Pandol Bros., Inc.v.James Pandol

Trademark Trial and Appeal Board

Jul 17, 2013

No. 92048691 (T.T.A.B. Jul. 17, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: Mailed:
May 30, 2013 July 17, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Pandol Bros., Inc.
v.
James Pandol
_____

Cancellation No. 92048691
Reg. No. 3152058-PANDOL and
Reg. No. 3195027–PANDOL FAMILY FARMS
_____

Michael K. Bosworth and Maryam Imam of IPxLaw Group LLP for Pandol Bros.,
Inc.

D. Greg Durbin of McCormick Barstow Sheppard, Wayte & Cartruth, LLP for
James Pandol.
_____

Before Mermelstein, Gorowitz, and Masiello, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:

James Pandol (respondent) is the owner of US. Reg. No. 3152058 for the
mark PANDOL (in standard character form)1 and Reg. No. 3195027 for the mark
PANDOL FAMILY FARMS (in standard character form).2

1 Reg. No. 3152058, which issued on October 23, 2006, covered “fresh fruits and vegetables.”
“Vegetables” were deleted when the Section 8 Affidavit was filed on March 6, 2013. The
Affidavit was accepted on March 18, 2013.
Cancellation No. 92048691

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On December 28, 2007, Pandol Bros., Inc. (petitioner) filed a petition to
cancel both registrations on the grounds of likelihood of confusion and fraud on the
United States Patent and Trademark Office. The likelihood of confusion claim was
based on petitioner’s alleged prior common law rights in the trademarks PANDOL,
PANDOL BROS., INC. and the PANDOL BROS. logo, set forth below:
.
The petition was amended on April 21, 2008,3 to add a claim of likelihood of
confusion based on petitioner’s trade name rights; and was again amended on
August 21, 2009,4 and on July 5, 2012,5 to conform the pleadings to information
obtained in discovery and to add claims of non-use.
In his answer to the third amended petition, respondent admitted that his
goods and petitioner’s goods are identical or closely related; that there is a
likelihood of confusion between petitioner’s use of PANDOL as or in a trademark, in
connection with the sale of fresh fruit, and respondent’s use of PANDOL and

2 Reg. No. 3195027, which issued on January 7, 2007, covered “fresh fruits and vegetables.”
“Vegetables” were deleted when the Section 8 Affidavit was filed on March 6, 2013. The
Affidavit was accepted on March 18, 2013.
3 A consented motion to amend the pleadings was filed on April 18, 2008.
4 A motion to amend the pleadings was filed on June 29, 2009.
5 A motion to amend the pleadings was filed on June 7, 2012.
Cancellation No. 92048691

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PANDOL FAMILY FARMS; and that petitioner has adopted the corporate name
Pandol Bros., Inc., which it uses in connection with the sale of certain fresh fruits.
Respondent also asserted ten affirmative defenses. The majority of these
“defenses” are mere amplifications of the denial of likelihood of confusion.
Respondent also alleged that the petition for cancellation fails to state a claim upon
which relief can be granted. Failure to state a claim upon which relief can be
granted is not an affirmative defense. Blackhorse v. Pro Football Inc., 98 USPQ2d
1633, 1637 (TTAB 2011). In any event, we hold that the petition states a claim
upon which relief can be granted. In view thereof, the allegation of failure to state a
claim will be stricken. The actual affirmative defenses asserted will be discussed
infra.
The matter was fully briefed and a hearing was held on May 30, 2013.
The Record.
The record includes, by operation of the rules, the pleadings and the files of
the registrations sought to be cancelled. Trademark Rule 2.122(b).
In addition, petitioner submitted the testimony, with exhibits, of:
 Louis Pandol, Corporate Secretary and Chairman of
the Board of Directors of Pandol Bros., Inc.;
 Cheri Kathleen Diebel, Chief Executive Officer of
Pandol Bros., Inc.;
 Rosa Maria Munoz, Purchasing Manager for Pandol
Bros., Inc.;
 David Allen Bryan, Cold Storage Manager for Pandol
Bros., Inc.;
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 John Kreick, Vice President, Export Operations of
Pandol Bros., Inc.;
 Robert Kent Hughes, retired – former Chief
Information Officer of Pandol Bros., Inc.; and
 James Alan Pandol, Respondent.
Petitioner also submitted the following by notices of reliance (NOR): portions
of the discovery deposition of James Alan Pandol; portions of the discovery
deposition of James Alan Pandol on behalf of Pandol Associates Marketing
pursuant to FRCP Rule 30(b)(6);6 respondent’s responses to petitioner’s
interrogatories; file histories for petitioner’s three pending trademark applications;
respondent’s responses to petitioner’s requests for admission; and official records of
the Secretary State of California and from Kern County, California obtained from
the State and County electronic databases.
Respondent submitted the following by NOR: the file histories of petitioner’s
trademark applications; portions of the discovery deposition of Cheri Kathleen
Diebel; and portions of the discovery deposition of John Matthew Pandol, Director of
Special Projects for Pandol Bros., Inc., taken pursuant to FRCP Rule 30(b)(6).
The parties also stipulated to the admission of the following documents and
facts: undated copies of Petitioner’s “3 Brothers” advertisement as published in

