UNITED STATES: Allegations of “Trademark Bullying” Insufficient to Plead Unclean Hands at TTAB

In a rare precedential decision, the Trademark Trial and Appeal Board (the Board) granted a motion to strike the affirmative defense of “unclean hands” based on an allegation of “trademark bullying.” See DoorDash, Inc. v. Greenerside Holdings, LLC, 2024 USPQ2d 935 (TTAB 2024) (precedential).

Greenerside Holdings, LLC (the applicant) filed the below DOOR DABZ & Design mark in connection with the delivery of medical cannabis (with the federally appropriate THC concentration) using car service. In opposing the application, Doordash, Inc. (the opposer) alleged a likelihood of confusion with eight registered DOORDASH marks principally covering delivery services.

The applicant asserted the sole affirmative defense of unclean hands. In support of the defense, the applicant alleged that the opposer engaged in “trademark bullying” as evidenced by the opposer’s position as:

• One of the top Board proceeding filers;
• Prior oppositions asserting “dubious, weak or exaggerated” grounds;
• Use of aggressive litigation tactics to the disadvantage of the applicant’s status as a small business; and
• The “misuse of a trademark.”

In its motion to strike, the opposer argued that the applicant’s defense was conclusory and unsupported by facts as required by Rule 8(b)(1) of the Federal Rules of Civil Procedure. The Board noted that in the context of trademark infringement litigation, courts have awarded sanctions as a result of “over-aggressive trademark enforcement” with no reasonable basis for recovery. J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition, § 11:93 (5th ed. Westlaw 2023).

However, the Board previously ruled in Time Warner Entm’t Co. v. Jones, an unclean hands 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.” Opp. No. 91112409, 2002 TTAB LEXIS 462, at *2 n.4 (TTAB 2002).

Therefore, the Board rejected the applicant’s argument, stating that “every trademark owner has [the] right to protect its trademark” under the Lanham Act, and that the opposer was “merely exercising its right to protect its marks.” Here, the Board found nothing to suggest the opposer did anything other than protect its rights in its registered marks.

The Board’s decision affirms that “bullying” alone is not enough to establish an unclean hands defense. Perhaps a plea with more specific allegations would have survived. However, practitioners will have to wait for another case as the Board barred the applicant from repleading the defense given that its allegations did not support the affirmative defense. The proceedings will now resume for the Board to consider the opposer’s likelihood of confusion allegations.

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