Terri Yenko Gouldv.General Marketing Capital, Inc. and Supercar Collectibles Limited

Trademark Trial and Appeal Board

Mar 26, 2013

No. 92052197 (T.T.A.B. Mar. 26, 2013)

With ref

Mailed: 3/26/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Terri Yenko Gould
v.
General Marketing Capital, Inc. and Supercar Collectibles
Limited
_____

Cancellation No. 92052197
_____

George E. Bullwinkel, Esq. for Terri Yenko Gould.

Robert D. Buyan of Stout, Uxa, Buyan & Mullins for General
Marketing Capital, Inc.
______

Before Quinn, Cataldo and Hightower,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

General Marketing Capital, Inc. (“respondent” as assignee
of the involved registration from Supercar Collectibles Limited)
owns Registration No. 2049857 (issued April 1, 1997; renewed) of
the mark YENKO (in standard characters) for “toy cars” in
International Class 28.1 The registration indicates first use

1 When this proceeding commenced the registration was owned by Supercar
Collectables Limited. The registration was assigned to the current
owner on September 9, 2010; the assignment was recorded in the Office
on September 20, 1010 at reel 4281, frame 0425.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Can. No. 92052197

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anywhere and first use in commerce on October 22, 1996.
Terri Yenko Gould (“petitioner” as the executor of the
estate of Donald Frank Yenko) has petitioned to cancel the
registration on the following grounds as set forth by petitioner
in her own words:
Falsely suggests a connection with the
Estate and heirs of Don Yenko, in violation
of the Trademark Act section 2(a); and

The marks [sic] in question are being used
by the registrant so as to misrepresent the
source of the goods or services on or in
connection with which the mark is used, in
violation of the Trademark Act section 14.

The petition for cancellation includes additional relevant
allegations as follows:
The petitioner represents the estate and
heirs of Donald Frank “Don” Yenko, who until
his untimely death in 1987 was the designer
and builder of a well-known and respected
line of competition and sports vehicles sold
under the YENKO name and trademark. Between
1966 and 1981, over 800 high-performance
vehicles were manufactured and sold under
his direction and control under the YENKO
name and mark.

At one time, Don Yenko, through his company
Yenko Sportscars, Inc., was the owner of
U.S. Registration 0930794, registered March
14, 1972, for the following YENKO and
design, which registration was not renewed
and therefore expired in 1992:

Can. No. 92052197

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However, Don Yenko’s name and reputation
have remained strong to the present day
because of the continued interest and
devoted efforts of thousands of automobile
enthusiasts, including, but not limited to,
members of the Yenko Sportscar Club, a
Missouri not-for-profit corporation formed
in 1998. In connection with its membership
services, the Club enjoys the exclusive use
of the YENKO name and mark by virtue of
written permission from the Estate and heirs
of Don Yenko, which permission states in
pertinent part:

“[A] national organization needs to be
developed to better handle the ever
increasing problem of proving the
difference between a fake Yenko
automobile and the original. It is also
vitally important to crate [sic] a safe-
guard for all other Yenko artifacts
which help preserve the important
history of the Yenko legacy.”

The respondent’s predecessor in
interest...was an individual who, without
the knowledge or permission of the Estate
and heirs of Don Yenko, claimed ownership or
rights in the name and mark YENKO for “toy
cars,” and applied for and [was] issued U.S.
Trademark Registration No. 2049857,
registered April 1, 1997.

[Respondent] markets and sells in interstate
commerce unauthorized replicas of genuine
YENKO automobiles....and without the
knowledge or permission of the Estate and
heirs, has granted one or more purported
licenses to others to use the name and mark
YENKO on various products sold in interstate
commerce, including but not limited to model
reproductions of genuine YENKO
automobiles...

Other than the limited permission given the
Yenko Sportscar Club noted above, the Estate
and heirs have never given [respondent
Can. No. 92052197

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and/or any of its predecessors] permission
to use the name and mark YENKO for any
purpose, or to license it to others.

