Wednesday, August 15, 2007

Precedential No. 47: TTAB Dismisses Cancellation Petition on Laches and Acquiescence Grounds

In a precedential ruling, the Board dismissed a petition for cancellation of a registration for the standard character mark ABS-CBN for telephone calling card services and television broadcasting services, upholding Respondent's affirmative defenses of laches and acquiescence as to the television services, and finding the mark ABS-CBN for telephone calling card services not likely to cause confusion with Petitioner's mark CBN for television broadcasting and Christian evangelical ministerial services. Christian Broadcasting Network, Inc. v. ABS-CBN Int'l, 84 USPQ2d 1560 (TTAB 2007) [precedential].

Likelihood of confusion: The Board began its du Pont analysis by ruling that Petitioner had failed to establish a family of CBN marks, and further that, in any event, the ABS-CBN mark would not be seen as a member of such family. However, there was some good news for Petitioner: the Board found the mark CBN to be famous for television broadcasting and evangelical services, and entitled to a wide scope of protection.

As to Respondent's telephone calling card services, the Board ruled that, despite the fame of the CBN mark, confusion was not likely. There was simply no evidence regarding the similarity of the services or the channels of trade. The differences in the services and the marks "more than offset the fame of petitioner's CBN service mark and, therefore, serve to negate any likelihood of confusion."

With regard to broadcasting services, however, the Board found confusion likely. "The similarities of the marks, the services, the channels of trade, and classes of television viewers are sufficient to persuade us that the use of ABS-CBN ... so closely resembles the mark CBN ... as to be likely to cause confusion."

Laches and acquiescence: Turning to the affirmative defenses, the Board noted that proof of laches requires an unreasonable delay coupled with prejudice. The laches defense (and the acquiescence defense as well) will bar a Section 2(d) petition for cancellation unless confusion is inevitable.

Here, Petitioner had constructive notice of the registration as of the issue date of March 28, 2000, and had actual knowledge of respondent's use of the ABS-CBN mark in 2001 when Petitioner contracted with Respondent through its subsidiary, CBN Asia. The petition for cancellation was filed on March 24, 2005, nearly five years after the registration issued.

The Board found that, in the context of this case, the period of delay was unreasonable, based both on Petitioner's knowledge and on its testimony that "it purportedly actively policed its mark." Petitioner's claim of lack of knowledge was "implausible," since petitioner was broadcasting on respondent's network and the respective marks of the parties "often appeared on successive screen shots."

Petitioner argued that Respondent had not shown any actual harm from the delay, but the Board observed that prejudice "may be as simple as the development of goodwill built around a mark during petitioner's delay." Respondent had continued the promotion and use of its mark during the delay period, and grew its distribution network from 300-400 dealers to more than 70,000.

As to acquiescence, the Board noted that Petitioner had contracted with Respondent to broadcast its programming over Petitioner's network. Petitioner never objected to use of the ABS-CBN service mark, and its silence constituted acquiescence.

Finally, the Board ruled that confusion was not inevitable between the ABS-CBN mark and Petitioner's CBN mark. Although the services are virtually identical, the marks are not. In addition, there have been no incidents of actual confusion during the thirteen years of concurrent use of the involved marks.

And so, the Board dismissed the petition.

Text Copyright John L. Welch 2007.


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