TTAB dismisses dilution claim based on unreasonable delay

United States of America

In Ava Ruha Corp v Mother’s Nutritional Center Inc (113 USPQ2d 1575, January 29 2015 (Taylor APJ; Wellington APJ; Ritchie, APJ) (per curiam)), in a precedential cancellation action, the US Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) has held that the petitioner’s three-year, two-month delay in petitioning to cancel the respondent’s trademark registrations was unreasonable and sufficiently supported the respondent's laches affirmative defence. The TTAB dismissed the petitioner’s dilution claim, raising the petitioner’s standard at trial from likelihood of confusion to inevitable confusion. 

The petitioner, Ava Ruha Corporation d/b/a Mother’s Market & Kitchen, filed a petition to cancel Mother’s Nutritional Center Inc's trademark registrations for MOTHER’S and MOTHER’S NUTRITIONAL CENTER, for use in connection with “retail stores that exclusively feature foods authorised for purchase by pregnant women, new mothers and young children participating in the federal Supplemental Food Program for Women Infants and Children” in Class 35, based on likelihood of confusion with, and dilution of, its registered trademark for MOTHER’S MARKET & KITCHEN, for use in connection with “restaurant and grocery services directed toward natural and health products and food preparations” in Class 42.

The parties filed cross-motions for summary judgment on the respondent’s affirmative defence of laches. To establish the defence of laches, a respondent must show that there was undue or unreasonably delay by the other party in asserting its rights and prejudice resulting from the delay. As to the first prong, laches is calculated from the date no earlier than the date the mark was published for opposition and no later than the issue date of the registration. Here, the petitioner had knowledge of the respondent’s trademarks before they published on June 16 2009, although the petitions for cancellation were not filed until August 21 2012 (ie, a three-year, two-month delay). The petitioner argued that this was not unreasonable or undue delay because it had no reason to seek cancellation until the respondent redirected its business so that it competed more directly with petitioner. 

The TTAB considered the doctrine of progressive encroachment which looks to whether the respondent redirected its business to compete more directly with the petitioner and held that, “for purposes of an attack on a registration, there can be no progressive encroachment where the alleged encroachment is within the scope of the registration at issue”. The petitioner’s delay was not excused because the respondent’s registrations clearly contemplated grocery stores. As to the second prong, the TTAB agreed with the respondent that it would be prejudiced by the petitioner’s delay because the respondent had expanded by 15 stores and spent millions of dollars on promotion of its marks since 2009. Because the respondent had changed its economic position during the period of delay, the petitioner’s delay was unreasonable and prejudice.

The TTAB also concluded that laches barred the petitioner’s claim of dilution. With regards to the petitioner’s claim of likelihood of confusion, the TTAB found that, because the respondent has shown that there was no genuine dispute on the issue of laches, the petitioner could not prevail on a showing of mere likelihood of confusion. The petitioner will have to put in evidence of confusion that shows confusion to be inevitable, which is an increment higher than that required for a finding of likelihood of confusion.

Ulrika E Mattsson, McDermott Will & Emery LLP, Chicago

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