The opinion
THIS ORDER IS A UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
PRECEDENT OF THE
P.O. Box 1451
TTAB Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
May 23, 2024
Opposition No. 91285160
DoorDash, Inc.
v.
Greenerside Holdings, LLC
M. Catherine Faint,
Interlocutory Attorney:
Before the Board is Opposer’s second motion, filed December 8, 2023, to strike
Applicant’s sole affirmative defense.1
1 Citations to the record refer to TTABVUE, the Board’s online docketing system. See Turdin
v. Trilobite, Ltd., Conc. No. 94002505, 2014 TTAB LEXIS 17, at *6 n.6 (TTAB 2014).
Specifically, the number preceding TTABVUE corresponds to the docket entry number, and
any number(s) following TTABVUE refer to the page number(s) of the docket entry where
the cited materials appear.
As part of an internal Board pilot citation program on broadening acceptable forms of legal
citation in Board cases, citations in this order differ from the citation form recommended in
TBMP § 101.03. This order cites decisions of the U.S. Court of Appeals for the Federal Circuit
and the U.S. Court of Customs and Patent Appeals by the page(s) on which they appear in
the Federal Reporter (e.g., F.2d, F.3d, or F.4th). For orders of the Board, this order employs
citations to the Lexis legal database and cites only precedential decisions. Until further
notice, however, practitioners should continue to adhere to the practice set forth in TBMP
§ 101.03.
Precedential decisions of the Board, and precedential decisions of the Federal Circuit
involving Board decisions that issued January 1, 2008, or after may be viewed in TTABVUE
by entering the proceeding number, application number, registration number,
expungement/reexamination number, mark, party, or correspondent. Many precedential
Board decisions that issued from 1996 to 2008 are available online from the TTAB Reading
Room by entering the same information. Most TTAB decisions that issued prior to 1996 are
not available in USPTO databases.
Opposition No. 91285160
On November 1, 2023, the Board issued an order granting Opposer’s prior motion
to strike all of Applicant’s affirmative defenses and allowing Applicant time to
replead the non-futile defenses. Applicant filed an amended answer repleading its
putative defense of “unclean hands.” Opposer seeks to strike that defense.
I. Motion to Strike
Applicant’s amended unclean hands affirmative defense alleges: 1) Opposer has
engaged in “trademark bullying;”2 2) Opposer is among the top filers of TTAB
proceedings; 3) Opposer previously opposed a “significant number of applications” on
“dubious, weak or exaggerated” grounds; 4) Applicant is a small business that suffers
harm through Opposer’s litigation tactics; 5) Opposer’s “longstanding and habitual
practice of trademark bullying” in which Opposer engages establishes unclean hands
and bars relief to Opposer; and 6) “misuse of a trademark” gives rise to an unclean
hands defense.3
Opposer argues Applicant does not adequately plead a defense of unclean hands,
because Applicant’s assertion of the defense is conclusory and unsupported by facts
2 Applicant further defines “trademark bullying” as behavior from a trademark owner that
uses its trademark rights to harass and intimidate another beyond what the law may
consider reasonable. 11 TTABVUE 5. One commentator has defined “trademark bullying” as
conduct by a trademark owner that 1) asserts an “unreasonably inflated view” of the exclusive
scope of its mark; 2) is overly aggressive in making demands that are not proportional to the
objected to conduct; 3) is a sizeable company with substantial assets compared to 4) the
smaller business owner accused of using a confusingly similar mark. 2 J. Thomas McCarthy,
MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:92 (5th ed. Westlaw 2023) (citing
Leah Chan Grinvald, Shaming Trademark Bullies, 2011 Wisc. L. Rev. 625, 642 (2011)).
3 11 TTABVUE 5.
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Opposition No. 91285160
that would establish inequitable conduct; and that the Board has consistently
rejected an equitable defense of unclean hands based on “trademark bullying.”4
In response, Applicant argues it has properly pleaded unclean hands by alleging
“specific malfeasant behavior that gives rise to the unclean hands defense,”
specifically “filing groundless oppositions with the TTAB.”5
Pursuant to Fed. R. Civ. P. 12(f)(1) and (2), the Board may strike from a pleading
any insufficient or impermissible defense, or any redundant, immaterial, impertinent
or scandalous matter either upon its own initiative or upon motion by a party. See
Topco Holdings, Inc. v. Hand 2 Hand Indus., LLC, Opp. No. 91267988, 2022 TTAB
LEXIS at *12-14 (TTAB 2022) (on its own initiative, Board struck applicant’s first
affirmative defense and reservation of rights defense); Order of Sons of Italy in Am.
v. Profumi Fratelli Nostra AG, Opp. No. 91093618, 1995 TTAB LEXIS 9, at *6 (TTAB
1995) (granting in part opposer’s motion to strike as redundant defenses that
constituted “nothing more” than restatements of prior denials to allegations of
disparagement, contempt and/or disrepute); see also TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (TBMP) § 506 (2023).