Respondent, in its answer, denied the pleaded claims and
set forth several affirmative defenses, including that
petitioner abandoned her rights to the mark YENKO due to nonuse
of the mark for more than five years; and that the petition is
barred by laches, waiver and/or acquiescence due to petitioner’s
fourteen-year delay in asserting her alleged trademark rights.
Petitioner claims that “[t]his case is the tip of a very
large iceberg,” and that respondent “has been methodically
vacuuming up and claiming every trademark-able vestige of Don
Yenko’s history and heritage....The purpose of this cancellation
proceeding is therefore to return these rights to his Estate,
which is and always has been its rightful owner.” (Brief, p.
18).
The Record
We first turn our attention to an evidentiary dispute. The
Board, in an order dated July 12, 2012, granted various portions
of respondent’s motion to strike (or “re-strike”) filed on March
30, 2012. The Board excluded petitioner’s declaration
testimony, both when originally filed and as refiled as exhibits
to the declarants’ testimonial depositions; we have not given
any consideration to these declarations. In addition, the
Board, in accordance with its practice not to read trial
Can. No. 92052197

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testimony prior to final decision, deferred consideration of
respondent’s motion to strike the designated portions of Tom
Clary’s and Lester Quam’s testimony.
Respondent seeks to strike portions of the Clary and Quam
testimony (as indicated in Appendix A to respondent’s motion)
because, according to respondent, these portions constitute
“expert” testimony prohibited by the Board’s order dated June
17, 2011. In that order the Board ruled, inter alia, that in
view of petitioner’s failure to make any expert disclosures,
petitioner was prohibited from filing or relying on any expert
testimony; and that if filed, any expert testimony would be
stricken and given no consideration. Petitioner opposed the
motion, contending that the objected-to testimony is not expert
testimony, but rather opinion testimony from lay witnesses based
on their own personal backgrounds and experience.
We agree with petitioner’s assessment of this testimony,
and we deem it admissible as lay opinion testimony, and not as
expert testimony, giving it whatever probative weight it merits.
We hasten to point out, in any event, that these minimal
portions of the respective testimony at issue are hardly outcome
determinative. Accordingly, respondent’s motion to strike
portions of the Clary and Quam testimony identified in Appendix
A is denied.
Can. No. 92052197

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The record comprises the pleadings; the file of the
involved registration; trial testimony (some of which is
designated “confidential”),2 with numerous related exhibits,
taken by each party; official records relating to the estate of
Donald F. Yenko, petitioner’s responses to discovery requests,
and USPTO official records, all introduced by way of
respondent’s notice of reliance.
The Parties
Terri Yenko Gould is the daughter of Donald Frank Yenko and
the executor of his estate. From the mid-1960’s until 1981, Mr.
Yenko, through his company Yenko Sportscars, Inc., designed,
modified and sold approximately 800 high-performance Chevrolet
automobiles, a so-called “muscle car.” Yenko Sportscars, Inc.
obtained Registration No. 930794, issued in 1972, for the mark
YENKO and design for “sports cars.” Mr. Yenko produced his last
vehicle in 1981, and made no effort thereafter to support
replacement parts, memorabilia and the like. In 1987, Mr. Yenko
was killed in a plane crash, and his businesses, including Yenko
Sportscars, Inc. and a car dealership, were closed and
liquidated. Mr. Yenko’s estate documents listed no trademarks
as assets, and claimed that Yenko Sportscars, Inc. had no value.

2 Steven Leonard’s entire testimony was marked “condidential.” It is
clear, however, that most of the testimony is not truly confidential
and so, to that extent, we have not hesitated to refer to such
portions of the testimony.
Can. No. 92052197

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Given the cessation of any business activities under the mark
YENKO, no renewal of the trademark registration was filed, and
the registration was allowed to expire in 1992. In 1998, Ms.
Gould was informed that a group of Yenko car enthusiasts wanted
to start a collector’s club, led by Mr. Clary; Ms. Gould sent,
by way of the family’s representative John Connolly, a “letter
of approval” to the club. Neither the Estate nor any Yenko
family member took any further action with respect to the YENKO
mark until it sent respondent a letter in November 2009 wherein
petitioner objected to respondent’s use; this petition for
cancellation was filed in March 2010. A YENKO Chevrolet has
been featured in articles in Popular Mechanic and Motor Trend,
and was one of the cars in the movie “Fast and Furious.”
Jeffrey Leonard, respondent’s chief executive officer and
sole owner, is an automobile collector whose collection includes
a 1968 Yenko Camaro worth approximately $350,000. In the early
1980’s, Mr. Leonard discovered that no one was servicing the
market for parts or memorabilia associated with YENKO Chevrolets
after Mr. Yenko ceased production. This was a motivating factor
for Mr. Leonard because, in the absence of parts suppliers, it
was difficult for owners to restore their YENKO cars. Mr.
Leonard founded respondent and began producing and selling his
YENKO items through his automotive restoration catalog. Mr.
Leonard has received awards in the automotive restoration parts
Can. No. 92052197

