Affirmative Defenses Bar The Claim

 An affirmative defense assumes the allegations in the complaint to be true but, nevertheless, constitutes a defense to the allegations in the complaint. An affirmative defense does not negate the elements of the cause of action; it is an explanation that bars the claim. Gwin v. Curry, 161 F.R.D. 70, 71 (N.D. Ill. 1995) (the affirmative defense concept codifies the common law plea in confession and avoidance: "Each defendant either expressly or impliedly treats the factual allegations in a complaint as true, but then goes on to assert new matter that eliminates or limites the defendant's ordinary liability stemming from those allegations"), citing Black's Law Dictionary, p. 297 (6th ed. 1990). BLACKHORSE v. PRO FOOTBALL, INC. (TTAB 2011).

What is Not An Affirmative Defense?

Examples include:

• Failure to state a claim upon which relief can be granted is not an affirmative defense.
• Lack of standing is not an affirmative defense.
•  Lack of damage. The term "damage" as used in Sections 13 and 14 of the Trademark Act concerns only a party's standing to file an opposition or petition to cancel, respectively. Furthermore, a party may establish its standing to oppose or to petition to cancel by showing that it has a real interest in the case, that is, a personal interest beyond that of the general public. There is no requirement that actual damage be pleaded and proved in order to establish standing or to prevail in an opposition or cancellation proceeding. See Books on Tape Inc. v. Booktape Corp., 836 F.2d 519, 5 USPQ2d 1301 (Fed. Cir. 1987); Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987); and International Order of Job's Daughters v. Lindeburg & Co., 727 Fd.2d 1087, 220 USPQ 1017 (Fed. Cir. 1984).

BLACKHORSE v. PRO FOOTBALL, INC. (TTAB 2011).

Some of the Elements of Affirmative Defenses

"The elements of laches are (1) unreasonable delay in assertion of one's rights against another; and (2) material prejudice to the latter attributable to the delay. The elements of equitable estoppel are (1) misleading conduct, which may include not only statements and action but silence and inaction, leading another to reasonably infer that rights will not be asserted against it; (2) reliance upon this conduct; and (3) due to this reliance, material prejudice if the delayed assertion of such rights is permitted. As applied in trademark opposition or cancellation proceedings, these defenses must be tied to a party's registration of a mark …." Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes Inc., 23 USPQ2d 1701, 1703 (Fed. Cir. 1992).

Need Help with an Opposition or Cancellation? Call Not Just Patents at 651-500-7590.

TBMP 311.02(b) Affirmative Defenses (June 2022)

TBMP 311.02(b)    Affirmative Defenses

TBMP 311.02(b)(1)    In General

An answer may also include a short and plain statement of any defenses, including affirmative defenses that the defendant may have to the claim or claims asserted by the plaintiff. Affirmative defenses may include unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior registration (Morehouse) defense, prior judgment, or any other matter constituting an avoidance or affirmative defense. [ Note 1.] Such defenses may also include a pleading that defendant is at least entitled to a registration with a particular restriction (described in the pleading in sufficient detail to give plaintiff fair notice of the basis for the defense) [ Note 2.], except that geographic restrictions will be considered and determined by the Board only in the context of a concurrent use registration proceeding. [ Note 3.] See TBMP Chapter 1100. Cf. TBMP § 514. A request by defendant to restrict its identification of goods or services under Trademark Act § 18, 15 U.S.C § 1068, must be made by way of motion under 37 C.F.R § 2.133  although the ground may also be raised as an affirmative defense in the answer (as originally filed, as amended or as deemed amended), by way of an allegation that sets forth the proposed restriction in detail and alleges that the restriction will avoid a likelihood of confusion and that plaintiff is not using the mark on the products or services being excluded from the registration. [ Note 4.] See TBMP § 309.03(b).

If the defendant offers to amend its identification of goods or services in its originally filed answer, because the Board does not typically review the answer at the pleading stage, the defendant should also file a motion with the Board in order to bring the matter to the Board’s attention for consideration. Pleading a restriction in the answer as originally filed, however, serves the purpose of putting plaintiff on early notice of the proposed restriction. Affirmative defenses may be deemed waived if not pursued at trial or argued in briefs. [ Note 5.]

Equitable defenses may not be available against certain grounds for opposition or cancellation or under certain circumstances. For example, the availability of laches and acquiescence is severely limited in opposition and cancellation proceedings. In Board opposition proceedings, these defenses start to run from the time of knowledge of the application for registration (that is, from the time the mark is published for opposition), not from the time of knowledge of use. In Board cancellation proceedings, these defenses for a Principal Register registration start to run from the date of registration, in the absence of actual knowledge before the close of the opposition period, but for a Supplemental Register registration, the defenses start to run from the time of knowledge that the registration issued. [ Note 6.]