6 Since Pandol Associates Marketing is not a party to this proceeding, it was improper for
petitioner to serve a notice of deposition pursuant to FRCP Rule 30(b)(6) on it. However,
respondent did not object and respondent, himself, was designated as the deponent.
Accordingly, we will consider the portions of the deposition transcript produced as the
deposition of respondent on behalf of Pandol Associates Marketing, of which he is the
President.
Cancellation No. 92048691

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trade magazines from the early 1990’s until 20077; a photograph of various boxes of
fruit, including a box of oranges with the name Pandol Bros., Inc. thereon, which
was used before and after 20058; a cease and desist letter dated August 29, 2007,
sent to Pandol Bros., Inc. from attorney Tracy Agrall on behalf of James Pandol;
and photographs of grapes wrapped in tissue paper with respondent’s label thereon.
We accept into evidence the foregoing documents that were the subject of the
stipulation.
Background.
The dispute before us began when respondent, who worked for the family
business, Pandol Bros., Inc. until 2004, left and started his own business in the
same field, using his surname, “Pandol” as a trademark.
Petitioner’s affiliate, Pandol & Sons, a farming company, was formed as a
partnership in the early 1950s by Steve Pandol, Sr. and his sons, Steve Pandol, Jr.,
Matt Pandol, Sr. and Jack V. Pandol.9 Steve Pandol Sr. passed away in the early
1960’s.10 Petitioner, Pandol Bros., Incorporated, was incorporated in 1957. After
the death of Steve Sr. and his wife Margaret, his three surviving sons became equal
partners in Pandol & Sons and also were equal shareholders in Pandol Bros., Inc.11

7 The parties stipulated to the type of publications and the dates.
8 The parties stipulated to the dates of use.
9 L. Pandol Test., 71:4-16.
Cheri Diebel also testified that Steve Sr.’s wife, Margaret may have been a partner in
Pandol & Sons until her death in the late 70’s or early 80’s. There is no other evidence
regarding her role in Pandol & Sons. C. Diebel Test., 173:3-11.
10 C. Diebel Test., 173:8-9.
11 L. Pandol Test., 12:20-25.
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Both Pandol Bros. Inc. and Pandol & Sons were managed and run by Matt
Pandol, Sr., and Jack V. Pandol12 until 1998, when Matt Pandol, Sr. passed away.
They ran the companies “like two pockets in the same pair of pants.”13 Pandol &
Sons would grow the product and Pandol Bros. would market and sell the product.14
In its marketing materials Pandol Bros. referred to its business as “the Pandol
organization” and to itself and Pandol & Sons as branches of the Pandol
organization.15
Beginning in or about 1997, Pandol & Sons distributed its farm properties to
the family members, who continued farming as independent businesses.16 The
family members, consisting of the third generation of Pandols, who were the
children of the three brothers, Steve, Jr., Matt, Sr., and Jack V, included the
respondent. Pandol Bros., Inc. served as a commission merchant for Pandol family
farming operations.17 In the late 1980’s or early 1990’s some of the stock ownership
of Pandol Bros., Inc. was transferred to the third generation, and Pandol & Sons
and Pandol Bros. were again owned by different, but overlapping, parties.18

12 Steve Pandol, Jr. passed away in 1981. L. Pandol Test., 12:9-11.
13 C. Diebel Test., 173:3-10. Steve Sr.’s wife, Margaret may have been a partner in Pandol
& Sons until her death in the late 20’s or early 80’s.
14 C. Diebel Test., 174:17-19
15 James Pandol Test., 110:2-3, 113:16-23, 114:1-19 and exhibits 114-119 thereto.
16 C. Diebel Test., 28:13-24.
17 L. Pandol Test., 73:14-16.
18 C. Diebel Test., 173:20-25.
Cancellation No. 92048691

