Barbera 1870 S.p.A.v.Barbera Caffe's S.p.A.Download PDFTrademark Trial and Appeal BoardSep 30, 2014No. 92059052 (T.T.A.B. Sep. 30, 2014) Copy Citation BUO Mailed: September 30, 2014 Cancellation No. 92059052 Barbera 1870 S.p.A. v. Barbera Caffe’s S.p.A. Before Cataldo, Wolfson, and Masiello, Administrative Trademark Judges. By the Board: Barbera 1870 S.p.A., (“petitioner”) has petitioned to cancel the registration of the mark: for use in connection with “cafeterias; catering of food and drinks; restaurant services; self-service restaurants; [and] snack bars,” in International Class 43, owned by Barbera Caffe’ S.p.A. (“respondent”).1 1 Registration No. 4493203, issued on March 11, 2014. 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 OPINION IS NOT A PRECEDENT OF THE TTAB Cancellation No. 92059052 -2- In its petition for cancellation petitioner pleads ownership of two registrations for the marks: 2 3 Petitioner alleges that the continued registration of respondent’s mark would damage petitioner in that its continued use of the CAFE’ BARBERA SINCE 1870 FRANCHISE T H E M A G I C O F I T A L Y trademark will likely cause confusion among the relevant consuming public and will likely cause the relevant consuming public to mistakenly conclude that Registrant’s Services are associated with Petitioner, when in fact they are not, under Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Petition for Cancellation, ¶ 6. Petitioner also alleges “Registrant’s mark falsely suggests a connection with Petitioner in violation of Section 2(a) of the Trademark Act, because Registrant’s mark points uniquely to Petitioner.” Id., ¶ 10. Respondent, in its answer to the amended petition filed May 28, 2014, denied the salient allegations of the notice of opposition, and asserted six 2 U.S. Registration No. 4251927 (issued December 4, 2012, for “providing of food and drink,” in International Class 43). 3 U.S. Registration No. 3064211 (issued August 14, 2012, for “staple food products; namely, coffee,” in International Class 30). Cancellation No. 92059052 -3- “affirmative defenses,” including allegations that “petitioner is estopped from asserting its claims under principles of res judicata … [or] claim preclusion pursuant to the Trademark Trial and Appeal Board’s October 2, 2013 decision in Opposition No. 91201113.” Now before the Board is respondent’s motion for summary judgment based upon res judicata or claim preclusion, filed June 6, 2014. Respondent by its motion asserts that in a prior proceeding – Opposition No. 91201113 (“the ʼ113 opposition”) – the same parties litigated identical claims, i.e. petitioner, then opposer, asserted claims of likelihood of confusion under Section 2(d) and false suggestion of a connection under Section 2(a) against the underlying application that matured into subject Registration No. 4493203. Respondent asserts that the case was submitted on brief, and the Board, deciding the case on the merits, dismissed the opposition in its October 2, 2013 decision. Petitioner contests respondent’s motion, and asserts that the decision in the ʼ113 opposition “was not a final judgment on the merits, but was dismissed, as Registrant concedes due to a procedural error.” Petitioner asserts that due to its failure to “formally” make of record its pleaded registration(s), “the Board could not render a decision on the merits and entered a judgment by default.” Petitioner argues further that “the current cancellation proceeding pleads a registration that had issued late in the prior proceedings and was received by Petitioner after the close of its Testimony Cancellation No. 92059052 -4- Period;” and therefore, the pleading of this registration in the instant proceeding presents a different set of transactional facts “because it consisted of an amended drawing and a disclaimer,” in contrast to the application pleaded by petitioner in the ʼ113 notice of opposition. Summary Judgment In general a party may not file a motion for summary judgment until the party has made its initial disclosures. Trademark Rule 2.127(e)(1); Qualcomm, Inc. v. FLO Corp., 93USPQ2d 1768, 1769-70 (TTAB 2010). However, this general rule has two exceptions: 1) a motion asserting lack of jurisdiction by the Trademark Trial and Appeal Board; or 2) a motion asserting claim or issue preclusion. Trademark Rule 2.127(e)(1); Zoba Int’l Corp. v. DVD Format/LOGO Licensing Corp., 98 USPQ2d 1106, 1108 n.4 (TTAB 2011) (motion to dismiss considered as one for summary judgment where it asserts claim preclusion). Therefore, respondent’s motion is timely and properly asserted. 