This Opinion is not a Precedent of the TTAB Aachi Spices & Foods v. Kalidoss Raju

34 Pages·2016·0.16 MB·English

This Opinion is not a
Precedent of the TTAB

Hearing: August 31, 2016 Mailed: September 13, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Aachi Spices & Foods
v.
Kalidoss Raju
_____

Cancellation No. 92058629
_____

M. Scott Alprin and Nicholas T. Santucci of Alprin Law Offices, P.C.,
for Aachi Spices & Foods.
Davasena Reddy of HM Law Group LLP,
for Kalidoss Raju.
_____

Before Bergsman, Lykos and Greenbaum,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Kalidoss Raju (“Respondent”) has registered the mark AACHI AAPPAKADAI and
design, shown below, for “restaurant and catering services,” in Class 43.1

1 Registration No. 4375227, registered on July 30, 2013. The registration is based on
application Serial No. 85772720, filed November 6, 2012, under Section 1(a) of the Trademark
Act of 1946, 15 U.S.C. § 1051(a), claiming March 17, 2011 as the date of first use anywhere
and September 13, 2011 as the date of first use in commerce.
Cancellation No. 92058629

In his application, Respondent provided the following translation statement: “The
English translation of AACHI AappaKadai in the mark is Grandma Aappam shop.”
Respondent also explained, in his application, that “[t]he word AAPPA comes from
the tamil [sic] word “aappam” and describes an Indian type flat crepe.”2 Thus, during
the prosecution of his application for registration, the Trademark Examining
Attorney required Respondent to disclaim the exclusive right to use “AappaKadai.”
Aachi Spices & Foods (“Petitioner”) petitioned to cancel Respondent’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Respondent’s mark as used in connection with restaurant and catering services so
resembles Petitioner’s previously used and registered mark AACHI for a wide variety
of food items as to be likely to cause confusion. Petitioner pleaded ownership of the
two registrations listed below for the mark AACHI, in standard character form:
1. Registration No. 3983355 for the goods listed below:
Jellies and jams; processed peanuts; pickles; potato chips
and potato crisps; ghee; dairy products excluding ice cream,
ice milk and frozen yogurt; milk and milk products
excluding ice cream, ice milk and frozen yogurt, in Class
29; and

2 See also Respondent’s abandoned application for the mark AAPPAKADAI (39 TTABVUE
15-17) (“[t]he English translation of ‘Aappa Kadai’ in the mark is ‘pancake shop.’”).
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Cancellation No. 92058629
Masala powder and spices, in Class 30.3
2. Registration No. 4077412 for the goods listed below:
Meat, fish, poultry and game; meat extracts; preserved,
dried and cooked fruit and vegetables; fruit sauces, namely,
cranberry sauce and applesauce; fruit chips; eggs; edible
oil; coconut oil and fat; coconut powder, in Class 29; and
Turmeric, flour, preparations made from cereals, namely,
Indian food varieties prepared from cereals, including idlis,
dosas, vadas, bondas, and bajjis; mustard; rice; masala rice
for biriyani, and other spices for meat dishes of India,
namely masala powder and spices for meat dishes such as
mutton biriyani, mutton curry, mutton chops, mutton fry,
mutton chukka, chicken biriyani, chili chicken, chicken fry,
chicken lollipop, grilled chicken, pepper chicken; asafetida;
chili powders; appalum and papadum, in Class 30.4
In its applications for registration, Petitioner stated that “[t]he foreign wording in
the mark [AACHI] translates into English as a distinguished lady.”
Respondent, in his Answer, denied the salient allegations in the Petition for
Cancellation and pleaded various affirmative and putative affirmative defenses,
including the affirmative defense of laches.5

