Unpleaded Morehouse Defense Sacked by Terry Hoage Vineyards

Former NFL footballer Terry Hoage triumphed in this Section 2(d) cancellation proceeding aimed at a registration for the mark TH, in standard character form, for wines. The Board found the mark likely to cause confusion with Petitioner's previously used and registered mark TH & Design (shown below) for wine. Registrant's last minute Morehouse defense was a feeble Hail Mary pass that fell incomplete. Serine-Cannonau Vineyard, Inc. dba Terry Hoage Vineyards v. Viña Undurraga S.A., Cancellation No. 92053854 (October 16, 2015) [not precedential].

Although Petitioner owns a registration for its TH Design mark, it still had to prove priority (unlike in an opposition proceeding when the opposer relies on a registration). Here, Respondent relied on the priority filing date of its underlying Chilean registration, September 14, 2007. Terry Hoage testified that he began using the TH Design mark in 2004, thereby establishing priority.

With the goods being identical, the Section 2(d) question came down to the marks. The Board found the marks to be highly similar in sound, meaning, and overall commercial impression.

Although the letters in Petitioner’s mark are highly stylized, we find that consumers would recognize them to represent the initials "th," which Respondent did not dispute. In addition, Respondent’s mark is not limited to any particular display and could appear in stylization similar to Petitioner’s mark.

Respondent, in its two-page brief, asserted that Petitioner would not be damaged by the continued registration of its mark because Respondent owns a second registration, for the mark TH TERROIR HUNTER. That argument constituted a prior registration defense based upon Morehouse Mfg. Corp. v. J. Strickland & Co., 160 USPQ 715, 717 (CCPA 1969). The Morehouse defense (which may be asserted only in inter partes proceedings) "is based on the principle that an opposer or petitioner cannot be further 'damaged' within the meaning of the Trademark Act by registration of a mark for particular goods or services if the defendant owns an existing registration for the same or substantially identical mark for the same or substantially identical good." The defense is available when the existing registration is "for essentially the same mark for essentially the same goods or services as the challenged registration." [i.e., almost never - ed.]

Respondent had two major problems. First, it did not plead a Morehouse defense, nor was the issue tried by consent. Thus the defense was not available as a procedural matter. Second, in any case, the defense would not apply here because Respondent's two registered marks are not essentially the same.

Finding confusion likely, the Board granted the petition for cancellation.

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TTABlog comment: As I said in 2008, the Morehouse defense is about as useful as a one-legged man at an arse-kicking contest. It only applies when one already owns a virtually identical registration and therefore doesn't need another registration. Maybe it should be called the "Lesshouse defense" or the "Morehouse non-defense."

Text Copyright John L. Welch 2015.