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Respondent was an employee of petitioner from July 1981 – April 2004.19 On
January 12, 2005, after the termination of his employment with petitioner
respondent filed applications to register the marks PANDOL and PANDOL
FAMILY FARMS for fresh fruit and vegetables, which were based on his intent to
use the marks.20 Respondent filed statements of use asserting May 1, 2006, and
August 1, 2006, as his dates of first use of the PANDOL and PANDOL FAMILY
FARMS marks, and respondent’s registrations issued on October 3, 2006, and
January 2, 2007, respectively. On August 29, 2007, respondent sent a cease and
desist letter to petitioner demanding that petitioner cease use of the trademark
PANDOL and any other trademark that includes the word PANDOL. Finally, on
December 28, 2007, petitioner filed a petition to cancel respondent’s registrations.
Findings of Fact.
1. Petitioner, Pandol Bros., Inc. is a California
corporation located in Delano, California, which was
incorporated on February 15, 1957. (Pet. NOR –
printout from on-line database of California Secretary
of State).
2. Respondent, James Alan Pandol, is an individual,
doing business in Selma, California (Records of Reg.
Nos. 3152058 and 3195027).
3. Petitioner, which is in the business of shipping,
importing, and exporting fruits and vegetables, has
also been a grower of fruits. (C. Diebel Test. June 12,
2012, 24:1-17 and 25:11-17).

19 James Pandol Disc. Dep., 8:19-24 and James Pandol Test., 17:19-20 and 18:1-8.
20 The trademark applications were filed approximately six months before respondent
started Pandol Associates Marketing. James Pandol Test., 13:21-23.
Cancellation No. 92048691

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4. Petitioner has been using the trade names “Pandol
Brothers” and “Pandol Bros., Inc.” interchangeably in
connection with fresh fruit at least since the 1960s.
(Pet. NOR – Resp. to Interrog. No. 10).
5. Up until 1981, petitioner was owned by Matt Pandol,
Sr., Steve Pandol, Jr., and Jack Pandol, Sr., each of
whom owned equal shares of petitioner. The same
three individuals were equal partners in Pandol &
Sons. Thus, the ownership of petitioner and Pandol &
Sons was originally identical. (L. Pandol Test. June
12, 2012, 12:16-25).
6. Pandol & Sons owned and managed farms, and grew
produce, which petitioner marketed and sold. (C.
Diebel Test., June 12, 2012, 174:17-19).
7. Petitioner and Pandol & Sons are jointly known as the
Pandol organization. (James Pandol Test., 110:2-3,
113:16-23, 114:1-19 and exhibits 114-119 thereto).
8. Petitioner has regularly been referred to as “Pandol”
by petitioner’s customers, suppliers, competitors and
the trade press. (Pet. NOR – Respondent’s Resp. to
Req. for Adm. No. 88).
9. Pandol & Sons was a farm manager and, until 2003, a
farming company, after which it stopped farming, but
continued managing farms. (L. Pandol Test. June 12,
2012, 11:1-3 and 12: 1-15).
10. Beginning in approximately 1997, Pandol & Sons’
farms were distributed to individual third-generation
Pandol family members. (C. Diebel Test. June 12,
2012, 28:13-24).
11. Following distribution of the farms, Petitioner
continued to sell the agricultural products produced by
the family members. (James Pandol Test. May 31,
2012, 17:25 and 349:1-21).
12. Respondent’s applications for the marks PANDOL and
PANDOL FAMILY FARMS were filed on January 12,
2005, which is respondent’s constructive use date.
(Records of Reg. Nos. 3152058 and 3195027).
Cancellation No. 92048691