A defense must contain sufficient factual allegations with enough detail to provide
a plaintiff fair notice of the basis for the defense. See Fed. R. Civ. P. 8(b)(1). See also
Nike, Inc. v. Palm Beach Crossfit, Inc., Opp. No. 91218512, 2015 TAB LEXIS 314, at
*10 (TTAB 2015) (claims and defenses must provide sufficient factual detail to
4 12 TTABVUE 6.
5 15 TTABVUE 2-3.
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Opposition No. 91285160
provide fair notice); IdeasOne, Inc. v. Nationwide Better Health, Inc., Can. No.
92049636, 2009 TTAB LEXIS 86, at *4 (TTAB 2009) (defense must be specific enough
to provide fair notice); TBMP § 311.02(b)(1) (“The elements of a defense should be
stated simply, concisely, and directly. However, the pleading should include enough
detail to give the plaintiff fair notice of the basis for the defense.”). An unclean hands
defense must be supported by specific allegations of misconduct by a plaintiff that, if
proved, would prevent the plaintiff from prevailing on its claim. See Midwest Plastic
Fabricators, Inc. v. Underwriters Labs., Inc., Can. No. 92015133, 1987 TTAB LEXIS
22, at *5 (TTAB 1987). Furthermore, the misconduct must be related to the plaintiff’s
claim. See Tony Lama Co. v. Di Stefano, Can. No. 92011422, 1980 TTAB LEXIS 6, at
*7 (TTAB 1980).
The Trademark Act does not refer to “trademark bullying” explicitly or even
implicitly. Rather, it provides for a trademark owner to protect its mark from
confusing uses that may infringe upon an owner’s rights through court litigation,6
and for parties who believe they would be damaged by the registration of a mark on
the Principal Register to oppose or petition to cancel such registration before the
Board.7 In cases before the Board, a plaintiff may allege that a defendant’s mark so
resembles plaintiff’s mark as to be likely, when used on or in connection with the
goods or services of the defendant, to cause confusion, or to cause mistake or to
6 Section 32(a) of the Trademark Act, 15 U.S.C. § 1114(1).
7 Sections 13 and 14 of the Trademark Act, 15 U.S.C. §§ 1063 and 1064.
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Opposition No. 91285160
deceive.8 In the context of trademark infringement litigation, courts have awarded
sanctions as a result of litigation grounded in “over-aggressive trademark
enforcement” with no reasonable basis for recovery.9 Applicant essentially argues
that Opposer’s claims of likelihood of confusion here overreach, and that as a result
Opposer has unclean hands.10
The Board has considered unclean hands based on “overzealous enforcement” and
found the affirmative defense is not established by a registrant “seek[ing] to protect
its rights in its registered marks, and preclud[ing] the registration of what it believes
to be a confusingly similar mark.” Time Warner Entm’t Co. v. Jones, Opp. No.
91112409, 2002 TTAB LEXIS 462, at *2 n.4 (TTAB 2002) (rejecting “equitable
‘unclean hands’ defense based on opposer’s allegedly overzealous enforcement of its
trademark rights” because every trademark owner has right to protect its trademark)
(quoting Avia Grp. Int’l, Inc. v. Faraut, Can. No. 92019382, 1992 TTAB LEXIS 62, at
*5-*6 (TTAB 1992)). The Board has also rejected a proposed pleading that asserted a
8 Section 2(d) of the Trademark Act , 15 U.S.C. § 1052(d).
9 MCCARTHY, supra note 2 at § 11:93. Courts have allowed an unclean hands defense based
on misuse of a trademark to violate antitrust laws where the defendant has proven the
“trademark itself” is used to accomplish the violation. Id. § 31:91. However bad intentions
alone do not form the basis for a defense of unclean hands. Id. § 31:46-47.
