I.B.E. Inc.v.Janet Seed Balekjian

Trademark Trial and Appeal Board

Nov 22, 2004

No. 92041076 (T.T.A.B. Nov. 22, 2004)

Mailed:
22 November 2004
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
I.B.E. Inc.
v.
Janet Seed Balekjian
_____
Cancellation No. 92041076
_____
Donald L. Dennison of Dennison, Schultz, Dougherty &
MacDonald for I.B.E. Inc.
Edward D. Vaisbort of Vaisbort & Associates, P.C. for Janet
Seed Balekjian.
______
Before Quinn, Bucher, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Janet Seed Balekjian (respondent) is identified as the
owner of Registration No. 2,498,708, which issued on the
Principal Register on October 16, 2001 for the mark shown
below:
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Cancellation No. 92041076
2
The goods in the registration are identified as “skin care
preparations in the form of a lotion for cleaning, clearing
and rejuvenating skin” in International Class 3. The
application that issued as this registration was filed as an
intent-to-use application on December 18, 1998, and it now
contains an allegation of a date of first use and a date of
first use in commerce of January 1, 1999.
On September 18, 2002, I.B.E. Inc.1 (petitioner) filed
a petition to cancel this registration. In the petition
(pp. 2-3), petitioner alleges that “long prior to the filing
date” of respondent’s application, petitioner has been
engaged in the sale of “cosmetic products, namely skin
bleaching creams, skin creams and lotions, liquid hand and
body soap and bar soaps for the body under the trademark
DERMACLAIR.” Petitioner also alleges that it was the owner
of Registration No. 1,867,903 for the mark DERMACLAIR that
issued on December 20, 1994, but which was cancelled when a
Section 8 affidavit was not filed. Respondent denied most
of the salient allegations of the petition to cancel but her
answer did not address paragraph 12 of the petition.
Paragraph 12 of the petition to cancel reads as
follows:
Petitioner and its predecessor have over the past 13
years built up valuable good will in the trademark
“DERMACLAIR” and as a result the trade has come to
1 I.B.E. stands for “International Beauty Exchange.” J. Aini
dep. at 5.
Cancellation No. 92041076
3
know, recognize and identify said goods bearing the
trademark “DERMACLAIR” as the goods of Petitioner. If
Registrant were permitted to retain its registration
for its mark “DERMACLEAR” for its cosmetic products as
set forth in its certificate of registration, confusion
in the trade would result by reason of the marks being
nearly identical and goods being related. Purchasers
familiar with Petitioner’s “DERMACLAIR” brand of
cosmetic creams, lotions and soaps would believe that
Registrant’s “DERMACLEAR” skin care preparations were
the goods of the Petitioner. Any defects or faults in
the quality of Registrant’s “DERMACLEAR” brand of skin
care products would reflect upon and seriously injure
the reputation which Petitioner has established for its
goods over a thirteen year time period. This confusion
would result in loss of sales to Petitioner and damage
to its reputation.
Respondent’s answer does not address paragraph 12 of
the complaint. In its brief at 5, petitioner argues that
“the substance of Paragraph 12 must be considered admitted.”
Respondent then filed a motion to amend her answer arguing
that the failure to respond to Paragraph 12 “was the result
of inadvertence and mistake on the part of Registrant’s
counsel who prepared the Answer.” Motion to Amend at 3. In
addition, respondent seeks “to add one affirmative defense,
Unclean Hands.” Id. Petitioner has opposed the motion to
amend.
[A] party may amend its pleading only by written
consent of every adverse party or by leave of the
Board; leave must be freely given when justice so
requires. In view thereof, the Board liberally grants
leave to amend pleadings at any stage of a proceeding
when justice so requires, unless entry of the proposed
amendment would violate or be prejudicial to the rights
of the adverse party or parties.
Cancellation No. 92041076
4
TBMP § 507.01 (2d ed. June 11, 2003). Furthermore, the
“timing of a motion for leave to amend under Fed. R. Civ. P.