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13. Petitioner used the mark P.B.I. PANDOL BROTHERS
INCORPORATED prior to both respondent’s first use
of the PANDOL and PANDOL FAMILY FARMS
marks and the January 12, 2005, filing date of
respondent’s applications. (James Pandol Test., 214:5-
7 and 218:16-17; C. Diebel Test. 139:10-16, 145:14-25,
146:1-25, and 147:1-5; and records of Reg. Nos.
3152058 and 3195027.)
14. Respondent did not use the mark PANDOL until
January 2006. (James Pandol Disc. Dep. May 7, 2009,
33:1-21).
15. Petitioner used the mark PANDOL BROTHERS
PREMIUM prior to both respondent’s first use of the
PANDOL and PANDOL FAMILY FARMS marks and
the January 12, 2005, filing date of respondent’s
applications. (J. Kreick Test. 11-16 and records of Reg.
Nos. 3152058 and 3195027).
16. In July 1981, respondent was hired by petitioner.
(James Pandol Disc. Dep. May 7, 2009, 8:19-24).
17. Respondent was Vice President of Marketing of
petitioner from 1994 until April 2004. (James Pandol
Test. June 1, 2012, 17:19-20 and 18:1-8).
18. Respondent is currently the President of Pandol
Associates Marketing, which he started in July 2005.
(James Pandol Test. May 31, 2012, 12:24-25 and 13:1;
13:19-23).
19. Respondent, James Pandol, runs the company Pandol
Marketing Associates, which buys and sells fresh fruit,
represents growers, and sells to customers. (James
Pandol Test. May 31, 2012, 13:4-8 and Records of Reg.
Nos. 3152058 and 3195027 ).
20. On August 29, 2007, respondent sent a cease and
desist letter to petitioner demanding that petitioner
cease use of the trademark PANDOL and any other
trademark that includes the word PANDOL. (Pet.
NOR – Stipulated Test.)
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21. There is a likelihood of confusion between marks in
respondent’s registrations as used on the goods
identified therein and petitioner’s use of “PANDOL
either standing alone or in combination with other
words as a trademark in connection with the sale of
fresh fruit.” (Answer to Second Amended Petition,
¶¶ 2 and 10)
Discussion
Standing
Standing is a threshold issue that must be proved in every inter partes case.
See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982) (“The facts regarding standing … must be affirmatively proved.
Accordingly, [petitioner] is not entitled to standing solely because of the allegations
in its [pleading].”). To establish standing in a cancellation proceeding, petitioner
must show both “a real interest” in the proceeding as well as a “reasonable” basis
for its belief of damage. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025 (Fed. Cir. 1999).
Petitioner has established that it has used PANDOL BROS. both as a trade
name and a trademark. After respondent’s registrations issued, respondent sent
petitioner a cease and desist letter demanding that petitioner stop using PANDOL
BROS. as a trademark.21 Based on the foregoing, petitioner has established that it
has a real interest in the proceeding and a reasonable basis for its belief of damage.
Accordingly, petitioner has established standing.

21 Pet. NOR – Stipulated Test.
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Priority
To establish priority, the petitioner must show prior proprietary rights in the
marks asserted. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209
USPQ 40, 43 (CCPA 1981). In the absence of a registration, these proprietary
rights may arise from “prior use of a technical ‘trademark,’ prior use in advertising,
prior use as a trade name, or whatever other type of use may have developed a
trade identity.” Id.; see, e.g., National Cable Television Association Inc. v. American
Cinema Editors Inc., 973 F2d 1572, 19 USPQ2d 1424, 1427-28 (Fed. Cir. 1991)
(canceling mark based on petitioner’s prior use of trade name); Herbko International
Inc. v. Kappa Books Inc., 308 F3d 1156, 64 USPQ2d 1375, 1379 (Fed. Cir. 2002). As
discussed above, Petitioner has used “Pandol” and “Pandol Bros.” as both
trademarks and trade names prior to respondent’s use of the marks PANDOL and
PANDOL FAMILY FARMS. Moreover, respondent has admitted that he was aware
of petitioner’s continued use of “Pandol Brothers” and “Pandol Bros.” as trade
names since the 1960s.22 Accordingly, petitioner has established priority.
Likelihood of Confusion
Likelihood of confusion is governed by Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), which states in part:
No trademark by which goods of the applicant may be
distinguished from the goods of others shall be refused
registration on account of its nature unless it- ... consists
of or comprises a mark which so resembles a mark
registered in the Patent and Trademark Office, or a mark
or trade name previously used in the United States

22 Pet. NOR – Resp. to Interrog. No. 10.
Cancellation No. 92048691

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by another and not abandoned, as to be likely, when
used on or in connection with the goods of the applicant,
to cause confusion, or to cause mistake, or to deceive.
(emphasis added).23
Petitioner’s trademark use.
The parties vehemently argue about whether PANDOL and PANDOL BROS.
were used by petitioner as trademarks. Respondent argues that petitioner did not
use either term as a trademark prior to the filing date of respondent’s applications.
Petitioner disagrees, alleging that it used at least two PANDOL trademarks prior to
the filing date of respondent’s applications.24 At issue are two marks discussed
below, which the parties call “labels.”25
The first “label” at issue, which is set forth below and is referred to by the
parties as the “P.B.I. label,” includes the mark “P.B.I. Pandol Brothers