Moreover, for public policy reasons, the defenses of laches and acquiescence may not be available against claims such as genericness, descriptiveness, fraud, abandonment and functionality, and further, may not apply in a case of likelihood of confusion if it is determined in the case that confusion is inevitable. [ Note 7.]

Similarly, the "prior registration" or Morehouse defense, an equitable defense in the nature of laches or acquiescence, [ Note 8.], is not available in all cases. [ Note 9.] In addition, the Morehouse defense will not be applied where defendant’s prior registration is on the Supplemental Register, or if the prior registration did not issue until after commencement of the proceeding in which it is asserted as a basis for this defense, or if plaintiff has petitioned to cancel the prior registration. [ Note 10.]

Please Note: The "fair use" defense of Trademark Act § 33(b)(4), 15 U.S.C. § 1115(b)(4), is a defense available to a defendant in a federal action charged with infringement of a registered mark, [ Note 11.], and has no applicability in inter partes proceedings before the Board, which involve only the issue of registrability of a mark. [ Note 12.] Further, the "noncommercial use" exception of Trademark Act § 43(c)(3)(C), 15 U.S.C. § 1125(c)(3)(C), does not apply in a Board proceeding involving a mark sought to be registered as a trademark or service mark, because an applicant seeking registration is necessarily relying on a claim of use of its mark, or intended use of its mark, in commerce. [ Note 13.]

The elements of a defense should be stated simply, concisely, and directly. [ Note 14.] However, the pleading should include enough detail to give the plaintiff fair notice of the basis for the defense. [ Note 15.] When one of the special matters listed in Fed. R. Civ. P. 9 (including, inter alia, capacity, fraud, and judgment) is pleaded, the provisions of Fed. R. Civ. P. 9 governing the pleading of that special matter should be followed. [ Note 16.]

A defendant may state as many separate defenses as it has, regardless of consistency; a defendant may also set forth two or more statements of a defense alternately or hypothetically, either in one count or in separate counts. [ Note 17.] For example, an applicant whose application for registration has been opposed under Trademark Act §2(d), 15 U.S.C. § 1052(d), on the ground of opposer’s alleged prior use of its mark, coupled with an allegation of likelihood of confusion, might deny that there is any likelihood of confusion with respect to its mark and goods as set forth in the application. At the same time, the applicant might plead alternatively that it actually uses its mark only on a specific type (identified in the pleading) of the goods covered by the broad identification in its application; that there is no likelihood of confusion with respect to applicant’s actual goods; and that even if the Board ultimately finds that opposer is entitled to judgment with respect to applicant’s goods as broadly identified, applicant would be entitled to a registration of its mark with a restricted identification reflecting the actual nature of its goods. [ Note 18.] See TBMP § 309.03(d) and TBMP § 514.

When two or more statements are made in the alternative, the sufficiency of each is determined independently; the fact that one of them may be insufficient does not mean that the other(s) is (are) also insufficient. [ Note 19.]

Evidentiary matters (such as, for example, lists of third-party registrations on which defendant intends to rely) should not be pleaded in an answer. They are matters for proof, not for pleading. [ Note 20.]

The Board will not entertain a defense that attacks the validity of a registration pleaded by a plaintiff unless the defendant timely files a counterclaim or a separate petition to cancel the registration. [ Note 21.] See TBMP § 313. Moreover, a defense which seeks to restrict a plaintiff’s pleaded registration as, for example, by limiting the goods or services therein, or by deleting some of the goods or services, will not be entertained in the absence of a timely counterclaim, or separate petition, to cancel the registration in whole or in part. [ Note 22.] See also TBMP § 309.03(d) (regarding claims for partial cancellation under Trademark Act § 18, 15 U.S.C. § 1068 ) and TBMP § 313 (regarding counterclaims). Geographic restrictions will be considered and determined by the Board only within the context of a concurrent use proceeding. [ Note 23.] For further information on concurrent use proceedings, see TBMP Chapter 1100.

Although 37 C.F.R. § 2.106(b)(3)(ii)  and 37 C.F.R. § 2.114(b)(3)(ii)  specifically permit a defense attacking the validity of a plaintiff’s pleaded registration to be raised either as a counterclaim or as a separate petition to cancel, the better practice is to raise the defense as a counterclaim. [ Note 24.] If the defense is raised as a separate petition to cancel, however, the petition itself and any cover letter filed therewith should include a reference to the original proceeding. [ Note 25.] See also TBMP § 313.