15(a) plays a large role in the Board’s determination of
whether the adverse party would be prejudiced by allowance
of the proposed amendment.” TBMP § 507.02(a). We grant the
motion to the extent that respondent seeks to amend its
answer to assert that: “Respondent responds to Paragraph 12
of the Petition and states that she has insufficient
information and belief thereon and therefore denies said
Paragraph.” It is hard to see that petitioner could be
prejudiced by this amendment because it appears that the
case was litigated fully and this amendment seems to accord
with the way the case was tried. Regarding respondent’s
request to amend her answer to add a defense of unclean
hands, we arrive at the opposite conclusion. To add a
defense of unclean hands after the discovery and testimony
periods have closed and petitioner’s opening brief has been
filed is untimely and it would prejudice petitioner to allow
respondent to assert this defense at this late hour. In any
event, the defense was not tried by the parties under Fed.
R. Civ. P. 15(b). Therefore, respondent’s motion to amend
her answer is granted in part and denied in part.2
2 We also address respondent’s motion to dismiss for petitioner’s
alleged failure to file its brief. Petitioner responded to this
motion by pointing out that the parties had stipulated to an
extension of time that was granted by the board and, therefore,
the time for filing its brief had not expired. There is no
Cancellation No. 92041076
5
The Record
The record consists of the following items: the
pleadings, the file of the involved registration; the trial
testimony deposition of Jacob Aini, petitioner’s consultant
and representative, with accompanying exhibits; the trial
testimony deposition of Michael Aini, a shareholder and
former president of petitioner, with accompanying exhibits;
and the trial testimony deposition of respondent with
accompanying exhibits.3
Preliminary Matters
Respondent’s registration is presumed valid, and a
petitioner seeking to cancel a registration must rebut this
presumption 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) ("[I]n a
[trademark registration] cancellation for abandonment, as
for any other ground, 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"). See also Martahus v. Video Duplication Services
Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993).
indication in the record that respondent has withdrawn this
motion or that the board has acted on the motion. Inasmuch as
petitioner’s brief was not untimely, we deny respondent’s motion.
3 An oral hearing was held on August 25, 2004.
Cancellation No. 92041076
6
Initially, a party seeking to cancel a federally
registered trademark must plead and prove that it has
standing and that there is a valid ground for the
cancellation of the registration. Young v. AGB Corp., 152
F.3d 1377, 47 USPQ2d 1752, 1754 (Fed. Cir. 1998) (“Section
14 has been interpreted as requiring a cancellation
petitioner to show (1) that it possesses standing
to challenge the continued presence on the register of the
subject registration and (2) that there is a valid ground
why the registrant is not entitled under law to maintain the
registration”) (internal quotation marks omitted).
For standing, petitioner asserts its ownership of
rights in the mark DERMACLAIR for various cosmetic creams,
lotions, and soaps that it asserts are related to
registrant’s skin preparations.4 The record supports
petitioner’s assertions and we determine that petitioner has
standing to bring this cancellation proceeding.
Priority
The critical issue in this case, as is often the case
in board proceedings involving a likelihood of confusion, is
the question of priority. Petitioner must show that it has
priority in addition to showing that there is a likelihood
4 In addition, petitioner asserts that if was the owner of an
expired registration for the mark DERMACLAIR and that when it
applied for the same mark, it was refused registration on the
ground that its mark was confusing similar to the mark in
respondent’s registration.
Cancellation No. 92041076
7
of confusion. Herbko International Inc. v. Kappa Books
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed. Cir. 2002)
(“Hence, a party petitioning for cancellation under section
2(d) must show that it had priority and that registration
of the mark creates a likelihood of confusion”).
Respondent’s registration is based on an intent-to-use
application that was filed on December 18, 1998. Respondent
can rely on this constructive use date for its priority
date. 15 U.S.C. § 1057(c). See Zirco Corp. v. American
Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB
1991) (“[T]here can be no doubt but that the right to rely
upon the constructive use date comes into existence with the
filing of the intent-to-use application and that an intent-
to-use applicant can rely upon this date in an opposition
brought by a third party asserting common law rights”).
