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 OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARDProceeding 91185180PartyPlaintiffTatuaje Cigars, Inc.CorrespondenceAddressBrennan C. SwainJeffer Mangels Butler & Marmaro LLP1900 Avenue of the Stars, 7th FloorLos Angeles, CA 90067UNITED STATEStrademarkdocket@jmbm.comSubmission Motion for Summary JudgmentFiler's Name Jessica C. BromallFiler's e-mail trademarkdocket@jmbm.comSignature /jessica c. bromall/ Date 12/18/2009Attachments MSJ Unclean Hands.pdf ( 5 pages )(24568 bytes )

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IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARDTATUAJE CIGARS INC.,Opposer,v.NICARAGUA TOBACCO IMPORTS,INC.,Applicant.Opposition No. 91/185,180Application Serial No.: 77/359,141Mark: TATTOOPublished for Opposition: May 20, 2008Atty. Ref. No.: 68692-0003Commissioner for TrademarksP.O. Box 1451Alexandria, VA 22313-1451

OPPOSER'SMOTIONFORSUMMARYJUDGMENTINITSFAVORONAPPLICANT'SAFFIRMATIVEDEFENSEOFUNCLEANHANDS

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. 2.127of the Trademark Rules of Practice of entry of summary judgment on Applicant's SecondAffirmative Defense of Unclean Hands, in its favor and against applicant Nicaragua TobaccoImports, Inc. ("Applicant").

MEMORANDUMOFPOINTSANDAUTHORITIESI. INTRODUCTION

Opposer is the owner of the federally registered trademark TATUAJE for cigars andrelated 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" becauseit is confusingly similar to Opposer's registered trademark TATUAJE.

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2Applicant has asserted as its second affirmative defense that Opposer is guilty of uncleanhands based upon markings on Opposer's packaging - not including TATUAJE - that areallegedly deceptive or deceptively misdescriptive.The allegedly inequitable conduct Applicant attributes to Opposer is manifestly unrelatedto the subject of its claims - namely, Opposer's ownership of the trademark TATUAJE and it'srequest 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 defenseare true (which they are not), Applicant's proffered affirmative defense must fail. Thus, Opposeris entitled to judgment as a matter of law on Applicant's Second Affirmative Defense.

II. APPLICANT'SUNCLEANHANDSDEFENSEMUSTFAILASAMATTEROFLAW

Applicant alleges that Opposer is guilty of "unclean hands" and, as a result, cannotprevail in this proceeding. Applicant's Answer, ¶ 12. Applicant's unclean hands argument ismeritless."[T]he concept of unclean hands must be related to a plaintiff's claim, and misconductunrelated 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) (evenif allegations of misconduct true, misconduct was not related to the claim before the Board). It iswell settled "that misconduct in the abstract, unrelated to the claim in which it is asserted as adefense, does not constitute unclean hands."

Also Warnaco Inc. v. Adventure Knits, Inc.

, 210U.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) thatOpposer 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