The Coffee Studio LLCv.Reign LLC dba Coffee Studio

Trademark Trial and Appeal Board

May 18, 2020

92066245 (T.T.A.B. May. 18, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: May 18, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ The Coffee Studio, LLC v. Reign LLC ________ Cancellation No. 92066245 _______ Ruth K. Khalsa, Nick Craft and Wensheng Ma of LegalForce RAPC Worldwide, P.C., for The Coffee Studio, LLC. Reign LLC (pro se).1 _____ Before Zervas, Ritchie and Coggins, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Respondent is the owner of Registration No. 4636498 (“‘498 registration”) for the mark for “coffee-house and snack-bar services” in 1 On January 9, 2020, the Board granted the request for withdrawal by counsel to Reign LLC (“Respondent”) and allowed Respondent time to designate new counsel. Because the Board did not receive a designation of new counsel from Respondent within the time period set by the January 9, 2020 order, we presume that Respondent intends to represent itself. 32 TTABVUE 2. Cancellation No. 92066245 - 2 - International Class 43 which issued on the Principal Register on November 11, 2014 based on an application filed on March 23, 2014. The ‘498 registration identifies first use of the mark on January 12, 2012, and first use in commerce on August 15, 2012, and describes the mark as consisting “of the stylized wording ‘COFFEE’ in gold lettering with black outlining to the left of the design of a coffee cup on a saucer with steam rising out of the cup all in the color black to the left of the stylized wording ‘STUDIO’ in brown lettering with black outlining.” The term “COFFEE” has been disclaimed. The Coffee Studio, LLC (“Petitioner”) filed a petition to cancel the ‘498 registration,2 alleging (i) that it applied to register a standard character mark “THE COFFEE STUDIO” (application Serial No. 87329515) and the mark (application Serial No. 87329530) (collectively “Petitioner’s Marks”), both for “Coffee shops; Coffee bars”; (ii) that its applications have been refused registration by the 2 1 TTABVUE 2-5. Citations in this opinion are to the TTABVUE docket entry number and the electronic page number where the document or testimony appears. Because the Board primarily uses TTABVUE in reviewing evidence, the Board prefers that citations to non- confidential parts of the record include the TTABVUE docket entry number and the TTABVUE page number. For material or testimony that has been designated confidential and which does not appear on TTABVUE, the TTABVUE docket entry number where such material or testimony is located should be included in any citation. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Cancellation No. 92066245 - 3 - USPTO based on alleged likelihood of confusion with the mark of the ‘498 registration; (iii) that it used Petitioner’s Marks prior to the filing date of the application which matured into the ‘498 registration, and such use predates any rights that may be asserted or relied upon by Respondent; (iv) that Respondent’s mark “is identical to” Petitioner’s Marks “when used in connection with the services covered by [Respondent’s] mark”; and (iv) that Respondent’s mark is likely to deceive or cause consumer confusion or mistake among potential purchasers. Respondent filed an Answer in which it admitted (i) and (ii) above; denied the salient allegations of the petition for cancellation; and raised laches, unclean hands and acquiescence as affirmative defenses.3 Only Petitioner filed a brief. I. The Record The record consists of the pleadings, the file of the involved registration, see Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), and the following: ● Affidavit of Lee C. Cano, a co-owner of Petitioner, and exhibits including her discovery deposition (12 TTABVUE); ● Affidavit of Miguel Cano, a co-owner of Petitioner, and exhibits including his discovery deposition (16 TTABVUE); ● Petitioner’s Notice of Reliance submitting printouts of USPTO records involving the pleaded applications and the involved registration; Petitioner’s interrogatories and Respondent’s responses thereto including documents referenced in its responses; (17-20 TTABVUE); ● Respondent’s Notice of Reliance and exhibits including Petitioner’s responses to Respondent’s interrogatories including documents referenced in its responses (27 TTABVUE); and 3 4 TTABVUE 3. Cancellation No. 92066245 - 4 - ● Declaration of Lyndsey Hopkins, Respondent’s owner, and exhibits (27 TTABVUE). II. Standing Standing is a threshold issue that must be proven by the plaintiff in every inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). A party has standing to seek cancellation of a registration if the party believes it is likely to be damaged by the registration. