Anshu B. Pathakv.Omaha Steaks International, Inc.

Trademark Trial and Appeal BoardMar 16, 2012

No. 92052101 (T.T.A.B. Mar. 16, 2012)

coggins Mailed: March 16, 2012 Cancellation No. 92052101 Anshu B. Pathak v. Omaha Steaks International, Inc. Before Grendel, Bergsman, and Shaw, Administrative Trademark Judges. By the Board: This case comes up on respondent's motion (filed August 23, 2010) for summary judgment. The motion is fully briefed. As an initial matter, we note that petitioner filed (on May 10, 2011) a sur-reply to the motion. Inasmuch as Trademark Rule 2.127(a) prohibits sur-replies, we have given no consideration to that filing. Background Petitioner seeks to cancel respondent's registration for the mark STEAK OF THE MONTH for "electronic retailing services UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board P.O. Box 1451 Alexandria, VA 22313-1451 THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Cancellation No. 92052101 2 via computer featuring food and food related products."1 As grounds for cancellation, petitioner alleges that the mark is generic and that the examining attorney erred in the examination of the underlying application. A review of the petition to cancel reveals that, as to his standing, petitioner alleges that he has been sued by respondent which asserts rights in the mark STEAK OF THE MONTH (petition, para. A); that he is operating an on-line retail store featuring meats at steakofthemonthclub.com (para. B); that he has been doing business as steakofthemonthclub.com since October 11, 1999 (para. P); that the examining attorney of the underlying application, which matured into the subject registration, failed to verify petitioner's business at steakofthemonthclub.com (para. P); that respondent filed a trademark infringement action2 against petitioner in the U.S. District Court for the Central District of California based on his steakofthemonthclub.com and meatofthemonthclub.com web sites (para. N); and that he has been prejudiced by the error of the examining attorney, and has been a victim of the lawsuit filed by respondent (para. O). 1 Registration No. 3059274, issued February 14, 2006, under Section 1(a), claiming a date of first use any where and a date of first use in commerce of November 3, 2005. A disclaimer of the word STEAK is of record. A Section 8 Affidavit has been filed. 2 Civil action No. 2:09-cv-02854-RGK-FFM, filed April 23, 2009, styled Omaha Steaks International, Inc. v. Anshu Pathak d/b/a Steak of the Month Club, et al. Cancellation No. 92052101 3 Motion for Summary Judgment In a motion for summary judgment, the moving party has the burden of establishing that there is no genuine dispute as to any material fact and that it is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). A genuine dispute with respect to a material fact exists if sufficient evidence is presented such that a reasonable fact finder could decide the question in favor of the non-moving party. See Opryland USA Inc. v. Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus, all doubts as to whether any particular factual issues are genuinely in dispute must be resolved in the light most favorable to the non-moving party. See Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). 1. The parties' arguments In support of its motion, respondent argues that a default judgment and permanent injunction was entered against petitioner in the pleaded civil action; that the default judgment and permanent injunction bar petitioner from, among other things, selling or offering for sale any products bearing any designation resembling respondent's STEAK OF THE MONTH mark or engaging in any acts that infringe on respondent's STEAK OF THE MONTH mark, and orders the transfer of ownership from petitioner to respondent of the domain names steakofthemonth.com and meatofthemonth.com; that as a result Cancellation No. 92052101 4 of petitioner's repeated attempts to re-litigate issues previously determined by the district court, the district court has deemed petitioner a vexatious litigant; and that, as a result of the default judgment in the civil action, the current cancellation proceeding is barred by the doctrine of res judicata. Respondent's motion is supported by, among other exhibits, a copy of the district court's default judgment and permanent injunction in Omaha Steaks International, Inc. v. Anshu Pathak d/b/a Steak of the Month Club, et al ., 2:09-cv-02854-RGK-FFM (C.D. Cal. May 20, 2010). In response, petitioner argues that respondent perpetrated various frauds on the district court in obtaining the default judgment; that res judicata does not apply to a judgment obtained through fraud; that respondent perpetrated various frauds on the Office in obtaining the subject registration; that the Office failed to properly handle a letter of protest (which petitioner calls an "opposition") filed by petitioner against the underlying application; and that the Office failed to follow proper procedure during examination of the underlying application. 2. The court's order The following facts are among those ordered, adjudged, and decreed by the district court: Omaha Steaks is the owner of Registration No. 3059274 for the mark STEAK OF THE MONTH. (Order, para. 2.) Cancellation No. 92052101 5 As a result of Anshu Pathak's failure to appear at either a scheduling conference or a show cause hearing, the court struck Pathak's answer and entered default against Pathak. (Paras. 5-6.) Omaha Steaks moved for judgment by default and an order for permanent injunction. (Para. 7.) Pathak filed a written opposition to Omaha Steaks' motion. (Para. 8.) On March 18, 2010, the Court granted Omaha Steaks' motion against Pathak. (Para. 10.) On May 20, 2010, the district court entered its default judgment and permanent injunction whereby Anshu Pathak (petitioner herein) was permanently enjoined from: Engaging in acts that infringe the trademark STEAK OF THE MONTH (the "Steak of the Month Mark"), which is owned by Omaha Steaks (order, para. 11a); Selling or offering for sale any products bearing any designation resembling the Steak of the Month Mark (para. 11b); Utilizing any phrase, logo or artwork comprised of the words "Steak of the Month" or "Meat of the Month" in connection with labeling, advertising or promoting food related products or services (para. 11e); Acquiring or owning a domain name that is comprised in whole or in part of the words "Steak of the Month" or "Meat of the Month" (para. 11f); Engaging in acts of registering, trafficking in, or using domain names which are identical with, confusingly similar to and/or dilutive of the Steak of the Month mark (para. 11g); and Assisting or cooperating with any person who engages in any of the foregoing prohibited acts (para. 11h). The district court then ordered that the registrars for the domain names steakofthemonthclub.com, Cancellation No. 92052101 6 steakofthemonthclub.net, steakofthemonthclub.org, steakofthemonthclub.info, and meantofthemonthclub.com to immediately transfer ownership of those domain names from Pathak to Omaha Steaks. (Order, paras. 