Bridgеstone/Firestone Research, Inc. (“Bridgestone”) is the owner of Trademark Registration No. 756,436 for the mark LE-MANS for “pneumatic rubber tires” on the principal register, issued on September 10, 1963. The United States Patent and Trademark Office Trademark Trial and Appeal Board granted the petition of Automobile Club de l’Ouest de la France (“Automobile Club”) to cancel the registration. 1 We reverse the Board’s decision.
BACKGROUND
The Automobile Club, a French entity, manages an automobile race in the city of Le Mans, France, called “Les 24 Heures du Mans.” The Le Mans race was first run in 1923, and is internationally known. In 1986 the Automobile Club was granted United States Trademark Registration No. 1,386,349 on the supplemental register, for the mark LE MANS for “automobile tires.” In 1991, Bridgestone filed a petition to cancеl the Automobile Club’s registration, based on Bridgestone’s 1963 registration of LEMANS for tires. That cancellation petition was granted, and is not appealed.
The Automobile Club counterclaimed for cancellation of Bridgestone’s registration, on the ground that Bridgestone’s trademark use of LEMANS falsely suggested a connection with the Automobile Club and its sponsorship of the Le Mans race, in violation of § 2(a) of the Lanham Act:
15 U.S.C. § 1052(a). No trademark ... shall be refused registration on the principаl register on account of its nature unless it ,.. falsely suggests] a connection with persons, living or dead, institutions, beliefs, or national symbols.
Bridgestone denied the charge and raised, inter alia, the defense of laches based on the passage of twenty-seven years between issuance of its LEMANS registration and the Automobile Club’s cancellation petition.
The Board granted the cancellation petition, holding that “the term LEMANS points uniquely and unmistakably to the Automobile Club, and that the Automobile Club’s race is of sufficient fame or reputation that when Bridgestone’s mark LE-MANS is used on tires, a connection with the Automobile Club would be presumed.” The Board rejected the laches defense, ruling that Bridgestone had not provided adequate evidence of its reliance on the *1361 Automobile Club’s twenty-seven years of silence.
Bridgestone аppeals, arguing that the Board incorrectly applied the criteria of laches, that the Board misapplied the law of § 2(a) false suggestion of connection, and that the Automobile Club does not have a protectible § 2(а) interest in the LEMANS trademark.
DISCUSSION
Rulings of PTO tribunals are reviewed by the Federal Circuit in accordance with the standards of the Administrative Procedure Act.
See Dickinson v. Zurko,
A
By statute, the defense of laches is available in trademark proceedings.
See
15 U.S.C. § 1069 (“In all inter partes proceedings equitable principles of laches, es-toppel, and acquiescence, where applicable may be considered and applied.”). Bridge-stone, as the party raising the affirmаtive defense of laches, bears the burden of proof.
See
Fed.R.Civ.P. 8(c) (characterizing laches as an affirmative defense);
Cornetta v. United States,
To prevail on its affirmative defense, Bridgestone was required to establish that there was undue or unreasonable delay by the Automobile Club in asserting its rights, and prejudice to Bridgestone resulting from the delay.
See Lincoln Logs Ltd. v. Lincoln Pre-Cut Log Homes, Inc.,
n.5 The only affirmative defenses maintained by Bridgestone in its brief werе “laches” and “estoppel by laches.” The record does not reflect evidence on these defenses; and in Bridgestone’s brief, it stated only very general information about its alleged reliance on the Automobile Club’s delay in seеking cancellation of Bridgestone’s registration. For example, Bridgestone stated that “... in reliance on the lack of any objection for so many decades, Firestone has designed, marketed, and sold many tires under the name LEMANS”; and “Firestоne would obviously not have invested so much time and money in its LE-MANS tires had [the Automobile Club’s] objections been timely raised....”
Bridgestone provided absolutely no specific information regarding its alleged reliance on the Automobile Club’s alleged silence. While it is clear that there has been a delay in seeking cancellation of Bridgestone’s registration, Bridgestone has not proven the elements of the affirmative defenses of laches and estoppel by laches.
Bridgestone, slip op. at 5 n. 5.
Undue Delay
In determining whether a party has too long “slept on its rights” it is
*1362
necessary to show that the party knew or should have known that it had a right of action, yet did not act to assert or protect its rights.
Cf. A.C. Aukerman Co.,
The Trademark Act establishes various events in the life of a registered trademark which impact upon an adverse claimant, from which events action could be taken and thus from which the period of delay may be measured. Thus 15 U.S.C. § 1072 provides that registration on the principal register is constructive notice of the registrant’s claim of ownership of the trademark; § 1065 states the conditions of incontestability of the registrant’s right to use the trademark; and § 1115 provides that registration is evidence of the registrant’s exclusive right to use the trademark. All of these events, including constructive notice, widespread commercial use (knowledge of which is not denied by thе Automobile Club), and the passing of twenty-seven years after registration, accompanied by the absence of a reasonable excuse by the Automobile Club for its inaction, require that the Automobile Club be charged with undue delay in seeking сancellation of Bridgestone’s trademark registration.
See National Cable Television Ass’n, Inc. v. American Cinema Editors, Inc.,
Prejudice
Lachеs is “principally a question of the inequity of permitting the claim to be enforced — an inequity founded upon some change in the condition or relations of the property or the parties.”
Galliher v. Cadwell,
Two general categories of prejudice may flow from an unreasonable delay: prejudiсe at trial due to loss of evidence or memory of witnesses, and economic prejudice based on loss of time or money or foregone opportunity.
See A.C. Aukerman Co.,
The Bоard’s requirement of “specific” evidence of “rebanee” on the Automobile Club’s silence could relate to proof of estoppel, but it does not apply to laches. When there has been an unreasonable pеriod of delay by a plaintiff, economic prejudice to the defendant may ensue whether or not the plaintiff overtly lulled the defendant into beheving that the plaintiff would not act, or whether or not the defendant believed that the plаintiff would have grounds for action.
See A.C. Aukerman Co.,
Bridgestone’s evidence of undue delay and prejudice was uncontroverted by the Automobile Club. The Board’s ruling rested on an erroneous interpretation of the law of lаches, leading to an unreasonable exercise of judgment. Thus the Board’s rejection of the defense of laches was an abuse of discretion. That ruling is reversed.
B
The Automobile Club contends that laches is not an available defense to the § 2(a) ground of “false suggestion of a connection,” because “false suggestion” involves the public interest in avoiding deception as to the origin or sponsorship of a product. However, the rights protected under the § 2(a) false suggestion provision are not designed primarily to protect the pubbe, but to protect persons and institutions from exploitation of their persona.
See University of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., Inc.,
*1364 C
The Automobile Club also argues that laches can not apply to its § 2(a) claim because Bridgestone’s trademark use of LEMANS is a “continuing wrong” for which every use is a new injury. However, when the obligation arises to assert an objection to a trademark registration, that obligation is not postponed by continued use of the trademark. Indeed, as was observed in
Hot Wax,
We conclude that the theory of “continuing wrong” does not shelter the Automobile Club from the defense of laches.
Conclusion
The Automobile Club’s cancellation petition is barred by laches. The decision of cancellation of Bridgestone’s registration of LEMANS for tires is
REVERSED.
Notes
. Bridgestone/Firestone Research, Inc. v. Automobile Club de l’Ouest de la France, Cancellation No. 19,683 (TTAB July 21, 1999).