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Respondent admitted in its Answer that Petitioner applied to register two marks consisting of or incorporating THE COFFEE STUDIO and that both applications have been refused registration by the USPTO based on alleged likelihood of confusion with the mark of the ‘498 registration.4 In addition, Petitioner submitted (i) evidence of use of THE COFFEE STUDIO as a mark (see discussion infra), and (ii) its pleaded applications and Office Actions refusing registration of its marks in view of the ‘498 registration. Respondent’s admissions and Petitioner’s evidence demonstrate that Petitioner possesses a real interest in this proceeding beyond that of a mere intermeddler, and a reasonable basis for its belief of damage. See, e.g., Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982); Covidien LP v. Masimo Corp., 109 USPQ2d 1696, 1699 (TTAB 2014). We find, therefore, that 4 4 TTABVUE 3. Cancellation No. 92066245 - 5 - Petitioner has proven its standing to petition for cancellation of Respondent’s registration. III. Petitioner’s Burden of Proof As noted by the Federal Circuit, “[b]ecause a trademark owner’s certificate of registration is ‘prima facie evidence of the validity of the registration’ and continued use of the registered mark, the burden of proof is placed upon those who seek cancellation. 15 U.S.C. § 1057(b) (1988). Accordingly, in a cancellation … the petitioner bears the burden of proof. Moreover, the petitioner’s burden is to establish the case for cancellation by a preponderance of the evidence.” Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989) (internal citations omitted); see also, On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000). IV. Priority A party claiming prior use of a mark may petition to cancel a registration on the basis of such prior use pursuant to Section 14 of the Trademark Act, 15 U.S.C. § 1064. In a cancellation proceeding, to establish priority on a likelihood of confusion claim brought under Section 2(d) of the Trademark Act, a party must prove that, vis-à-vis the other party, it owns “a mark or trade name previously used in the United States … and not abandoned.” Trademark Act § 2(d). A party may establish its own prior proprietary rights in a mark through actual use, use analogous to trademark use, or an earlier constructive use date accorded to the party’s own application. See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009). Cancellation No. 92066245 - 6 - Respondent relies on August 15, 2012 as its priority date, which is the same first use date identified in Respondent’s registration. Ms. Hopkins testified that Respondent “has been operating coffee shops in Idaho since approximately August 15, 2012.”5 Respondent’s answer to Interrogatory No. 7 states that Respondent’s services under the involved mark have been offered since approximately on or around August 15, 2012.6 We find that Respondent has established use of its mark as of this date. Turning to Petitioner, Lee Cano testified that she and her husband (Miguel Cano) formed Petitioner in May 2006 (¶ 13); that the first blog post promoting The Coffee Studio was posted on or around December 27, 2006 (¶ 14); that “the logo design for The Coffee Studio, seen at U.S. Application Serial No. 87/329,350 was finalized in or around April 2007” (¶ 17); that “The Coffee Studio coffeehouse … opened for business in December 2007” (¶ 3); that Petitioner’s website at http://www.thecoffeestudio.com “went live in 2007 and continues live through trial” (¶ 15);7 and that: 19. Since opening for business in December 2007, The Coffee Studio has been featured and promoted in several regional publications with nationwide circulation, both in print and online, including TimeOut Chicago, January 10- 16, 2008 and UR Chicago Magazine, February 2008. … 20. The Coffee Studio was promoted in a feature article in Issue 13 for May/June 2008 of Imbibe Magazine. … 5 Hopkins Decl . ¶ 4, 27 TTABVUE 443. 6 19 TTABVUE 23. 7 L. Cano Aff. ¶¶ 4, 13-15, 19, 12 TTABVUE 3-5. Cancellation No. 92066245 - 7 - 21. The Coffee Studio was featured as a 2009 Critic’s Pick in the Eat Out Awards in the April 2009 issue of the TimeOut Chicago magazine. … 22. The Coffee Studio was featured in the January 2010 issue of Bon Appetit magazine in an article entitled “Best Boutique Coffee Shops.” … 23. Since at least 2009, continuing until the present day, The Coffee Studio has maintained and continues to maintain an active Twitter account @thecoffeestudio to promote its services. … 24. Since at least 2009, continuing until the present day, The Coffee Studio has maintained and continues to maintain an active FaceBook page @TheCoffeeStudio.Andersonville to promote its services.8 Mr. Cano testified that The Coffee Studio coffeehouse opened for business in December 2007;9 and as follows: Q. So I’m trying to figure out when you opened in December 2007 what were you doing. A. Serving coffee and tea, pastries, the usual kind of cafe affair. Very limited food. Over the years we’ve started adding more food and menu items. We do coffee and beer cocktails -- coffee and tea cocktails, sorry.10 Additionally, Petitioner’s response to Respondent’s Interrogatory No. 15 identifies December 7, 2007 as the date when Petitioner’s service was first offered.11 8 L. Cano Aff. ¶¶ 19-24, 12 TTABVUE 5-6. 