When a defense is raised by way of a counterclaim, it should not also be pleaded as an affirmative defense, because the pleading of it as an affirmative defense is unnecessary and redundant. [ Note 26.]

For proceedings commenced between October 6, 2006 and October 5, 2012 that assert a claim under Trademark Act 43(c)(6)(B), 15 U.S.C. § 1125(c)(6)(B), a defendant may raise as an affirmative defense to a dilution claim the ownership of a valid registration as a complete bar to the federal claim of dilution. [ Note 27.] On October 5, 2012, the Trademark Act was amended to correct the clerical error in the organization of the provisions relating to remedies for dilution. The federal registration defense is no longer available to federal dilution claims. However, the changes are not retroactive.

NOTES:

 1.   See 37 C.F.R. § 2.106(b)(2)  and 37 C.F.R. § 2.114(b)(2); Fed. R. Civ. P. 8(b) and (c); Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 17 F.4th 129, 2021 USPQ2d 1069, at *7-8 (Fed. Cir. 2021) (discussing laches and aquiescence affirmative defenses in context of likelihood of confusion claim); Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969) (no added injury to the plaintiff where defendant owns a substantially similar registered mark for substantially similar goods and/or services). See also Order of Sons of Italy in America v. Profumi Fratelli Nostra AG, 36 USPQ2d 1221, 1222 (TTAB 1995) (Fed. R. Civ. P. 12(b) permits a defendant to assert in the answer the "defense" of failure to state a claim upon which relief can be granted).

 2.   See 37 C.F.R. § 2.133(a). Cf. 37 C.F.R. § 2.133(b)  and 37 C.F.R. § 2.133(c) . See also Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828 (TTAB 2013) (a defendant may assert an affirmative defense by moving to restrict its own goods and/or services in order to avoid any likelihood of confusion alleged by plaintiff).

 3.   See 37 C.F.R. § 2.99(h)  and 37 C.F.R. § 2.133(c). See also Snuffer & Watkins Management Inc. v. Snuffy’s Inc., 17 USPQ2d 1815, 1816 (TTAB 1990).

 4.   See 37 C.F.R. § 2.133(a)  and 37 C.F.R. § 2.133(b). See also British Seagull Ltd. v Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), aff’d, 35 F.3d 1527, 32 USPQ2d 1120, 1125 (Fed. Cir. 1994) (Board had no duty to address defendant’s offer to amend in final brief where defendant failed to file a motion or include as affirmative defense in pleading); Embarcadero Technologies. Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828-29 (TTAB 2013) (applicant moved to amend its descriptions of goods and services, requested at trial that the amendment be considered in the alternative, and the Board deemed the answer amended to include the affirmative defense under Section 18); Montecash LLC v. Anzar Enterprises, Inc., 95 USPQ2d 1060, 1062 (TTAB 2010) (partial cancellation on the ground that portion of the mark is a generic term unavailable where the registration sought to be cancelled is more than five years old.); Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1480 (TTAB 2007) (same; motion to strike claim granted); IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1954 (TTAB 2009) (Board encourages parties to seek Trademark Act § 18, 15 U.S.C. § 1068 restriction of cited registrations); ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1353 (TTAB 2007) (proposed restriction must be stated with precision); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1898 (TTAB 2006) (applicant’s offer to amend its identification of goods given no further consideration because it would not overcome the likelihood of confusion); Personnel Data Systems Inc. v. Parameter Driven Software Inc., 20 USPQ2d 1863, 1865 (TTAB 1991) (mere request by respondent in its trial brief to have its identification of goods amended rejected where petitioner was not put on notice before petitioner presented its case); Flow Technology Inc. v. Picciano, 18 USPQ2d 1970, 1972 (TTAB 1991) (applicant’s argument on summary judgment that parties’ channels of trade were different not persuasive where applicant’s claim of entitlement to narrower range of goods was not put in issue by motion or amendment to its pleading). Cf. Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1846 (TTAB 2008) (amendment in Trademark Act § 8, 15 U.S.C. § 1058 affidavit filed during pendency of cancellation proceeding granted as unconsented motion to amend).

 5.   See TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1100-01 (TTAB 2018) (affirmative defenses waived because not pursued at trial or argued in brief); Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602 n.5 (TTAB 2018) (affirmative defenses waived because not argued in ACR brief); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422-23 n.7 (TTAB 2014) (affirmative defenses deemed waived); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1021 n.4 (TTAB 2009) (affirmative defenses waived if not maintained in party’s trial brief).

