In are rare decision discussing the affirmative defense of unclean hands, the Board granted a petition for cancellation of a registration for the mark AACHI AAPPAKADAI & Design for "restaurant and catering services" [AAPPAKADAI disclaimed], finding the mark likely to cause confusion with petitioner's registered mark AACHI for various food products. The Board dismissed respondent's fraud defense since the validity of a pleaded registration may be attacked only via a counterclaim for cancellation. But the Board entertained respondent's unclean hands defense, ultimately finding it wanting. Aachi Spices & Foods v. Kalidoss Raju, Cancellation No. 92058629 (September 13, 2016) [not precedential].
Click here to view image.
Unclean hands The Board dismissed all eleven of respondent's so-called affirmative defenses, including laches, "fair use," and fraud. The unclean hands defense merited the most attention. The Board observed that "[t]he equitable doctrine of unclean hands prevents a plaintiff from relying on its registration if it made a false statement during the prosecution of its application for registration or maintenance of its registration."
Petitioner, in obtaining its two registrations, stated that "aachi" means "distinguished lady" in English. Respondent asserted that that statement was false, since "aachi" should properly be translated as "grandmother." According to respondent, had petitioner provided a proper translation, the PTO would have conducted a search of all marks that contained the words grandmother, mother, and grandma, and would have found hundreds of trademarks. The PTO may then have refused registration of petitioner's mark.
However, the evidence showed that "aachi" has several meanings (e.g., distinguished lady, elderly woman, grandmother, etc.), and so the Board could not find that petitioner made a false statement in its translation. Moreover, it was not clear that the examining attorney would have translated the word as "grandmother," nor was there any evidence that an appreciable number of consumers would be aware that the Tamil word "aachi" means "grandmother." Finally, respondent did not provide any evidence to support its assertion that there are numerous marks comprising the words "grandmother," etc.
Click here to view image.
Likelihood of Confusion: Although finding that the word AAPPAKADAI is the dominant part of respondent's mark, the Board found the involved marks to be similar in appearance, sound, connotation, and commercial impression. Consumers may believe that AACHI AappaKadai is the restaurant and catering line of the AACHI food products company
To show the relatedness of the involved goods and services, petitioner introduced 450 use-based, third-party registrations covering both food products and restaurant and/or catering services. Excerpts from 31 websites demonstrated that restaurant and grocery store services, and particularly Indian restaurant and grocery services, move in the same channels of trade to the same classes of consumers.
The Board noted that under Jacobs v. International Multifoods Corp., a party must show something more than that similar or even identical marks are used for food products and restaurant services, in order to establish likelihood of confusion. Applicant's evidence of third-party use and registration, along with the fact that the involved marks share a similar arbitrary term, satisfied that requirement.