23 A petition for cancellation may be based on any ground that could have prevented
registration initially. Person's Co. Ltd. v. Christman, 900 F2d 1565, 14 USPQ2d 1477, 1479
(Fed. Cir. 1990).
24 Respondent relies on the discovery testimony of petitioner’s 30(b)(6) witness, John
Pandol, to establish that petitioner did not and does not use PANDOL as a trademark. Mr.
Pandol was asked whether PANDOL was and is used as a trademark. (Respondent’s Brief,
p. 18, citing John Pandol’s discovery deposition, 166:14-22) He was not asked whether
PANDOL BROTHERS was and is used as a trademark. Since there is no indication as to
whether Mr. Pandol considered the mark in the Premium Label to be PANDOL
BROTHERS and not PANDOL or whether he understood that the term trademark includes
both registered and unregistered marks, we do not give Mr. Pandol’s response much weight.
Similarly, Mr. Pandol was asked whether petitioner used the word “brand” to apply to the
word “Pandol” standing alone, or to the words “Pandol Brothers,” to which he replied that
petitioner had not. (Respondent’s Brief, p. 19, citing John Pandol’s discovery deposition,
129:17-25.) We do not give Mr. Pandol’s response any weight since the use of the word
“brand” is not required to designate a trademark.
25 To be clear, a label — as that term is usually used — can comprise more than one
trademark.
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Incorporated.” It is uncontested that the P.B.I. Label was used by petitioner in
interstate commerce on boxes of fresh fruit.

While respondent testified that the last time he remembered petitioner using this
label was in the mid to late 1990s26 and that “the P.B.I. label of [Exhibit] 175 wasn’t
much used after the late 80’s to early 90’s,”27 petitioner provided persuasive
evidence (sales figures) that the mark was in use from 2001 – 2004.28 Moreover,
Louis Pandol, the Chairman of the Board of petitioner, testified that the mark was
in use “from the 1980’s to the present.”29
Further, because petitioner and Pandol & Sons had common ownership and
were commonly operated, they were jointly known as the Pandol organization30 and
were regularly referred to as “Pandol” by customers, suppliers, competitors and the
trade press.31 It wasn’t until the late 1980’s or early 1990’s that some of the stock
ownership of petitioner was transferred to the third generation, and the ownership
of petitioner became more diverse,32 but even then, it wasn’t until respondent left

26 James Pandol Test., 214:5-7.
27 James Pandol Test., 218:16-17.
28 C. Diebel Test. 139:10-16, 145:14-25, 146:1-25, and 147:1-5.
29 L. Pandol Test. 26:1
30 James Pandol Test., 110:2-3, 113:16-23, 114:1-19 and exhibits 114-119 thereto.
31 Pet. NOR – Respondent’s Resp. to Req. for Adm. No. 88).
32 C. Diebel Test., 173:20-25.
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and founded his own company that any of the entities competed with the others or
acted in any way seen as adverse to the others.33 Petitioner applied the labels to the
goods and got the benefit of the use of PBI and PANDOL BROTHERS
INCORPORATED.
Petitioner also used the label below (the “Premium Label”), which includes
the marks PANDOL and PANDOL BROTHERS, in connection with its sale of
grapes to customers in Japan.34 The Premium Label was first used in 1998. J.
Kreick Test., 17:19-20.

Prior to shipping the grapes to Japan, bunches of the grapes were wrapped in tissue
paper which was sealed with the Premium Label.35 Respondent contends that
petitioner’s use was not an open use and that sales of petitioner’s grapes to
customers in Japan are ineffective to create or maintain rights in the United States.
Respondent’s Brief, p. 27. Respondent relies on Sterling Drug Inc. v. Knoll A.-G.
Chemische Fabriken, 159 USPQ 628, 631 (TTAB 1968); Fiat Group Automobiles
S.p.A. v. ISM, Inc., 94 USPQ2d 1111, 1115 (TTAB 2010); and Techex, Ltd. v.

