Precedential No. 19: Laches Based on Expired Registration Saves EVOGUE from Part of VOGUE's Confusion and Dilution Claims

The Board rendered a split decision in this opposition to registration of the mark EVOGUE for a wide variety of consumer electronic devices and accessories, tossing out Opposer Advance Magazine's Section 2(d) claim but partly upholding its dilution claim, based on the registered mark VOGUE for, inter alia, magazines and mobile phone software. Laches barred both claims as to certain of the goods in light of Applicant Fashion Electronics' ownership of an expired registration for EVOGUE for substantially the same goods. As to the remaining goods, the Board found confusion unlikely but dilution-by-blurring likely. Advance Magazine Publishers, Inc. v. Fashion Electronics, Inc., 2023 U.S.P.Q.2d 753 (T.T.A.B. 2023) [precedential] (Opinion by Judge Karen Kuhlke).

The Board observed that laches generally does not apply in opposition proceedings, but a laches defense “may be based upon opposer’s failure to object to an applicant’s earlier registration of the same mark for substantially the same goods.” Aquion Partners L.P. v. Envirogard Prods. Ltd., 43 U.S.P.Q.2d 1371, 1373 (T.T.A.B. 1997) (citing Lincoln Logs Ltd. v. Lincoln Pre-cut Log Homes, Inc., 971 F.2d 732, 23 U.S.P.Q.2d 1701, 1703 (Fed. Cir. 1992) (citing Copperweld Corp. v. Astralloy-Vulcan Corp., 196 U.S.P.Q. 585, 591 (T.T.A.B. 1971))). An “opposer’s failure to object to applicant’s prior registration during the existence thereof [is] not wiped out by the expiration of the registration, albeit the period of delay end[s] with the expiration of that registration . . . .” 

Because there was no evidence that Advance knew of Fashion’s use of the EVOGUE mark prior to the publication of the application that issued as the prior registration, the laches period began to run on the issue date of January 15, 2008 (See Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 2020 U.S.P.Q.2d 0914, at *9 (T.T.A.B. 2020), affirmed in relevant part, vacated in part, remanded, 17 F.4th 129, 2021 U.S.P.Q.2d 1069, at *3 (Fed. Cir. 2021)) and continued until August 17, 2018, when the registration was cancelled.

The Board noted that delay of “as little as three and a half years have supported a finding of laches when coupled with sufficient prejudice to a registrant. See Teledyne Techs., Inc. v. W. Skyways, Inc., 78 U.S.P.Q.2d 1203, 1211 (T.T.A.B. 2006) (finding that a delay of three years, eight months supported a laches defense to a cancellation based on Section 2(d) likelihood of confusion), aff’d, 208 F. App’x 886 (Fed. Cir. 2006); Ava Ruha, 113 U.S.P.Q.2d at 1581 (finding a laches defense to cancellation supported by a delay of three years and two months); TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 U.S.P.Q.2d 1409, 1414 (T.T.A.B. 2018) (four years and two months “within the realm of time found to be sufficient for purposes of laches.”). The Board found the length of Advance's delay to be unreasonable and supportive of a defense of laches.

“To prove laches, in addition to showing unreasonable delay, an applicant must show it has suffered material prejudice as a result of the delay." Aquion Partners, 43 U.S.P.Q.2d at 1373. The Board observed that “economic prejudice to the defendant may ensue whether or not the plaintiff overtly lulled the defendant into believing that the plaintiff would not act, or whether or not the defendant believed that the plaintiff would have grounds for action.” Bridgestone/Firestone, 58 U.S.P.Q.2d at 1463. “The question is whether there has been a change in the economic position [of the applicant] . . . during the period of delay.” Ava Ruha, 113 U.S.P.Q.2d at 1583 (citation omitted). “Economic prejudice may arise from investment in and development of a trademark, as well as the continued commercial use and economic promotion of a mark over a prolonged period.” Bridgestone/Firestone, 58 U.S.P.Q.2d at 1463.

