identical mark and the same or substantially
identical goods and/or services as the challenged
registration. O-M Bread, Inc. v. United States Olympic
Committee, 65 F.3d 933, 36 USPQ2d 1041 (Fed. Cir. 1995);
Jackes-Evans Manufacturing Co. v. Jaybee Manufacturing
Corp., 481 F.2d 1342, 179 USPQ 81 (CCPA 1973); Key
Chemicals, Inc. v. Kelite Chemicals Corp., 465 F.2d 1040,
175 USPQ 99 (CCPA 1972); La Fara Importing Co. v. F. Lil de
Cesso di Filippo Fara S. Martino S.p.A., 8 USPQ2d 1143
(TTAB 1988); Mason Engineering and Design Corp. v. Mateson
Chemical Corp., 225 USPQ 956 (TTAB 1985); and Liberty &

6 Registration No. 1925425, issued October 10, 1995; renewed.
7 Registration No. 2275239, issued September 7, 1999; combined Sections 8
and 15 affidavit accepted and acknowledged.
Can. No. 92041265
20
Co., Ltd. v. Liberty Trouser Co. Inc., 216 USPQ 65 (TTAB
1982).
In the present case, respondent’s mark is identical to
the mark shown in its two previously issued registrations.
Further, it is clear that “aircraft log books” and “repair
and maintenance services, namely, aircraft engine overhaul
and reconditioning services” covered by respondent’s prior
registrations are related to the goods, that is, “aircraft
engines,” listed in the registration petitioner seeks to
cancel. Nevertheless, the goods in the involved
registration clearly are different from the goods and
services listed in the prior registrations. Thus,
respondent’s ownership of the two prior registrations
cannot serve to preclude petitioner from contesting
respondent’s right to maintain the registration petitioner
seeks to cancel. TBC Corporation v. Grand Prix Ltd., 12
USPQ2d 1311 (TTAB 1989).
Accordingly, this defense fails.
Laches
Respondent argues that the petition for cancellation
should be denied because of laches due to petitioner’s
unreasonable delay in asserting its rights until October
2002, despite knowledge of respondent’s mark when it was
published for opposition in December 1998.
Can. No. 92041265
21
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 a
delay of laches can be measured. Loma Linda Food Co. v.
Thomson & Taylor Spice Co., 279 F.2d 522, 126 USPQ 261
(CCPA 1960). “[L]aches, with respect to protesting the
issuance of the registration for the mark, could not
possibly start to run prior to when...[the] application for
registration was published for opposition.” National Cable
Television Association, Inc. v. American Cinema Editors,
Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991).
National Cable involved a petitioner that had actual
knowledge of the respondent’s use prior to the date of
publication of the respondent’s underlying application for
registration. In the present case, there is no evidence
that petitioner had actual knowledge of respondent’s use of
its mark for aircraft engines until after the date
respondent’s mark was published for opposition on December
8, 1998.8 The Federal Circuit, in Bridgestone/Firestone

8 When respondent’s underlying application for its GOLD SEAL service
mark registration was published for opposition in the Official Gazette,
petitioner filed two extensions of time to oppose the service mark
registration; however, the requests were denied as untimely and the
application matured into a registration. Petitioner did not
subsequently petition to cancel that registration. Mr. Davis testified
that he was not aware of the reasons why petitioner did not proceed
with a notice of opposition against registration of GOLD SEAL as a
service mark. The service mark application was filed three days after
the filing date of the involved underlying application to register GOLD
Can. No. 92041265
22
Research Inc. v. Automobile Club de l’Ouest de la France,
245 F.3d 1359, 58 USPQ2d 1460, 1462-63 (Fed. Cir. 2001)
stated the following:
The Trademark Act establishes various
events in the life of a registered
trademark which impact upon an adverse
claimant, from which events action
could be taken and thus from which the
period of delay may be measured. Thus
15 U.S.C. § 1072 provides that
registration on the principal register
is constructive notice of the
registrant’s claim of ownership of the
trademark; § 1065 states the conditions
of incontestability of the registrant’s
right to use the trademark; and § 1115
provides that registration is evidence
of the registrant’s exclusive right to
use the trademark.