15a-e.) 3. Petitioner's standing A plaintiff has standing within the meaning of Section 14 of the Act, when it shows that it has a direct and personal stake in the outcome of the cancellation proceeding and a reasonable basis for its belief that it will be damaged. See Ritchie v. Simpson, 170 F.3d 1092, 1098, 50 USPQ2d 1023, 1025- 26 (Fed. Cir. 1999). There is no requirement that any actual damage be proven to establish standing. The issue in determining standing is not necessarily whether petitioner is entitled to a registration or owns the mark, but rather whether the presumptions flowing from the registration at issue are damaging to petitioner's legal and continuous use of that term. See J. Thomas McCarthy, 3 McCarthy on Trademarks and Unfair Competition, Â§ 20:46 (4th ed. 2011); see also, Harjo v. Pro Football, 30 USPQ2d 1828, 1832 (TTAB 1994) (party may establish standing by showing it has personal interest beyond that of general public with no requirement that actual damage be pleaded and proved). Standing to assert that a term is generic, for example, may be shown where a plaintiff has a real interest in the proceeding because it is one who has a present or prospective right to use the term descriptively or Cancellation No. 92052101 7 generically in its business. See Nobell.com LLC v. Qwest Communications International, Inc., 66 USPQ2d 1300, 1304 (TTAB 2003). The Board must give deference to the determinations of the district court and consider the terms of permanent injunctions. See DaimlerChrysler Corp. v. Maydak, 86 USPQ2d 1945, 1950 (TTAB 2008). The permanent injunction prohibits petitioner from using any mark comprised of the words "Steak of the Month" or "Meat of the Month" in connection with food-related goods or services, from owning a domain name comprised in whole or in part of the words "Steak of the Month" or "Meat of the Month," and from using any domain name which is identical with, confusingly similar to and/or diluting of petitioner's STEAK OF THE MONTH mark. Our review of the petition to cancel reveals that petitioner bases his standing on his operation of the domain name steakofthemonthclub.com which features meat, and on the fully resolved civil action between the parties which involved, inter alia, petitioner's use of the domain names steakofthemonthclub.com and meatofthemonthclub.com. Petitioner has not indicated any other domain names he uses, any other marks he uses, or any other manner in which he intends to use the term STEAK OF THE MONTH or any variation thereof. However, even if petitioner had provided such allegations in the petition to cancel, we note that petitioner Cancellation No. 92052101 8 has been enjoined from infringing on respondent's use of the mark STEAK OF THE MONTH, selling any products bearing any designation resembling respondent's STEAK OF THE MONTH mark, using any term comprised of the words "Steak of the Month" or "Meat of the Month" in connection with food-related products or services, owning a domain name comprised in whole or in part of the words "Steak of the Month" or "Meat of the Month," and using domain names which are identical with or confusingly similar to respondent's STEAK OF THE MONTH mark. Moreover, ownership of petitioner's pleaded domain names steakofthemonthclub.com and meatofthemonthclub.com has been awarded to respondent. There is no genuine issue of material fact that the injunction, barring petitioner's use of any mark comprised of the words "Steak of the Month" or "Meat of the Month" in connection with food-related goods or services, or any use of domain names comprising those terms, encompasses petitioner's stated interest in using the domain names. While petitioner alleges that he is being damaged by the threat of and actual lawsuits by respondent related to his operation of the web sites steakofthemonthclub.com and meatofthemonthclub.com, he is prevented from the operation of such web sites by the permanent injunction, and, as noted above, the ownership of those domain names now resides with Cancellation No. 92052101 9 respondent.3 As a result, petitioner's belief in damage is unfounded. In view thereof, no genuine dispute of material fact exists, and petitioner, who is enjoined from owning a domain name comprised in whole or in part of "Steak of the Month" or "Meat of the Month" does not have a real interest in cancelling respondent's registration for the mark STEAK OF THE MONTH and, thus, petitioner's allegations of standing are insufficient. 4. Res judicata Further, petitioner's claim that respondent's mark STEAK OF THE MONTH is generic is a claim that was asserted and litigated in the civil action between the parties. Therefore, petitioner is precluded from asserting that claim in this proceeding under the doctrine of res judicata or issue preclusion. See Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320, 86 USPQ2d 1369, 1375 (Fed. Cir. 2008). Moreover, we note that petitioner's claim that the examining attorney erred in the examination of the underlying application is not a valid ground for cancellation (cf. Flash & Partners S.P.A. v. I.E. Mfg. LLC, 95 USPQ2d 1813, 1816 (TTAB 2010), and cases cited therein (ex parte examination issues not basis for 3 If petitioner disputes the validity of the permanent injunction, his remedy is to return to the court that issued it â€“ not attack it in this cancellation proceeding. As the district court noted in its order, that court retains jurisdiction of the case that gave rise to the injunction. See Order, para. 16. Cancellation No. 92052101 10 cancellation)); even if it were, the ground would be barred under the doctrine of res judicata or claim preclusion (Nasalok Coating Corp., supra, 86 USPQ2d at 1372). Accordingly, respondent's motion for summary judgment is granted, and the petition to cancel is dismissed with prejudice.