33 L. Pandol Test.,
34 J. Kreick Test. 19:7-8.
35 J. Kreick Test. 19:11-16.
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Dvorkovitz, 220 USPQ 81, 83 (TTAB 1983) in support of his position. We disagree.
These cases all involve rights of foreign entities based on use of trademarks outside
of the United States. The Board found that the use of trademarks outside of the
United States did not constitute a use in “commerce” as defined in the Trademark
Act, because commerce wholly outside the United States could not be regulated by
the U.S. Congress. See Trademark Act § 45 (“The word ‘commerce’ means all
commerce which may lawfully be regulated by Congress.”). As such, no trademark
rights were established in the United States.
The case at bar can be distinguished from these cases because it involves a
U.S. entity shipping product from the United States to a foreign country. Congress
unquestionably may regulate commerce between the United States and a foreign
country.36 Accordingly, petitioner’s export to Japan of grapes bearing the Premium
Label constituted “use in commerce” pursuant to the Trademark Act and was itself
sufficient to establish trademark rights in the United States.
Petitioner’s trade name use.
For purposes of this proceeding, petitioner need not rely solely on prior use of
trademarks; prior trade name use is also sufficient to establish prior rights in a
determination of likelihood of confusion. See Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d). A “trade name” is the name used by a person to identify his or her
business. Section 45 of the Trademark Act, 15 U.S.C. § 1127. While a trade name

36 U.S. Const. Art. 1 § 8 (“The Congress shall have power... To regulate Commerce with
foreign Nations....”). See Steele et al. v. Bulova Watch Company, 1nc., 344 U.S. 280, 95
USPQ 391, 393 (1952). See also American Rice, Inc. v. Arkansas Rice Growers Cooperative,
701 F.2d 408, 218 USPQ 489, 492-93 (5th. Cir. 1983).
Cancellation No. 92048691

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identifies a business, a trademark identifies the source of goods. See Section 45 of
the Trademark Act, 15 U.S.C. § 1127. Although a trade name is not registrable as
such, registration of a trademark will be refused if the registered mark would create
a likelihood of confusion with a trade name which was previously used and not
abandoned. Trademark Act § 2(d).
Respondent admits that he has been aware of petitioner’s use of the trade
name PANDOL BROS. since the 1960s37 and that petitioner is referred to as
PANDOL by petitioner’s customers, suppliers, competitors and the trade press.38
Petitioner also refers to itself as “Pandol.” As John Kreick testified:
“Pandol” has always been how our company’s referred to.
I’ve always answered the phone “Pandol’s” and I think
most everybody in the office does, and always has.39
Thus petitioner also uses PANDOL as a trade name.
Admission of likelihood of confusion.
In his answer to the second amended petition, respondent alleged that “any
use by Petitioner in interstate or international commerce of PANDOL either
standing alone or in combination with other words as a trademark in connection
with the sale of fresh fruit in International Class 31 first started after Registrant’s
Exclusive Rights Date”40 and respondent defined petitioner’s use as “Petitioner’s

37 Pet. NOR – Resp. to Interrog. No. 10.
38 Pet. NOR – Resp. to Req. for Adm. No. 88.
39 J. Kreick Test., 28:15-18.
40 Respondent refers to the filing date of its applications as “Registrant’s Exclusive Rights
Date.” Answer to Second Amended Petition, ¶ 1. We disagree with this characterization of
respondent’s rights.
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Infringing Use.”41 Thereafter, respondent alleged that “Petitioner’s Infringing Use”
is on identical or closely related goods and creates a likelihood of confusion.42 This
is an admission by respondent that where both parties are using PANDOL in
connection with the sale of fresh fruit, someone is creating a likelihood of confusion.
A similar admission arises from the cease and desist letter sent to petitioner by
respondent’s attorney on August 29, 2007, wherein respondent stated to petitioner:
The goods marketed by your company are the same as
some of the products marketed by my client. Customers
will be confused as to the source of the goods when faced
with these two products.43
We agree with respondent that there is a likelihood of confusion. However, it
is petitioner, not respondent, that has prior rights in both the trade names
PANDOL and PANDOL BROS. and in the trademarks PANDOL and PANDOL
BROS.
Having considered all the evidence and argument, we conclude that
respondent’s use of the marks PANDOL and PANDOL FAMILY FARMS for “fresh
fruit” is likely to cause confusion, mistake or deception with respect to petitioner’s
marks and trade names PANDOL and PANDOL BROS. as used on or in connection
with similar goods.