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industry, including the Hall of Fame Lifetime Achievement Award
for his contributions to the industry. Respondent obtained, by
way of assignment, the first of its registrations which issued
in 1997, and which is sought to be cancelled herein. In the
years that followed, respondent continued to invest resources in
the development and marketing of YENKO brand restoration and
memorabilia products, numbering over 200 different items, which
were then sold through respondent’s website and catalogs.
In the mid-1990’s, Supercar Collectibles Limited (“SCL”), a
predecessor in interest to respondent, recognized an unserved
market for scale models of YENKO Chevrolets. Given its view
that Mr. Yenko had abandoned his trademark, SCL began use of the
YENKO trademark in connection with model cars, and it obtained
the involved registration in 1997. Over the years SCL developed
and sold over 20 different scale models of YENKO Chevrolets;
companies such as Revell and RC2-Ertel/The Learning Curve have
sought and paid for licenses granted by SCL under the mark.
Respondent eventually obtained the registration through
assignment, and use of the mark has been licensed back to SCL.
In addition to the registration sought to be cancelled,
which is incontestable, respondent owns the following valid and
subsisting registrations, none of which has ever been attacked
by petitioner at any time:

Can. No. 92052197

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Registration
No.
Mark Registration
Date
Goods/Services
2314585 YENKO 02/01/00 Mail order catalogue services
featuring parts and
accessories for the
restoration of classic
automobiles; wholesale
distributorships featuring
parts and accessories for the
restoration of classic
automobiles
3097652 YENKO 05/30/06 Automobiles and automotive
parts and accessories, namely,
wheel caps, spoilers and
emblems
3161668 YENKO 10/24/06 Clothing and headwear
accessories, namely shirts,
jackets and caps
3585627 03/10/09 Metal parts for motor
vehicles, namely, decorative
metal automotive emblems,
decals; glass mugs; and
clothing, namely, t-shirts and
caps
3779462 YENKO 04/20/10 Automotive vehicle parts,
namely, ornamentation in the
nature of decorative metal
emblems, hoods, exterior trim,
rear spoilers, body panels,
badges and engine valve
covers; automotive vehicle
interior parts, namely,
steering wheels; drinking
glasses and mugs; clothing,
namely, shirts and hats
3812169 YENKO 06/29/10 Motor vehicle accessories,
namely, automobile body
emblems and license plate
frames
4063536 YENKO 11/29/11 Motor land vehicles; motor
vehicle accessories, namely,
license plates

Respondent also owns three registrations (Registration Nos.
3607796, 3083835, and 3842228) of the mark SYC (in both standard
Can. No. 92052197

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character form and design form) for goods similar to some of the
items listed in the YENKO registrations as set forth above.
Standing
To establish her standing, petitioner must prove that she
has a “real interest” in this cancellation proceeding and a
“reasonable basis” for her belief in damage. To plead a “real
interest” in this case, petitioner must establish a “direct and
personal stake” in the outcome herein. See Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023, 1027 (Fed. Cir. 1999). If
petitioner establishes her standing with respect to any pleaded
ground for cancellation, she has the right to assert any other
ground as well, that also has a reasonable basis in fact. See
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 188 (CCPA 1982).
With respect to the Section 2(a) ground for cancellation,
petitioner is not required to prove proprietary rights in her
name for standing purposes; thus, even the owner of an abandoned
mark, as is the case herein (see infra), may have standing to
raise this claim. See Estate of Biro v. Bic Corp., 18 USPQ2d
1382, 1385 (TTAB 1991). In asserting a Section 2(a) claim,
petitioner has standing by virtue of who petitioner is, that is,
her identity. See Petroleos Mexicanos v. Intermix SA, 97 USPQ2d
1403, 1405-06 (TTAB 2010).
Can. No. 92052197

