Haggar International Corp. v. United Co. for Food Industry Corp.
906 F. Supp. 2d 96
E.D.N.Y2012Background
- Haggar filed suit against United and Trans Mid-East under the Lanham Act and NY law over the MONTANA marks.
- Haggar and United dispute ownership of the MONTANA word and design marks, with Haggar asserting ownership via first use and registration.
- United challenged Haggar’s ownership, asserting fraud in Haggar’s 1989 registration and asserting prior-use defenses.
- The court held Haggar’s mark incontestable, canceled United’s MONTANA registration, and foundUnited’s counterclaims barred by laches and acquiescence; trial occurred in 2011.
- The court declined to address certain state-law claims and ordered an accounting for damages; no design-mark cancellation was addressed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Who owns the MONTANA mark in the U.S. | Haggar owns via first use and registration. | United owns or has superior rights; Haggar’s registrations were fraudulently obtained. | Haggar owns the MONTANA mark in the U.S. |
| Whether Haggar’s registrations were fraudulently obtained | Haggar acted in good faith; no clear and convincing fraud proven. | Haggar committed fraud in ownership, first-use date, and specimen bags. | Defendants failed to prove fraud by clear and convincing evidence. |
| Whether United’s counterclaims are barred by laches/acquiescence | Haggar’s rights are established; laches/acquiescence inappropriate. | United timely acted; Haggar delayed enforcement to prejudice United. | Laches bars United’s counterclaims; Haggar entitled to remove incontestable status. |
| Whether United’s ‘prior use’ defeats Haggar’s incontestability | Even with prior use, Haggar’s incontestable status stands. | Prior use negates incontestability defense. | Prior use defense fails; Haggar retains incontestable status. |
Key Cases Cited
- ITC Ltd. v. Punchgini, 482 F.3d 135 (2d Cir. 2007) (two-prong test for infringement including distinctiveness and likelihood of confusion)
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (U.S. 2004) (incontestability and evidentiary effect of registrations)
- In re Bose Corp., 580 F.3d 124 (Fed. Cir. 2009) (fraud standard in USPTO proceedings; high burden of proof)
- Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., 78 U.S.P.Q.2d 1905 (T.T.A.B. 2006) (fraud claims require clear and convincing evidence; honest belief defense)