Thursday, November 10, 2011

Estrada v. Telefonos de Mexico

Of "bad faith" in trademark disputes:

Finally, the Board considered the matter of bad faith. Board Op., at *9-10. The thirteenth DuPont factor permits the Board to weigh “[a]ny other established fact probative of the effect of use.” DuPont, 476 F.2d at 1361. An applicant’s bad faith is potentially relevant in the likelihood-of-confusion analysis. See L.C. Licensing Inc. v. Berman, 86 U.S.P.Q. 2d (BNA) 1883, 1890 (T.T.A.B. 2008); see also Paddington Corp. v. Attiki Imps. & Distribs., Inc., 996 F.2d 577, 587 (2d Cir. 1993) (“Where a second-comer acts in bad faith and intentionally copies a trademark or trade dress, a presumption arises that the copier has succeeded in causing confusion.”). As noted supra, the Board found that Estrada had been “evasive and disingenuous” by essentially denying any prior knowledge of Telefonos’ TELMEX mark. The Board concluded that Estrada exhibited “not only bad faith but a general lack of respect for the application and opposition process.” Board Op., at *10. The Board noted that al- though it would have found a likelihood of confusion on the present facts even without a finding of bad faith, were this a close case Estrada’s bad faith would have tipped the balance to a finding of a likelihood of confusion. We conclude that substantial evidence supports the Board’s finding of Estrada’s bad faith. As the Board noted, if Estrada had an explanation for his implausible responses, he could have provided that explanation by submitting evidence at trial.


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