D.K. Agencies (P) Ltd.v.Dorling Kindersley Limited

Trademark Trial and Appeal Board

Jan 17, 2006

No. 92041796 (T.T.A.B. Jan. 17, 2006)

Hearing: Mailed:
September 28, 2005 January 17,2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

D.K. Agencies (P) Ltd.

v.

Dorling Kindersley Limited
_____

Cancellation Nos. 92041796 and 92041803
_____

Thomas M. Galgano of Galgano & Burke, LLP for D.K. Agencies
(P) Ltd.

James E. Doherty of Eisenberg Tanchum & Levy for Dorling
Kindersley Limited
_____

Before Seeherman, Hohein and Walters, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

On March 5, 2003, D.K. Agencies (P) Ltd., an Indian
company, filed petitions to cancel two registrations owned
by Dorling Kindersley Limited on the ground of priority of
use and likelihood of confusion. The registrations, Nos.
1763689 and 2037282 are both for the mark DK superimposed on
an open book design, for goods identified, respectively, as
printed publications namely, oversize or folio books on a
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Cancellation Nos. 92041796 and 92041803
2
variety of non-fiction topics; and videotapes, compact
discs, computer software and audiotapes featuring a wide
variety of specified subjects.
Because the proceedings involve common questions of law
and fact, after answers were filed the Board consolidated
the proceedings. The answers denied petitioner’s
allegations of priorioty and likelihood of confusion, and
raised numerous affirmative defenses, including estoppel,
laches and acquiescence, and that respondent’s registrations
had attained or were in the process of attaining
incontestable status through respondent’s filing, and in the
case of Registration No. 1763689, the Office’s acceptance,
of respondent’s Section 8 and 15 affidavits.
The parties stipulated to the admission of testimony in
the form of declarations, and the testimony of numerous
witnesses was submitted in this manner.
The proceeding has been fully briefed. Only respondent
appeared at an oral hearing held before the Board.
A review of respondent’s registrations, which are
automatically of record pursuant to Trademark Rule 2.122(b),
shows that Registration No. 1763689 issued on the Principal
Register on April 6, 1993, and that Registration No. 2037282
issued on the Principal Register on February 11, 1997.
Section 14(1) of the Trademark Act, 15 U.S.C. §1064(1),
provides that a petition to cancel a registration of a mark
Cancellation Nos. 92041796 and 92041803
3
on the Principal Register must be filed “within five years
from the date of the registration of the mark under this
Act.” Petitioner filed the petitions to cancel both
registrations on March 5, 2003, almost ten years after the
issuance of Registration No. 1763689 and almost six years
after the issuance of Registration No. 2037282.
Accordingly, petitioner has no legal right to file a
petition to cancel these registrations on the ground of
likelihood of confusion.1
We note that respondent has couched its argument that
the proceeding should be dismissed in terms of the
incontestability of its registrations. In fact,
incontestability is a defense in civil litigation, not in
Board proceedings. As noted above, the appropriate
statutory reference is Section 14(1) of the Act, which sets
forth the time periods in which a petition for cancellation
may be brought.
In response to respondent’s arguments that petitioner’s
petitions are untimely, petitioner asserts, in its reply
brief, that Section 1065 of the Act provides an exception to
incontestability. Again, the operative statutory provision

1 Petitions to cancel trademark registrations issued under this
Act may be brought “at any time” based on certain grounds
enumerated in Section 14(3), but likelihood of confusion (Section
2(d) of the Act), is not one of them.

Cancellation Nos. 92041796 and 92041803
4
is Section 14(1), and incontestability or exceptions to
incontestability have no bearing on it.
Petitioner also argues that it has made out a claim
that respondent’s mark falsely suggest a connection with
petitioner, and therefore, because a claim under Section
2(a) may be brought “at any time,” petitioner is entitled to
judgment on this ground. This ground was clearly never
pleaded, nor do we find that it was tried. Petitioner did
not even discuss such a ground in its main brief on the
case. It cannot remedy its failure to plead a legally
cognizable claim by this last-minute effort to assert a
different ground.
Finally, we note that much effort and expense by the
parties, and time by the Board, would have been avoided if,
in response to the petitions to cancel, respondent had
simply filed a motion to dismiss on the basis that Section
14(1) barred petitions to cancel these registrations on the
ground of likelihood of confusion.
Decision: The petitions to cancel are dismissed.