9 M. Cano Depo. at p. 47, 16 TTABVUE 54; M. Cano Aff. ¶4, 16 TTABVUE 3. 10 Id. at p. 47-48, 16 TTABVUE 54-55. 11 27 TTABVUE 211. Cancellation No. 92066245 - 8 - Based on the foregoing, we find that Petitioner has established that it first used Petitioner’s Marks prior to August 15, 2012, Respondent’s priority date, and that Petitioner has priority for Petitioner’s Marks for coffee-house services. V. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen DuPont factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019), quoting In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997) and DuPont, 177 USPQ at 567. “Not all of the DuPont factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018), quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). See also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). Cancellation No. 92066245 - 9 - In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). See also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”), quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002). A. The similarity or dissimilarity of the marks. The wording in Petitioner’s Marks (THE COFFEE STUDIO) is essentially identical to the wording of Respondent’s registration (COFFEE STUDIO) in “appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). Because the inclusion of the term “the” at the beginning of a mark will generally not affect or otherwise diminish the overall similarity between marks, the inclusion of that definite article in Petitioner’s Marks has no source-identifying significance. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the Cancellation No. 92066245 - 10 - registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC- MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”); Bank of Am. Nat’l Trust & Savings Ass’n v. First Nat’l Bank of Allentown, 220 USPQ 892, 896 (TTAB 1984) (finding TIMESAVER and THE TIMESAVER STATEMENT to be “confusingly similar” marks); Dog House, Inc. v. Dawg House, Inc., 138 USPQ 466, 467 (TTAB 1963) (finding DAWG HOUSE and design and THE DOG HOUSE and design to be “substantially similar” marks). While Petitioner’s composite mark contains design elements in addition to wording, the design elements of the parties’ composite marks do not obviate the likelihood of confusion. The inclusion of a coffee cup design in Respondent’s mark reinforces (as a pictorial representation) the term COFFEE in Registrant’s mark. Although the design elements of the parties’ composite marks have some visual prominence and are different, in the case of marks consisting of words and a design, the words are normally accorded greater weight because they are likely to make a greater impression upon purchasers, to be remembered by them, and to be used by them to request the goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)). The verbal portion of a word and design mark “likely will appear alone when used in text and will be spoken when requested by consumers.” Id. at 1911; see also In re Solid State Design Inc., 125 USPQ2d 1409, 1411 (TTAB 2018) Cancellation No. 92066245 - 11 - (citing L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883, 1887 (TTAB 2007) (“[I]t is well settled that if a mark comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods.”)).12 We therefore find that the wording in the parties’ marks is the dominant element of their marks, and that their design elements are not sufficient to distinguish the marks. See Orange Bang, Inc. v. Ole Mexican Foods, Inc., 116 USPQ2d 1102, 1116 (TTAB 2015) (finding same word element, not design elements, the dominant portion of the marks). In view of the foregoing, we find that the DuPont factor of the similarity of the marks weighs heavily in favor of a finding of likelihood of confusion. B. The similarity or dissimilarity and nature of the services, and the established, likely-to-continue channels of trade and classes of consumers. The coffee-house services of the ‘‘498 registration are identical to Petitioner’s services for which it has established priority. Because they are