Bail Runners LLPv.Peter McHugh dba Bail Runners Bail Bonds

Trademark Trial and Appeal Board

May 12, 2016

No. 92062688 (T.T.A.B. May. 12, 2016)

wbc Mailed: May 12, 2016

Cancellation No. 92062688

Bail Runners LLP

v.

Peter McHugh dba
Bail Runners Bail Bonds

Before Kuhlke, Hightower and Lynch,
Administrative Trademark Judges.

By the Board:

Bail Runners LLP (“BRL”) seeks to cancel Peter McHugh dba Bail Runners Bail
Bonds’ (“PM”) Registration No. 4834393 for the mark
for “bail bonding”1 asserting a claim of likelihood of confusion.
This case now comes before the Board on PM’s motion to dismiss (filed December
29, 2015) based on res judicata. In the Board’s January 7, 2016 order, the Board
informed the parties that the motion to dismiss would be treated as a motion for
summary judgment2 based on res judicata. The motion has been fully briefed.

1 Registration No. 4834393 issued October 20, 2015.
2 A party may file its motion for summary judgment based on res judicata even before making
its initial disclosures. See Trademark Rule 2.127(e)(1); Zoba Int’l Corp. v. DVD
Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1108 n.4 (TTAB 2011).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
This Decision is not a
Precedent of the TTAB
Cancellation No. 92062688
2

Entry of summary judgment is appropriate only where there are no genuine
disputes as to any material facts, thus allowing the case to be resolved as a matter of
law. Fed. R. Civ. P. 56(a). A factual dispute is genuine if, on the evidence of record, a
reasonable fact finder could resolve the matter in favor of the non-moving party. See
Opryland USA Inc. v. Great Am. Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471,
1472 (Fed. Cir. 1992); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). Evidence on summary judgment must be viewed
in a light favorable to the non-movant, and all justifiable inferences are to be drawn
in the non-movant’s favor. Lloyd’s Food Prods., Inc. v. Eli’s, Inc., 987 F.2d 766, 25
USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board
may not resolve genuine disputes as to material facts on summary judgment; it may
only ascertain whether genuine disputes as to material facts exist. See Lloyd’s Food
Prods., 25 USPQ2d at 2029; Olde Tyme Foods, 22 USPQ2d at 1542.
Res Judicata - Claim Preclusion
PM asserts, inter alia, that its Application Serial No. 86138381 (now Registration
No. 4834393) was opposed by Kirk Figueroa in Opposition No. 91221788 (the “‘788
opposition”), a proceeding which involved the same parties and was based on the
same claims, namely, likelihood of confusion. Upon motion by PM to dismiss the ‘788
opposition pursuant to Fed. R. Civ. P. 12(b)(6) alleging that BRL failed to state a
claim upon which relief can be granted, the Board deemed the motion conceded and
dismissed the opposition with prejudice in its September 15, 2015 decision. PM
Cancellation No. 92062688
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asserts that these undisputed facts establish that this cancellation proceeding is
barred by the doctrine of res judicata.
In its response to the motion for summary judgment, BRL argues, inter alia, that
the ‘788 opposition was not a decision on the merits and therefore cannot be the basis
for res judicata.
Res judicata is the earlier name for the judicial doctrine now generally known as
claim preclusion. See Urock Network, LLC v. Sulpasso, 115 USPQ2d 1409, 1410 n.4
(TTAB 2015) (citing Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 110 USPQ2d
1261, 1263 (Fed. Cir. 2014)). Under the doctrine of 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 Sys., 55 USPQ2d 1854,
1856 (Fed. Cir. 2000) (quoting Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5
(1979)).
For claim preclusion to apply, therefore, there must be:
(1) identity of parties (or their privies);
(2) an earlier final judgment on the merits of a claim; and
(3) a second claim based on the same set of transactional facts as the first.