41 Answer to Second Amended Petition, ¶ 2. Of course, infringement is not an issue in this
proceeding; the Board’s jurisdiction only includes determination of the right to registration.
42 Answer to Second Amended Petition, ¶¶ 10-14.
43 Pet. NOR – Stipulated Test.
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Fraud on the PTO
Petitioner alleges that respondent committed fraud on the PTO by signing his
trademark applications since respondent knew of numerous uses of PANDOL in
trade names. “[A] trademark is obtained fraudulently under the Lanham Act only if
the applicant or registrant knowingly makes a false, material representation with
the intent to deceive the PTO.” In re Bose Corp., 530 F3d 1240, 91 USPQ2d 1938,
1941 (Fed. Cir. 2009).
In his applications for the subject registrations, respondent signed the usual
declaration, essentially asserting that he believed he was the owner of the applied-
for marks, and that no other person had a right to use a mark in commerce which
would cause confusion with them. Petitioner alleges that respondent’s signature
and submission of this declaration constituted fraud on the USPTO, inasmuch as
respondent was not entitled to use the subject marks, and that respondent was
aware of petitioner’s prior use of them.
To prevail on such a fraud claim, petitioner would have to establish not only
that respondent’s declaration was false (i.e., that respondent did not in fact have
superior rights in the mark), but also that respondent knew that his oath was false.
Am. Sec. Bank v. Am. Sec. & Trust Co., 571 F.2d 564, 197 USPQ 65, 67 (CCPA
1978) (“Appellant misreads the cited statute and rules. They require the statement
of beliefs about exclusive rights, not their actual possession. Appellant has
produced no evidence impugning appellee’s beliefs.”). Moreover, fraud will not be
loosely inferred from equivocal or uncertain evidence. “[T]he very nature of the
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charge of fraud requires that it be proven ‘to the hilt’ with clear and convincing
evidence.” First Int’l Servs. Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1634 (TTAB
1988) (quoting Smith Int’l, Inc. v. Olin Corp., 209 USPQ 1033, 1043–44 (TTAB
1981)).
The evidence does not establish that respondent knowingly made a false
material representation. When asked what his understanding of a trademark is,
respondent answered “it is a legally registered name or image that an individual or
company can obtain to protect that name or image.”44 Further, in response to an
inquiry about whether he had discussed protecting PANDOL as a trademark with
Cheri Diebel when he was still working for petitioner, respondent replied:
To the best of my memory, I brought up that Pandol Bros.
should protect or trademark the Pandol name, probably
about a year or so after the incident with Rio Blanco and
Pandol Bros[45] …
Q. Did you have any further discussion with her on
the subject of protecting the Pandol name?

A. I did bring it up again.

Q. And when, in relation to the first time you brought
it up, did you bring it up again?

A. I brought it up again in the neighborhood of,
probably, three to six months later, to the best of
my memory and asked if anything was being done
on trademarking or protecting the Pandol label.

Q. What did she say?

44 James Pandol Test., 30:12-15.
45 James Pandol Test., 365:13-16.
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A. The comment was, “We’re not going to do anything
with it.” Or, I don’t remember the exact wording,
but it was, basically, that, “We aren't going to do
that.”

Q. Did you at any time thereafter, up to the time you
left Pandol Bros., Inc., ever receive any indication
from either Cheri Diebel or anyone else at Pandol
Bros., Inc. that the company had any interest in
either protecting the Pandol name or having
“Pandol” used as a trademark?

A. About nine or 10 months after leaving the
company, I checked again to see if there was any
trademark activity on the -- you know, associated
with the Pandol name, and there was nothing
there.46

Thus, the respondent’s testimony suggests that he believed, albeit incorrectly, that
he was entitled to register PANDOL and PANDOL FAMILY FARMS as
trademarks.
Although we have found that respondent was in fact not entitled to
registration of the subject marks, petitioner has not met its heavy burden to show
clearly that respondent did not believe the declarations he submitted with his
applications, or that respondent signed the declarations with the intent to defraud
the USPTO.47 As intention to deceive the PTO has not been proved, the claim of
fraud on the PTO is dismissed.48