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. Cancellation No. 92059052 -5- 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; 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. Under Rule 56(a), the movant has the initial burden of demonstrating that there is no genuine dispute of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). In support of its motion, respondent submitted a copy of the Board’s October 2, 2013 decision in the ʼ113 opposition; a copy of a non-precedential decision of the Board, issued in Cancellation No. 92046543 (HBP, Inc. v. Becker Designs, Inc.);4 and a copy of the Board’s precedential decision in Orouba Agrifoods Processing Co. v. United Food Import, 97 USPQ2d 1310 (TTAB 2010). Exhibits A-C. 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 4 Prior to January 23, 2007, the Board’s policy had been that decisions which were not designated as “citable as precedent” or “for publication in full” were not citable authority. In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB 2001). However, since January 23, 2007, the Board has permitted citation to any Board decision, although a decision designated as not precedential is not binding upon the Board. See In re the Procter & Gamble Company, 105 USPQ2d 1119, 1120-21 (TTAB 2012) (citation to non-precedential opinions permitted but not encouraged). Cancellation No. 92059052 -6- 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)) (“Jet”). Our primary reviewing Court outlined the analysis of res judicata or claim preclusion in Jet, stating: 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. See Migra v. Warren City School Dist. Bd. of Educ. , 465 U.S. 75, 77 n.1 (1984) (“Claim preclusion refers to the effect of a judgment in foreclosing litigation of a matter that never has been litigated, because of a determination that it should have been advanced in an earlier suit. Claim preclusion therefore encompasses the law of merger and bar.”); Foster , 947 F.2d at 478-79, 20 USPQ2d at 1248-49. 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. See Parklane , 439 U.S. at 326 n.5; Foster , 947 F.2d at 478-79, 20 USPQ2d at 1248. The Board has considered the parties’ respective arguments and the evidence submitted, and has construed all inferences in favor of petitioner, as we must. As to the first factor, there can be no argument that the parties to this proceeding are identical to the parties involved in the ʼ113 opposition. Further, contrary to Petitioner’s contentions, the decision in the prior action was not an entry of default based upon a “procedural error,” but a dismissal of the opposition on the merits. The Board’s October 2, 2013 decision in the ʼ113 opposition does not mention the term “default;” nor did Cancellation No. 92059052 -7- the Board indicate that the action was being dismissed “without prejudice.” See Jet, 55 USPQ2d at 1858 (“Dismissal without prejudice indicates that judgment is not on the merits and will have no preclusive effect.”). In dismissing the prior action, the Board determined that “opposer [had] not established its prior rights or use, [and thus] opposer [had] not carried its burden to prove priority and likelihood of confusion under Section 2(d) or a false suggestion of a connection under Section 2(a).” The Board examined the evidence supplied by petitioner (as opposer in the prior action) in support of its claims noting that “[t]here [was] no testimony or other evidence from which to adduce opposer’s ownership … or to establish prior common law rights.” The Board also noted that “[t]here [were no] admissions upon which opposer may rely to establish its ownership … or prior common law rights, as applicant … denied these allegations in its answer.” Indeed, petitioner’s failure to properly introduce its registrations into evidence, and further its failure to introduce any evidence of its prior common law usage, i.e. a failure to introduce the evidence necessary to support the elements of its claims, cannot be characterized as a “procedural error” and, as discussed above did not result in entry of “judgment by default.” It appears that petitioner’s error was the more common mistake of failing to introduce sufficient evidence to prove its case by a preponderance of the evidence. See Cancellation No. 92059052 -8- Dan Robbins & Assoc., Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979).5 The Board also provided an analysis of the facts and evidence of record as applied to petitioner’s false suggestion of a connection claim, indicating that “there is no evidence to establish a ‘previously used name or identity,’” and also “[t]here is nothing in the record to support a finding that opposer’s alleged name is of sufficient fame to presume a connection.” Finally, there can be no dispute that the claims involved in the instant cancellation