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ESTTA Tracking number: ESTTA322943
Filing date: 12/18/2009
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91185180
Party Plaintiff
Tatuaje Cigars, Inc.
Correspondence Brennan C. Swain
Address Jeffer Mangels Butler & Marmaro LLP
1900 Avenue of the Stars, 7th Floor
Los Angeles, CA 90067
UNITED STATES
trademarkdocket@jmbm.com
Submission Motion for Summary Judgment
Filer's Name Jessica C. Bromall
Filer's e-mail trademarkdocket@jmbm.com
Signature /jessica c. bromall/
Date 12/18/2009
Attachments MSJ Unclean Hands.pdf ( 5 pages )(24568 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
hereby moves pursuant to Rule 56 of the Federal Rules of Civil Procedure and 37 C.F.R. 2.127
Affirmative Defense of Unclean Hands, in its favor and against applicant Nicaragua Tobacco
I. INTRODUCTION
Opposer is the owner of the federally registered trademark TATUAJE for cigars and
Applicant seeks registration of the mark "TATTOO" for cigars and related products.
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Applicant has asserted as its second affirmative defense that Opposer is guilty of unclean
hands based upon markings on Opposer's packaging - not including TATUAJE - that are
to the subject of its claims - namely, Opposer's ownership of the trademark TATUAJE and it's
As a matter of law, even if all of Applicant's allegations in its second affirmative defense
are true (which they are not), Applicant's proffered affirmative defense must fail. Thus, Opposer
Applicant alleges that Opposer is guilty of "unclean hands" and, as a result, cannot
prevail in this proceeding. Applicant's Answer, ¶ 12. Applicant's unclean hands argument is
meritless.
"[T]he concept of unclean hands must be related to a plaintiff's claim, and misconduct
unrelated to the claim in which it is asserted as a defense does not constitute unclean hands."
Tony Lama Company, Inc. v. Anthony Di Stefano, 206 U.S.P.Q. 176, 179 (T.T.A.B. 1980) (even
if allegations of misconduct true, misconduct was not related to the claim before the Board). It is
well settled "that misconduct in the abstract, unrelated to the claim in which it is asserted as a
defense, does not constitute unclean hands." Also Warnaco Inc. v. Adventure Knits, Inc., 210
Thus, in order to prevail on its defense of unclean hands, Applicant must show: (1) that
Opposer has engaged in misconduct; and (2) that Opposer's misconduct "relates to the subject
matter of its claims." Fuddruckers Inc. v. Doc's B.R. Others Inc., 4 U.S.P.Q. 2d 1026, 1034, 826
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F.2d 837 (9th Cir. 1987); also Warnaco Inc., 210 U.S.P.Q. at 313; Tony Lama Company, 206
U.S.P.Q. at 179.
ownership or use of its TATUAJE mark. Instead, Applicant alleges that Opposer sometimes
uses, in addition to its TATUAJE mark, other "markings that are deceptive or deceptively
misdescriptive regarding the geographic origin, quality, composition, and/or source of"
Opposer's goods. Applicant's Answer, ¶ 12. Specifically, Applicant claims that Opposer uses
the words "puros cubanos", a "tobacco leaf stick" logo, and sometimes the word "habanos" on its
cigar boxes. See Applicant's Opposition to Opposer's First Motion for Summary Judgment
("Opp. to MSJ"), p. 6. Applicant alleges that Opposer uses of the foregoing in an attempt to
deceive consumers regarding the "geographic origin, character, quality, composition, and/or
Opposer denies that its product packaging is in any way misleading or deceptive.
However, even if some of Opposer's packaging bearing its TATUAJE bears other markings that
are misleading and deceptive, this does not affect Opposer's rights in its TATUAJE mark. Nor,
as a matter of law, would such conduct support an affirmative defense of unclean hands and
prevent Opposer from prevailing in this proceeding. This proceeding is not about Opposer's
product packaging or any "markings" other than Opposer's TATUAJE mark that may appear on
Rather, this case is about Opposer's TATUAJE mark. It is about Opposer's rights in its
TATUAJE mark and whether Applicant's proposed mark TATTOO is confusingly similar to
Opposer's trademark. Thus, the issue is not whether Opposer's packaging is misleading, but
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Here, the alleged inequitable conduct has nothing to do with Opposer's TATUAJE mark,
but rather its use of the words "puros cubanos" and a "tobacco leaf steak" on some of its product
packaging. This conduct is unrelated to Opposer's TATUAJE mark. Applicant cannot create a
triable issue simply by intentionally conflating Opposer's allegedly deceptive use of the words
"puros cubanos" and a "tobacco leaf stick" with its use of its TATUAJE mark.
Thus, even if all of Applicant's allegations are true, and even if Opposer were
intentionally deceiving the public by using "markings" other than its TATUAJE mark on its
product packaging that were deceptive, Applicant's defense would still fail as a matter of law.
III. CONCLUSION
For all the foregoing reasons, Opposer's Motion for Summary Judgment on Applicant's
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