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  • Discussion of the doctrine of res judicata.
    • Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Opposition No. 120,101, (TTAB 2002).
      • As our primary reviewing court said recently, under the doctrine of res judicata, "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action. Over the years, the doctrine has come to incorporate common law concepts of merger and bar, and will thus also bar a second suit raising claims based on the same set of transactional facts. Accordingly, a second suit will be barred by claim preclusion if: (1) there is identity of parties (or their privies); (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first." Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000) (internal citations and quotation marks omitted).
  • Earlier proceedings involving opposer's mark does not have a res judicata or collateral estoppel effect where the marks and goods at issue in the prior case are different from the earlier case(s).
    • Miss Universe L.P., LLLP v. Community Marketing, Inc., Opposition No. 91160627, (TTAB 2007)
      • Finally, the fact that opposer was the plaintiff in a 1978 opposition proceeding (No. 91062042) involving its MISS U.S.A. mark and a third party's MR. USA mark, in which the opposition ultimately was terminated and a registration issued to the applicant, is of no probative value in the present case. The only evidence pertaining to this prior case are TTABVUE and TARR records, which show only that the proceeding was filed on December 27, 1978 and instituted on March 6, 1979, that the applicant filed an answer on April 2, 1979, that an "appeal to CAFC" was taken on October 26, 1981, that the opposition was terminated on July 27, 1983, that a registration (Reg. No. 1253816) was issued to the applicant on October 11, 1983, and that the registration subsequently was cancelled under Section 8. There is no evidence from which we might ascertain the basis for the Board's apparent dismissal of the opposition and the Federal Circuit's apparent affirmance of such dismissal. We note that the goods identified in the third-party applicant's MR. USA application and registration were Class 25 clothing goods, a fact which in itself may have been the basis for a finding of no likelihood of confusion (assuming that such finding was in fact the basis of the decision and outcome of the case). The point is that we cannot determine what the basis of the decision in the prior case was; that case therefore is of no probative value. To the extent that applicant is arguing that this prior case has some sort of res judicata or collateral estoppel effect in the present case, such contention is without merit given the differences in the marks and goods at issue in the prior case.
  • Res judicata based on prior oppositions may fail if the marks at issue in those proceedings were different than the mark at issue.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • Second, applicant's res judicata argument based on prior Opposition Nos. 91160344 and 91160957 fails because the marks at issue in those proceedings were different than the mark at issue here. Chromalloy American Corp. v. Kenneth Gordon (New Orleans) Ltd., 736 F.2d 694, 698, 222 USPQ 187, 190 (Fed. Cir. 1984) ("The claim against LADY GORDON is simply not the same claim as one against GORDON OF NEW ORLEANS."); Institut National Des Appellations d'Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1894 ("applicant's MIST AND COGNAC mark is a different mark from CANADIAN MIST AND COGNAC ").
  • Where prior adjudications involve materially different mark(s), they cannot bar opposer's claims in an opposition.
    • Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008)
      • Because they involved a materially different mark, the prior adjudications cannot bar opposer's claims in this opposition.
  • Claim preclusion refers to the effect of foreclosing any litigation of matters that never have been litigated, because of a determination that they should have been advanced in an earlier suit.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • In fact, given the factual allegations in the prior opposition, specifically, petitioner's alleged prior use and ownership of the BASMA marks, that respondent was petitioner's distributor and aware of petitioner's allegedly superior rights, and that respondent alleged use of the mark in the Registration for goods similar or related to those offered by petitioner, petitioner could (and should) have asserted each of these claims in the earlier case. Id. ("The abandonment theory clearly could have been brought in the original proceeding because Vitaline had access to the affidavit and related specimens" when it filed its fraud counterclaim); see also, Nasalok Coating Corp. v. Nylok Corp., 522 F.2d 1320, 86 USPQ2d 1369, 1371 (Fed. Cir. 2008) ("Claim preclusion refers to 'the effect of foreclosing any litigation of matters that never have been litigated, because of a determination that they should have been advanced in an earlier suit.'") (citations omitted); Horphag, 220 F.3d 1325, 55 USPQ2d at 1494-95 ("To the extent that the cancellation petition expands on the false declaration allegations made in the opposition, the differences between the two pleadings are not sufficient to differentiate the claims for res judicata purposes, particularly since there was nothing in the cancellation petition that could not have been alleged in the opposition.").
  • While the parties have not yet exchanged initial disclosures, because the basis for respondent's motion is res judicata, the motion may be timely.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • While the parties have not yet exchanged initial disclosures, because the basis for respondent's motion is res judicata, the motion is timely under Trademark Rule 2.127(e)(1).