3 Registered on June 28, 2011. This registration was based on application Serial No.
77980022, filed August 20, 2008, filed and registered pursuant to Section 44(e) of the
Trademark Act, 15 U.S.C. § 1126(e).
4 Registered on December 27, 2011. This registration was based on application Serial No.
77551668, filed August 20, 2008, filed pursuant to Section 44(e) of the Trademark Act, 15
U.S.C. § 1126(e), but eventually registered based on use.
5 Respondent’s fifth affirmative defense.
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Cancellation No. 92058629
I. Preliminary Issues
Respondent pleaded and argued in its trial brief 11 “affirmative” defenses.
Respondent’s eighth affirmative defense (unclean hands), if successful, would prevent
Petitioner from relying on its pleaded registrations.
Respondent’s first “affirmative defense” is a pleading that the Petition for
Cancellation fails to state a claim upon which relief can be granted. Failure to state
a claim upon which relief can be granted is an alleged defect to Petitioner’s pleading,
not an affirmative defense. In this case, it has no merit.
Respondent’s second, third, seventh, tenth and eleventh “affirmative defenses” are
amplifications of his defenses to the Petition for Cancellation rather than affirmative
defenses.
As his fourth affirmative defense, Respondent pleaded that Petitioner’s mark is
generic or merely descriptive and, as his ninth affirmative defense, Respondent
pleaded that Petitioner committed fraud on the USPTO during the prosecution of its
applications for registration because Petitioner did not translate the mark AACHI as
“grandma.”6 These allegations are attacks on the validity of Petitioner’s pleaded
registrations. As such, we may not consider them absent a counterclaim to cancel
those registrations. See 37 C.F.R. § 2.106(b) and 37 C.F.R. § 2.114(b); Nasalok Coating
Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369, 1373 n.3 (Fed. Cir. 2008); Food
Specialty Co. v. Standard Products Co., 406 F.2d 1397,161 USPQ 46, 46 (CCPA 1969);
Gillette Co. v. “42” Products Ltd., Inc., 396 F.2d 1001, 158 USPQ 101,104 (CCPA 1968)

6 Tenth affirmative defense.
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Cancellation No. 92058629
(allegedly admitted periods of nonuse by opposer disregarded in absence of
counterclaim to cancel registration); Contour Chair-Lounge Co. v. The Englander Co.,
324 F.2d 186, 139 USPQ 285,287 (CCPA 1963) (improper for Board to allow applicant
to collaterally attack registration in opposition where, although registration had been
directly attacked by applicant in separate petition to cancel, said petition had been
dismissed); Giant Food, Inc. v. Standard Terry Mills, Inc., 229 USPQ 955, 961
(TTAB1986); Textron, Inc. v. The Gillette Co., 180 USPQ 152, 153 (TTAB 1973)
(defense attacking validity of pleaded registration must be raised by way of
cancellation of registration). Therefore, we cannot consider Respondent’s fourth and
ninth affirmative defenses.
As his sixth affirmative defense, Respondent pleaded that Petitioner’s claims are
barred by the doctrine of fair use. The “fair use” defense of Section 33(b)(4) of the
Trademark Act, 15 U.S.C. § 1115(b)(4), is a defense available to a defendant in a
federal action charged with infringement of a registered mark, [See, e.g., KP
Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 72 USPQ2d
1833,1836 (2004)], and has no applicability in inter partes proceedings before the
Board, which involve only the issue of registrability of a mark. See Truescents LLC v.
Ride Skin Care LLC, 81 USPQ2d 1334, 1338 (TTAB 2006); Miles Laboratories Inc. v.
Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1454 (TTAB 1986). Further,
the “noncommercial use” exception of Section 43(c)(3)(C) of the Trademark Act, 15
U.S.C. § 1125(c)(3)(C), does not apply in a Board proceeding involving a mark sought
to be registered as a trademark or service mark, because an applicant seeking
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Cancellation No. 92058629
registration is necessarily relying on a claim of use of its mark, or intended use of its
mark, in commerce. American Express Marketing & Development Corp. v. Gilad
Development Corp., 94 USPQ2d 1294, 1298 (TTAB 2010). See also Research in Motion
Limited v. Defining Presence Marketing Group Inc., 102USPQ2d 1187, 1188 (TTAB
2012) (Board will assess alleged parody as part of the circumstances in determining
whether plaintiff has made out its claim).
Finally, we review Respondent’s eighth affirmative defense, an allegation that
Petitioner’s claims are barred by the doctrine of unclean hands because Petitioner did
not translate the foreign word “aachi” as “grandma.” As noted above, in its
applications for registration, Petitioner stated that “[t]he foreign wording in the mark
[AACHI] translates into English as a distinguished lady.” Respondent argues that if
Petitioner had translated “aachi” as “grandmother,” the Trademark Examining
Attorney may have refused registration of Petitioner’s mark.
[T]he Examiner would have at such time by virtue of the
doctrine of foreign equivalents conducted a search of all
records that contained the words GRANDMOTHER,
MOTHER, GRANDMA or any variation thereof such as
Nonna, Abuela, Mama, Babushka[,] Mamina[,] etc[.]
against the applied for goods. Grandmother and Mother
[have] long been used in association with food products and
restaurant services as [they] suggest[] tasty food, food that
is homemade, food one can trust. Accordingly, one would
expect to find hundreds of trademarks at the USPTO with
the term Grandmother that are associated with food or
restaurant services.7