Respondent does not attempt to establish a date of priority
earlier than this date.5
Petitioner, on the other hand, maintains that the first
shipment of DERMACLAIR products to the United States
occurred on October 18, 1989. Petitioner also alleges other
5 Subsequently, the application was amended to indicate a date of
first use anywhere and in commerce of January 1, 1999. While
respondent refers to some initial use by her father-in-law in the
1970’s, she does not rely on this as a date of first use.
Balekjian dep. at 9 (“He marketed it briefly in the late 1970’s …
[T]he saleswoman passed away, and he had a job relocation in
Arizona, and that was the end of his time trying to market and
sell the product”). Respondent maintains she has been
continuously using the DERMACLEAR mark since January of 1999.
Id.
Cancellation No. 92041076
8
uses of the mark on its products prior to the filing date of
respondent’s application.
Petitioner’s witness, Jacob Aini, testified that he was
associated with ABCE Wholesale Co., Inc.,6 and he identified
an invoice (J. Aini Ex. 5) dated from Cosmebel S.P.R.L.7
dated October 18, 1989, that, inter alia, billed ABCE for
the shipment of 50,000 units of DERMACLAIR soap at $.72 each
($36,000) and 5,000 units of DERMACLAIR gel at $1.12 each
($5,600). The witness agreed that these products were
shipped. J. Aini dep. at 14. The witness also identified
other shipments in 1990 and 1991 of DERMACLAIR products to
ABCE and another of his companies, Zuri International.8
6 The witness (p. 5) explained his relationship with petitioner
as follows: “I do consult with them, I am a representative of
them in manufacturing and purchasing various products.”
Petitioner’s other witness, Michael Aini, former president of
petitioner, current 50% shareholder, and brother of Jacob Aini,
identified Jacob Aini as the “individual that has the greatest
amount of knowledge with regard to advertising, marketing and
sales of the Dermaclair product in the United States.” M. Aini
dep. at 11 and 19. We overrule respondent’s objection made for
the first time in her brief that both of petitioner’s witnesses
are incompetent because neither has direct knowledge of the
issues. The record indicates the opposite.
7 Cosmebel S.P.R.L. was a predecessor to petitioner. See J. Aini
dep. at 12 and Ex. 2.
8 The witness described these invoices as “representative.” J.
Aini dep. at 16. Respondent argues (brief at 6 n.1) that in its
brief, petitioner refers to the “invoices as ‘samples’ and
Registrant objects to the produced exhibits on this basis and
moves that each be stricken. Representative samples of requested
discovery documents are permitted only if the number of documents
involved is such that it would place an undue burden on the
answering party to provide every requested document.” Respondent
relies on Bison Corp. v. Perfecta Chemie B.V., 4 USPQ2d 1718
(TTAB 1987). However, the cited case involved a discovery
dispute, which is not the case here. There is no requirement
that a litigant must introduce all its invoices into evidence at
Cancellation No. 92041076
9
Other invoices reflect the sale of DERMACLAIR products from
1996 through 2003. J. Aini dep. at 20-22 and Exhibits 7 and
8.9 Petitioner’s DERMACLAIR mark is still in use on
cosmetic products. See, e.g., J. Aini dep. at 36 (Referring
to Exhibit 17 concerning a DERMACLAIR soap with avocado, the
witness responded in the affirmative when asked if it was
still in use noting that “I saw some invoices of that
today”); dep. at 34-35 (Exhibit 16 for DERMACLAIR beauty
cream still in use); dep. at 27-28 (Witness answered in the
negative when asked if there has “ever been a time to your
knowledge when sales of Dermaclair ceased?”). See also M.
Aini dep. at 14 (“Q. Has there ever been a time since this
registration [DERMACLAIR] was issued in 1994 that use of the
mark ceased?” A. No”).
trial. Therefore, respondent’s request to strike, even if were
timely, is denied.