Applicant continued to invest in and develop its trademark and continued commercial use and economic promotion of its mark over a prolonged period when the mark was on the Principal Register. Loss of Applicant’s rights in EVOGUE resulting from its inability to re-register the mark for its various cell phone accessories would result in economic prejudice and would be a detriment to Applicant due to the delay. Ralston Purina Co. v. Midwest Cordage Co., 373 F.2d 1015, 153 U.S.P.Q. 73, 76 (CCPA 1967) (long delay may provide basis for laches even without expansion of trade “… each day sees some incremental aggrandizement of good will— each advertising dollar expended adds in some sense to registrant’s equity.”).

The Board concluded that Fashion had proven laches vis-à-vis the goods listed in the current application that are "substantially the same" as those of the cancelled registration.

Likelihood of Confusion: With respect to the goods that were subject to the laches defense, the question, then, was whether confusion was inevitable, since a laches defense may be overcome by proof of inevitable confusion. “If confusion is inevitable, any private injury to the defendant is outweighed by the public’s interest in preventing confusion.” Brooklyn Brewery, 2021 U.S.P.Q.2d 1069, at *8. A showing of inevitable confusion is subject to a stringent standard that is satisfied only where both the goods and marks are nearly identical." See, for example, In re Nat’l Distillers & Chem. Corp., 297 F.2d 941, 132 USPQ 271 (CCPA 1962) (finding differences between MARQUES DEL MERITO and MERITO for the non-identical goods wine and rum were “sufficient to raise a doubt as to the likelihood of confusion, mistake or deception of purchasers arising from the common use of the word MERITO”).

Comparing the marks at issue, the Board found them to be “similar for purposes of likely confusion but not so similar as to support a finding of inevitable confusion.” Moreover, even if the marks were considered “nearly identical,” the differences in the goods precluded a finding of inevitable confusion.

As to the goods not covered by the prior registration - battery chargers, speaker and stereo stands, and wireless speakers - Advance argued that accessories such as protective cases for electronic devices are featured in its media, but the Board pointed out that these goods are displayed with third-party marks. There was no evidence that Advance’s downloadable software is related to Fashion’s electronic goods.

And so, the Board dismissed Advance’s likelihood of confusion claim in its entirety.

Likelihood of Dilution: As noted, in the context of Section 2(d), a laches defense may be overcome by proof of inevitable confusion. Dilution, however, does not involve confusion of the public, “but rather provides extraordinary protection to owners of “the select class of marks – those with such powerful consumer association that even non-competing uses can impinge on their value.” Toro, 61 U.S.P.Q.2d at 1179 (quoting Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 51 U.S.P.Q.2d 1801, 1805 (9th Cir. 1999)). See TCPIP Holding Co. v. Haar Commc’ns. Inc., 244 F.3d 88, 57 U.S.P.Q.2d 1969, 1975 (2d Cir. 2001) (“The Dilution Act offers no benefit to the consumer public—only to the owner.”); Pharmacia Corp. v. Alcon Labs., Inc., 201 F. Supp.2d 335, 381 n.17 (D.N.J. 2002) (“Dilution does not implicate any public interest against consumer deception because, by definition, it protects only a trademark owner’s private interest.”).

Therefore, with regard to the goods identified in Fashion’s prior registration, laches is a complete defense to Advance’s dilution claim. With regard to Fashion’s other goods, however, the story had a different ending.

There is no question that VOGUE is a famous mark, that VOGUE goods and services are widely used and recognized by a large percentage of the United States population, or that Opposer’s VOGUE mark is distinctive. This was the case prior to Applicant’s proven date of first use of its mark. Moreover, there is no evidence that any United States marks come as close to VOGUE as Applicant’s EVOGUE mark. This impairs the distinctiveness of Opposer’s previously registered mark. In view thereof, we find dilution by blurring.

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TTABlogger comment: Nicely untangled by the Board. So an expired registration may have some value after all.

Text Copyright John L. Welch 2023.