are identical to those presented in the ʼ113 opposition – likelihood of confusion under Section 2(d) and false suggestion of a connection under Section 2(a). Therefore, it appears the present claims arise from the same set of transactional facts as those presented in the ʼ113 opposition. A cancellation proceeding, just as an opposition proceeding, is a determination of the defendant’s right to a registration, wherein the plaintiff must show a reasonable belief of damage caused by the registration of the subject mark, and must articulate grounds upon which the mark should not be registered, which in a cancellation or an opposition may include grounds under subsections (a), (b), or (c) of Trademark Act Section 1052. For example, these grounds include, as in the present case, claims that the mark “consists 5 In light of petitioner’s claim of “earlier common law rights” in its mark, petitioner was obliged to introduce evidence of this usage if it wished to establish its priority on the basis of such common law rights. However, as previously discussed, the Board reviewed the record and found that there was “no testimony or other evidence from which to adduce opposer’s ownership and the validity of the pleaded application and registration or to establish prior common law rights.” Cancellation No. 92059052 -9- of or comprises a mark which so resembles a mark registered in the Patent and Trademark office, or a mark or trade name previously used by another and not abandoned, as to be likely . . . to cause confusion, or to cause mistake, or to deceive,” or “consists of … matter which may … falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols.” Therefore, the facts which were necessary to prove petitioner’s claims in the opposition are the same set of facts necessary to carry its petition for cancellation. Nonetheless, petitioner’s principal argument is not as to the difference between an opposition and cancellation, but that its pleaded Registration No. 4251927 in this proceeding “is different from its pleaded application because it consisted of an amended drawing and a disclaimer, which was not part of the pleaded application when the Notice of Opposition was filed.” However, despite petitioner’s arguments to the contrary, as a matter of law, the mark presented in pleaded Application Serial No. 77350105 was “essentially the same mark” as the mark that ultimately appeared in Registration No. 4251927 that matured from that application. See Trademark Rule 2.72. Indeed, petitioner’s “amended” drawing is simply a much clearer rendering of the drawing of the mark than what was submitted originally with the application, as required by the examining attorney’s May 5, 2011 and November 1, 2011 office actions. Thus, as required by Trademark Rule 2.72, the amended mark contains “what is the essence of the original mark, and Cancellation No. 92059052 -10- the new form … create[s] the impression of being essentially the same mark” as the mark originally submitted. See In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997) (quoting Visa Int’l Service Ass’n v. Life-Code Sys., Inc., 220 USPQ 740,743-44 (TTAB 1983)). Therefore, inasmuch as the requisite facts underlying the parties’ opposition proceeding in the prior case are virtually identical to those that underlie this cancellation proceeding, and because petitioner’s contention regarding the dissimilarity of the pleaded marks is inapposite, the instant claims are indeed based on the same transactional facts as those presented in the ʼ113 opposition and should have been litigated in the prior case.6 Based on the record before us, we do not find any genuine factual dispute as to the facts underlying the allegation of claim preclusion in this case in light of the Board’s October 2, 2013 decision rendered in Opposition No. 91201113. Petitioner’s arguments and evidence are insufficient to show the existence of a genuine dispute as to a material fact for trial. Therefore, respondent’s motion for summary judgment is GRANTED. Accordingly, judgment is entered against petitioner, and the petition for cancellation is DISMISSED. 6 Further, inasmuch as petitioner pleaded ownership of Registration No. 4251927 in this proceeding and attached copies of printouts from the USPTO’s TESS Database, it is noted that Application Serial No. 77350105 matured into registration on December 4, 2012, well before the close of petitioner’s trial period in the ʼ113 opposition, and therefore should have been introduced by petitioner during its testimony period. See Hunt Control Sys. Inc. v. Koninklijke Philips Elec. N.V., 98 USPQ2d 1558, 1563 n.6 (TTAB 2011); TBMP § 704.03(b)(1)(A) (2014). Copy with citationCopy as parenthetical citation