Fishking Processors, Inc.v.Fisher King Seafoods Limited

Trademark Trial and Appeal Board

May 23, 2007

No. 92041493 (T.T.A.B. May. 23, 2007)

Goodman

Mailed: May 23, 2007

Cancellation No. 92041493

FISHKING PROCESSORS, INC.

v.

FISHER KING SEAFOODS LIMITED

Before Seeherman, Hohein and Hairston, Administrative
Trademark Judges:

By the Board:

This case now comes up for decision on Fisher King
Seafoods Limited’s (hereinafter “respondent”) second motion
for summary judgment, filed December 13, 2005, on the
grounds of priority, likelihood of confusion and laches, and
Fishking Processors, Inc.’s (hereinafter “petitioner”)
cross-motion for summary judgment, filed January 23, 2006,
on the grounds of priority and likelihood of confusion.1
As background, petitioner has petitioned to cancel
respondent’s registration of the mark FISHER KING SEAFOODS,

1 Respondent’s first motion for summary judgment, filed August 1,
2003, was also based on priority of use, likelihood of confusion
and laches. We denied such motion on January 15, 2005, finding
genuine issues of material fact as to petitioner’s common law
rights with respect to the mark FISHKING, the similarity of the
parties’ marks, the extent of actual confusion and, with regard
to laches, genuine issues of material fact as to whether
petitioner unreasonably delayed in bringing the petition to
UNITED STATES PATENT AND TRADEMARK
OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS
A PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92041493
2
with the word SEAFOODS disclaimed, for “fresh and frozen
seafood” in International Class 29.2 As grounds for
cancellation under Section 2(d) of the Trademark Act,
petitioner alleges, in its amended petition to cancel, that
respondent’s mark, as used in connection with the services
set forth in the registration, so resembles petitioner’s
previously used trade names FISHKING and FISHKING PROCESSORS
INC. and its previously used trademark FISHKING for fresh
and frozen fish as to be likely to cause confusion.3
Respondent, in its answer to the amended petition to
cancel, has denied the salient allegations therein and has
alleged certain affirmative defenses, including the defense
of laches.
During the course of this proceeding, the FISHER KING
SEAFOODS registration was cancelled due to the failure of
respondent to file a Section 8 affidavit of continued use.
In accordance with Trademark Rule 2.134, the Board allowed
respondent time to show cause why judgment should not be

cancel and, if so, whether respondent was prejudiced by such
delay.
2 Reg. No. 2168211 issued on June 23, 1998.
3 After review of the parties’ motions for summary judgment, on
July 5, 2006, we sua sponte granted petitioner time to add a
claim of prior trade name use of FISHKING PROCESSORS, INC. as
this claim, which was raised in its motion for summary judgment,
would otherwise have been based on an unpleaded ground. As noted
by respondent, the Board will not grant summary judgment on an
unpleaded ground. See TBMP Section 528.07(a)(2d ed. rev. 2004)
(unpleaded issue not a basis for entering summary judgment; Board
may allow party to amend pleading to add claim). We also allowed
the parties time to supplement their motions for summary judgment
in view of the amended pleadings.
Cancellation No. 92041493
3
entered against it. Respondent filed a response, advising
that the cancellation was inadvertent. The Board determined
that respondent had discharged the show cause order and
asked petitioner if it wished to continue the cancellation
proceeding or have it dismissed as moot. On August 29,
2005, petitioner advised that it wished to continue this
proceeding, so as to have the Board decide the priority and
likelihood of confusion issues.4
We now turn to the parties’ cross-motions for summary
judgment.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute and the moving party is entitled to judgment
as a matter of law. See Fed. R. Civ. P. 56(c). The party
moving for summary judgment has the burden of demonstrating
the absence of any genuine issue of material fact and that
it is entitled to a judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986). The evidence

