Tuesday, December 02, 2008

Precedential No. 51: TTAB Dismisses Morehouse and Laches Defenses, Denies Summary Judgment in 2(d) Opposition

In a quasi-procedural precedential ruling, the Board denied Applicant Jim Hugunin's motion for judgment on the pleadings (which the Board treated as a motion for summary judgment in view of Hugunin's submission of evidence outside the pleadings). Once again the toothless tiger known as the Morehouse defense was rejected by the Board, this time because Applicant's prior registration for LAND O LAKES had expired. As to his laches defense, Opposer Land O' Lakes churned up enough factual issues to preclude the issuance of summary judgment. Land O' Lakes, Inc. v. Hugunin, 88 USPQ2d 1957 (TTAB 2008) [precedential].

The Morehouse defense: The never-popular Morehouse defends stands for the proposition that, as a matter of law, an opposer cannot be damaged by a second registration when the applicant already has an existing, unchallenged registration of the same mark for the same goods. [TTABlog query: why would applicant want a second, identical registration anyway?] Hugunin's problem was that his first registration had expired, so he couldn't claim that a new registration would cause no additional damage to Opposer.

Hugunin feebly claimed that, although his registration expired on June 7, 2006, the PTO didn't enter the cancellation until March 10, 2007, by which time Hugunin had filed his new application. The Board pointed out, however, that the registration was dead on June 7, 2006, regardless of when the PTO "undertook the ministerial function of entering the cancellation into the USPTO database."

Laches: Hugunin claimed that laches applies because Land O' Lakes did not object to his earlier registration. The Board noted that the period of existence of the now-expired registration could be considered part of the delay. However, Hugunin had to show that he suffered "material prejudice as a result of the delay," and that he failed to do:

"[A]pplicant has not shown the absence of genuine issues of material fact as to whether opposer unreasonably delayed in failing to object to the prior registration during the time that it was in existence, or whether applicant suffered material prejudice as a result of the alleged delay."

Moreover, the named registrant of the earlier registration was "Land O Lakes Tackle Company," not Mr. Hugunin. A genuine issue existed as to whether Hugunin is a successor in interest to that registrant. And more factual issues arose as to Hugunin's claim that he sent a cease-and-desist letter to LOL in December 2000.

The Board therefore denied Hugunin's motion and set a new trial schedule.

Text Copyright John L. Welch 2008.


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