46 James Pandol Test., 365:21-24 and 366:1-21.
47 To the extent that some degree of negligence or recklessness can support a claim of fraud
(a question we need not answer), this record does not clearly show that respondent was
either negligent or reckless in filing his trademark applications.
48 Petitioner also alleged in its third amended petition fraud based on respondent’s
testimony that he had not used the marks PANDOL and PANDOL FAMILY FARMS on
vegetables at the time he filed Statements of Use. Petitioner did not argue this allegation
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Affirmative Defenses
Respondent has asserted the following as affirmative defenses: acquiescence,
estoppel by laches, and unclean hands. Respondent’s assertion of the affirmative
defenses of estoppel by laches and acquiescence are based on respondent’s
allegations that by 2005, petitioner was aware that respondent was a competitor
using the trade name “Pandol Associates Marketing” and that in the Fall of 2006,
petitioner became aware of respondent’s use of the mark PANDOL in connection
with fruit.49
We first look at the alleged affirmative defense of acquiescence.
“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.” Panda Travel, Inc. v. Resort Option Enterprises, Inc., 94 USPQ2d
1789,1797 fn. 21 (TTAB 2009); see also Christian Broadcasting Network Inc. v. ABS-
CBN International, 84 USPQ2d 1560, 1573 (TTAB 2007).
In applying doctrine of estoppel in trademark cases, the
obligation has always been on the infringer to show not
only inexcusable delay or apparent acquiescence but also
some reason why it will not be just to stop him. The
registrant, of course, has the right to invoke the doctrine
in a cancellation proceeding. He, however, bears the
burden of showing the injustice.
Ralston Purina Company v. Midwest Cordage Company, Inc., 373 F2d 1015, 153
USPQ 73, 75 (CCPA 1967) (internal citations omitted). Respondent has shown no

in its brief. Respondent requests that we deem this claim as waived and abandoned. We
agree that the claim has been waived.
49 Respondent’s Brief, p. 43.
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injustice to himself. At a minimum, he admits to his knowledge of petitioner and
petitioner’s activities using the PANDOL trademarks and trade names.
Respondent cites CBS Inc. v. Man’s Day Publishing Company, Inc., 205
USPQ 470, (TTAB 1980) in support of his defense. This citation is inapposite. In
the CBS v. Man’s Day case, the predecessor of the opposer affirmatively consented
to the applicant’s use of the mark MAN’S DAY. In light thereof, opposer was
deemed to have acquiesced to opposer’s use. In the case at bar, there is no evidence
that petitioner ever consented to respondent’s use, either by words or actions. To
the contrary, within approximately fourteen months of respondent’s registrations,
petitioner filed this petition to cancel.
Accordingly, we find the evidence does not support the affirmative defense of
acquiescence.
We look next at the defense of estoppel by laches. To establish laches,
respondent must establish: (1) unreasonable delay in assertion of one’s rights
against another; and (2) material prejudice to the latter attributable to the delay.
“As applied in trademark opposition or cancellation proceedings, th[is] defense must
be tied to a party’s registration of a mark, not to a party’s use of the mark. Lincoln
Logs Ltd. v. Lincoln Pre-Cut Log Homes Inc., 970 F.2d 732, 23 USPQ2d 1701, 1703
(Fed. Cir. 1992) (internal citation omitted). Respondent’s registrations issued on
October 23, 2006, and January 7, 2007. The cancellation action was filed on
December 28, 2007, approximately fourteen months after the issuance of
respondent’s first issued registration. A fourteen-month delay in filing the
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proceeding does not constitute unreasonable delay. See Charrette Corp. v. Bowater
Communication Papers Inc., 13 USPQ2d 2040, 2043 (TTAB 1989) (14-month delay
not sufficient to establish laches); Manpower, Inc. v. Manpower Information Inc.,
190 USPQ 18, 23 (TTAB 1976) (3-4 year delay not sufficient to establish laches);
and Plymouth Cordage Company v. Solar Nitrogen Chemicals, Inc., 152 USPQ 202,
204 (TTAB 1966) (slightly less than 3 year delay not sufficient to establish laches.).
Accordingly respondent has failed to establish the first element of a laches
defense. We therefore do not assess whether respondent has satisfied the prejudice
requirement.
As his final affirmative defense, respondent asserts “unclean hands,” based
on petitioner’s use of PANDOL on boxes after petitioner became aware of
respondent’s use of PANDOL. Petitioner has prior rights in the trade name and
trademark PANDOL and its use of the mark in a new format does not constitute
unclean hands.
Respondent also asserts unclean hands on the basis of errors in petitioner’s
trademark applications. Petitioner’s trademark applications are not relevant to this
proceeding and thus action taken therein by petitioner does not constitute unclean
hands.
Decision: With respect to both registrations, the petition is sustained on the
ground of likelihood of confusion under Section 2(d) of the Trademark Act and
denied on the ground of fraud on the PTO. Registration Numbers 3152058 and
3195027 will be cancelled in due course.