4 After the registration was cancelled under Section 8,
respondent filed, on April 4, 2005, application Serial No.
78601303 for the mark FISHER KING for “fresh and frozen seafood”
in International Class 29 and application Serial No. 78601316 for
the mark FISHER KING SEAFOODS LTD. (SEAFOODS LTD. disclaimed) for
“fresh and frozen seafood” in International Class 29. Petitioner
has filed Opposition Nos. 91170611 and 91170613, respectively,
against such applications. Petitioner also has an application,
Serial No. 76248148, for the mark FISHKING for seafood, namely
“fresh and quick-frozen fish” in International Class 29, which
has been opposed by respondent in Opposition No. 91171354. These
opposition proceedings have been consolidated and are presently
suspended pending the disposition of this cancellation
proceeding.
Cancellation No. 92041493
4
must be viewed in a light favorable to the non-moving party,
and all reasonable inferences are to be drawn in the non-
movant's favor. Thus, in considering the propriety of
summary judgment, the Board may not resolve issues of
material fact against the non-moving party; it may only
ascertain whether such issues are present. See, e.g.,
Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993); Opryland USA Inc. v. Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed.
Cir. 1992); and Olde Tyme Foods, Inc. v. Roundy’s Inc., 961
F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). The mere fact
that cross-motions for summary judgment have been filed does
not necessarily mean that there are no genuine issues of
material fact, and that a trial is unnecessary. See
University Book Store v. University of Wisconsin Board of
Regents, 33 USPQ2d 1385 (TTAB 1994).
The parties have cross moved for summary judgment on
both the issue of laches and the issue of likelihood of
confusion. With respect to the issue of laches, it is
petitioner’s position that in view of the cancellation of
the FISHER KING SEAFOODS registration during the course of
this proceeding, the basis for the laches defense no longer
exists because there is no registration upon which to base a
claim of laches. In particular, petitioner argues that
constructive knowledge of petitioner “has been eliminated
Cancellation No. 92041493
5
from consideration since the registration has been
cancelled.”5 Thus, petitioner asserts that, as a matter of
law, laches cannot lie.
In response, respondent argues that despite the
cancellation of its registration due to its inadvertent
failure to file a Section 8 affidavit, its laches defense
still applies since petitioner’s delay in taking action is
not extinguished by the cancellation. Respondent also
asserts that “whether or not the original registration [is]
in force is immaterial to the fact that petitioner, having
admitted to actual knowledge of respondent’s existence sat
on its rights.” Respondent’s supplemental brief, filed
September 21, 2006, n.4 at page 6.
Section 19 of the Lanham Act provides that the
equitable principle of laches “where applicable may be
considered and applied.” 15 U.S.C. Section 1069.
A prima facie defense of laches requires a showing of
(1) unreasonable delay in asserting one's rights against
another, and (2) material prejudice to the latter as a
result of the delay. Bridgestone/Firestone Research Inc. v.
Automobile Club de l’Ouest de la France, 245 F.3d 1359, 58
USPQ2d 1460, 1462 (Fed. Cir. 2001); and Lincoln Logs Ltd. v.
Lincoln Pre-cut Log Homes, Inc., 971 F.2d 732, 23 USPQ2d

5 Petitioner has asserted that it had no actual knowledge of
respondent’s activities or of the subject registration.

Cancellation No. 92041493
6
1701, 1703 (Fed. Cir. 1992). In the context of a trademark
opposition or cancellation proceeding, this defense must be
tied to a party's registration of a mark rather than to its
use of the mark. National Cable Television Ass'n, Inc. v.
American Cinema Editors, Inc., 937 F.2d 1572, 1581, 19
USPQ2d 1424, 1432 (Fed. Cir. 1991) (laches runs from the
time from which action could be taken against the trademark
rights inhering upon registration). Id., 19 USPQ2d at 1432.
Although the laches defense must be tied to a party’s
registration, in circumstances similar to these (although in
the context of an opposition proceeding), the Board stated
that a laches defense “may be based upon opposer's failure
to object to an applicant's earlier registration of the same
mark for substantially the same goods.” Aquion Partners
L.P. v. Envirogard Products Ltd., 43 USPQ2d 1371, 1371 (TTAB
1997), citing Lincoln Logs, 23 USPQ2d at 1703, which in turn
cited Copperweld Corp. v. Astralloy-Vulcan Corp., 196 USPQ
585, 591 (TTAB 1971).
The Board further stated that “opposer's failure to
object to applicant's prior registration during the
existence thereof was not wiped out by the expiration of the
registration, albeit the period of delay ended with the
expiration of that registration.” Aquion, supra, n. 8.6