See Willson v. Graphol Products Co., 188 F.2d 498, 89 USPQ
382 (CCPA 1951) [“We are of the opinion that registrations
under the 1905 Act are public records and that as such they
constitute such constructive notice as will preclude a
cancellation petitioner from pleading ignorance of the
existence of a particular mark.”]. Respondent’s Principal
Register registration issued on March 2, 1999; therefore,
petitioner was put on constructive notice of respondent’s
claim of ownership on the date of issuance of the involved

SEAL as a trademark for aircraft engines. Petitioner did not file any
extension to oppose the underlying application that matured into the
registration involved herein. It would appear that petitioner’s actual
knowledge of respondent’s business activities under the mark GOLD SEAL
occurred after the registration of the mark in issue.
Can. No. 92041265
23
registration, namely, March 2, 1999.9 The petition for
cancellation was filed on October 18, 2002. Thus, the
length of petitioner’s delay in filing the petition for
cancellation is approximately three years and eight
months.10
“To prevail on its affirmative defense [of laches,
respondent] was required to establish that there was undue
or unreasonable delay by [petitioner] in asserting its

9 Contrary to respondent’s assertion that petitioner had constructive
notice of respondent’s “registration” when its underlying application
was published for opposition, publication of a mark in the Official
Gazette does not provide constructive notice.
10 In reviewing the Board’s case law in the wake of National Cable, we
recognize that there have been some discrepancies regarding the point
in time when the laches clock for cancellations begins to run. See,
e.g., Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310, 1312 (TTAB 1999)
[“In an opposition or cancellation proceeding, where the objection is
to the issuance of a registration of a mark, laches starts to run when
the mark in question is published for opposition....In this case, there
is no genuine issue of material fact that laches started to run in
1992, when the registration issued to respondent’s predecessor-in-
interest.”]; and Aquion Partners L.P. v. Envirogard Products Ltd., 43
USPQ2d 1371, 1373 n. 7 (TTAB 1997) [“The trademark statute, unlike the
patent law, specifically provides that registration of a mark on the
principal register shall be constructive notice of the registrant’s
claim of ownership thereof....the U.S. Court of Appeals for the Federal
Circuit has held that in trademark opposition and cancellation
proceedings, laches begins to run when the mark in question is
published for registration.”]. Our decision herein is intended to
clarify this point. That is, in the absence of actual knowledge prior
to the close of the opposition period, the date of registration is the
operative date for calculating laches. Bridgestone/Firestone Inc. v.
Automobile Club de l’Ouest de la France, supra at 1463, citing National
Cable (laches runs from the time from which action could be taken
against the trademark rights inhering upon registration). See
generally J.T. McCarthy, McCarthy on Trademarks and Unfair Competition,
§§ 20:75 and 31:40 (4th ed. 2005) [“Because of the constructive notice
provisions of § 22 of the Lanham Act, it seems clear that the
constructive notice that is triggered by registration should serve to
put potential petitioners for cancellation on notice as a matter of
law. Because a petition to cancel cannot be filed until a registration
exists, the laches clock for cancellations should not begin running
until registration and, because of constructive notice, not begin to
run at any point after registration.”].
Can. No. 92041265
24
rights, and prejudice to [respondent] resulting from the
delay.” Id. at 1462.
As indicated above, petitioner waited over three and
one-half years prior to bringing this petition for
cancellation. Mr. Head testified that respondent heard
“not a peep” from petitioner when the underlying
application was published; and that petitioner’s first
contact with respondent regarding the involved registration
was when the petition for cancellation was filed. (Head
dep., p. 39).