identical, we presume that the channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (identical goods are presumed to travel in same channels of trade to same class of purchasers) (cited in Cai v. Diamond Hong, 127 USPQ2d at 1801 (“With respect to similarity of the 12 See Petitioner’s use of THE COFFEE STUDIO in text on its webpage stating, “The Coffee Studio is Andersonville’s modern, independent espresso bar focused on expertly crafting delicious drinks and snacks from fresh locally roasted coffees and simple, flavorful ingredients.” L. Cano Aff. Exh. 3, 12 TTABVUE 16. Cancellation No. 92066245 - 12 - established trade channels through which the goods reach customers, the TTAB properly followed our case law and ‘presume[d] that the identical goods move in the same channels of trade and are available to the same classes of customers for such goods….’”)); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same). Purchasers of such services are, of course, members of the general public because coffee is consumed by the general population. C. The conditions under which and buyers to whom sales are made. The degree of care that potential purchasers - here, the general population - will exercise in purchasing coffee-house services affects how carefully purchasers will consider the marks at issue. The applicable standard of care for a likelihood-of- confusion analysis is that of the least sophisticated consumer. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014), (precedent requires consumer care for likelihood-of-confusion decision to be based “on the least sophisticated potential purchasers”). Respondent’s services have an average price of less than $10.13 At this price point, we find that the coffee-house services are subject to impulse purchase by the general public and that the DuPont factor regarding purchaser care weighs in favor of finding a likelihood of confusion. D. Actual Confusion Petitioner argues that vendors and third parties attempting to reach Respondent have mistakenly reached out to Petitioner by email; that between December 2017 and 13 Respondent’s Answer Interrog. No. 17, 19 TTABVUE 27-28. Cancellation No. 92066245 - 13 - January 2018, Petitioner received 19 emails addressed to “Tammy” or “tammy@thecoffeestudio.com” apparently intended for Respondent; and that Petitioner does not employ administrative or management personnel named Tammy.14 The emails have titles such as “Funding your Business” and “Build your business online - 3 tips, guides and offers.”15 The text of the emails have not been provided and the emails appear to be from vendors offering services to Respondent, e.g., marketing, label makers, etc. Because the emails appear to be solicitations and not from customers, and because they may have been misdirected to Petitioner due to inattention or carelessness, as opposed to actual confusion, they are of limited probative value. See Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 63 USPQ2d 1659, 1665 (6th Cir. 2002) (“[W]e conclude that the six e-mail messages provide only weak support for finding a likelihood of confusion.”); 4 J. T. MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:14 (5th ed. March 2020 update) (“there is the possibility that e-mails were misdirected by people ‘because they were inattentive or careless, as opposed to being actually confused.’”). We find this DuPont factor to be a neutral factor in our analysis. E. Conclusion on Likelihood of Confusion We have found that the marks are essentially identical in their wording and that the design elements of the composite marks do not distinguish the marks. 14 L. Cano Aff. ¶¶ 27-28, 12 TTABVUE 6; L. Cano Aff. Ex. 12, 15 TTABVUE 28. 15 Id. Cancellation No. 92066245 - 14 - Additionally, we have found that the services, trade channels and classes of purchasers are identical and that the services may be purchased with limited purchaser care by ordinary consumers of coffee in the general public. In view thereof, we find that there is a likelihood of confusion between Petitioner’s Marks for its services and Respondent’s mark for its identical coffee-house services.16 VI. Affirmative Defenses As mentioned, Respondent pleaded three affirmative defenses. A legally sufficient pleading of an affirmative defense must include enough factual detail to provide Petitioner fair notice of the basis for the defense. Fed. R. Civ. P. 8(b)(1) and 12(f); see e.g., IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007); Midwest Plastic Fabricators, Inc. v. Underwriters Labs. Inc., 5 USPQ2d 1067, 1069 (TTAB 1980); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 311.02(b) (2019) (“The elements of a defense should be stated simply, concisely, and directly. However, the