6 The Board in Aquion noted that such a finding was not
inconsistent with a decision of our primary reviewing court in
the case of Action Temporary Services Inc. v. Labor Force Inc.,
Cancellation No. 92041493
7
For the same reason, in the present case respondent may
assert, and attempt to prove, the defense of laches, even
though respondent’s registration has expired.
Thus, we find that respondent is not precluded, as a
matter of law, from asserting a laches defense despite the
fact that the FISHER KING SEAFOODS registration has been
cancelled. The expiration of the registration does not

870 F.2d 1563, 10 USPQ2d 1307 (Fed.Cir. 1989), involving a
concurrent use proceeding and the question of lawful use. In
Action, the Court held that “a canceled registration cannot
prevent a party from being a lawful user of a mark when that
party's use is subsequent to the cancellation of the federal
registration,” noting that “constructive notice, pursuant to
section 22 of the Lanham Act, exists, and lasts, only as long as
the federal registration giving rise to that constructive notice
remains in effect.” Id. The Court also noted, however, that
constructive notice during the pendency of the registration was
not extinguished by the later cancellation, stating that
“Action’s use of the mark during the pendency of Labor’s federal
registration cannot be deemed ‘lawful use’” and holding that “the
constructive notice effects of Labor's federal registration
prevented Action from being a lawful user only during the
existence of that registration.” Id. In distinguishing Action,
the Board concluded that:

It is clear therefrom that in the Action Temporary
Services case, the cancellation of Labor's
registration did not, in the Court's view,
retroactively render lawful the use made by Action
during the existence of Labor's registration. To the
contrary, even after the cancellation of the
registration, the use made by Action during the
registration's existence continued to carry the taint
of unlawfulness, and only the use made subsequent to
the cancellation of the registration was considered
lawful by the Court. Just as the illegality of
Action's use during the existence of Labor's
registration was not wiped out by the cancellation of
that registration, so here too we believe that
opposer's failure to object to applicant's prior
registration during the existence thereof was not
wiped out by the expiration of the registration.

Cancellation No. 92041493
8
extinguish either actual notice or constructive notice
during the term of the registration.
With respect to the merits of respondent’s motion for
summary judgment on its laches defense, respondent argues
that “despite [petitioner’s] admitted awareness of
Respondent’s business . . . via its occasional contacts over
the past decade, Petitioner did not once contact respondent
to complain about any perceived confusion”; and that
respondent will suffer severe prejudice since respondent has
“grown exponentially, with Petitioner aware of its existence
virtually that entire time.” Respondent’s motion for
summary judgment, filed December 13, 2005, at p. 19. In
support of this assertion, respondent points to the July 31,
2003, declaration of Tor Conklin, respondent’s president,
which was submitted in connection with respondent’s first
motion for summary judgment, and incorporated by reference
in the present motion. In that declaration, Mr. Conklin
stated that “the company has grown exponentially since its
incorporation in 1996” and that “the damage to our
reputation and our recognition if we were to have to rebuild
a brand under a new trademark is inestimable.” Mr. Conklin
also stated in his declaration that petitioner “has been
well aware of the existence of Fisher King Seafoods and the
use of this name since our company’s incorporation”; that
“our sales department has been contacting Fish King
Cancellation No. 92041493
9
Processors since inception”; and that “in 1999 we issued
samples of raw material for their secondary processing
operation.”
In response, petitioner has submitted the declaration
of Janis Cohen, petitioner’s national marketing manager, who
stated that petitioner first became aware of the trademark
FISHER KING being used with seafoods in mid-July 2001, when
respondent’s registration was cited as a bar to petitioner’s
application.
As stated above, to establish a laches defense, a
defendant must show undue or unreasonable delay by plaintiff
in asserting its rights, and prejudice to defendant from the
delay. Bridgestone/Firestone Research supra at 1462 and
Lincoln Logs supra at 1703. On summary judgment, respondent
must establish that there is no genuine issue of material
fact as to either element. Gasser Chair Co. Inc. v. Infanti
Chair Manufacturing Corp., 60 F3d 770, 34 USPQ2d 1822, 1824
(Fed. Cir. 1995). With regard to delay, the focus is on
reasonableness and the Board must consider any excuse
offered for the delay. A. C. Aukerman Co. v. R. L. Chaides
Construction Co., 960 F.2d 1020, 22 USPQ2d 1321, 1329 (Fed.
Cir. 1992). With regard to prejudice, there must also have
been some detriment due to the delay such as evidentiary
prejudice or economic prejudice, and respondent must show
Cancellation No. 92041493
10
that its prejudice resulted from the delay. 7 Id. The mere
passage of time does not constitute laches. Aquion, supra
at 1373, citing Advanced Cardiovascular Systems v. SciMed
Life Systems, 988 F.2d 1157, 26 USPQ2d 1038, 1041 (Fed.Cir.
1993).
As is evident from the conflicting statements made by
the parties, there are genuine issues of material fact with
respect to when petitioner had actual knowledge of
respondent’s use or registration. Further, although
respondent has submitted evidence regarding the increase in
its sales, respondent has not demonstrated that any economic
prejudice resulted from petitioner’s delay. Cf., Hemstreet
v. Computer Entry Systems Corp., 972 F.2d 1290, 23 USPQ2d
1860, 1863 (Fed. Cir. 1992) (a nexus must be shown between
the patentee's delay in filing suit and the expenditures;
the alleged infringer must change his position “because of
and as a result of the delay.”). Lastly, because there is a
genuine issue as to when petitioner knew or should have
known about respondent’s registration, we find a genuine
issue with respect to whether petitioner’s delay was
reasonable or excusable.
Thus, we cannot say that respondent has met the
requirement of showing that there is no genuine issue that