 6.   See Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 17 F.4th 129, 2021 USPQ2d 1069, at *8 (Fed. Cir. 2021) ("Laches and acquiescence are generally not available as defenses in an opposition proceeding, given that the clock for laches begins to run from the date the application is published for opposition."); National Cable Television Association v. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991); Coach House Restaurant Inc. v. Coach and Six Restaurants Inc., 934 F.2d 1551, 19 USPQ2d 1401, 1404-05 (11th Cir. 1991); TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1414 (TTAB 2018) (where laches defense involves a Supplemental registration, period of delay begins on the date when the petitioner first had knowledge that the registration issued); Ava Ruha Corp. v. Mother’s Nutritional Center, Inc., 113 USPQ2d 1575, 1580 (TTAB 2015) ("[I]n a cancellation proceeding, laches begins to run no earlier than the date the involved mark was published for opposition (if there was actual knowledge), and no later than the issue date of the registration (when Plaintiff is put on constructive notice.")); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1531 (TTAB 2008) (conduct which occurs prior to publication of application for opposition generally cannot support a finding of equitable estoppel); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1114 (TTAB 2007) (in the absence of actual notice prior to the close of the opposition period, the date of registration is the operative date for calculating laches); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1292 n.14 (TTAB 2007) (defenses of laches, acquiescence or estoppel generally not available in opposition proceeding); Turner v. Hops Grill & Bar Inc., 52 USPQ2d 1310, 1312 (TTAB 1999); University Book Store v. University of Wisconsin Board of Regents, 33 USPQ2d 1385, 1401 n.39 (TTAB 1994) (equitable defenses are not grounds for opposition).

See also Pinkette Clothing, Inc. v. Cosmetic Warriors Ltd., 894 F.3d 1015, 127 USPQ2d 1315, 1322 (9th Cir. 2018) (laches defense in cancellation available within the first five years of registration). But see, Fishking Processors Inc. v. Fisher King Seafoods Ltd., 83 USPQ2d 1762, 1764 (TTAB 2007) (defendant may assert laches defense in cancellation even though defendant’s registration on which defense is based was cancelled during the pendency of the cancellation proceeding for failure to file affidavit under Trademark Act § 8, 15 U.S.C. § 1058); Aquion Partners L.P. v. Envirogard Ltd., 43 USPQ2d 1371, 1373 (TTAB 1991) (laches defense in an opposition may be based on opposer’s failure to object to an earlier expired registration of substantially the same mark for substantially the same goods).

 

7.   See TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1413 (TTAB 2018) (laches not a bar to cancellation if confusion inevitable); Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572, 1575 n.3 (TTAB 2008) (laches is unavailable as an affirmative defense against a claim of fraud); Christian Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1572 (TTAB 2007) (equitable defenses such as laches and acquiescence would not preclude a judgment for plaintiff if confusion is inevitable); Saint-Gobain Abrasives, Inc. v. Unova Industrial Automation Systems, Inc., 66 USPQ2d 1355, 1359 (TTAB 2003) (it is within the public interest to have certain registrations removed from the register and this interest, quoting W. D. Byron & Sons, Inc. v. Stein Brothers Manufacturing Co., 146 USPQ 313, 316 (TTAB 1965) ("cannot be waived by the inaction of any single person or concern no matter how long the delay persists."), aff’d, 377 F.2d 1001, 153 USPQ 749 (CCPA 1967). See also, e.g., Callaway Vineyard & Winery v. Endsley Capital Group, Inc., 63 USPQ2d 1919, 1923 (TTAB 2002) (equitable defenses of laches, acquiescence and estoppel cannot be asserted against claim of descriptiveness); Turner v. Hops Grill & Bar Inc., 53 USPQ2d 1310, 1313 (TTAB 1999) (laches will not prevent cancellation where it is determined that confusion is inevitable); Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1131 (TTAB 1990) (same). Cf. Bridgestone/Firestone Research Inc. v. Automobile Club de l’Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460, 1463 (Fed. Cir. 2001) (laches is available defense against Trademark Act § 2(a), 15 U.S.C. § 1052(a) claim of false suggestion of connection because rights protected under that provision "are not designed primarily to protect the public but to protect persons and institutions from exploitation of their persona"); Hornby v. TJX Companies Inc., 87 USPQ2d 1411, 1419 (TTAB 2008) (laches is applicable to a claim of dilution because it relates to a personal right of the plaintiff, rather than being in the interest of the general public); Ohio State University v. Ohio University, 51 USPQ2d 1289, 1294 (TTAB 1999) (estoppel not available against claims of mere descriptiveness or geographic descriptiveness); Ross v. Analytical Technology, Inc., 51 USPQ2d 1269 (TTAB 1999) (laches, acquiescence and estoppel can be asserted against a Trademark Act § 2(c), 15 U.S.C. § 1052(c) claim that mark comprises name of opposer without his consent in view of personal nature of claim with no overriding public interest precluding assertion of equitable defenses); Treadwell’s Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1320 (TTAB 1990) (equitable defenses can be asserted against Trademark Act § 2(a), 15 U.S.C. § 1052(a) claim of "false suggestion of a connection").