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Ms. Gould testified that she is the daughter of Donald
Yenko, and is the executor of his estate. This testimony, with
the corroborating evidence of record, establishes petitioner’s
standing. Moreover, respondent does not contest petitioner’s
standing in this case. See Jewelers Vigilance Committee Inc. v.
Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed. Cir.
1987); Association Pour la Defense et la Promotion de L’Oeuvre
de Marc Chagall dite Comite Marc Chagall v. Bondarchuk, 82
USPQ2d 1838, 1841 (TTAB 2007); and Order of Sons of Italy in
America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1223
(TTAB 1995). See also Bayer Consumer Care AG v. Belmora LLC, 90
USPQ2d 1587, 1592 (TTAB 2009) (failure to allege use in the
United States is not fatal to petitioner’s allegation of
standing to bring a misrepresentation of source claim).
Preliminary Remarks
Respondent, in its answer, alleged that petitioner’s mark
is abandoned due to nonuse. This allegation, however, is not
vigorously pressed in respondent’s brief, although the
circumstances have an effect on how we view this case. Indeed,
after Mr. Yenko stopped production of his cars in 1981, the
record is devoid of even a single instance showing that the mark
was still in use in connection with any good or service. Other
than the Yenko family’s “permission” given to a car collectors
club to use the Yenko name, there has been absolutely no
Can. No. 92052197

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activity undertaken by the estate to preserve the Yenko name.
As Ms. Gould concedes, petitioner never made any attempt to
service the market for replacement parts of YENKO Chevrolet
automobiles. (Gould dep., p. 28).
It is often the case in these types of disputes that
petitioner will claim that there is residual goodwill in the
abandoned mark. In this case, however, petitioner makes no
mention of residual goodwill. Given the complete lack of any
business activity undertaken by petitioner under the mark for
over thirty years now, it is indeed unlikely that petitioner
could establish any residual goodwill in the Yenko name on the
basis of events that ended three decades ago.
Thus, insofar as proprietary rights are concerned,
petitioner’s predecessor, that is, Donald Yenko discontinued use
in 1981 and, accordingly, abandoned the mark with intent not to
resume such use. See Crash Dummy Movie, LLC v. Mattel, Inc.,
601 F.3d 1387, 94 USPQ2d 1315 (Fed. Cir. 2010). Cf. American
Motors Corp. v. Action-Age, Inc., 178 USPQ 377, 378 (TTAB 1973)
(“[A] considerable reservoir of goodwill in the mark RAMBLER in
this country inures to opposer as a consequence of the large
number of RAMBLER vehicles still on the road; opposer’s
activities in supplying RAMBLER parts and accessories to owners
of these vehicles; and the use by dealers of the term RAMBLER as
Can. No. 92052197

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a portion of their corporate or business names and their
maintenance of RAMBLER signs on their premises.”).
The Trademark Act specifically states that “[n]onuse for 3
consecutive years shall be prima facie evidence of abandonment.”
15 U.S.C. §1127. The statutory presumption of abandonment
applies equally to a registered mark and “to a party’s
unregistered common-law mark.” Miller Brewing Company v.
Oland’s Breweries [1971] Limited, 548 F.2d 349, 192 USPQ 266,
267 (CCPA 1976). Evidence of nonuse of the mark for three
consecutive years constitutes a prima facie showing of
abandonment and shifts the burden to the party contesting the
abandonment to produce either evidence to disprove the
underlying facts showing three years of nonuse and triggering
the presumption of abandonment, or evidence of an intent to
resume use to disprove the presumed fact of no intent to resume
use. Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d
1575, 14 USPQ2d 1390, 1393 (Fed. Cir. 1990); and Rivard v.
Linville, 133 F.3d 1446, 45 USPQ2d 1374 (Fed. Cir. 1998) [“This
presumption shifts the burden to the registrant to produce
evidence that he either used the mark during the statutory
period or intended to resume or commence use.”].
Petitioner admits that Donald Yenko ceased his design and
production of cars in 1981, and the record shows that petitioner
did not use the mark on cars since the last YENKO Chevrolet was
Can. No. 92052197

