Precedential No. 8: TTAB Strikes "Trademark Bullying" Affirmative Defense in DOOR DABZ Opposition
Trademark bullies breathed a sigh of relief when, in this opposition to registration of the mark shown below for delivery of medical cannabis via car service, the Board rejected Applicant Greenerside's affirmative defense of unclean hands. Opposer DoorDash alleged likelihood of confusion with eight registered DOORDASH marks for various goods and services, including food delivery. Greenerside asserted that DoorDash has misused its trademarks in a "longstanding and habitual practice of trademark bullying" by opposing a "significant number of applications" on "dubious, weak or exaggerated" grounds. The Board granted DoorDash's motion to strike that defense. DoorDash, Inc. v. Greenerside Holdings, LLC, 2024 USPQ2d 935 (TTAB 2024) [precedential].
FRCP 12(f)(2), in pertinent part, allows the Board to strike from a pleading "any insufficient or impermissible defense." The Board pointed out that "[a]n unclean hands defense must be supported by specific allegations of misconduct by a plaintiff that, if proved, would prevent the plaintiff from prevailing on its claim." Of course, the misconduct must be related to plaintiff's claim.
The Trademark Act does not refer to “trademark bullying” explicitly or even implicitly. Rather, it provides for a trademark owner to protect its mark from confusing uses that may infringe upon an owner’s rights through court litigation, and for parties who believe they would be damaged by the registration of a mark on the Principal Register to oppose or petition to cancel such registration before the Board.
Courts have awarded sanctions in trademark cases as a result of "over-aggressive trademark enforcement" accompanied by no reasonable basis for recovery. Greenerside argued essentially that DoorDash's Section 2(d) claims "overreach" and therefore constituted unclean hands.
The Board has previously considered assertions of "unclean hands" based on "overzealous enforcement" but found that this defense "does not apply to a registrant "seek[ing] to protect its rights in its registered marks, and preclud[ing] the registration of what it believes to be a confusingly similar mark."
Here, the Board found that DoorDash is "merely exercising its right to protect its marks." The Board observed:
A defense, as with any pleading, must contain sufficient factual matter to give rise to a particular defense. *** There must be more than threadbare recitals supported by conclusory statements. *** Applicant’s mere characterization of Opposer’s prior opposition activity as "bullying," or assertion of "dubious, weak or exaggerated" claims, does not constitute a sufficient allegation of facts to support an unclean hands defense.
And so, the Board granted the motion to strike and, "as the allegations do not support the pleaded affirmative defense," denied Greenerside the opportunity to re-plead.
Read comments and post your comment here.
TTABlogger comment: The reason for denying Greenerside the right to re-plead seems strange to me. I can see the Board saying that Greenerside tried twice and that's enough. But saying that its allegations fell short seems like a reason to consider the possibility of re-pleading.
Text Copyright John L. Welch 2024.
posted by John L. Welch @ 6/03/2024
5 comments
5 Comments:
Foreclosure here appears to be too harsh and without basis. It establishes if not reinforces the notion of bullying backed by board behavior. These exceptionally harsh and premature decisions by members, then, buttoned up, gift wrapped and shelved as precedential, have yet to favor smaller marks. Large budget marks like DoorDash here have traditionally benefited from a high frequency advantage.
Agree on the foreclosure issue. It's too harsh. That being said, the value of the affirmative defense was made - the claim of trademark bullying.
I agree with Padraic. With the exception of maybe one way too common plaintiff that we are all familiar with, I have seen little receptiveness by the Board to any argument by a defendant that an opposer or petitioner is overreaching, opposing or petitioning in bad faith and applying a 13th Dupont Factor in favor of a defendant despite seeing many cases where that would have been appropriate, including where the frequent opposer's history was noticeably devoid of oppositions against larger competitors adopting a similar mark.
The conclusion is poorly worded, but based on the rest of the order, I believe she's saying that repleading would be futile since the theory is legally untenable. A registrant asserting its rights against a mark it feels is confusingly similar cannot alone constitute unclean hands.
A harsh decision indeed. However, where a defence such as that is advanced it has to be supported at that time by proper particulars and factual evidence.
Bob Kelson
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