UNITED STATES PATENT AND TRADEMARK OFFICE

THIS OPINION IS NOT A Trademark Trial and Appeal Board

PRECEDENT OF THE TTAB P.O. Box 1451
Alexandria, VA 22313-1451

coggins Mailed: August 30, 2010

Opposition No. 91185180

Tatuaje Cigars, Inc.

v.

Nicaragua Tobacco Imports, Inc.

Before Walters, Grendel, and Bergsman,

Administrative Trademark Judges.

By the Board:

This case comes up on opposer's second motion for summary

judgment (filed December 18, 2009) on applicant's pleaded

defense of unclean hands.

Background

Opposer filed a notice of opposition against the

registration of applicant's mark on the ground of priority and

likelihood of confusion pursuant to Section 2(d) of the

Trademark Act of 1946, 15 U.S.C. § 1052(d). In the notice of

opposition, opposer asserted ownership of Registration No.

2836665 for the mark TATUAJE, in typed form, for "cigars," in

Class 34.

As an affirmative defense in the answer, applicant

pleaded, inter alia, that:

Opposition No. 91185180

On information and belief, [o]pposer uses packaging

for its goods that include the mark "TATUAJE" along
with and in proximity to markings that are
deceptive or deceptively misdescriptive regarding
the geographic origin, character, quality,
composition, and/or source of those goods, and is
therefore barred from relief by having unclean
hands.

On January 28, 2009, opposer filed a motion for summary

judgment on the sole pleaded ground of priority and likelihood

of confusion. In an order dated September 17, 2009, the Board

granted opposer's motion for summary judgment, in part, as to

standing, priority, the similarity of parties' goods, the

channels of trade, and the classes of purchasers.

In the September 17, 2009 order, the Board noted that the

parties had devoted much of their arguments in their briefs (on

the first motion for summary judgment) to discussing each

other's conduct, unclean hands, and fraud. The Board also

noted that "a discussion of opposer's use of other terms on

packaging for opposer's goods appears to be immaterial to this

proceeding." (Order at pp. 4-5.) The Board resumed proceedings

and reset the trial schedule. Opposer then filed the second

motion for summary judgment.

Motion for Summary Judgment

As the Board stated in the September 17, 2009 order, a

party is entitled to summary judgment when it has demonstrated

that there are no genuine issues as to any material facts, and

that it is entitled to judgment as a matter of law. Fed. R.

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Opposition No. 91185180

Civ. P. 56(c). The evidence must be viewed in a light

favorable to the nonmoving party, and all justifiable

inferences are to be drawn in the nonmovant's favor. Opryland

USA Inc. v. The Great American Music Show, Inc., 970 F.2d 847,

23 USPQ2d 1471 (Fed. Cir. 1992).

By way of its second motion for summary judgment, opposer

argues that it is entitled to judgment as a matter of law on

applicant's affirmative defense of unclean hands.

Specifically, opposer argues that the misconduct alleged by

applicant (i.e., opposer's use of markings other than the

TATUAJE mark) is unrelated to opposer's pleaded ground of

priority and likelihood of confusion with opposer's TATUAJE

mark.

In opposition to the motion, applicant argues that opposer

developed its trademark rights in the pleaded TATUAJE mark

while using other deceptive or deceptively misdescriptive marks

adjacent to and in conjunction with the TATUAJE mark; during

examination of the application which matured into Registration

No. 2836665, opposer submitted a specimen which did not show

use of the other deceptive or deceptively misdescriptive marks

even though opposer was at the time using those other marks on

other packaging for its goods; and during the pendency of this

opposition proceeding, opposer filed a new application for

registration of the mark TATUAJE in a bad faith attempt to

create further dispute between the parties.

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Opposition No. 91185180

Applicant supported its motion with various exhibits

including photographs of one of opposer's cigar boxes and the

specimen opposer submitted during examination of the

application which matured into Registration No. 2836665.

As noted above, opposer pleaded ownership of Registration

No. 2836665 for the mark TATUAJE, in typed form for cigars.

Opposer's registered mark is entitled to all of the

presumptions of Trademark Act Section 7(b), 15 U.S.C. §

1057(b), including its validity and opposer's exclusive right

to use the registered mark in commerce on the goods specified

in the registration. As a matter of procedure, we note that in

the absence of a counterclaim, applicant may not attack the

validity of the registration. See Gor-Ray Limited v. Garay &

Co., Inc., 167 USPQ 694, 695 (TTAB 1970); and Trademark Rule

2.106(b)(2)(ii), 37 C.F.R. § 2.106(b)(2)(ii). Moreover, as a

matter of substance, even if applicant had filed a

counterclaim, applicant's allegations do not support any

cognizable ground for cancelling opposer's pleaded

registration. See Trademark Act Section 14, 15 U.S.C. § 1064.