7 "Evidentiary prejudice" may occur when the defendant's ability
to raise a defense has been hampered due to the passing of time
Cancellation No. 92041493
11
petitioner’s delay was unreasonable or inexcusable and that
it was prejudiced by petitioner’s inaction, and that it is
entitled to judgment in its favor on this defense.
Accordingly, respondent’s motion for summary judgment on the
defense of laches is denied.
The parties have also filed cross-motions on the issue
of likelihood of confusion. As noted, this is the second
motion filed with respect to this issue. Although some
additional evidence has been submitted by the parties, we
find that there are still genuine issues of material fact
that preclude disposition by summary judgment. In
particular, there are genuine issues as to the similarities
of petitioner’s trade names and mark vis-à-vis respondent’s
mark, especially with respect to connotations and commercial
impressions; whether and to what extent there has been
actual confusion; and whether petitioner used FISHKING per
se as a trade name or trade mark prior to the first use by
respondent of its mark.8 Moreover, the evidence submitted
by petitioner does not clearly show the extent of its common
law rights, including the channels of trade and the classes
of customers to which it sells its products.

(e.g., the loss of documents, unavailability of witnesses, fading
memory of witnesses, etc.).
8 The fact that we have identified and discussed certain genuine
issues of material fact as sufficient bases for denying the
parties’ cross-motions for summary judgment should not be
construed as a finding that these are necessarily the only issues
that remain for trial.
Cancellation No. 92041493
12
Accordingly, the parties’ motions for summary judgment
on the ground of likelihood of confusion are also denied.
In summary, the parties’ cross-motions for summary
judgment are denied.9
Further, because this is the second time that we have
been asked to consider granting summary judgment, and the
second time that we have found there are genuine issues of
material fact, the parties may not file any further motions
for summary judgment absent prior leave of the Board.
Proceedings are resumed and trial dates are reset as
follows:
D ISC O V ER Y PER IO D TO C LO SE: C L O SE D
July 23, 2007
Septem ber 21, 2007
N ovem ber 5, 2007
30-day testim ony period for party in position of plaintiff
to close:
30-day testim ony period for party in position of defendant
to close:
15-day rebuttal testim ony period for party in position of
plaintiff to close:

In each instance, a copy of the transcript of
testimony, together with copies of documentary exhibits,
must be served on the adverse party within thirty days after

9 The parties are reminded that evidence submitted in support of
or in opposition to a summary judgment motion is considered only
for purposes of deciding the motion. To have such materials
considered at trial, they must be properly introduced into the
record during the appropriate testimony period. Levi Strauss &
Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993).

Cancellation No. 92041493
13
completion of the taking of testimony. Trademark Rule
2.l25.
Briefs shall be filed in accordance with Trademark
Rules 2.128(a) and (b). An oral hearing will be set only
upon request filed as provided by Trademark Rule 2.l29.