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produced. Moreover, the record is devoid of any testimony or
other evidence relating to plans to resume use of the mark YENKO
on automobiles. So as to be clear on this point, there is not a
single statement or document indicating that petitioner ever had
an intention to resume use of the mark on cars or for that
matter, on any other product or service.
As to petitioner’s reliance on the existence of a club of
Yenko Chevrolet enthusiasts, this fact, by itself, fails to
defeat the statutory presumption of abandonment by the mark’s
owner after over thirty years of nonuse in the ordinary course
of trade. General Motors Corp. v. Aristide & Co., Antiquaire de
Marques, 87 USPQ2d 1179, 1183 (TTAB 2008).
In finding abandonment we have taken into account the
nature of petitioner’s goods, automobiles. We recognize that
certain automobiles are long-lasting products, and that the
goodwill value of a mark used for automobiles, such as the ones
designed, modified and sold by Mr. Yenko, may persist long after
production of automobiles with that mark has ceased. See
Emergency One, Inc. v. American FireEagle, Ltd., 228 F.3d 531,
56 USPQ2d 1343, 1348 (4th Cir. 2000) [dealing with fire engines];
Ferrari S.p.A. Escercizio Fabriche Automobili e Corse v.
Roberts, 944 F.2d 1235, 20 USPQ2d 1001 (6th Cir. 1991); and
Ferrari S.p.A. Esercizio Fabriche Automobilie e Corse v.
McBurnie, 11 USPQ2d 1843 (S.D. Cal. 1989). The time lapse in
Can. No. 92052197

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the present case, however, exceeds the years of nonuse in the
cited cases. Further, Mr. Yenko produced only 800 cars from the
mid-1960’s until 1981, a relatively small number. Here, the
period of over three decades of nonuse on automobiles presents a
persuasive case for abandonment. See L. & J.G. Stickley, Inc.
v. Canal Dover Furniture Co., 79 F.3d 258, 38 USPQ2d 1202 (2d
Cir. 1996) [sixty years of nonuse resulted in abandonment]; and
Silverman v. CBS Inc., 870 F.2d 40, 9 USPQ2d 1778 (2d Cir. 1989)
(21 years of nonuse resulted in abandonment).
Petitioner’s abandonment raises serious questions about the
viability of its pleaded claims going forward. However, for the
sake of completeness, we shall proceed to consider the merits of
the substantive claims for cancellation.
Misrepresentation of Source
A party may, pursuant to Section 14(3) of the Trademark
Act, 15 U.S.C. 1064(3), petition to cancel a registration of a
mark if the mark “is being used by, or with the permission of,
the registrant so as to misrepresent the source of the goods or
services on or in connection with which the mark is used.”
Under the statute, a claim of misrepresentation of source can be
asserted as a ground for cancellation “at any time.”3

3 In the present case, of course, respondent’s registration is over
five years old and, thus, a likelihood of confusion claim is
unavailable under Section 14(3).
Can. No. 92052197

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“The term misrepresentation of source, as used in Section
[14(3)] of the Act, refers to situations where it is
deliberately misrepresented by or with the consent of the
registrant that goods and/or services originate from a
manufacturer or other entity when in fact those goods and/or
services originate from another party.” Osterreichischer
Molkerei-und Kasereiverband Registriete GmbH v. Marks and
Spencer Limited, 203 USPQ 793, 794 (TTAB 1979). See Global
Maschinen GmbH v. Global Banking Systems, Inc., 227 USPQ 862,
864 n.3 (TTAB 1985). In order to prevail, petitioner must show
that respondent took steps to deliberately pass off its goods as
those of petitioner. That is, petitioner must establish
“blatant misuse of the mark by respondent in a manner calculated
to trade on the goodwill and reputation of petitioner.” Otto
Int’l Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007),
quoting McDonnell Douglas Corp. v. National Data Corp., 228 USPQ
45, 47 (TTAB 1985). See generally, J.T. McCarthy, McCarthy on
Trademarks and Unfair Competition, § 20:60 (4th ed. 2013). See
also Theodore H. Davis, Jr., “Cancellation Under Section 14(3)
for Registrant Misrepresentation of Source,” 85 TMR 67 (Jan.-
Feb. 1995) (“As a vehicle for canceling federal registrations,
Section 14(3)’s misrepresentation of source prong has been
invoked infrequently, much less successfully used.”).
Can. No. 92052197