  • Case Finding: The claim adjudicated in the court case is not the same claim as the one presented in this opposition proceeding, i.e., priority of use and likelihood of confusion.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • Clearly, the claim adjudicated in the court case under the ACPA is not the same claim as the one presented in this opposition proceeding, i.e., priority of use and likelihood of confusion.
  • Petitioner cannot avoid the application of claim preclusion by merely bringing additional claims in this proceeding based on the same transactional facts as the prior opposition.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • Petitioner cannot avoid the application of claim preclusion by merely bringing additional claims in this proceeding based on the same transactional facts as the prior opposition. Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172, 1173 (Fed. Cir. 1989).
  • Under the doctrine of res judicata or claim preclusion, a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • Under the doctrine of res judicata or claim preclusion, "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based on the same cause of action." Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n. 5 (1979)).
  • Where the circuit court held that the use of the phrase violated a party's right of publicity, the TTAB holds such a ruling equivalent to a ruling under Section 2(a) within the context of a res judicata analysis.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • Accordingly, inasmuch as the Sixth Circuit held that the use of the phrase "HERE'S JOHNNY" violated John W. Carson's right of publicity, the Board holds such a ruling equivalent to a ruling under Section 2(a) of the Trademark Act within the context of our res judicata analysis.
  • A second suit is barred by res judicata or claim preclusion if (1) the parties (or their privies) are identical; (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • A second suit is barred by res judicata or claim preclusion if (1) the parties (or their privies) are identical; (2) there has been an earlier final judgment on the merits of a claim; and (3) the second claim is based on the same set of transactional facts as the first. Jet, Inc. v. Sewage American Systems, 223 F.3d 1360, 55 USPQ2d 1854, 1856 (Fed. Cir. 2000).
  • For claim preclusion based on a judgment in which the claim was not litigated, there must be (1) an identity of the parties or their privies, (2) a final judgment on the merits of the prior claim, and (3) the second claim must be based on the same transactional facts as the first and should have been litigated in the prior case.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • "For claim preclusion based on a judgment in which the claim was not litigated, there must be (1) an identity of the parties or their privies, (2) a final judgment on the merits of the prior claim, and (3) the second claim must be based on the same transactional facts as the first and should have been litigated in the prior case." Sharp Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368, 79 USPQ2d 1376, 1378 (Fed. Cir. 2006).
  • Even default judgments for failure to answer, or dismissals for failure to prosecute, where there has been no decision on the merits, can act as a bar under the doctrine of claim preclusion.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • Petitioner argues, however, that the purpose of the show cause order issued in the prior opposition pursuant to Trademark Rule 2.128(a)(3) was "to save the Board the burden of determining a case on the merits," citing TBMP 536. However, as noted above, even default judgments for failure to answer, or dismissals for failure to prosecute, where there has been no decision "on the merits," can act as a bar under the doctrine of claim preclusion. Horphag Research, 220 F.3d at 1325, 55 USPQ2d at 1492.
  • With respect to res judicata, the founder and CEO of corporation may be considered in privity with corporation.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • In view thereof, privity exists between applicant in this proceeding and the defendant in the prior civil action and prior Board proceeding for res judicata purposes. See e.g., Kraeger v. General Electric Co., 497 F.2d 468, 472 (2d. Cir. 1974) (The president and sole shareholder of a corporation was bound by the corporation's defeat in an action that he effectively controlled); and Vitronics Corp. v. Conceptronic, Inc., 27 USPQ2d 1046, 1049 (D.N.H. 1992)(founder and CEO of corporation in privity with corporation).
  • Under the doctrine of claim preclusion, the entry of a final judgment on the merits of a claim in a proceeding serves to preclude the relitigation of the same claim in a subsequent proceeding between the parties or their privies, even in those cases where prior judgment was the result of a default or consent.
    • Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008)
      • Under the doctrine of claim preclusion (res judicata), the entry of a final judgment "on the merits" of a claim (i.e., cause of action) in a proceeding serves to preclude the relitigation of the same claim in a subsequent proceeding between the parties or their privies, even in those cases where prior judgment was the result of a default or consent. See Lawlor v. National Screen Service Corp., 349 U.S. 322, 75 S.Ct. 865, 99 L.Ed. 1122 (1955); and Chromalloy American Corp. v. Kenneth Gordon, Ltd., 736 F.2d 694, 222 USPQ 187 (Fed. Cir. 1984).
  • Under the doctrine of res judicata, the entry of a final judgment on the merits of a claim in a proceeding serves to preclude the relitigation of the same claim in a subsequent proceeding between the parties or their privies, even in those cases where the prior judgment was the result of a default or consent.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • Under the doctrine of res judicata (or claim preclusion), the entry of a final judgment "on the merits" of a claim (i.e., cause of action) in a proceeding serves to preclude the relitigation of the same claim in a subsequent proceeding between the parties or their privies, even in those cases where the prior judgment was the result of a default or consent. See Lawlor v. National Screen Service Corp., 349 U.S. 322 (1955); Chromalloy American Corp. v. Kenneth Gordon, Ltd., 736 F.2d 694, 222 USPQ 187 (Fed. Cir. 1984); and Flowers Industries, Inc. v. Interstate Brands Corp., 5 USPQ2d 1580 (TTAB 1987).
