Aachi Spices & Foods v. Raju

• Decision Date: 13 September 2016
• Docket Number: 92058629
• Court: Trademark Trial and Appeal Board
• Parties: Aachi Spices & Foods v. Kalidoss Raju

Aachi Spices & Foods v. Kalidoss Raju

No. 92058629

United States Patent and Trademark Office, Trademark Trial and Appeal Board

September 13, 2016

This Opinion is not a Precedent of the TTAB

Hearing: August 31, 2016

M Scott Alprin and Nicholas T. Santucci of Alprin Law Offices P.C., for Aachi Spices & Foods.

Davasena Reddy of HM Law Group LLP, for Kalidoss Raju.

Before Bergsman, Lykos and Greenbaum, Administrative Trademark Judges.

OPINION

Bergsman, Administrative Trademark Judge:

Kalidoss Raju ("Respondent") has registered the mark AACHI AAPPAKADAI and design, shown below, for "restaurant and catering services, " in Class 43.^[1]

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In his application, Respondent provided the following translation statement: "The English translation of AACHI AappaKadai in the mark is Grandma Aappam shop." Respondent also explained, in his application, that "[t]he word AAPPA comes from the tamil [sic] word "aappam" and describes an Indian type flat crepe."^[2] Thus, during the prosecution of his application for registration, the Trademark Examining Attorney required Respondent to disclaim the exclusive right to use "AappaKadai."

Aachi Spices & Foods ("Petitioner") petitioned to cancel Respondent's mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Respondent's mark as used in connection with restaurant and catering services so resembles Petitioner's previously used and registered mark AACHI for a wide variety of food items as to be likely to cause confusion. Petitioner pleaded ownership of the two registrations listed below for the mark AACHI, in standard character form:

1. Registration No. 3983355 for the goods listed below:

Jellies and jams; processed peanuts; pickles; potato chips and potato crisps; ghee; dairy products excluding ice cream, ice milk and frozen yogurt; milk and milk products excluding ice cream, ice milk and frozen yogurt, in Class 29; and Masala powder and spices, in Class 30.^[3]

2. Registration No. 4077412 for the goods listed below:

Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruit and vegetables; fruit sauces, namely, cranberry sauce and applesauce; fruit chips; eggs; edible oil; coconut oil and fat; coconut powder, in Class 29; and

Turmeric, flour, preparations made from cereals, namely, Indian food varieties prepared from cereals, including idlis, dosas, vadas, bondas, and bajjis; mustard; rice; masala rice for biriyani, and other spices for meat dishes of India, namely masala powder and spices for meat dishes such as mutton biriyani, mutton curry, mutton chops, mutton fry, mutton chukka, chicken biriyani, chili chicken, chicken fry, chicken lollipop, grilled chicken, pepper chicken; asafetida; chili powders; appalum andpapadum, in Class 30.^[4]

In its applications for registration, Petitioner stated that "[t]he foreign wording in the mark [AACHI] translates into English as a distinguished lady."

Respondent, in his Answer, denied the salient allegations in the Petition for Cancellation and pleaded various affirmative and putative affirmative defenses, including the affirmative defense of laches.^[5]

I. Preliminary Issues

Respondent pleaded and argued in its trial brief 11 "affirmative" defenses. Respondent's eighth affirmative defense (unclean hands), if successful, would prevent Petitioner from relying on its pleaded registrations.

Respondent's first "affirmative defense" is a pleading that the Petition for Cancellation fails to state a claim upon which relief can be granted. Failure to state a claim upon which relief can be granted is an alleged defect to Petitioner's pleading, not an affirmative defense. In this case, it has no merit.

Respondent's second, third, seventh, tenth and eleventh "affirmative defenses" are amplifications of his defenses to the Petition for Cancellation rather than affirmative defenses.

As his fourth affirmative defense, Respondent pleaded that Petitioner's mark is generic or merely descriptive and, as his ninth affirmative defense, Respondent pleaded that Petitioner committed fraud on the USPTO during the prosecution of its applications for registration because Petitioner did not translate the mark AACHI as "grandma."^[6] These allegations are attacks on the validity of Petitioner's pleaded registrations. As such, we may not consider them absent a counterclaim to cancel those registrations. See 37 C.F.R. § 2.106(b) and 37 C.F.R. § 2.114(b); Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 U.S.P.Q.2d 1369, 1373 n.3 (Fed. Cir. 2008); Food Specialty Co. v. Standard Products Co., 406 F.2d 1397, 161 U.S.P.Q. 46, 46 (CCPA 1969); Gillette Co. v. "42"Products Ltd., Inc., 396 F.2d 1001, 158 U.S.P.Q. 101, 104 (CCPA 1968) (allegedly admitted periods of nonuse by opposer disregarded in absence of counterclaim to cancel registration); Contour Chair-Lounge Co. v. The Englander Co., 324 F.2d 186, 139 U.S.P.Q. 285, 287 (CCPA 1963) (improper for Board to allow applicant to collaterally attack registration in opposition where, although registration had been directly attacked by applicant in separate petition to cancel, said petition had been dismissed); Giant Food, Inc. v. Standard Terry Mills, Inc., 229 U.S.P.Q. 955, 961 (TTAB1986); Textron, Inc. v. The Gillette Co., 180 U.S.P.Q. 152, 153 (TTAB 1973) (defense attacking validity of pleaded registration must be raised by way of cancellation of registration). Therefore, we cannot consider Respondent's fourth and ninth affirmative defenses.