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Thus, in reviewing the record, we look for evidence
reflecting respondent’s deliberate misrepresentation of the
source of its products, “blatant misuse” of the mark, or conduct
amounting to the deliberate passing-off of respondent’s goods.
Willful use of a confusingly similar mark is not sufficient.
McDonnell Douglas Corp. v. National Data Corp., 228 USPQ at 47.
Petitioner’s proofs fall far short. Respondent and its
predecessor SCL took adequate steps, prior to adopting the mark
YENKO for toy cars in 1996, to confirm that any prior rights in
the mark had been abandoned. Indeed, as indicated above,
petitioner’s mark was abandoned at that time. When the mark
YENKO was first used by SCL in connection with toy cars, SCL
held, as confirmed by the testimony of Scott Dahlberg and James
Sullivan (co-founders of SCL), a well-founded belief that the
YENKO mark was abandoned. There had been no use of the mark by
the Yenko family since 1981; the registration expired in 1992;
and the family had not undertaken any activities to perpetuate
any goodwill that might have remained in the mark (and, to
reiterate, the record is devoid of any evidence bearing on
residual goodwill).
Given this situation, there could be no deliberate
misrepresentation of the source of respondent’s products,
“blatant misuse” of the mark, or conduct amounting to the
deliberate passing-off of respondent’s goods.
Can. No. 92052197

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Accordingly, this Section 14(3) claim fails.
False Suggestion of a Connection
Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a),
provides that registration may be denied or cancelled when the
mark “consists of or comprises...matter which may...falsely
suggest a connection with persons, living or dead, institutions,
beliefs, or national symbols....” A “person” may be a
corporation or other entity.
In this cancellation proceeding, the critical date for
determining the Section 2(a) issue is the date that the
challenged registration was granted, that is, we must decide
whether the involved mark pointed uniquely to petitioner as of
the time the registration issued, not as of the time of the
filing of the petition for cancellation. Hornby v. TJX Cos.
Inc., 87 USPQ2d 1411, 1426 (TTAB 2008).
There is a four-factor test for determining whether a mark
falsely suggests a connection under Section 2(a). Petitioner
must prove:
1. That respondent’s mark is the same as, or a close
approximation of, petitioner’s previously used name or
identity;

2. That the mark would be recognized as such, in that it
points uniquely and unmistakably to petitioner;

3. That petitioner is not connected with the goods and/or
services sold or the activities performed by respondent
under the mark; and

Can. No. 92052197

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4. That petitioner’s name or identity is of sufficient fame
or reputation that, when respondent’s mark is used on its
goods and/or services, a connection with petitioner would
be presumed.

Boston Red Sox Baseball Club LP v. Sherman, 88 USPQ2d 1581, 1593
(TTAB 2008).
This claim fails for lack of proof. The record falls far
short of establishing factors 2 and 4, namely, there is
insufficient proof to show that the mark YENKO, in April 1997
(that is, when the registration issued), pointed uniquely and
unmistakably to the decedent Donald Yenko and was recognized as
such, and that the Yenko name was of sufficient fame or
reputation that, when the mark YENKO was used on toy cars in
1997, a connection with petitioner was presumed. Although Yenko
Chevrolets may be quite valuable today, there is little in the
record to show that Mr. Yenko or his estate took any action to
perpetuate his alleged fame and reputation after production
ceased in 1981, and after Mr. Yenko’s death in 1987.
In arguing its case petitioner puts substantial reliance on
the case of Association Pour la Defense et la Promotion de
L’Oeuvre de Marc Chagall dite Comite Marc Chagall v. Bondarchuk,
supra, asserting that it is on “all fours” with the present
case. Suffice it to say that the cases are readily
distinguishable, the earlier case having substantial and
unambiguous evidence regarding the fame and reputation of the
Can. No. 92052197

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painter Marc Chagall, some of which was due to petitioner’s
success in licensing the mark after the painter’s death. These
facts are not present in the instant case.
This Section 2(a) claim fails for lack of proof.
Laches
Section 19 of the Trademark Act, 15 U.S.C. § 1069, provides
that “[i]n all inter partes proceedings equitable defenses of
laches, estoppel, and acquiescence, where applicable may be
considered and applied.” The defense is available against each
of petitioner’s pleaded grounds for relief. See Treadwell’s
Drifters, Inc. v. Marshak, 18 USPQ2d 1318, 1320-21 (TTAB 1990).
The elements of laches are (1) unreasonable delay in
assertion of one’s rights against another; and (2) material
prejudice to another attributable to that delay.
Bridgestone/Firestone Research Inc. v. Automobile Club de
L’Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1462 (Fed.
Cir. 2001).
In the context of this proceeding, laches begins to run
from the time action could be taken against the registration of
the involved mark, regardless of when use of the mark began.
Thus, laches begins to run no earlier than the date the involved
mark was published for opposition, and no later than the issue
date of the registration. National Cable Television Assoc.,
Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d
Can. No. 92052197