7 Respondent’s Brief, p. 9 (44 TTABVUE 14).
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Cancellation No. 92058629
The equitable doctrine of unclean hands prevents a plaintiff from relying on its
pleaded registration if it made a false statement during the prosecution of its
application for registration or maintenance of its registration. See Duffy-Mott Co.,
Inc. v. Cumberland Packing Co., 424 F.2d 1095, 165 USPQ 422, 425 (CCPA 1970). In
Duffy-Mott, the Court of Customs and Patent Appeals (a predecessor court of the U.S.
Court of Appeals for the Federal Circuit), precluded the plaintiff in that case from
relying upon a pleaded registration where, as here, there was no counterclaim or
petition to cancel that registration. In that case, the plaintiff's predecessor had filed
a combined affidavit under Sections 8 and 15 attesting to the continued use of the
mark involved in that case when the mark had not in fact been in use on those goods.
We agree with applicant that the act of opposer's
predecessor in interest in filing a patently false combined
affidavit under sections 8 and 15 on March 15, 1960,
precludes reliance in these proceedings on the registration
thus maintained in force…
…[W]e are of the view that opposer may not rely on its
registration for any purpose in the Patent Office or in this
court on appeal therefrom. We consider that filing a sworn
statement as far from the truth as was that which was filed
precludes opposer from relying on the registration in these
proceedings. This is in accord with the principle of the
equitable doctrine of “unclean hands.”
Duffy-Mott Co., Inc. v. Cumberland Packing Co., 165 USPQ at 424-25. See also
Hornblower & Weeks Inc. v. Hornblower & Weeks Inc., 60 USPQ2d 1733, 1738 (TTAB
2001) (where the conduct alleged to have resulted in unclean hands relates to a
plaintiff's acquisition, or attempt to acquire, a registration, the unclean hands
defense goes only to the plaintiff's ability to rely on its registration, not to its common
law rights); Phonak Holding AG v. ReSound GmbH, 56 USPQ2d 1057, 1059 (TTAB
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Cancellation No. 92058629
2000) (a proper pleading of unclean hands in this case must include an allegation
that opposer's predecessor made specific misrepresentations of fact which caused the
examining attorney to allow publication of opposer's mark); Lever Brothers Company
v. Shaklee Corporation, 214 USPQ 654, 659-660 (TTAB 1982).
Petitioner’s founder and Chairman, A. D. Padmasingh Isaac, testified that
“‘AACHI’ is a popular and fond way to address women in the Chettinad region of
India, and it is used to denote a distinguished lady.”8 On cross-examination, Mr. Isaac
testified as follows:
The word AACHI is used to denote any distinguished
“elderly woman.” Some people use it to refer to their
mother or grandmother. The word AACHI is also used to
refer to elderly persons other than one’s mother or grand
mother [sic].9
Nevertheless, Petitioner used the word “Aachi” as meaning grandmother and/or
mother on its website as described below:
Aachi – The Word
‘Aachi’ is a fond reference to ‘Grand Mother’ in Chettinad
Tamil. Food made by mother is always special and in good
taste. If mother has a language of her own, it is the
language of love and good taste. Good tasting food is always
a favourite with the young and old.10
Respondent introduced a decision of the High Court of Madras, India regarding a
case between Petitioner and Aachi Aapakadai Chettinad A/c Restaurant in India to
show the meaning of the word “Aachi.”