 8.   Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969). See also Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 17 F.4th 129, 2021 USPQ2d 1069, at *8-10 (Fed. Cir. 2021) (laches inapplicable in opposition proceeding based on failure to object to earlier registration; confusion not inevitable); TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989)); Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1285 n.4 (TTAB 2008) (comparison of marks for purpose of determining whether the marks are essentially the same under the Morehouse doctrine).

 9.   See Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1285 (TTAB 2008) (doctrine of foreign equivalents does not apply with respect to Morehouse analysis); TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989) (Morehouse defense is unavailable where issue is abandonment, descriptiveness, or fraud); Bausch & Lomb Inc. v. Leupold & Stevens Inc., 1 USPQ2d 1497, 1499 (TTAB 1986) (Morehouse defense inapplicable where opposition based on claims of ornamentation and fraud).

 10.   See Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1738 (TTAB 2001). See also TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313-14 (TTAB 1989) (Morehouse defense is unavailable where issue is abandonment, descriptiveness or fraud).

 11.   See, e.g., KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 72 USPQ2d 1833, 1836 (2004).

 12.   See Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1338 (TTAB 2006) (applicant’s "fair use" defense given no consideration); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1454 (TTAB 1986).

 13.   American Express Marketing & Development Corp. v. Gilad Development Corp., 94 USPQ2d 1294, 1298 (TTAB 2010). See also Research in Motion Limited v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1188 (TTAB 2012) (Board will assess alleged parody as part of the circumstances in determining whether plaintiff has made out its claim).

 14.   See Fed. R. Civ. P. 8(d)(1).

 15.   See IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1953 (TTAB 2009) (Trademark Act § 18, 15 U.S.C. § 1068 claim or defense must be specific enough to provide fair notice to adverse party of restriction being sought); H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1720 (TTAB 2008) (attempt to tack use of mark alleged to be legally equivalent to mark at issue is denied because adverse party not put on notice in pleading that owner of mark would attempt to prove priority through tacking); Fair Indigo LLC v. Style Conscience, 85 USPQ2d 1536, 1538 (TTAB 2007) (elements of each claim should include enough detail to give fair notice of claim); Ohio State University v. Ohio University, 51 USPQ2d 1289, 1292 (TTAB 1999) (primary purpose of pleadings "is to give fair notice of the claims or defenses asserted"); Cf. Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1864 (TTAB 2007) (bald allegations of misrepresentation of source did not provide fair notice); Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (where applicant not given fair notice of opposer’s reliance on registration that issued after filing of complaint, unpleaded registration given no consideration); McDonnell Douglas Corp. v. National Data Corp., 228 USPQ 45, 47 (TTAB 1985) (bald allegations in the language of the statute, did not provide fair notice of basis of petitioner’s Trademark Act § 2(a), 15 U.S.C. § 1052(a) claim).

 16.   See 37 C.F.R. § 2.106(b)(2)  and 37 C.F.R. § 2.114(b)(2); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1940 (Fed. Cir. 2009); Enbridge, Inc. v. Excelerate Energy L.P., 92 USPQ2d 1537, 1540 (TTAB 2009); Asian and Western Classics B.V. v. Selkow, 92 USPQ2d 1478, 1478 (TTAB 2009).

 17.   See Fed. R. Civ. P. 8(d)(2) and (3). Cf. Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696, 1698 (TTAB 1987) (applicant could have raised priority issue in a counterclaim by pleading likelihood of confusion hypothetically notwithstanding the inconsistency of that pleading with its position in the opposition that the marks are not confusingly similar); Home Juice Co. v. Runglin Cos., 231 USPQ 897, 899 (TTAB 1986) (pleading construed as hypothetical pleading of likelihood of confusion which is appropriate where petitioner’s standing is based on its inability to secure a registration, albeit it is the senior user, because the subject registration has been cited as a reference by the examining attorney). Cf. also Taffy’s of Cleveland, Inc. v. Taffy’s, Inc., 189 USPQ 154, 156-57 (TTAB 1975) (fact that petitioner argued before examining attorney that its mark and that of respondent were not confusingly similar does not preclude petitioner from asserting likelihood of confusion as ground for cancellation); Revco, D.S., Inc. v. Armour-Dial, Inc., 170 USPQ 48, 49 (TTAB 1971) (in seeking to cancel on ground of abandonment, plaintiff asserted proper hypothetical pleading of likelihood of confusion as its basis for standing).

