On June 28, 2023, the Trademark Trial and Appeal Board issued a precedential decision in Advance Magazine Publishers, Inc. v. Fashion Electronics, Inc. (Opp. No. 91247034), holding the affirmative defense of laches can be based on an applicant’s expired prior registration.
Opposer, Advance Magazine, owns registrations for the well-known VOGUE mark. Advance Magazine opposed Fashion Electronics’ registration of the mark EVOGUE in connection with accessories for mobile electronic devices on grounds of likelihood of confusion and dilution by blurring. Applicant, Fashion Electronics, had owned a registration for the mark EVOGUE from January 15, 2008, until its cancellation on August 17, 2018, due to failure to file a renewal. Fashion Electronics filed a new application on October 14, 2018, and Advance Magazine’s opposition followed.
In its final decision, the Board held that Opposer’s claims were barred in part by the doctrine of laches based on Opposer’s failure to object to Applicant’s expired registration while that registration was alive from 2008 to 2018. The Board explained that Applicant was permitted to base its laches defense on its earlier registration even though that registration had expired. In such a circumstance, the Board held, the period of delay begins with the registration date and ends with the expiration date of the prior registration. Here, that period was 10 years, from 2008 to 2018. The Board found that Opposer unduly delayed by failing to act during those 10 years. The Board also found that material economic prejudice was present because Applicant had continuously invested in and developed the EVOGUE mark, including by spending millions of dollars on substantial efforts to advertise it, since 2006. Accordingly, the Board held that, as to the goods listed in the expired registration, laches was a complete defense to Opposer’s dilution claim, and that laches also barred Opposer’s likelihood of confusion claim because Opposer had failed to show inevitable confusion.
The laches determination, however, did not apply to certain new goods listed in Applicant’s application that were not listed in the prior registration. As to those, the Board found insufficient evidence of likelihood of confusion, but sustained the opposition on grounds of dilution by blurring.
Coauthored by Heather Kliebenstein & Maya Tazel.