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?
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-
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TBMP 311.02(b) Affirmative Defenses (June 2015)
TBMP 311.02(b) Affirmative Defenses
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. [Note 1.] 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 2.] 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 3], except that geographic restrictions will be considered and determined by the Board only in the context of a concurrent use registration proceeding. [Note 4.] 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 CFR § 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 5.] 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.
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 start to run from the date of registration, in the absence of actual knowledge before the close of the opposition period. [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-
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 CFR § 2.106(b)(2)(ii) and 37 CFR § 2.114(b)(2)(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 covering 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.
1. See 37 CFR § 2.106(b)(1) and 37 CFR § 2.114(b)(1) ; Fed. R. Civ. P. 8(b).
2. See 37 CFR § 2.106(b)(1) and 37 CFR § 2.114(b)(1) . See also Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422-
See, e.g., with respect to estoppel, 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 Association of Realtors, 64 USPQ2d 1700, 1703-
See, e.g., with respect to “Morehouse” defense, 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-
See, for example, with respect to prior judgment, 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); 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); 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 International, 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. 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); 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).
See, for example, with respect to laches, 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); 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); 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-
See, for example, with respect to other defenses, 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. e.g., Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1338 (TTAB 2006) (“family” of marks argument rejected); 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, 1738 (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).
3. See 37 CFR § 2.133(a). Cf. 37 CFR § 2.133(b) and 37 CFR § 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).
4. See 37 CFR § 2.99(h) and 37 CFR § 2.133(c). See also Snuffer & Watkins Management Inc. v. Snuffy’s Inc., 17 USPQ2d 1815, 1816 (TTAB 1990).
5. See 37 CFR § 2.133(a) and 37 CFR § 2.133(b). See also Embarcadero Technologies Inc. v. RStudio Inc., 105 USPQ2d 1825, 1828-
6.See 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-
7. See 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-
8. Morehouse Manufacturing Corp. v. J. Strickland and Co., 407 F.2d 881, 160 USPQ 715, 717 (CCPA 1969); TBC Corp. v. Grand Prix Ltd., 12 USPQ2d 1311, 1313 (TTAB 1989).
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 USPQ2d1311, 1313-
11. See, e.g., KP Permanent Make-
12.See Truescents LLC v. Ride Skin Care LLC, 81 USPQ2d 1334, 1338 (TTAB 2006); 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 CFR § 2.106(b)(1) and 37 CFR § 2.114(b)(1); 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 (TTAB2009).
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-
18. Cf. 37 CFR § 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 CFR § 2.106(b) and 37 CFR § 2.114(b) ; 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-
22. See 37 CFR § 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 CFR § 2.99(h) and 37 CFR § 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-
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).
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