 18.   Cf. 37 C.F.R. § 2.133(b).

 19.   See Fed. R. Civ. P. 8(d)(2).

 20.   See McCormick & Co. v. Hygrade Food Products Corp., 124 USPQ 16, 17 (TTAB 1959).

 21.   See 37 C.F.R. § 2.106(b)(3)(i), 37 C.F.R. § 2.106(b)(3)(ii), 37 C.F.R. § 2.114(b)(3)(i), and 37 C.F.R. § 2.114(b)(3)(ii); Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369, 1373 n.3 (Fed. Cir. 2008); Food Specialty Co. v. Standard Products Co., 406 F.2d 1397, 161 USPQ 46, 46 (CCPA 1969); Gillette Co. v. "42" Products Ltd., Inc., 396 F.2d 1001, 158 USPQ 101, 104 (CCPA 1968) (allegedly admitted periods of nonuse by opposer disregarded in absence of counterclaim to cancel registration); Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 USPQ 285, 287 (CCPA 1963) (improper for Board to allow applicant to collaterally attack registration in opposition where, although registration had been directly attacked by applicant in separate petition to cancel, said petition had been dismissed); Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 961 (TTAB 1986); Textron, Inc. v. The Gillette Co., 180 USPQ 152, 153 (TTAB 1973) (defense attacking validity of pleaded registration must be raised by way of cancellation of registration). Cf. Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1884 nn.5 and 12 (TTAB 2006) (a showing of descriptiveness or genericness of part of a mark does not constitute a collateral attack on the registration; however arguments directed to show opposer failed to exercise control over logo mark, where only word mark registration was challenged, constitutes impermissible attack on logo mark). See also Clorox Co. v. State Chemical Manufacturing Co., 197 USPQ 840, 844 (TTAB 1977); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).

 22.   See 37 C.F.R. § 2.133(d); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1287 (TTAB 1998) (applicant’s request raised in reply brief for a restriction of opposer’s registration [beyond applicant’s initial counterclaim to restrict] was untimely as it should have been raised by promptly moving to amend). But see Board of Regents, University of Texas System v. Southern Illinois Miners, LLC, 110 USPQ2d 1182, 1186 (TTAB 2014) (motion to amend to add counterclaims prior to plaintiff’s testimony was granted in prior Board order).

 23.   See 37 C.F.R. § 2.99(h)  and 37 C.F.R. § 2.133(c) . See also Snuffer & Watkins Management Inc. v. Snuffy’s Inc., 17 USPQ2d 1815, 1815 (TTAB 1990).

 24.   See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989).

 25.   See Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1174 (Fed. Cir. 1989).

 26.   See Space Base Inc. v. Stadis Corp., 17 USPQ2d 1216, 1220 (TTAB 1990); Continental Gummi-Werke AG v. Continental Seal Corp., 222 USPQ 822, 825 (TTAB 1984) (motion to strike affirmative defense predicated on same facts alleged in counterclaim granted as representing, in effect, a collateral attack on registration); W. R. Grace & Co. v. Arizona Feeds, 195 USPQ 670, 671 (Comm’r 1977) (motion to strike affirmative defense which allegations formed basis for counterclaim granted since, although Board did not find that applicant was attempting to collaterally attack registration, the affirmative defense was repetitious and unnecessary).

 27.   Trademark Act 43(c)(6)(B), 15 U.S.C. § 1125(c)(6)(B). See also Academy of Motion Picture Arts and Sciences v. Alliance of Professionals & Consultants Inc., 104 USPQ2d 1234 (TTAB 2012).

TBMP 311.02(b)(2)    Specific Affirmative Defenses

Additional cases are provided as a reference addressing the following affirmative defenses: estoppel, [ Note 1.]; "Morehouse" defense, [ Note 2.]; prior judgment, [ Note 3.]; and laches, [ Note 4.]. Cases referencing select other defenses are also provided. [ Note 5.]