8 Testimony declaration of A. D. Padmasingh Isaac ¶5 (22 TTABVUE 7-8).
9 Petitioner’s responses to Respondent’s cross-questions ¶1C (22 TTABVUE 100).
10 40 TTABVUE 98.
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Cancellation No. 92058629
6(1) The word ‘AACHI’ is a common Tamil word, which is
prominently used in Chettinad region of Tamil Nadu. The
simple meaning of the word ‘AACHI’ is elderly woman.
This word is commonly used in relation to Chettinad Style
of cooking.11
Because the word “Aachi” appears to have several meanings (e.g., distinguished
lady, elderly woman, grandmother, etc.), we cannot find that Petitioner made a false
statement during the prosecution of its applications for registration by submitting
the translation of “Aachi” as a distinguished lady.
Also, it is not clear that the Trademark Examining Attorney would have applied
the doctrine of foreign equivalents to translate the word “Aachi” to “grandmother”
and then search for and potentially cite as a bar to registration any relevant mark
incorporating the word “grandmother” or a foreign equivalent. “Under the doctrine of
foreign equivalents, foreign words from common languages are translated into
English to determine genericness, descriptiveness, as well as similarity of
connotation …” “In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1637 (Fed.
Cir. 2016) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005)). “The translation …
must be one that is likely to be made by a significant number of prospective
purchasers.” Bottega Venetta, Inc. v. Volume Shoe Corp., 226 USPQ 964, 967 (TTAB
1985) (quoting Jules Berman & Assoc., Inc. v. Consolidated Distilled Prods., Inc., 202
USPQ 67, 70 (TTAB 1979)). “When it is unlikely that an American buyer will
translate the foreign mark and will take it as it is, then the doctrine of foreign

11 Respondent’s second notice of reliance, Exhibit 115 (40 TTABVUE 104 at 107).
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Cancellation No. 92058629
equivalents will not be applied.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 73 USPQ2d at 1696 (citing In re Tia Maria, Inc., 188 USPQ
524, 525-26 (TTAB 1975) (“it is unlikely to expect that a person encountering ‘AUNT
MARY'S’ canned fruits and vegetables in a supermarket or other establishment
where goods of this type are customarily sold would translate ‘AUNT MARY'S’ into
‘TIA MARIA’, and then go one step further and associate these food products with
applicant’s restaurant.”) and In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB
1976) (the doctrine of foreign equivalence should be applied only when it is likely that
the ordinary American purchaser would stop and translate the foreign word into its
English equivalent)).
“Aachi” is a word derived from the Tamil language. “Tamil is a language spoken
in the State of Tamil Nadu in India. Tamil Nadu is one of the 28 States in India.”12
As of 2011, Tamil Nadu had a population of 72 million. “Although Tamil is also one
of the official languages of Srilanka and Singapore, it is spoken by a linguistic
minority in these countries.”13 However, there is no evidence or testimony regarding
how many consumers in the United States speak Tamil. Accordingly, based on the
record, in comparing the word “Aachi” with “grandmother,” there is no evidence that
an appreciable number of purchasers are likely to be aware that “Aachi” means
“grandmother” and, therefore, we find that consumers in the United States are
unlikely to translate the word “Aachi” into English.

12 Isaac Declaration ¶5 (22 TTABVUE 7-8).
13 Isaac Cross-examination Declaration ¶1A (22 TTABVUE 100).
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