As his sixth affirmative defense, Respondent pleaded that Petitioner's claims are barred by the doctrine of fair use. The "fair use" defense of Section 33(b)(4) of the Trademark Act, 15 U.S.C. § 1115(b)(4), is a defense available to a defendant in a federal action charged with infringement of a registered mark, [See, e.g., KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. Ill. 72 U.S.P.Q.2d 1833, 1836 (2004)], and has no applicability in inter partes proceedings before the Board, which involve only the issue of registrability of a mark. See Truescents LLC v. Ride Skin Care LLC, 81 U.S.P.Q.2d 1334, 1338 (TTAB 2006); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 U.S.P.Q.2d 1445, 1454 (TTAB 1986). Further, the "noncommercial use" exception of Section 43(c)(3)(C) of the Trademark Act, 15 U.S.C. § 1125(c)(3)(C), does not apply in a Board proceeding involving a mark sought to be registered as a trademark or service mark, because an applicant seeking registration is necessarily relying on a claim of use of its mark, or intended use of its mark, in commerce. American Express Marketing & Development Corp. v. Gilad Development Corp., 94 U.S.P.Q.2d 1294, 1298 (TTAB 2010). See also Research in Motion Limited v. Defining Presence Marketing Group Inc., 102U.S.P.Q.2d 1187, 1188 (TTAB 2012) (Board will assess alleged parody as part of the circumstances in determining whether plaintiff has made out its claim).

Finally, we review Respondent's eighth affirmative defense, an allegation that Petitioner's claims are barred by the doctrine of unclean hands because Petitioner did not translate the foreign word "aachi" as "grandma." As noted above, in its applications for registration, Petitioner stated that "[t]he foreign wording in the mark [AACHI] translates into English as a distinguished lady." Respondent argues that if Petitioner had translated "aachi" as "grandmother, " the Trademark Examining Attorney may have refused registration of Petitioner's mark.

[T]he Examiner would have at such time by virtue of the doctrine of foreign equivalents conducted a search of all records that contained the words GRANDMOTHER, MOTHER, GRANDMA or any variation thereof such as Nonna, Abuela, Mama, Babushka[, ] Mamina[, ] etc[.] against the applied for goods. Grandmother and Mother [have] long been used in association with food products and restaurant services as [they] suggest[] tasty food, food that is homemade, food one can trust. Accordingly, one would expect to find hundreds of trademarks at the USPTO with the term Grandmother that are associated with food or restaurant services.^[7]

The equitable doctrine of unclean hands prevents a plaintiff from relying on its pleaded registration if it made a false statement during the prosecution of its application for registration or maintenance of its registration. See Duffy-Mott Co., Inc. v. Cumberland Packing Co., 424 F.2d 1095, 165 U.S.P.Q. 422, 425 (CCPA 1970). In Duffy-Mott, the Court of Customs and Patent Appeals (a predecessor court of the U.S. Court of Appeals for the Federal Circuit), precluded the plaintiff in that case from relying upon a pleaded registration where, as here, there was no counterclaim or petition to cancel that registration. In that case, the plaintiffs predecessor had filed a combined affidavit under Sections 8 and 15 attesting to the continued use of the mark involved in that case when the mark had not in fact been in use on those goods.

We agree with applicant that the act of opposer's predecessor in interest in filing a patently false combined affidavit under sections 8 and 15 on March 15, 1960, precludes reliance in these proceedings on the registration thus maintained in force...

...[W]e are of the view that opposer may not rely on its registration for any purpose in the Patent Office or in this court on appeal therefrom. We consider that filing a sworn statement as far from the truth as was that which was filed precludes opposer from relying on the registration in these proceedings. This is in accord with the principle of the equitable doctrine of "unclean hands."

Duffy-Mott Co., Inc. v. Cumberland Packing Co., 165 U.S.P.Q. at 424-25. See also Hornblower & Weeks Inc v. Hornblower & Weeks Inc., 60 U.S.P.Q.2d 1733, 1738 (TTAB 2001) (...