Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.

gov
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

TATUAJE CIGARS INC., Opposition No. 91/185,180

Opposer,
Application Serial No.: 77/359,141
v.
Mark: TATTOO
NICARAGUA TOBACCO IMPORTS, Published for Opposition: May 20, 2008
INC.,
Applicant.
Atty. Ref. No.: 68692-0003

Commissioner for Trademarks

P.O. Box 1451
Alexandria, VA 22313-1451

OPPOSER'S MOTION FOR SUMMARY JUDGMENT IN ITS FAVOR ON

APPLICANT'S AFFIRMATIVE DEFENSE OF UNCLEAN HANDS

Opposer Tatuaje Cigars, Inc. ("Opposer"), through its undersigned counsel,

hereby moves pursuant to Rule 56 of the Federal Rules of Civil Procedure and 37 C.F.R. 2.127

of the Trademark Rules of Practice of entry of summary judgment on Applicant's Second

Affirmative Defense of Unclean Hands, in its favor and against applicant Nicaragua Tobacco

Imports, Inc. ("Applicant").

MEMORANDUM OF POINTS AND AUTHORITIES

I. INTRODUCTION

Opposer is the owner of the federally registered trademark TATUAJE for cigars and

related products. TATUAJE is Spanish for TATTOO.

Applicant seeks registration of the mark "TATTOO" for cigars and related products.

Opposer has opposed registration of Applicant's proposed trademark "TATTOO" because

it is confusingly similar to Opposer's registered trademark TATUAJE.

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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

allegedly deceptive or deceptively misdescriptive.

The allegedly inequitable conduct Applicant attributes to Opposer is manifestly unrelated

to the subject of its claims - namely, Opposer's ownership of the trademark TATUAJE and it's

request that Applicant be refused registration of a trademark confusingly similar thereto.

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

is entitled to judgment as a matter of law on Applicant's Second Affirmative Defense.

II. APPLICANT'S UNCLEAN HANDS DEFENSE MUST FAIL AS A MATTER OF

LAW

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

U.S.P.Q. 307, 313 (T.T.A.B. 1981).

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.

Here, Applicant's allegations of unclean hands have nothing to do with Opposer's

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

source of" Opposer's cigars. Id.

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

Applicant's product packaging.

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

whether Applicant's TATTOO mark is likely to cause confusion, mistake or to deceive.

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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

Second Affirmative Defense should be granted.

Dated: December 18, 2009 /S/ JESSICA C. BROMALL

Rod S. Berman
Jessica C. Bromall
Brennan C. Swain
JEFFER, MANGELS, BUTLER & MARMARO LLP
1900 Avenue of the Stars, Seventh Floor
Los Angeles, CA 90067
(310) 203-8080
E-mail: trademarkdocket@jmbm.com
Attorneys for Opposer Tatuaje Cigars, Inc.

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