  • The TTAB's order dismissing a notice of opposition may be a final judgment on the merits.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • While petitioner claims that the Board did not reach "the substantive merits" of the prior opposition proceeding, the Board's February 12, 2008 order dismissed petitioner's notice of opposition with prejudice, and entered judgment against petitioner. For claim preclusion purposes, the Board's order is a final judgment on the merits. International Nutrition Co. v. Horphag Research, Ltd., 220 F.2d 1325, 55 USPQ2d 1492, 1494 (Fed. Cir. 2000) ("default judgments can give rise to res judicata . INC therefore cannot avoid the bar of res judicata on the ground that [its predecessor-in-interest's previous] opposition was abandoned and dismissed for failure to prosecute").
  • While the TTAB's dismissal of the prior opposition would not be sufficient for issue preclusion purposes, it is a final judgment on the merits for purposes of claim preclusion.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • The language in Section 536 of the TBMP upon which petitioner relies merely relates to the Board's preference to dispose of cases which have settled, or in which the plaintiff has lost interest, without "the burden of determining a case on the merits." While the Board's dismissal of the prior opposition would not be sufficient for issue preclusion purposes, it is a final judgment on the merits for purposes of claim preclusion. Young Engineers, Inc. v. U.S. International Trade Commission, 721 F.2d 1305, 219 USPQ 1142, 1151 (Fed. Cir. 1983) ("issue preclusion operates only as to issues actually litigated, whereas claim preclusion may operate between the parties simply by virtue of the final judgment").
  • A person who is not a party of an action but who controls or substantially participates in the control of the presentation on behalf of a party is bound by the determination of issues decided as though he were a party.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • As to whether there is privity between the defendant in the prior actions and applicant, although Mr. Braxton was not a party to the prior civil action or prior Board proceeding, the basis for applying preclusion against him and applicant herein rests on his being the president and sole owner of the defendant in the prior actions. Section 39 of the Restatement (Second) of Judgments (1982) states the applicable black-letter law: "A person who is not a party of an action but who controls or substantially participates in the control of the presentation on behalf of a party is bound by the determination of issues decided as though he were a party." See also 18A C. Wright, A. Miller & E. Cooper, Fed. Prac. & Proc. Juris. 4451 (2nd ed. 2009).
  • Caution is warranted in the application of preclusion by the PTO, for the purposes of trademark procedures include protecting both the consuming public and the purveyors. Thus, the circumstances for preclusion must be certain to every intent.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • Petitioner's assertion that the merits of this proceeding should be considered because of "the grave allegations of this case," does not persuade us of a different result. We recognize that "[c]aution is warranted in the application of preclusion by the PTO, for the purposes of trademark procedures include protecting both the consuming public and the purveyors. . [thus], the circumstances for preclusion 'must be certain to every intent'." Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1314 (Fed. Cir. 2005) (quoting Russell v. Place, 94 US (4 Otto) 606, 610 (1878)) (involving a federal court infringement action followed by a Board proceeding, and the presentation of "sufficient evidence" of "materially changed marketing practices" after conclusion of the federal case).
  • Discussion of Vitaline case where the TTAB entered summary judgment in favor of General Mills on the fraud counterclaim; Vitaline then filed a subsequent petition to cancel the same registration based on abandonment, and the court affirmed the Board's summary judgment in General Mills's favor on the ground of claim preclusion.
    • Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010)
      • In Vitaline, General Mills petitioned to cancel Vitaline's registration, and Vitaline counterclaimed to cancel one of General Mills's registrations based on fraud, relying on General Mills's "Sections 8 and 15 affidavit and related specimens" to support its fraud counterclaim. The Board entered summary judgment in favor of General Mills on the fraud counterclaim. Vitaline then filed a subsequent petition to cancel the same registration based on abandonment, and our primary reviewing court affirmed the Board's summary judgment in General Mills's favor on the ground of claim preclusion. It held that "Vitaline's theories of abandonment and fraud are not only based upon the same transactional facts - use of the mark on product containers in connection with certain wording, but rely on the very same proof - the affidavit and specimens." Id., 13 USPQ2d at 1174.
  • Case Finding: The parties in this proceeding and the parties in the prior civil action and prior Board proceeding are legally equivalent.