Importantly, we note that applicant's affirmative defense

of unclean hands does not pertain to opposer's pleaded

registered mark TATUAJE or to opposer's claim of likelihood of

confusion. Rather, the proposed defense alleges misconduct in

connection with opposer's alleged use and registration of other

marks or designations and the propriety of the specimen

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Opposition No. 91185180

submitted in connection with the pleaded registration. The

defense of unclean hands must be related to opposer's claim

and, therefore, applicant has not asserted a viable affirmative

defense of unclean hands. See Tony Lama Company, Inc. v.

Anthony Di Stefano, 206 USPQ 176 (TTAB 1980). See also VIP

Foods, Inc. v. V.I.P. Food Products, 200 USPQ 105 (TTAB 1978),

and cases cited therein.

Opposer's claim does not depend on use of any mark other

than the TATUAJE mark as shown in Registration No. 2836665 and,

therefore, opposer's alleged use of other marks or

designations, the legality of such use, or whether such other

marks or designations were shown on opposer's specimens during

the prosecution of its underlying application has no bearing

upon the issue of likelihood of confusion with TATUAJE. We

note that use of multiple marks in relation to goods is not

precluded under the law. See General Foods Corporation v. Ito

Yokado, Ltd., 219 USPQ 822 (TTAB 1983). Packaging for a

product may contain multiple marks. See Safe-T Pacific Company

v. Nabisco, Inc., 204 USPQ 307, 315 (TTAB 1979).

As to applicant's argument that opposer's conduct during

this opposition proceeding has been inequitable because opposer

filed a new application for its TATUAJE mark, we note, first,

that the pleaded affirmative defense makes no reference to such

conduct and, second, that the conduct is unrelated to the

ground for opposition. Moreover, there is no prohibition

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against filing an intent-to-use application for a mark already

used in commerce. According to Office practice, an applicant

filing under Section 1(b) of the Trademark Act may assert dates

of use that are earlier than the filing date of the application

in an amendment to allege use or a statement of use. See TMEP

§ 903. Further, to the extent that applicant views opposer's

later-filed application as an attempt to induce a prospective

refusal under Section 2(d) of the Trademark Act, based on

applicant's TATTOO application which is the subject of this

opposition proceeding, or that applicant emphasizes the fact

that the Examining Attorney did not cite applicant's TATTOO

application against opposer's later-filed application, we

remind applicant that the Board is not bound by an Examining

Attorney's prior determination as to registrability. See

McDonald's Corp. v. McClain, 37 USPQ2d 1274 (TTAB 1995).

Upon careful consideration of the arguments and evidence

presented by the parties, and drawing all inferences with

respect to the motion in favor of applicant as the nonmoving

party, we find that there is no genuine issue of material fact

in regard to applicant's affirmative defense of unclean hands,

and opposer is entitled to judgment in its favor on this

defense. Even if we were to deny the instant motion for

summary judgment in order to give applicant a chance to prove

the pleaded allegations at trial, the allegations would not be

material or sufficient to carry applicant's burden of proving

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the affirmative defense of unclean hands. Accordingly,

opposer's second motion for summary judgment is granted as to

applicant's affirmative defense of unclean hands.1

Procedural Note

Inasmuch as the Board has determined two summary judgment

motions in this case, the parties may not file another motion

for summary judgment. This case will proceed to trial on the

remaining issue of the similarity of the marks.

Schedule

Proceedings are resumed. Discovery is closed. Trial

dates are reset on the following schedule.

Plaintiff's Pretrial Disclosures 9/27/2010

Plaintiff's 30-day Trial Period Ends 11/11/2010
Defendant's Pretrial Disclosures 11/26/2010
Defendant's 30-day Trial Period Ends 1/10/2011
Plaintiff's Rebuttal Disclosures 1/25/2011
Plaintiff's 15-day Rebuttal Period
Ends 2/24/2011

In each instance, a copy of the transcript of testimony

together with copies of documentary exhibits, must be served

on the adverse party within thirty days after completion of

the taking of testimony. Trademark Rule 2.l25. Briefs

shall be filed in accordance with Trademark Rules 2.128(a)

1
The parties are reminded that evidence submitted in support of
or in opposition to a motion for summary judgment is of record
only for consideration of that motion. Any such evidence to be
considered at final hearing must be properly introduced during
the appropriate trial period. See, for example, Levi Strauss &
Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).

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and (b). An oral hearing will be set only upon request

filed as provided by Trademark Rule 2.l29.