Excelled Sheepskin & Leather Coat Corp. v. Or. Brewing Co.
897 F.3d 413
2d Cir.2018Background
- Oregon Brewing Co. (OBC) used the mark ROGUE on beer and ROGUE‑branded clothing (t‑shirts, sweatshirts, hats, etc.) nationwide since about 1989, including sales at festivals, mail order, third‑party retailers, and later department/clothing stores (beginning 2011).
- Excelled Sheepskin & Leather Coat Corp. (Excelled) is an apparel company that first used ROGUE in 2000 on leather coats/jackets and later expanded into broader apparel lines and sold ROGUE goods through department and clothing‑only stores (by 2009–2011).
- The parties negotiated a 2007 Settlement and Trademark Consent Agreement allocating certain clothing categories between them; both then sought and obtained PTO registrations for ROGUE with narrowed descriptions/conditions.
- Excelled sued OBC in 2012 for trademark infringement based on OBC’s sale of ROGUE apparel in department and clothing‑only stores; OBC counterclaimed for trademark infringement (based on its prior use) and sought cancellation of several Excelled PTO registrations for fraud.
- The district court granted summary judgment to Excelled, dismissing OBC’s counterclaims, and entered damages/ an injunction against OBC; OBC appealed.
Issues
| Issue | Plaintiff's Argument (Excelled) | Defendant's Argument (OBC) | Held |
|---|---|---|---|
| Priority/right to use ROGUE on apparel sold in department and clothing‑only stores | Excelled claimed it had priority in those store channels and its federal registrations created a presumption of priority and validity | OBC argued it had senior common‑law rights from continuous nationwide use on the same apparel since ~1989, so Excelled was a junior user | Court: OBC has senior common‑law priority in ROGUE for the apparel at issue; Excelled’s store‑channel theory does not defeat OBC’s priority; Excelled’s summary judgment reversed on infringement claims |
| Whether first use is limited to types of retail outlets (i.e., senior user’s rights confined to stores previously used) | Excelled argued senior user’s rights could be limited by the channels previously exploited, giving Excelled priority in department/clothing stores | OBC argued trademark rights from nationwide continuous use are not confined to particular store types; junior users cannot usurp that priority by selling in different channels | Court: Rejects Excelled’s channel‑limited theory; senior user’s rights are not lost merely because it had not previously sold in particular store types |
| Laches / delay defense to OBC’s counterclaims | Excelled contended OBC knew of Excelled’s use by 2005 and delayed suit (laches), so OBC’s counters were time‑barred | OBC contended it did not know of Excelled’s use on the specific apparel categories (t‑shirts, sweatshirts, hats) until 2009 and thus sued within the laches window; Excelled was aware OBC contested use (oppositions, Agreement, Oregon suit) | Court: Genuine dispute of material fact whether laches began in 2005 or 2009; Excelled failed to show laches as a matter of law; OBC’s counterclaims should not have been dismissed on laches at summary judgment |
| Fraud on the PTO / cancellation of Excelled’s registrations | Excelled argued no clear and convincing evidence of fraud; some disclosures (like the Agreement) were known to PTO via OBC; any misstatements were inadvertent | OBC alleged Excelled omitted the 2007 Agreement and falsely claimed continuous use of certain goods (shirts, pants, children’s clothing) for three years; presented circumstantial evidence of scienter and falsity | Court: Triable issues exist on material omission and false statements with intent to deceive; summary judgment for Excelled on cancellation claim vacated and remanded for trial |
Key Cases Cited
- Virgin Enters. Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003) (sets two‑part infringement test: protectible mark and likelihood of consumer confusion)
- La Societe Anonyme de Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265 (2d Cir. 1974) (priority derives from initial appropriation and continuous use)
- Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113 (2d Cir. 1999) (registration creates a presumption but does not create substantive rights beyond common‑law use)
- Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209 (2d Cir. 2003) (discusses limits on senior user’s rights when expanding into new, unrelated product markets)
- Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167 (2d Cir. 1976) (senior user may have rights in related non‑competing goods but not in unrelated products)
- Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187 (2d Cir. 1996) (laaches presumption and six‑year analogue for trademark suits)
- ProFitness Physical Therapy Ctr. v. Pro‑Fit Orthopedic & Sports Physical Therapy P.C., 314 F.3d 62 (2d Cir. 2002) (laches clock begins when owner knew or should have known it had a provable infringement claim)
- Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment burden and need to show absence of genuine dispute)