NOTES:

 1.   Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (contractual and equitable estoppel); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1884 n.6 (TTAB 2006) (licensee estoppel); Freeman v. National Associaton of Realtors, 64 USPQ2d 1700, 1703-04 (TTAB 2002) (licensee estoppel); Leatherwood Scopes International Inc. v. Leatherwood, 63 USPQ2d 1699, 1702 (TTAB 2002) (licensee estoppel); M-5 Steel Mfg. Inc. v. O’Hagin’s Inc., 61 USPQ2d 1086 (TTAB 2001) (contractual estoppel). Cf. Textron, Inc. v. Gillette Co., 180 USPQ 152, 154 (TTAB 1973) (defense of file wrapper estoppel not available in trademark cases, but since statement in ex parte proceeding may be admitted as possible admission against interest, statement not stricken from answer).

 2.   Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969) (that defendant already owns a substantially similar registered mark for substantially similar goods and/or services such that the second registration (or second registration sought) causes no added injury to the plaintiff). See also O-M Bread Inc. v. U. S. Olympic Committee, 65 F.3d 933, 36 USPQ2d 1041, 1045 (Fed. Cir. 1995) (Morehouse defense). Cf. Performance Open Wheel Racing, Inc. v. United States Auto Club Inc., 2019 USPQ2d 208901, at *11 (TTAB 2019) (Morehouse defense does not apply where the issue is whether the mark is generic); Land O’ Lakes Inc. v. Hugunin, 88 USPQ2d 1957, 1958 (TTAB 2008) (cannot rely upon expired registration for Morehouse defense); Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1286 (TTAB 2008) (Morehouse defense unavailable where mark is transliteration of foreign term); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1884 n.6 (TTAB 2006) (Morehouse defense does not apply where marks in the two registrations being compared are not the same); Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1209 (TTAB 2006) (Morehouse defense fails where goods in the involved registration are clearly different from those in prior registrations), aff’d, 208 F. App’x 886, 887 (Fed. Cir. 2006).

 3.   Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369, 1372 (Fed. Cir. 2008) (claim of trademark invalidity, made before Board in cancellation proceeding, amounted to collateral attack on court’s judgment rendered in first action); Sharp Kabushiki Kaisha v. ThinkSharp Inc., 448 F.3d 1368, 79 USPQ2d 1376, 1379-80 (Fed. Cir. 2006) (res judicata, claim preclusion); International Nutrition Co. v. Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492, 1493 (Fed. Cir. 2000) (res judicata); Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000), (res judicata, claim preclusion); Freki Corp. v. Pinnacle Entertainment, Inc., 126 USPQ2d 1697, 1701 (TTAB 2018) (claim preclusion); NH Beach Pizza LLC v. Cristy's Pizza Inc., 119 USPQ2d 1861, 1863 (TTAB 2016) (issue preclusion may bar re-litigation of a standing determination made in a prior Board proceeding, summary judgment granted); Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1412 (TTAB 2015) (analyzing the defense doctrine of bar in claim preclusion); Stephen Slesinger Inc., v. Disney Enterprises, Inc., 98 USPQ2d 1890 (TTAB 2011) (ownership of the marks at issue established in court proceeding; defendant entitled to summary judgment based on issue preclusion), aff’d, 702 F.3d 640, 105 USPQ2d 1472 (Fed. Cir. 2012), cert. den., 134 S. Ct. 125 (2013); Zoba International Corp. v. DVD Format/LOGO Licensing Corp., 98 USQP2d 1106 (TTAB 2011) (claim preclusion barred petitions to cancel against two registrations but not a third registration; "defendant preclusion" does not apply to facts of case and further discussed in contrast to "plaintiff preclusion"); Boston Chicken Inc. v. Boston Pizza, Inc., 53 USPQ2d 1053, 1055 (TTAB 1999) (judicial estoppel); Treadwell’s Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1321 (TTAB 1990) (claim preclusion, issue preclusion). Cf. Empresa Cubana Del Tabaco v. General Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1063-65 (Fed. Cir. 2014) (neither issue nor claim preclusion barred Board cancellation action); Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1311 (Fed. Cir. 2005) (Board erred in dismissing opposition on res judicata and collateral estoppel grounds where issues and transactional facts arising from prior district court infringement litigation differed from those in opposition proceeding); Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1467-68 (TTAB 2016) (no claim or issue preclusion; judicial estoppel inapplicable); Be Sport, Inc. v. Al-Jazeera Satellite Channel, 115 USPQ2d 1765, 1769 (TTAB 2015) (proposed defense of claim preclusion futile); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (res judicata argument fails because marks at issue in prior proceedings were different); B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1504 (TTAB 2007) (neither claim nor issue preclusion apply where parties are not the same).

