Friday, March 09, 2012

TTAB Knocks Out Ten Affirmative Defenses in SF Giants' Opposition to SAN FRANCISCO CALIFORNIA Design Mark

Bully for the San Francisco Giants! Claiming likelihood of confusion with their many Stylized SAN FRANCISCO marks, the Bay Area Batsmen are opposing registration of the mark shown immediately below, for "Aprons; Bandanas; Caps; Hooded sweatshirts; Jackets; Sweat shirts; T-shirts." The Giants moved to dismiss 10 of 17 affirmative defenses pleaded by Applicant Gogo, and the Board granted the motion. San Francisco Baseball Associates L.P. v. Gogo Sports, Inc., Opposition No. 91203112 (March 2, 2012). Under FRCP 12(f), the Board may strike from a pleading any insufficient or impermissible defense, or any redundant, immaterial, impertinent or scandalous matter. Although not favored, motions to strike are granted "in appropriate instances." The Board found it a no-go for the following affirmative defenses of Gogo:
  • No. 1. Unclean Hands: Gogot failed to plead with specificity the conduct that supposedly would constitute unclean hands
  • Nos. 5 and 6. Laches/undue delay: These are not defenses that are available in an opposition proceeding.
  • No. 9. Fair use: Not available where, as here, the party asserting the defense is using its mark as a trademark in commerce.
  • No. 10. First Amendment: The Board lacks jurisdiction to consider constitutional claims.
  • No. 11. Failure to mitigate damages: Applies to claims of trademark infringement and unfair competition, over which Board has no jurisdiction.
  • No. 14. No impairment or harm to famous mark: Irrelevant, since Opposer did not plead dilution.
  • No. 15. No false designation of origin: Irrelevant because Opposer did not plead such a claim, and the Board would not have jurisdiction over it anyway.
  • Nos. 16 and 17. No trademark infringement or unfair competition: Inapplicable because the Board lacks jurisdiction over such claims, and Opposer has not asserted such claims anyway.
So, you may wonder, what are the seven affirmative defenses that remain standing? Abandonment, lack of secondary meaning, descriptiveness, good faith [huh?? - ed.], genericness, no famous mark [what?? - ed.], and no inherent distinctiveness [a defense? - ed.]. It seems to me that the Giants might have taken a swing at a few of these remaining defenses as well. 

TTABlog comment: Is it worth the expense and effort to file a motion to knock out bogus affirmative defenses? Maybe it's useful to rattle and discourage the other side. Sort of like a high hard one to push a batter away from the plate? 

Text Copyright John L. Welch 2012.


At 11:19 AM, Anonymous Anonymous said...

The Board now routinely strikes these affirmative defenses on its own motion during a discovery conference in which Board participation is requested.

Even if these are routinely stricken I would suspect most counsel will still include them "just because."

At 12:04 PM, Anonymous Alex B said...

I don't know about knocking out affirmative defenses but on a related note, the one time I thought it was useful to strike allegations in a Notice of Opposition was when the opposer alleged that my client committed fraud before the USPTO and a reason for the fraud was something I stated in an OA response arguing a 2(d) refusal. I had acquired the case mid-prosecution due to a conflict of interest with the filing attorneys.

Anyway, the motion worked to strike the fraud allegation (but not another allegation in the motion) and that was sufficient to get the opposer to drop the opposition because that apparently was their whole steam to oppose. Of course, I was helped by the issuance of the CAFC Bose decision while the motion was pending before the Board.

At 1:24 PM, Anonymous Anonymous said...

Alex, I agree with being vigilant about seeking to dismiss or strike overreaching allegations in the Notice. Opposers will sometimes allege the most irrelevant, puffed-up, or scandalous things just to try to scare you off, and the Board is usually good about dismissing or striking that junk from the Notice (thus avoiding discovery on the same).


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