10 15 TTABVUE 3. Applicant cites to four cases in its amended answer and in its response
brief: St. Louis Janitor Supply Co. v. Abso-Clean Chem. Co., Can. No. 92010912, 1977 TTAB
LEXIS 120, at *6 (TTAB 1977); Dow Corning Corp. v. Doric Corp., Opp. No. 91054314, 1976
TTAB LEXIS 3, at *21 (TTAB 1976); Rieser Co., v. Munsingwear, Inc., Opp. No. 91039087,
1961 TTAB LEXIS 43, at *3 (TTAB 1961); and Scovill Mfg. Co. v. Stocko Metallwarenfabriken
Henkels und Sohn KG, Opp. No. 91056231, 1976 Commr. Pat. LEXIS 20 at *5 (Comm’r Pats.
1976). These cases involve allegations of trademark misuse, that a plaintiff claims to own a
trademark when it does not, as a possible form of unclean hands defense. They do not
mention or support a putative defense of trademark bullying.
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Opposition No. 91285160
registrant was misusing its registrations in violation of antitrust laws and the law of
unfair competition, finding,
there is nothing in respondent’s proposed pleading to suggest that
petitioner has done anything other than seek to protect its rights in its
registered marks, and preclude the registration of what it believes to be
a confusingly similar mark, a right which every trademark owner
possesses under the Lanham Act.
Avia Grp., 1992 TTAB LEXIS 62, at *6 (citations omitted).
In this instance, Opposer pleads likelihood of confusion based on its registrations
and is likewise merely exercising its right to protect its marks. A defense, as with any
pleading, must contain sufficient factual matter to give rise to a particular defense.
See, e.g., Lacteos de Honduras S.A. v. Industrias Sula, S. de R.L. de C.V., Opp. No.
91243095, 2020 TTAB LEXIS 13, at *4, (TTAB 2020) (“A complaint must contain
sufficient factual matter, accepted as true, to state a claim to relief that is plausible
on its face.”) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (cleaned up)). There
must be more than threadbare recitals supported by conclusory statements. Iqbal,
556 U.S. at 678 (citing Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)).
Applicant’s mere characterization of Opposer’s prior opposition activity as “bullying,”
or assertion of “dubious, weak or exaggerated” claims, does not constitute a sufficient
allegation of facts to support an unclean hands defense.
Accordingly, Opposer’s motion to strike is granted and the affirmative defense of
“unclean hands” is stricken from Applicant’s amended answer. As the allegations do
not support the pleaded affirmative defense, Applicant may not replead it.
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Opposition No. 91285160
II. Schedule
Proceedings are resumed. Dates are reset as set out below.
Initial Disclosures Due 6/15/2024
Expert Disclosures Due 10/13/2024
Discovery Closes 11/12/2024
Plaintiff's Pretrial Disclosures Due 12/27/2024
Plaintiff's 30-day Trial Period Ends 2/10/2025
Defendant's Pretrial Disclosures Due 2/25/2025
Defendant's 30-day Trial Period Ends 4/11/2025
Plaintiff's Rebuttal Disclosures Due 4/26/2025
Plaintiff's 15-day Rebuttal Period Ends 5/26/2025
Plaintiff's Opening Brief Due 7/25/2025
Defendant's Brief Due 8/24/2025
Plaintiff's Reply Brief Due 9/8/2025
Request for Oral Hearing (optional) Due 9/18/2025
Important Trial Briefing Instructions
Generally, the Federal Rules of Evidence apply to Board trials. Trial testimony is
taken and introduced out of the presence of the Board during the assigned testimony
periods. The parties may stipulate to a wide variety of matters, and many
requirements relevant to the trial phase of Board proceedings are set forth in
Trademark Rules 2.121 through 2.125. These include pretrial disclosures, the
manner and timing of taking testimony, matters in evidence, and the procedures for
submitting and serving testimony and other evidence, including affidavits,
declarations, deposition transcripts and stipulated evidence. Trial briefs shall be
submitted in accordance with Trademark Rules 2.128(a) and (b). Such briefs should
utilize citations to the TTABVUE record created during trial, to facilitate the Board’s
review of the evidence at final hearing. See TBMP § 801.03. Oral argument at final
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Opposition No. 91285160
hearing will be scheduled only upon the timely submission of a separate notice as
allowed by Trademark Rule 2.129(a).
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