Mohawk’s claim—that 3 This is yet more proof that §§ 1115 and 1065 cannot be used to affirmatively destroy a defendants’ incontestable trademark and impose infringement liability. Case 1:16-cv-02763-TCB Document 15-1 Filed 09/22/16 Page 15 of 79 16 OMNI LOC, with which Mohawk’s WELDLOK has coexisted since 2008, creates a likelihood of confusion—is entirely implausible on its face.4 In a trademark infringement case, if the conflicting marks are overwhelmingly dissimilar, a dismissal of the infringement claim is proper even if all of the other factors tip in favor of the plaintiff.

For example, the trier of fact will have to examine, potentially for each of millions of marks, at least whether (1) the mark was obtained or registered fraudulently; (2) the mark has been abandoned; (3) the mark is being used to misrepresent the source of goods or services; and (4) the defendant is making fair use of the mark. See 15 U.S.C. § 1115(b)(1)-(4). Further, even if a class member proves liability, it can recover damages only if it individually proves, for each registered mark, that either (1) it consistently displayed trademark notice (such as ®) along with the mark, or (2) the defendant had actual notice of the trademark registration.

Case 8:17-cv-00419-EAK-TBM Document 15 Filed 03/20/17 Page 23 of 31 PageID 814 19 3. The undisputed facts in Plaintiff’s complaint conclusively establish trademark fair use under 15 U.S.C. § 1115(a) Trademark law provides a fair use defense, codified at 15 U.S.C. § 1115(a), to prevent “a trademark registrant” from “appropriat[ing] a descriptive term for its exclusive use and so prevent[ing] others from accurately describing a characteristic of their goods.” Int’l Stamp Art, Inc. v. U.S. Postal Serv., 456 F.3d 1270, 1274 (11th Cir. 2006).

at 126:1-4. Case 1:08-cv-00526 Document 134 Filed 07/02/2008 Page 18 of 36 Plaintiff’s Reply (Amended) In Support of Motion for Preliminary Injunction Page 7 in the U.S. and applied to register with the United States Trademark Office.29 Second, MMU’s ownership of many of these trademarks is incontestable under 15 U.S.C. §1115(b), based on declarations made under oath by Tom Miyano.30 Third, Tom Miyano even testified that the Triangle Winged M mark is registered only to Plaintiff in the U.S.31 The other trademarks are similarly registered to and used only by Plaintiff in the U.S. Plaintiff is their rightful owner. ii.

4Although the introductory provisions of 15 U.S.C. § 1115(b) were amended in 1988, the pertinent statutory language at the time LS&Co. filed its false affidavits was substantively the same as the current introductory provisions to § 1115(b). See 15 U.S.C. § 1115(b) (1962), amended by Pub. L. No. 100-667, § 128(b)(1) (1988).

The registration of the Triangle Winged M is conclusive evidence that MMU owns the registered mark. (15 U.S.C. § 1115(b)) Finally, Defendant Tom Miyano testified that at the November 2006 meeting he asked that Plaintiff assign the Triangle Winged M as, according to his testimony, “Triangle ‘M’ mark is only register [sic] by M.M.U.” (Exh. 42, T. Miyano Tr.

See 15 U.S.C. § 1064(3). As these statutory provisions make clear, a claim that a registered trademark has been “abandoned” can be asserted either as a defense under 15 U.S.C. § 1115, or as a counterclaim under 15 U.S.C. § 1064. Either way, such a claim would be a challenge to the “said rights” of the trademark owner to enforce the trademark.

See 15 U.S.C. § 1064(3). As these statutory provisions make clear, a claim that a registered trademark has been “abandoned” can be asserted either as a defense under 15 U.S.C. § 1115, or as a counterclaim under 15 U.S.C. § 1064. Either way, such a claim would be a challenge to the “said rights” of the trademark owner to enforce the trademark.

5. Equitable Principles 15 U.S.C. § 1115(b)(9) provides an exception to incontestability where “equitable principles, including laches, estoppel, and acquiescence, are applicable.” Plaintiffs argue that equitable principles provide a defect to Allied Domecq’s incontestable right because: (1) they claim that Allied Domecq’s claim derives from an invalid chain of title; (2) they claim that Allied Domecq was aware of the cloud on Spirits International’s claim of ownership of the STOLICHNAYA rights, yet entered into an assignment; (3) the assignment from PepsiCo to Allied Domecq for $10 was a sham transaction; and (4) Spirits International has misrepresented the nature of its transaction with Allied Domecq to the PTO by claiming that it is the owner of the rights.

Registrations which are not “incontestable” may be challenged for lack of secondary meaning. 15 U.S.C. § 1115(a) (registrations that do not have “incontestable” status may be challenged in the same manner as an unregistered mark).