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1424, 1431-32 (Fed. Cir. 1991). See 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).
Delay
In determining whether petitioner is guilty of laches, it
must be shown that petitioner knew or should have known that it
had a cause of action, yet did not act to assert or protect its
rights. Bridgestone/Firestone Research, Inc. v. Automobile Club
de L’Ouest de la France, 58 USPQ2d at 1462. The Board has held
in at least two cases that a five-year period of time between
the issuance of the registration and the filing of the petition
for cancellation was unreasonable. Christian Broadcasting
Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1572-73 (TTAB
2007); and Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310, 1312
(TTAB 1999) (“Because actual knowledge is not the appropriate
measure, and the length of the delay is clearly substantial,
petitioner’s delay in objecting to respondent’s registration is
unreasonable.”).
The underlying application for the involved registration
was published for opposition on March 5, 1996; the registration
issued on April 1, 1997. Thus, petitioner is charged with
constructive notice of the registration it now seeks to cancel
dating back to 1996. As made clear by the record, petitioner
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had actual notice of respondent’s use in 1998 when Yenko family
members attended the first annual car reunion at which
respondent had a vendor booth to sell its toy cars (see infra).
The petition for cancellation was filed on March 11, 2010.
Thus, the delay in taking action against the involved
registration dates from March 5, 1996 to March 11, 2010, a
period of fourteen years. That is to say, petitioner knew or
should have known that it had a right of action, yet did not act
to assert or protect its rights, if any, for fourteen years.
According to Ms. Gould, prior to the filing of this
petition for cancellation in 2010, petitioner took no action to
search, monitor or otherwise police the marketplace for any
“unauthorized” uses of the YENKO mark. (Gould dep., pp. 28;
45). Notwithstanding the Yenko family’s actual notice of SCL’s
use of the mark YENKO on toy cars in 1998, not to mention that
the family heard “rumors” of the Yenko name being used on other
goods, the family never took any action. Mr. Leonard testified
that the first objection from the Yenko family was a letter
dated November 2, 2009 wherein the estate threatened to file a
lawsuit over respondent’s use of the mark YENKO.
Under the circumstances present herein, fourteen years is
an unreasonable and substantial delay in asserting rights, if
any, by petitioner. Equally telling is petitioner’s complete
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23

failure to explain this delay in taking action; no reasonable
excuse is given for its inaction.
Prejudice
Mere delay in asserting a trademark 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. Prejudice may arise from an unreasonable
delay and economic prejudice based on loss of time or money or
foregone opportunity. A party asserting laches may strengthen
its showing of prejudice by showing that during the delay its
business under the mark grew. See Christian Broadcasting
Network Inc. v. ABS-CBN Int’l, 84 USPQ2d at 1573 (“Prejudice,
however, may be as simple as the development of goodwill built
around a mark during petitioner’s delay.”). Respondent does not
need to show, however, reliance on the delay of petitioner or
that petitioner by inaction lulled respondent.
Bridgestone/Firestone Research, Inc. v. Automobile Club de
L’Ouest de la France, 58 USPQ2d at 1463 (“When there has been an
unreasonable period of delay by a plaintiff, economic prejudice
to the defendant may ensue whether or not the plaintiff overtly
lulled the defendant into believing that the plaintiff would not
act, or whether or not the defendant believed that the plaintiff
would have grounds for action.”).
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24

Mr. Sullivan, co-founder of SCL, respondent’s predecessor
in interest to the involved registration, testified that “I
researched the trademark, saw that it had expired and went about
registering the trademark so we could go about things
correctly.” (Sullivan dep., p. 14). As indicated earlier,
respondent intended to serve the replacement part market because
no one had filled the void when Mr. Yenko ceased production of
cars. (Leonard dep., pp. 63; 69-70).
Mr. Leonard testified as follows:
I believe that I have spent the last 20 to
25 years cultivating this particular
trademark name. I’ve created product for
it, I’ve invested a lot of time and effort
and money and engineering and inventory.
I’ve tried to promote the name, market the
name. And I believe that one of the
benefits that I receive from it was simply
that I tried to do it in a way – well, I did
do it in a way that was legal. I registered
the trademarks, there was constructive
notice on the trademarks, and no one
objected to anything that I was doing for 25
years.

