Ava Ruha Corp. v. Mother’s Nutritional Center, Inc.
In a precedential cancellation action, the U.S. Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board (TTAB or Board) held that petitioner’s three-year, two-month delay in petitioning to cancel the respondent’s trademark registrations was unreasonable and sufficiently supported respondent's laches affirmative defense and therefore dismissed petitioner’s dilution claim, raising petitioner’s standard at trial from likelihood of confusion to inevitable confusion. Ava Ruha Corp. v. Mother’s Nutritional Center, Inc., 113 U.S.P.Q.2d 1575 (TTAB, Jan. 29, 2015) (Taylor, APJ; Wellington, APJ; Ritchie, APJ) (per curiam) (precedential).
The petitioner, Ava Ruha Corporation d/b/a Mother’s Market & Kitchen (Ava), filed a petition to cancel the respondent’s Mother’s Nutritional Center, Inc. (Mother) trademark registrations for MOTHER’S and MOTHER’S NUTRITIONAL CENTER, for use in connection with “retail stores that exclusively feature foods authorized for purchase by pregnant women, new mothers and young children participating in the federal Supplemental Food Program for Women Infants and Children (WIC)” 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 defense of laches. To establish the defense of laches, 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 respondent’s trademarks before they published on June 16, 2009, although the petitions for cancellation were not filed until August 21, 2012; i.e., 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 Board considered the doctrine of progressive encroachment which looks to whether respondent redirected its business to compete more directly with 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 Board agreed with the respondent that it would be prejudiced by 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, Ava’s delay was unreasonable and prejudice.
The Board also concluded that laches barred the petitioner’s claim of dilution. With regards to the petitioner’s claim of likelihood of confusion, the Board found that because the respondent has shown that there is no genuine dispute on the issue of laches, the petitioner cannot 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.