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Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing Co.

United States Court of Appeals, Second Circuit

July 27, 2018

Excelled Sheepskin & Leather Coat Corp., Plaintiff-Counter-Defendant-Appellee,
v.
Oregon Brewing Company, Defendant-Counter-Claimant-Appellant.

          Argued: June 22, 2017

         Defendant Oregon Brewing Company ("OBC") appeals from the grant of summary judgment in favor of Plaintiff Excelled Sheepskin & Leather Coat Company ("Excelled") by the United States District Court for the Southern District of New York (George B. Daniels, J.), finding that OBC infringed Excelled's trademark in ROGUE for apparel, enjoining OBC from use of the mark on apparel in department stores, and dismissing OBC's counterclaims for infringement and for cancellation of Excelled's federal trademark registrations. Because OBC was the senior user and the evidence did not show that it was precluded by laches, the court erred in granting summary judgment for Excelled. VACATED in part, REVERSED in part, and REMANDED.

          Michael A. Grow, Arent Fox LLP, Washington, DC & BERNICE K. LEBER, Arent Fox LLP, New York, NY, for Plaintiff-Counter-Defendant-Appellee.

          John J. Dabney, McDermott Will & Emery LLP, Washington, DC, for Defendant-Counter-Claimant-Appellant.

          Before: DENNIS JACOBS, PIERRE N. LEVAL and REENA RAGGI, Circuit Judges.

          LEVAL, Circuit Judge.

         In a trademark dispute over use of the brand-name ROGUE on t-shirts, sweatshirts, hats and similar apparel, Defendant Oregon Brewing Company ("OBC") appeals from the grant of summary judgment in the United States District Court for the Southern District of New York (George B. Daniels, J.) in favor of Plaintiff Excelled Sheepskin & Leather Coat Corporation ("Excelled"). OBC is a commercial brewery, which sells beer under the brand name ROGUE nationwide. Since 1989, OBC has also used the ROGUE brand on clothing, such as t-shirts, sweatshirts, hats, and similar apparel. Excelled is an apparel company. In 2000, it began to use ROGUE as a brand on leather coats and jackets. In 2009, Excelled began to use ROGUE, in department stores and stores that sell only clothing ("clothing-only stores"), on the same categories of apparel that OBC had long marketed under ROGUE.

         Excelled sued OBC in 2012 alleging inter alia trademark infringement based on OBC's sale of ROGUE-branded apparel in department and clothing- only stores beginning in 2011. OBC counterclaimed in 2012 alleging inter alia trademark infringement by Excelled, based on Excelled's sales of ROGUE- branded t-shirts, sweatshirts, and hats beginning in 2009. OBC also sought cancellation of four of Excelled's federal trademark registrations on the theory of fraud on the trademark office.

         The district court granted Excelled's motion for summary judgment on trademark infringement against OBC, and also granted Excelled's motion for summary judgment dismissing OBC's counterclaims. The district court relied primarily on the fact that, notwithstanding OBC's priority in the use of the mark on the types of apparel in question, Excelled was the first to use the mark on such goods in department stores and clothing-only stores, which the district court concluded gave Excelled priority in those categories of stores. In addition, the court concluded that Excelled's prior registration of its ROGUE mark in the Trademark Office established its priority notwithstanding OBC's prior use, and that OBC had forfeited its claims through laches by delay in suing. We find that the district court erred in its reasoning. We accordingly vacate in part, reverse in part, and remand.

         BACKGROUND

         I. Facts

         The following facts are undisputed.

         OBC is a commercial brewery founded in 1988. Its principal merchandise is beer, which it sells under the mark "ROGUE." Since approximately 1989, it has also sold ROGUE-branded clothing and other merchandise, including t-shirts, hats, sweatshirts, and aprons, throughout the United States, including in its pubs, brewery, bed and breakfasts, and hop farm. Since the mid-1990s, OBC has sold ROGUE clothing at beer festivals across the country and via mail order nationwide. In 1995, OBC began distributing its ROGUE clothing through third-party retailers Fred Meyer and Cost Plus. Since 2004, OBC's ROGUE clothing has been sold through other retail stores and websites, including Beer Clothing Co., Crazy Shirts, Portland State University's bookstore, Whole Foods, and sharpedgebeer.com. In 2011, OBC began selling its ROGUE clothing through department and clothing- only stores, including Urban Outfitters, Nordstrom, and Sears. Since 2012, OBC has used its own website and those of eBay and Amazon in the sale of its ROGUE clothing.

         Excelled is an apparel company founded in 1927. Excelled's first sale of any item bearing the mark ROGUE occurred in 2000. Initially, most of Excelled's clothing products were made of, or contained, leather. Following the 2008 recession, Excelled "expand[ed] its product line" and began selling more non-leather products, including complete outfits of ROGUE-branded clothing. Excelled currently sells a variety of clothing and footwear bearing marks that include the word ROGUE. Excelled sells its ROGUE products through department stores and clothing-only stores, including Nordstrom, Saks, Neiman Marcus, and Macy's, and through websites, including its own: rogue.us.com.

         In 2004 and 2005 respectively, Excelled and OBC both applied to the United States Patent and Trademark Office ("PTO") to register the mark ROGUE. Excelled had previously registered the mark ROGUE LEATHER BY REILLY OLMES. App'x 764-65. As part of its application to register ROGUE, Excelled submitted a sworn declaration that, as of 2004, it was using ROGUE on "men's, ladies' and children's clothing, namely coats, jackets, vests, shirts and pants." Id. at 786 (internal quotations omitted). After the PTO expressed concern about a likelihood of confusion from both parties' uses of the mark, Excelled and OBC entered into a Settlement and Trademark Consent Agreement ("the Agreement") requiring each to delete certain items of clothing from their pending applications. Excelled consented to OBC's registration of ROGUE for all clothing "excluding jackets, coats and skirts." Id. at 194. OBC consented to Excelled's registration of ROGUE for "jackets, coats and skirts . . . and/or footwear," and further to Excelled's use of ROGUE on "jackets, coats, shirts and skirts." Id. at 193 (internal quotations omitted) (emphasis added). The Agreement asserted the parties' belief that, "so long as the respective marks are used in the manner set forth in this Agreement there will be no likelihood of confusion between the respective marks." Id. at 194, 198.

         OBC submitted a copy of the Agreement to the PTO and narrowed its application to "clothing, namely t-shirts, sweatshirts, polo shirts, turtlenecks, aprons, hats, and not including jackets, coats and skirts." Id. at 822 ¶88 (internal quotations and emphasis omitted). The PTO responded by explaining that "[t]he exclusion of specific articles of clothing is not enough to overcome a likelihood of confusion with an identical mark for other clothing items." Id. at 791 ¶20 (internal quotations omitted). OBC further narrowed its application to goods "sold primarily in the trademark owner's brewpubs and web site." Id. at 822 ¶90. The PTO then registered OBC's ROGUE mark for goods sold "primarily in the trademark owner's brewpubs and web site." Id. at 792-93. The PTO also registered Excelled's ROGUE mark for "clothing, namely, coats, jackets, vests, shirts and pants," Id. at 774 (registration number 3, 346, 559). Excelled subsequently filed a Declaration of Use and Incontestability for the mark ROGUE LEATHER BY REILLY OLMES, submitting to the PTO a sworn declaration that, as of February 2010, the mark was "in use in commerce on . . . men's women's and children's clothing made in whole or in substantial part of leather, namely, coats, vests, shirts, and pants." Id. at 767 (internal quotations omitted) (emphasis added). Excelled also registered the marks ROGUE STATE and ROGUE for footwear. Id. at 774.

         II. Proc ...


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