 4.   Bridgestone/Firestone Research Inc. v. Automobile Club de l’Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460 (Fed. Cir. 2001). See also National Cable Television Association, Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991) (laches runs from the time action could be taken against the acquisition of trademark rights which flow from registration of mark); Coca-Cola Co. v. Meenaxi Enterprise, Inc., 2021 USPQ2d 709, at *6-7 (TTAB 2021) (claim not barred by laches because respondent did not show prejudice from 3.5-year delay), appeal docketed, No. 21-2209 (Fed. Cir. Aug. 9, 2021); Double Coin Holdings Ltd. v. Tru Development, 2019 USPQ2d 377409, *9-12 (TTAB 2019) (eight-month delay not unreasonable, material prejudice not shown); Schiedmayer Celesta GmbH v. Piano Factory Group, Inc., 2019 USPQ2d 341894, at *9-11 (TTAB 2019) (although delay of over seven years unreasonable, petition to cancel not barred by laches because defendant unable to show material prejudice), aff’d, 11 F.4th 1363, 2021 USPQ2d 913 (Fed. Cir. 2021); TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1414 (TTAB 2018) (where laches defense involves a Supplemental registration, period of delay begins on the date when the petitioner first had knowledge that the registration issued); Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1609-13 (TTAB 2018) (addressing merits of laches defense in cancellation); Ava Ruha Corp. v. Mother’s Nutritional Center, Inc., 113 USPQ2d 1575, 1579-83 (TTAB 2015) (laches available for dilution claim in opposition and cancellation; laches applied to dilution claim); Land O’ Lakes Inc. v. Hugunin, 88 USPQ2d 1957, 1959 (TTAB 2008) (where laches defense based on failure to object to an expired registration, asserted period of delay begins on issue date of prior registration and ends with its expiration); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526, 1530 (TTAB 2008) (no evidence that opposer knew of applicant’s use of its mark in the U.S.); Herbaceuticals Inc. v. Xel Herbaceuticals Inc., 86 USPQ2d 1572, 1575 n.3 (TTAB 2008) (laches is unavailable as an affirmative defense against a claim of fraud); Hornby v. TJX Companies, Inc., 87 USPQ2d 1411, 1419 (TTAB 2008) (defense of laches is available when the rights asserted by a petitioner are personal in nature; laches available against claims of false suggestion of a connection, likelihood of confusion, and dilution); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1116 (TTAB 2007) (respondent’s expansion into new product lines excused petitioner’s delay in filing cancellation; laches defense unavailable); Christian Broadcasting Network Inc. v. ABS-CBN International, 84 USPQ2d 1560, 1572 (TTAB 2007) (laches requires showing of undue delay and prejudice, and will not lie if confusion is inevitable); Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1292 n.14 (TTAB 2007) (defenses of laches, acquiescence or estoppel generally not available in opposition proceeding); Teledyne Technologies Inc. v. Western Skyways Inc., 78 USPQ2d 1203, 1210 n.10 (TTAB 2006) (publication of mark does not provide constructive notice of resultant registration; "in the absence of actual knowledge prior to the close of the opposition period, the date of registration is the operative date for calculating laches"; economic damage may be a direct function of the delay involved; confusion is not inevitable), aff’d, 208 F. App’x 886, 887 (Fed. Cir. 2006); Krause v. Krause Publications, Inc., 76 USPQ2d 1904, 1914 (TTAB 2005) (same); Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1306 (TTAB 2004).

 5.   Spanishtown Enterprises, Inc. v. Transcend Resources, Inc., 2020 USPQ2d 11388, at *4 (TTAB 2020) (lack of capacity to sue); Hu v. TJ Food Services, LLC, 123 USPQ2d 1777, 1779 (TTAB 2017) (lack of Board jurisdiction due to contractual agreement containing arbitration clause); Diaz v. Servicios De Franquicia Pardo’s S.A.C., 83 USPQ2d 1320, 1322 (TTAB 2007) (Board has subject matter jurisdiction to entertain affirmative defense of priority pursuant to Article 7 of the Pan American Convention); Tea Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1887 (TTAB 2006) (holding that certification mark has lost its significance as an indication of geographic source). Cf., Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1338 (TTAB 2006) (applicant’s "fair use" defense given no consideration); Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Ltd., 86 USPQ2d 1283, 1285 n.4 (TTAB 2008) (unclean hands defense unavailable); Great Seats Ltd. v. Great Seats Inc., 84 USPQ2d 1235, 1244 n.10 (TTAB 2007) (defense of unclean hands, even if established, does not deprive petitioner of standing); Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1737 (TTAB 2001) (defendant not entitled to rely on asserted ownership of "family" of marks as defense to Trademark Act § 2(d), 15 U.S.C. § 1052(d) claim).