On January 29, 2015, the US Trademark Trial and Appeal Board (TTAB) issued a precedential opinion in Ava Ruha Corporation v. Mother's Nutritional Center Inc., holding that Ava Ruha's three-year, two-month delay in petitioning to cancel Mother's Nutritional Center, Inc.'s (MNC) trademark registrations was unreasonable and sufficiently supported MNC's laches affirmative defense. On that basis, the TTAB dismissed Ava Ruha's dilution claim and raised Ava Ruha's standard at trial from likelihood of confusion to inevitable confusion (Cancellation No. 92056067, (TTAB Jan. 29, 2015)).

MNC owns trademark registrations for the marks MOTHER'S and MOTHER'S NUTRITIONAL CENTER, used in connection with retail grocery stores that exclusively feature foods authorized by the federal Women, Infants and Children (WIC) program. Both marks were published for opposition on June 16, 2009, and both registrations issued on September 1, 2009.

Ava Ruha, which does business under the name Mother's Market & Kitchen, owns two registrations for the mark MOTHER'S MARKET & KITCHEN for retail grocery stores and restaurant services featuring natural and healthy food preparations. On August 21, 2012, Ava Ruha filed petitions to cancel MNC's registration on the grounds of fraud, likelihood of confusion and dilution. Both parties filed motions for summary judgment on MNC's affirmative defense of laches.

First, the TTAB declined to consider the motions as they related to Ava Ruha's fraud claim noting that the laches defense is not available for fraud as it would be against the public interest to allow registrations that were procured or maintained by fraud.

Next, the TTAB considered the substance of MNC's defense. Because there was no genuine dispute that Ava Ruha had actual knowledge of MNC's use of the disputed marks since 1998, the TTAB used the marks' application publication dates as the starting point and calculated Ava Ruha's delay as three years and two months. Although the delay was not extreme, the TTAB found that similar time periods have supported a laches defense.

To prevail on its affirmative defense of laches, MNC was required to show both:

The TTAB considered Ava Ruha's argument that the doctrine of progressive encroachment should apply because, after beginning to use its marks, MNC allegedly repositioned its business to more squarely compete with Ava Ruha. The TTAB rejected this claim, stating that the doctrine cannot apply where the allegedly encroaching services do not extend beyond the scope of the registration, and found Ava Ruha's delay to be unreasonable.

On the second laches factor, the TTAB determined that MNC would be subject to economic prejudice if its marks were cancelled because it had continued to use its marks and invest significant money to promote its business during Ava Ruha's delay. MNC did not have to show that it relied on Ava Ruha's inaction.

The TTAB concluded that, because Ava Ruha's delay was unreasonable and prejudiced MNC as a matter of law, laches was shown.

The TTAB then applied laches to dismiss Ava Ruha's dilution claim. It declined to deny the likelihood of confusion claim, noting the dominant public interest in preventing confusion between trademarks. However the TTAB did impose on Ava Ruha a higher burden at trial, ordering that to prevail on its confusion claim, it will have to show that confusion between it and MNC's marks is inevitable, rather than merely likely.