pleading should include enough detail to give the plaintiff fair notice of the basis for the defense.”). Although the affirmative defenses are non-specific or merely conclusory in nature, and therefore are 16 In order to grant the petition for cancellation, it is only necessary that we find likelihood of confusion with respect to one service in Respondent’s single-class registration. See N. Face Apparel Corp. v. Sanyang Indus. Co., Ltd., 116 USPQ2d 1217, 1229 (TTAB 2015), citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Cancellation No. 92066245 - 15 - insufficiently pleaded, Petitioner addressed the defenses in its brief.17 Accordingly, we discuss them below. A. Laches and Acquiescence “[L]aches in a trademark proceeding recognized under 15 U.S.C. § 1069 requires a showing of undue delay in asserting rights against a claimant to a conflicting mark and prejudice resulting therefrom.” Nat’l Cable TV Ass’n v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991). A laches defense typically requires prejudice beyond merely continuing to use the mark. Ralston Purina Co. v. Midwest Cordage Co., 373 F.2d 1015, 1019, 153 USPQ 73, 76 (CCPA 1967) (no laches where evidence of promotional expenditure was not submitted and sales data did not show any substantial growth of trade during the period at issue); Meyers v. Asics Corp., 974 F.2d 1304, 24 USPQ2d 1036, 1038 (Fed. Cir. 1992) (laches requires detriment caused by the delay); A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 22 USPQ2d 1321, 1329 (Fed. Cir. 1992) (in banc) (“The courts must look for a change in the economic position of the alleged infringer during the period of delay.”). Ms. Hopkins’ testified to Respondent’s use of its mark and expenses related to advertising, signage, graphics, a website and social media accounts but did not identify any material prejudice resulting from any delay.18 She is silent on any 17 The affirmative defenses allege “Petitioner’s unreasonable delay in bringing this action …,” “Petitioner, by its own conduct, has acted in such a way to preclude any recovery …,” and “Petitioner, by its own conduct, has affirmatively acted in a manner consistent with its acquiescence ….” (4 TTABVUE 4-5). 18 Hopkins Decl. ¶¶ 16-23, 27 TTABVUE 446-47. Cancellation No. 92066245 - 16 - knowledge by Petitioner of Respondent’s use of its mark. This falls short of supporting a laches defense. Turning to acquiescence, an acquiescence defense requires a showing that the plaintiff “expressly or by clear implication, assents to, encourages, or furthers the activity on the part of the defendant, which is now objected to.” Hitachi Metals Int’l, Ltd. v. Yamakyu Chain Kabushiki Kaisha, 209 USPQ 1057, 1067 (TTAB 1981). “Acquiescence is a type of estoppel that is based on the plaintiff’s conduct that expressly or by clear implication consents to, encourages, or furthers the activities of the defendant.” Nashin v. Prod. Source Int’l LLC, 107 USPQ2d 1257, 1263 (TTAB 2013) (quoting Panda Travel, Inc. v. Resort Option Enter., Inc., 94 USPQ2d 1789 n.21 (TTAB 2009)); see also Christian Broad. Network Inc. v. ABS-CBN Int’l, 84 USPQ2d 1560, 1573 (TTAB 2007). Respondent has failed to submit evidence that would demonstrate that Petitioner, expressly or by clear implication, consented to, encouraged, or furthered Respondent’s belief that Petitioner consented to Respondent’s use and registration of the mark in connection with the services identified in the registration. For the foregoing reasons, Respondent’s affirmative defenses of laches and acquiescence are denied. B. Unclean Hands A defense of unclean hands must be supported by specific allegations of misconduct by a plaintiff that, if proved, would prevent the plaintiff from prevailing on its claim. See Midwest Plastic Fabricators v. Underwriters Labs., 5 USPQ2d at Cancellation No. 92066245 - 17 - 1069. In addition, the misconduct must be related to the plaintiff’s claim. See Tony Lama Co. v. Di Stefano, 206 USPQ 176, 179 (TTAB 1980). Respondent does not offer evidence to demonstrate that any conduct by Petitioner was egregious or unconscionable. See Patsy’’s Italian Rest., Inc. v. Banas, 575 F. Supp. 2d 427, 461 (E.D.N.Y. 2008), aff’’d, 658 F.3d 254, 100 USPQ2d 1001 (2d Cir. 2011) (“[B]ecause trademark law also involves protecting the public’s interests, courts typically only bar recovery under a theory of unclean hands when a plaintiff’s conduct was ‘egregious,’ … or ‘clear, unequivocal and convincing.’” Plaintiffs behavior did not constitute “unconscionable” conduct.). Respondent’s affirmative defense of unclean hands is also denied. Decision: The petition for cancellation is granted. Registration No. 4636498 will be cancelled in due course.