The opinion of the court was delivered by: LEVAL
Upon submission of forms of judgment for entry, P&G contends that PPC's application for the cancellation of P&G's Assure marks for mouthwash and shampoo should be denied because PPC has failed to demonstrate that it is damaged by the continued registration of those marks. P&G contends that such proof of damage is required by the terms of § 14 of the Lanham Act, 15 U.S.C. § 1064. See Fuller Products Co. v. Fuller Brush Co., 299 F.2d 772 (7th Cir. 1962); D.M. & Antique Import Corp. v. Royal Saxe Corp., 311 F. Supp. 1261, 1269 (S.D.N.Y.1970).
PPC responds that the provisions of § 14 are only applicable when the petitioner initiates an action seeking cancellation. It argues that where cancellation is sought defensively, the provisions of § 37, 15 U.S.C. § 1119, establish the court's power to order cancellation irrespective of proof of damage. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1972).
Assuming, but not deciding that P&G is correct in its statutory interpretation, I find that PPC has demonstrated such damage as may be required by the terms of § 14. P&G brought this action in part on behalf of its Assure marks seeking to enjoin PPC's use of Assure for tampons. When PPC was forced to defend this action, it sustained damage and was put in fear of further damage sufficient to justify its plea for cancellation.
If, while P&G's action was pending, PPC had brought a cancellation proceeding in the Patent Office directed at the Assure marks, I have no doubt that the fact of P&G's attack on PPC's Assure mark would have provided the showing of harm necessary to satisfy the damage requirement of § 14. This is no less so because PPC chose to assert the plea by answer and counterclaim rather than by a separate cancellation proceeding in the patent office. At the time these demands were asserted by PPC it was clear that P&G's demand for an injunction presented a real possibility of damage to PPC. PPC cannot have lost such standing by prevailing in the lawsuit. P&G, having required PPC to defend a lawsuit brought on behalf of P&G's Assure marks, cannot reasonably be heard to deny that its Assure marks are damaging to PPC. Damage has already been inflicted.
Moreover, P&G's action suggests the possibility of still further harm to PPC's right to register, freely use, and expand its use of its Assure mark if registration of P&G's marks is continued.
Accordingly the judgment will provide for cancellation of P&G's Assure marks.
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