Petitioner is conspicuously silent regarding its
reasons for the delay. See J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, supra at § 31:14 [“The
trademark owner is usually expected to give some reason for
delay which appears to cause prejudice. It is dangerous to
simply stand mute and take the position that there is no
obligation to explain apparent lethargy.”]. Rather than
squarely addressing the laches defense in either its main
brief or reply brief, petitioner merely takes the tack that
laches does not apply due to the inevitability of
confusion. Petitioner’s complete silence on the reason for
its delay in taking action is very problematic for its
position. See Procter & Gamble Co. v. J.L. Prescott Co.,
102 F.2d 773, 40 USPQ 434, 442 (3d Cir. 1939), cert.
Can. No. 92041265
25
denied, 308 U.S. 557 (1939) [that delay was unexplained
“must weigh heavily in the balance against it”].
We find that petitioner’s delay of over three and one-
half years, and the complete absence of any reasonable
excuse for its inaction, constitutes undue delay prior to
filing the petition for cancellation. J.T. McCarthy,
McCarthy on Trademarks and Unfair Competition, supra at §
20:76 [“The point is that laches is not an absolute time
limit like a statute of limitations. It is an equitable
defense measured by delay weighed against the resulting
prejudice to registrant.”].
“Mere delay in asserting a trademark-related right
does not necessarily result in changed conditions
sufficient to support the defense of laches. There must
also have been some detriment due to the delay.”
Bridgestone/Firestone Research Inc. v. Automobile Club de
l’Ouest de la France, supra at 1463. In the present case,
respondent has asserted economic prejudice based on its
development of a valuable business and good will around its
GOLD SEAL mark during the time petitioner raised no
objection.
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
Can. No. 92041265
26
into believing that the plaintiff would not act, or whether
or not the defendant believed that the plaintiff would have
grounds for action. Id. citing A.C. Aukerman Co. v. R.L.
Chaides Construction 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. Id.
Accordingly, the essential inquiry herein is to
determine if there was a change in the economic position of
respondent during the period of petitioner’s delay. State
Contracting & Engineering Corp. v. Condotte America, Inc.,
346 F.3d 1057, 68 USPQ2d 1481 (Fed. Cir. 2003). The record
includes evidence showing that respondent invested in and
promoted its GOLD SEAL aircraft engines during the period
during which petitioner was silent. According to Messrs.
Head and Leis, respondent’s aircraft engines cost in the
range of $14,000-$40,000, with an average price of around
$20,000. (Head dep., p. 20; Leis dep., p. 15). Respondent
rebuilds and/or overhauls 30-40 engines per month. (Head
dep., p. 13; Leis dep., p. 8). In addition, Mr. Leis
testified that respondent’s annual advertising budget is
Can. No. 92041265
27
$40,000; respondent’s answer to Interrogatory No. 7
indicated an annual budget of “approximately $45,000.” The
mark has been promoted in print advertising, at trade shows
(3-4 per year), and through direct mailings, telephone
solicitations and sales visits.
Although respondent did not provide precise sales and
advertising figures for the period constituting
petitioner’s delay,11 it is clear that, during petitioner’s
period of silence, respondent invested in and promoted its
GOLD SEAL brand. Lincoln Logs Ltd. v. Lincoln Pre-Cut Log
Homes, Inc., 971 F.2d 732, 23 USPQ2d 1701, 1704 (Fed. Cir.
1992) [“Opposer’s right to prevail in this proceeding
arises from the particular provisions of the Lanham Act
that are designed to encourage registration of marks.
Opposer took advantage of those provisions. Applicant did
not. Applicant, as the prior user, could and should have
taken steps to prevent registration by Opposer of the mark
LINCOLN. It had an opportunity to oppose or petition to
cancel Opposer’s registration during a period of more than
five years and failed to avail itself of that
opportunity.”]. Economic damage may be a direct function

11 Respondent, in response to Interrogatory No. 8, indicated that it
would furnish “annual gross dollar sales” to petitioner under a
protective agreement. The record does not reveal the existence of any
protective agreement, and the specific figures were never disclosed
during discovery or testimony.