9 Respondent objects to Exhibits 7 to 23 on the ground of hearsay
and lack of foundation. We overrule these objections. Regarding
the lack of foundation objection, we note that respondent’s
counsel at the deposition only reserved the right to object to
Exhibits 5 through 10 “until I have had the opportunity to
examine this witness.” J. Aini dep. at 50. Respondent’s counsel
did cross-examine the witness (pp. 96 – 97). Respondent did not
subsequently object, so respondent is deemed to have waived this
objection. Chase Manhattan Bank, N.A. v. Life Care Services
Corp., 227 USPQ 389, 391 (TTAB 1985) (“Timeliness is obviously
important where an objection is based on an inadequate foundation
in order that the other party may have a fair opportunity to meet
the foundation objections by evidentiary submissions during the
periods set for trial”). Inasmuch as respondent never objected to
Exhibits 11-23 for lack of foundation at the time of trial and in
her brief she does not object to Exhibits 4-6, any lack of
foundation objection to these exhibits have been waived. The
hearsay objection is also overruled. Peopleware Systems, Inc. v.
Peopleware, Inc., 226 USPQ 320, 322 (TTAB 1985) (“[T]estimony as
to the invoices and summary of sales and advertising expenditures
Cancellation No. 92041076
10
The above evidence as well as the other evidence of
record convinces us that petitioner has priority of use and
respondent can only prevail if petitioner is unable to
establish that there is a likelihood of confusion in this
case.
Likelihood of Confusion
Therefore, we now consider whether there is a
likelihood of confusion between petitioner’s DERMACLAIR and
respondent’s DERMACLEAR marks when they are used on the
parties’ goods. The Federal Circuit and its predecessor
have set out thirteen factors that are relevant in these
cases to the extent that there is evidence of record. In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003); Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000); In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973).
The first factor, which is often critical, concerns the
similarities or dissimilarities of the marks. In this case,
respondent’s mark is for the word DERMACLEAR in lowercase
letters and underlining (see below).
and the documents pertaining to that testimony are admissible
under the business records exception of FED. R. EVID. 803(8)”).
Cancellation No. 92041076
11
Petitioner’s mark DERMACLAIR is shown with a simple block
stylization. The minor differences in the stylization of
the marks would not significantly differentiate the two
marks.10 Potential purchasers are unlikely to view the
differences between upper or lower case letters and the
presence or absence of underlining to distinguish the marks
to the extent that they would notice and remember these
differences. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 200 (Fed. Cir. 1983) (“[M]inor design features do not
necessarily obviate likelihood of confusion arising from
consideration of the marks in their entireties. Moreover,
in a composite mark comprising a design and words, the
verbal position of the mark is the one most likely to
indicate the origin of the goods to which it is affixed”).
The words themselves, DERMACLAIR and DERMACLEAR, are
striking similar. The only differences are the
10 While the term DERMACLAIR is used on packaging with the phrase
“of Belgium,” the same packaging also shows use of the term
DERMACLAIR alone. See J. Aini Exhibits 12, 13, and 16-18. The
witness identified six times the term DERMACLAIR was used on Ex.
13 alone and three times it was used with the phrase “of
Belgium.” J. Aini dep. at 125-26. Even when this phrase “of
Belgium” is used, it is usually displayed in smaller type in a
Cancellation No. 92041076
12
transposition of the last “A” as the eight or ninth letters
and the difference in one letter, “E” and “I.” Many
consumers would likely not notice or remember the slight
difference at the end of the marks (-AIR and –EAR).
Certainly, whether the marks can be distinguished in a side-
by-side comparison is not the test. Grandpa Pigeon’s of
Missouri, Inc. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574
(CCPA 1973). "Human memories … are not infallible." In re
Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986), quoting, Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970). Regarding the pronunciation of the marks, it
is likely that many purchasers would pronounce the marks
very similarly and perhaps identically. Even if they were
pronounced differently, the differences between DERMACLAIR
and DERMACLEAR would be slight.
As to the meaning of the marks, petitioner has
submitted testimony that “clair” is French for “clear.” J.
