Bridgestone/Firestone v. Auto Club De L'ouest De La France

• Decision Date: 06 March 2001
• Docket Number: No. 19,683,19,683
• Parties: (Fed. Cir. 2001) BRIDGESTONE/FIRESTONE RESEARCH, INC., Appellant, v. AUTOMOBILE CLUB DE L'OUEST DE LA FRANCE, Appellee. 00-1036 (Cancellation) DECIDED:
• Court: U.S. Court of Appeals — Federal Circuit

Page 1359

245 F.3d 1359 (Fed. Cir. 2001) BRIDGESTONE/FIRESTONE RESEARCH, INC., Appellant,
v.
AUTOMOBILE CLUB DE L'OUEST DE LA FRANCE, Appellee. 00-1036 (Cancellation No. 19,683) United States Court of Appeals for the Federal Circuit DECIDED: March 6, 2001

Appealed from: Patent and Trademark Office Trademark Trial & Appeal Board

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Peter G. Mack, Foley & Lardner, of Washington, DC, argued for appellant. Of counsel was John H. Hornickel, Bridgestone/Firestone, Inc., of Akron, Ohio.

Michael J. Striker, of Huntington, New York, argued for appellee.

Before NEWMAN, MICHEL, and LOURIE, Circuit Judges.

NEWMAN, Circuit Judge.

Bridgestone/Firestone Research, Inc. ("Bridgestone") is the owner of Trademark Registration No. 756,436 for the mark LEMANS for "pneumatic rubber tires" on the principal register, issued on September 10, 1963. The United States Patent and Trademark Office Trademark Trial and Appeal Board granted the petition of Automobile Club de l'Ouest de la France ("Automobile Club") to cancel the registration.¹ We reverse the Board's decision.

BACKGROUND

The Automobile Club, a French entity, manages an automobile race in the city of Le Mans, France, called "Les 24 Heures du Mans." The Le Mans race was first run in 1923, and is internationally known. In 1986 the Automobile Club was granted United States Trademark Registration No. 1,386,349 on the supplemental register, for the mark LE MANS for "automobile tires." In 1991, Bridgestone filed a petition to cancel the Automobile Club's registration, based on Bridgestone's 1963 registration of LEMANS for tires. That cancellation petition was granted, and is not appealed.

The Automobile Club counterclaimed for cancellation of Bridgestone's registration, on the ground that Bridgestone's trademark use of LEMANS falsely suggested a connection with the Automobile Club and its sponsorship of the Le Mans race, in violation of §2(a) of the Lanham Act:

15 U.S.C. §1052(a). No trademark . . . shall be refused registration on the principal register on account of its nature unless it . . . falsely suggest[s] a connection with persons, living or dead, institutions, beliefs, or national symbols.

Bridgestone denied the charge and raised, inter alia, the defense of laches based on the passage of twenty-seven years between issuance of its LEMANS registration and the Automobile Club's cancellation petition.

The Board granted the cancellation petition, holding that "the term LEMANS points uniquely and unmistakably to the Automobile Club, and that the Automobile Club's race is of sufficient fame or reputation that when Bridgestone's mark LEMANS is used on tires, a connection with the Automobile Club would be presumed." The Board rejected the laches defense, ruling that Bridgestone had not provided adequate evidence of its reliance on the

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Automobile Club's twenty-seven years of silence.

Bridgestone appeals, arguing that the Board incorrectly applied the criteria of laches, that the Board misapplied the law of §2(a) false suggestion of connection, and that the Automobile Club does not have a protectible §2(a) interest in the LEMANS trademark.

DISCUSSION

Rulings of PTO tribunals are reviewed by the Federal Circuit in accordance with the standards of the Administrative Procedure Act. See Dickinson v. Zurko, 527 U.S. 150, 152 , 50 USPQ2d 1930, 1931-32 (1999). Laches is an equitable defense, and the Board's rulings on this issue are reviewed on the standard of abuse of discretion. Abuse of discretion will lie when the tribunal's decision rests on an error of law or on erroneous findings of fact, or if the decision manifests an unreasonable exercise of judgment in weighing relevant factors. See A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020, 1028, 1039, 22 USPQ2d 1321, 1325, 1333 (Fed. Cir. 1992) (en banc). We give plenary review to the Board's legal conclusions, see In re The Boston Beer Co. Ltd. P'ship, 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999), and uphold the Board's factual findings unless they are arbitrary, capricious, or unsupported by substantial evidence. See On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000).

A

By statute, the defense of laches is available in trademark proceedings. See 15 U.S.C. §1069 ("In all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable may be considered and applied."). Bridgestone, as the party raising the affirmative defense of laches, bears the burden of proof. See Fed. R. Civ. P. 8(c) (characterizing laches as an affirmative defense); Cornetta v. United States, 851 F.2d 1372, 1380 (Fed. Cir. 1988).

To prevail on its affirmative defense, Bridgestone was required to establish that there was undue or unreasonable delay by the Automobile Club in asserting its rights, and prejudice to Bridgestone resulting from the delay. See Lincoln Logs Ltd. v. Lincoln Pre-cut Log Homes, Inc., 971 F.2d 732, 734, 23 USPQ2d 1701, 1703 (Fed. Cir. 1992). The Board rejected Bridgestone's defense of laches with the following explanation:

n.5 The only affirmative defenses maintained by Bridgestone in its brief were "laches" and "estoppel by laches." The record does not reflect evidence on these defenses; and in Bridgestone's brief, it stated only very general information about its alleged reliance on the Automobile Club's delay in seeking cancellation of Bridgestone's registration. For example, Bridgestone stated that ". . . in reliance on the lack of any objection for so many decades, Firestone has designed, marketed, and sold many...