So, I feel that these trademarks belong to
me, I cultivated them and I own them, and I
don’t see any reason why they should be
shared with anybody.

(Leonard dep., pp. 70-71).
As indicated above, in 1998, the Yenko family, through
their “representative” John Connolly, authorized an enthusiasts
club to use the name Yenko in a one-page letter. Mr. Clary
proceeded to establish the Yenko Sportscar Club, and the first
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25

annual “Supercars Reunion” was held in 1998; attendees included
owners of Yenko Chevrolets and other muscle cars. According to
Messrs. Dahlberg and Sullivan, Mr. Clary purchased 150 YENKO
Chevrolet model cars from SCL for the first reunion. These
models were available to the general public, and SCL was
advertising its YENKO model cars in printed publications such as
Hot Rod and Super Chevy. For purposes of the first reunion, SCL
agreed to place special reunion stickers on the boxes of the
models. Messrs. Dahlberg and Sullivan personally delivered the
model cars to the reunion location, and set up a vendor table at
the reunion. One of the models was given away as an award to an
attendee. Among those attendees at the 1998 reunion were Mr.
Clary, Mr. Connolly, and Hope Yenko, widow of Donald Yenko and
stepmother of Ms. Gould.
Through the years respondent advertised its products in
printed publications and its own catalogs. Respondent has had a
business relationship since the early 1990’s with General Motors
(“GM”), the company that produces Chevrolet automobiles.
Respondent is licensed by GM to distribute restoration parts and
accessories for cars such as the Camaro, Impala and Nova. When
the Camaro brand for cars was resurrected in 2010, respondent
and GM had discussions about the YENKO mark, and at no time did
GM question respondent’s ownership of the mark.
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We find that respondent’s business grew during the time of
petitioner’s fourteen years of inaction, and that respondent and
SCL expended time, effort and money in building their business
under the YENKO mark. As shown by the registration history,
respondent continued to use and invest in the mark YENKO,
expanding its business and obtaining registrations along the
way, thereby building up a valuable business and goodwill in
association with the mark YENKO during the time petitioner
remained silent. Thus, we find that the record supports a
finding of economic prejudice to respondent during the
unreasonable delay of petitioner.
At bottom this case shows that Donald Yenko’s family did
virtually nothing after production ceased in 1981, or from the
time of his death in 1987 until the instant petition was filed
in 2010 to keep the family name in the consciousness of muscle
car aficionados.
Accordingly, we find that respondent has established the
affirmative defense of laches against the petition for
cancellation.
Morehouse Defense
Lastly, respondent spends a mere one-half page of its brief
to assert the Morehouse defense. See Morehouse Mfg. Corp. v. J.
Strickland & Co., 407 F.2d 881, 166 USPQ 715 (CCPA 1969). The
Morehouse defense is an equitable affirmative defense which, in
Can. No. 92052197

27

appropriate circumstances, may be asserted by a
defendant/applicant in an inter partes proceeding. It is based
on the principle that “[a]n opposer cannot be ‘damaged’ within
the meaning of Lanham Act §13 by registration of a mark for
particular goods or services if applicant owns an existing
registration for the same or substantially identical mark for
the same or substantially identical goods.” J.T. McCarthy,
McCarthy on Trademarks and Unfair Competition, § 20:38 (4th ed.
2012). See O-M Bread Inc. v. United States Olympic Committee,
65 F.3d 933, 36 USPQ2d 1041 (Fed. Cir. 1995); and Green Spot
(Thailand) Ltd. v. Vitasoy International Holding Ltd., 86 USPQ2d
1283 (TTAB 2008).
Although the registration sought to be cancelled is for a
mark identical to respondent’s other registered YENKO marks, the
goods identified in the involved registration and the goods
identified in respondent’s other registrations are not the same
or substantially identical goods as contemplated by the defense.
Accordingly, the defense does not apply in this case.
Conclusion
In sum, we have carefully considered all of the probative
evidence pertaining to petitioner’s claims and respondent’s
defenses, as well as all of the parties’ relevant arguments with
respect thereto (including any evidence and arguments not
specifically discussed in this opinion), and we conclude that
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28

petitioner has not proved its misrepresentation of source claim
and false suggestion of a connection claim, and that respondent
has proved its laches defense.
Decision: The petition for cancellation is dismissed.