Aini dep. at 8-9 and Exhibit 3.11 Therefore, at least among
French speakers the marks would likely have the same
different style that would not prevent potential purchasers from
recognizing petitioner’s mark as simply DERMACLAIR.
11 The parties agree that “Derma” apparently means “skin.” J.
Aini dep. at 9-10 and Respondent’s Br. at 14. See also Merriam-
Webster The Unabridged Dictionary, “DERM-” and its variants
“DERMA-” and “DERMO-” defined as “skin.” We take judicial notice
of this definition. University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Cancellation No. 92041076
13
meaning, i.e., “clear skin.” For many purchasers, the terms
DERMACLEAR and DERMACLAIR, however, may have no particular
meaning, which would provide even less basis to distinguish
the marks. Finally, we conclude that the commercial
impressions created by the marks DERMACLEAR (stylized) and
DERMACLAIR would be very similar, if not identical. The
marks look and sound similar and their meanings would not be
noticeably different. Therefore, this factor favors
petitioner.
Next, we consider the goods of petitioner and
respondent. As set out in the registration, respondent’s
goods are “skin care preparations in the form of a lotion
for cleaning, clearing and rejuvenating skin.” Petitioner
alleges that it uses its mark on cosmetic products, namely
skin bleaching creams, skin creams and lotions, liquid hand
and body soap and bar soaps for the body. The evidence
shows that petitioner’s products include, inter alia, “soap
with PURE GLYCERINE and VITAMIN-E, [that] stimulates,
hydrates and deep cleans the skin and provides a gentle
treatment for minor irritation of the skin” (J. Aini dep.
Ex. 18) and “a gel which has the essential action to clear
the skin of unsightly spots to give it a blemish-free
complexion” (J. Aini dep. Ex. 13). Petitioner’s witness
maintains that all DERMACLAIR products are intended to
“[c]lean, clear and rejuvenate skin, [and] they do it in
Cancellation No. 92041076
14
some form, but the products vary from product to product.”
J. Aini dep. at 110. While the parties argue about the
ingredients in their products, we must consider respondent’s
goods as they are described in the identification of goods
in the registration. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). The differences between a lotion for
cleaning, clearing and rejuvenating skin and a soap that
cleans and treats the skin and a gel that clears the skin
are slight. Therefore, we conclude that the goods are at
least related and therefore this factor favors petitioner.
We also note that there are no limitations in
respondent’s identification of goods so we must presume that
her goods move through all reasonable channels of trade.
Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069,
2073 (TTAB 1989); In re Sawyer of Napa Inc., 222 USPQ 923,
924 (TTAB 1983); Morton-Norwich Products, Inc. v. N.
Siperstein, Inc., 222 USPQ 735, 736 (TTAB 1984). Similarly,
prospective purchasers of respondent’s skin lotion must be
considered to overlap with the purchasers of petitioner’s
soaps, lotions, and gels. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981)(“[W]here the goods in a cited registration are
broadly described and there are no limitations in the
identification of goods as to their nature, type, channels
of trade or classes of purchasers, it is presumed that the
Cancellation No. 92041076
15
scope of the registration encompasses all goods of the
nature and type described, that the identified goods move in
all channels of trade that would be normal for such goods,
and that the goods would be purchased by all potential
customers”).
Respondent also argues that there has been no actual
confusion, but the evidence of sales and marketing does not
convince us that there has been much chance for actual
confusion to occur.12 Even if respondent had a substantial
Internet and mail order presence, the lack of evidence of
actual confusion does not, by itself, normally lead to a
conclusion that there is no likelihood of confusion. J & J
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1892 (Fed. Cir. 1991); Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396
(Fed. Cir. 1983).
When we balance the evidence on the issue of likelihood
of confusion, we also take into consideration the
suggestiveness of the “Derma-” portion of the marks and the
fact that “Clear” and its French equivalent “Clair” would
12 Respondent testified about yearly sales of approximately 4300
bottles. Balekjian dep. at 11. Petitioner has objected on the
ground that this material was not produced in discovery in
response to petitioner’s Interrogatory No. 11. Balekjian dep. at
10; petitioner’s brief at 12-13. Respondent argues (brief at 19)
that she “does not rely on information germain (sic) to
Interrogatory 11 alluded to by Petitioner for the purposes of
this Brief.” Therefore, we sustain petitioner’s objection to
this evidence but we add that even if we considered the evidence
it would not change the outcome in this case.