Id.
First Factor – Identity of Parties
There is no dispute that the parties involved in the current cancellation and the
‘788 opposition are the same. Kirk Figueroa, as noted in BRL’s application Serial No.
86680142, is the owner of BRL.
Second Factor – An Earlier Final Judgment on the Merits of a Claim
Cancellation No. 92062688
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In its dismissal with prejudice of the ‘788 opposition, the Board granted PM’s
motion to dismiss for failure to state a claim under Fed. R. Civ. P. 12(b)(6) as
conceded.
Whether the judgment in a prior proceeding was the result of a dismissal with
prejudice or even default, claim preclusion may still apply. See, e.g., Urock Network,
LLC, 115 USPQ2d at 1411 (“[W]hether the judgment in a prior proceeding was the
result of a dismissal with prejudice or even default, for claim preclusion purposes, it
is a final judgment on the merits.”); Orouba Agrifoods Processing Co. v. United Food
Import, 97 USPQ2d 1310 (TTAB 2010) (granting summary judgment to registrant on
claim preclusion where petitioner’s opposition had been dismissed with prejudice);
Flowers Indus. Inc. v. Interstate Brands Corp., 5 USPQ2d 1580, 1583 (TTAB 1987)
(claim preclusion applies “even when the prior judgment resulted from default,
consent, or dismissal with prejudice”); USOC v. Bata Shoe Co., 225 USPQ 340, 342
(TTAB 1984) (“default judgments generally operate as res judicata”).
In view thereof, there can be no dispute that the Board’s dismissal with prejudice
for failure to state a claim in the ‘788 opposition was a final judgment which gives
rise to claim preclusion.
Third Factor – A Second Claim Based on the Same Set of Transactional
Facts as the First
This case implicates the defensive doctrine of “bar,” wherein the Board must
analyze whether a plaintiff can bring a subsequent action against a defendant. See
Jet Inc., 55 USPQ2d at 1856 (stating that the doctrine of claim preclusion “has come
to incorporate common law concepts of merger and bar, and will thus also bar a second
Cancellation No. 92062688
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suit raising claims based on the same set of transactional facts”) (citing Migra v.
Warren City School Dist. Bd. of Educ., 465 U.S. 75, 77 n.1 (1984)). “This bar extends
to relitigation of ‘claims that were raised or could have been raised’ in an earlier
action.” Urock Network, LLC, 115 USPQ2d at 1412 (citing Allen v. McCurry, 449 U.S.
90, 94 (1980)); Migra, 465 U.S. at 77 n.1. Under claim preclusion, a plaintiff is barred
from a “subsequent assertion of the same transactional facts in the form of a different
cause of action or theory of relief.” Vitaline Corp. v. General Mills Inc., 891 F.2d 273,
13 USPQ2d 1172, 1173 (Fed. Cir. 1989).
BRL, in the ‘788 opposition, opposed application Serial No. 86138381 claiming
common law rights in the mark BAIL RUNNERS for “various services, including bail
bonding and related services in [Class] 36”; and that PM’s bail bonding services were
identical to BRL’s goods and services. Opposition No. 91221788, 1 TTABVue at ¶¶ 1
and 8. In the instant cancellation, BRL claims rights in its BAIL RUNNERS mark
noting the same is “more fully-identified in Federal Trademark Application Serial
No. 86/680,142” for “fugitive recovery services; surveillance services” filed July 1,
2015 during the pendency of the ‘788 opposition. Cancellation No. 92062688, 1
TTABVue at ¶ 1. Further, BRL alleges in its notice of opposition and petition to cancel
that PM’s services are offered to the same class of consumers and channels of trade
as those offered by BRL.
Cancellation No. 92062688
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Both the ‘788 opposition and the current cancellation involve BRL’s BAIL
RUNNERS mark in standard characters3 and PM’s application Serial No. 86138381
(now Registration No. 4834393). Additionally, as alleged by PM and not disputed by
BRL, each proceeding involves the same or highly similar services related to bail
bonding or fugitive recovery services; and each proceeding involves claims of
likelihood of confusion.
Considering the pleadings in the ‘788 opposition and the instant cancellation, it is
clear that BRL’s claims of likelihood of confusion are based on the same set of
transactional facts, specifically, whether the
mark as used by PM is likely to be confused with BRL’s BAIL RUNNERS mark. The
alleged prior rights in BRL’s BAIL RUNNERS mark as described in the ‘788
opposition are broadly described and encompass the services identified in the
86680142 application. In short, the evidence necessary to prove likelihood of
confusion in the ‘788 opposition would establish a likelihood of confusion in the
current cancellation. Indeed, neither party disputes the similarity of the
transactional facts in the ‘788 opposition and the current cancellation.
Decision
Based on the record before us, we find that there is no genuine dispute as to the
facts underlying the allegation of claim preclusion in this case in light of the Board’s

3 BRL also claims, in the ‘788 opposition, to have used its BAIL RUNNERS marks in
connection with various designs.
Cancellation No. 92062688
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September 15, 2015 decision rendered in the ‘788 opposition. PM’s motion for
summary judgment is granted. Judgment is entered against BRL and the petition
for Cancellation No. 92062688 is dismissed with prejudice.