Barbera 1870 S.p.A.v.Barbera Caffe's S.p.A.

Trademark Trial and Appeal Board

Sep 30, 2014

No. 92059052 (T.T.A.B. Sep. 30, 2014)

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

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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).
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“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
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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.
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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).
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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
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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
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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.”

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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
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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).