Cancellation No. 92041076
16
also have a suggestive connotation when applied to the skin
care products. However, we also have no evidence that these
terms are weak and that, while the marks may have a
suggestive connotation, the evidence does not indicate, nor
do the parties argue, that the marks are descriptive.
Therefore, when we consider the similarity of the marks and
the goods as well as the other factors, we are persuaded
that there is a likelihood of confusion in this case.
Other Issues
In addition to the evidentiary issues already
discussed, the parties have made several additional
objections. Regarding these objections, we have considered
them and we have given all this evidence its appropriate
weight.
We also respond to several other issues raised by
respondent. First, respondent argues in the alternative
that if the board determines that there is a likelihood of
confusion requiring the cancellation of her mark, respondent
requests that “the Board covert this mater into a concurrent
use proceeding.” Respondent’s Brief at 18. Inasmuch as the
request is untimely and it fails to even set out how the
registration and application should be restricted, it cannot
be granted. See, generally, TBMP Chapter 1100. Respondent
also argues that the “Board should consider the examining
attorney’s decision to reverse its prior determination and
Cancellation No. 92041076
17
grant approval of registrant’s mark while registration of
petitioner’s mark was still in force.” However, the
“Trademark Board reviews with a clean slate and is not bound
or restricted in any sense by the action of the Examining
Attorney.” McCarthy’s, Trademarks and Unfair Competition,
(4th ed. § 20.2). See also McDonald’s Corp. v. McClain, 37
USPQ2d 1274, 1277 (TTAB 1995). Therefore, the fact that the
examining attorney allowed respondent’s application is not a
factor in respondent’s favor. Also, respondent argues that
petitioner has abandoned its mark by failure to file a
statement of use in its prior registration. However, the
failure to maintain a registration does not prove that
petitioner has abandoned its mark. Abandonment of a mark
occurs when a party fails to use its mark, and there is no
evidence here that petitioner has ceased using its mark for
any legally significant period. Lastly, respondent argues
that “[l]aches generally applies in a trademark infringement
action to preclude relief for an owner of a mark who has
unreasonably slept on its rights.” Respondent’s Brief at
11. Respondent points to petitioner’s “inexplicable delay
of almost fifteen months between the time of cancellation
and the filing of a new registration application in February
2002.” Respondent’s Brief at 12. “To prevail on its
affirmative defense [of laches, respondent] was required to
establish that there was undue or unreasonable delay by
Cancellation No. 92041076
18
[petitioner] in asserting its rights, and prejudice to
[respondent] resulting from the 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). We have held that a five-year period
without a significant explanation is an unreasonably long
period to wait prior to filing a petition to cancel. Turner
v. Hops Grill & Bar Inc., 52 USPQ2d 1310, 1312 (TTAB 1999).
Here, a fifteen-month delay is not unreasonable particularly
inasmuch as the evidence does not support a conclusion that
petitioner was aware of either respondent’s use of her mark
or respondent’s registration for much of this period.
Furthermore, respondent’s argument she has been prejudiced
because of “approximately $4,500 in expenses incurred to
change her product in reliance of and to reflect receipt of
the trademark registration, as well as the worry and
inconvenience and cost of the instant petition” is not
persuasive. Respondent’s situation is common to many
respondents in cancellation proceedings who changed their
labels to reflect their newly received registration. If
these factors established laches, it would be difficult for
many parties to take advantage of their statutory right to
cancel a conflicting registration. Therefore, respondent
has not shown that it should prevail on the ground of
laches.
Cancellation No. 92041076
19
Decision: The petition to cancel Registration No.
2,498,708 is granted, and the registration will be cancelled
in due course.