    • The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010)
      • We find that the parties in this proceeding and the parties in the prior civil action and prior Board proceeding are legally equivalent. While John W. Carson brought the prior civil action and Board proceeding in his individual capacity while he was alive, his right to publicity survived his death. Indeed, the jurisdiction of the court which issued the permanent injunction and where applicant's business is located recognizes a common law post-mortem right to publicity. See Herman Miller, Inc. v. Palazetti Imports and Exports, Inc., 270 F.3d at 326 ("The district court did not err in recognizing a post-mortem right of publicity under Michigan common law"). Moreover, the jurisdiction where Mr. Carson lived at the time of his death, i.e., the state of California, has a statutory postmortem right of publicity. See Cal. Civ. Code 3344.1(b). Further, the record demonstrates that such right of publicity was properly assigned to the current opposer in this proceeding. See Witzer Decl. 3-7 and attached exhibits. Accordingly, privity exists between the plaintiff in the prior actions and the opposer in this proceeding.
The John W. Carson Foundation v. Toilets.com, Inc., Opposition No. 91181092 (TTAB 2010) Orouba Agrifoods Processing Company v. United Food Import, Cancellation No. 92050739 (TTAB 2010) Bausch & Lomb Incorporated v. Karl Storz GmbH & Co. KG, Opposition No. 91174518 (TTAB 2008) Daimler Chrysler Corp. v. Keith Maydak, Opposition No. 91153172 (TTAB 2008) Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc., Opposition No. 120,101, (TTAB 2002) Grand Total
Nasalok Coating Corp. v. Nylok Corp., 522 F.2d 1320, 86 USPQ2d 1369 (Fed. Cir. 2008) 1
Sharp Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368, 79 USPQ2d 1376 (Fed. Cir. 2006) 1
Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310 (Fed. Cir. 2005) 1
Jet Inc. v. Sewage Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000) 3
Horphag Research Ltd., 220 F.3d 1325, 55 USPQ2d 1492 (Fed. Cir. 2000) 1
International Nutrition Co. v. Horphag Research, Ltd., 220 F.2d 1325, 55 USPQ2d 1492 (Fed. Cir. 2000) 1
Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172 (Fed. Cir. 1989) 1
Flowers Industries Inc. v. Interstate Brands Corp., 5 USPQ2d 1580 (TTAB 1987) 1
Chromalloy American Corp. v. Kenneth Gordon (New Orleans) Ltd., 736 F.2d 694, 222 USPQ 187 (Fed. Cir. 1984) 3
Young Engineers, Inc. v. U.S. International Trade Commission, 721 F.2d 1305, 219 USPQ 1142 (Fed. Cir. 1983) 1
Parklane Hosiery Co. v. Shore, 439 U.S. 322 (1979) 1
Kraeger v. General Electric Co., 497 F.2d 468 (2d. Cir. 1974) 1
Lawlor v. National Screen Service Corp., 349 U.S. 322 (1955) 2
Russell v. Place, 94 US (4 Otto) 606 (1878) 1
Grand Total 5 10 1 2 1 19

Sec. 1115. Registration on principal register as evidence of exclusive right to use mark; defenses

  1. (a) Evidentiary value; defenses
    Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a mark registered on the principal register provided by this chapter and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration subject to any conditions or limitations stated therein, but shall not preclude another person from proving any legal or equitable defense or defect, including those set forth in subsection (b) of this section, which might have been asserted if such mark had not been registered.
  2. (b) Incontestability; defenses
    To the extent that the right to use the registered mark has become incontestable under section 1065 of this title, the registration shall be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce. Such conclusive evidence shall relate to the exclusive right to use the mark on or in connection with the goods or services specified in the affidavit filed under the provisions of section 1065 of this title, or in the renewal application filed under the provisions of section 1059 of this title if the goods or services specified in the renewal are fewer in number, subject to any conditions or limitations in the registration or in such affidavit or renewal application. Such conclusive evidence of the right to use the registered mark shall be subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the following defenses or defects:
    1. (1) That the registration or the incontestable right to use the mark was obtained fraudulently; or
    2. (2) That the mark has been abandoned by the registrant; or
    3. (3) That the registered mark is being used by or with the permission of the registrant or a person in privity with the registrant, so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or
    4. (4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin; or
    5. (5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 1057(c) of this title, (B) the registration of the mark under this chapter if the application for registration is filed before the effective date of the Trademark Law Revision Act of 1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved; or
    6. (6) That the mark whose use is charged as an infringement was registered and used prior to the registration under this chapter or publication under subsection (c) of section 1062 of this title of the registered mark of the registrant, and not abandoned: Provided, however, That this defense or defect shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant's mark; or
    7. (7) That the mark has been or is being used to violate the antitrust laws of the United States; or
    8. (8) That the mark is functional; or
    9. (9) That equitable principles, including laches, estoppel, and acquiescence, are applicable.