Can. No. 92041265
28
of the delay involved. The record demonstrates economic
prejudice to respondent if its registration were to be
cancelled at this point in time. Ralston Purina Co. v.
Midwest Cordage Co., 373 F.2d 1015, 153 USPQ 73, 76 (CCPA
1967) [“It is probably true that long acquiescence in the
use of a trademark by a successful business, even without
an expansion of trade, may provide a basis for a valid
inference of prejudice....Logically, we suppose, it must be
admitted that each day sees some incremental aggrandizement
of goodwill--each advertising dollar expended adds in some
sense to registrant’s equity.”].
Accordingly, respondent has established a laches
defense against petitioner’s likelihood of confusion claim.
Whether confusion is inevitable
The final point to consider is whether the confusion
between the parties’ marks is inevitable because, if it is,
then the defense of laches is not applicable. Ultra-White
Co., Inc. v. Johnson Chemical Industries, Inc., 465 F.2d
891, 175 USPQ 166 (CCPA 1972); and Reflange Inc. v. R-Con
International, 17 USPQ2d 1125, 1131 (TTAB 1990) [“It is not
necessary to discuss this theory because it is well
established that equitable defenses such as laches and
estoppel will not be considered and applied where, as here,
the marks of the parties are identical and the goods are
Can. No. 92041265
29
the same or essentially the same.”]. This is so because
any injury to respondent caused by petitioner’s delay is
outweighed by the public’s interest in preventing confusion
in the marketplace. Turner v. Hops Grill & Bar, Inc., 52
USPQ2d 1310, 1313 (TTAB 1999), citing Coach House
Restaurant Inc. v. Coach and Six Restaurants, Inc., 934
F.2d 1551, 19 USPQ2d 1401, 1409 (11th Cir. 1991).
Although there is a likelihood of confusion between
petitioner’s mark GOLD SEAL for ignition harnesses for
aircraft engines and respondent’s mark GOLD SEAL for
aircraft engines, we find that the evidence of record does
not establish inevitable confusion.
In the present case, the marks are identical. The
goods, however, are not “the same or substantially the
same.” Although we have found the goods to be commercially
related, they are hardly identical. Thus, we do not view
confusion between the parties’ marks as inevitable.
In addition, there are other du Pont factors that
militate against a finding that confusion is inevitable
between the parties’ marks. More specifically, the
sophistication of purchasers and the absence of actual
confusion are factors weighing against a finding that
confusion is inevitable.
Can. No. 92041265
30
As discussed above, the purchasers of the parties’
goods comprise a sophisticated class of consumers. These
customers include aircraft owners and operators who would
be knowledgeable about what they are buying.
The sophistication of purchasers may well be the
underlying reason for the lack of any actual confusion
known to the parties. And, while petitioner has
established by a preponderance of the evidence that
confusion is likely, the absence of actual confusion over a
period of ten years supports our conclusion that confusion
is not inevitable. Stated differently, if confusion were
inevitable, there were many opportunities for there to be
known instances of actual confusion during the ten years of
contemporaneous use of the marks. After all, the goods,
bearing the identical mark, travel in the same trade
channels to the same purchasers. Respondent even carries
petitioner’s GOLD SEAL ignition harnesses in its parts
inventory. The witnesses for both parties testified,
however, that the parties are unaware of any instances of
actual confusion. In particular, Mr. Davis, petitioner’s
witness, stated that petitioner could not show actual
confusion. (Davis dep., p. 57).
In view of our finding that confusion is not
inevitable, respondent’s valid laches defense is applicable
Can. No. 92041265
31
and, thus, petitioner’s likelihood of confusion claim must
be dismissed.
Decision: The petition for cancellation is denied.